Domain name - Domain name dispute resolution policy - U.S. Trademark - Confusingly similar - Bad faith registration - Bad faith use.

The Complaint is based on the trade mark MPOWER, which the Complainant (under its former name MGC Communications, Inc.) applied to register in the United Stated  on November 23, 1999. The Respondent registered the domain name “m-power.net” on May 18, 1999.

On November 22, 1999, Respondent's e-mail confirmed that it has acquired the domain name for the sole purpose of reselling the domain name registration to the highest bidder, for valuable consideration in excess of its out-of-pocket expenses directly related to the domain name. 

The Respondent disagrees that the Complainant has any rights in or to the trademark MPOWER.

Held, Name Not Transferred to Complainant.

Complainant must prove confusingly similar, no rights or legitimate interests, and bad faith use and registration.

The trade mark MPOWER is not visually identical to the domain name, but it is certainly confusingly similar. 

It appears that the Respondent registered the domain name “m-power.net” some 6 months before the Complainant applied to register the mark MPOWER and changed its corporate name.  It is not possible to conclude that the Respondent has no rights or legitimate interests in the domain name.

The Respondent’s stated purpose in adopting the domain name is unrelated to the Complainant’s business and cannot have been directed at the Complainant—the Respondent was in the business of selling developed websites in the travel business.  The Complainant has failed to demonstrate that the Respondent’s conduct is within any of the specific examples of registration and use of a domain name in bad faith set out in paragraph 4(b) of the Policy.

Policies referred to

Rules for 
Uniform Domain Name Dispute Resolution Policy
Supplemental Rules for Uniform Domain Name Dispute Resolution Policy
Uniform Domain Name Dispute Resolution Policy

Panel Decision referred to
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Tootal, Panelist: -

1. The Parties

The Complainant is Mpower Communications Corp. formerly MGC Communications, Inc. of 171 Sully’s Trail, Suite 202, Pittaford, New York 14534, United States of America.  Respondent is Park Lodge Hotel of 747 South Dowling Street, Moore Park, New South Wales 2016, Australia.
 

2. The Domain Name and Registrar

The domain name in issue is “m-power.net”, the Registrar of which is Network Solutions Inc.
 

3. Procedural History

The WIPO Arbitration and Mediation Center (the Center) received on February 17, 2000 a hard copy of the Complaint and accompanying documents.  The Center verified that the Complaint satisfies the formal requirements of the ICANN 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 24, 2000.

On February 20, 2000, the Center transmitted via e-mail to Network Solutions a request for registrar verification in connection with this case.  On February 22, 2000 Network Solutions transmitted via e-mail to the Center Network Solutions’ Verification Response, confirming that the registrant is the Respondent, and that both the Administrative and Billing Contacts are Rowen Legge (RL4135) reception @ PARKLODGEHOTEL.COM. 

On February 24, 2000, the Center transmitted to the Respondent Notification of Complaint and Commencement of Administrative Proceeding.  The Center advised that the Response was due by March 14, 2000.

On March 14, 2000 the Center received the Response by e-mail, and by fax.

On March 23, 2000, the Center advised the parties via fax that Mr. Christopher Tootal had been appointed as the Panelist in this proceeding and enclosed a copy of the Panelist’s Statement of Acceptance and Declaration of Impartiality and Independence.

4. Factual Background

(a) The Trade Mark

The Complaint is based on the trade mark MPOWER, which the Complainant (under its former name MGC Communications, Inc.) applied to register on November 23, 1999, signifying an intention to use the mark in advertisements in relation to “Telecommunication Services”.

(b) The Domain Name

The Respondent registered the domain name “m-power.net” on May 18, 1999.
 

5. The Complaint

 The Complainant relies on:-

(a) Its pending trade mark application as prima facie evidence of the validity of its trade mark and its exclusive right to use the trade mark in commerce.

(b) Use of the trade mark in five states (presumably in the U.S.A.).

(c) “m-power.net” being identical or confusingly similar to the Complainant’s trade mark MPOWER.

(d) The Respondent’s e-mail of November 22, 1999 which confirmed that it has acquired the domain name for the sole purpose of reselling the domain name registration to the highest bidder, for valuable consideration in excess of its out-of-pocket expenses directly related to the domain name”.  The Complaint goes on to quote the following passage from that e-mail:-

“M-POWER.NET is one of several domain names I have bought with the sole intention of reselling.  I have several offers to purchase.  If you would like to place a bid, I will consider your offer.”

(e) In a subsequent e-mail dated November 30, 1999, Respondent reiterated its intention to sell the domain name to the highest bidder, and that it would “allow the investment to mature further” until the price offered was acceptable.
(f) The following as further evidence of bad faith, namely that since November 30, 1999, the Respondent has not:-

(a) developed a Web site at this domain name;  or
(b) made any other good faith use of the domain name;  or
(c) made any good faith efforts to transact any business operations utilising the mark M-Power or any variation of those letters.

6. The Response

(a) The fact of the Complainant’s pending U.S. trade mark application is not disputed.

(b) The Respondent disagrees that the Complainant has any rights in or to the trade mark MPOWER.  A search conducted on March 13, 2000 has revealed no less than 20 pending or granted applications to register MPOWER or M-POWER as trade marks in the U.S.A., for a wide range of goods and services.

(c) There are apparently 5 other “mpower” or “m-power” domain names (including m-power.com registered to M-Power Corporation).  The Complainant has registered another domain name, “mpowercom.com”, which was registered on November 23, 1999.

(d) The Respondent has over the past 2 years actively developed the internet-related side of its business.  Specific reference is made to two sites it has been developing (one of which is “hotels.oz.com).  The Response then states:-

“Using its expertise in the travel industry and the templates, links and contacts created through the www.hotels-oz-com site, the Respondent plans to develop other travel and accommodation related websites for other travel companies/hotels.  The Domain Name was invented and registered on 18 May 1999 by the Respondent with the intention of developing a travel web and accommodation site.  The “m-power.net” site will be based on the hotels-oz site and use the same hotel listings as the hotels-oz site.  Once the hotels-oz site is fully active, the hotels-oz template will be adapted to cater for the “m-power.net” target audience, which is the independent (empowered) traveller.

Having developed websites which will be attractive to other travel and/or accommodation providers, the Respondent would be prepared to consider selling these sites, and the associated names, to other travel and/or accommodation providers, and the Respondent’s 23 November e-mail to the Complainant (received 22 November New York Time) merely reflects that commercial reality.

(e) The Complainant made the first approach to the Respondent on November 23, 1999 enquiring as to the availability of the domain name “m-power.net”.
 

7. Discussion

The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the ICANN policy, as follows:-

(i) the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;  and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name;  and
(iii) the domain name has been registered and is being used in bad faith.

As to the three elements set out in paragraph 4(a) the Panelist notes the following:-

(1) Identity of trade mark and domain name

The trade mark MPOWER is not visually identical to the domain name, but it is certainly confusingly similar.  It is not clear what rights the Complainant has in its pending U.S. trade mark application, given the large number of other granted and pending applications.

(2) Rights or legitimate interests

Since it appears that the Respondent registered the domain name “m-power.net” some 6 months before the Complainant applied to register the mark MPOWER and changed its corporate name, it is not possible to conclude that on the evidence before the Panelist the Respondent has no rights or legitimate interests in the domain name.

(3) Registration and use in bad faith

The Respondent is frank as to its willingness to sell the domain name at a price, and at one that will clearly be in excess of its out-of-pocket costs.  However, the Respondent’s stated purpose in adopting the domain name is unrelated to the Complainant’s business and cannot have been directed at the Complainant for the reasons set out in (2) above.  The Panelist finds that the Complainant has failed to demonstrate that the Respondent’s conduct is within any of the specific examples of registration and use of a domain name in bad faith set out in paragraph 4(b) of the Policy.

8. Decision

In the light of the findings in paragraph 7 above, the Panelist concludes that this dispute

is not within Paragraph 4(a) of the Policy, and that the domain name “m-power.net” shall remain registered to the Respondent.
Christopher Tootal
Panelist

Dated:  April 3, 2000