Question Mark Computing Ltd. v. Russell
Travis a/k/a Domainnamelab
Claim Number: FA0208000123919
PARTIES
Complainant
is Question Mark Computing Ltd.,
London, UNITED KINGDOM (“Complainant”).
Respondent is Russell Travis a/k/a Domainnamelab, Bakersfield, CA, USA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <questionmark.us>,
registered with Enom, Inc.
PANEL
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in serving as sole Panelist in
this proceeding.
G.
Gervaise Davis III, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on August 28, 2002; the Forum received a hard copy of the
Complaint on September 4, 2002.
On
September 3, 2002, Enom, Inc. confirmed by e-mail to the Forum that the domain
name <questionmark.us> is
registered with Enom, Inc. and that the 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-name disputes brought by third parties in accordance
with usTLD Dispute Resolution Policy (“usTLD Policy”), approved by the U.S.
Department of Commerce (“DOC”) on February 21, 2002, the Rules for the usTLD
Dispute Resolution Policy (“usTLD Rules”) as adopted by the DOC, and the
National Arbitration Forum’s Supplemental Rules (“Supplemental Rules”). These
usTLD Policies can be found in .PDF format on the Internet at
http://neustar.us/policies/docs/usdrp.pdf.
On
September 11, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of October 1, 2002 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 postmaster@questionmark.us by e-mail.
A
timely Response was received and determined to be complete on September 26,
2002.
It
was subsequently discovered that due to a minor clerical error, the
Notification of the Complaint actually sent to Respondent erroneously referred
to the UDRP rules, even though this Complaint was actually filed under the
usTLD Policy that is the procedure applicable to the .us TLD. The usTLD Policy and the usTLD procedural
Rules are, for all practical purposes identical to the UDRP, but in order not
to prejudice the Respondent or the Complainant, a second Notification was given
with the proper references, which Notification gave the Respondent additional
time to respond. Subsequently, on
October 22, 2002, the Respondent replied that he was satisfied with the
Notifications received and elected not to file any further formal Response; in
his e-mail he waived any defects in the Notification and appointment of the
Panelist selected earlier. All of Respondent’s
e-mails to the Forum were considered by the Panel in reaching this decision.
On October 15, 2002, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed G. Gervaise
Davis III, Esq., as the sole Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
makes the following claims, which the Panel sets forth here largely verbatim
since they are concise and to the point, unlike many other Complaints:
[a.] Question Mark refers to the legal
name of Complainant’s companies.
Question Mark Corporation & Question Mark Computing Limited. Questionmark is used when referring to one
of the companies, the group of companies or its products. Our principal domain name is registered as
<questionmark.com>. Complainant
also registered <questionmark.co.uk>, <questionmark.info>, and
<questionmark.biz>.
[b.] Respondent has no rights or
legitimate interests in respect of the domain name(s) because:
(i.)
The domain name is identical or confusingly similar to both our company names
and trademark. The mark QUESTION MARK
has been registered by Question Mark Computing Limited since 16th February 1989
in U.S.A. in class 009.
(ii.)
Respondent’s business name bears no connection or relevance to the name
questionmark, nor are they offering any goods or services branded under that
name.
(iii.) The Respondent’s organization is
called domainnamelab and its domain name is called <domainnamelab.com>,
and to Complainant’s knowledge the Respondent as an individual, business, or
other organization has never been commonly known by the domain name <questionmark.us>.
It can be construed that the domain name <questionmark.us> has
been registered or used in bad faith by the Respondent because their
organization is in the business of buying domain names to sell later.
[c.] The Respondent’s domain name has
been registered or used in bad faith because:
(i.)
The Respondent is in the business of buying domain names to sell. It appears that they have bought the domain
name <questionmark.us> for this purpose. This is in direct conflict with our trademark QUESTION MARK.
(ii.)
The fact that the Respondent has registered the domain name <questionmark.us>
has prevented Question Mark Computing Limited as the legal owner of the
trademark QUESTION MARK from registering the mark in the corresponding domain
name of <questionmark.us>.
(iii.)
Even though it may not have been the intention of the Respondent to have
registered the domain name primarily for the purpose of disrupting the business
of a competitor; such a situation could occur.
(iv.)
Complainant cannot say for sure, but there is nothing to stop the Respondent
using the domain name <questionmark.us> to intentionally attempt
to attract, for commercial gain, Internet users to Respondent’s web site or
other on-line location, by creating a likelihood of confusion with the
Complainant’s mark as to the source, sponsorship, affiliation, or endorsement
of Respondent’s web site or location or of a product or service on Respondent’s
web site or location. If this situation
were to occur there would be massive damage to the integrity of Complainant’s
business, and consequently the business would suffer badly.
B.
Respondent
Respondent
chose not to file a formal Response, but in letters to the Resolution provider
stated, among other things, that:
My
"specialty" (as confirmed by the listing in DomainNameLab.com) is the
creation of non-generic domain names, mostly because there's where the fun is,
but also because generic names are generally not trademarkable, therefore, not
defensible. My understanding is that,
for example, one cannot tie up the word "trademark" so tight that no one
else has access to it. Furthermore, I
have not listed QuestionMark.us for sale at DomainNameLab, and have no
intention of doing so. . . . . On the other hand, I am most impressed with
the procedures that ICANN has come up with to protect those with legitimate
claims from those who would harass, or otherwise defraud the holder of a
similar internet address.
The
essence of his defense is that he feels he is legally entitled to register and
use for his own purposes any domain name that is generic or descriptive and
that this name is one that appealed to him for such possible personal use in
the future. The Panel notes that
although his website www.domainnamelab.com
does list some 700 domain names for sale, the domain name at issue is not
listed as available and when attempting to reach it on the Internet, no
response occurs, so it is apparently not in use at this time
FINDINGS
(1) the domain name <questionmark.us> is identical and potentially confusingly
similar to Complainant’s registered trademark;
(2) the evidence on whether Respondent
has a right or legitimate interest in the domain name at issue is inconclusive;
and
(3) Complainant has failed to demonstrate
evidence that the domain was registered and used in bad faith, although it
might be able to do so in the future, depending on later use.
DISCUSSION
Paragraph 15(a) of the Rules for usTLD (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 usTLD 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 or is being used in bad faith.
Identical and/or Confusingly Similar
There is no question that the domain name
<questionmark.us> is identical
to the registered trademark of Complainant, other than the extension “.us”
which is not relevant to the issues here as numerous prior UDRP and other
domain name system policy cases have held.
Respondent does not contest this conclusion, merely contending that it
is generic and the name of a punctuation mark, which it is, as well as
Complainant’s registered trademark.
Rights or Legitimate Interests
In light of the conclusions of the Panel
under the next section, any conclusion on this point is not of particular
importance; however, for completeness, the Panel concludes that at this point
in time Respondent has not shown any particular right or legitimate interest in
this domain name in the normal domain name dispute sense, nor has Complainant
shown that Respondent could not establish such rights.
A
peculiar element of this case turns on the fact that, in principle, the word
“questionmark” is merely the name of a form of punctuation in the English and
several other languages and as such might be said to be generic or
descriptive. If so, it is largely unprotectable
unless used for a similar product or service that would confuse the
public. On the other hand, a search of
the US PTO database and a search on several popular Internet search engines
would indicate that Complainant’s use of this term as a trademark is nearly
unique and that most of the hits turned up in the Internet search relate solely
to products or services of Complainant to the level that the mark is almost one
that a trademark court would consider a famous or unique mark for goods or
services.
At this point, the Panel simply concludes
that Respondent could, perhaps, demonstrate a right or legitimate interest in
the domain name, but has not at this point done so. Similarly, however,
Complainant has not convinced the Panel that Respondent could not and does not
have such a right. Certainly, there are
uses of the word that Complainant’s trademark registration could not prohibit,
such as the personal use that Respondent suggests it might have for him. Since there is no use of it at this time, however,
the Panel feels that evidence on this issue is inconclusive and will leave it
at that.
Registration or Use in Bad Faith
Based upon the sparse evidence and mere
supposition relied upon and submitted by Complainant, the Panel cannot
conscientiously conclude that the domain name <questionmark.us> was registered in bad faith by
Respondent. The supposition that the
name was registered for sale is not sufficient to support this conclusion and,
in fact, Respondent’s informal response simply says it was registered with
several possible uses in mind and because he collects generic domain
names. This is not bad faith.
Nor can it be said that Respondent is
using it in bad faith, in that it is not being offered for sale to anyone, and
in fact is not in use. Merely warehousing domain names, or collecting them, as
Respondent claims he does, is not bad faith use, unless there is a showing of
doing so to prevent the trademark owner from using the name or a pattern of
collecting trademarked domain names and offering them for sale. See General Electric Co. v.
Kasinga, D2000-0389, (WIPO July 14, 2000) and General Electric Co. v.
FORDDIRECT.COM, Inc., D2000-0394 WIPO June 22, 2000) (“The
‘warehousing’ of domain names corresponding to the marks of third parties does
not constitute bad faith solely because it prevents those third parties from
registering the names.”) Cf. SBC
Communications Inc. v. Eworldwideweb, Inc., D2002-0608 (WIPO Oct. 7, 2002)
(asserting “[t]here is no bad faith in registering, or offering to sell, a
domain name consisting of a common English term, if used in a descriptive,
generic, or other non-trademark sense.”)
There is simply no evidence presented by Complainant on which the Panel
could find bad faith use at this time.
However, in recognition that subsequent
use might support both bad faith registration and later bad faith use, this
Panel wishes to make clear that this decision is not a finding or conclusion
that Respondent did, in fact, register the name in good faith or is using it in
good faith. This is only a conclusion
that, as of this moment in time, there is no evidence either way. The burden is on the Complainant to prove
its case, which it might be able to do in the future, but did not do so at this
time.
DECISION
For the reasons set forth in the
Discussion section, the Panel orders that the Complaint be dismissed without
prejudice to filing a future claim along the same lines, but for now that the
domain name at issue NOT be transferred to Complainant.
G. Gervaise Davis III, Esq., Panelist
Dated: November 11, 2002
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