Innoventor, Inc., a/k/a Innoventor Engineering, Inc. v. Scott Ridher
Claim Number: FA1008001343702
PARTIES
Complainant is Innoventor, Inc., a/k/a Innoventor Engineering, Inc. (“Complainant”), represented by Andrew B. Mayfield, of Armstrong Teasdale LLP, Missouri, USA. Respondent is Scott Ridher (“Respondent”), represented by Robert S. Pataki, of PUGDOG Enterprises, Inc., Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <innoventor.com>, registered with The Name It Corporation d/b/a Nameservices.net d/b/a AIT Domains.
PANEL
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.
Mrs. Antonina Pakharenko-Anderson as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 27, 2010.
On August 30, 2010, The Name It Corporation d/b/a Nameservices.net d/b/a AIT Domains confirmed by e-mail to the National Arbitration Forum that the <innoventor.com> domain name is registered with The Name It Corporation d/b/a Nameservices.net d/b/a AIT Domains and that the Respondent is the current registrant of the name. The Name It Corporation d/b/a Nameservices.net d/b/a AIT Domains has verified that Respondent is bound by the The Name It Corporation d/b/a Nameservices.net d/b/a AIT Domains 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 August 31, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 20, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@innoventor.com. Also on August 31, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on September 30, 2010.
On October 15, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mrs. Antonina Pakharenko-Anderson as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant, Innoventor, Inc., a/k/a Innoventor Engineering, Inc., owns a trademark registration for the INNOVENTOR ENGINEERING mark covering “custom manufacture of electrical and mechanical equipment for others” with the United States Patent and Trademark Office (“USPTO”) Reg. No. 2,528,802 filed April 29, 1998; registered January 15, 2002. Prior to applying for the trademark protection, the Complainant has been using the trademark INNOVENTOR invented by him since 1994 in connection with various goods and services.
Respondent’s disputed domain name, <innoventor.com>, is confusingly similar to Complainant’s registered and common law Mark as it overlaps in the dominant part of the Complainant’s INNOVENTOR ENGINEERING mark.
Complainant’s rights in the INNOVENTOR and INNOVENTOR ENGINEERING mark predate Respondent’s registration of the <innoventor.com> domain name.
Respondent has no rights and legitimate interest in the contested domain name and neither through use, nor any registered rights, and passively keeps domain on hold for the purpose of selling, renting, or otherwise transferring the domain name to an interested person. Respondent’s bad faith is also evidenced by Respondent’s pattern of conduct with regard to registering other domain names for the same purposes.
B. Respondent
Respondent is in the business of database-backed website services providing niche information and domain development. Respondent has created the domain name <innoventor.com> for attracting the “innoventors” to a place where they could find relevant information on development, invention, patenting, etc. Although Respondent has used the mark during the time period of 2001 – 2003, the project has been frozen then to the global economic crisis, but the company still feels that this project is rather good and solid and expects to revive it later on.
PUGDOG Enterprises, Inc. has registered domain names since 1992 (PUGDOG.COM) for development and potential sale as business assets, fully developed turn-key business, or niche-market sites.
Due to the fact that the Complainant’s use of its trademarks is limited by a territory, and that the Complainant owns the INNOVENTOR ENGINEERING trademark, instead of INNOVENTOR, the Respondent believes that the dispute domain does not encroach on any rights or legitimate interests of Complainant and, respectively, this is a case of reverse domain-name hijacking by the Complainant.
FINDINGS
1. Complainant is well established as the progressive, entrepreneurial design/build engineering firm diversified in different industries. Complainant started its business in 1994 under the Innoventor, Inc. trade name and it further holds registration from the United States Patent and Trademark Office for a trademark INNOVENTOR ENGINEERING covering “custom manufacture of electrical and mechanical equipment for others.” All of these registrations predate the registration of the disputed domain name. Complainant operates web sites at <innoventor.net>.
2. Respondent is in the business of digital imaging, computer services and database-backed website development. Respondent has registered a great variety of domain names since 1992 (PUGDOG.COM) for the purposes of their use by other persons.
3. Respondent registered the domain name, <innoventor.com> on December 1, 2000.
4. The web page reached through <innoventor.com> is not active now indicating that the web-site “Under Construction. Future home of innoventor.com”.
5. The domain name at issue, <innoventor.com> is confusingly similar to Complainant’s registered mark, INNOVENTOR ENGINEERING.
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.
The Complainant is the owner of the U.S. registration of the INNOVENTOR ENGINEERING mark covering “custom manufacture of electrical and mechanical equipment for others” with the United States Patent and Trademark Office (“USPTO”) Reg. No. 2,528,802 filed April 29, 1998; registered January 15, 2002.
The Panel finds that USPTO trademark registration is sufficient evidence to prove Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i), dating back to the filing date of the trademark registration. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding 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”).
In fact, the disputed domain name merely deletes the term “engineering” from Complainant’s mark and adds the generic top-level domain (“gTLD”) “.com.” The term ‘engineering’ does not add distinctiveness to the INNOVENTOR ENGINEERING mark as the term may be regarded as descriptive to the services for which the trademark is used. See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (holding that “the Domain Name is confusingly similar to Complainant’s ‘TESCO PERSONAL FINANCE’ mark in that it merely omits the descriptive term ‘personal.’”). The INNOVENTOR term is the invented word which, by its, nature have a great degree of distinctiveness. Thus, the latter element of the mark may be regarded as its distinctive element and the consumer’s attention with tend to focus on this part of the mark, respectively.
At the same time one should take due note that the INNOVENTOR name is suggestive by its nature which gives the ground for further discussions of its distinctiveness.
Indeed, the linguistic analysis of this word gives the ground to assume that it is coined of two words taken from the everyday English language being INNOVATION and INVENTOR. Based on this, the Respondent states that this coined word entered the English vocabulary and is the generic term, and the Respondent refers to several Internet publications to confirm its argumentation.
However, the Panel holds an opinion that the evidence provided shows that the use of the word is not widespread and is limited to a few illustrative instances of its use instead. Moreover, this word has not been introduced in any of the reliable and/or academic vocabularies which may be cited as reference. Further, as far as distinctiveness is not an absolute or unchangeable factor, depending on the steps taken by the user of the sign or third parties, it can be acquired or increased or even lost. With references to long and intensive use of the sign by the Complainant, the Panel believes that the INNOVENTOR mark still meets the requirement of distinctiveness. Respectively, INNOVENTOR ENGINEERING also meets the novelty criterion.
Respondent’s reference to various registrations which overlap with Complainant’s trademark found as the result of the trademark search in the TESS database in support of the lack of distinctiveness of the Complainant’s mark are of no relevance in this very case since, naturally, the trademarks may be more or less similar, but the test is, of course, whether they are misleadingly similar. Neither of the U.S. trademark registrations dilutes distinctiveness of the INNOVENTOR and/or INNOVENTOR ENGINEERING mark.
Yet another aspect which should be taken into consideration upon assessment of similarity between the Complainant’s mark and the disputed domain is that addition of the generic top-level domain (“gTLD”) “.com.” may not prevent from confusion between the Complainant’s mark and the domain. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
Therefore, the Panel finds that Respondent’s <innoventor.com> domain name is confusingly similar to Complainant’s INNOVENTOR ENGINEERING mark under Policy ¶ 4(a)(i).
The Panel holds that Complainant has established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). Thus, the burden of proof has shifted to the Respondent.
The Respondent’s domain name is not in use now and Respondent failed to prove that he has made demonstrable preparations to use the disputed domain name in connection with the bona fide offering goods or service or non-commercial use.
In greater details the case stands as follows.
The documents of the case papers do not confirm that Respondent is using the <innoventor.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because the disputed domain name currently resolves to an “Under Construction” webpage, stating that the page is the “Future Home of innoventor.com.” At the same time, back in 2003, the disputed domain name resolved to a website stating that the website was under development. Thus, failure to make active use for about a decade indicates Respondent’s failure to make an active use of the <innoventor.com> domain name and does not support a finding of rights and legitimate interests according to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”).
Instead, the evidences provided by the Complainant and which have not been rebutted by the Respondent show that Respondent has offered to sell the <innoventor.com> domain name through messages previously located at the resolving website indicating that Respondent has lots of domain names “on hold,” including the <innoventor.com> domain name, that “are all potentially for sale or rent if the offer is right.” Further, another one of Respondent’s domain names, <identitydots.com>, advertises “6626 UNIQUE DOMAIN NAMES in 49 categories for you to choose from . . . . Some of our names may be for sale, for the right offer” and lists the <innoventor.com> domain name as one the 6626 domain names. The Panel comes to a conclusion that an offer to sell the disputed domain name is further evidence that Respondent lacks rights and legitimate interests according to Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)).
Finally, Respondent has neither been identified by, nor is commonly known by, the <innoventor.com> domain name. The WHOIS information for the disputed domain name lists the registrant as “Scott Ridher.” This information indicates that Respondent is not commonly known by the disputed domain name and accordingly lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
As it has been already discussed in the preceding paragraph, the domain name <innoventor.com> is among the domain names listed on the Registrar’s related website offered for sale. On the other hand, Respondent has not proved any demonstrable use or significant preparations to the use of web-site in connection with the bona fide offering goods and services for sale or non-commercial use. The response submitted in this case refers only to the unsubstantiated allegations of the Respondent’s intent to use <innoventor.com> for non-commercial project for inventors and innovators.
Respondent further argues that it registers domain names that it feels have market, branding or other potential value in order to use those domain names as online businesses and to develop turn-key businesses for others. Respondent contends that it focuses on generic, industry- or niche-defining, or clever combination names like “innoventor.” Respondent asserts that the purpose of the <innoventor.com> domain name was to provide networking services and information to inventors, innovators and entrepreneurs.
Although Respondent makes unsupported and ambitious claims about non-commercial project under the <innoventor.com> name, the Panel took due note that the domain has been registered in the “.com” zone which is generally perceived by the Internet users as the zone for commercial businesses. The “.com” generic top level domain is the most common TLD and is among favorites of the marketing people, and this makes the domains in this zone more valuable than others. Regardless of the fact that there are no limitations for getting the domain name in the “.com” gTLD, so that to ensure consistency in the pattern of Respondent’s behavior, it should prefer to choose the domain name for non-commercial project in another TLD as the expansion of the top-level domain (TLD) space allows for a high degree of innovation and choice.
Although the Panel accepts that the Respondent’s business is legitimate as that it is nothing illegal in domain site development and in that that the Respondent’s business builds, maintains and develops websites both for itself and for others. However, while registration of the domain names which are merely generic or descriptive terms (which are suggestive, by associations, of the goods for which they are to be used, and of the nature, quality, origin or any other characteristic, of those goods) can hardly encroach on third person’s rights and/or interests. See Fifty Plus Media Corp. v. Digital Income, Inc., FA 94924 (Nat. Arb. Forum July 17, 2000) (finding that the complainant failed to prove that the respondent had no rights in the domain name and had registered and used the domain name in bad faith where the respondent is an Internet business which deals in selling or leasing descriptive/generic domain names), The situation is different with those terms which are either coined words or words and/or word combinations and which acquired a secondary meaning or associate in consumers with a particular source, i.e. those to whom they are addressed have come to recognize it as indicating that the goods for which it is used are from a particular trade source. In the latter case, the Respondent runs the risks of third parties’ claims like this as such domains may infringe earlier rights of third persons.
In its response, Respondent states that before registering domain names, it performs a reasonable due-diligence check of the TESS database, an Internet/Google search, and similar to see if the names are being used.
If this is the case, Respondent should inevitably come across one of the earlier U.S. registration of the Complainant’s trademark and website since the WHOIS database would show registration of the Complainant’s website <innoventor.net>. The results of the availability search of the TESS database would refer the Respondent to the Complainant’s trademark as well. Thus, Respondent registered the contested domain name regardless of the knowledge of the earlier use of the INNOVENTOR by another person that may be regarded that this Respondent adopted bad faith pattern upon registration of <innoventor.com>. See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights)
Respectively, Respondent’s registration of domain names, including the <innoventor.com> domain name, demonstrates a pattern of domain name registration which constitutes a bar to prevent Respondent, and other trademark owners, from reflecting their marks in domain names. Complainant presents Am. Online, Inc. v. Ridher, FA 306611 (Nat. Arb. Forum Sept. 29, 2004) as evidence of Respondent’s pattern of domain name registration as the panel found in that case that Respondent had acted in bad faith by registering and using eight domain names that included marks confusingly similar to the marks owned by America Online. The Panel may find that Respondent’s registration of the <innoventor.com> domain name, in conjunction with its prior registration of domain names appropriating marks owned by America Online, is evidence of bad faith registration and use according to Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)).
At the same time, there is widely established practice evidencing that passive ownership of a domain name which infringes third party’s trademark rights constitutes a bad faith act in light of Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that inactive use of a domain name permits an inference of registration and use in bad faith).
Furthermore, the use by Respondent of the distinctive part of the Complainant’s mark INNOVENTOR ENGINEERING compels respective associations with the Complainant in consumers, which evidences of bad faith in the activities of Respondent pursuant to Policy ¶ 4(a)(iii). See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO October 4, 2000) (finding that “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests "opportunistic bad faith").
The last but not the least, the Panel comes to the opinion that since that Complainant has satisfied Policy ¶ 4(a)(i), or any or all of the elements of Policy ¶ 4(a), it has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail.”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <innoventor.com> domain name be TRANSFERRED from Respondent to Complainant.
Antonina
Pakharenko-Anderson, Panelist
Dated: November 5, 2010
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