pod.com

The Complainant is Omnipod, Inc of 440 Ninth Avenue, 8^th Floor, New York, NY10001, United States of America.

The Respondent is Ahmed Nassef of P O Box 830184, 11183 Amman, Jordan.

The domain name at issue is <pod.com>.

The Registrar is Internet Names Worldwide.

The WIPO Arbitration and Mediation Center [the Center] received the Complaint on January 26, 2002, [electronic version] and on February 5, 2002 [hard copy]. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy [the Policy], the Rules for Uniform Domain Name Dispute Resolution Policy [the Rules], and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy [the Supplemental Rules]. The Complainant made the required payment to the Center.

The formal date of the commencement of this administrative proceeding is February 6, 2002.

On January 29, 2002, the Center transmitted via email to Internet Names Worldwide a request for registrar verification in connection with this case and on the same day Internet Names Worldwide transmitted by email to the Center Internet Names Worldwide's verification response confirming that the registrant is Ahmed Nassef who is also the contact for both administrative and technical purposes.

Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted on February 6, 2002, by email this Notification of Complaint and Commencement of the Administrative Proceeding. The Center advised that the Response was due by February 26, 2002. On the same day the Center transmitted by fax and by mail copies of the foregoing documents to the Respondent.

The Notification of Complaint and Complaint addressed to the Respondent's address given in the Registrar Verification was returned to the Center on February 13, 2002.

No Response was received from the Respondent by the due date of February 26, 2002. On February 28, 2002, Notice of Respondent Default was sent to the Complainant and to the Respondent using the same contact details and methods as were used for the Notification of Complaint and Commencement of the Administrative Proceedings.

On March 5, 2002, the Center received a Response from the Respondent and on March 6, 2002, Acknowledgement of Receipt of Respondent's Response was sent to the Respondent using the same contact details and methods as were used for the Notification of Complaint and Commencement of the Administrative Proceedings. By email dated March 5, 2002, the Respondent asked that the eight day delay in submitting a Response be waived on the basis that it was due to family medical reasons beyond his control. By email dated March 6, 2002, the Complainant requested the Response should be rejected since any request for additional time should have been made by the Respondent before the due date of February 26, 2002.

This is a matter for the discretion of the Panel. Here the Panel does not consider that the eight day delay has caused any delay in the timing of the Decision. Further, the Panel is concerned to ensure that the Parties are treated with equality and that each party is given a fair opportunity to present its case [Rules, paragraph 10(b)]. In the circumstances, the Panel is prepared to accept the Respondent's late Response. However, the Complainant will see from the Decision which follows that the Panel's reason for dismissing this Complaint is due to inadequacies in the substance of the Complaint rather than to the Respondent's case set out in the Response.

Having received on March 7, 2002, Mr. David Perkins' Declaration of Impartiality and Independence and his Statement of Acceptance, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. David Perkins was formally appointed as the Sole Panelist. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.

On March 28, 2002, the Center received an email with a supplemental filing from the Complainant. On April 1, 2002, the Respondent by email objected to the supplemental filing from the Complainant. The Policy and Rules does not foresee further submissions after the Complaint and Response, and neither has the Complainant given any justifiable reason to make an exemption from this. The Panel, therefore, rejects the said supplemental filing.

Having verified the communication records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under para. 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondents". Therefore, the Administrative Panel shall issue its Decision based upon the Complaint, the Response, the Policy, the Rules and the Supplemental Rules.

4.1 The Complainant's Business and Products

The Complainant gives no information as to its business other than it has a software product called POD and that it is s Delaware Corporation licensed to do business in New York. Only by accessing the Complainant's website <omnipod.com> has the Panelist been able to glean the following further information about the Complainant and its business. The following brief particulars are given.

"Company Overview

Omnipod was founded in May 1999, with the goal of providing a powerful corporate solution for employees, partners and customers to view, share, communicate and store information in real-time. In September 2000, Omnipod launched the Professional Online DesktopÔ (PODÔ ) and has provided its solution to several Fortune 1000 companies, including Levi StrausÔ , M&M MarsÔ and McCann-EricksonÔ .

Traditional corporate Intranets and extranets require complex software, expensive server equipment and a dedicated internal support staff to maintain systems and train users. The POD is a unique, turnkey solution that is cost-effective, highly secure and centrally controlled through Omnipod's data center. With a flexible and easily customizable interface, the POD is built to incorporate legacy systems and reflect virtually any corporate identity."

4.2. The website also contains features entitled

- Professional Online Desktop (POD) Benefits:

- Product Features; and

- Architectural Overview

a four page document entitled

- The Premier Communication and Collaboration Solution

and another (three pages) document entitled

- The Limitations of Existing Instant Messaging and File Sharing Solutions

dated January 2002.

These documents variously feature the marks OMNIPOD, both with and without device; PROFESSIONAL ONLINE DESKTOP (POD), both bearing the symbol TM; and the POD.

The website also contains a September 19, 2001, Press Release offering to donate US$2 million worth of its products and services to those companies and organisations affected by the terrorist attacks of September 11, 2001. This Press Release contains the following statements relating to the Complainant's business and products.

"Through Omnipod's client/sever architecture, employees are able to download the POD (professional online desktop) from www.omnipod.com/yourcompany and within minutes be up-and-running with an integrated file sharing, storage and communications tool-set. This is particularly important for companies whose employees will be disparately located following the events of last week. In addition to the robust and secure file transferring and search capabilities, the POD is interoperable with Yahoo! and MSN instant messengers. Also, users are able to view and experience numerous multimedia file formats through the POD."

and

"About Omnipod, Inc.

Founded in May 1999, Omnipod, Inc. provides a corporate network tool-set for employees (intranet), partners (extranet) and customers (internet) to view, share, communicate and store information. Streamlined to optimize enterprise performance, the POD application is easy to learn, quick to deploy, simple to integrate and requires minimal maintenance."

4.3 The Complaint provides the following information

"Omnipod has registered a trademark for the marks Omnipod, POD: Professional Online Desktop, POD: Personal Online Desktop and Podiverse, among other marks. The mark 'POD' was filed on June 13, 2000, and assigned the serial number 76068419."

The Panel obtained the following information from the United States Patent and Trademark Office trademark electronic search system (TESS) on March 12, 2002.

4.4 The asterisked marks record August 29, 2000, as first use in commerce. The remaining applications are filed with intention to use. The application for POD was refused on December 19, 2001.

There is, therefore, no registered US trademark for the mark POD, nor is there a registered US trademark for a mark including the word POD. The Complainant has advanced no claim to common law rights in the trademark POD.

4.5 The Complaint states that the <pod.com> domain name was purchased by the Complainant for the sum of US$18,000. The WHOIS Search attached to the Complaint, however, shows only the Respondent as the original registrant when the current domain name was created on January 11, 2000. The Panel can only assume that there was a <pod.com> domain name registered prior to January 11, 2000, which was transferred to the Complainant as a result of the acquisition but that the address entered was that of the Respondent [see, paragraph 5.1.5 below]. The Complaint is unclear in this respect and nothing in the Response clarifies it.

4.6 The Response states that the Respondent is involved in the business of "marketing consulting". It gives no further information.

4.7 The Panelist has accessed the domain name in issue which is stated to be under construction and contains the following:

"This site is hosted by Netfirms Web Hosting

Under Construction

Contact us

For now, here are some other "POD" related sites you may want to visit:

http://www.apple.com.ipod/

Official site of the Apple iPOD

http:///www.bodpod.com/

Body Composition System

http://www.pod.com.sg/

A great mobile/Internet communications platform from Singapore Telecom

http://www.omnipod.com/

A B2B Internet based communications application

http://www.payableondeath.com/

The Official P.O.D. band site

http://www.podnetwork.og

Professional and Organizational Development Network in Higher Education

http://www.podboy.net/

Unofficial Chris Vrenna site for NIN fans"

4.8 The Complaint describes the Respondent as "… a former disgruntled employee of the Claimant."

5.1.1 Identical or Confusingly Similar

The Complainant claims rights in the trademark POD by virtue of a US trademark application for POD [Class 9] filed June 13, 2000; other US trademark applications incorporating the word POD filed during the year 2000; acquisition of the domain name in issue at an unspecified date prior to the events complained of; and first use in commerce on August 29, 2000, of the trademark Professional Online Desktop.

5.1.2 The Complaint states that the domain name in issue is obviously better suited for use in conjunction with its "the POD" software then "as a one page placeholder for a consulting service called Nassef Consulting".

5.1.3 Based on the foregoing, the Complaint asserts that the domain name in issue is identical or confusingly similar to a trademark in which the Complainant has rights.

5.1.4 The Respondent is (as stated) described as a former disgruntled employee of the Complainant who, while employed by the Complainant was in charge of marketing the Complainant's POD software and assisted in negotiations to acquire the <pod.com> domain name for US$18,000.

5.1.5 Put shortly, the Respondent is accused of misappropriating the domain name in issue by registering his personal contact details rather than those of the Complainant company at the time when the domain name was acquired by the Complainant. As a consequence, notice of the date for renewal was never received directly by the Complainant. Instead, on December 29, 2001 - less than two weeks before the due renewal date - the Respondent sent a single email to an officer of the Complainant asking if the Complainant had any interest in renewing that domain name. [Since the Registrar Verification shows that the domain name in issue was registered on January 11, 2000, and the expiry date as January 11, 2003, the December 29, 2001 date is presumably an error.]

5.1.6 That officer was on vacation at the time and was unable to access the email The Respondent allowed the domain name to expire and then himself re-registered it on the same day, namely January 11, 2000. This the Respondent did in the full knowledge of the Complainant's business, its products and its trademarks, having [as stated in paragraph 5.1.4 above] been in charge of marketing the Complainant's POD software whilst an employee of the Complainant.

5.1.7 The Respondent is making no use of the domain name in issue other than as a "placeholder" [see, paragraph 4.7 above]. The Complaint states:

"Respondent has placed only a single page website on the new "pod.com" site and clearly has no connection with Omnipod, the POD software or anything else connected with the word POD."

5.1.8 The Respondent has no registered trademarks for anything containing the word POD.

5.1.9 The Complainant's case is that, in the circumstances, the Respondent has no rights or legitimate interests in the domain name in issue.

5.1.10 The assertions set out in paragraphs 5.1.4 to 5.1.9 above are also relevant to this requirement of the Policy. In addition, the Complaint states that since January 11, 2001, in follow up email and telephone correspondence between the parties, the Respondent asked the Complainant to "make an offer" for transfer of the domain name in issue. The Complainant made a written offer of US$35.00, being the price of registration according to the Respondent, but no Response was made to that offer. The Complaint states that the Respondent has told the Complainant in conversation.

"[He] knows what we originally paid for pod.com [US$18,000] and that [Complainant's offer] had to be in that range."

5.1.11 In the circumstances, the Complainant asserts that the domain name was registered by the Respondent on January 11, 2001, in bad faith and is being used by the Respondent in bad faith.

5.2.1 The Complainant's Trademark Rights

The Respondent's case is that the Complainant has no trademark rights in the word POD because:

- the domain name in issue was registered by the Respondent on January 11, 2000, before the Complainant's application on June 13, 2000, to register POD as a US trademark; and

- the US Patent and Trademark Office has issued over 300 trademarks containing the letters POD, including some subsisting registrations for POD simpliciter in the names of third parties.

From the list forming Annex A to the Response, the Panel has carried out a TESS search against registered marks for POD simpliciter which are shown as being live registrations. The results are tabulated below: