The Complainant claims that the Respondent’s use of the disputed domain name is an attempt by the Respondent to draw potential customers away from the Complainant’s own sites and entice them to the Respondent’s site.
The Respondent claims that the Complainant does not have trademark rights under the Policy for the mark “NTMAIL”. The Respondent notes that it is common ground that the Complainant has no trademark registrations for the mark.
The Respondent also claims that the term “NTMail” and “NTMail Server” are common generic terms. The Respondent annexed a <google.com> search for the term “NTMail Server” excluding the Complainant’s name and annexed the first 40 search results to the Response. It claims that the search yielded “thousands” of third party web pages containing the term “NTMail Server”. The Respondent states that other companies besides the Complainant sell mail servers for the Windows NT platform and it provided evidence of these.
The Respondent claims that since 1998, it has generated approximately $138,000 in sales for the Complainant and that during this period, the Complainant has complimented the Respondent on its sales performance. The Respondent annexed to its Response an email from the Complainant stating “May I say I am very pleased with the substantial orders that you have put through the account, and your continued enthusiasm and dedication to increase the sales is much appreciated”.
The Respondent states that as recently as April 2002 (i.e. after the filing of the Complaint), the Complainant formally recognized the Respondent as one of the “Top Ten Gordano Resellers for Quarter 1 2002”. It states that the Complainant has issued commission payments and advice of credits over the past three years, and has continued to do so as recently as April 10, 2002, also after the filing of the Complaint.
The Respondent claims that it expressly advised the Complainant as early as June 1998 that the premium front-page position on its website would “rotate between all companies products that are represented”. The Respondent annexed an email from the Respondent dated June 9, 1998, evidencing this claim.
The Respondent points out that the disputed domain name was registered on March 2, 1998. The first complaint made by the Complainant about the registration and use of the disputed domain name was its letter of December 4, 2001, almost four years after the disputed domain name was registered.
Plainly, the Complainant had knowledge of the Respondent’s registration of the disputed domain name during that four-year period. The Respondent claims that with such a long period of time elapsing, and with the Complainant having consented to, endorsed and benefited from, the Respondent’s ownership of the disputed domain name, the Panel should hold that the Complainant’s claim are barred by the doctrine of laches.
The Respondent states that it has a legitimate interest in the disputed domain name. It states that the use of a descriptive domain name for a related website constitutes use in connection with a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy.