Karsten Manufacturing Corporation v. Pingify Networks Inc.
Claim Number: FA0811001232823
Complainant is Karsten Manufacturing Corporation (“Complainant”), represented by John D. Titus, of The Cavanagh Law Firm,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ping.me>, registered with GoDaddy.com, Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Debrett G. Lyons, Calvin A. Hamilton and David S. Safran as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 6, 2008; the National Arbitration Forum received a hard copy of the Complaint on November 6, 2008.
On November 7, 2008, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <ping.me> domain name is registered with GoDaddy.com, Inc. and that Respondent was the registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 14, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 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 December 3, 2008.
Complainant submitted an Additional Submission on December 19, 2008. Complainant’s Additional Submission is considered untimely and deficient pursuant to Supplemental Rule 7 since it was received after the deadline for submissions. The Panel has reconsidered that decision, as discussed below. Respondent also made Additional Submissions which were received in a timely manner.
On December 12, 2008, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Debrett G. Lyons (chair), Calvin A. Hamilton and David Safran as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant asserts trademark rights and alleges that the disputed domain name is identical to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
The detail of the Complaint is considered in the Discussion which follows below.
Respondent does not contest that Complainant has trademark rights or that the disputed domain name is confusingly similar to the trademark but denies it acted in bad faith and argues that it has a legitimate interest in the domain name.
The detail of the Response is considered in the Discussion which follows below.
C. Additional Submissions
Both parties made Additional Submissions which have been taken into account by the Panel and which are referred to as required in the Discussion which follows below.
along with its subsidiary company, Ping Inc., is a manufacturer of golfing
equipment sold under the trademark
2. The evidence shows that the trademark has been in use for almost 50 years and is well known to the golfing and sports community.
is the proprietor of many U.S. Federal trademark registrations including, for
example, Reg. No. 704,552 for
also has trademark registrations in
was incorporated in
6. The disputed domain name was registered on August 17, 2008.
7. Respondent purchased the domain in a public auction for $USD 12,500.
8. There is no relationship between the parties, nor prior to the Complaint had they been in contact with one another.
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.”
Preliminary Procedural Issue 1: Deficient Additional Submissions
The National Arbitration Forum's Supplemental Rule 7 permits supplemental submissions provided that they are: (a) accompanied by an appropriate filing fee and (b) timely filed. Complainant submitted out-of-time Additional Submissions and the National Arbitration Forum found non-compliance with Supplemental Rule 7.
In these circumstances the Panel has discretion whether to accept or reject those submissions.[i] In this case, the Panel has accepted and given full consideration to Complainant’s Additional Submissions since Complainant gave a convincing reason for its failure to meet the due date and because the submissions are pertinent to the central matters at issue in this dispute. Moreover, the Panel considers that the Additional Submissions should be considered because Respondent reacted by filing its own (timely) Additional Submissions which can only be properly understood in the context of prior argument. Finally, Panel takes the view that the complexity of the dispute merits consideration of all submissions.[ii]
Preliminary Procedural Issue 2: Identity of Respondent
Further to the Procedural History set out above, it is to be noted that on the date on which the Complaint was filed, November 6, 2008, the WHOIS information showed the domain name registrant as Domains By Proxy Inc. As originally filed, Complaint nominated Domains By Proxy Inc. as Respondent. After identification by the Registrar of Respondent and at the invitation of the National Arbitration Forum, the Complaint was amended to nominate the current Respondent.
Much of the argument from both sides centered on the question of who should be properly nominated as respondent. Complainant was determined to treat Domains By Proxy Inc. as the respondent, whilst Respondent argued that it was the correct entity. Whilst this Panel is aware that the facts here invite a number of questions concerning interpretation of the Policy which have engaged the close attention of other panels,[iii] it is also conscious that the overriding intention of the Policy is to provide a practical alternative to court proceedings to combat abusive domain name registrations. Against that fact would stand the manifest fiction of investing a proxy service company with either good faith or bad faith intentions. This Panel takes the pragmatic view that if the identity of the beneficial owner of the domain name is known, can be readily identified, or is revealed by a registrar in response to a complaint, then it should be the named respondent and the case under the Policy should be made against that party.
The Panel finds that Respondent has been properly named.
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;
(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.
contends that the disputed domain name is legally identical to Complainant’s
trademark because it contains that mark in its entirety and merely adds the
The Panel has no hesitation in finding that Complainant has satisfied the first element of the Policy.
In consequence of earlier findings, it is the rights or legitimate interests of the named Respondent which are under examination. That said, the Panel finds that the circumstances described in the Complaint[vii] are sufficient to constitute a prima facie showing by Complainant of absence of rights or legitimate interest in the disputed domain name and so shift the evidentiary burden to the Respondent to show that it does have rights or legitimate interests in that name.[viii]
Respondent’s key argument throughout its submissions is that it does have a legitimate interest in the disputed domain name (and so by extension can not have acted in bad faith).
It has been observed by panelists in formative decisions that there is a necessary connection between the elements of legitimate rights, on the one hand, and bad faith, on the other. In particular, if it can be seen that a respondent has rights in a domain name, then it is generally difficult to assimilate that with a conclusion that the respondent had acted in bad faith.[ix]
Paragraph 4(c) of the Policy sets out certain circumstances which if found by the Panel to be proved demonstrate Respondent’s rights or legitimate interests in the domain name for the purposes of paragraph 4(a)(ii) of the Policy. Those sets of circumstances are not exhaustive and other instances of legitimate interests might be in evidence however it is logical to first test the present facts against those given circumstances. They are that:
(i) before any notice to the domain name registrant of the dispute, the registrant used , or made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the domain name registrant (as an individual, business, or other organization) has been commonly known by the domain name, even if the registrant has acquired no trademark or service mark rights; or
(iii) the domain name registrant is making a legitimate non‑commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Subparagraph 4(c)(ii) and (iii) have no direct application to the facts of this case. Subparagraph 4(c)(i) was argued by Respondent. Unlike the other scenarios, it requires a certain state of affairs to have existed before Respondent had any notice of the dispute. There is no evidence of pre-Complaint contact between the parties and so the relevant date is no earlier than November 14, 2008, the date on which Complaint was communicated to Respondent.
At various points in its submissions Complainant suggests that Respondent was on constructive notice of its rights, but for the purposes of paragraph 4(c)(i) of the Policy, the relevant determination is the date when Respondent first had any notice of the dispute. Imputed knowledge of Complainant’s US or Canadian trademark registrations, for example, is not notice of the dispute. Imputed knowledge of Complainant’s common law reputation is likewise not notice of the dispute. The question before the Panel is whether what was done by Respondent prior to November 14, 2008 amounted to use, or preparations for use, of the disputed domain name in connection with a bona fide offering of services.
Earlier UDRP decisions have held that even perfunctory preparations for use might suffice.[x] Some more recent cases have imposed a higher standard. What is clear is that paragraph 4(a)(ii) of the Policy refers to “rights” or “legitimate interests.” The Panel takes the view that the draftsmen of the Policy used those two expressions deliberately, comprehending them to have different meanings. Subparagraph 4(c)(i) itself draws out that distinction by requiring either use of the domain name, or demonstrable preparations for its use, in such a way to reflect a design where the former gave rise to a “right” and the latter to a “legitimate interest.”
Respondent alleges that it is a company still
in a nascent state of business development.
It was incorporated in
Emergence of the “.me” ccTLD gave Respondent the opportunity to market the product under the name “Ping Me”. Respondent purchased the domain name in a public auction for $ USD 12,500 and as part of the ‘sunrise’ process for new “.me” domains during May 6 – 20, 2008.
Between purchase and Complaint, there was no developed website corresponding with the domain name. It was parked with the Registrar and, Complainant alleges, was driving pay-per-click revenue through links to competitors in business to Complainant.
Respondent sought to excuse that by stating that:
It is a fact that these advertisements are the result of Go Daddy using their own default landing page and opportunistically placing golf advertisements on it. These were not our advertisements, nor do we have a stake in them, nor did we request them.
Respondent reacted to receipt of the Complaint by promptly contacting the Registrar with a request that ads be turned off, to which the Registrar acceded.
There is no doubt that these combined facts sent mixed messages to the Panel. There is ample authority for the principle that a respondent can not abrogate responsibility for use of its domain name. Numerous prior decisions have, rightly in this Panel’s view, held that there is bad faith use of a domain name if it is parked at a revenue driving website which trades on traffic drawn by the magnetism of a third party’s trademark. The fact that links and advertising material might be added by the parking host and not by the domain name registrant itself has been held immaterial to the finding of bad faith use. Nor, for that matter, is bad faith use swept away by curative steps taken only after notice of a complaint.
The Panel would be at liberty to find that Respondent’s use of the disputed domain name was not bona fide in terms of paragraph 4(c)(i) of the Policy.[xi] Nonetheless, the better view is that this conduct should form part of the complete equation which measures whether there were in fact preparations to use the domain name, or a name corresponding to the domain name, in connection with a bona fide offering of goods or services.
On a balance of the
evidence, the Panel finds that the business being developed by Respondent prior
to notice of the dispute was not a sham and would amount to a bona fide offering of goods or
services. Furthermore, the Panel finds
that prior to notice of the dispute, the preparatory steps taken by Respondent
to establish that offering in connection with the name “Ping Me” were
legitimate and of substance. The
commitment in filing a
Against that landscape and in the face of a great many cases under this Policy where respondents have blatantly abused third party rights, the Panel is of the opinion that the bad faith use in this case should not disfigure Respondent’s other actions.
The Panel finds that Complainant has not discharged its onus to show that Respondent has no legitimate interests in the disputed domain name and so decides that Complainant has failed to satisfy the second element in Paragraph 4(a) of the Policy.
For the reasons set out above, it is not necessary to reach a finding on this aspect of the Policy.
Having failed to establish at least one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
REVERSE DOMAIN NAME HIJACKING
Respondent contends Complainant is engaging in reverse domain name hijacking through its submission of this Complaint. Respondent asserts it purchased the disputed domain name in an online auction in which Complainant failed to participate. Respondent alleges Complainant is using the arbitration process in bad faith in an attempt to hijack the domain name.
The Panel cites with approval the case of Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001), where it was said that to prevail on a claim of reverse domain name hijacking, Respondent must show that Complainant brought the claim in bad faith despite the knowledge that Respondent has an unassailable right or legitimate interest in the disputed domain name, or that Respondent lacks the requisite bad faith registration and use of the disputed domain name.
In Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000), the panel found that the complainant committed reverse domain name hijacking where it “advanced arguments that were tortuously artificial in the extreme, reckless both as to the justification for making those arguments and the seriousness of the overall charge against Respondent, who was manifestly no cybersquatter.” [xii]
In this case, Complainant had no reason to be aware of Respondent’s start-up business. Indeed, Respondent admits that it had taken steps to maintain the confidentiality of its product until launch. There is no evidence of pre-Complaint correspondence between the parties which might suggest Complainant’s desire to attain the domain name from Respondent.
The least benign motives that could be ascribed to Complainant are that it made no visible attempt to identify the beneficial owner of the domain name and that it relentlessly pursued its case to treat the proxy service company as respondent for transparently tactical reasons. Nonetheless, having regard to the authorities the Panel finds that this is not an instance of reverse domain name hijacking because Complainant brought this action in the belief that it has rights to the domain name.
Debrett G. Lyons
Calvin A. Hamilton
David S. Safran
Dated: January 5, 2009
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[i] See for example SuNyx Surface Nanotechnologies GmbH v. Primmer, D2002-0968 (WIPO Jan. 20, 2003) (the panel choosing not to consider either complainant’s or respondent’s additional submissions that were received late where neither set out any new facts or other circumstances that would justify the late submission); see also Am. Airlines Inc. v. WebWide Internet Commc’n GmbH, FA 112518 (Nat. Arb. Forum June 13, 2002) (deciding to accept both the complainant’s and the respondent’s second additional submissions, despite the fact that they did not comply with Forum Supplemental Rule 7).
[ii] See generally Reichert, Inc. v. Leonard, FA 672010 (Nat. Arb. Forum May 24, 2006); Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006); Pierret v. Sierra Tech. Group, LLC, FA 472135 (Nat. Arb. Forum July 1, 2005); Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002).
[iii] See Padberg v. Eurobox Ltd., D2007-1886 (WIPO Mar. 10, 2008); see also Baylor Univ. v. Domains By Proxy Inc., FA1145651 (Nat. Arb. Forum May 26, 2008).
[iv] It is noted that Reg. No. 704,552 stands in the name of Karsten Solheim and not Complainant, however for the purposes of establishing rights, there are sufficient later registrations in the correct name to satisfy this requirement.
[v] See State Farm Mut. Auto. Ins. Co. v. Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark STATE FARM establishes its rights in the STATE FARM mark pursuant to Policy ¶ 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i)).
[vi] See for example Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (stating that “[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (stating that “The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
Complainant contends Respondent is not commonly known by the <ping.me> domain name. Complainant states it has not authorized
Respondent to use its
[viii] See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000).
[ix] 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.”).
Shirmax Retail Ltd. v. CES Marketing
Group, Inc., AF‑0104
(eResolution Mar. 20, 2000); see also
Lumena s‑ka so.o. v. Express Ventures Ltd., FA 94375 (Nat. Arb. Forum
May 11, 2000); see also Royal Bank of
[xi] See for example TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).
[xii] See also Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001) (noting that a finding of reverse domain name hijacking requires bad faith on the complainant’s part, which was not proven because the complainant did not know and should not have known that one of the three elements in Policy ¶ 4(a) was absent); see also Mirama Enters. Inc. v. NJDomains, Abuse Contact: firstname.lastname@example.org, FA 588486 (Nat Arb. Forum Jan. 16, 2006) (finding that complainant has engaged in reverse domain name hijacking where the complainant commenced the proceeding despite possessing knowledge of the respondent’s rights in the disputed domain name); see also Watson Pharm., Inc. v. WhoisGuard, FA 588321 (Nat. Arb. Forum Dec. 19, 2005) (rejecting the respondent’s assertion of reverse domain name hijacking argument because there was no evidence that the complainant was using the Policy other than to declare its rights.).