Computop Wirtschaftsinformatik GmbH v. Domain Administrator
Claim Number: FA1106001394450
Complainant is Computop Wirtschaftsinformatik GmbH (“Complainant”), represented by Nicolette R. Hudson of Barnes & Thornburg LLP, Ohio, USA. Respondent is Domain Administrator (“Respondent”), represented by Ari Goldberger of ESQwire.com Law Firm, New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <computop.com>, registered with Moniker Online Services, 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.
Hon. Neil Anthony Brown, Hon. Bruce E. Meyerson (Ret.) and Dawn Osborne as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 20, 2011; the National Arbitration Forum received payment on June 21, 2011.
On June 21, 2011, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <computop.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 22, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 12, 2011 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@computop.com. Also on June 22, 2011, 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 July 13, 2011. A timely Additional Submission was received from Complainant on July 18, 2011 and from Respondent on July 25, 2011.
On July 19, 2011, pursuant to Respondent's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed the Hon. Neil Anthony Brown, Hon. Bruce E. Meyerson (Ret.) and Dawn Osborne as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a payment service provider. A payment service provider is a company that offers merchants online services for accepting electronic payments by a variety of payment methods including credit card, bank-based payments such as bank transfers, and real-time bank transfer based on online banking.
Complainant contends that the domain name in dispute is identical to its trademark, COMPUTOP. Complainant further contends that Respondent is not commonly known by the domain name and that Complainant has not authorized Respondent to use its mark.
Complainant states that the domain name is being used to display links to third-party websites, many of which relate to the sale of services similar to those of Complainant. According to Complainant, “Respondent’s acquisition of a domain name that contains Complainant’s Marks with knowledge of Complainant’s rights in the mark is strong evidence of bad faith registration and use . . . .”
In October 2010 Complainant’s founder offered to purchase the domain name for $4,000. He was told that the domain name owner would not sell the domain name for less than a “five-figures price range.”
B. Respondent
Respondent contends that Complainant’s mark is a descriptive term comprised of the common word “top” preceded by the common short hand for computer. According to Respondent, there is substantial third party us of the term “computop.” Respondent registered the domain name on July 18, 2001, “because ‘computop’ is a highly common term . . . to which Respondent believed no party could claim exclusive rights.” Respondent registered the domain name while domiciled in Canada and was not aware of Complainant, a German company. Respondent states that when it registered the domain name it had “no knowledge of Complainant, its web site, its business name or trademark.” Respondent states that it is settled law that the existence of a foreign trademark does not put a domain registrant on notice that a trademark is registered.
Since the date the domain name was registered until May 2011, the domain name was registered with Hitfarm.com which is a service that places pay-per-click advertising links on hosted domain names. On May 12, 2011, the domain name was hosted with Skenzo where many of the links related to Complainant’s line of business. After receiving the Complaint, Respondent instructed Skenzo to remove any reference to payment systems.
Respondent further contends that the Complaint should be denied based on the doctrine of laches. Respondent points out that the Complainant waited ten years after obtaining its initial trademark to initiate this proceeding. Respondent believes that although Complainant was doing business in Europe for ten years prior to this dispute, it did not pursue this matter until it entered the North American market in June 2011. Thus, Respondent concludes the Complainant “did not really believe that it has a right to the domain or that Respondent had acted in bad faith.”
C. Additional Submissions
Complainant and Respondent have provided Additional Submissions.
Complainant disputes Respondent’s contention that COMPUTOP is a commonly known descriptive term. Contrary to the position of Respondent, Complainant contends that a mark cannot be “dissected, it must be taken as a whole.” Complainant states that many trademarks are composed of fragments or syllables when combined create “a new and inherently distinctive brand.”
Complainant offers MICROSOFT as an example.
Complainant states that even though its business at the time the trademark was initially registered was based in Germany, and Respondent domiciled in Canada, a Google search at the time for COMPUTOP would have disclosed the existence of Complainant. Complainant contends that the defense of laches is not available in UDRP proceedings.
In its Additional Submission Respondent states that no evidence has been produced that would show how Respondent would have been aware of Complainant’s trademark in 2001 when the domain name was registered. Further, Respondent not only argues laches, but also contends that the delay by Complainant in bringing the Complaint raises the inference that the Complainant does not believe that Respondent had engaged in bad faith registration.
Complainant has rights in the COMPUTOP mark as evidenced by trademark registrations with the German Patent and Trade Mark Office and the European Union Office for Harmonization in the Internal Market. The first trademark was registered in 1997. Respondent registered the disputed domain name in 2001.
Paragraph 15(a) of 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 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; and
(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.
Preliminary Issue: Laches
Complainant began offering payment processing services under the COMPUTOP mark in Germany in 1997 and its operations were focused in Europe. In June 2011 it announced that it was expanding its business to North American and the United Kingdom. It has held a domain name <computop.de> . “De” is a top-level domain especially designated for the country of Germany.
The founder of Computop attempted to purchase the disputed domain name in October 2010, presumably in anticipation of the expansion of its business. Respondent contends that because the domain name was registered in July 2001, Complainant waited too long to initiate this proceeding. Respondent invokes the doctrine of laches and further contends that Complainant’s delay raises the inference that Complainant really did not believe that the registration and use of the domain name was in bad faith.
Laches is a doctrine that may result in the denial of an equitable claim where the complaining party unreasonably delays in asserting the claim and the delay has resulted in prejudice to the opposing party. The applicability of the doctrine of laches in UDRP proceedings has been the subject of some debate. Although a majority view holds that laches does not apply in these cases, e.g., Tom Cruise v. Network Operations Center / Alberta Hot Rods, D2006-0560 (WIPO July 5, 2006), certain panels have recognized that unreasonable delay in initiating a complaint is a proper issue to consider. E.g., The New York Times Co. v. Name Administration, Inc., FA 1349045 (Nat. Arb. Forum Nov. 17, 2010).
The Panel agrees that in the proper case, the doctrine of laches may be taken into consideration in assessing the merits of a complaint. In this case, however, a majority of the Panel does not believe that Complainant’s delay in bringing this Complaint should bar relief. Respondent’s domain name has been hosted by two companies which provide pay-per-click advertisements on the resolving website. The practice of companies that provide these services is not to charge the domain name owner for the hosting service, but to share revenues with the owner of the domain name. Although Respondent will presumably lose revenue from the loss of the domain name, it is most likely that other than the cost of acquiring the domain name, Respondent has incurred no other expenses in connection with its ownership of the domain name. Thus, a majority of the Panel concludes that Respondent has not suffered any material prejudice from the Complainant’s delay in bringing this proceeding.
For the foregoing reasons, a majority of the Panel refuse to deny the Complaint on the ground of laches.
Complainant alleges it has rights in the COMPUTOP mark. As evidence of these asserted rights, Complainant has provided its trademark registrations with the German Patent and Trade Mark Office (“GPTMO”) and the European Union Office for Harmonization in the Internal Market (“OHIM”):
GPTMO
COMPUTOP 39,754,951 November 17, 1997
COMPUTOP 30,149,663 August 20, 2001
COMPUTOP PAYGATE 30,650,950 August 18, 2006
OHIM
COMPUTOP PAYGATE 8,609,571 July 5, 2010
The Panel finds that, based on these trademark registrations in Germany and the European Union, Complainant has established rights in the COMPUTOP mark for the purposes of Policy ¶ 4(a)(i). See Metropolitan Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). The Panel deems this evidence conclusive, regardless of the fact that Respondent does not appear to live or operate in Germany or the European Union. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant asserts that Respondent’s <computop.com> domain name is identical to Complainant’s COMPUTOP mark because the only difference is the addition of the generic top-level domain (“gTLD”) “.com.” The Panel finds that the presence of a gTLD has no distinguishing effect on the disputed domain name. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“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.”). Therefore, the Panel finds that Respondent’s <computop.com> domain name is identical to Complainant’s COMPUTOP mark pursuant to Policy ¶ 4(a)(i).
While Respondent contends that the domain name in dispute is comprised of common and generic terms and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Texas Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“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.”).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entertainment Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding 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). The Panel finds that Complainant has made a prima facie case.
It is undisputed that Complainant has not authorized Respondent to use its COMPUTOP mark for any purpose. The WHOIS information for the <computop.com> domain name lists the registrant as “Domain Administrator,” which suggests no connection between Respondent and the disputed domain name. Accordingly, upon considering the evidence and finding no evidence to the contrary, the Panel determines that Respondent is not commonly known by the <computop.com> domain name. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
Complainant contends that Respondent’s <computop.com> domain name diverts Internet users to a commercial pay-per-click website displaying various links to third-party websites, which include links related to the sale of services similar to those of Complainant. Complainant has provided examples of displayed link titles, which include “payment processing,” “payment gateways,” and “bill payment systems.” Complainant argues that no actual services are offered on the resolving websites other than redirecting visitors to other websites. As a result, a majority of the Panel concludes that Respondent’s use of the <computop.com> domain name does not comport with the requirements for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Northwest Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Respondent states that it has instructed the current host of its resolving website to remove any links relating to the same type of business as the Complainant. However, at the time of this Decision, those links have not been removed and the content of the site has not been changed.
Respondent is correct that some panels have held that a domain name which resolves to a website offering pay-per-click advertising constitutes a bona fide offering of goods or services. Such decisions generally involve domain names of a generic nature. E.g., Landmark Group v. DigiMedia.com, FA285459 (Nat. Arb. Forum Aug. 6, 2004). The general rule, however, is “where such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions (2d ed.) § 2.6.
Complainant also alleges that in October 2010, it attempted to purchase the <computop.com> domain name from Respondent for $4,000. In return, Complainant contends that Respondent rejected the offer, saying it was not interested in anything less than a “five-figures” price range. The Panel finds that this counteroffer, which Complainant argues was made with Respondent’s knowledge of Complainant’s rights in the mark, serves as further evidence of Respondent’s lack of rights and legitimate interests in the disputed domain name 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)); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).
While Respondent contends that the competing hyperlinks were the product of a change between third-party hyperlink providers, the Panel concludes that Respondent is ultimately responsible for the content of the website resolving from the disputed domain name pursuant to Policy ¶ 4(a)(ii). See State Farm Mutual Auto. Ins. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.”); see also Express Scripts, Inc. v. Windgather Invs. Ltd., D2007-0267 (WIPO Apr. 26, 2007) (“The respondent contends that the advertisements in this case were ‘generated by the parking company’. The implication is that the respondent was not responsible for the content of these advertisements. This may well be correct but in the panel’s view this makes no difference. The respondent placed the Domain Name with a parking company in circumstances where it would have been aware that those using the Domain Name were likely to have mistyped the complainant’s name.”).
Complainant alleges that after an initial offer by Complainant to buy the <computop.com> domain name, Respondent replied by stating that he would not entertain an offer of less than five-figures. Complainant asserts that Respondent knew that Complainant had rights in the COMPUTOP mark at this time. A majority of the Panel therefore finds that Respondent’s counteroffer to Complainant’s offer shows bad faith registration and use under Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name); see also Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)).
Complainant contends that Respondent’s <computop.com> domain name resolves to a website featuring a generic search engine with numerous links to providers of services in competition with Complainant, such as payment processing services. As the resolving website allegedly displays links to numerous competitors of Complainant, a majority of the Panel holds that Respondent’s actions disrupt Complainant’s business and therefore evidence bad faith registration and use according to Policy ¶ 4(b)(iii). See American Airlines, Inc. v. Texas Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).
Complainant argues that users who arrive at Respondent’s <computop.com> domain name will find themselves presented with a generic search engine and various pay-per-click links related to services offered by Complainant. According to Complainant, despite a somewhat superficial topical relevance, the content on the resolving website has no connection with Respondent and thus Complainant argues that Respondent registered Complainant’s COMPUTOP mark as the disputed domain name merely for its ability to attract web traffic to Respondent’s website. Complainant asserts that Respondent receives commissions for diverting Internet users to third-party websites via the search engine and displayed links. A majority of the Panel therefore finds that Respondent’s efforts to attract and mislead Complainant’s customers by misusing Complainant’s mark for Respondent’s own purposes of commercial gain indicate bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (“By use of <yahgo.com> to operate its search engine, a name that infringes upon Complainant’s mark, Respondent is found to have created circumstances indicating that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website as proscribed in Policy ¶ 4(b)(iv).”); see also Maricopa Cmty. Coll. Dist. v. College.com, LLC, FA 536190 (Nat. Arb. Forum Sept. 22, 2005) (“The Panel infers that Respondent receives click-through fees for diverting Internet users to a competing website. Because Respondent’s domain name is identical to Complainant’s PHOENIX COLLEGE mark, Internet users accessing Respondent’s domain name may become confused as to Complainant’s affiliation with the resulting website. Thus, Respondent’s use of the <phoenixcollege.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Complainant alleges that Respondent had actual and/or constructive notice of Complainant and its rights in the COMPUTOP mark prior to the registration of the disputed domain name. Although constructive knowledge has not usually been held sufficient to support a finding of bad faith, bad faith has been found where it has been established that a respondent failed to conduct a search engine search prior to registering a domain name. BzzAgent, Inc. v. bzzaget.com c/o Nameview Inc. Whois IDentity Shield & Vertical Axis, D2010-1187 (WIPO Sept. 17, 2010). Here, the record indicates that a Google search done by Respondent at the time it registered the domain name would have easily disclosed Complainant’s business and therefore, with due diligence on the part of Respondent, led to discovering Complainant’s trademark in Germany. Moreover, paragraph 2 of the UDRP provides: "It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights."
Having established all three elements required under the ICANN Policy, a majority of the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <computop.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Bruce E. Meyerson (Ret.) and Dawn Osborne, Panelists
Dated: August 8, 2011
Dissent by The Hon. Neil Anthony Brown QC
I agree with the result of the majority’s deliberations on this element, but not with the reasons given for it, for the domain name is neither identical or confusingly similar to all of the trademarks that the majority have included under the heading “the COMPUTOP mark”.
There is a low threshold under paragraph 4(a)(i) of the Policy, as a complainant need only prove that it “has”, “a“ trademark, i.e. at the time the Complainant was filed and irrespective of whether , as in the present case, the trademark is registered in a country different from the country in which the respondent is domiciled. See Bernardka Pulko v. Greg Frazier, D2006-0099 (WIPO Mar. 15, 2006).
The Complainant suggests four candidates as the trademarks on which it relies, which the majority opinion describes as “the COMPUTOP mark”. However, the four candidates cannot be regarded as a group in that way and it is in my opinion not correct to say that the domain name is identical or confusingly similar to all of the trademarks in the COMPUTOP group. Three of the four trademarks were registered after the domain name was registered and one of them was registered as recently as 2010. Although, for that reason, they would be of little value in considering the later and real issue in this case, whether the domain name was registered in bad faith in 2001, they are nevertheless trademarks for the purposes of paragraph 4(a)(i) of the Policy.
However, the trademarks relied on by a complainant still have to qualify as trademarks to determine if the domain name is identical or confusingly similar to any of them. Two of the trademarks proffered are for COMPUTOP and two are for COMPUTOP PAYGATE. Obviously, the domain name is not identical to the two trademarks for COMPUTOP PAYGATE, as they contain an additional word. Nor, in my opinion, is the domain name confusingly similar to them. The only test for confusing similarity can be whether an objective bystander would think that the words “computop.com” were referring to COMPUTOP PAYGATE. There is no reason why anyone would assume that was the case, for <computop.com> is more likely to raise in the mind of the objective bystander the notion of a top or superior form of computer or computer service or, more likely, a lap top computer, for the word “top” is now intimately associated with computers and it would certainly not invoke the far more specific notion of a computer operating a payment approvals system, which is clearly the notion to which the two COMPUTOP PAYGATE trademarks are referring.
Accordingly, the answer to the first element is straightforward: the domain name is identical to the two trademarks for COMPUTOP for they all contain the same single word, but it is neither identical nor confusingly similar to either of the trademarks for COMPUTOP PAYGATE.
The Complainant has thus satisfied the first element under paragraph 4(a) (i) of the Policy.
Rights or Legitimate Interests
It may not be conclusive that the Respondent has shown a right or legitimate interest in the domain name pursuant to paragraph 4(a)(ii) of the Policy, but it is in my opinion unsafe to find positively that it does not have such a right as the Respondent has an arguable case that it has a right or legitimate interest in the domain name. That is so for reasons that are probably more relevant to the issue of bad faith registration, but which are mentioned here to show that the Respondent has at least an arguable case under paragraph 4(a) (ii).
First, the domain name may not be as generic, as descriptive, or as common as many other words used for clearly legitimate domain names. The word “computop” seems to be trying to invoke the notion of superior computers or lap top computers in general and to that extent it is generic and descriptive of the type of product to which it refers. On the other hand, as the Complainant points out, it is a word made up of other words and it may be trying to identify a brand and in many cases is clearly used as the Complainant’s brand. In such a case, where it is difficult to reach the correct conclusion, a panel can only look at the other known facts to see if they tilt the scales one way or the other. One of those facts is that the word has certainly been taken up and used by others in a general or common sense. However, the Complainant is probably right in saying that the proper way to test third party use of an expression is to see how it was used around the time the disputed domain name was registered. With that in mind, the Complainant has conducted a search and produced as an Exhibit to its supplementary submission the results of that search to show what use was made of the expression prior to July 18, 2001 when the domain name was registered. The best one can make of that exhibit is that it shows that the word has been in use as a common or generic word in some, but limited, cases. In further support of the Respondent’s case there is the fact that it also registered various other combined “compu” and “top” domain names. The Complainant disputes the value of that evidence on the ground that it is not known when they were registered, the implication being that they may have been registered to colour the nature of the registration of <computop.com>. Accordingly, this panelist looked to see what the WHOIS showed about some of those registrations at random and, although it is, of course, not scientific or conclusive, the dates of the registrations that resulted were June 28, 2001, October 21, 2003, October 27, 2003 and November 16, 2003. This probably shows that the Respondent may not have registered all the “compu” and “ top” domain names at the same time, but that the registrations were not a recent invention and that the Respondent, rather than going through the laborious process of discovering other peoples’ trade names that it might register as domain names, has made it part of its business model to combine popular and common words in the hope that internet users will also use such expressions when they are searching the internet. Accordingly, although the case is not as strong as some, there is at least an arguable case that the word has a “common” use and that it could have been registered as a domain name for that reason, for it is well known that some registrants tend to keep combining common words and registering them as domain names in the hope that internet users will use them to locate goods and services.
More persuasive is the fact that there is extant and produced by the Respondent a snapshot of the Respondent’s website as it was on February 5, 2005, which is included as part of the text of the Response and which shows that the domain name was at least not being used to target the Complainant or its brand at that time and that it was used to attract links to products such as counter tops, car tops and other generalized goods and services and not to the Complainant’s competitors. This use of the domain name, using it in its generic sense, which is the reason the Respondent says it acquired it and the absence of evidence to show that the Complainant was being targeted during the early life of the domain name, suggests that there is at least an arguable case that the Respondent has been using a generic or descriptive word for its domain name and in turn using the domain name to promote goods and services coming under that umbrella. That gives it at least an arguable right or legitimate interest in the domain name and a specific one under paragraph 4(c)(i) of the Policy, as the domain name was thus being used for a bona fide offering of goods and service before the dispute was notified. Using the domain name in the way it was used on February 5,2005 was a legitimate use of the domain name and it was not then being used to target the Complainant, whatever use may have been made of it later.
The second matter that should be mentioned is the importance placed by the Complainant and the majority decision, wrongly in my opinion, on the dealings between the parties concerning the attempt by the Complainant to buy the disputed domain name.
The Complainant submitted and the majority accepted, that when the Complainant offered to buy the domain name and the Respondent replied by giving its price for selling, this shows that the Respondent had no right or legitimate interest in the domain name and new it. I disagree that this is a logical or correct conclusion to be drawn. If anything, the fact that the Complainant offered to buy the domain name shows that it believed it did not have rights in the domain name, but that the Respondent did; otherwise, why would the Complainant be trying to buy a domain name from a party it believed had no right to sell it. Likewise, the fact that the Respondent put its price on property that another party wanted to buy, shows at least that the Respondent believed it owned what the other party wanted to buy.
Moreover, even if UDRP were precedents, the cases relied on by the majority do not support its conclusion and they show the danger of relying on UDRP decisions without regard to the facts. The first decision, Williams-Sonoma, Inc. v. Kurt Fees c/o K Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007), was not a case of a domain name registrant responding to an offer to buy its domain name, as is the present case, but a case of the registrant being the first cab off the rank and making the offer to sell. The panel makes that clear : “COMPLAINANT also claims that Respondent offered to sell the <potterybarn.org> domain name to COMPLAINANT for $10,000 and that COMPLAINANT rejected this offer.” There was no prior offer from the trademark owner.
The second decision relied on, Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) was an undefended case and, in the absence of argument, cannot be authority for any such general principle as that contended for. In any event, it likewise was a case where it was the registrant of the domain name who initiated the offer to sell and not the trademark owner, as in the present case, who made the offer to buy. ( “Uncontested circumstances indicate that Respondent’s domain name registration has continually been advertised for sale. Respondent’s apparent willingness to dispose of its rights in the <madd.com> domain name suggests that it lacks rights or legitimate interests in the domain name. Further, in conjunction with its attempts to sell its rights in the domain name, Respondent has used <madd.com> to divert unsuspecting Internet users to a pornographic website located at <karasxxx.com>.”) It clearly may be possible in some circumstances to conclude that the registrant of a domain name knows it has any rights to a domain name, when it is continually advertising a domain name for sale, but that is a world apart from the current case where the registrant has owned the domain name for 10 years, has used it for a legitimate business, has apparently always acted as if it owns the domain name, has shown no signs of wanting to sell it previously and has merely responded to an offer from a complainant who wants to buy it, by stating its price.
As said above, however, these considerations might be of more value for the light they throw on whether the Respondent registered and used the domain name in bad faith, which is the real issue in this case. But the Respondent has in my opinion an arguable case for showing a right or legitimate interest in the domain name.
Registered and Used in Bad Faith
It is clear that the Complainant must prove both bad faith registration and bad faith use. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (WIPO Feb. 18, 2000). Of course it is possible to draw an inference from bad faith use that the registration was also in bad faith, if the evidence leads to that conclusion on the balance of probabilities.
The majority has found that the Respondent registered and used the domain name in bad faith. In support of this it relies on the fact that the Complainant made an “initial offer” to buy the domain name and the Respondent responded by stating the only offer it would entertain. It is said then that two decisions support the conclusion that such a dealing amounts to both bad faith registration and bad faith use. With respect, that is not correct. The first decision relied on is George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007). In that case the Respondent registered the domain name as a clear act of cybersquatting by taking the Complainant’s .com domain name and registering it as a .mobi domain and then, less than a month later, offered to sell it to the Complainant for a large sum. Clearly it was open to the panel to find there was an irresistible inference to be drawn from those facts that as the respondent had offered the domain name for sale, its intention less than a month earlier must have been to register the domain name in bad faith. In the present case, it was the Complainant who made the offer, an offer to buy the domain name and the Respondent merely replied by naming its price because it had been asked to. At best, that is evidence of bad faith use, not registration. More importantly, in the present case, the Respondent had registered the domain name 10 years before the negotiation for the sale took place. It therefore cannot be said with any safety that when the Respondent made its counter offer, the inference can be drawn that 10 years earlier it had intended to register the domain name in bad faith. It is quite impossible to impute such motives so much earlier in time and certainly without regard to all of the facts, facts that are not known because of the Complainant’s delay in asserting its rights and enforcing them. Likewise, the other decision relied on, Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) was one where it was the Respondent and not the Complainant who made the initial offer and the decision is not one where a respondent who is encouraged to make an offer and does so can be said to have registered the domain name in bad faith. Moreover, it is clearly a case where the trademark embodied in the domain name was one of the most famous in the world and it would be naïve to think that the domain name was registered by an outsider in anything other than bad faith. So neither of the cases cited say that anything can be inferred about the registration of a domain name from responding to an offer to buy, certainly not when the registration took place so many years earlier.
It must be said that the use of the domain name in recent times in the present case is open to the interpretation of bad faith use, as the Respondent is ultimately responsible for its use. It is equally clear, however, that such recent conduct shows nothing about the motives of the Respondent in registering the domain name 10 years earlier. There are two reasons why this is so. The first relates to the inordinate delay on the part of the Complainant in bringing the complaint and a delay such that, if it had not occurred, the panel would have had more facts available to it than it does and facts that would enable it to find if the domain name had been registered in bad faith.
The domain name was registered on July 18, 2001. At that time the Complainant operated only in Germany and had only one trademark, namely the German trademark which made no reference to goods or services relating to a payment services provider, which it now is, but rather to general computing activities.
In October, 2010 the Complainant tried to buy the domain name from the Respondent but on October 14, 2010 it was rebuffed. Between those two dates, a period of some nine years, there is an ominous silence and no explanation is given by the Complainant of any relevant issue such as whether the Complainant knew or cared that the Respondent had a domain name using the same name as the Complainant’s trademark or why if it knew of the domain name, it allowed it to continue using it without any challenge or protest.
The Respondent knew on October 14, 2010 that it could not buy the domain for less than a 5 figure sum. Yet it was not until a further 8 months had elapsed that it filed the Complaint. Again, there has been no explanation offered as to why the Complainant stood back and did nothing for 8 months after it had been rebuffed in its attempt to buy the domain name and allowed the Respondent to continue using it without any challenge or protest.
For the Respondent’s part, its counsel put the Complainant on notice in the Response that, in effect, this considerable delay was pivotal to the Respondent’s defence, that it was a live issue and that the Complainant should give some explanation for the delay.
The Complainant filed a supplementary submission, but there was no explanation given for the delay. The Complainant’s contribution was to say that there was “no evidence “of delay, which is not accurate, as the unexplained delay of nine years is itself evidence of delay and the Complainant clearly could have gone further. In exculpation, the Complainant added that it filed the Complaint “soon after “the abortive attempt to buy the domain name. That also is incorrect, as the evidence shows that the Complainant was advised on October 14, 2010 that its offer had been unsuccessful and the Complaint was filed on June 20, 2011, 8 months’ later. What is more important, however, than the minutiae of these dates is that, even now, there has been nothing volunteered by the Complainant to explain the state of its knowledge of the registration of the domain name in 2001, its knowledge of the same matter between 2001 and 2010, why it did nothing to reclaim the domain name until late 2010 , what motivated it to spring into action to try to buy the domain name at that time and why it did nothing from October 14, 2010 until the Complaint was filed.
This considerable delay and the lack of any explanation for it, has made it impossible to find what is more probable than not as to whether the domain name was registered in bad faith. It is at least plausible that the Respondent’s explanation is the real one, namely that the Respondent did nothing until it decided to branch into the US market.
The only truly independent evidence that tilts the scales one way or the other is the extant screenshot of the Respondent’s website, showing what the domain name was used for on February 5, 2005. That screen shot shows that the website had links to several subjects within the generic or common meaning of the word “ computop”, namely consoles, scrub top, pinnacle, truck cover, kitchen top cover, safety cover , car cover and pool winter cover and several generalized computer references such as software, internet and math. It shows no references to the Complainant or its competitors. None of that shows an attempt to mislead anyone or to trade off the good name of the Complainant and nothing to show that the Respondent was motivated by bad faith in registering the domain name.
As the domain name was registered on July 18, 2001 and the screenshot is of the website at February 5, 2005, the evidence of the screenshot is clearly not contemporaneous evidence. However, when the issue is whether there is any evidence of registration in bad faith and the only evidence tends to suggest that it was not in bad faith, a tribunal’s obligation is clear, namely to put the evidence in balance and, if the onus is on one party to prove its claim as it is in this case, to conclude that the onus has not been discharged. In this case the evidence is that the earliest known use of the domain name was to carry links not to the Complainant and not to its business, but to other activities that are clearly within the generic meaning of the domain name and in those circumstances, a panel should conclude that the Complainant has not proved its case of registration in bad faith.
Accordingly, when the unexplained delay in filing the complaint or even claiming a right to the domain name makes it impossible to be probable in any finding as to the Respondent’s motives 10 years earlier and when the only objective evidence shows an innocent motive, there should not be a finding of bad faith registration.
I would therefore find for the Respondent on the third element in paragraph 4(a)(iii) of the Policy.
The Hon. Neil Anthony Brown QC, Panelist
Dated: August 8, 2011
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