Register.com, Inc. v.
Domain-it!, Inc. c/o Domain-It Hostmaster
Claim Number: FA0801001126697
PARTIES
Complainant is Register.com, Inc. (“Complainant”), represented by Brett
E. Lewis, of Lewis & Hand, LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <register.cc>, registered with Domain-it!
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.
Hon. Sir Ian Barker, QC, Sandra J. Franklin, Q. Todd Dickinson as
Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on
On
On January 14, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of February 4, 2008 by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent’s registration as technical, administrative and billing contacts,
and to postmaster@register.cc by e-mail.
On
A timely Response was received and determined to be complete on
Timely Additional Submissions were received from the Complainant on
On
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant is an Internet web services provider that claims to be
the successor of Forman Interactive Corporation (“FIC”) which commenced
business in 1994.
According to a declaration made under penalty by Denise Wheeless, the
Manager of Compliance and Business Affairs of the Complainant, the Complainant
began offering free domain registration services in January 1998, while
continuing to offer FIC’s web-hosting and website building services. By July 1998, the Complainant was registering
20,000 domain names per month and was the second ICANN accredited company for domain
name registrations. By December 2000,
the Complainant had registered 3.1 million domain names.
Its services have been extensively advertised through all forms of
media and it is now a leading provider of global domain name registration and Internet
services to individuals and businesses.
It directly registers domain names across generic top level domains and
also offers registration in 240 country code domains.
The Complainant is the owner of
Prior Panels have held that the complainant has possessed trademarks in
the registered mark as early as 1994. See Register.com Inc. v. Skander, FA 1029513 (Nat. Arb. Forum
Aug. 22, 2007); see also Register.com Inc. v. Reile, FA 208576
(Nat. Arb. Forum Jan. 27, 2004).
The disputed domain name is identical to the Complainant’s registered trademark
REGISTER, and confusingly similar to the Complainant’s registered trademark
REGISTER.COM.
The Complainant has not licensed, transferred, assigned or otherwise
authorised the Respondent to use its marks or any variation thereof. Nor is the Respondent known
by the disputed domain name.
The Respondent has made no use of or demonstrable preparations to use
the disputed domain name in connection with a bona fide offering of services.
However, the Respondent uses the disputed domain name to “siphon away”
the Complainant’s customers to a competing web service site located at <Domain-it.com>.
The disputed domain name forwards to a landing page which features a
price comparison between Domain-it! and the Complainant, amongst others. The Respondent has used the disputed domain
name to redirect visitors to the <Domain-it.com> site since 1998.
According to its website, the Respondent was founded in 1996 and began
offering top-level domain names to the public shortly thereafter, holding
itself out as <Domain-it.com>.
As an early pioneer on the Internet and domain name web-hosting
services, the Respondent would have been aware of the Complainant and its
competing businesses. As of late 1996,
the Complainant was hosting one of 10 virtual shopping centres on the Internet
with over 700 clients, receiving upwards of 2 million hits monthly.
The disputed domain name was registered in December, 1997. The Respondent had then no trademark rights
in the registered mark and has not subsequently obtained any.
The Respondent’s use of the disputed domain name redirects Internet
users to its own website which is not a bona
fide offering of goods and services.
The Respondent has no legitimate rights or interest in the disputed
domain name and has intentionally attempted to attract for commercial gain Internet
users to its site by creating a likelihood of confusion with the Complainant’s
mark as to the sponsorship, affiliation or endorsement of the Respondent’s
website or of a product or service on the Respondent’s website.
The Respondent’s registration of the disputed domain name was more than
three years after the Complainant’s predecessor in interest began using the
registered mark in commerce in connection with website hosting with largely the
same services as the Respondent offers.
At the date the Respondent registered its domain name <Domain-it.com>
(i.e. December 30, 1997), the Complainant already had
a high profile Internet presence. The
Respondent must then have known of the Complainant.
A domain name incorporating a known trademark to a competitive website
is strong evidence of bad faith intent.
The Respondent has been using the disputed domain name for at least 10
years despite a “cease and desist” e-mail from the Complainant in January 2007.
The Respondent registered the disputed domain name in bad faith and
continues to use it as such. The
Respondent has also registered a misspelling of at least one other well-known Internet
trademark company as a domain name, i.e. “AlterVister.com” in clear
infringement of the rights of Alter Vista search engine
company.
Although “register” is a dictionary word, the Respondent has not used
it in the dictionary sense but has used the disputed domain name after it had
acquired trademark significance. It uses
it to redirect users to a competing web services site.
B. Respondent
The Respondent contends that the Complainant was not offering domain
registration services in 1994. As shown
in the <archive.org> printout dating from 1996, the site at <register.com>
was labelled “<register.com online mall, the most convenient and secure way
to shop online. There is a link on the
page to a website building software which led to the
site of FIC but there is no indication of web-hosting e-mail or domain registration
services being offered as branded “register” or “register.com”.
The Complainant conflates the historical account of the services
provided by FIL, the Forman Interactive business and that of <register.com>. It was not until 1998 that the Complainant
mentions domain registration services for others, despite the claim for first
use in the trademark application of December 1999.
As to legitimate rights or interests, the Respondent has been providing
domain registration services for longer than the Complainant. It was not possible to be a domain registrar
prior to the advent of ICANN in 1999.
The alleged “free” domain registration service of the Complainant in
1998 was a service submitting domain name registration applications to Internik
which, at the time, was the only available domain registrar for “.com,” “.net”
and “.org.” During 1998, when the
Complainant was advertising but not actually providing free domain registration
services, the Respondent was engaged in providing domain name registration
services and, in particular, for the “.cc” country code TLD.
The Respondent registered <Domain-it.com> in November 1996 and
began offering domain registration services as a sole trader before incorporating under
the title “domain.it! Inc”. In 1997, the company which owned the right to
operate the .cc registry became interested in it as a commercial
exploitation. .cc is a country code for
the Cocos (Keeling) Islands, a dependency of
In November 1997, the Respondent wrote to the “.cc” registry enquiring
how it might offer “.cc” registration services.
By December 28, 1997, the Respondent and the Registry has worked out an
e-mail template for submitting registrations.
The Respondent thereafter became the first commercial provider of domain
registration services for the “.cc” TLD.
The disputed domain name with a “.cc” suffix has been in continuous use
since then. The Respondent has been
using the domain name in connection with a bona
fide offering of services for over a decade, and certainly prior to
notification to it of any dispute.
The disputed domain name is the straightforward generic description of
the service which the Respondent has been providing in connection with the use
of its domain name as a forwarder to its domain name registration services.
As to bad faith – At the time of the registration of the disputed
domain name, the Complainant had not even applied for registration of its marks. The Respondent could not have known that the
Complainant would apply for registration.
The trademark must be shown to predate the Complainant’s marks, the
subject domain name. There must be
evidence of a secondary meaning at the date of registration of the disputed
domain name. Various cases were cited to
show that the Complainant could not show acquired distinctiveness prior to the
date of registration of the disputed domain name.
The Respondent alleges that questionable conduct by the
Complainant towards the Respondent and other competitors. The Complainant used “phantom” or “feeder”
pages as well as metatags incorporating the trademarks of its competitors in
order to improve its search engine capacity relative to those of competitors
such as the Respondent, who have been engaged in the domain registration
business since before the Complainant had entered it.
The previous UDRP cases where the Complainant had succeeded were
distinguishable. The present case is
more similar to Register.com Inc. v.
Shwarnaakakshumi, FA 747648 (Nat. Arb. Forum Sept. 11, 2006).
C. Complainant’s Additional
Submissions
The Respondent does not deny that it was aware of <register.com>
at the time it registered the disputed domain name or that it supplied website
hosting services in 1996. In 1997 the
same services were offered by the Complainant.
This is a simple case of cybersquatting in that one player in this
market knowingly adopted the distinctive common law trademark of its
competitor.
The Respondent submitted no evidence in the form of an affidavit or
otherwise to support its justification in registering as a domain name, the
brand of a known competitor in the domain name registration field and pointing
it to the Respondent’s website.
The first issue is whether the Complainant’s website, branded under the
name identical to the disputed domain name, servicing a 1,000 or more hosting
clients visited by 2m plus visitors and written-up in industry publications,
could have acquired distinctiveness as of December 1997, less than five years
after its first use.
The Respondent’s argument that distinctiveness could not be acquired
before the date of filing of a trademark application is misleading. The evidence submitted satisfies the
requirements of establishing acquired distinctiveness and that not sustaining the
objection of a single examining attorney that the word “register” is in no way
descriptive of website hosting services.
The word is inherently distinctive of those services.
As to legitimate rights or interests, the Respondent does not dispute
that the Complainant has been offering website hosting services from 1995 to
the present. The Respondent did not
begin to offer these until late 1996, at the earliest.
It is not correct that these services are not competing with those offered
by the Complainant. Both domain names
contain the word “register” and both offer hosting services. The argument that the Respondent registered
domain names for third parties before the Complainant is a red-herring. At the time of registration of the disputed
domain name in December 1997, the Complainant was well-known in the Internet
and web-hosting fields. Customers of one
service often require the other. The
Respondent could reasonably have expected the Complainant to expand into the
registration field as a natural consequence of business expansion. Even assuming the domain name and web-hosting
services could be differentiated, the parties were as competitors in the field
of web-hosting at the time that the Respondent registered the domain name that
was an exact match of the Complainant’s trademark.
Merely pointing a domain name to a competing website is not a
legitimate use. The Respondent has made
no other use of the disputed domain name and does not use it as a
trademark. The Respondent’s marks were
distinctive prior to the Respondent’s registration of the disputed domain
name.
Most records of the Complainant’s use of the marks in the relevant
period have been lost. The Complainant
submitted extensive evidence of use of the mark in commerce before it applied
for a trademark registration and has consistently claimed the <register.com>
as a trademark.
None of the persons working for the Complainant in 1999, including its
founder, Mr. Forman, still work for the company. Most of the evidence submitted in support of
the Complaint came from Internet archives.
The Respondent has not denied it was aware of <register.com> at
the time it registered the disputed domain name, which incorporates the mark in
its entirety.
The Respondent’s actions were, either willful or willfully blind.
D. Respondent’s Additional
Submissions
The Complainant has not identified a date by which it claims that the
trademarks acquired distinctiveness prior to the date of the registration. The Respondent complains that the material
filed by the Complainant in its Supplemental Response could have been filed in
the original Complaint.
The Complainant’s federal trademark filings rely entirely on activities
conducted after 1998. There is no
documentation of use of the marks in 1994.
In any event, the Complainant did not exist prior to its formation in
1999, as evidenced by information from the Department of States for the State
of
The Complainant claims that its lack of documentation of its use of its
marks from 1994 to 1998 is a result of the passage of time and loss of
institutional memory. In a nutshell, the
Complainant cannot justify the evidence required to establish a common law
trademark such as direct consumer testimony, consumer surveys, exclusivity,
length and matter of use, amount and manner of advertising, amount and sales of
customers, established place in the market and proof of intentional copying.
The Complainant’s evidence that falls within the relevant period in
question is incomplete. The declaration
by Ms. Wheeless shows revenue statistics in 1998 are only $219,359 compared
with $116m odd in 2001. There was no
sales revenue given for 1997. Likewise,
the advertising budget only starts at 1999.
Website visits began in November 2000 and the long list of publications
which discussed the Complainant’s website is first dated
The Complainant, formed in 1999, was not the original registered
operator of the domain <register.com>.
Whereas, the Respondent was clearly offering
registration of “.com,” “.net” and “.org” names in 1997 and was accredited to
and launched “.uk,” “.to,” “.web” and “.cc” domain names.
The evidentiary burden on the Complainant to establish secondary
meaning is substantial. Numerous texts
and cases were cited in support of this proposition.
In determining bad faith, the date of acquisition of a trademark is
important. The Complainant has not shown
that the alleged common law trademark acquired sufficient distinctiveness as at
the date of registration of the disputed domain name so as to qualify as a
common law mark.
The issues raised by the Complainant relating to Alter Vister are
irrelevant.
FINDINGS
(a)
The
disputed domain name is identical to a registered trademark in which the
Complainant has rights.
(b)
The
Respondent has demonstrated that it comes within Paragraph 4(c)(i) of the Policy and, therefore, the Complainant has not
established that the Respondent has no legitimate rights or interests.
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 disputed domain name is identical to the
trademark REGISTER, registered by the Complainant. It is also confusingly similar to the
Complainant’s registered trademark REGISTER.COM.
For the purposes of Paragraph 4(a)(i) of the Policy, it does not matter that a trademark was
registered after the disputed domain name.
However, the fact that the disputed domain name was registered long
before the trademark was finally registered, and certainly before the
application for trademark had been filed in the USPTO, does not assist the
Complainant.
In the extensive, and often repetitive,
pleadings of both parties, there is no explanation from the Complainant as to
why it has taken almost 10 years for it to bring a Complaint under the UDRP in
respect of the disputed domain name.
The Panel cannot find it proved that the
Complainant has proved a common law trademark prior to the date of its
application for a trademark in 1999. The
following matters weigh with the Panel in reaching this conclusion:
(a)
There is
no evidence to show that the business of Mr. Forman or his company was acquired
legally by some form of assignment by the Complainant, which was registered as
a corporation only in 1999.
(b)
The assertion
in the trademark documentation, that the mark was first used in commerce in
1994, has not been demonstrated.
(c)
Possibly
because of changes of personnel or loss of records, the Complainant is unable
to satisfy the normal requirement for a common law mark – i.e. proof of
distinctiveness or secondary meaning.
(d)
In other
words, the Complainant has not proved it had a common law trademark prior to
the registration of the disputed domain name.
(e)
This
Panel has to deal with the evidence as it is presented to it. Therefore, decisions of previous Panels
involving the Complainant are of limited worth.
(f)
Whilst
the Panel shares some of the Respondent’s misgivings about the appropriateness
of a trademark registration of a generic word such as “register” (which word can
apply in many situations), it is not usually possible for the Panel to question
the validity of a trademark registration.
The Complainant must be taken to own valid trademark registrations. See
WIPO Overview of WIPO Panel Views on
Selected UDRP Questions, Para.1.1, and the cases there cited.
Whilst the Complainant gave the Respondent no
rights in respect of the disputed domain name, the Respondent has satisfied the
onus under Paragraph 4(c)(i) of the Policy. It is clear from the evidence that it has
been, since 1997, conducting a business of registering domain names and, in
particular, registering domain names for the country code “.cc.” At the date when the Respondent commenced
this business in 1996, the Complainant was not legally in existence and there
was no documentary evidence of the Complainant having acquired the business of
FIC.
In late 1997, the Respondent cultivated a
connection with the administrator of the “.cc” country code, apparently seeing
value in selling domains with this suffix.
The Respondent registered a number of generic names with the “.cc”
suffix which it believed would turn out to be of value. The disputed domain name was one of
these. The Respondent had rights in the
disputed domain name when it registered it in 1997, before the Complainant had
established rights in the mark. See Warm
Things Inc. v. Weiss, D2002-0085
(WIPO Apr. 18, 2002).
“Register”, being a common word used in
connection with domain hosting services, the Panel finds that the Respondent is
using the disputed domain name in connection with a bona fide offering of services and that it was doing so before it
had notice of the dispute.
It is unnecessary to consider bad faith, in
view of the Panel’s finding under Rights and Legitimate Interests.
This case, again, demonstrates the
difficulties faced by Complainants who bring complaints in respect of domain
names that have been registered for a long period, in this case, 10 years.
DECISION
The Panel concludes that relief shall be DENIED.
Hon. Sir Ian Barker, QC
Presiding Panelist
Sandra J. Franklin Q. Todd Dickinson
Panelist Panelist
Dated: 18 March 2008