Xoft Inc. v. Name Administration Inc. (BVI)
Claim Number: FA0802001154179
Complainant is Xoft Inc. (“Complainant”), represented by Aaron
Hendelman, of Wilson Sonsini Goodrich & Rosati,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xoft.com>, registered with Domain Name Sales Corp.
The undersigned each certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as a Panelist in this proceeding.
Honorable William Andrews as Panelist, the Honorable James A. Carmody as Panelist, and Sandra J. Franklin as Panelist and Panel Chairperson.
Complainant submitted a Complaint to the National Arbitration Forum
On March 14, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 3, 2008 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
A timely Response was received and determined to be complete on
Complainant filed a timely Additional Submission on
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <xoft.com> domain name is confusingly similar to Complainant’s XOFT mark.
2. Respondent does not have any rights or legitimate interests in the <xoft.com> domain name.
3. Respondent registered and used the <xoft.com> domain name in bad faith.
B. Respondent makes the following assertions:
1. Respondent registered the <xoft.com> domain name prior to Complainant establishing rights in the XOFT mark.
2. Respondent has a legitimate right to use the <xoft.com> domain name in connection with the advertisement of adult material or “soft porn”.
3. Respondent was not aware of Complainant’s use of XOFT and therefore could not have registered in bad faith.
C. Additional Submissions
1. Complainant states in its Additional Submission that its mark XOFT is a coined mark with no suggestive meaning, that its rights in XOFT predate the domain name registration, and that Respondent’s use of <xoft.com> domain name is offensive. Complainant also reiterates that Respondent has engaged in a pattern of registering domain names containing the marks of others.
2. Respondent states in its Additional Submission that there have been 16 UDRP decisions in Respondent’s favor, that the term XOFT was conceived of by an Austrian party as early as 2000, and that Complainant had filed and abandoned Intent-to-Use trademark applications for XOFT more than once. Respondent also reiterates its use of <xoft.com> domain name as suggestive of soft porn.
The earliest trademark registration held by
Complainant for XOFT was filed as an Intent-to-Use application on
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order 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.
The relevant time for the determination of
whether or not Complainant has rights in a mark is the time that Respondent
registered the disputed domain name. See Decani Monastery v. Info-Bridge, FA
639116 (Nat. Arb. Forum April 7, 2006) (where the Panel in
its denial noted that the question to be answered is whether or not Complainant’s
rights existed at the time of Respondent’s domain name registration). In this case, Respondent registered the <xoft.com> domain name on
While Complainant could have demonstrated to the USPTO, or to this Panel, that it had established rights in the mark prior to December 2005, it did not. All of the evidence in the record suggests first commercial use of XOFT by Complainant beginning in 2005. See Saint Francis Hosp. and Med. Ctr. v. Registrant, D2006-0543, (WIPO June 19, 2006) (where the Panel found that no evidence was produced to support allegation of Complainant’s superior common law rights and denied the Complaint).
If the above is not enough, Respondent also
provided evidence of its back-order for the <xoft.com> domain name dated
For all of the above reasons, the Panel finds that Complainant has failed to satisfy Policy ¶ 4(a)(i) and its Complaint therefore fails, making it unnecessary to examine the remaining two elements of the Policy.
Having failed to establish the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Sandra J. Franklin, Panelist and Panel Chairperson
Honorable William Andrews, Panelist
Honorable James A. Carmody, Panelist
Dated: April 25, 2008
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