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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Paging Network Inc. v. Network Installation Computer Services, Inc.
WIPO Case No. D2001-0543
1. The Parties
Complainant is Paging Network, Inc. (Paging), a Delaware corporation with its principal place of business in Westboro, Massachusetts, U.S.A.
Respondent is Network Installation Computer Services, Inc. (NICS), a corporation with an address c/o Scott Moulton, NIC Services, 208 Carmichael Road, Woodstock, Georgia 30188, U.S.A.
2. Domain Name and Registrar
The domain names in issue are:
The registrar is Network Solutions, Inc. (NSI).
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received Paging’s Complaint via email on April 13, 2001, and in hard copy on April 18, 2001. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). Paging made the required payment to the Center. The formal date of the commencement of this administrative proceeding is April 23, 2001.
On April 18, 2001, the Center transmitted via email to NSI a request for registrar verification in connection with this case. On April 19, 2001, NSI transmitted via email to the Center NSI’s confirmation that (1) NICS is the registrant of the domain names in issue, (2) the Policy applies to the domain names, and (3) the domain name registrations are in "active" status.
On April 23, 2001, the Center transmitted to NICS Notification of Complaint and Commencement of the Administrative Proceeding, together with a copy of the Complaint, via post/courier and via email. The Center advised, inter alia, that the response was due by May 12, 2001, and pointed out the response should be in accordance with specified rules.
The Center received NICS’s response via email on May 11, 2001, and in hard copy on May 21, 2001.
On May 22, 2001, the Center advised the parties via email of the appointment of David W. Plant as sole Panelist, and that the decision was due June 5, 2001.
4. Factual Background; Parties’ Contentions
a. The Trademark
The Complaint is based on the mark PAGENET.
Paging, who refers to itself as PageNet in the Complaint, avers that it is "a leading two-way Internet messaging and mobile information company," and since "as early as 1981, ... has been in the business of providing paging and mobile telephone service throughout the United States, and more recently throughout Canada, the Caribbean, Mexico and Puerto Rico." Paging asserts its current business includes "providing wireless messaging, wireless e-mail and wireless data services throughout these same territories," and offering "these services ... by a variety of means, including, but not limited to web sites on the global computer network, such as pagenet.com and pagenetmessage.net."
Paging avers it owns U.S. and foreign trademarks and service marks, as well as registrations for them, relating to its paging and mobile telephone services business. Paging has registered on the Principal Register in the United States Patent and Trademark Office (USPTO) the following marks (Exhibit C to the Complaint):
July 12, 1983
Mar. 13, 2001
June 1995 (Footnote 1)
PAGENET NATIONWIDE (Stylized)
Nov. 29, 1994
Oct. 28, 1993
Aug. 11, 1998
PAGENET IN TOUCH AND INGENIOUS
Oct. 21, 1997
Oct. 16, 1995
PAGENET IN TOUCH NATIONWIDE AND INGENIOUS
Oct. 21, 1997
Nov. 6, 1995
Paging asserts it owns numerous domain names, including pagenet.com, registered August 11, 1994, pagenet.net, registered May 21, 1995, and pagenetmessage.net, registered March 4, 1999. Copy of WHOIS information for these domain names is at Exhibit D to the Complaint.
Paging avers its marks and domain names are "recognized by the public and the industry as originating from a single source," and the marks and domain names "serve to distinguish Complainant’s services from the service of others." Paging asserts that through its efforts and high standards it has acquired and enjoys "substantial goodwill and a valuable reputation through Complainant’s distinctive Marks." Paging avers it has expended "a significant amount of time and money to advertise and promote Complainant’s services through its distinctive Marks, including, without limitation, via web sites associated with Complainant’s Domain Names."
Paging contends the domain names in issue infringe Paging’s rights in its marks and its prior-registered domain names.
In addition, Paging avers:
"On or about March 4, 1999, Complainant registered the domain name at issue in this preceding [sic] -- pagenetmessage.com. Due to internal administrative oversights, Complainant’s registration inadvertently lapsed."
b. The Complaint Re Respondents’ Activities
Paging avers that, on November 20, 2000, it became aware the pagenetmessage.com domain name "had been registered, and was being used, by" NICS. Paging avers it contacted NICS by email on November 21, 2000. Paging avers NICS replied: "I am willing to sell the domain ... it is worth $5,000." Copies of this exchange of emails appears at Exhibit E to the Complaint.
Although not entirely clear, it appears from the Exhibit E email messages (as reconstructed and transmitted by Paging to its counsel March 16, 2001), that, on November 20 and 21, 2000, the following occurred:
On November 20, Paging’s David R. Schmersahl, Director of Business Development, emailed NICS at <email@example.com>, asking, "How can I contact you?" This email address apparently appeared on NICS’s website at the pagenetmessage.com address. The NICS website apparently stated as of November 2000, (Exhibits F and I to the Complaint):
"This is a service that can forward all emails to any specific person, email, phone or pager for a fee of $10 per montH.
"For more information please email firstname.lastname@example.org.
"This company is in no way related to PageNet, Inc. out of Texas."
On November 20, NICS emailed Paging’s Schmersahl, advising inter alia:
"You can buy a name from us and if you move from ISP to ISP you will not have to change your email address or where it is forward [sic] to. We have several names to choose from, two of which are:
On November 21, NICS emailed Schmersahl again, stating inter alia:
"Little did I know that when I bought the domain I would start receiving a thousand messages and eating up my bandwidth. ... [The domain name] is a little worthless for my needs. I called and talked to sales and they were not intrested [sic] in the domain when I told them about my problem with it and that I was reciving [sic] all these messages intended for Pagenet." ... As I have spent time and have an investment in this I can no longer use I am willing to sell the domain. At this point with the time I have in it, it is worth $5000. ... Are you the right person to talk to?"
On November 21, Schmersahl emailed to NICS:
"Yes, I would be the correct person, let me do some research and I will give you a call."
Paging avers that, on November 22, 2000, Paging’s attorneys sent a cease and desist letter to NICS with regard to the pagenetmessage.com domain name. A copy of the letter appears at Exhibit F to the Complaint.
Paging avers that, on January 25, 2001, in-house attorneys for Paging sent another cease and desist letter to NICS. A copy of the letter appears at Exhibit G to the Complaint.
Paging avers that, on March 13, 2001, NICS’s attorney responded by offering to "settle this dispute by transferring the domain to [Complainant] ... for $10,000." A copy of the response is at Exhibit H. The Exhibit H letter to Paging’s counsel refers to the dispute over "pagenetmessage.com domain name" and states in part:
"...a representative of your client, David Schmersahl, has contacted me directly. According to Mr. Schmersahl, you advised him to call me directly to attempt to find a business solution to the dispute between our clients. I told Mr. Schmersahl that my client would also like to find a business solution to this dispute and, as an offer of settlement would sell the domain name for $10,000. Mr. Schmersahl requested that my client provide some justification for this amount. ...
"I have discussed my conversation ... with my client. My client feels no need to justify his demand. He wishes to settle this dispute, be compensated for his time and trouble in developing his site and avoid legal fees and feels he has made a good faith offer to settle this dispute. He has authorized me to continue settlement discussions with you and/or your client and also to reconvey his offer to settle this dispute by transferring the domain name to your client for $10,000.
"Please note that this letter contains an offer in settlement and therefore is not admissible as evidence in any trial, hearing or other court proceeding."
Paging states that thereafter it commenced this proceeding
Paging avers NICS’s two domain names are confusingly similar to Paging’s marks and domain names. Paging asserts its federally registered mark PAGENET is the only distinctive component of the domain names. Paging points to NICS’s November 21, 2000, email message, in which NICS asserts it received "thousands of [email] messages intended to Pagenet." Paging urges that the disclaimer on NICS’s November 22, 2000, web site indicates that NICS recognized the confusing similarity with Paging’s marks.
Paging asserts NICS has no rights in the domain name pagenetmessage.com (Footnote 2) for at least four reasons: (1) NICS charges a monthly fee for services similar to those provided by Paging free of charge (thus, customers may have actually paid, or have been led to believe they would have to pay, for "the service" as a result of visiting NICS’s web site), (2) NICS does not offer goods or services for Paging and is not related to Paging, (3) NICS’s domain names pagenetmessage.com and pagenetmessaging.com were registered on November 9 and 14, 2000, almost 20 years after Paging’s first use of the PAGENET mark, 17 years after the PAGENET mark was registered with the USPTO, almost six years after Paging registered and used its pagenet.com domain name, and one and one-half years after Paging regularly began using its pagenetmessage.net domain name.
Paging asserts the two NICS domain names should be considered as having been registered and used in bad faith for at least four reasons: (1) NICS’s selection of the two domain names was "calculated to trade off the good will" of Paging’s marks and web site, i.e. NICS "intentionally attempted to attract for financial gain" Internet users to Network’s web site by creating a likelihood of confusion with Paging’s domain names and marks, (2) NICS registered the two domain names "to prevent the owner of the [mark] from reflecting its Mark in a corresponding domain name," (3) NICS "should have been on notice" that Paging was using the domain names and marks; it was NICS’s duty to determine if there were any infringement or violation of third party rights; accordingly, NICS acted irresponsibly and in bad faith, and (4) by offering to sell the domain name pagenetmessage.com for an amount exceeding the costs to obtain it, NICS provided further evidence of bad faith registration and use of pagenetmessage.com.
Paging requests that the Panel determine that the two domain names in issue be transferred to Paging, or in the alternative, the registrations for the two domain names be canceled.
The Complaint concludes with the requisite certification as to completeness and accuracy and is signed by NICS’s counsel.
c. The Response
1. Identity or Confusing Similarity
NICS asserts the domain names and "the trademark" are not identical. NICS contends the three words "page", "net" and "message" are common words in the English language and in computer terminology. NICS cites seven other domain names that include the term "pagenet", including "page.net" assertedly owned by a non-party.
NICS asserts "The domain name is not identical or confusingly similar." (Footnote 3) NICS elaborates on how common the terms "net" and "page" are in the Internet world. NICS continues:
"We use common variations of the common words when searching for domains for our business or our customers. My understanding is that PageNet, Inc is using pagenet.net as it’s [sic] primary web page and we are using pagenetmesaage.com for an ecommerce page to sell Palm Pilots and other types of communication devices. I own and use dozens of domains. One domain name is PageNetworkInstallation.com. PageNet, Inc. made it clear that they would want this domain too as it has ‘page’ and ‘net’ components in the name. We use this domain to page our own employees and our clients use it to page us as well. What is to stop them from taking any domain that uses the words ‘page, ‘net’ or ‘message’ in the name? I am sure they will be filing a dispute on the pagenetworkinstallation.com as soon as they read this response. (Footnote 4)
"The Domain pagenetmessage.com was registered with the idea of using the domain for messaging. NICS is already running services like this for 50 other companies or more routing email, pages, voice mail, Palm Pilot mail, etc. We also own about 100 domain names, some we register for our customers when requested and others for different business ventures that NICS owns and is doing business with."
NICS asserts that the Complaint quoted the November 2000 emails out of context. NICS avers:
"I had no plans to sell the domain and would still like to keep and use the domain if PageNet, Inc would stop forwarding thousands of emails to my server."
In connection with this averment, NICS quotes in part from its November 21, 2000, email.
"These messages NICS was receiving were being forwarded by PageNet, Inc.’s service to NICS servers and were causing havoc because there were so many messages that they bombarded my systems and initially caused them to crash. I had to acquire new equipment and more bandwidth to accommodate the extra data that PageNet was firing at NICS servers."
NICS asserts it received harassing calls from Paging employees: "At one point we got 10 harassing phone calls a day." NICS quotes also from portions of Paging’s counsel’s "threatening" letter of November 22, 2000, demanding that NICS cease and desist.
"As I own and use the domain pagenetworkinstallation.com also, they made it clear that they would want this domain too and were only going to give me $35 for each name. They began to try to intimidate me with their harassment. This made it very clear that a lawyer was needed and has cost me money to procure and protect myself.
"I was making it clear I would sell the domain to them because they were sending thousand [sic] of messages to my domain and it was difficult to tell what is new mail. I made an effort to make sure that when people went to my web page that they were aware that I was not related to PageNet Inc. ... I had hopes [the disclaimer at the web page] would stop the harassing phone calls and bombardment of emails however that apparently didn’t work. People at PageNet are still looking up my phone number from the Whois page and calling me to harass me from PageNet, Inc. I know this because it states PageNet on the Caller ID.
"By PageNet, Inc.’s own admission they did not pay their bill and the domain slipped away from them. .... I do not see how this is different than any other kind of repossession. If the Complainant did not pay their phone bill or car payment they would be reposed [sic] and resold to the next person that wanted it."
2. Rights or Legitimate Interest
NICS claims it has "as much right to purchase domain names that are for sale as anyone does." NICS avers:
"I am building an ecommerce sites [sic] for the sale of messaging devices, which I already sell. ... These items relate to my business and are very common in the computer industry. I do not believe that this makes NICS a competitor, as NICS does not sell the type of paging systems that PageNet, Inc sells and mainly focuses on routing messages."
NICS states "None" in response to Paging’s averment that NICS does not offer goods or services for PAGENET nor is NICS related to Pager.
NICS asserts it owns many different businesses and many domain names related to other businesses "we work in such as NTInstallation.com and NTInstall.com. We do own pagenetworkinstallation.com and the shorter version pagenetmessage.com. ... [Paging] could not possibly know what interests I have or business I own or why I purchase domain names.
"Even though PageNet claims usage of the trademark PageNet for twenty years, it waited until March 2001, to register it as an international trademark class 38. As I am using pagenetmessage.com as Pager and Network Messaging Service I am not infringing on the trademark and I have no knowledge as to when or what PageNet, Inc. has purchased or when. Had we done an International trademark search at the time we not have [sic] found PageNet, Inc. as it was not trademarked an [sic] International Class 38 until March 2001, coincidentaly [sic]."
3. Bad Faith Registration and Use
NICS claims it has not profited "off of PageNet." Further:
"It has only cost me money to handle the volume of 3000 messages being forwarded from PageNet, Inc. services to my network. The bandwidth usage has cost me $1800 a month on my T1 lines. I have spent half of the money on the bandwidth alone from the messages PageNet, Inc is firing at me costing me almost $13000 so far not including my legal bills."
NICS claims inter alia:
"I could not have done anything to prevent PageNet from using their own domain names or the use of it Trademark [sic] and do not wish to do so. I also do not see that NICS is a competitor of PageNet, Inc. According to the use of ‘bad faith’ I would have to be a competitor and trying to take business away or block them from their business or making money off of PageNet in some way and this is not the case."
NICS iterates that if "we had done an International trademark search at the time we not have [sic] found PageNet, Inc. as it was not trademarked an International Class 38 until March 2001, coincidentaly [sic]."
Finally, NICS asserts:
"PageNet, Inc. has no idea how much money NICS has spent on this domain name including but not limited to the more than $13000 on bandwidth, marketing, printing, business cards and graphics setting up the company, Lawyers bills, time absorbed but the harassing phone calls, server down time or anything for that matter [sic]."
NICS requests the Panel to leave the registration of the two domain names in issue "in the ownership of Scott Moulton of Network Installation Computer Services, Inc."
The response concludes with the requisite certification as to completeness and accuracy and is signed by Scott Moulton, NICS’s President.
5. Discussion and Findings
Paragraph 4.(a) of the Policy directs that Paging must prove, with respect to each domain name in issue, each of the following:
(i) The domain name is identical or confusingly similar to a mark in which Paging has rights, and
(ii) NICS 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.
Paragraph 4.(b) of the Policy sets out four illustrative circumstances, any one of which, if proved by a Complainant, shall be evidence of a Respondent’s registration and use of a domain name in bad faith under Paragraph 4.(a)(iii).
Paragraph 4.(c) of the Policy sets out three illustrative circumstances, any one of which, if proved by Respondent, shall demonstrate Respondent’s rights or legitimate interests to the domain name for purposes of Paragraph 4.(a)(ii).
a. Identity or Confusing Similarity
Paging has the burden of proving this element and each of the other two elements of Paragraph 4.(a) of the Policy. It is especially important in a situation where credibility is at issue that a Complainant meet its burden of proof.
At the outset, it is beyond dispute that, under United States law, Paging has rights in the mark PAGENET. PAGENET is the subject of a registration on the Principal Register of the USPTO. The registration issued almost 19 years before NICS registered the two domain names. On this record, it is fair to infer that Paging’s rights in the mark are incontestable under 15 U.S.C. §1065.
Paging contends that its mark PAGENET (as well as marks embodying PAGENET) and NICS’s domain names are confusingly similar. Paging points to PAGENET as the distinctive feature of the domain names. Ample authority supports the proposition that the addition of a suffix such as "message" or "messaging" does not detract from the similarity between PAGENET and the two domain names, or from the confusing character of that similarity. E.g. State Farm v. LaFaive, NAF FA 95407 (2000), Chanel v. Estco, WIPO Case No. D2000-0413 (2000), and Toshiba v. Distribution Purchasing, WIPO Case No. D2000-0464 (2000).
In addition, NICS asserts that it has received thousands of messages at its pagenetmessage.com web site that were intended for Paging. NICS asserts that Paging itself flooded NICS’s web site with these messages. The Panel has no way of testing the credibility of NICS’s naked assertion as to flooding by Paging. NICS has submitted no evidence in support of this assertion. Notwithstanding that the Panel is tempted to find the flooding assertion implausible (the thousands of visits appear to have occurred in a six day period commencing with the activation of the site, infra), the Panel will give no weight on this aspect of confusing similarity to NICS’s assertion as its receipt of thousands of messages.
Paging contends that the disclaimer at the NICS pagenetmessage.com site evidences NICS’s awareness of potential confusion. NICS does not directly challenge this contention. Rather, NICS asserts it displayed its disclaimer (1) "to make sure" visitors were aware "I was not related to PageNet, Inc.," and (2) in hopes the disclaimer "would stop the harassing phone calls and bombardment of emails."(Footnote 5) This NICS assertion supports the inference that NICS was aware of both Paging and the potential for confusion.
In light of the foregoing, on this record, the Panel finds that Paging has carried its burden of proof as to Paragraph 4.(a)(i).
b. Rights or Legitimate Interests
Paging has demonstrated with competent evidence (1) Paging’s ownership of the PAGENET mark, (2) the validity of the mark, (3) the incontestability of the validity of the mark and Paging’s exclusive right to use the mark, (4) the value of the mark to Paging, (5) Paging’s continuous use of the mark since 1981-- before NICS registered the two domain names, and (6) the lack of any authorization by Paging of NICS’s use of the domain names.(Footnote 6)
Paging’s assertions as to fees charged by NICS for services it offers through its web sites is not relevant to the issue of NICS’s rights or legitimate interests.
Also, the fact that Paging permitted its registration for one of NICS’s domain names (pagenetmessage.com) to lapse, even if inadvertently, does not cut in Paging’s favor. Paging attributes this inadvertence to "administrative oversights" -- hardly a complete or persuasive recounting of what in fact occurred. Although the Panel cannot ascribe to Paging an intent to abandon the registration for all time, Paging’s alternative request for relief in this proceeding (i.e. cancellation of the domain names in issue) arguably suggests that Paging does not regard ownership of the two domain names as of material importance to it. This, however, does not cast revealing light on NICS’s rights or interests in the domain names in issue vis a vis Paging’s PAGENET mark.
On this record, the question as to rights and legitimate interests resolves to the issue of whether or not NICS has any rights or legitimate interests in either of the two domain names in light of Paging’s prior, exclusive rights to the PAGENET mark. On this score, NICS has not attempted to bring itself within any of the three illustrative circumstances of Paragraph 4.(c). NICS’s generalities as to (1) having a right to purchase domain names that are for sale, (2) building ecommerce sites for the sale of messaging devices, (3) selling allegedly different types of paging systems from those sold by Paging, and (4) its ownership of many business and many domain names, including pagenetworkinstallation.com, are not persuasive with respect to any right or legitimate interest NICS has in utilizing the PAGENET mark, as to which in the United States Paging has conclusively exclusive rights. Further, while NICS asserts its right to use pagenetmessage.com, NICS does not address in any way any right to use pagenetmessaging.com.
On this record, the Panel is constrained to find that Paging has carried its burden of proof with regard to Paragraph 4.(a)(ii) as to both domain names in issue.
c. Registration and Use in Bad Faith
In appropriate circumstances, bad faith registration and use of a contested domain name can be inferred from circumstantial evidence. Both registration in bad faith and use in bad faith must be proved by Paging.
The evidence here approaches satisfying both Paragraph 4.(b)(i) and 4.(b)(iv). Neither subsection of Paragraph 4.(b) is entirely satisfied on this record. But when taken as a whole in light of those two subsections, the evidence leads to the inference that NICS indeed did register and has used the domain names in bad faith.
The analysis with regard to bad faith registration is substantially the same for the two domain names. The analysis with regard to bad faith use differs for each of the two domain names.
Apparently, Paging’s registration of the domain name pagenetmessage.com lapsed before early November 2000. On November 14, 2000, NICS registered that domain name. (On November 9, 2000, NICS had registered pagenetmessaging.com.) It appears that by November 20, 2000, the pagenetmessage.com site was up and running. NICS has submitted no specific evidence of the state or character of NICS’s business as of November 2000. NICS’s averments, unsupported by any contemporaneous documents, as to various business activities stand uncluttered by clarifying references to time or relevant specifics. For example, NICS avers that this specific domain "was registered with the idea of using the domain for messaging."(Footnote 7) Immediately following the "idea" assertion, NICS describes activities as of the date of its response in this proceeding, viz. "NICS is already running services ...". In addition, NICS refers inter alia to "some we register for our customers," "NCIS owns and is doing business with," "As I own and use," "I am building an ecommerce sites," and "we work in such as NTInstallation.com."
None of NICS’s generalities as to its alleged business activities demonstrates the absence of bad faith at the time NICS registered the two domain names in issue. On the contrary, their very vagueness implies that specificity would not benefit NICS. This implication is buttressed by events subsequent to NICS’s registrations of the two domain names.
NICS’s asserted inability to handle the thousands of visits to the pagenetmessage.com site -- which apparently occurred in a matter of a handful of days (i.e. between November 14 and November 20) -- suggests strongly that NICS simply had no viable message forwarding or other service associated with that site.
Further, NICS offered to sell that specific domain name, first for $5,000 and then for $10,000. This confirms that NICS had no viable business associated with the site. In addition, at minimum, the offers to sell the single site for those sums suggest that, if NICS did not acquire the domain name in order to sell it at a substantial profit, it took only a matter of days for NICS to recognize the sale of the domain name presented an attractive business opportunity -- apparently far more so than trying to build and operate the site. Finally, NICS’s offer at the site of message services, for a $10 monthly fee, plainly shows that NICS’s intended use of the site was for commercial gain, and very likely based on NICS’s intent to attract Internet users to the NICS site by creating a likelihood of confusion.(Footnote 8)
In contrast to the focus on NICS’s activities with respect to pagenetmessage.com, the submissions of the parties are silent as to any use of by NICS of the pagenetmessaging.com. domain name. As already noted, this record provides no basis for finding that NICS registered the "messaging" domain name without bad faith. NICS’s use of this domain name appears to have been entirely passive. Under authority such as Telstra v. Nuclear Marshmallows, WIPO Case No. D2000-0003, it is fair to infer that NICS’s passive use has been in bad faith, viz. (1) Paging’s rights in the PAGENET mark are conclusively exclusive, (2) Paging first used the mark 20 years before NICS’s registration of both domain names in issue, (3) NICS has provided no evidence of actual or contemplated use of the "messaging" domain name, (4) NICS was unable to cope with the number of visits to the site of the similar "message" domain name, and (5) taking into account all of the assertions by the parties and the documentary evidence provided by Paging, it is inconceivable that NICS could design and initiate an active use of the "messaging" domain name that would not be illegitimate.
The Panel finds that Paging has carried its burden of proof with respect to Paragraph 4.(a)(iii).
In light of the findings by the Panel, the Panel decides that Paging has met its burden of proof with respect to each of the three elements of Policy, Paragraph 4.(a).
Accordingly, the Panel requires that the registrations of the domain names <pagenetmessage.com> and <pagenetmessaging.com> be transferred to Paging.
The Panel declines to order that the registrations for the two domain names be canceled.
David W. Plant
Dated: May 31, 2001
1. Paging avers first use is claimed as May 1, 1995. The copy of the TESS printout at Exhibit C states first use was "19950600". (back to text)
2. This overall assertion is not expressly directed to pagenetmessaging.com, except in connection with the third reason set out below. (back to text)
3. NICS does not identify the specific domain name or that to which it is being compared. (back to text)
4. The repeated use of the first person in much of the response is consistent with the response having been signed by Scott Moulton, President of NICS. (back to text)
5. The latter purpose does not ring true. It is difficult to imagine why the disclaimer would deter Paging from the alleged flooding NICS attributes to Paging. (back to text)
6. NICS’s assertion that Paging did not register the PAGENET mark "as an international trademark Class 38" until March 2001, if true, is not relevant here. Paging’s U.S. registration is, under U.S. law, conclusive evidence of the validity of the mark and Paging’s exclusive right to use it. (back to text)
7. The printout of the page at the site as of November 22, 2000, asserts that the "Pager Network Messages" service "can forward all emails to any specific person ... for a fee of $10 per month." NICS has provided no evidence that such a service was in fact in place and operating. On the contrary, NICS contends that it was unable to utilize the pagenetmessage.com site because of the alleged flooding by Paging. (back to text)
8. It was only after an Internet user visited the site that the user saw NICS’s disclaimer. The disclaimer did nothing to dispel initial confusion. (back to text)