Two Mailing List Companies Fight Over Cyberspace

usdatacorp-b usadata

In the recent domain name dispute decision of USADATA, Inc. v. K2, Incorporated and US Data Corporation FA1307329 (Nat. Arb. Forum, April 1, 2010) a single member panel was faced with a dispute over the domains www.usdatacorporation.com and www.usdatawest.com. Complainant claims rights to the mark USADATA, which was registered on the Supplemental Register in 2002. Complainant maintains a web site at www.usadata.com. Respondent provided a response and both parties provided additional submissions.

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 Panel’s findings were as follows: (1) The disputed domain names were confusingly similar and Complainant had established it had sufficient common law rights to the mark USADATA.  (2) The Panel found that both parties established rights and legitimate interests in the disputed domain name, therefore noting that Complainant failed to prove up this element.

(3) The bad faith argument is what creates a particular interest in this decision. The Panel found that the evidence did not support Complainant’s assertion that the Respondent has registered the disputed domain names in bad faith nor used them in violation of Policy ¶ 4(a)(iii). Respondent made an argument that the doctrine of laches applied, since Respondent had used the domains for many years prior to this dispute. The Panel explained:

The Respondent asserts that the Complainant has waited five years before making any claim in respect to the disputed domain names, and although not a defense to a complaint brought under the policy, it should be considered by the Panel as evidence for Respondent in its considerations of the elements of the policy.  The Panel understands that the doctrine of laches is no defense but has chosen to consider Complainant’s long delay in asserting any rights to the disputed domain names as a factor against Complainant.  The Panel therefore finds that this evidence is relevant to a determination of whether or not Respondent has been able to build up legitimate rights in the domain name in the interim and whether or not Respondent was using the domain name in bad faith.

Ultimately, the Panel DENIED the request for transfer of the domains.

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