Lessons for Unregistered Common Law Trademark Owners

I often hear from businesses that do not have a registered trademark but have a problem with a cybersquatter. In order to be successful in a UDRP without a registered trademark, you must have common law trademark rights which precede a bad faith registration of a domain name. The key however, is in PROVING your common law trademark rights. This case shows how you need to do it, and the dangers of what happens when you do not do it properly, even with an undefended case:


The Complainant has produced nothing in the way of evidence to establish unregistered trade mark rights. The Complainant’s evidence contains no information on the nature and extent of its business; nothing in the way of sales figures; nothing in the way of advertising spend; and nothing to demonstrate any media recognition or third party recognition of any kind. Some of the documentation that the Complainant has produced has been in the French language. Notwithstanding that English is the language of this proceeding, the Panel has done his best to try and decipher whether any of the French language documents provide support of any kind for the existence of unregistered trade mark rights, but does not believe that they do.

The Complainant has produced a document certifying that the company was incorporated in 1999, but there is nothing before the Panel to establish when it actually commenced business. It claims to have a number of “elliweb” domain names, but the Panel has been given no information as to when they were registered. They may not have been registered until May 2011 when the Complainant registered its trade mark. The Panel simply does not know. The Complaint features screenshots of some of the Complainant’s webpages, but the Panel was unable to decipher any dates.

...

The Panel notes for the record that the Complaint makes no mention of the fact that the Complainant’s registered trade mark rights, the only rights expressly claimed by the Complainant, post-date registration of the Domain Name.


For the foregoing reasons the Complaint is denied.

No, You Can't Register a Famous Trademark as a Domain Name Just Because "It Was Available"

About once a month or more, I get a phone call that goes like this:

Caller: I am a domain name investor. I just got into "the business". I registered about 300 great and valuable domain names, and need some help in selling them and some legal advice.

Domain Name Lawyer: Thanks for calling me. Tell me about the names.

Caller: Well, I found this company called Godaddy that allows you to register domain names. I couldn't believe it, but there were a ton of wicked names available, like YourCocaCola.com, DriveAPorsche.me, and ReebokShoesFit.co.

Domain Name Lawyer: I see. Do you have a question.

Caller: Not really, but I was thinking that one day I might need some legal advice, because I just got a letter from Coca-Cola demanding that I transfer my domain name to them. Would you be able to help me sell YourCoca-Cola to them since you specialize in domain names?

Domain Name Lawyer: Sorry, I cannot help.

Caller: Why not? I thought that you specialize in domain names and even help people sell domain names?

Domain Name Lawyer: Not that kind of domain name, I am afraid.

Caller: Why the hell not?

Domain Name Lawyer: Because registering a domain name like that is unlawful, and offering to sell it to the trademark owner is even worse.

Caller: I don't mean to be rude, but the domain name was available and I paid $10 for it, so it is mine. How can that be illegal?

Domain Name Lawyer: Why did you register the domain name?

Caller: To sell it to Coca-Cola. I came up with this awesome idea of a website all about how people love Coca-Cola, and YourCocaCola.com would be just the perfect domain name for them to launch this site. I can't believe their marketing company didn't come up with this themselves....Anyhow, Coca-Cola earned about 2 Billion dollars last year based upon my research, and I think that 1% of that would be a fair price and I would share what we get with you if you will help me sell it to them.

Domain Name Lawyer: I do not mean to be the bearer of bad news, but registering a famous trademark like that to sell to the trademark owner is unlawful, and you best just hand over the domain name before you get into any more trouble. Sorry I can't help.

Caller: You mean to tell me that Godaddy lets people register illegal names? Are you sure that you are really an expert in domain names? Because I spoke to a couple people before calling you, and they all told me stories of companies paying millions of dollars to get their domain names back after they inadvertently lapsed, or because someone got to them first. So I find it really hard to believe that a big company like Godaddy would allow someone to register a domain name that was illegal.

Domain Name Lawyer: Look, I have been practising domain name law for like 12 years, and there is something called the Anti-Cybersquatting Consumer Protection Act that makes this kind of thing illegal.

Caller: Did you say "legal" or "illegal"?

Domain Name Lawyer: Illegal.

Caller: Are you sure?

Domain Name Lawyer: 100%.

Caller: Well, I better talk to someone else I think, because I am out like $3500 from registering all these wicked names, and the fact that Coca-Cola wrote me a letter immediately after I registered the domain, shows just how interested they are in the name!

Domain Name Lawyer: OK, but here is some free advice: Stop registering trademarked domain names like that, as you are just wasting your money and potentially exposing yourself to massive fines and legal fees. The Internet grew organically, more or less, and there was no system put in place to prevent infringing domain name registrations; it is up to trademark owners to police their trademarks, not domain name registrars like Godaddy. Just because a domain name is "available", doesn't mean that you are legally allowed to register it. Go check out the thousands of ICANN UDRP cases where names were transferred away from cybersquatters.

Caller: But they can't just allow people to register any available domain name and then say that it is illegal! Like, you aren't allowed to just rob a bank!

Domain Name Lawyer: Nothing prevents you from physically walking into a bank and attempting a robbery...It is the law that forbids it and the bank security and/or the police that will catch you, and the judge that will sentence you....With domain names, it is kind of the same thing; you are not physically prevented from registering a trademark infringing domain name, but it is indeed illegal and there will likely be ramification if you get caught.

Caller: But they ALLOWED me!

Domain Name Lawyer: Look, I can add some brown sugar to soda water and call it Coca-cola and sell it off my front porch....But it is trademark infringing to do it, and if I get caught, I will be susceptible to legal proceedings, damages, and costs.

Caller: I dunno, I thought I was calling a Domain Name Lawyer, and you said right on your website that you defend against people accused of cybersquatting. How can you defend people accused of cybersquatting when you are telling me registering names like this is illegal?

Domain Name Lawyer: First of all, some cases are defensible, for example where a domain name is generic or descriptive, such as cars.com for a car website. Some cases, like the one that you will be facing from Coca-Cola, are not defensible at all since it is blatant cybersquatting.

Caller: My brother in law heard of a guy who sold the domain name, Ferrari.com to Ferarri, for a half a billion dollars.

Domain Name: Never heard of that and doubt it ever happened. But even if that were true, that is a one in a million chance, and with those odds, why be in the domain name business at all; just buy a lottery ticket instead.

Caller: Gees. Thanks. I am going to look into this further I guess.

Domain Name Lawyer: Good idea. I am glad that I may have helped you stop wasting your time and money before you got into any more trouble.

Unanimous UDRP Panel Finds Generic Three-Letter Domain Name, SSX.COM, registered in GOOD FAITH

NATIONAL ARBITRATION FORUM

DECISION

Electronic Arts Inc. v. Abstract Holdings International LTD / Sherene Blackett
Claim Number: FA1111001415905

PARTIES
Complainant is Electronic Arts Inc. (“Complainant”), represented by Eugene M. Pak of Wendel, Rosen, Black & Dean, LLP, California, USA. Respondent is Abstract Holdings International LTD / Sherene Blackett (“Respondent”), represented by Zak Muscovitch of The Muscovitch Law Firm, Canada.

REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is , registered with Moniker Online Services, Inc.

PANEL
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Ms. Diane Thilly Cabell, Sir Ian Barker, and R. Glen Ayers served as Panelists.

PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 16, 2011; the National Arbitration Forum received payment on November 16, 2011.

On November 17, 2011, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On November 18, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 8, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@ssx.com. Also on November 18, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

A timely Response was received and determined to be complete on December 9, 2011.

A timely Additional Submission was submitted by Complainant and determined to be compliant on December 13, 2011.

Respondent submitted an Additional Submission, which was determined to be compliant on December 19, 2011.

On December 19, 2011, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Ms. Diane Thilly Cabell, Sir Ian Barker, and R. Glen Ayers as Panelists.

RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS
A. Complainant
Complainant, Electronic Arts, Inc. (“EA”), asserts that it holds a registered Trademark, “SSX,” which was registered with the USPTO on October 4, 2005, and had previously been registered in other countries including France and Germany and has been subsequently registered as a European Community Trademark. The mark has been in use since 2000; it is used in connection with a computer game known as SSX.

EA asserts that the mark is well known and extensively used. It asserts that the Respondent’s domain name, , is obviously identical to the registered mark.

Complainant also states that Respondent has no rights or legitimate interests in the domain name. Respondent apparently acquired the domain name eleven years after first use and six years after the USPTO registration. EA states that Respondent is trading off of the good will generated by EA’s mark; that Respondent is not known by the name “SSX;” and that Respondent hold no license from EA.

As to bad faith, EA asserts registration and use in “bad faith.” EA has shown that Respondent’s home page offers this name for sale. EA also asserts that Respondent has used the domain name to attract Internet users for Respondent’s gain.

EA asserts that the very registration of an domain name identical to a mark is bad faith; that the registration is a clear attempt to “steal” the good will created by EA. EA shows that links from the domain name lead to sites that relate to computer gaming.

B. Respondent

Respondent begins by denying any bad faith registration. Respondent first registered this domain name in connection with the acquisition of a number of “generic three-letter acronyms.” While Respondent admits that there may have been some “arguable ‘bad faith use”, it asserts that this was “temporary and inadvertent” and lasted for a little over a month. (Respondent actually purchased the domain name; the name has been owed by a number of different entities.)

The domain name was allegedly registered on March 2, 2000, which is earlier than the first use of the mark. Therefore, Respondent argues, the registration could not have been in bad faith. Respondent acquired the name along with many others in October of 2011. Respondent does not appear to have renewed the registration of the name since its acquisition.

Respondent admits that it did not search the portfolio of names for potential conflicts with trademark registrations. However, the name had been registered for many years; no one had objected. It then parked the name with a parking company; thereafter, advertisements were automatically generated by Google.

Respondent had no intent to compete with or utilize EA’s mark. It did not run any add with intent to utilize the EA mark’s “good will.” It did offer to sell the mark, but the offer was not directed to EA.

Respondent continues to recite facts supporting its good faith (or lack of bad faith) and facts supporting the lack of any diligence by EA to protect its mark.

Respondent then proceeds to address each of the elements of the UDRP. As to “confusing similarity,” Respondent recites a long list of companies and entities that have registered the mark “SSX” in connection with products other than computer games, including registration with the USPTO. Another list of companies which use “SSX” without registration or in business follows the first list.

Respondent asserts that it does have a legitimate interest in the name SSX, because of the name’s generic nature. A better right may lie with EA, the mark holder; but a legitimate right to use can and does lie with others.

Respondent denies bad faith registration; it asserts that it was never aware of the EA mark or that it intended to do anything to interfere with EA’s business. Respondent believes that its business model is legitimate and not evidence of bad faith. The mere fact that the domain name is for sale is not relevant here; that is what Respondent does.

Respondent returns to a primary theme of its defense: The name has been registered for 12 years, but – until this filing – EA took no steps to assert the primacy of its mark.

Respondent concludes by suggesting that this proceeding be dismissed because the proceeding really relates to the issue of “”better’ or ‘superior’ rights ….”

C. Additional Submissions

Both parties submitted Additional Submissions.

COMPLAINANT’S ADDITIONAL SUBMISSION

Complainant EA timely filed an Additional Submission. Although Respondent objected to consideration of the Additional Submission, as discussed below, the Panel has determined to consider EA’s second pleading. The Panel believes that this submission would not be acceptable under the WIPO rules; however, the more liberal interpretations rules of the NAF panels allow consideration of “twelve single-spaced pages in small font, of additional written submission, together with a two-page affidavit, and several more pages of exhibits.” Quoting paragraph 2 of the Respondent’s Objection to Complainant’s “Additional Statement”….

In the Additional Submission, Complaint restates its prior allegations. In so doing, it repleads much of its case. It continues to insist that bad faith is shown by the “click through” revenues Respondent allegedly received. Complainant does admit that many marks are duplicated – e.g., DELTA is a mark held by an airline and by a faucet manufacturer. However, stress is placed upon the different businesses of the two mark holders.

The issue of “click through” revenue occupies several pages of the Additional Submission.

Complainant again asserts registration and use in bad faith. EA asserts that Respondent knew or should have known of its rights and asserts constructive notice. This is particularly true, says EA, when the business of Respondent is the bulk acquisition of names.

The EA second submission spends much effort on the issue of failure to police its mark, asserting, interestingly, that the prior holder of the name may have also engaged in bad faith exploitation of the good will of the EA mark.

RESONDENT’S ADDITIONAL SUBMISSION

As indicated above, Respondent’s Objection to Complainant’s “Additional Statement”… is primarily an objection to the reply brief filed by EA. While this Panel has determined to allow the Additional Submission, the Panel agrees with Respondent that the pleading would not be allowed under the WIPO rules.

The Panel would take this opportunity to request parties to limit Additional Submissions in both length and scope. Complainant’s Additional Submission is essentially a new action. While considered in this proceeding, these Panelists will, in the future, look very critically upon similar pleadings.

Respondent does go on to reply to the EA submission. It asserts that there is still no evidence that it attempted to target and exploit the “good will” associated with the EA mark. Respondent asserts that its “inadvertent” use of the domain name to link to computer gaming sites allows the Panel “to infer” that the registration was in “bad faith” as far as EA’s mark is concerned rather than a part of a business plan involving acquisition of three-letter generic “acronyms” for resale.

Respondent goes on to attempt to rebut other allegations made in EA’s additional submission. Of particular interest is the EA allegation that the SSX domain name was identified in the sales document as being sold for $5,000 of the alleged total sales price for all names of $200,000. From this, EA infers that the domain name was of particular interest to or value to Respondent. Respondent points out that all of the names were valued at $5,000 apiece in the Purchase Agreement.


FINDINGS
Respondent does not dispute that the mark SSX and the domain name are identical. However, “SSX” has been trademarked by a number of different entities. It is also used as an acronym for a number of entities and businesses.

EA has made a prima facie case under UDRP Policy ¶ 4(a)(i), and Respondent has not disputed this issue.

While Respondent has shown that the domain name, , was registered before the initial use of the SSX mark, prior registration is not relevant to any inquiry under Policy ¶ 4(a)(i).

As to rights in the name, EA has presented only a partial prima facie showing, under Policy ¶ 4(a)(ii). Respondent is neither commonly known by the name “SSX” nor is it a licensee of EA. Respondent has shown that it purchased the domain name without knowledge of any interest of EA. The registration of the domain name predated the first use of the mark, SSX, by EA. EA had taken no steps to police the use of its mark, as a domain name, for at least a decade.

Respondent has also shown that its business model involves the purchase and sale of domain names like -- domain names containing letters which are generic acronyms. EA has presented no evidence that Respondent knew of the existence of its trademark rights – or of the trade mark rights of any of the other holders of the mark SSX.

Therefore, even if EA has established a bona fide claim under Policy ¶ 4(a)(ii), Respondent has rebutted the prima facie case by showing that it acquired rights in the name by the purchase of the pre-existing domain name.

EA has not established a prima facie case of bad faith. The EA allegations of bad faith in part are based upon the lack of due diligence conducted by retailers of domain names like Respondent. EA would seem to require that entities like Respondent conduct an international search for relatively obscure trademarks in order to determine whether a name is a registered mark. The Panel is not willing to go so far, as discussed below.

Still, and particularly in this case, the Respondent is treading on thin ice. A fair reading of its pleadings reveals that Respondent made absolutely no attempt to examine its purchases for domain names which were also trademarks. Again, here, at least one “generic” string of three letters has been trademarked and is perhaps a common law mark of a number of business and other entities in a number of lines of business all around the world. Given the ease of searches using the common tools of the Internet, how much is it to ask of a retailer like Respondent to do a little extra work?

The facts here, however, show no bad faith under Policy ¶ 4(a)(iii), which refers to both registration and use in bad faith. First, although Respondent argues that the registration cannot have been in bad faith, for the registration pre-dated the first use and the issuance of the trademark, this is simply incorrect. Purchase in bulk of domain names is generally considered a new registration for purpose the UDRP.

However, there is no evidence of bad faith registration by Respondent; and, as noted above, because the inference of bad faith registration from lack of diligence is simply not enough, in this case.

The next issue, use in bad faith, is also shown. Respondent has attempted to rebut the allegations concerning use to generate “click through” income, and has shown that such use was inadvertent. The Panel also finds that this “inadvertent” use is still in bad faith. Respondent has taken little or no responsibility to police its own operations. It did not investigate the existence of competing interests in the form of marks, which it could have easily done. Had it done so, it could easily have avoided any use in bad faith. Respondent’s failure to take any responsibility for the registration and then use is not what the Panel would expect of a domain name merchant of this size and sophistication.

There is not sufficient evidence, in these facts, of the registration and use of the name in bad faith that is not rebutted by Respondent’s submissions.

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."

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, Electronic Arts Inc., has rights in its SSX mark under Policy ¶ 4(a)(i). Complainant provides a table of its trademark registrations for its SSX mark with the United States Patent and Trademark Office (“USPTO”), the European Union’s Office for Harmonization of the Internal Market (“OHIM”), and many others. Complainant also provided copies of its trademark registrations. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).

Complainant offered its USPTO trademark registration that lists Complainant’s first-use date as October 17, 2000.

Respondent’s domain name is identical to Complainant’s SSX mark. The only difference between the disputed domain name and Complainant’s SSX mark is the addition of the generic top-level domain (“gTLD”) “.com.” The addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. Clearly, the domain name is identical to Complainant’s SSX mark for the purposes of Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also SCOLA v. Wick, FA 1115109 (Nat. Arb. Forum Feb. 1, 2008) (concluding that “the domain name at issue is identical to [the] complainant’s SCOLA mark, as the only alteration to the mark is the addition of the generic top-level domain “.com.”).

Registration of the domain name predates Complainant’s rights in the mark. This is not relevant under Policy ¶ 4(a)(i). This portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).

The domain name is comprised of a common and generic term. Respondent asserts that such a generic term cannot be found to be identical to Complainant’s mark. The Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i); this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).


Rights or Legitimate Interests

Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).

Respondent is in the business of buying and selling generic domain names. Respondent purchased the domain name on October 5, 2011 as a part of a portfolio of generic domain names. Respondent paid $200,000 for the portfolio and provided a copy of the agreement as proof. The buying and selling of generic domain names is a bona fide offering of goods under Policy ¶ 4(c)(i).

Respondent has established rights in the domain name pursuant to Policy ¶ 4(c)(i). See Franklin Mint Fed. Credit Union v. GNO, Inc., FA 860527 (Nat. Arb. Forum Mar. 9, 2007) (concluding that the respondent had rights or legitimate interests in the domain name because it was a generic domain name reseller who owned numerous four-letter domain names); see also Fifty Plus Media Corp. v. Digital Income, Inc., FA 94924 (Nat. Arb. Forum July 17, 2000) (finding that the complainant failed to prove that the respondent had no rights in the domain name and had registered and used the domain name in bad faith where the respondent is an Internet business which deals in selling or leasing descriptive/generic domain names). The disputed domain name was parked with Google, and Google provided the hyperlinks found on the resolving website. Respondent has shown that it did not intend to host competing hyperlinks and that it was not responsible for the content of the resolving website. Respondent has shown that the competing hyperlinks were quickly removed. Respondent was responsible, even under these facts, for the competing hyperlinks, for it made no attempt to police the use of its domain name, not having investigated competing rights upon acquisition. Compare Spiliadis v. Androulidakis, FA 1072907 (Nat. Arb. Forum Oct. 17, 2007) (accepting the respondent’s explanation that it did not know until receiving a cease and desist letter from the complainant that its registrar “had posted unauthorized third party links on the website and that when it discovered this fact it was ‘shocked,’ demanded that they be removed and when they were not removed, [the] respondent changed its registrar.”).

The domain name, , is comprised of common or generic letters. Complainant clearly does not have an exclusive monopoly on the term. The number of other persons or entities holding identical if non-competing marks and the number of other users with rights in the name are clear evidence of the limited ownership claims of the Complainant. Respondent has established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Nat. Arb. Forum Jan. 5, 2004) (finding that the respondent was using the domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes); see also Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Nat. Arb. Forum July 23, 2004) (“Complainant’s rights in the QWEST mark are limited to its application to the telecommunications industry,” where a variety of other businesses used the mark in unrelated fields). See also Telephone and Data Systems, Inc. v. Protected Domain Services, WIPO Case No. D2011-0435 (May 10, 2011) (“Respondent has set forth a potentially legitimate interest …, and … Complainant has been unable to prove that such interest is illegitimate. …”).

Registration and Use in Bad Faith

Finding that Respondent has an unrebutted “potential” interest in the domain name, it is not necessary to discuss bad faith, but the Panel chooses to do so. In a case like this one, where there is no attempt to “target” Complainant’s interest in Complainant’s mark to capitalize on the good will associated with a three-letter mark, widely used by others, the subsequent use for “click-through” revenue is not enough. See Dinah, S.L. v. WebQuest.com Inc., WIPO Case No. D2005-0573 (August 25, 2005), andTelephone and Data Systems, Inc. v. Protected Domain Services, WIPO Case No. D2011-0435 (May 10, 2011), both of which are directly on point.

Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).

Certainly, and despite its protestations to the contrary, Respondent did register the domain name; the transfer of ownership in bulk constitutes a registration for purposes of the UDRP. See Ticketmaster Corp. v. Global Access, D2007-1921 (WIPO Feb. 2, 2008) (The relevant intent of the acquiring party is to be assessed as of the date of the acquisition of the portfolio or batch of names.)

Respondent has rights or legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii); Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).

Respondent has not registered or used the domain name in bad faith; the Panel finds that Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).

Respondent never offered to sell the domain name to Complainant. Respondent never targeted Complainant as a potential purchaser of the domain name. The offer to sell was automatically generated on the resolving website. Respondent would certainly have sold the name to Complainant, as Respondent would have sold to any person interested in purchasing the name, but it did not intend to sell the disputed domain name to Complainant. These facts do not show that Respondent registered or used the domain name in bad faith under Policy ¶ 4(b)(i). See Mark Warner 2001 v. Larson, FA 95746 (Nat. Arb. Forum Nov. 15, 2000) (finding that considering or offering to sell a domain name is insufficient to amount to bad faith under the Policy; the domain name must be registered primarily for the purpose of selling it to the owner of a trademark for an amount in excess of out-of-pocket expenses); see also JCM Germany GmbH v. McClatchey Jr., D2004-0538 (WIPO Sept. 17, 2004) (holding that the respondent did not violate Policy ¶ 4(b)(i) by attempting to sell the disputed domain name for profit because the respondent did not register the domain name with the intent to sell it to the complainant or one of its competitors. Moreover, Respondent, as a generic domain name reseller, did not register or use the disputed domain name in bad faith under Policy ¶ 4(b)(i); see also John Fairfax Publ’n Pty Ltd v. Domain Names 4U, D2000-1403 (WIPO Dec. 13, 2000) (finding legitimate interests and no bad faith registration where the respondent is a seller of generic domain names); see also Lumena s-ka zo.o. v. Express Ventures LTD, FA 94375 (Nat. Arb. Forum May 11, 2000) (finding no bad faith where the domain name involves a generic term, and there is no direct evidence that the respondent registered the domain name with the intent of capitalizing on the complainant’s trademark interest).

Respondent has shown that it is a generic domain name buyer and seller. Respondent purchased the disputed domain name as part of a portfolio of generic domain names. This is a legitimate use of the disputed domain name, and does not show that Respondent registered or used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Schering AG v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000) (finding that the respondent did not register or use the domain name in bad faith where the respondent registered the domain name in connection with a fair business interest and no likelihood of confusion was created); see also Mule Lighting, Inc. v. CPA, FA 95558 (Nat. Arb. Forum Oct. 17, 2000) (finding no bad faith where the respondent has an active website that has been in use for two years and where there was no intent to cause confusion with the complainant’s website and business). Moreover, Respondent contends that it parked the domain name with Google and that Google is responsible for the competing hyperlinks. Respondent alleges that the resolving website was only supposed to contain generic hyperlinks and not competing hyperlinks. The Panel finds that Respondent is not responsible for the content of the resolving website and, therefore, could not have registered the domain name in bad faith under Policy ¶ 4(a)(iii). See Tomsten Inc. v. Registrant [7281], FA 925448 (Nat. Arb. Forum Apr. 20, 2007) (finding the respondent’s parking of domain name to advertise goods and services chosen from “the broadest generic meaning of the word ‘archivers’ rather than choosing goods and services offered by [the] complainant” thus the panel was unable to draw the conclusion that the respondent had shown any intention of diverting Internet traffic from the complainant to the firms promoted by the advertisements and links).

The domain name is comprised entirely of a common term that has many meanings apart from use in Complainant’s SSX mark, including registration as a mark by other businesses and use of the term as a business name or acronym. Respondent is free to register a domain name consisting of common terms; this domain name contains such common terms. Respondent did not register or use the domain name in bad faith under Policy ¶ 4(a)(iii). See Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) ("Common words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis."); see also Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum July 9, 2004) (holding that the respondent’s registration and use of the domain name was not in bad faith because the complainant’s TARGET mark is a generic term); see also Miller Brewing Co. v. Hong, FA 192732 (Nat. Arb. Forum Dec. 8, 2003) (finding that because the respondent was using the domain name, a generic phrase, in connection with a search engine, the respondent did not register and was not using the disputed domain name in bad faith).

DECISION
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the domain name REMAIN WITH Respondent.


R. Glen Ayers, Chair
Ms. Diane Thilly Cabell
Sir Ian Barker

Dated: January 4, 2012

UDRP DECISION - Google Inc. v Goggle.com, Inc. FA1108001403690

Released October 11, 2011.



NATIONAL ARBITRATION FORUM

DECISION

Google Inc. v. Goggle.com, Inc.
Claim Number: FA1108001403690

PARTIES
Complainant is Google, Inc. (“Complainant”), represented by Gavin L. Charlston of Cooley LLP, California, USA. Respondent is Goggle.com, Inc. (“Respondent”), represented by Zak Muscovitch of The Muscovitch Law Firm, Ontario, Canada.

REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are registered with ENOM, INC., registered with NETWORK SOLUTIONS, LLC., and registered with Domain Name Inc.

PANEL
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

David E. Sorkin and Sandra J. Franklin as Panelists and Bruce E. O'Connor as Chair.

PROCEDURAL HISTORY
This decision is being rendered in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the National Arbitration Forum’s UDRP Supplemental Rules (the “Supplemental Rules”).

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 17, 2011; the National Arbitration Forum received payment on August 18, 2011.

On August 17, 2011, ENOM, INC. confirmed to the National Arbitration Forum that the domain name is registered with ENOM, INC., and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, INC. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the Policy.

On August 18, 2011, NETWORK SOLUTIONS, LLC. confirmed by e-mail to the National Arbitration Forum that the domain name is registered with NETWORK SOLUTIONS, LLC. and that Respondent is the current registrant of the name. NETWORK SOLUTIONS, LLC. has verified that Respondent is bound by the NETWORK SOLUTIONS, LLC. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the Policy.

On August 18, 2011, Domain Name Inc. confirmed by e-mail to the National Arbitration Forum that the domain name is registered with Domain Name Inc. and that Respondent is the current registrant of the name. Domain Name Inc. has verified that Respondent is bound by the Domain Name Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the Policy.

On August 23, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 12, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@goggle.com, postmaster@goggle.net, and postmaster@goggle.org. Also on August 23, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

A timely Response was received and determined to be complete on September 13, 2011.

Complainant submitted an Additional Submission on September 19, 2011 in compliance with Supplemental Rule 7. Respondent submitted an Additional Submission on September 21, 2011 in compliance with Supplemental Rule 7.

On September 27, 2011, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed David E. Sorkin and Sandra J. Franklin as Panelists and Bruce E. O'Connor as Chair.

RELIEF SOUGHT
Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS
A. Complainant
Complainant submits that it began operating under the GOOGLE name and mark in 1997. Complainant alleges that it uses its GOOGLE mark for its search engine and other Internet related services through its official domain name and website. Complainant presents numerous trademark registrations for its GOOGLE mark that it owns with governmental trademark authorities worldwide. Below is a sampling of such registrations:

United States Patent and Trademark Office ("USPTO") (Reg. No. 2,806,075 registered January 20, 2004);
IP Australia (“IPA”) (Reg. No. 1,049,124 registered April 4, 2005);
Barbados Corporate Affairs and Intellectual Property Office (“CAIPO”) (Reg. No. 81/20986 registered January 19, 2007); and
Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA539,576 registered January 12, 2001).

Complainant states that it had previously filed a UDRP proceeding against the original registrant of the disputed domain names. Complainant states that the parties entered into a confidential settlement agreement and the proceeding was dismissed. Complainant further states that since the domain names have been subsequently transferred to a third-party with whom it has no prior dealings, the agreement was not set forth in the Complaint. Those trademark rights, in any event, predate the transfer to Respondent.

Complainant contends that the disputed domain names are confusingly similar to Complainant’s GOOGLE mark. Those domain names contain a misspelled version of the GOOGLE mark where the domain names simply replace the letter “o” with the letter “g” and add a generic top-level domain (“gTLD”).

Complainant contends that it has not authorized Respondent to use or register the disputed domain names. Further, Complainant argues that Respondent is not commonly known by the disputed domain names even though the WHOIS information indicates that the registrant is “Goggle.com, Inc.” because an Internet search does not return any results for that company name as a legitimate business.

Complainant further argues that Respondent cannot claim to be offering legitimate goods and services through the domain names because it is diverting Internet users to a website that intends to copy the look and feel of Complainant’s website and deceiving users into signing up for expensive text messaging plans. Complainant contends that such use is invariably a “phishing” scam in which Respondent receives the personal and financial information of unsuspecting Internet users, and turns around to turn a profit with such information. Further, Complainant submits screen shot evidence to show that the website resolving from the domain name looks and feels just like Complainant’s official website while using a close variation of Complainant’s logos.

Complainant alleges that Respondent gained possession of the disputed domain names in 2007 or early 2008. Complainant argues that Respondent acquired the domain names in order to effectuate some kind of phishing scheme in which Internet users are made offers for devices such as an “iPad 2” so long as they give personal information and sign up for text message plans for cellular phones.

Lastly, Complainant contends that Respondent could not have registered and used the disputed domain names without actual or constructive knowledge of Complainant and its rights in the GOOGLE mark.

B. Respondent
Respondent states that

[T]he Complainant has failed to disclose that it entered into a Co-existence Agreement which entitled the Respondent to register and use the disputed domain names subject to certain terms and conditions which were complied with

Respondent asserts that it purchased and registered the domain names in good faith and on reliance of the Co-existence Agreement. Respondent attaches the Co-existence Agreement (between Complainant and Knowledge Associates, the original registrant) and a Purchase and Assignment Agreement2 (between the original registrant and a company identified as 1158860 Alberta, Ltd).

Further, Respondent submits a letter, which was sent to Complainant before the purchase giving Complainant the right of first refusal as required under the terms of the Co-existence Agreement. Respondent states that it purchased the domain names from the original registrant based upon the Co-existence Agreement that was expressly placed within the Purchase and Assignment agreement, and that it has followed the required sections of that agreement. Lastly, Respondent states that the very terms of the Co-existence Agreement expressly and specifically contemplated such a future sale of the domain names and permitted such, so long as certain aspects of the agreement were also agreed to by the new purchaser.

Respondent argues that the domain names all contain the separate and unique term “goggle,” and cannot be found to be confusingly similar to Complainant’s good mark. Further, Respondent references the Co-existence Agreement that states, “the word goggle will not be considered as a misspelling of the word google.”

Respondent argues that the term "goggle" of the domain names is a real and separate word from Complainant’s mark, therefore permitting the Panel to find that the domain names are not confusingly similar to Complainant’s mark.

Respondent also references the Complaint that states that “the manner in which Respondent is using the Domain Names” is the issue here. Respondent contends that such a statement is an admission by Complainant that the domain names are not similar to the GOOGLE mark, and that Complainant is trying to prove confusing similarity by bringing in Respondent’s use of the domain name instead of an objective analysis of the mark’s and the domain names’ similarities.

Respondent argues that, contrary to Complainant’s assertions, it is in fact known as “Goggle” because its corporate name is “Goggle.com, Inc.,” and that it has carried out business under this name for nearly four years. Respondent submits its corporate registration as part of its annexes to show that it is in fact registered as a business under the “Goggle.com, Inc.” name. Respondent further notes that its banking information is under the “Goggle.com Inc.” name and that it receives all payments from third-party advertisers under its corporate name.

Respondent contends that it is using the disputed domain names in the same manner as the previous registrant did for advertising and marketing solicitations. Respondent argues that such uses were known, accepted, and condoned by Complainant before it signed the Co-existence Agreement with the prior registrant. Respondent notes that it is able to conduct the same type of business activity under the disputed domain names because the Co-existence Agreement that Complainant signed contemplated such use by future purchasers.

Respondent contends that Complainant’s recent objection about the recent use of “an arguably similar graphic logo” does not nullify Respondent’s long-standing use of the domain names for its advertising and marketing solicitations. Respondent also states that it removed the allegedly infringing logo from its website since that time, and that it has only been used for a short period of time. Respondent maintains that it has not violated the terms of the Co-existence Agreement, and that it has rights in the domain names.

Respondent also argues that the term "goggle" of the disputed domain names is common and generic, and therefore, Complainant does not have an exclusive monopoly on the term on the Internet.

Respondent alleges that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute. Respondent contends that Complainant is attempting to deprive Respondent, the rightful, registered holder of the disputed domain names, of its rights to use those names.

Respondent contends that Complainant

buried the fact of the existence of the Co-existence Agreement. The only reference to the fact of its existence was hidden away in the only footnote to its entire 15-page Complaint.

Respondent notes that the terms of the Co-existence Agreement were all followed, and that Complainant had the right to purchase the domain names per that agreement and chose to let Respondent register them instead. Respondent further notes that Complainant’s possible motive in bringing this UDRP claim is that it has recently launched a new mobile service called “Google Goggles,” and wishes to use the domain names for its own gain. Therefore, Respondent contends that Complainant knew at the time of filing this Complaint that Respondent did not register or use the domain names in bad faith.

C. Additional Submissions
1. Complainant
Complainant contends that the two agreements referred to by Respondent have no bearing on the resolution of this dispute. First, there is no evidence that the agreements create and govern a relationship between Complainant and Respondent. Second, Respondent is a bad faith actor who acquired the disputed domain names with a clear intent to profit from and associate them with the Google mark and who is using the domain names in a fraudulent manner.

Complainant asserts that merely using a corporate name identical to one of the disputed domain names is not sufficient to establish that Respondent is commonly known by the disputed domain names. Complainant further argues that Respondent even admits that the only reason it established its corporate name is for owning the domain names.

Complainant contends that Respondent’s assertion of the proposition that it can use a generic term in a domain name to establish a legitimate interest therein is not accepted. Complainant contends that Respondent’s cited cases for such a proposition all deal with a descriptive term that is being used for its descriptive qualities, which is not the case here. Complainant asserts that Respondent is not posting any content related to eye wear or goggles, but is using the domain names to defraud Internet users who believe they may be on Complainant’s website.

Complainant notes that uses of confusingly similar domain names for “survey sites” are part of growing schemes to generate revenue. Complainant argues that Respondent has increasingly used the domain name and the content within its website to confuse Internet users into believing that Complainant is associated with the domain name.

Complainant notes that Respondent

even adopted a logo so closely similar to Google’s famous mark (and well known ‘doodles’) that it gave rise to numerous complaints by Google’s consumers who had been deceived into believing Respondent’s website was affiliated with Google.

Complainant argues that Respondent’s use of the domain names to commercially profit in such a manner is evidence that Respondent registered and is using the domain names in bad faith.

Complainant argues that Respondent’s allegation of reverse domain name hijacking is “no more than a desperate effort by Respondent to maintain its illegal and highly profitable enterprise.” Further, Complainant asserts that Respondent cannot bring in the previous agreement that Complainant had with the original registrant because it was not a party to such an agreement, and either way the agreement is confidential in nature and should not be disclosed.

2. Respondent
Respondent contends that there is no provision in the Policy for a "reply." Rule 12 confines the submission of additional material beyond the Complainant and the Response to submissions provided at a Panel's request only. Supplemental Rule 7, providing for the filing of Additional Submissions, must be viewed in accordance with the National Arbitration Forum's statement on its website that it is up to the Panel, in accordance with Rule 10, to decide whether such Additional Submissions will be considered.

Respondent contends that Complainant does not even mention its un-exercised right of first refusal or its status as a Third Party Beneficiary under the Co-existence Agreement. Because Respondent has not breached the Co-existence Agreement, Complainant has no recourse thereunder and is thus proceeding under the Policy.

Respondent contends that it is an Assignee and permitted beneficiary under the original Co-existence Agreement above thereby granting Respondent standing to bring in the contract. Respondent attaches an Assignment and Assumption Agreement (between 1158860 Alberta. Ltd. and the Respondent).

Therefore, Respondent contends that this contract needs to be interpreted, which falls outside the scope of the UDRP.

FINDINGS
Admissibility of Additional Submissions
As correctly noted by Respondent, there is a conflict between Rule 12 (which allows the Panel to request further statements and documents beyond the Complaint and Response) and Supplemental Rule 7 (which provides for the automatic fee-based filing of Additional Submissions). As in previous cases, this conflict is usually resolved by the Panel, which has the discretion under Rule 10(d) to "determine the admissibility... of the evidence."

In this matter, the Panel finds that the Additional Submissions help the Panel in its resolution of the matter and therefore has considered them, at least to the extent that they contain material that could not reasonably have been included in the Parties' initial submissions.

Policy
The Panel declines jurisdiction in this matter, as discussed below, and therefore makes no findings.

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."

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.

The evidence and arguments relied on by the Parties, relating to the Policy, are extensive and ably done.

But, the Panel finds that this case is foremost a business and/or contractual dispute between two companies that falls outside the scope of the Policy.

In Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007), the panel stated:

A dispute, such as the present one, between parties who each have at least a prima facie case for rights in the disputed domain names is outside the scope of the Policy … the present case appears to hinge mostly on a business or civil dispute between the parties, with possible causes of action for breach of contract or fiduciary duty. Thus, the majority holds that the subject matter is outside the scope of the UDRP and dismisses the Complaint.

When the parties differ markedly with respect to the basic facts, and there is no clear and conclusive written evidence, it is difficult for a Panel operating under the Rules to determine which presentation of the facts is more credible. National courts are better equipped to take evidence and to evaluate its credibility.

The panel in Luvilon Industries NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005) concurred with this reasoning:

[The Policy’s purpose is to] combat abusive domain name registrations and not to provide a prescriptive code for resolving more complex trade mark disputes. … The issues between the parties are not limited to the law of trade marks. There are other intellectual property issues. There are serious contractual issues. There are questions of governing law and proper forum if the matter were litigated. Were all the issues fully ventilated before a Court of competent jurisdiction, there may be findings of implied contractual terms, minimum termination period, breach of contract, estoppels or other equitable defenses. So far as the facts fit within trade mark law, there may be arguments of infringement, validity of the registrations, ownership of goodwill, local reputation, consent, acquiescence, and so on.

The GOOGLE mark in this case is the very one that is the subject of the Co-existence Agreement. The disputed domain names in this case appear to be the very ones that are the subject of the Co-existence Agreement.

That agreement set forth the rights and obligations of the original registrant and Complainant regarding the Google Mark and the disputed domain names. Those rights include a consent by Complainant to the original registrant's ownership and/or use of the domain names therein on the terms and conditions of the Co-existence Agreement. This consent appears to continue beyond the effective date of that agreement.

Respondent states that it is entitled to the rights of the original registrant (by reason of either being an assignee or a third party beneficiary), and that it is complying with the obligations of the original registrant.

Complainant in essence says that the Co-existence Agreement is irrelevant to its present claim under the Policy, and that the agreement is confidential.

The Purchase and Sale Agreement purports to transfer the rights and obligations of the original registrant under the Co-existence Agreement to a third party. The Assignment and Assumption Agreement purports to transfer those rights and obligations to the Respondent. The Co-existence Agreement includes a provision restricting public statements by both parties.

Does the Co-existence Agreement apply to the disputed domain names? Does Respondent stand in the shoes of the original registrant? Does the consent of Complainant extend in time to the current actions of Respondent and in person to the Respondent? Has the Respondent complied with the obligations of the original registrant? Does the "no public statements" provision in the Co-existence Agreement prohibit its disclosure or use as a defense by Respondent?

These are factual and legal issues that go far beyond the scope of the Policy.

These are factual and legal issues that must be resolved before any consideration of confusing similarity, legitimate rights and interest, and bad faith under the Policy can be made.

And they are issues of considerable complexity, best addressed by a court or other body equipped to take and consider evidence related to their resolution.

DECISION
The Panel declines jurisdiction over this Complaint and over Respondent's related claim of Reverse Domain Name Hijacking.

The case is thus dismissed.




David E. Sorkin and Sandra J. Franklin as Panelists and Bruce E. O'Connor as Chair Dated: October 11, 2012

Three-Letter Generic Domain Name, TDS.COM, Saved at UDRP

Just got word from WIPO that the UDRP over TDS.COM was decided unanimously in favour of the registrant. This is good news for generic domain name holders. Helps to have a domain name lawyer on yours side sometimes...

This was an interesting case where the registrant was the long-standing admin for the domain name on behalf of his employer. There was contemporaneous email correspondence entered into evidence which demonstrated the motivation that the registrant had for seeking his employer's agreement to transfer the domain name to himself, i.e. his employer no longer had use for it and the Respondent saw value in it as a generic three-letter domain; not because of the Complainant's trademark rights...

The Panel also had some important remarks to make on "Additional Submissions", which should come in handy when arguing at the National Arbitration Forum or at the World Intellectual Property Organization over whether Complainant's should have their supplementary complaints admitted...

'Lagging' Canadian Internet Commerce to Be Focus of Domain Name Election

'Lagging' Canadian Internet Commerce to Be Focus of Domain Name Election

Competitive Justice?: The Role of Dispute Resolution Providers under ICANN’s UDRP

John Selby, with the Department of Business Law at Macquarie University in Sydney Australia, brought to my attention his truly excellent article and study of ICANN UDRP Dispute Resolution Providers.

This article was published in 2004, and the concerns outlined therein are even more important today, given that the Czech Arbitration Court apparently intends to provide so-called 'fast track' UDRP's on the cheap.

And kudos to Jim Davies at Wrays Patent and Trademark Attorneys, also from Australia, for taking this new radical and arguably unmandated approach to UDRP's to task, in his article.