Digitallogic.com

The timeline behind digitallogic.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

DECISION Digital-Logic AG v. Malik Krechman Claim Number: FA0402000235827 PARTIES Complainant is Digital-Logic AG (“Complainant”), represented by Michele Caratsch, of Haymann & Baldi, Zeltweg 44, Postfach 1622, Zurich, Switzerland-8032. Respondent is Malik Krechman (“Respondent”), P.O. Box 360335, Brooklyn, NY. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <digitallogic.com>, registered with Bulkregister.com. PANEL The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding. James A. Carmody, Esq., as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on February 5, 2004; the Forum received a hard copy of the Complaint on February 10, 2004. On February 5, 2004, Bulkregister.com confirmed by e-mail to the Forum that the domain name <digitallogic.com> is registered with Bulkregister.com and that Respondent is the current registrant of the name. Bulkregister.com has verified that Respondent is bound by the Bulkregister.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy"). On February 19, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 10, 2004 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@digitallogic.com by e-mail. Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default. On March 25, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant makes the following assertions: 1. Respondent’s <digitallogic.com> domain name is confusingly similar to Complainant’s DIGITAL-LOGIC mark. 2. Respondent does not have any rights or legitimate interests in the <digitallogic.com> domain name. 3. Respondent registered and used the <digitallogic.com> domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, Digital-Logic AG, is the owner of the DIGITAL-LOGIC mark, which it registered in the United States on the Supplemental Register of the U.S. Patent and Trademark Office (“USPTO”) on April 2, 2002 (U.S. Reg. No. 2,557,420 filed on April 8, 1999). Under the DIGITAL-LOGIC mark, Complainant develops, produces and distributes computer hardware and software for use as an embedded operating system. Complainant claims to have made continual use of the mark since 1992. On December 29, 1996, Complainant registered the <digitallogic.ch> domain name for use with its business. After over a year of negotiations, Complainant was then able to purchase the domain name registration for the <digitallogic.com> domain name from MicroScientific.Inc., owner of the domain name registration since January of 1999, for $10,000. The tranfer of this sum was made to EchoStar Network Solutions, Inc., one of the administrative and technical contacts for the <digitallogic.com> domain name, on July 11, 2000. The domain name was consequently transferred to BulkRegister as the new registrar, and Dr. Emad Krechan (the second administrative and technical contact for the <digitallogic.com> domain name) made the domain name available for Complainant’s use. Complainant then proceeded to use the domain name for its business for the next three and a half years. On January 14, 2004, Complainant was informed by BulkRegister that the <digitallogic.com> domain name registration had been renewed (without Complainant’s knowledge or authorization) on January 13, 2004, and that the only available contact listed for the domain name registration was “forlease@digitallogic.com.” Complainant was subsequently informed by BulkRegister that Network Division, Inc., an entity of which Complainant had never heard of or dealt with prior to this incident, had made the renewal on behalf of Complainant. Complainant attempted to contact Network Division, Inc., without success, and soon noticed that the DNS entries for the <digitallogic.com> domain name had been changed to <networkdivision.com> on January 22, 2004, again without Complainant’s approval. By January 24, 2004, Complainant’s website at the <digitallogic.com> domain name had been deactivated and was no longer accessible by Internet users. All of Complainant’s e-mail communications, which had been running through the domain, were also blocked. Respondent, Malik Krechman, is listed as sole registrant/contact for the <digitallogic.com> domain name. Malik Krechman uses the same P.O. Box address (#360335) in Brooklyn, NY, as Dr. Emad Krechan, the administrative and technical contact for the domain name registration when it was owned by MicroScientific.Inc. The WHOIS information for the <digitallogic.com> domain name states that Respondent registered the domain name on January 20, 1999. DISCUSSION Paragraph 15(a) of 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." In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2) 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. Identical and/or Confusingly Similar Complainant, a Swiss company, has alleged (without opposition) that it has what amount to common law rights in the mark, DIGITAL-LOGIC, having operated its business under that name since 1992. In addition, Complainant has provided evidence (as recited on the face of its below mentioned U.S. registration certificate) of its Swiss registration of the mark on February 23, 1999 and a German registration on December 22, 2000. Complainant further established rights in the DIGITAL-LOGIC mark through registration with the USPTO on April 2, 2002 under Registration No. 2,557,420. Complainant’s U.S. rights in the mark revert back to the date the application was filed with the USPTO, i.e. April 8, 1999. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption); see also FDNY Fire Safety Educ. Fund, Inc. v. Miller, FA 145235 (Nat. Arb. Forum Mar. 26, 2003) (finding that Complainant’s rights in the FDNY mark relate back to the date that its successful trademark registration was filed with the U.S. Patent and Trademark Office); see also J. C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 U.S.P.Q. 435 (C.C.P.A. 1965) (registration on the Principal Register is prima facie proof of continual use of the mark, dating back to the filing date of the application for registration). However and unfortunately for Complainant, its rights in the mark do not predate the date on which Respondent registered the <digitallogic.com> domain name, January 20, 1999. Although, Complainant asserts that the original registrant of the <digitallogic.com> domain name sold the domain name registration to Complainant, and has provided the Panel with evidence of payment, nothing within the record establishes that Complainant has ever been the registered holder of the domain name following that apparent purchase. Due to Complainant’s failure to establish rights in the mark prior to Respondent’s registration of the domain name, which it could have presumably done by providing the record with an affidavit of use or other proof of use prior to January of 1999, the Panel reluctantly finds that Complainant has failed to meet the requirements set forth in Policy Paragraph 4(a)(i). See Abt Electronics, Inc. v. Motherboards.com, FA 221239 (Nat. Arb. Forum Feb. 20, 2004) (Complainant failed to establish Policy Paragraph 4(a)(i) because Respondent's rights in the <abt.com> domain name predated Complainant's registration application for the ABT mark and Complainant failed to provide sufficient evidence of its common law rights in the mark). Simply said, “The devil is in the details.” Moreover, based on the facts presented above, the Panel finds that this dispute raises potential contractual issues and suggests fraudulent activity on the part of Respondent, which failed to complete the transfer of the domain name at issue and subsequently renewed the name. Therefore, the Panel finds that the dispute is beyond the scope of the Policy. See Commercial Publ’g Co. v. EarthComm., Inc. FA 95013 (Nat. Arb. Forum July 20, 2000) (stating that the Policy’s administrative procedure is “intended only for the relatively narrow class of cases of ‘abusive registrations.’” Cases where registered domain names are subject to legitimate disputes are relegated to the courts); see also Latent Tech. Group, Inc. v. Fritchie, FA 95285 (Nat. Arb. Forum Sept. 1, 2000) (dispute concerning employee’s registration of domain name in his own name and subsequent refusal to transfer it to employer raises issues of breach of contract and breach of fiduciary duty that are more appropriately decided in court, not before a UDRP Panel); see also Thread.com, LLC v. Poploff, D2000-1470 (WIPO Jan. 5, 2001) (refusing to transfer the domain name and stating that the ICANN Policy does not apply because attempting “to shoehorn what is essentially a business dispute between former partners into a proceeding to adjudicate cybersquatting is, at its core, misguided, if not a misuse of the Policy”). Because Complainant must prove all three elements under Paragraph 4(a) of the Policy to prevail in this proceeding, Complainant's failure to prove the elements listed in Policy Paragraph 4(a)(i) means that the Panel need not consider whether Complainant has proven the remaining elements contained in Policy Paragraphs 4(a)(ii) and (iii). See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because Complainant must prove all three elements under the Policy, Complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary). DECISION For the reasons set forth above, and based on the record as presented, this dispute does not fall within the parameters of the Policy. Accordingly, the relief requested is DENIED WITHOUT PREJUDICE TO REFILING, and the Panel orders that the domain name REMAIN with Respondent. James A. Carmody, Esq., Panelist Dated: April 8, 2004 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.