Michael Wheeler v. Rarenames, Inc. c/o RareNames WebReg
Claim Number: FA0812001237607
Complainant is Michael Wheeler Alaska, USA (“Complainant”). Respondent is Rarenames, Inc. c/o RareNames
WebReg (“Respondent”), represented by Erik
S. Zilinek, of NameMedia, Inc.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <w2b.com>, registered with Domainadministration.com Llc.
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, Panelist.
Complainant submitted a Complaint to the National Arbitration Forum
On December 23, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 12, 2009 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
Complainant requests that the domain name be transferred from Respondent to Complainant.
The Complainant owns a registered
The Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the registration to the Complainant who is the owner of the trademark or to a competitor for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name.
The Respondent has shown the disputed domain name for sale at US$21,200 as of December 2, 2008.
In contrast to the Complaint, the Response is extremely comprehensive
and is supported by an affidavit from the Respondent’s Chairman and Chief
Executive Officer, Mr Conlin. He deposes
that the Respondent registered the disputed domain name on
Since 1999, the Respondent has developed a large portfolio of domain names incorporating common words, generic and short terms, as well as 10s of 1,000s of names incorporating 3-character acronyms. Some of these are offered for sale to the general public through <mydomainsBB.com>.
The Respondent did not register the disputed domain name for the purpose of selling it to the Complainant. When the Respondent registered the disputed domain name – more than 2 years before the Complainant filed its trademark application – the Respondent did not know, nor could it have known, that the Complainant had any interest in what was otherwise a generic acronym. Because the Respondent knew nothing of the Complainant’s geographically-remote use of its later registered mark, it could not have registered the disputed domain name with the intent of disrupting the Complainant’s business.
The Complainant made no attempt to contact the Respondent through the
Respondent’s publicly available trademark complaint procedure at <mydomains.com>. The first notice the Respondent received of
the dispute was on
The Respondent’s proprietary technology allows it regularly to screen acquired domain names against trademarks filed and registered in the US Patent & Trademark Office (US PTO). Because there was no trademark registered as of the date the Respondent acquired the disputed domain name, there was no result from any such search. As part of further efforts to avoid invading third-party rights, the Respondent has installed robots.txt to prevent its domain names as well as the content of the websites associated therewith from being indexed by search engines. Consequently, its domain names and associated websites do not appear in organic search results and thus never alongside the Complainant’s primary domain name or the content of its associated website.
In other words, the only way for Internet users to access, much less discover the websites of its domain names, is to directly type the domain name into the address bar of the browser. The Respondent disputes that the Claimant holds rights in the acronym W2B, although it acknowledges that the Complainant does have a registered trademark.
The Respondent is conducting a legitimate business of dealing in domain names, particularly generic domain names or common acronyms. It clearly falls within Paragraph 4(c)(i) of the Policy in that it was conducting a legitimate business before notice to it of the dispute. It has demonstrated use of the disputed domain name in accordance with the bona fide offering of goods and services. The expression “W2b” is by no means exclusively associated with the Complainant. It appears in numerous third-party web-pages unrelated to the Complainant.
Since acquiring the disputed domain name and before notice of the dispute, the Respondent has used the disputed domain name in connection with Internet advertising in a variety of subjects related, among other things, to the web business relevance of the acronym W2b. Thus, it constitutes a bona fide offering of goods and services. Banco do Brasil S.A v. The Universal Kingdom LLC, D2008-0389 (WIPO June 6, 2008).
In that case, the Respondent registered to resell 49 generic domain names. The panel held that no inference concerning the respondent’s knowledge could be drawn from the nature of the disputed domain name, even if it consisted of a short common place acronym. A domain name which incorporated a common acronym constituted the use of the domain name for a bona fide offering of goods and services (see Williams, Babbitt & Weisman, Inc. v. Ultimate Search, FA 98813 (Nat. Arb. Forum Oct. 8, 2001).
Moreover, it is established that the sale of domain names constitutes a
bona fide offering of goods and
services where the respondent is unaware of the complainant’s rights in a mark
(see Micron Tech., Inc. v.
Audiopoint Inc. v. eCorp, D2001-0509 (WIPO June 14, 2001)).
Further, the Complainant has not proved the third element that the Respondent registered and used the disputed domain name in bad faith. There is nothing to indicate that the Respondent registered or acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the registration to the Complainant or a competitor. At the time the Respondent registered the disputed domain name, it was unaware of the Complainant’s mark or the Complainant, since the Complainant had not at that stage registered (or even applied to register) its trademark. Registration or general offers to sell domain names which consist of a common acronym cannot be considered acts of bad faith – see Trana SA v. Rarenames, Webreg, D2007-0489 (WIPO June 7, 2007).
Merely offering to sell a domain name to the general public is not bad faith under the Policy and the acquisition of deleted domain names has been endorsed as a bona fide practice under the Policy – see Vernons Pools Ltd v. Vertical Access Inc., D2003-0041 (WIPO March 12, 2003). The fact that a disputed domain name was registered after being deleted favours the Respondent because the deletion is a signal that the prior registrant has abandoned any claim to it.
(a) The disputed domain name is identical to a registered trademark in which the Complainant has rights.
(b) The Respondent has demonstrated that, before any notice to it of the dispute, it has used the disputed domain name in connection with the bona fide offering of goods and services. Therefore, the Respondent has established a defence under Paragraph 4(c)(i) of the Policy.
(c) The Complainant has not proved that the Respondent has no rights or legitimate interests in the disputed domain name.
(d) The Complainant has not proved that the disputed domain name was registered and is being used in bad faith.
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.
Although the Complainant’s trademark was registered after the Respondent acquired the disputed domain name, the consensus view of UDRP panelists is that a complainant may still obtain a finding of a name identical or confusingly similar to a trademark.
The UDRP makes no specific reference to the date on which the owner of the trademark acquired rights. (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Paragraph 1.4 and the authorities there noted).
However, that commentary notes that, in these circumstances, it can be difficult to prove that a domain name had been registered in bad faith since it is difficult to show that it had been registered with a future trademark in mind. That is, of course, the very situation in this case. The Complainant has, therefore, proved the first element of Paragraph 4(a).
The Complainant has offered no real evidence to support a finding of a common law mark prior to the trademark registration. See WIPO Overview at paragraph 1.7 for what needs to be shown for a successful assertion of a commonlaw mark.
The Respondent has gone to considerable
lengths in its Response to show that it conducts its business as a dealer in
domain names in a responsible manner. It
has filed an affidavit from its Chief Executive which demonstrates that the
Respondent goes to some trouble to ascertain that no domain name registration
is likely to infringe a
The Respondent has clearly demonstrated that
it comes within Paragraph 4(c)(i) of the Policy in that, prior to its first
notice of the dispute (which was not until
Furthermore, it is doubtful that the Complainant has established even a prima facie case in support of its arguments that the Respondent lacked rights and legitimate interests. The disputed domain name is an acronym for terms in generic and of common use. It is a legitimate business practice to be a generic name reseller and the Respondent has established its rights and legitimate interests in the disputed domain name as part of its business (see Front Range Internet Inc. v. Murphy, FA 145231 (Nat. Arb. Forum April 4, 2003).
The Respondent has not proved that, at the time the Respondent registered the disputed domain name, the Complainant knew of its then common law mark, if it had one. As Paragraph 3.1 of the WIPO Overview comments: “Normally speaking, where a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right.”
The Complainant has not established anything
like what is necessary to establish a common law mark existing prior to the
date of registration. The Complainant
must show the name has become a distinctive identifier associated with the
Complainant and its goods and services.
Relevant evidence of a secondary meaning includes length of time and
It is quite clear that the Respondent has acted in good faith throughout and there is no possibility of a finding of either bad faith registration or use.
Having considered all three elements under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Hon. Sir Ian Barker, Panelist
Dated: January 29, 2009
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