The Complainant is Techsoft AS, Sandefjord, Norway, represented by FØYEN Advokatfirma DA, Norway.
The Respondent is Reidar Rytter-Fjoeren, Molde, Norway, represented by Law Office of Howard M. Neu, P.A., United States of America.
2. The Domain Name and Registrar
The disputed domain name <pixedit.com> is registered with Fushi Tarazu, Incorporated.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 24, 2009. On February 25, 2009, the Center transmitted by email to Fushi Tarazu, Incorporated a request for registrar verification in connection with the disputed domain name. On February 25, 2009, Fushi Tarazu, Incorporated transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced March 4, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response March 24, 2009. The Response was filed with the Center March 24, 2009.
The Center appointed Jonas Gulliksson, Amund Grimstad and Ross Carson as panelists in this matter on May 13, 2009. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant, a Norwegian company, is the holder and trade mark registrations in Norway, the European Union and in the USA for the word mark PIXEDIT. In Norway the mark is registered for the entire class 9.
The Complainant's trademark PIXEDIT is used for a scanning software program that consists of a raster-handling tool. The product has been marketed under the name PIXEDIT since the late-eighties.
The Respondent, a Norwegian citizen, registered the domain name in dispute on November 4, 2008.
On January 26, 2009, the Respondent filed an application in Norway for registering of the word PIXEDIT for services in classes 35 and 41.
5. Parties' Contentions
A. Complainant
Identical/Confusingly similar
The disputed domain name is identical to the registered trademark of the Complainant.
Legitimate interest
Even if the domain name in dispute is used for the offering of goods in a different class of products than that of the Complainant, the use of the trademark under the domain name may be easily altered and used with a large range of product types.
The Respondent has no intention of using the domain name in connection with a bona fide offering of goods and services. There is no evidence of demonstrable preparation to use the domain name in such manner before the notice of the dispute. The Respondent's application for registration of the trademark was filed merely for tactical reasons in face of a potential dispute over the domain name. Furthermore, the Respondent has not been commonly known by the disputed domain name.
Bad faith
The Respondent has registered 596 other domain names which points to a pattern of bad faith. This case is a classic example of a domain shark registering a domain name in bad faith for illegitimate purposes. Further, the Respondent has offered to sell the domain name to the Complainant for no less than DKK 50 000, which is further evidence of the bad faith registration and use of the Respondent.
B. Respondent
Legitimate interest
The Respondent is in the business of buying Internet domains and developing then into active web sites. Within the last twelve months, the Respondent has spent in excess of USD 100,000 in purchasing domains for development. Since the Respondent started to develop internet domains, only one domain has been sold and that was solely to obtain financing for another development project.
After seeing that the disputed domain name was available in the aftermarket, the Respondent was the highest bidder for the domain name. The Respondent intends to develop a web site for online personal photo editing and the name fits well for that business. A company, Abris IT Service has been contracted to develop the domain into a photo editing web site. The Respondent thus has a legitimate business interest in the disputed domain name.
Bad faith
The Respondent realized that the Complainant had the trademark PIXEDIT for goods in class 9 when receiving a report from the Norwegian Patent and Trade mark Office. He then applied for the trade mark PIXEDIT covering services in classes 35 and 41 for photo editing, tutorials and add-ons. The Respondent had no knowledge of the Complainant's trade mark rights at the time of registering the disputed domain name and the Complainant has not provided any evidence of the registered mark being in use or well-known in Norway. The domain name was acquired because it comprises of a common word with a meaning appropriate for the use as a web site for photo editing. According to UDRP decisions at WIPO there can be no bad faith in the acquisition or use when a respondent acquires at domain name comprising a common word that has a meaning appropriate for its use.
The Respondent categorically denies that he registered the domain name in dispute with the intent to sell it to the Complainant. The Respondent was approached by Mr Michelsen who finally offered to buy the domain for DKK 35,000, an offer to which the Respondent did not reply to. Mr. Michelsen failed to inform the Respondent that he was an employee of the Complainant. Another representative of the Complainant, Mr Lorentzen of Lyse Tele, phoned and emailed the Respondent and offered to buy the domain for NOK 50,000. The Respondent did not reply to this offer either.
6. Discussion and Findings
The Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems appropriate.
The Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the Respondent's domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of the domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name.
A. Identical or Confusingly Similar
The Complainant is the holder of the registered trade mark PIXEDIT for goods in class 9 in Norway, the European Union and in the USA. The trade mark's distinctiveness is not called into question and the disputed domain name is, with the top-level domain (TLD) “.com” as the only addition, entirely contained in the disputed domain name. The top-level domain is according to well-established consensus incapable of performing any distinctive function, and should not be considered in making this determination (see, Segway LLC v. Chris Hoffman,WIPO Case No. D2005-0023; D. Ronaldo de Assis Moreira v. Eladio García Quintas, WIPO Case No. D2006-0524 and LDLC.COM v. LaPorte Holdings,WIPO Case No. D2005-0687).
The panel finds the domain name in dispute to be identical to the trade mark PIXEDIT in which the Complainant has rights.
B. Rights or Legitimate Interests
The summary nature of the UDRP proceedings means that the Complainant must present a prima facie case of the Respondent's lack of legitimate interest in the disputed domain name.
Furthermore, according to Paragraph 4(c)(i), the Respondent may demonstrate rights or legitimate interests in the domain name if before any notice of the dispute the Respondent uses or prepares to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services.
The Respondent has contended a legitimate interest by demonstrating preparations to use the domain name in connection with a bona fide offering of photo editing, before any notice of this dispute. Although the submitted evidence does not convey undisputable demonstrations, to this Panel the intended business use for the domain name seems plausible enough.
The Complainant has argued that the Respondent's filing of an application for a trade mark immediately before the initiation of these proceedings, merely constitutes a tactical move. That is possible, but equally, in the view of the Panel,, and without more, the application for the national trade mark could constitute either evidence of legitimate interest or lack thereof. In the present case, the fact of such application does not of itself strike this Panel as dispositive, and ultimately the burden of proof falls on the Complainant. In view of the lack of provided evidence of the trade mark being (for example) well known in Norway and the apparent differences between the business activities of the Complainant versus the intended business connected to the disputed domain name, the Panel finds that the Complainant has failed to satisfy this Panel that the Respondent claim of demonstrated preparations to use the domain name in connection with a bona fide offering of the services should be regarded as false. The Panel concludes this as well in the light of the lack of any argument put forward by the Complainant of the possible competitive nature of the Respondent's intended use of the domain name in dispute.
Having failed to establish the second element of the Policy, this Complaint cannot succeed.
C. Registered and Used in Bad Faith
In light of its decision on the second element of the Policy, the Panel is not required to address this element. However, the Panel wishes to make the following observation on the issue of registration and use in bad faith.
The Complainant has argued that the Respondent's many registered domain names constitute evidence of the bad faith of the Respondent. The Complainant has not submitted any further evidence of any prior practice of “cyber squatting” by the Respondent. The number of registered domain names cannot stand alone as evidence of bad faith.
Evidence of the Respondent offering to sell the disputed domain name has been submitted by the Complainant as evidence of bad faith registration and use. However, this evidence has been supplemented by evidence submitted by the Respondent. It is evident that the Respondent did not approach the Complainant with an offer to sell the domain name in dispute to Complainant. It was the Complainant who initiated the negotiations. The Respondent expressed in the initial contact the intention to develop the domain name. After that, the Respondent appears to rather quickly have lost interest in the negotiations. The Panel finds, in line with previous decisions (see Gateway Inc. v. Domaincar,
WIPO Case No. D2006-0604 or Barlow Lyde & Gilbert v. The Business Law Group,WIPO Case No. D2005-0493) that the Complainant has not proven that Respondent “primarily” registered the domain name in dispute for the purpose of selling the domain name in dispute to the Complainant. Indeed, the Complainant, by not submitting the entire e-mail correspondence, could perhaps be said to have acted with a certain want of candor.
Finally, with regard to the short period of time since the registration of the domain name in dispute and the date of filing of the Complaint, the lack of any Cease and Desist Letter or any other notice, and having no reason to doubt the Respondent's plans to develop the web site for the his stated intended business, the Panel finds that there is no evidence of register and use in bad faith alleged by the Complainant. When a domain name is released, good faith usage for apparently legitimate reasons in the aftermarket is generally allowed.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Jonas Gulliksson Presiding Panelist
Amund Grimstad Panelist
Ross Carson Panelist
Dated: May 27, 2009
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