National Arbitration Forum
DECISION
Atlanta Network
Technologies, Inc. v. ANT.COM LIMITED
Claim Number: FA0903001253155
PARTIES
Complainant is Atlanta Network Technologies, Inc. (“Complainant”), represented by William
D. Schultz, of Merchant & Gould P.C., Minnesota, USA. Respondent is ANT.COM LIMITED (“Respondent”), represented by John
Berryhill Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ant.com>,
which is registered with eNom, Inc.
(“eNom”).
PANEL
The undersigned, David H Tatham, Daniel B Banks, Jr. and Robert T Pfeuffer 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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (“the
Forum”) electronically on March 19, 2009; the
Forum received a hard copy of the Complaint on March 20, 2009.
On March 19, 2009, eNom confirmed by e-mail to the Forum that the <ant.com> domain name (“the disputed
domain name”) was registered with it and that the Respondent is the current
registrant of the name. eNom has verified that Respondent is bound by
the its 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 March 31, 2009, a Notification of
Complaint and Commencement of Administrative Proceeding setting a deadline of April 20, 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 postmaster@ant.com
by e-mail.
A timely Response was received and determined to be complete on April 20, 2009.
On April 28, 2009 pursuant to Respondent’s
request to have the dispute decided by a three-member Panel, the Forum
appointed David H Tatham, Daniel B Banks and Robert T Pfeuffer as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Introduction
Complainant
provided copies of two U.S.
trademark registrations ANT No.
3,381,449 and ANTONLINE No.
3,381,447 both of which were filed on June 20, 2007, and registered on February
12, 2008 claiming first use from February 25, 1997 for a wide variety of online
retail store services in Class 35.
Complainant
claims to be a
well-known online retailer of electronics, computer products, video games, DVDs
music and home and garden products since at least as early as 1996, with customers in the
United States and in other countries around the world, and to have invested a significant amount of money
promoting these products, all sold in connection with its trademark ANT. It contends that, as a result of its extensive use
and promotion of that mark, consumers throughout the United States and world
are aware of it, that it is recognized and relied upon as identifying
Complainant as the sole source of online services, and as distinguishing its
products and services from those of others so that, as a result, its trademarks
ANT and ANTONLINE have acquired substantial goodwill and are an extremely
valuable commercial asset.
Complainant operates a website at <www.antonline.com>
where it claims to have marketed all of its above mentioned products since at
least as early as 1996, and where it also offers a broader online search
mechanism via the “Google” search engine.
Complainant
contends that Respondent registered
the disputed domain name <ant.com>
on June 4, 1998, which is after it began using its trademarks. Complainant further contends that in or about 1999
Respondent’s domain name was associated with the Antagonist games network and
Heckler’s Online, Inc.; that from
about 2001 to 2002 Respondent changed the website several times each of which
change dealt with video games; that in 2004 Respondent disassociated the
website with video games (which, Complainant contends, infringed its trademarks
for the sale of video games), and associated the website with a links
directory, not only holding the domain name out for sale on <afternic.com> but also including links on the website
which related directly to the products which Complainant sold on its own
website. Complainant contends that
this use continued until approximately April 2006, when Respondent removed all
content. Later in 2006 the website
indicated that Ant.com was “coming
soon,”
Complainant states that, based on its trademark rights in ANT, it approached
Respondent and demanded that the domain name be transferred. Complainant contends that during a telephone
conversation with Complainant’s President, Mr.
Charles Comerford, Respondent made the following statements:
·
Respondent admitted that the domain name ant.com was being held unused
·
Respondent admitted that he had thousands of other domain
names
·
Respondent admitted that the domain name was being held
to sell for millions of dollars
·
Respondent admitted that the website was “worthless,”
but that he was looking for the “jackpot” if he could hook a “big fish”
Recognizing that Respondent spoke French, Mr.
Comerford requested that Arnaud Choplin, one of Complainant’s computer
programmers who speaks French, contact Respondent.
Mr. Choplin did so and claims to
have learned that the disputed domain name was being held and would be sold for
million plus dollars.
Declarations to this effect from Messrs.
Comerford and Choplin were annexed to the Complaint.
After this, Complainant contends that Respondent changed the contents of
the website to its current form, which is that of a search engine associated
with 7Search.com, a pay-per-click company which offers affiliates
money for advertisements placed on its website.
Complainant contends that this web search functionality directly overlaps with
its own search engine technology.
Complainant contends
that, on March 19, 2009 when it filed its initial Complaint, Respondent’s
contact information set forth in the WHOIS was “Whois Agent, C/O ant.com.”
but that subsequent to this, the contact information was changed to ANT.COM LIMITED.
Confusingly Similar.
Under this Heading, Complainant
contends –
·
That the disputed domain name is identical and
confusingly similar to its trademarks ANT and ANTONLINE and that the
addition of .com to a mark is not a
distinguishing feature. Consequently
ANT.COM = ANT.
·
That
consumers are likely to be confused that the current website located at the disputed domain
name is sponsored by, affiliated with, or in some other way connected to
itself.
·
That it has used a search engine in connection
with its offerings of products since at least as early as 1996, which is well
prior to Respondent’s first use of a search engine, and because consumers are
able to search for the same products and services on both its and Respondent’s
websites and retrieve similar results , confusion is likely.
·
That Respondent has changed the content of its
website several times and that this shows the likelihood that Respondent
disregards Complainant’s trademark rights, and that Respondent’s previous sites
infringed its trademark rights based on the association with video games.
·
That it is natural for consumers to assume that
the website located at the disputed domain name is associated, affiliated, or
in some other way connected with Complainant because that site offers the same
products via search and that Respondent’s use of links that are directly
related to its products will increase the likelihood of confusion.
Rights or Legitimate Interest.
Under this Heading, Complainant
contends –
·
That Respondent is not using the disputed domain
name for a legitimate noncommercial or fair use because the name is
commercially used to offer advertising and links to third party websites.
·
That the registration of a domain name for the
purpose of passively holding it for sale, and redirecting Internet users interested
in another’s products, is not a bona fide
offering of goods pursuant to paragraph 4(c)(i) of the Policy, or a legitimate noncommercial or fair use under paragraph
4(c)(iii) of the Policy.
·
That Respondent’s use
of the disputed domain name after it had been contacted by Complainant, is not bona fide in that the intent was to
cause unsuspecting consumers to click on Respondent’s pay-per-click links.
·
That Respondent has no bona fide interest
in the disputed domain name pursuant to paragraph 4(c)(i) of the Policy in that
prior to Complainant’s communication with Respondent, Respondent had no intent
to use the domain name. After the communication, Respondent directed
the website to a pay-per-click search engine that was designed to divert
traffic away from Complainant and which has been used by others to create
confusion.
·
That Respondent has received neither permission
nor a licence to use Complainant’s trademark pursuant to paragraph 4(c)(ii) of
the Policy.
·
That Respondent is not using the mark for legitimate
noncommercial or fair use pursuant to paragraph 4(c)(iii) of the Policy because
Respondent has used the domain name to (1) infringe on Complainant’s trademark
rights, (2) as a placeholder site, and (3) a site for commercial advertising.
·
That Respondent’s
admission that the sole purpose in maintaining the domain name was to hit the
jackpot and sell the domain name for over a million dollars is not a legitimate
interest.
·
That Respondent’s
association with 7Search.com shows
that the website at the disputed domain name is nothing more than a
pay-per-click magnet and Complainant refers to the Decision in Google Inc.
v. Jon G, FA0203000106084 (NAF
April 26, 2002) as proof thereof.
·
That Respondent knew of Complainant and tried to capitalize on its offerings
by placing pay-per-click advertising in connection with the search results. The domain
name is not connected to a bona fide offering of goods or services and
is not a legitimate use.
·
That the respondent’s willingness to sell the
disputed domain name for more than its out-of-pocket costs provides additional
evidence that Respondent had no rights or legitimate interests in the contested
domain name).
·
That Respondent
is not commonly known by the mark and has not received permission from
Complainant to use the mark.
·
That Respondent’s purpose in registering and
using the domain name is to divert Complainant’s web traffic to a search engine
that contains advertisements that forward to Complainants competitors.
·
That Respondent’s use of the trademark ANT in
the domain name misappropriates Complainant’s goodwill and cheats consumers
into conducting searches on Respondent’s website when they think they will see
information regarding Complainant and the products associated with it.
Bad Faith
Under this Heading, Complainant
contends that the following actions by Respondent demonstrate its bad faith –
·
That Respondent’s registration of a domain name
in association with the trademarks ANT and ANTONLINE shows the registration was
in bad faith.
·
That Respondent’s offer to sell the domain name
for over $1,000,000.00 and admission
that it traffics in domain names with the intention of hitting a jackpot shows
bad faith pursuant to paragraph 4(b)(i) of the Policy.
·
That Respondent’s registration of multiple
domain names and use of the <ant.com>
domain name in connection with products similar to those of Complainant with
the constructive knowledge of Complainant’s trademark rights in that name shows
bad faith pursuant to paragraph 4(b)(ii) of the Policy.
·
That Respondent’s passive holding of the domain
name for a period of time and subsequent website that contains advertisements
for Complainant’s competitors shows Respondent’s bad faith pursuant to
paragraph 4(b)(iii) of the Policy.
·
That Respondent’s intentional attempt to attract
Internet users to its website by using a name that is confusingly similar to
Complainant’s trademarks ANT and ANTLINE is also in violation of paragraph
4(b)(iv) of the Policy.
·
That offering a domain name for sale for an
excessive value is evidence of bad faith.
·
That Respondent
has acted in bad faith by diverting customers to Complainant’s competitors.
·
That Respondent has acted in bad faith by intentionally
attempting to attract internet users to its website for commercial gain by creating
a likelihood of confusion with Complainant’s trademarks ANT and ANTONLINE.
·
That bad faith is shown because Respondent,
after communicating with ANT, placed content on the ant.com
website that created a likelihood of confusion. After speaking with Complainant, Respondent
associated the site at the disputed domain name with a search engine. The search
engine contained content delivered from 7search.com.
·
That Respondent’s willingness to place content
on its website that infringes on Complainant’s trademark rights shows its bad
faith.
B. Respondent
Introduction.
Respondent states that is a
software development company which uses
the disputed domain name for its corporate identity, and to provide
distribution and service to the hundreds of thousands of installations of its
Ant.com Toolbar.
This is a software product and it is downloaded from Mozilla.org for
installation into the Firefox browser some 39,900 times per week, with an
accumulated number of downloads from that
one site over 1,165,000 times as of the submission of the Response.
Respondent also states that
Complainant should have known that the disputed domain name was publicly sold
for a price of US$241,200 prior to its acquisition by Respondent, who has used
the domain name for distributing its product and who has had no intention of,
or conversations about, selling it.
Respondent further notes that
Complainant apparently believes that it acquired the disputed domain name in
1998, but in fact Respondent acquired the name privately in October 2006 after
the above mentioned highly publicized sale.
Identical
or Confusing Similar
Under this Heading, Respondent
notes that Complainant has two United
States federal registrations for ANT and for
ANTONLINE both of which issued in February 2008 in connection with online retail store services. However the above mentioned sale of the domain
name actually preceded Complainant’s filing of its trademark
applications.
Respondent notes that
Complainant claims in its Complaint that it “initially marketed its products online
at the website ant-group.com and did
so at least as early as 1996”. However attached to the Response were: a WHOIS
historical record from 2001, showing that the Complainant had not registered
the domain name <ant-group.com>
until 1997, as well as an extract from the record of the Georgia Secretary of
State showing that the Complainant was only formed on February 25, 1997. Respondent therefore queries how Complainant could
apparently have been using, in 1996, a domain name which was not
registered until 1997, and when it itself did not exist until1997.
Respondent further notes that
the Archive.org history of the
record of use of Complainant’s domain name <antgroup.com>
has been blocked using a robots.txt
file, thus rendering it impossible to confirm any of the Complainant’s claims about
such use. Respondent contends
that this technique of hiding historical
use of a
domain name is a tactic normally used by cybersquatters in UDRP proceedings,
and is a practice which has been held, in proceedings under the Policy, to be
evidence of bad faith.
Respondent notes that
Complainant claims to have been attempting to acquire the domain name since
2006, and suggests that, since it was apparently unable to obtain the domain
name at that time, Complainant then proceeded to obtain registration of the
trademark ANT in the United
States in 2008.
However Respondent contends that Complainant has shown no actual use of this
name as a mark, apart from a representation of ANTONLINE in connection with its
claimed “online retail store services.”
Respondent therefore concludes
that, under the first criterion of the Policy, Complainant has merely shown its
ownership of a United States
trademark registration, without any evidence of underlying use of the mark, and
in connection with several demonstrably false statements.
Legitimate
Rights or Interests
Under this Heading, Respondent states
that it is in fact a corporation which was registered in Hong
Kong in April 2008. This,
it contends, was just
prior to when it acquired the
disputed domain name, by which it is commonly known. Furthermore, it is not engaged in online
retail store services.
In addition, Respondent points
out that, the word ANT is a common word,
which is used concurrently as a business name or trademark
by many other non-infringing and non-competing businesses.
Annexed to the Response was a copy of a Google search
for the term “ANT” which had more than 97 million results,
among which Complainant does not appear among the
first 100, but which rates Respondent highly and which, at No. 86, contains a reference to Respondent’s “Ant.com Toolbar”.
Also annexed to the Response was a copy of 116 live or pending U.S. trademarks
which include the word ANT, of which 4 are for the word ANT alone. Respondent therefore concludes that the term "ANT" is a
common term which is not exclusively associated
with Complainant, but which is
used by a variety of parties, including Respondent, for purposes having nothing to do
with the Complainant's alleged online retail store services.
Respondent states that it is
the developer and distributor of the Ant.com
Toolbar. This has been distributed
since prior to notification of the present dispute and is a “plug in” for
Internet Explorer and Firefox browsers that allows users to download certain
types of video files from the Internet, so that such video files may be stored,
manipulated or viewed offline It also has other useful features. According to Respondent, its software has been
downloaded more than a million times for Internet Explorer, and an annex to the Response
contains evidence that its plug-in for Firefox has been downloaded 1,170,719
times, at a rate of 39,843 downloads per week.
The same Exhibit shows that Respondent’s software product is rated 4 out of 5
stars by 74 posted reviews at <Mozilla.org>
the earliest of which is dated July 17, 2008.
Respondent contends that these
reviews and other information about Respondent at various third-party sites
demonstrate that Respondent has been legitimately using the domain name, and is
commonly known as "ANT.COM".
In another annex to the
Response, Respondent’s site is currently shown to be approximately the 11,313th highest ranked site on the
internet, and the comparative traffic statistics show that Respondent’s site
has climbed from about the 5000th most popular site to its present rank, while the
Complainant’s site has only ranked from 40,000th
to 50,000th during the same period. Respondent therefore concludes that it is better
known for the Ant.com Toolbar than
is the Complainant for its online retail services.
Respondent sums up its position
by saying that because, prior to notification of the dispute, it had developed
and then launched a highly successful browser plug-in software product; because
it has been engaged in bona fide use of the domain name prior to notice of the
dispute; because its product has been approved for distribution by the Mozilla
Foundation and has garnered significant favorable reviews and recommendations;
because it is commonly known as Ant.com;
because it is not engaged in the conduct of online retail store services; and
because it in fact does not sell a single item to consumers whatsoever,
Complainant has failed to show that it lacks legitimate rights or interests in
the disputed domain name.
Bad
Faith
Under this heading, Respondent
commences by setting out the history of the ownership of the disputed domain
name. It contends that, as of October 3, 2006, the domain name was registered to a Mr. Murat Yikilmaz of Turkey but that in that year
DNJournal.com and other news outlets
publically reported that <ant.com>
had been sold on October 24, 2006
for US $241,000 to a Mr. Stephen
Pacaud. Shortly thereafter, Mr. Pacaud entered into discussions with software
developers interested in producing the Ant.com
toolbar, although without initially having a name for the product. Development and internal testing of the product
proceeded for several months in parallel with arrangements to acquire the
domain name from Mr. Pacaud.
Prior to the launch of the
toolbar product, Ant.com Ltd. was formed on April 7, 2008, and the domain name
was transferred by Mr. Pacaud to Ant.com Ltd.
in a private transaction by July 3, 2008.
However, in the Complaint, Complainant
has, according to Respondent, used records from Archive.org
to document how the disputed domain name was used by entirely unrelated parties
for several years prior to the Respondent’s acquisition of domain name. Respondent asserts that what matters in the
UDRP is the date when a disputed domain name is actually registered by the
Respondent, why it registered the
name, and what use it may have made of the name, not the activities of prior
registrants and users of the domain name.
Respondent contends that the activities
of Mr. Yikilmaz, from whom the name
was purchased for nearly a quarter million dollars, and the activities of other
prior registrants before Respondent, are not relevant to the Respondent’s
registration and use of the domain name and it quotes the case of The iFranchise
Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services [23658] D2007-1438 (WIPO December 18, 2007) in support
thereof.
Accordingly, Respondent
contends, the only relevant party under the third criterion of the Policy for
the purpose of determining bad faith registration and use is the Respondent –
Ant.com Ltd.
– and not prior registrants of the domain name whose activities are not related
to those of Respondent who is using the domain name to provide its search and
video download toolbar software.
Referring to Complainant’s allegations that there was an offer to sell
the disputed domain name, during a
conversation which Mr. Choplin
claims to have had on March 20, 2007 with Mr.
Pecaud, Respondent points out that
the Respondent in this Proceeding is Ant.com
Ltd., a Hong Kong corporation that
was formed in 2008, and to which Mr.
Pacaud transferred the domain name in 2008.
Thus, Mr. Choplin’s statement that “Respondent was holding the domain name out
for sale” must be wrong as Respondent did not exist when Mr. Choplin claims he made his telephone call in 2007. Furthermore, Respondent contends that it could not
have been possible for Mr. Choplin
to have spoken to Mr. Pecaud in France on March 20, 2007 since Mr. Pecaud was travelling at that time and had arrived
in JFK airport in New York on March 19, 2007 as was demonstrated by copies of
extracts from Mr. Pecaud’s passport
which were annexed to the Response.
In fact, Respondent alleges that at that time, Mr.
Pacaud was engaged in confidential discussions with Respondent's developers
relating to the development of Respondent’s software product, and he most
certainly would not have told Mr.
Choplin of such discussions.
Respondent speculates that whoever answered Mr.
Pecaud’s telephone may have said something flippant for the purpose of deterring
an open-ended anonymous inquiry about an asset which had been recently
purchased for nearly a quarter million dollars.
Respondent asserts that neither it nor Mr.
Pecaud have any knowledge of the conversation claimed to have been held by Mr. Choplin while Mr.
Pecaud was travelling outside France.
Respondent believes that, by
undertaking a little basic research, Complainant would have discovered in early
2007 that the domain name had recently been sold for $241,200. Respondent also notes that two months later, in June 2007, Complainant, who had
never before claimed a trade
or service mark right in ANT, filed a pair of trademark applications with the
USPTO, and then brought this
Proceeding after issuance thereof. Respondent
therefore suggests that Complainant
could have been aware of the sale
of the domain name in late 2006, and was prompted to file its trademark applications for the precise purpose of
attempting to make out a claim in this Proceeding.
The facts are that Respondent
has obtained a valuable domain name, consisting of a rare three letter word,
which it has used since such its acquisition for its popular Ant.com
Toolbar product. This has nothing to do with the Complainant's U.S. trademark claims
in connection with its online retail store services.
Respondent states that its
principals have been conducting research and development in the internet
browser and search engine field since 2005.
The name “Ant” was selected for the project, because the Respondent’s
principals had conceived of creating a search and download utility in which a
large quantity of users provide the necessary data to establish a search base. Because this “collective action” approach differs
from the typical Google/Yahoo 'spider' method, Respondent’s principals believed
that “ant” would be an appropriate name for their product since, unlike
spiders, ants are insects which operate collectively.
User behavior data collected by the Ant.com
software is utilized to generate “AntRank” website statistics, which may be
viewed at Respondent’s site.
Respondent, having an intention
to develop a browser plug-in product, and desiring to name it “Ant,” had every
right to negotiate the transfer of the domain name from Mr. Pacaud in a private transaction, just as
Complainant apparently sought to do.
The only difference is that the Respondent was successful.
When the project was ripe, and arrangements had been made for using the domain
name, Respondent's principals founded Ant.com Ltd. the product was launched
within days of the final transfer of the domain and since obtaining the domain
name, Respondent has continued to develop its software and has used the domain
name for the purpose of distributing this software.
Respondent states that it does
not understand Complainant’s allegations concerning its offering of an internet
search function, or how such an offering demonstrates bad faith. Respondent contends that Complainant has only
recently added a search box to the bottom of its web page which reads: “Can't
find it on ANTOnline™? Search the web with ANT™
Search:” followed by an internet search box.
An archived copy of the Complainant’s page from February 2008, which was
annexed to the Response, contained no such search box so Respondent alleges
that what Complainant has done is to copy the text from its own home page, “Search the Web with ant.com”, place a similar search box on its on site, and
then brought this Proceeding claiming that the Respondent is
“competing” with Complainant. Respondent
acquired the domain name in order to provide its search and video download
toolbar software products and services. The mere fact that one can use a search
engine to find consumer products on the internet does not mean that Respondent
is providing “online retail store services” even if Respondent operated in the United States. Respondent contends that, like the filing of its
two US
trademark registration applications after being unsuccessful in obtaining the
domain name, the appearance of an internet search bar on Complainant’s website
is a recent invention and includes text copied from Respondent’s site, all for
the purpose of making a false allegation in this Proceeding.
Respondent concludes that the
term “ANT” is subject to concurrent use by numerous and mutually non-infringing
entities for a variety of purposes, and Respondent is one of them. Even if one were to inappropriately apply a duty
of notice of US trademark registrations to Respondent, the registration and use
of the domain name by the Respondent has not been for online retail store
services, and hence Respondent’s registration and use of the domain name would
remain perfectly lawful. Complainant
has failed to show bad faith registration and use by Respondent.
FINDINGS
1. Complainant was formed in 2007 since when it
has traded as an online retailer of electronics, computer products,
video games, DVDs music and home and garden products from a website situated at
<antonline.com>. It has two U.S.
trademark registrations for ANT and ANTONLINE which were registered in February
2008 claiming first use from February 2007.
2.
Respondent was formed in Hong Kong in April 2008
and acquired the disputed domain name <ant.com>
July 2008 which was only a few months after the name had been sold to a third
party for nearly a quarter of a million US dollars.
It has created what it has called the Ant.com
toolbar which is a plug-in software product which allows users to download
various types of video files from the internet.
This appears to be popular inasmuch as this had, by April 2009, already been
downloaded over 1.1 million times with
nearly 40,000 downloads per week.
3.
The Panel finds that the trademark ANT and the
domain name <ant.com> are
identical.
4.
The Panel finds that Complainant has not made
out a prima facie case, so the
Complaint fails.
5.
The Panel has declined to find that Complainant
has indulged in reverse domain name hijacking.
DISCUSSION
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.
Identical and/or Confusingly Similar
Complainant has proved that it has registrations with the USPTO of its
trademark ANT and ANTONLINE and it was found, for example, in AOL
LLC v. Interrante, FA
681239 (NAF May
23, 2006) that where the complainant had submitted evidence of its
registration with the USPTO, “such
evidence establishes complainant’s rights in the mark pursuant to Policy ¶
4(a)(i).”; also, in Hershey
Co. v.
Reaves, FA 967818 (NAF June 8, 2007) it was found that the
complainant’s rights in the KISSES trademark through registration of the mark
with the USPTO “date back to the filing date of the trademark application and predate
[the] respondent’s registration”.
There can be no doubt that the disputed domain name <ant.com> is identical to Complainant’s trademark
ANT, applying the long-standing convention that, when comparing a trademark
with a domain name, any gTLD – such as .com
– can be disregarded. It was found,
for example, in SCOLA v. Wick, FA 1115109 (NAF February 1,
2008) 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.”; also, in Abt Electronics., Inc. v. Gregory Ricks, FA 904239 (NAF March 27, 2007)
it was said that “The Panel also finds
that Respondent’s <abt.com> domain name is identical to
Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is
irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”.
There is no similarity between the disputed
domain name and Complainant’s trademark ANTONLINE.
Respondent
argues that its domain name
is comprised of a common, descriptive term and as such cannot be found to be identical
to Complainant’s mark. However this
is not relevant as paragraph 4(a)(i) of the Policy is concerned only with whether
Complainant has rights in a trademark and whether the disputed domain name is
identical or confusingly similar to it.
See, for example, Vance International,
Inc. v.
Abend, FA 970871 (NAF June 7, 2007) in which it was found that because the
complainant had received a trademark registration for its VANCE mark, the
respondent’s argument that the term was generic failed under paragraph
4(a)(i)); and David Hall Rare Coins v. Texas
Inernational Property Associates, FA
915206 (NAF April 9, 2007) in which it was said that “Respondent’s argument that each individual
word in the mark is unprotectable and therefore the overall mark is
unprotectable is at odds with the anti-dissection principle of trademark law”.
Respondent also argues that
Complainant has not established common law rights in the ANT mark and indeed it
is true that only the bare minimum of user evidence was submitted. However, since Complainant has a trademark
registration of ANT, whether or not it has used it and so established common
law rights in it is also not an issue.
Furthermore, Complainant did state,
in its Complaint, that it first used the trademark ANT in 1996. Respondent pours scorn on this claim, pointing out
that Complainant did not register its principal domain name until early in 1997
and that Complainant itself was not created in Georgia until then. The Panel agrees and holds that Complainant’s
claim regarding its alleged use in 1996 was clearly a mistake. However both of Complainant’s two trademark
registrations claim February 25, 1997 as their date of first use and, knowing
the USPTO’s propensity for not accepting such claims absent proof thereof, the
Panel is prepared to accept this date as the date when the trademark ANT was
first used by Complainant.
Having held that the earlier trademark and
the disputed domain name are identical, the Panel finds that paragraph 4(a)(i)
is proved.
Rights or Legitimate Interests and
Bad Faith
Under paragraph 4(a)(ii) it is always necessary, first, for any
Complainant to make out a prima facie case
that Respondent lacks rights and legitimate interests in the disputed
domain name, and then the burden will shift to a Respondent to show it does
have rights or legitimate interests.
For example, it was held in Hanna-Barbera Products, Inc.
v. Entertainment Commentaries, FA 741828 (NAF August 18,
2006) that the complainant must first make a prima facie case that the
respondent lacks rights and legitimate interests in the disputed domain name
under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that
it does have rights or legitimate interests in a domain name.
In these proceedings, there is a strong argument for saying that
Complainant has not made out a prima
facie case.
Complainant contends that
Respondent has held the disputed domain name
since its original registration on June 4, 1998 and has simply been changing the
ownership and the WHOIS information in an attempt to evade transferring the
disputed domain name. However this
is strongly denied by Respondent, and the Panel prefers the latter’s version of
the events by which it acquired the domain name and the subsequent use it made
of it.
For example, Respondent alleges that, since it did not
exist until April 7, 2008 and, since it did not itself acquire the disputed
domain name – quite legitimately – until July 3, 2008, then whatever use was
made of the disputed domain name before that date has nothing to do with it and
should not be taken into account. Whilst this is strictly relevant to a finding
of bad faith, it is also a factor in deciding the question of legitimate rights
and interest because all of Complainant’s accusation regarding this aspect
appear to have occurred before the domain name was acquired by
Respondent.
In the “WIPO Overview of
WIPO Panel Views on Selected UDRP Questions” published in 2005 it is
stated, in paragraph 3.7,
that the consensus view is that while the renewal of a domain name does not
amount to a new registration, “the
transfer of a domain name to a third party does amount to a new registration”.
Respondent refers to the case of The iFranchise Group v.
Jay Bean / MDNH, Inc. / Moniker
Privacy Services [23658] D2007-1438
(WIPO December 18, 2007) in which it was held that Respondent could not have registered the domain name before
Respondent existed, and that the general rule established by panels is that a subsequent acquirer of a domain name is held to have
“registered” that domain name for purposes of the Policy as of the date of acquisition of the registration rights.
Also, in
BWR Resources Ltd. v.
Waitomo Assoc. Ltd., D2000-0861 (WIPO October 4, 2000) it
was found that registration refers to the date when the respondent acquired the
name from the person who first registered it.
Finally, in The Association of
Junior Leagues International Inc. v. This Domain Name My Be For Sa c/o Legend .name,
FA 857581 (NAF January 4, 2007) reference was made to the case of Christensen Firm v.
Chameleon Data Corp., 2006 WL
3158246 (W.D.
Wash. 2006).
This was an Anti-Cybersquatting Protection Act (“ACPA”) case, and the court
held that under the ACPA, each act of transfer was a new “registration” for the
purposes of ACPA analysis. The UDRP
Decision continued “[O]ne only needs to
trace the registration date back to the most recent transfer instead of the
original registration”.
On that basis, the Panel finds that
Complainant has failed to meet its prima
facie burden because Complainant has failed to establish that Respondent, rather
than Respondent’s predecessors in interest, lacked rights and legitimate
interests in the domain name under paragraph 4(a)(ii) of the Policy or acted in
bad faith under paragraph 4(a)(iii).
DECISION
The
overriding objective of the Policy is to curb the abusive registration of
domain names in circumstances where the registrant is seeking to profit from
and exploit the trademark of another Match.com,
LP v. Bill Zag and NWLAWS.ORG D2004-0230 (June 2, 2004). There is no evidence that this has occurred in
this case and so, having succeeded in establishing only one of the three
elements required under the ICANN Policy, the Panel concludes that relief shall
be DENIED.
Mr. David H Tatham
Chairman
Judge Daniel B Banks and Judge Robert T Pfeuffer
Panelists
Dated: May 11, 2009
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