Kyp Plc v. WISE Retail Solutions
Claim Number: FA1108001403843
Complainant is Kyp Plc (“Complainant”), represented by Neil Addison, Great Britain. Respondent is WISE Retail Solutions (“Respondent”), represented by Gary H. Fechter of McCarter & English, LLP, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <picowebkey.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Dr. Reinhard Schanda as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 18, 2011; the National Arbitration Forum received payment on August 25, 2011.
On August 22, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <picowebkey.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 September 8, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 28, 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@picowebkey.com. Also on September 8, 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 September 28, 2011.
On October 3, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dr. Reinhard Schanda as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a company incorporated in England which together with its affiliate, Kyp Inc., a company incorporated in Pennsylvania, USA, is the market leader in selling and marketing patented webkey based marketing solutions as well as other unique marketing solutions, using a number of registered and unregistered trademarks owned by the Kyp Group in several countries.
In February 2011 the Complainant‘s group launched its “pico webkeyTM“ webkey product line and has been actively marketing its pico webkey TM goods and services since that date using the unregistered pico webkeyTM trademark.
On 25 May 2011 the Complainant applied for registration of the “kyp pico webkey” trademark in the USA (US trademark application no. 85329928 - Classes 09,16 & 35) and in the United Kingdom (UK trademark application no. 2582462 - Classes 09,16 & 35), which applications are being processed by the Trade Mark Authorities in those countries.
Complainant contends that the disputed domain name is identical to Complainant’s pico webkey TM unregistered trademark, which has been in use from February 2011, apart from there being no space between the word “pico” and “webkey”.
The disputed domain name is confusingly similar to the “Kyp pico webkey” trademarks for which Complainant has made application for registration in the USA and the UK, and for which it may make similar applications in other countries where it is using the trademark.
According to Complainant neither Respondent nor US Branding has any right or legitimate interest in respect of the disputed domain name for the following reasons:
1. To Complainant’s knowledge neither Respondent nor US Branding has ever sold or marketed any goods/services using the disputed domain name. It sells and markets its own “nano” webkey and other “USB Insert” branded products.
2. Neither Respondent nor US Branding nor their respective businesses has to Complainant’s knowledge ever been known by the disputed domain name.
3. Following Complainant’s launch of its pico webkeyTM product line Complainant became aware of the Website maintained at the disputed domain name (“Website”) which contained the following statements (“False Statements”):
“An Important Message about the Pico Webkey…The product known as the Pico Webkey, is in direct violation of Intellectual Property Patents (sic) held by Intermed Asia Limited…This is an infringement of Intermed’s patent rights……”
The Website contained materials advertising “USB Insert” paper webkey products which are sold by US Branding and links to other websites operated by US Branding which carry advertising for its products.
US Branding had used paid-for Google Adwords including the words “pico”, pico webkey”, “Kyp pico webkey” and other combinations of words associated with the Complainant’s business so that Internet users inputting any of these terms in an online search would be diverted to the Website which, as well as containing links to US Branding product marketing materials, contained the following statements in the heading of the search result:
“Webkey Infringement | picowebkey .com
Patent Protected Pico Webkey Buyer Beware Learn More Today” OR “Beware of Knock-offs” [and other variations thereof which inferred infringement by Complainant of patent rights].
www.picowebkey.com”
4. In light of the activities described above Complainant threatened legal action initially against Intermed Asia Limited (“Intermed”), the owner of the patents referred to on the Website. This resulted in the Registrant removing the False Statements from the Website, however the Website still contained the statements referred to at the end of sub-paragraph 3 above which caused or may have caused damage to the Complainant’s business, reputation and goodwill.
Intermed stated that it was not the owner/controller of the disputed domain name. Therefore, Complainant filed a complaint in June 2011 against DomainsByProxy, Inc. who was named in a WhoIs search as the Registrant of the disputed domain name.
DomainsByProxy, Inc.’s business includes that of providing a private domain service to persons wishing to conceal their identities as the true owners/controllers of a domain.
DomainsByProxy, Inc. informed Complainant that the Registrant of the disputed domain name was WISE Retail Solutions which Complainant believes is associated with US Branding.
On 17 June 2011, Complainant threatened legal action against US Branding, explaining that it believed that WISE Retail Solutions was associated with US Branding and that US Branding was the true owner or controller of the disputed domain name.
The basis of Complainant’s threatened legal action was that: (i) the Website contained the False Statements and other statements which inferred that Complainant and its pico webkeyTM products were infringing patents owned by its licensor, Intermed, (ii) the content on the Website was infringing Complainant’s trademarks and (iii) the use of the Complainant’s trademarks and other words associated with Complainant’s business as Adwords for the purposes described above and the other unlawful activities described above constituted unlawful unfair competitive activities.
5. US Branding’s legal counsel implied that US Branding was the owner/controller of the disputed domain name when on 21 June 2011 it gave written assurances to Complainant on behalf of its client, US Branding, that US Branding would:
(a) refrain from further publication of False Statements on the Website and in client presentations;
(b) cease use of the disputed domain name, and
(c) cease use of the phrase PICO WEBKEY and other trademarks owned by Complainant as Google Adwords.
6. On 24 June 2011, in light of US Branding’s assurance that it would cease use of the disputed domain name, Complainant demanded that US Branding should sell the disputed domain name to Complainant for $1.00.
In response, US Branding’s legal counsel confirmed to Complainant that US Branding had “taken down” the disputed domain name and that US Branding was willing to sell the disputed domain name for the sum of $10,000 through the sedo.com brokerage service although they subsequently stated that US Branding was willing to sell the disputed domain name to Complainant for $9,000.
7. Complainant believes that the sole or primary purpose of the registration and use of the disputed domain name has been:
(a) to damage Complainant’s pico webkeyTM trademark used in the legitimate selling and marketing of its goods and services;
(b) to disrupt Complainant’s launch of the pico webkeyTM product line and to divert Complainant’s customers and prospective customers to the Website which contained links to other websites advertising US Branding products including its “nano” webkey products; and to disrupt Complainant’s business generally;
(c) to confuse Complainant’s customers, prospective customers and trading partners by diverting them to the Website on which US Branding published the False Statements which were, or may have been, injurious to Complainant’s business and which were removed following Complainant’s threat of legal action – Complainant has evidence that the registration and use of the disputed domain name including publication on the Website of the statements referred to above has caused confusion and/or raised commercial and/or legal concerns on the part of Complainant’s customers and trading partners; and
(d) to extract from Complainant a purchase price for the disputed domain name which Complainant considers to be excessive.
8. As mentioned above US Branding has confirmed through its legal counsel that it will cease to use the disputed domain name so neither Respondent nor US Branding can claim any right or legitimate interest in the disputed domain name.
9. None of the circumstances listed in UDRP Policy 4 (c) which might have demonstrated that Respondent (or the true registrant of the disputed domain name) has a right or legitimate interest in the disputed domain name exist in this case.
Complainant further contends that the disputed domain name has been registered and used in bad faith for the following reasons:
1. In February 2011 the Complainant ‘s group launched its” pico webkeyTM “branded webkey product line at a pharmaceutical trade show and has actively sold and marketed its pico webkeyTM products/services since that time using the pico webkeyTM mark. Very soon after Complainant’s launch of the pico webkeyTM Respondent and/or US Branding arranged for the registration on 17 February 2011 of the disputed domain name notwithstanding that to Complainant’s knowledge neither party is using, or has ever used, the disputed domain name.
2. Claimant believes that the sole or primary purpose of the Respondent’s and/or US Branding’s registration and use of the disputed domain name has been to disrupt and damage Complainant’s business in the manner described above. To Claimant’s knowledge Respondent has made no legitimate use of the disputed domain name.
3. Following Complainant’s threat of legal action US Branding has through its legal counsel represented that it owns or controls the disputed domain name and has agreed to cease use of the disputed domain name which it is now attempting to sell.
4. In the interests of settling the dispute Complainant offered on 28 June 2011 to purchase the disputed domain name from US Branding for $1,000 which Complainant believes should easily cover Respondent’s and/or US Branding’s out-of-pocket expenses directly related to the disputed domain name. However, this offer has been refused by US Branding which is seeking a purchase price of $10,000 (subsequently reduced to $9,000) for the purchase of the disputed domain name without any justification that this figure might represent its legitimate out-of-pocket expenses relating thereto. Complainant believes the price of $9,000 offered by US Branding significantly exceeds such out-of-pocket expenses and is therefore making this Complaint.
B. Respondent
Respondent contends that Complainant’s purported KYP PICO WEBKEY Mark is not identical or confusingly similar to The Domain Name.
The Complainant’s claim is based solely upon alleged trademark rights in and to the phrase PICO WEBKEY. Complainant’s pending U.S. Application and U.K. trademark however, are for the mark KYP PICO WEBKEY. In addition, the Complainant uses its mark as KYP PICO WEBKEY. There can be no confusion between the Domain Name and the purported mark KYP PICO WEBKEY because Complainant’s purported mark contains the additional term KYP. That term is the only potentially distinctive term in the mark, as the terms PICO and WEBKEY are merely descriptive of Complainant’s goods, as set forth in detail
below.
Thus, the overall commercial impression of Complainant’s purported trademark is distinguishable from the Domain Name.
Respondent further contends that the Complainant does not have rights in the terms PICO WEBKEY because PICO WEBKEY is a descriptive phrase.
The terms PICO WEBKEY are merely descriptive of Complainant’s goods. Indeed, the U.S. Patent and Trademark Office (“PTO”) has required Complainant to disclaim the PICO WEBKEY portion of Complainant’s KYP PICO WEBKEY mark based upon descriptiveness. The term PICO is a metric prefix with a common dictionary definition meaning one trillionth or meaning “small or bit,” as noted by the PTO. The term WEBKEY, as noted by the PTO, refers to a “computer data storage device that may be inserted into a USB port or PC to take a computer user to a web site, landing page and/or e-commerce site.” Because the terms PICO WEBKEY are descriptive, Complainant cannot claim trademark rights in those terms without establishing secondary meaning. Complainant has failed to allege or submit any proof that its mark has developed secondary meaning. Because Complainant only launched its product under the KYP
PICO WEBKEY mark at some point after May 23, 2011 Complainant cannot prove that its mark has developed secondary meaning at the time Respondent registered its Domain Name.
Even if the Complainant had rights in the phrase PICO WEBKEY, those rights do not predate registration of the Domain Name.
The Domain Name was registered before Complainant had made use of the phrase PICO WEBKEY and before Complainant filed any application to register Complainant’s mark, KYP PICO WEBKEY, which is still the subject of pending trademark applications.
Respondent registered the Domain Name on February 17, 2011. Complainant’s U.S. Application is an intent-to-use application, claiming priority based upon Complainant’s Foreign Application. Both Complainant’s U.S. Application and Foreign Application were filed on May 25, 2011 -- over three months after the Domain Name was registered.
While Complainant states in the Complaint that it “launched” its KYP PICO WEBKEY product line in February 2011, a press release on Complainant’s website indicates that Complainant did not launch its KYP PICO WEBKEY product until May 23, 2011 -- more than three months after registration of the Domain Name. This press release makes clear that as of May 23, 2011, Complainant’s product was not on the market and that even as of May 23, 2011, Complainant had not made use of the KYP PICO WEBKEY mark sufficient to establish common law trademark rights in the KYP PICO WEBKEY mark. Tellingly, Complainant’s U.S. trademark application was filed based on an intent to use the mark in commerce pursuant to Section 1(b) of the U.S. Trademark Act on May 25, 2011.
Based upon the foregoing, Complainant has failed to meet the required element that it owned trademark rights in and to a confusingly similar trademark as of February 17, 2011, when the Domain Name was registered.
Based on this timeline, Complainant could not have had rights in the KYP PICO
WEBKEY trademark which predate the date when Respondent registered the Domain Name. Therefore, Complainant’s Complaint must fail under paragraph 4(a)(i) of the Policy.
Respondent further contends that Complainant has failed to make a prima facie showing that Respondent lacks rights and legitimate interests in the Domain Name. Respondent has no intention to use the Domain Name for commercial gain, to misleadingly divert consumers or to tarnish Complainant’s purported trademark, KYP PICO WEBKEY. Respondent and its affiliated companies are leading global innovators, creators, marketers and manufacturers of custom branded, technology driven marketing solutions. Respondent and its affiliated companies market and manufacture USB webkeys that are integrated into a die-cut, detachable cardboard holder, which is in turn integrated into a larger printed paper or cardboard piece, such as an ad insert, mailer brochure, e-catalog
and other materials.
Respondent owns a number of domain names that include the term WEBKEY with an additional term, such as NANOWEBKEY.COM, and may potentially establish an ecommerce site on the Domain Name to sell Respondent’s goods. Complainant’s assertions that Respondent previously advertised Respondent’s webkeys or made statements about Complainant’s products on a website associated with the Domain Name are irrelevant because the terms contained in the Domain Name are descriptive terms not subject to trademark protection. Accordingly, Respondent is entitled to use such descriptive terms on its website.
Respondent’s intent is to potentially redirect the <picowebkey.com> website to another of Respondent’s websites advertising and/or offering Respondent’s webkeys or to display content advertising and promoting Respondent’s webkeys on the <picowebkey.com> website. Respondent’s use is therefore not misleading and does not tarnish Complainant’s trademark.
In sum, Respondent has overcome Complainant’s prima facie showing, if any, that Respondent has no rights or legitimate interests in the Domain Name. Respondent has demonstrated that before notice of any dispute with the Complainant, it was preparing to use and did in fact use the Domain Name in connection with the bona fide advertisement of Respondent’s webkeys. Furthermore, Respondent has established that it is making fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant’s mark. Accordingly, Complainant has failed to meet the required elements set forth in paragraph 4(a)(ii) of the Policy, and its request for transfer of the Domain Name should be denied on this basis alone.
Finally Respondent that contends the Complaint must fail pursuant to paragraph 4(a)(iii) of the Policy because the Domain Name was registered before Complainant has acquired any rights in the term KYP PICO WEBKEY. Bad faith registration is judged when the respondent initially registers the domain name.
Because Respondent’s registration of the Domain Name predated Complainant’s rights in the mark, Respondent necessarily lacked the requisite intent to register the Domain Name in bad faith. As noted above, the Respondent registered the Domain Name on February 17, 2011, more than three months before Complainant even announced the launch of its product on May 23, 2011 or filed
its trademark applications on May 25, 2011. Further Respondent’s registration of the Domain Name was not in bad faith because Respondent could not have contemplated Complainant’s non-existent rights in a descriptive phrase.
Moreover, Respondent has no interest in selling the domain name, nor has Respondent solicited the purchase or sale of the Domain Name with Complainant or any other third-party. Instead, it is the Complainant who offered to purchase the Domain Name from Respondent. Even if, assuming arguendo, Respondent made a solicited demand for a substantial sum of money in response to Complainant’s request to purchase the Domain Name, which Respondent denies, that is not evidence of bad faith registration or use.
Where a complainant initiates contact with a respondent for the purpose of attempting to purchase a domain name, such communications do not provide evidence that the respondent registered the domain name primarily for the purpose of selling the domain name to the complainant. Accordingly, Respondent has not acted in bad faith in registering or using the Domain Name.
In addition, Respondent has not intentionally attempted to attract, for commercial gain, Internet users to the Domain Name website by creating a likelihood of confusion with Complainant, nor has Respondent intentionally attempted to misleadingly divert Complainant’s customers or potential customers. There can be no likelihood of confusion between the Domain Name and Complainant’s purported KYP PICO WEBKEY mark.
For these reasons, Complainant has failed to satisfy its burden of persuasion that Respondent has registered and used the Domain Name in bad faith. Respondent did not register or acquire the Domain Name primarily for the purpose of selling, renting, or otherwise transferring it to Complainant, a competitor of Complainant or any other third-party. Respondent did not register the Domain Name primarily for the purpose of disrupting the business of a competitor. By using the Domain Name, Respondent has not 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 Respondent’s website and goods made available to purchase there. Accordingly, Complainant has failed to meet the required elements set forth in paragraph 4(a)(iii) of the Policy, and its request for transfer of the Domain Name should be denied.
The Panel finds that:
1. the Domain Name <picowebkey.com>, is not confusingly similar to Complainant’s marks;
2. the Respondent has established rights and legitimate interests in the Domain Name <picowebkey.com>; and
3. the Respondent has not registered and is not using the Domain Name <picowebkey.com>, in bad faith.
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.
Respondent argues that its domain name and Complainant’s mark are not identical or confusingly similar. Respondent notes that Complainant’s asserted trademark applications and trademarks are not simply for the PICO WEBKEY mark, but are actually for the KYP PICO WEBKEY mark. Respondent asserts that there is no confusion “between the Domain Name and the purported mark KYP PICO WEBKEY because Complainant’s purported mark contains the additional term KYP.” Therefore, Respondent concludes that the “overall commercial impression of Complainant’s purported trademark is distinguishable from the Domain Name.” The Panel agrees and finds that the <picowebkey.com> domain name is not confusingly similar to Complainant’s KYP PICO WEBKEY mark under Policy ¶ 4(a)(i). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1147 (9th Cir. 2002) ("Similarity of marks or lack thereof are context-specific concepts. In the Internet context, consumers are aware that domain names for different Web sites are quite often similar, because of the need for language economy, and that very small differences matter."); see also FloridaFirst Bank v. Carlson, FA 143677 (Nat. Arb. Forum Apr. 10, 2003) (“Complainant has failed to establish that the words ‘FloridaFirst,’ apart from the registered service mark as a whole, ha[d] acquired a secondary meaning such that the relevant public exclusively associates the words with Complainant as a source of services”).
Respondent argues that its disputed domain name was registered prior to Complainant’s alleged rights in the mark. However, because this argument is not applicable under Policy ¶ 4(a)(i), the argument will be presented under Policy ¶ 4(a)(iii).
Respondent contends that the disputed domain name is comprised of common and descriptive terms and thus cannot be deemed confusingly similar to Complainant’s mark. However, because this argument is not applicable under Policy ¶ 4(a)(i), the argument will be presented under Policy ¶¶ 4(a)(ii) and (iii).
The Panel is of the view that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
Respondent contends that Complainant has failed to make a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain name. Respondent asserts that it has no intention for commercial gain by using the disputed domain to misleadingly divert consumers or to tarnish Complainant’s asserted trademark. Respondent notes that it and its affiliates are “global innovators, creators, marketers and manufacturers of custom branded, technology driven marketing solutions.” In these endeavors, Respondent asserts that it markets and manufactures “USB webkeys that are integrated into a die-cut, detachable cardboard holder, which is in turn integrated into a larger printed paper or cardboard piece, such as an ad insert, mailer brochure, e-catalog and other materials.” Respondent contends that it owns several domain names that include the term “WEBKEY” combined with an additional term, such as <nanowebkey.com>, and plans to create an e-commerce website on the domain name to sell Respondent’s goods. Respondent states that its further intent is to potentially redirect the disputed domain name to another of Respondent’s websites advertising its own webkeys. The Panel agrees with Respondent, and finds that its asserted uses of the domain name in question may be a bona fide offering of goods or services under Policy ¶ 4(c)(i). See Digital Interactive Sys. Corp. v. Christian W, FA 708968 (Nat. Arb. Forum July 3, 2006) (concluding that the complainant failed to satisfy Policy ¶ 4(a)(ii) because the respondent provided sufficient evidence to convince the panel that it was using the disputed domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)).
Respondent also argues that the terms of the <picowebkey.com> domain name are common and descriptive, and therefore, Complainant does not have an exclusive monopoly on the terms on the Internet. Specifically, Respondent contends that the term PICO is a metric prefix that means “one trillionth” or “small or bit,” and the term WEBKEY refers to “computer data storage device that may be inserted into a USB port or PC to take a computer user to a web site, landing page and/or e-commerce site.” Respondent notes that such definitions come directly from the USPTO. The Panel agrees with Respondent and the Panel finds that Respondent can establish rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Nat. Arb. Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes); see also Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Nat. Arb. Forum July 23, 2004) (stating that “Complainant’s rights in the QWEST mark are limited to its application to the tele-communications industry,” where a variety of other businesses used the mark in unrelated fields).
The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Since the Panel concluded that Respondent has rights or legitimate interests in the <picowebkey.com> domain name pursuant to Policy ¶ 4(a)(ii), the Panel also finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
Since the Panel is of the view that Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii), the Panel further finds that Respondent has not registered or used the <picowebkey.com> domain name in bad faith. See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).
Respondent argues that it has no interest in selling the disputed domain name and that it has not solicited the purchase or sale of the disputed domain name with Complainant or any other party. Respondent notes that it was contacted by Complainant, who inquired into purchasing the domain name. Respondent goes on to say that even if Complainant’s allegations were true, they cannot stand because Complainant has not shown that Respondent registered the domain name primarily for the purpose of selling it to Complainant or its competitors. The Panel agrees and finds that Respondent has not violated Policy ¶ 4(b)(i) through its talks with Complainant regarding the sale of the domain name, which were initiated by Complainant. See Mark Warner 2001 v. Larson, FA 95746 (Nat. Arb. Forum Nov. 15, 2000) (finding that considering or offering to sell a domain name is insufficient to amount to bad faith under the Policy; the domain name must be registered primarily for the purpose of selling it to the owner of a trademark for an amount in excess of out-of-pocket expenses); see also Key II, Inc. v. Confino, Vico, FA 954029 (Nat. Arb. Forum June 5, 2007) (finding “that Respondent never approached Complainant with an offer to sell the name; rather the Complainant sought to purchase the name for $3,000 and Respondent said that it had valued the disputed domain name on its books at $50,000. Even if this statement was an implied counter-offer to sell the name to Complainant for $50,000, in connection with a showing of bad faith it is important to note that it was Complainant who initially approached Respondent about the sale.”).
Respondent also argues that it has not intentionally attempted to attract, for commercial gain, Internet users to the disputed domain name by creating confusion with Complainant’s asserted mark. The Panel finds that Complainant has not satisfied its burden in regard to Policy ¶ 4(b)(iv) based upon the evidence on record and the assertions of the parties. See Caterpillar Inc. v. Off Rd. Equip. Parts, FA 95497 (Nat. Arb. Forum Oct. 10, 2000) (refusing to find bad faith registration where the complainant failed to submit any evidence that the domain name was registered in bad faith); see also Schering AG v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000) (finding that the respondent did not register or use the domain name <metagen.com> in bad faith where the respondent registered the domain name in connection with a fair business interest and no likelihood of confusion was created).
Respondent argues that Complainant’s Complaint must fail because the domain name was registered before Complainant ever had rights its asserted mark. Respondent notes that, “[B]ad faith registration is judged when the respondent initially registers the domain name.” The Panel notes that in this instance, the disputed domain name was registered on February 17, 2011. Respondent argues that while Complainant claims it launched its KYP PICO WEBKEY product line in February 2011, a press release on Complainant’s official website indicates that the product line was not introduced until May 23, 2011. See Respondent’s Annex 1 Exhibit A. Respondent further alleges that Complainant has not produced sufficient evidence indicating that it had common law rights or any other legal rights in the asserted mark on or before February 17, 2011. The Panel agrees and finds that Respondent could not have registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii) where the domain name was registered prior to Complainant having rights in its asserted mark. See Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark); see also Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb. Forum May 16, 2007) (finding the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark).
Lastly, Respondent contends that the <picowebkey.com> domain name is comprised entirely of common terms that have many meanings apart from use in Complainant’s KYP PICOWEBKEY mark. Moreover, Respondent contends that the registration and use of domain name comprising such common terms is not necessarily done in bad faith. The Panel finds that a respondent is free to register a domain name consisting of common terms and that the domain name currently in dispute contains such common terms. Accordingly the Panel finds that Respondent did not register or use the <picowebkey.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) ("Common words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis."); see also Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum July 9, 2004) (holding that the respondent’s registration and use of the <target.org> domain name was not in bad faith because the complainant’s TARGET mark is a generic term); see also Miller Brewing Co. v. Hong, FA 192732 (Nat. Arb. Forum Dec. 8, 2003) (finding that because the respondent was using the <highlife.com> domain name, a generic phrase, in connection with a search engine, the respondent did not register and was not using the disputed domain name in bad faith).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <picowebkey.com> domain name REMAIN WITH Respondent.
Dr. Reinhard Schanda, Panelist
Dated: October 13, 2011
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