Register.com, Inc. v. Domain-it!, Inc. c/o Domain-It Hostmaster
Claim Number: FA0801001126697
Complainant is Register.com, Inc. (“Complainant”), represented by Brett
E. Lewis, of Lewis & Hand, LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <register.cc>, registered with Domain-it!
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.
Hon. Sir Ian Barker, QC, Sandra J. Franklin, Q. Todd Dickinson as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum
On January 14, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 4, 2008 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
A timely Response was received and determined to be complete on
Timely Additional Submissions were received from the Complainant on
Complainant requests that the domain name be transferred from Respondent to Complainant.
The Complainant is an Internet web services provider that claims to be the successor of Forman Interactive Corporation (“FIC”) which commenced business in 1994.
According to a declaration made under penalty by Denise Wheeless, the Manager of Compliance and Business Affairs of the Complainant, the Complainant began offering free domain registration services in January 1998, while continuing to offer FIC’s web-hosting and website building services. By July 1998, the Complainant was registering 20,000 domain names per month and was the second ICANN accredited company for domain name registrations. By December 2000, the Complainant had registered 3.1 million domain names.
Its services have been extensively advertised through all forms of media and it is now a leading provider of global domain name registration and Internet services to individuals and businesses. It directly registers domain names across generic top level domains and also offers registration in 240 country code domains.
The Complainant is the owner of
Prior Panels have held that the complainant has possessed trademarks in the registered mark as early as 1994. See Register.com Inc. v. Skander, FA 1029513 (Nat. Arb. Forum Aug. 22, 2007); see also Register.com Inc. v. Reile, FA 208576 (Nat. Arb. Forum Jan. 27, 2004).
The disputed domain name is identical to the Complainant’s registered trademark REGISTER, and confusingly similar to the Complainant’s registered trademark REGISTER.COM.
The Complainant has not licensed, transferred, assigned or otherwise authorised the Respondent to use its marks or any variation thereof. Nor is the Respondent known by the disputed domain name.
The Respondent has made no use of or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of services. However, the Respondent uses the disputed domain name to “siphon away” the Complainant’s customers to a competing web service site located at <Domain-it.com>.
The disputed domain name forwards to a landing page which features a price comparison between Domain-it! and the Complainant, amongst others. The Respondent has used the disputed domain name to redirect visitors to the <Domain-it.com> site since 1998.
According to its website, the Respondent was founded in 1996 and began offering top-level domain names to the public shortly thereafter, holding itself out as <Domain-it.com>.
As an early pioneer on the Internet and domain name web-hosting services, the Respondent would have been aware of the Complainant and its competing businesses. As of late 1996, the Complainant was hosting one of 10 virtual shopping centres on the Internet with over 700 clients, receiving upwards of 2 million hits monthly.
The disputed domain name was registered in December, 1997. The Respondent had then no trademark rights in the registered mark and has not subsequently obtained any.
The Respondent’s use of the disputed domain name redirects Internet users to its own website which is not a bona fide offering of goods and services.
The Respondent has no legitimate rights or interest in the disputed domain name and has intentionally attempted to attract for commercial gain Internet users to its site by creating a likelihood of confusion with the Complainant’s mark as to the sponsorship, affiliation or endorsement of the Respondent’s website or of a product or service on the Respondent’s website.
The Respondent’s registration of the disputed domain name was more than three years after the Complainant’s predecessor in interest began using the registered mark in commerce in connection with website hosting with largely the same services as the Respondent offers.
At the date the Respondent registered its domain name <Domain-it.com> (i.e. December 30, 1997), the Complainant already had a high profile Internet presence. The Respondent must then have known of the Complainant.
A domain name incorporating a known trademark to a competitive website is strong evidence of bad faith intent. The Respondent has been using the disputed domain name for at least 10 years despite a “cease and desist” e-mail from the Complainant in January 2007.
The Respondent registered the disputed domain name in bad faith and continues to use it as such. The Respondent has also registered a misspelling of at least one other well-known Internet trademark company as a domain name, i.e. “AlterVister.com” in clear infringement of the rights of Alter Vista search engine company.
Although “register” is a dictionary word, the Respondent has not used it in the dictionary sense but has used the disputed domain name after it had acquired trademark significance. It uses it to redirect users to a competing web services site.
The Respondent contends that the Complainant was not offering domain registration services in 1994. As shown in the <archive.org> printout dating from 1996, the site at <register.com> was labelled “<register.com online mall, the most convenient and secure way to shop online. There is a link on the page to a website building software which led to the site of FIC but there is no indication of web-hosting e-mail or domain registration services being offered as branded “register” or “register.com”.
The Complainant conflates the historical account of the services provided by FIL, the Forman Interactive business and that of <register.com>. It was not until 1998 that the Complainant mentions domain registration services for others, despite the claim for first use in the trademark application of December 1999.
As to legitimate rights or interests, the Respondent has been providing domain registration services for longer than the Complainant. It was not possible to be a domain registrar prior to the advent of ICANN in 1999. The alleged “free” domain registration service of the Complainant in 1998 was a service submitting domain name registration applications to Internik which, at the time, was the only available domain registrar for “.com,” “.net” and “.org.” During 1998, when the Complainant was advertising but not actually providing free domain registration services, the Respondent was engaged in providing domain name registration services and, in particular, for the “.cc” country code TLD.
The Respondent registered <Domain-it.com> in November 1996 and
began offering domain registration services as a sole trader before incorporating under
the title “domain.it! Inc”. In 1997, the company which owned the right to
operate the .cc registry became interested in it as a commercial
exploitation. .cc is a country code for
the Cocos (Keeling) Islands, a dependency of
In November 1997, the Respondent wrote to the “.cc” registry enquiring how it might offer “.cc” registration services. By December 28, 1997, the Respondent and the Registry has worked out an e-mail template for submitting registrations. The Respondent thereafter became the first commercial provider of domain registration services for the “.cc” TLD. The disputed domain name with a “.cc” suffix has been in continuous use since then. The Respondent has been using the domain name in connection with a bona fide offering of services for over a decade, and certainly prior to notification to it of any dispute.
The disputed domain name is the straightforward generic description of the service which the Respondent has been providing in connection with the use of its domain name as a forwarder to its domain name registration services.
As to bad faith – At the time of the registration of the disputed domain name, the Complainant had not even applied for registration of its marks. The Respondent could not have known that the Complainant would apply for registration.
The trademark must be shown to predate the Complainant’s marks, the subject domain name. There must be evidence of a secondary meaning at the date of registration of the disputed domain name. Various cases were cited to show that the Complainant could not show acquired distinctiveness prior to the date of registration of the disputed domain name.
The Respondent alleges that questionable conduct by the Complainant towards the Respondent and other competitors. The Complainant used “phantom” or “feeder” pages as well as metatags incorporating the trademarks of its competitors in order to improve its search engine capacity relative to those of competitors such as the Respondent, who have been engaged in the domain registration business since before the Complainant had entered it.
The previous UDRP cases where the Complainant had succeeded were distinguishable. The present case is more similar to Register.com Inc. v. Shwarnaakakshumi, FA 747648 (Nat. Arb. Forum Sept. 11, 2006).
C. Complainant’s Additional Submissions
The Respondent does not deny that it was aware of <register.com> at the time it registered the disputed domain name or that it supplied website hosting services in 1996. In 1997 the same services were offered by the Complainant. This is a simple case of cybersquatting in that one player in this market knowingly adopted the distinctive common law trademark of its competitor.
The Respondent submitted no evidence in the form of an affidavit or otherwise to support its justification in registering as a domain name, the brand of a known competitor in the domain name registration field and pointing it to the Respondent’s website.
The first issue is whether the Complainant’s website, branded under the name identical to the disputed domain name, servicing a 1,000 or more hosting clients visited by 2m plus visitors and written-up in industry publications, could have acquired distinctiveness as of December 1997, less than five years after its first use.
The Respondent’s argument that distinctiveness could not be acquired before the date of filing of a trademark application is misleading. The evidence submitted satisfies the requirements of establishing acquired distinctiveness and that not sustaining the objection of a single examining attorney that the word “register” is in no way descriptive of website hosting services. The word is inherently distinctive of those services.
As to legitimate rights or interests, the Respondent does not dispute that the Complainant has been offering website hosting services from 1995 to the present. The Respondent did not begin to offer these until late 1996, at the earliest.
It is not correct that these services are not competing with those offered by the Complainant. Both domain names contain the word “register” and both offer hosting services. The argument that the Respondent registered domain names for third parties before the Complainant is a red-herring. At the time of registration of the disputed domain name in December 1997, the Complainant was well-known in the Internet and web-hosting fields. Customers of one service often require the other. The Respondent could reasonably have expected the Complainant to expand into the registration field as a natural consequence of business expansion. Even assuming the domain name and web-hosting services could be differentiated, the parties were as competitors in the field of web-hosting at the time that the Respondent registered the domain name that was an exact match of the Complainant’s trademark.
Merely pointing a domain name to a competing website is not a legitimate use. The Respondent has made no other use of the disputed domain name and does not use it as a trademark. The Respondent’s marks were distinctive prior to the Respondent’s registration of the disputed domain name.
Most records of the Complainant’s use of the marks in the relevant period have been lost. The Complainant submitted extensive evidence of use of the mark in commerce before it applied for a trademark registration and has consistently claimed the <register.com> as a trademark.
None of the persons working for the Complainant in 1999, including its founder, Mr. Forman, still work for the company. Most of the evidence submitted in support of the Complaint came from Internet archives. The Respondent has not denied it was aware of <register.com> at the time it registered the disputed domain name, which incorporates the mark in its entirety.
The Respondent’s actions were, either willful or willfully blind.
D. Respondent’s Additional Submissions
The Complainant has not identified a date by which it claims that the trademarks acquired distinctiveness prior to the date of the registration. The Respondent complains that the material filed by the Complainant in its Supplemental Response could have been filed in the original Complaint.
The Complainant’s federal trademark filings rely entirely on activities conducted after 1998. There is no documentation of use of the marks in 1994.
In any event, the Complainant did not exist prior to its formation in
1999, as evidenced by information from the Department of States for the State
The Complainant claims that its lack of documentation of its use of its marks from 1994 to 1998 is a result of the passage of time and loss of institutional memory. In a nutshell, the Complainant cannot justify the evidence required to establish a common law trademark such as direct consumer testimony, consumer surveys, exclusivity, length and matter of use, amount and manner of advertising, amount and sales of customers, established place in the market and proof of intentional copying.
The Complainant’s evidence that falls within the relevant period in
question is incomplete. The declaration
by Ms. Wheeless shows revenue statistics in 1998 are only $219,359 compared
with $116m odd in 2001. There was no
sales revenue given for 1997. Likewise,
the advertising budget only starts at 1999.
Website visits began in November 2000 and the long list of publications
which discussed the Complainant’s website is first dated
The Complainant, formed in 1999, was not the original registered operator of the domain <register.com>. Whereas, the Respondent was clearly offering registration of “.com,” “.net” and “.org” names in 1997 and was accredited to and launched “.uk,” “.to,” “.web” and “.cc” domain names.
The evidentiary burden on the Complainant to establish secondary meaning is substantial. Numerous texts and cases were cited in support of this proposition.
In determining bad faith, the date of acquisition of a trademark is important. The Complainant has not shown that the alleged common law trademark acquired sufficient distinctiveness as at the date of registration of the disputed domain name so as to qualify as a common law mark.
The issues raised by the Complainant relating to Alter Vister are irrelevant.
(a) The disputed domain name is identical to a registered trademark in which the Complainant has rights.
(b) The Respondent has demonstrated that it comes within Paragraph 4(c)(i) of the Policy and, therefore, the Complainant has not established that the Respondent has no legitimate rights or interests.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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 disputed domain name is identical to the trademark REGISTER, registered by the Complainant. It is also confusingly similar to the Complainant’s registered trademark REGISTER.COM.
For the purposes of Paragraph 4(a)(i) of the Policy, it does not matter that a trademark was registered after the disputed domain name. However, the fact that the disputed domain name was registered long before the trademark was finally registered, and certainly before the application for trademark had been filed in the USPTO, does not assist the Complainant.
In the extensive, and often repetitive, pleadings of both parties, there is no explanation from the Complainant as to why it has taken almost 10 years for it to bring a Complaint under the UDRP in respect of the disputed domain name.
The Panel cannot find it proved that the Complainant has proved a common law trademark prior to the date of its application for a trademark in 1999. The following matters weigh with the Panel in reaching this conclusion:
(a) There is no evidence to show that the business of Mr. Forman or his company was acquired legally by some form of assignment by the Complainant, which was registered as a corporation only in 1999.
(b) The assertion in the trademark documentation, that the mark was first used in commerce in 1994, has not been demonstrated.
(c) Possibly because of changes of personnel or loss of records, the Complainant is unable to satisfy the normal requirement for a common law mark – i.e. proof of distinctiveness or secondary meaning.
(d) In other words, the Complainant has not proved it had a common law trademark prior to the registration of the disputed domain name.
(e) This Panel has to deal with the evidence as it is presented to it. Therefore, decisions of previous Panels involving the Complainant are of limited worth.
(f) Whilst the Panel shares some of the Respondent’s misgivings about the appropriateness of a trademark registration of a generic word such as “register” (which word can apply in many situations), it is not usually possible for the Panel to question the validity of a trademark registration. The Complainant must be taken to own valid trademark registrations. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Para.1.1, and the cases there cited.
Whilst the Complainant gave the Respondent no rights in respect of the disputed domain name, the Respondent has satisfied the onus under Paragraph 4(c)(i) of the Policy. It is clear from the evidence that it has been, since 1997, conducting a business of registering domain names and, in particular, registering domain names for the country code “.cc.” At the date when the Respondent commenced this business in 1996, the Complainant was not legally in existence and there was no documentary evidence of the Complainant having acquired the business of FIC.
In late 1997, the Respondent cultivated a connection with the administrator of the “.cc” country code, apparently seeing value in selling domains with this suffix. The Respondent registered a number of generic names with the “.cc” suffix which it believed would turn out to be of value. The disputed domain name was one of these. The Respondent had rights in the disputed domain name when it registered it in 1997, before the Complainant had established rights in the mark. See Warm Things Inc. v. Weiss, D2002-0085 (WIPO Apr. 18, 2002).
“Register”, being a common word used in connection with domain hosting services, the Panel finds that the Respondent is using the disputed domain name in connection with a bona fide offering of services and that it was doing so before it had notice of the dispute.
It is unnecessary to consider bad faith, in view of the Panel’s finding under Rights and Legitimate Interests.
This case, again, demonstrates the difficulties faced by Complainants who bring complaints in respect of domain names that have been registered for a long period, in this case, 10 years.
The Panel concludes that relief shall be DENIED.
Hon. Sir Ian Barker, QC
Sandra J. Franklin Q. Todd Dickinson
Dated: 18 March 2008