Domain name - Domain name dispute resolution policy – Untimely Response - U.S. Trademark – Common Law Trademark – Pending -  Identical - Confusingly similar - Bad faith registration - Bad faith use – Not traditional cybersquatter – No knowledge of Complainant – Pattern of Conduct – Warehousing names.

Complainant is a software company which, for three years, has been developing a program that would allow automated teller machine cards to be used on the Internet.  Complainant has applied for trade-mark protection of ATM ONLINE, but this is still pending.  Complainant does already own the .net, .org, and .cc versions of the disputed domain name.
Respondent is a domain name wholesaler.  Respondent has offered the domain name at issue for substantial sums to the public and to Complainant in particular.  In addition, the domain name was originally registered with Network Solutions on February 26, 1997.

Held, Domain name not transferred. 

It is not disputed that Respondent’s domain name is identical to Complainant’s claimed common law trademark for which federal registration has been applied.  The date of first claimed use of “ATMONLINE” by Complainant is a mystery.
Respondent has established that it has rights and legitimate interests in the domain name at issue and that it took the trouble to register that domain in 1997.  Without determining if the passage of considerable time would alone bar Complainant from relief in this proceeding, it is noted that Complainant does not even suggest a date of first claimed use of the trademark claimed.
The Complainant does not offer proof that Respondents engaged in any actions in bad faith. Further, there is no evidence that Respondent is a cybersquatter in the traditional sense.  Respondent clearly warehouses domain names and offers them for sale to the public.  However, there is no evidence that Respondent registered “ATMONLINE.COM” in 1997, or renewed it thereafter, with knowledge of Complainant, its software or its claimed common law trademark.

Policies referred to

Uniform Policy for Domain Name Dispute Resolution

Rules for Uniform Domain Name Dispute Resolution Policy 

Supplemental Rules for Uniform Domain Name Dispute Resolution Policy
 

Panel decision referred to
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Carmody, Arbitrator: -
 

REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is “ATMONLINE.COM,” registered with Domain Bank, Inc. (“DBI”)
Hon. James A. Carmody, Panelist

PROCEDURAL HISTORY
Complainant filed its Complaint with the National Arbitration Forum ("The Forum") on June 9, 2000. 
On June 14, 2000, DBI confirmed by e-mail to The Forum that the domain name “ATMONLINE.COM” is registered with DBI and that the Respondent is the current registrant of the name.  DBI has verified that Respondent is bound by its Service Agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.
On June 15, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 5, 2000 by which Respondent could timely file a Response to the Complaint, was transmitted to Respondent via email, post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts by email. The Forum appointed the Hon. James A. Carmody to preside as a single panelist in this administrative proceeding on July 7, 2000 in accordance with its Rules. Respondent filed its untimely Response on July 10, 2000 and advised the Forum that the Complaint had only recently been received.  In the interests of justice and finding no unreasonable prejudice to Complainant, the Arbitrator has agreed to fully consider the untimely Response.
Having reviewed the Complaint and the Response, the Administrative Panel (the "Panel") finds that The Forum has discharged its responsibility under the Rules and that the case is ready to be decided. Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, The Forum’s Supplemental Rules and any rules and principles of law that the panel deems applicable.

RELIEF SOUGHT
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.  The Respondent seeks that the Panel not transfer the domain name. 

PARTIES’ CONTENTIONS
A. Complainant
The Complainant contends that the Respondent has registered a domain name that is identical to its common law trademark, “ATM ONLINE,” for which federal registration was applied on August 30, 1999 with the United States Patent and Trademark Office; the record suggests that the application is pending.  Further, the Complainant contends that the Respondent has no rights or legitimate interests to the domain name, and that the Respondent has registered and is using the domain name in bad faith despite a cease and desist letter from Complainant’s principal (attorney Robert S. Widner) to Respondent on September 20, 1999 (attached to the Complaint). Complainant claims that ATM ONLINE describes a software product, three years in the development, which allows automated teller machine cards to be used on the Internet.  No evidence of use of the trademark prior to August 30, 1999 is provided by Complainant.  Currently, Complainant owns the .net, .org, and .cc versions of ATMONLINE and would like to round out the suite with the  .com version of the domain name.

B.     Respondent
Respondent concedes that the domain name is identical to or confusingly similar to Complainant’s claimed trademark, but it contends and provides evidence that the domain name at issue was originally registered with Network Solutions on February 26, 1997.   The Response attaches a cease and desist letter from attorney Robert S. Widner, dated August 30, 1999 (nearly identical to the letter attached to the Complaint), in which claim is made that Widner owns a U.S. trademark registration for “ATM ONLINE.”  Exhibits to both the Complaint and to the Response reflect that August 30, 1999 was the date of application with the U.S. Patent and Trademark Office, not the date of registration, as such registration has apparently not occurred.  Respondent claims that it had its own plans for use of the domain name at issue and provides examples of existing  usage of “ATM ONLINE” by third parties on the Internet.  Respondent acknowledges that it is a domain name wholesaler and that it has offered the domain name at issue for substantial sums to the public and to the Complainant in particular.

FINDINGS
            It appears from the evidence adduced by the parties that Respondent had a two-year jump on Complainant in terms of use of the domain name in question.  The fact that Complainant has applied for federal registration of its common law mark is interesting, but there is no evidence of a date of first claimed use by Complainant, even as a common law trademark.
            Further, there is no evidence that Respondent is a cybersquatter in the traditional sense.  Respondent clearly warehouses domain names and offers them for sale to the public.  However, there is no evidence that Respondent registered “ATMONLINE.COM” in 1997, or renewed it thereafter, with knowledge of Claimant, its software or its claimed common law trademark.
            Moreover, the typically significant evidence that the parties haggled over a demand by the Respondent for significant sums to transfer the domain name has no application here.  Respondent had owned the domain name for several years and had its own legitimate plans for its business use, including sale of the name.  As can be seen from the standards applicable to this proceeding, Complainant’s case simply fails for want of proof.

DISCUSSION 
Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy (“Policy”) directs that the complainant must prove each of the following three elements to support a claim that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; 
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar
It is not disputed that the Respondent’s domain name is identical to the Complainant’s claimed common law trademark for which federal registration has been applied.  The date of first claimed use of “ATMONLINE” by Complainant is a mystery.

Rights or Legitimate Interests
Respondent has established that it has rights and legitimate interests in the domain name at issue and that it took the trouble to register that domain in 1997.  Without determining if the passage of considerable time would alone bar Complainant from relief in this proceeding, it is noted that Complainant does not even suggest a date of first claimed use of the trademark claimed. 

Bad Faith
The Complainant does not offer proof that Respondents engaged in any actions in bad faith.

DECISION
The Complainant having failed to prove the essential elements required by ICANN Policy Rule 4(a), it is the decision of this Panel that the requested relief be denied and registration of the domain name “ATMONLINE.COM” will not be disturbed. 
  James A. Carmody, Judge (Ret.), 
Arbitrator
Dated: July13, 2000