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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

White Pine Software, Inc. v. Desktop Consulting, Inc.

Case No. D2000-0539

 

1. The Parties

The Complainant in this proceeding is White Pine Software, Inc. (White Pine), of Nashua, New Hampshire, U.S.A.

The Respondent in this proceeding is Desktop Consulting, Inc. (Desktop Consulting), of Austin, Texas, U.S.A.

 

2. The Domain Name(s) and Registrar(s)

The domain name involved in this proceeding is CU-SEEME.NET.

The domain name registrar with whom the contested domain name was registered is Network Solutions, Inc. (NSI), of Herndon, Virginia, U.S.A.

 

3. Procedural History

On or about June 1, 2000, White Pine’s Complaint (the Complaint) was submitted for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (the Rules) and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). See Rules, Para. 3(b).

White Pine’s Complaint was received by the WIPO Arbitration and Mediation Center (the Center) in electronic format on June 1, 2000, and in paper form on June 6, 2000. It appears that White Pine made proper payment of the administrative fee, and that the Center did not note any failure to comply with formal filing requirements.

On June 5, 2000, the Center notified the registrar, NSI, that White Pine had filed its Complaint with the Center, and requested that NSI verify certain details regarding White Pine’s Complaint, and the registration and current status of the contested domain name. On June 6, 2000, NSI notified the Center: (i) that NSI received White Pine’s Complaint, (ii) that NSI is the Registrar for the contested domain name, (iii) that Desktop Consulting is the current registrant of the CU-SEEME.NET domain name registration, (iv) of Desktop Consulting’s contact details, (v) that the Policy applies to the contested domain name through application of NSI’s 4.0 Service Agreement in effect, and (vi) that the domain name registration CU-SEEME.NET is in "active" status.

On June 7, 2000, Desktop Consulting was properly notified of the filing of White Pine’s Complaint in accordance with the Rules, paragraph 2(a). Desktop Consulting was given until June 26, 2000 to file a Response.

From an interim exchange of e-mail communications among the Center and the parties, it appears that Desktop Consulting requested an additional 30-day period of time to respond to White Pine’s Complaint. White Pine, however, would only consent to an additional 10 days for Desktop Consulting to respond. Based upon White Pine’s limited consent, the Center granted Desktop Consulting until July 6, 2000, to file its Response.

It appears that White Pine’s Response was sent to and received by the Center in electronic form on July 6, 2000. The Response was received by the Center in paper form on July 11, 2000. The Panel deems Desktop Consulting’s Response to have been timely filed.

Both White Pine and Desktop Consulting elected to have this proceeding decided by a single member panel. On July 31, 2000, the Center contacted the undersigned to solicit interest in being the sole panelist who would decide this matter. After investigating and clearing potential conflicts of interest, the undersigned notified the Center on August 1, 2000 of the ability and availability to serve as the sole panelist for this matter. On August 3, 2000, the undersigned submitted to the Center a Statement of Acceptance and Declaration of Impartiality and Independence. Thus, the administrative panel for this proceeding was properly constituted.

On August 7, 2000, the Center forwarded to the undersigned the case file for this proceeding. On August 8, 2000, the Center notified the parties that the undersigned would be the sole Panelist to decide this matter.

 

4. Factual Background

White Pine claims ownership of the trademark CU-SEEME. White Pine asserts that this trademark was registered in the United States Patent and Trademark Office (USPTO) on July 2, 1996, by Cornell Research Foundation, Inc. (Cornell), and that Cornell assigned its interest and good will in the mark to White Pine on November 13, 1998. The assignment was recorded in the USPTO on or about January 21, 2000. While White Pine does attach a copy of the record of assignment of U.S. Registration No. 1,984,163 for the CU-SEEME mark to its Complaint, neither a copy of the registration certificate, nor an abstract thereof, were supplied to the Panel.

White Pine attached to its Complaint print-outs of portions of Desktop Consulting’s web site, operated under the URL http://www.cuseeme.net. Within Desktop Consulting’s web site, it concedes that the CU-SEEME trademark, formerly owned by Cornell, is now owned by White Pine.

White Pine claims that the CU-SEEME trademark is registered and used in connection with White Pine’s software program for video conferencing, which White Pine asserts that it markets and sells to businesses and educational institutions. Unfortunately, neither of these claims is supported by documented evidence or a verified statement from a White Pine officer or employee with knowledge of the facts. In short, the Panel does not have before it any evidence of the goods or services in connection with which White Pine’s CU-SEEME trademark is registered or used.

The domain name CU-SEEME.NET, except for the top-level ".net" extension, is identical to White Pine’s registered trademark. Respondent operates a web site with that domain name, where White Pine asserts that Desktop Consulting provides a downloadable free version of CU-SEEME video conferencing software without White Pine’s permission.

White Pine asserts that Desktop Consulting registered the contested domain name knowing that it was the registered trademark of Cornell. Desktop Consulting also is charged with knowledge since at least as early as January 21, 2000, that CU-SEEME is now owned by White Pine, both because of the constructive notice that the registration and recorded assignment provide, and as shown by the statement on Desktop Consulting’s web site that "CU-SeeMe used to be a trademark of Cornell University, but unfortunately is now a trademark of White Pine Software, Inc."

White Pine alleges that Desktop Consulting uses the contested domain name to provide a free downloadable version of CU-SEEME video conferencing software without White Pine’s permission, in violation of White Pine’s copyrights and in direct competition with White Pine. Further, White Pine’s web page operated under the contested domain name includes a link to a so-called "reflector scanner," which lists reflectors using Desktop Consulting’s unauthorized version of the CU-SEEME software. A "reflector" is a server application that redistributes video and chat to all the participants of a conference.

White Pine contends that Desktop Consulting’s unauthorized software has diverted customers away from White Pine’s products and undercut White Pine’s good will. Moreover, Desktop Consulting apparently has gained the sponsorship of at least one for-profit business, namely, CDNOW.COM, an online music retailer.

On its web site, Desktop Consulting is alleged to have repeatedly misrepresented White Pine’s intellectual property rights. On the home page of Respondent’s website, Respondent states that "CU-SeeMe is a registered trademark of Cornell Research Foundation, Inc.," although elsewhere on its web site Desktop Consulting concedes that the CU-SEEME mark is now owned by White Pine.

Also on its web site, Desktop Consulting claims that "Cornell [gave Desktop Consulting] ALL the rights to redistribute their software". White Pine contends this statement is plainly false, as the copyrights in "the software" now belong to White Pine. Moreover, White Pine contends, any license or permission Desktop Consulting may have had to distribute any version of CU-SEEME software has been revoked.

White Pine asserts that Desktop Consulting has not responded to White Pine’s attempts to resolve this dispute. On March 17, 2000, White Pine’s attorney sent a letter to Desktop Consulting at the address shown in the WhoIs database by certified mail, return receipt requested. In the letter, White Pine notified Desktop Consulting (a) that Desktop Consulting’s use of the CU-SEEME.NET domain name infringed White Pine’s registered trademarks [sic], violated the United States Anticybersquatting Consumer Protection Act, and violated the Policy, (b) that the copying and distribution of the CU-SEEME software infringed White Pine’s copyrights, and (c) that any license Desktop Consulting may have been granted to distribute CU-SEEME.NET software was expressly revoked by White Pine. White Pine’s letter was returned to Complainant stamped "unclaimed," with no signature on the return receipt.

Desktop Consulting denies that its Registration Agreement with NSI incorporates the Policy. Desktop Consulting was not made aware of the Registration Agreement or the Policy, as the application for registration of the contested domain name was submitted to NSI on Desktop Consulting’s behalf by a web hosting company, FrontHost Web Hosting Services (FrontHost).

Desktop Consulting asserts that it registered the CU-SEEME.NET domain name (making particular reference to the use of the ".net" suffix) in compliance with the March, 1994 RFC1592 of the ISI Network Working Group (J. Postel). However, as the first paragraph of this document states: "This memo does not specify an Internet standard of any kind." Further, Desktop Consulting concedes in its Response that this document "is not strongly enforced today."

Desktop Consulting’s Response provides a history of the genesis of the CU-SEEME software. According to Desktop Consulting, this software initially was developed at Cornell through the funding of the National Science Foundation (NSF). At some point in time, Cornell ceased development of the freeware version of the software, gave limited rights to White Pine to develop a commercial version of the software, and removed CU-SeeMe support pages from its web server.

Desktop Consulting’s ".net" usage of the CU-SEEME mark was chosen to create a web site supporting CU-SeeMe usage and communications among a user community by means of a Bulletin Board System (BBS). Desktop Consulting’s web site, allegedly, is operated as a not-for-profit hobby, and is composed of a network of "people helping people", which is not moderated or sponsored by any corporation. Desktop Consulting claims that its web site is a valuable resource to educational entities for research and other benefits, where these entities cannot afford the commercial version of the CU-SEEME software. Desktop Consulting denies that it is operating its web site under the contested domain name for profit.

Desktop Consulting asserts that a few of its members were actively involved in the development and support of the freeware version of Cornell University’s CU-SEEME software, as well as the commercial version of this software in which White Pine claims a copyright interest.

Contrary to White Pine’s contentions that Desktop Consulting refused to communicate with it to amicably settle the parties’ differences, Desktop Consulting attaches to its Response a number of e-mail communications in which it appears that the parties were attempting to resolve their dispute, without success (although the nature of the communications and to whom they were made is not entirely clear). Desktop Consulting also asserts that the letter from White Pine’s counsel was returned as unclaimed before a Desktop Consulting representative had an opportunity to retrieve the letter from its local U.S. Post Office.

Desktop Consulting contends that the downloadable version of the CU-SEEME software made available on its CU-SEEME.NET web site is the freeware version developed by Cornell from the expenditure of NSF (i.e., "public") funds, in which Cornell freely granted rights to the public (under certain conditions regarding copyright notices and authorship credit). Desktop Consulting further asserts that the downloadable version of the CU-SEEME software made available on its CU-SEEME.NET web site is not the commercial version in which White Pine claims copyright rights.

In support of the contention that it is commonly known to others by the designation CU-SEEME, Desktop Consulting submitted with its Response the results of a search engine inquiry submitted to a popular search engine, MetaCrawler, for the designation CU-SEEME. The Panel notes that the "hits" produced by the search engine inquiry produced URL links not only to Desktop Consulting’s web site, but to several web pages apparently associated with White Pine. Desktop Consulting also submitted several pages of its BBS entries showing the numerous communications the "community" operated by Respondent have made in association with the CU-SEEME.NET site.

 

5. Parties’ Contentions

Complainant

White Pine asserts that the contested domain name, CU-SEEME.NET, is identical or confusingly similar to White Pine’s registered trademark.

Desktop Consulting should be considered as having no rights or legitimate interests in respect of the domain name because the registration and assignment of the trademark entitle White Pine to exclusive use of the CU-SEEME mark in connection with video conferencing software. Moreover, CU-SEEME is not a name by which Desktop Consulting is commonly known or in which it has any trademark or service mark rights. White Pine asserts that Desktop Consulting is making an illegitimate commercial use of the contested domain name with intent to misleadingly divert consumers.

White Pine contends that Desktop Consulting registered and is using the contested domain name in bad faith, in deliberate violation first of Cornell’s trademark rights and now of White Pine’s trademark rights. White Pine further asserts that the contested domain name was registered and is being used primarily for the purpose of (a) profiting from White Pine’s software, (b) capitalizing on White Pine’s good will, and (c) creating confusion as to source, sponsorship, or affiliation by use of White Pine’s registered trademark.

Desktop Consulting allegedly registered and uses the domain name intentionally to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion as to source, sponsorship, affiliation, or endorsement of Desktop Consulting’s web site or location or of a product or service on Desktop Consulting’s web site or location. Respondent’s purported misrepresentations of White Pine’s intellectual property rights is alleged to have created further confusion as to those intellectual property rights. White Pine finally contends that Desktop Consulting either has failed to provide accurate information to NSI, or is deliberately refusing to recognize White Pine’s intellectual property rights. This purportedly perpetuates Desktop Consulting’s bad-faith use of the contested domain name.

White Pine requests that the Panel order the compulsory transfer to it of the contested CU-SEEME.NET domain name.

B. Respondent

Desktop Consulting denies that (i) the Policy is applicable to the parties’ dispute, (ii) the contested domain name, CU-SEEME.NET, is identical or confusingly similar to a trademark or service mark in which White Pine has rights; (iii) Desktop Consulting does not have rights or legitimate interests in respect of the contested domain name; (iv) CU-SEEME is not a name by which Desktop Consulting is commonly known, (v) the contested domain name was registered and is being used in bad faith, (vi) Desktop Consulting is distributing unauthorized software from its web site in violation of White Pine’s copyright rights, (vii) Desktop Consulting is operating the CU-SEEME.NET web site for profit and in competition with White Pine, and that (viii) Desktop Consulting deliberately failed to communicate with White Pine in an attempt to resolve the parties’ differences.

Desktop Consulting requests that the relief requested in White Pine’s Complaint be denied.

 

6. Discussion and Findings

Before discussing the merits of the parties’ dispute, the Panel first must dispense with Desktop Consulting’s challenge to jurisdiction, namely that the Policy does not apply to these proceedings. The grounds for Desktop Consulting’s challenge is that it was not made aware of the Registration Agreement or the Policy, as the application for registration of the contested domain name was submitted to NSI on Desktop Consulting’s behalf by the FrontHost web hosting company. Desktop Consulting’s jurisdictional challenge is without merit.

With its Response, Desktop Consulting submitted a copy of the application template FrontHost submitted on Desktop Consulting’s behalf with respect to the CU-SEEME.NET domain name. The applicant for the registration clearly is listed as Desktop Consulting. The agreement provided as part of the application template clearly shows that Desktop Consulting agreed to NSI’s dispute resolution policy then in effect; that NSI was and is free to change its dispute resolution policy at any time; and that Desktop Consulting’s continued maintenance of its domain name registration indicated its assent to any changes in NSI’s Dispute Resolution Policy. NSI’s response to the Center’s inquiry about this administrative proceeding indicates that the Policy applies to the contested domain name through application of NSI’s 4.0 Service Agreement, presently in effect.

The Panel thus finds that FrontHost acted as an authorized agent on behalf of an identified principal, Desktop Consulting, when it entered into the domain name registration agreement with NSI on Desktop Consulting’s behalf. As such, Desktop Consulting, which to this day appears to have maintained its registration agreement for the CU-SEEME.NET domain name with NSI since August 18, 1998, is bound by the terms of the NSI registration agreement and the Policy incorporated therein. Grimes v. Hagood, 27 Tex. 693, 694 (1864); National Novelty Import Co. v. Griffin & Griffin, 168 S.W. 85, 88 (Tex. Civ. App. 1914); Spence v. Griffin, 236 Va. 21, 29, 372 S.E.2d 595, 599 (1988); Restatement (Second) of Agency § 140 (1958).

Having determined that the Policy is applicable, transfer or cancellation of the contested domain name will be ordered if White Pine has shown that the following three elements are present:

(i) the contested domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the domain name registrant has no rights or legitimate interests in respect of the domain name; and

(iii) the contested domain name has been registered and is being used in bad faith.

In an administrative proceeding pursuant to the Policy, Rules and Supplemental Rules, the Complainant must prove that each of these three elements are present. Policy, Para. 4(a).

The following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the registrant registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or

(ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that it is shown that the registrant has engaged in a pattern of such conduct; or

(iii) the registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to his web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s web site or location or of a product or service on his web site or location.

Policy, Para. 4(b).

On the other hand, any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate the registrant’s rights or legitimate interests to the domain name:

(i) before any notice to the registrant of the dispute, his use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the registrant (as an individual, business, or other organization) have been commonly known by the domain name, even if the registrant has acquired no trademark or service mark rights; or

(iii) the registrant is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Policy, Para. 4(c).

The Panel finds, after its review of the parties’ submissions, that a number of factual and legal questions remain with respect to: (i) White Pine’s trademark or service mark rights in the CU-SEEME trademark; (ii) whether Desktop Consulting has genuine rights or legitimate interests in respect of the CU-SEEME.NET domain name; and (iii) whether Desktop Consulting has or has not registered or is using the contested domain name in bad faith. From the dearth of submissions made by Complainant, and the numerous exhibits and arguments submitted by Respondent, a full factual record has not been presented to the Panel such that a conclusive determination can be made regarding the parties’ respective claim of rights to the contested domain name.

The very limited scope of the proceedings had under the Policy does not provide for evidentiary discovery or detailed briefing — such as would be available in a United States District Court action for trademark or copyright infringement. Considering the conflicting claims made by the parties’ before the Panel, a greater evidentiary showing and legal briefing would be necessary for a full and fair determination of the parties’ rights.

For example, White Pine submitted evidence of the assignment of the CU-SEEME mark and U.S. Trademark Registration from Cornell to it. However, White Pine did not submit a copy of the registration certificate or at least a database abstract thereof. Further, White Pine did not submit any evidence showing its use of the CU-SEEME mark in connection with the software products at issue. Although White Pine’s mark and the contested domain name are nearly identical and/or confusingly similar, the Panel cannot determine the scope of White Pine’s rights or interests in the CU-SEEME mark.

oHH

On the other hand, Desktop Consulting has submitted considerable, albeit inconclusive, evidence to the Panel that: (i) before it received any notice of the parties’ dispute, Desktop Consulting had used and/or made demonstrable preparations to use, the contested domain name in connection with a bona fide not-for-profit offering of goods and/or services; (ii) Desktop Publishing may have been commonly known by the contested domain name, even if it did not acquire any trademark or service mark rights in the domain name; and/or (iii) Desktop Publishing has been making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the CU-SEEME trademark at issue.

Further, White Pine has not shown circumstances indicating that Desktop Consulting registered or acquired the contested domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to White Pine for valuable consideration in excess of Desktop Consulting’s documented out-of-pocket costs directly related to the domain name. White Pine also has not shown that Desktop Consulting has registered the contested domain name in order to prevent White Pine from reflecting the CU-SEEME mark in a corresponding domain name, or that Desktop Consulting has engaged in a pattern of such conduct. In fact, evidence Desktop Consulting submitted with its Response shows that White Pine has registered CU-SEEME as part of numerous and different domain names.

White Pine also has not shown that Desktop Consulting registered the contested domain name primarily for the purpose of disrupting the business of White Pine as a competitor. Finally, White Pine has not shown to the Panel’s satisfaction that Desktop Consulting has used the CU-SEEME.NET domain name to intentionally attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the White Pine’s CU-SEEME mark as to the source, sponsorship, affiliation, or endorsement of Desktop Publishing’s web site or location or of a product or service on its web site or location.

The circumstances of bad faith listed in paragraph 4 of the Policy are intended to be examples, and other facts could be submitted which, if shown to the Panel’s satisfaction, also could be considered as evidence of bad faith. Here, for example, had White Pine conclusively shown that it had copyright rights in the software being distributed as freeware on Desktop Consulting’s CU-SEEME.NET web site, and that Desktop Consulting was making this software available without White Pine’s permission, the Panel could have concluded that Desktop Consulting had registered and was using the CU-SEEME.NET domain name in bad faith. However, White Pine did not submit any such evidence, and Desktop Consulting has raised serious questions regarding the validity of Desktop Consulting’s copyright claims.

The Panel notes that White Pine did not submit a copy of its U.S. copyright registration certificate covering the software in question. This, at least, would have given facial support to White Pine’s claim of copyright ownership. Further, Desktop Consulting asserts that the software it makes available on its CU-SEEME.NET web site is authorized freeware, that was freely distributed to the public by Cornell before the project that created this software (with public funds) was shut down. Finally, members of Desktop Consulting have claimed copyrightable authorship interests not only in the CU-SEEME freeware distributed on their site, but also the commercial version of the CU-SEEME software in which White Pine claims a copyright interest.

In administrative domain name dispute proceedings had under the Policy, White Pine, as the Complainant, had the burden of proof. Policy, para. 4. White Pine did not meet its burden, and Desktop Consulting has raised serious questions regarding its rights and/or legitimate interests in the domain name. Under these circumstances, this Panel cannot grant the relief sought by White Pine in its Complaint. See, e.g., Inter-Continental Hotels Corp. v. Soussi, Case No. D2000-0252 (WIPO July 5, 2000); Fuji Photo Film Co. Ltd. v. Fuji Publ’g Group LLC, Case No. D2000-0409 (WIPO July 2, 2000); Document Techs., Inc. v. International Elec. Communications Inc., Case No. D2000-0270 (WIPO June 6, 2000); Vanguard Medica Ltd. v. McCormick, Case No. D2000-0067 (WIPO April 3, 2000); EAuto, L.L.C. v. Tripe S. Auto Parts, Case No. D2000-0047 (WIPO March 24, 2000); Credit Management Solutions, Inc. v. Collex Resource Management, Case No. D2000-0029 (WIPO March 17, 2000).

 

7. Decision

For the foregoing reasons, White Pine’s request that the Panel order the transfer of the CU-SEEME.NET domain name is DENIED.

 


 

Jonathan Hudis
Sole Panelist

Dated: August 31, 2000

 

Источник информации: http://www.internet-law.ru/intlaw/udrp/2000/d2000-0539.html

 

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