The Respondent also states that it has a legitimate interest in the disputed domain name, as it is an authorized reseller of the Complainant’s NTMail software product. The Complainant entered into an agreement with the Respondent dated August 19, 1998, under which it expressly authorized the Respondent to sell its products. The Respondent has sold the Complainant’s NTMail products for over three years, and the Complainant has paid the Respondent fees in connection with this.
The Respondent states that a legitimate interest in a domain name has been established in cases where a respondent sells goods in connection with the disputed domain name as an authorized reseller even where the disputed domain name wholly incorporates a complainant’s registered trademark. The Respondent provided a number of authorities in support of this proposition.
The Respondent also cited cases which support the proposition that even where a respondent is not an authorized reseller, the sale of goods via a disputed domain name containing a complainant’s mark can establish a respondent’s legitimate interest in that domain name.
The Respondent states that the Complainant has obviously consented to the Respondent’s activities (including the registration and use of the disputed domain name) by:
(a)prominently featuring a link to the Respondent’s website on its website at <http://www.gordano.com/find_channel/canada/index.htm>;
(b)paying the Respondent a share of revenues in connection with the sale of the Complainant’s products through the Respondent’s website; and
(c)formally recognizing the Respondent as a “Top Ten” reseller of its products on multiple occasions.
The Respondent claims that there is no evidence that the disputed domain name was registered and is being used in bad faith.
Finally, the Respondent submits that this is a case of Reverse Domain Name Hijacking. It claims that the Complaint “grossly misrepresents” the facts and intentionally leaves out crucial information such as:
(a)the fact that the Respondent has been an authorized reseller of the Complainant’s software for three years;
(b)the Respondent’s record of being a regular “Top Ten” reseller of the Complainant’s software;
(c)the Complainant’s “unconscionable attempts” to strong arm the Respondent into either surrounding the disputed domain name for $2,000 or removing references to the Complainant’s competitors from its website.
The Respondent states that the Complainant should have known that there was no basis for the Complaint because of the generic nature of the terms “NTMail” and “NTMail server”. Also, the Complainant only brought the case after it was unable to purchase the disputed domain name for $2,000.