In the recent case of DRB Systems, Inc. v. Lycos, Inc., (Nat. Arb. Forum 1219769, Oct. 9, 2008) a Panel was faced with a determination regarding the domain of www.sitewatch.com. The Complainant owns a registered trademark for SITEWATCH, registered on August 31, 1999, with rights dating back to November 24, 1997. The Complainant appears to offer a computer management system for car washes and quick lubes. The Complainant maintains a website located here. However, the Respondent asserts that the domain was registered in April of 1996.
The Panel addressed the preliminary procedural issue of a deficient additional submission from the Complainant. As explained in Supplemental Rule 7 of from the National Arbitration Forum, parties have specific deadlines to submit an additional submission. The Panel explained that Complainant was deficient in this respect, and that Respondent did provide an additional submission timely. However, the Panel noted, that a preference of substance over procedure caused the Panel to review the materials anyway. Regardless, the Panel noted that the result of the decision would not have changed based upon these additional submissions.
Moving on to the substantive arguments, the Panel explained:
Respondent does not dispute that its <sitewatch.com> domain name is identical to Complainant’s mark. However, Respondent does contend that Complainant’s trademark rights do not predate Respondent’s domain name registration. Some Panels have held that Policy ¶ 4(a)(i) requires that Complainant’s trademark rights predate Respondent’s domain name registration in order to satisfy the Policy….However, this Panel disagrees with that line of reasoning.
As a result the Panel found that the domain was identical or confusingly similar. The Panel next addressed whether the Respondent had any rights or legitimate interests in the domain. The Panel made specific findings, which included that Respondent was not commonly known by the disputed domain and that the disputed domain was not comprised entirely of generic terms. The Panel went further and explained:
Complainant contends that Respondent is using the <sitewatch.com> domain name to operate a website that features sponsored links to advertisements for various commercial websites. Moreover, Complainant contends that from 1996 until 2007, Respondent did not use the disputed domain name for any purpose. However, the Panel finds that Complainant has not shown that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)….The Panel finds that Respondent made a showing of rights to or legitimate interests through registration that was prior to Complainant’s registration of the mark and through bona fide use that was not shown to compete with Complainant or limit Complainant’s ability to use its mark in a domain name….Further, coupled with Respondent’s registration [of the domain] prior to the date of Complainant’s registration of the [trade]mark, Complainant has not shown that Respondent’s use is directed at diverting those who would seek Complainant’s services to Respondent’s own services or toward preventing Complainant from using a domain name to promote its own business efforts.
The Panel found that Complainant failed to satisfy the second element of the ICANN policy. The Panel still chose to review the final element of the ICANN policy, namely whether the domain was registered and used in bad faith. One of the often cited reasons for proving bad faith is whether the domain owner offered to sell the domain. In this case, the Panel found that both parties made allegations regarding the offer of sale regarding the domain, and that there was not enough evidence present to make a finding of bad faith based on that fact alone. The Panel went further to explain:
Complainant did not show that Respondent’s manner of use competes with Complainant or that it will likely lead to confusion among Internet users as to Complainant’s sponsorship of or affiliation with the resulting website. While, as Complainant contends, such use may support findings of bad faith registration and use pursuant to Policy ¶ 4(b)(iv), Complainant did not establish this.
Ultimately, the Panel DENIED the Complainant’s request for transfer or cancellation.
