6.Discussion and Findings
Paragraph 15(a) of the Rules instructs the 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”.
The burden for the Complainant, under paragraph 4(a) of the Policy, is to show:
-That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
-That the Respondent has no rights or legitimate interests in respect of the domain name; and
-That the domain name has been registered and is being used by the Respondent in bad faith.
Domain name is confusingly similar or identical to a trademark or service mark in which the Complainants have rights
It appears to be common ground that the Complainant sells a product called “NTMail” (sometimes referred to NTMail Server), but has not registered the trademarks “NTMAIL” or “NTMAIL SERVER”. Neither has it produced evidence of any pending applications.
The Policy applies to unregistered trademarks as well as registered trademarks. However, where there is reliance on an unregistered trademark it is incumbent on a Complainant to provide sufficiently strong and compelling evidence of rights and reputation in the mark such that this is strongly associated and identified with the Complainant. This proof is even more necessary where the mark contains or comprises generic or descriptive terms.
In this case, the Respondent has provided strong submissions (and evidence) that the marks NTMAIL and NTMAIL SERVER are descriptive at best, and are used in a descriptive or generic sense by consumers. These submissions include dictionary definitions for the individual terms and individual news group entries, in which the writers have used the terms in a descriptive or possibly generic sense.
This Panel does not find, however, that the term “NTMAIL” is generic. In order for the term to be generic, its principal significance to the public must be as the name of an article. 2 McCarthy on Trademarks, § 12:6 (2001). Under UK law (which is the law of the domicile of the Complainant) a trademark is not registrable if it consists “exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade”: Kerly ‘Law of Trade Marks and Trade Names’ (13th edition) para 7.79 – 7.82. Respondent’s dictionary definitions do not assess the genericness of the term “NTMAIL”, but instead appear directed to the wording of the Respondent’s domain name, namely, MAILSERVER. In particular, <dictionary.com> – the very source the Registrant cites for the proposition that “mail server” is generic, has no definition for the term NTMAIL; <dictionary.com>’s definition of NT refers to WINDOWS NT and its definition of “MAIL” refers to e-mail. The Respondent’s evidence of third party use of