Advanced Analytical Technologies, Inc. v. Hare, Myles / URL Enterprises Ltd.
Claim Number: FA1611001701430
Complainant is Advanced Analytical Technologies, Inc. (“Complainant”), represented by Steve Siembieda, Iowa, USA. Respondent is Hare, Myles / URL Enterprises Ltd. (“Respondent”), represented by John Berryhill, Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aati.com>, registered with Network Solutions, LLC.
The undersigned certifies that he and the panel have acted independently and impartially and to the best of his knowledge have no known conflict in serving as Panelists in this proceeding.
Daniel B. Banks, Jr., Panel Chair
Dr. Beatrice Onica-Jarka, Panelist
Hon. Neil Anthony Brown QC, Panelist
Complainant submitted a Complaint to the Forum electronically on November 4, 2016; the Forum received payment on November 4, 2016.
On November 4, 2016, Network Solutions, LLC confirmed by e-mail to the Forum that the <aati.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC 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 November 9, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 5, 2016 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 firstname.lastname@example.org. Also on November 9, 2016, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 December 5, 2016.
Additional submissions were received from the Complainant and Respondent and were deemed to be timely filed.
On December 13, 2016, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed Daniel B. Banks, Jr.,
Dr. Beatrice Onica-Jarka, and Hon. Neil Anthony Brown, QC, as Panelists.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Policy ¶ 4(a)(i)
Complainant has used AATI as a brand name since the incorporation of its company in 1997. The mark has been used on or in connection with the following: International Organization for Standardization (ISO Certification), Web and Internet based materials, Product Brochures, Press Releases, Technical Sheets, Tradeshow Displays, Product Manuals, Safety Data Sheets (SDS), Office Documents, Emails and Electronic Communications, Legal Documents, Business to Business Documents and other documents and communication related to business operations. Additionally, Complainant has the following domains registered: aati-us.com, aati-fr.com, aati-de.com and aati-eu.com.
Policy ¶ 4(a)(ii)
Respondent is identified as a domain reseller as noted in their company name URL Enterprises LTD. Currently, AATI.com displays a “for sale” advertisement encouraging visitors to request a quote to buy the domain. This could allow competitors of Complainant to purchase the domain. The domain could then be used for motives that negatively impact Complainant’s ability to provide legitimate products and services to their customer base. Respondent has no known interest in the AATI.com domain other than the resale of the domain for profit.
Policy ¶ 4(a)(iii)
Respondent competed with Complainant in both a public and private auction for <aati.com>, and won. Subsequently, Respondent put the domain name up for sale within 24 hours.
Policy ¶ 4(a)(i)
Complainant uses the acronym “AATI” as a corporate name, but Complainant does not show use or registration of AATI as a trade or service mark, and therefore cannot have rights in AATI under the Policy. Registration and use of domain names does not confer rights. Complainant is incorporated as “Advanced Analytical Technologies” but does not evince a trademark interest in “AATI.” Complainant's has provided a list of documents, none of which demonstrate use of “AATI” as a trade or service mark. Instead, it is used as a trade name, introduced in the article in parenthesis after the corporate name and then used as a noun to refer to the company. Complainant also encountered failure—twice—in attempting to register the AATI mark with the United States Patent and Trademark Office (“USPTO”). The first attempt was abandoned after refusal by USPTO. The second attempt was cancelled because registrant did not file an acceptable declaration under Section 8. Other documents provided by Complainant concerning advertisements are without context, and no information is given as to when the ads displayed may have been run, by how many consumers they were seen, or in what goods or services the ads establish a trademark. Complainant shows search engine results using AATI as a trade name, and the results differ from Respondent’s own research, wherein searching “AATI” returned the following: American Association of Teachers of Italian at aationline.org; the American Advanced Technician's Institute at aationline.com; the Asociación Argentina de Traductores e Intérpretes at aati.org.ar; and so on.
Policy ¶ 4(a)(ii)
Respondent is a domain reseller who had acquired a valuable non-distinctive four-letter domain name at auction. <aati.com> has inherent value in the secondary domain name market. The letters comprising the domain name are not distinctive; in fact, they have a wide range of existing uses. Demonstrated in the Complaint is Complainant’s willingness to participate in an auction for the domain name where the bidders were anonymous; and Complainant has not demonstrated that Respondent lacks rights and legitimate interests in the domain name.
Policy ¶ 4(a)(iii)
Complainant confuses a general offer for sale with the type of behavior set out in Policy ¶ 4(b)(i). Respondent has not registered or used <aati.com> in bad faith under Policy ¶ 4(b)(i) because it has not deliberately tried to extort Complainant. Respondent is a generic domain name reseller. Sale of domain names for profit is not proscribed by the Policy or the ACPA.
Respondent had neither actual nor constructive knowledge of Complainant when registering the domain name. Complainant’s reputation is among a very limited clientele who possess doctorates in genetics and run sophisticated laboratories. Even if Respondent had constructed a trademark search, it would have found the previously failed trademark applications filed by Complainant with the USPTO for the AATI mark. Therefore, there could have been no bad faith registration at the anonymous auction in which Respondent acquired the domain name. Complainant claims it monitored the domain for many years, and was willing to participate in an auction (max bid of $2,410) to acquire it. Complainant's odd and incorrect paraphrasing of certain "factors" relevant under the ACPA is not relevant to that distinction of intent, nor does Complainant's history with the USPTO suggest that the Complainant possesses any relevant rights under the US Lanham Act in general, which is a necessary condition for an action under the ACPA. This seems like a “Plan B” UDRP because Complainant failed under a normal commercial context to acquire the domain name.
C. Additional Submissions
On December 12, 2016, an additional submission was filed by Complainant. Therein, Complainant admits to not having a trade or service mark granted by a government entity and openly admits that it made several attempts at obtaining a trademark for "AATI". Complainant contends that through its advertising and marketing, it meets the criteria for holding the mark by common law.
Complainant also contends that Respondent has no legitimate rights to the domain name because Respondent holds no connection to the name; has not used or made demonstrable preparations to use the name in connection with a bone fide offer of goods and services; and that Respondent's sole purpose is to sell the domain at a price in excess of out-of-pocket costs. Complainant further states that its intent in trying to purchase the disputed name was to consolidate its several URLs. Complainant states that, to the Respondent, this disputed name "AATI " is a non-descript four letter URL while to Complainant it represents their brand to their world-wide customer base.
Complainant also addresses the issue of bad faith in the additional submission. Complainant claims confusion and misunderstanding in the bidding process and claims that, since Respondent had no legitimate right to the domain name, it can only be concluded that Respondents sole purpose was to resell the domain at a much higher price than what they paid for it at public auction. Complainant represents that there were bids from 71 different bidders and suggests the likelihood that other bidders may have been trying to purchase this domain in good faith.
In Respondent's additional submission, it points out that Complainant is making a "better right" category of argument which actually presents further evidence that "AATI" is not used as a trade or service mark and does not present any of the usual indicia to establish a common law trademark right. Also, Complainant does not show a single act of bad faith premised on the Complainant's mark in the Respondent's registration and use of the domain name. Complainant says it did not pursue any attempt to gain the disputed domain as the previous registrant was in a different industry and using the domain name in good faith thereby not posing any conflict to the Complainant. However, Complainant does not explain how Respondent's use of the domain name or its prospective sale to a person named Aati or someone else would pose any conflict in relation to Complainant.
Respondent also points out that Complainant admits "To the Respondent this is a non-descript four letter URL..." Respondent says this is precisely correct. It is a four letter domain name which has value to the Respondent, and to the market in general, for reasons that have nothing to do with Complainant's claimed trademark.
In addressing the remaining assertions of Complainant's additional submission, Respondent points out that the exhibits presented by Complainant are further examples of its lack of trade or service mark rights in the term "AATI". Respondent makes the point that the evidence submitted clearly shows that AATI is not used by Complainant as a trademark or service mark. Finally, Respondent says that Complainant, having now had a second opportunity to state its case, has not identified a single act of Respondent or Respondent's use of the domain name upon which one could infer a bad faith intent premised on Complainant's limited claim of rights in a specialized market.
1 - The panel finds that Complainant has failed to bear its burden of proof that the disputed domain name is confusingly similar to a trademark or service mark in which Complainant has rights.
2 - Complainant has failed to make a prima facie case that Respondent has no rights or legitimate interests in respect of the domain name.
3 - Complainant has failed to show that the disputed domain name was registered and is being used 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.
Complainant has failed to establish rights in the disputed domain name under the Policy. First of all, Complainant has not registered the acronym "AATI" although it has tried on two occasions and failed. And, Complainant's claim of common law rights is limited to a few publications and ads that use the acronym "AATI" not as a trademark but to identify the producer of a product. It is the view of the Panel that this evidence is not sufficient to support a finding of common law rights. Also, registration and use of domain names does not confer rights, as Complainant asserts. See Williams, Babbitt & Weisman, Inc. v. Ultimate Search, FA 98813 (Forum Oct. 8, 2001) (“‘BAG’ was used by Complainant in the domain names <BAG-works.com>, <BAGonline.com> and <BAGinc.net>. These variations gave Complainant no rights to contest and obtain the domain name <BAG.COM>.”).
While Complainant is incorporated as “Advanced Analytical Technologies”, that fact does not evince a trademark interest in “AATI.” See Koninklijke Nederlandse Springsstoffen Fabriek N.V. v. Kim Hyungho GMM, D2002-0707 (WIPO Oct. 1, 2002) (“As long as there is no registration of the letters KNSF as a company name or trademark, and the Complainant has not substantiated that the abbreviation has been used to such an extent that it has been generally known to the relevant commercial circuit as a trademark or trade name for Complainant, Complainant has failed to prove that he has rights in KNSF as a trademark.”). In the documents submitted by Complainant, it used the acronym as a trade name. Trade names do not confer rights under the Policy. See G. Bellentani 1821 S.p.A. v. Filoramo, D2003-0783 (WIPO Nov. 21, 2003) ("[T]he Policy does not extend to trade names.”); see also Paris Jewellers Ltd. v. NAME ADMINISTRATION INC. (BVI), FA 1573085 (Forum Sept. 12, 2014):
Even though Complainant submitted evidence to prove corporate registration of PARIS JEWELLERS LTD., this Panel finds it is not sufficient to create trademark rights. See The Woodlands Dermatology Associates, P.A. v. Anthony Perri, FA1110001410742 (Forum Nov. 28, 2011) (The use of the trade name “The Woodlands Dermatology Associates, P.A.” by Complainant is insufficient to establish rights under ¶ 4(a)(i) of the Policy). See also, Diversified Mortgage, Inc. v. World Financial Partners, FA 118308 (Forum Oct. 30, 2002) (finding that the Policy makes clear that its rules are intended only to protect trademarks, and not mere trade names).
Complainant's evidence regarding advertisement is without context, and no information is given as to when the ads displayed may have been run, by how many consumers they were seen, or in what goods or services the ads establish a trademark. Additionally, Complainant's search engine results show it using AATI as a trade name. Other search engine research, for “AATI” returned the following: American Association of Teachers of Italian at aationline.org; the American Advanced Technician's Institute at aationline.com; the Asociación Argentina de Traductores e Intérpretes at aati.org.ar; and so on. Resp., at Attached Ex. D. The Panel finds that Complainant used AATI as a mere trade name, which does not constitute appropriate evidence of rights under the Policy.
Respondent notes that Complainant also encountered failure—twice—in attempting to register the AATI mark with the USPTO. Lack of governmental registration of a mark may impute a lack of standing, especially where common law evidence is lacking. See Brinks Servs. Inc. v. Holt, FA 324699 (Forum Nov. 4, 2004) (finding that the complainant did not have standing to bring a complaint under the Policy because the complainant did not provide any evidence that it had valid trademark registrations for the mark or common law rights in the mark, and the complainant did not even suggest how long it had used the mark or identified what services were connected with the mark). Therefore, the Panel finds that Complainant lacks standing to bring this dispute.
The Panel finds 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 (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 (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 is a domain reseller who had acquired a valuable non-distinctive four-letter domain name at auction. Four-letter domains acquired by domain resellers have been considered as inherently having value because of their appeal as being simplistic and therefore rights and legitimate interests may exist merely by virtue of acquiring them. See Franklin Mint Fed. Credit Union v. GNO, Inc., FA 860527 (Forum Mar. 9, 2007) (concluding that the respondent had rights or legitimate interests in the <fmcu.com> domain name because it was a generic domain name reseller who owned numerous four-letter domain names); see also IDN, Inc. v. Name Administration Inc. (BVI), FA1741862 (Forum Oct. 23, 2012) (“The general use of a domain name comprising four letters which could stand for anything without targeting the Complainant’s business constitutes, in the opinion of the Panel sufficient grounding for the Respondent to establish rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).”); see also BioDelivery Sciences International, Inc v HLK Enterprises, Inc. c/o Domain Admin, FA 0804002275189 (Forum May. 19, 2008) (finding that “based on the fact that the disputed domain name and Complainant’s mark contain only four letters that could stand for many things unrelated to Complainant’s business, the Panel finds that Respondent’s use of the disputed domain name as a portal website is a showing of rights or legitimate interests under Policy ¶ 4(a)(ii).”). Accordingly, while Respondent—a generic domain name reseller—registered a four-letter acronymic domain name via an online auction, the Panel finds that such circumstances confer rights and legitimate interests under Policy ¶ 4(a)(ii).
The letters of <aati.com> are common and have a wide array of meanings. Complainant does not have an exclusive monopoly on the letters on the Internet. The Panel finds that Respondent can establish rights or legitimate interests in <aati.com> pursuant to Policy ¶ 4(a)(ii). See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (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 (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 (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 (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).
Also, the Panel concludes that Respondent has rights or legitimate interests in <aati.com> pursuant to Policy ¶ 4(a)(ii), and therefore, Respondent did not register or use <aati.com> 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 (Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
In its attempt to assert bad faith, Complainant confuses a general offer for sale with the type of behavior set out in Policy ¶ 4(b)(i). See Policy ¶ 4(b)(i):
[C]ircumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name[.] (emphasis added).
Respondent has not registered or used <aati.com> in bad faith because it has not violated the above provision of the Policy. Respondent is a generic domain name reseller. Sale of domain names for profit is not proscribed by the Policy or the ACPA. See Electronic Arts Inc. v. Abstract Holdings Int’l LTD / Sheren Blackett, FA 1415905 (Forum Jan. 4, 2012):
Respondent never offered to sell the <ssx.com> domain name to Complainant. Respondent never targeted Complainant as a potential purchaser of the domain name. The offer to sell was automatically generated on the resolving website. Respondent would certainly have sold the name to Complainant, as Respondent would have sold to any person interested in purchasing the name, but it did not intend to sell the disputed domain name to Complainant. These facts do not show that Respondent registered or used the <ssx.com> domain name in bad faith under Policy ¶ 4(b)(i).
Accordingly, the Panel finds the facts of the instant dispute analogous to those in Electronic Arts Inc. and therefore that Respondent did not register or use <aati.com> in bad faith under Policy ¶ 4(b)(i).
In this case, there is no evidence that Respondent had actual or constructive knowledge of Complainant when registering the domain name. Complainant’s reputation is among a very limited clientele who possess doctorates in genetics and run sophisticated laboratories. Even if Respondent had constructed a trademark search, it would have found the previously failed trademark applications filed by Complainant with the USPTO for the AATI mark. Therefore, there could not have been bad faith registration at the anonymous auction in which Respondent acquired the domain name.
The disputed domain name <aati.com> is comprised entirely of a common acronym that has many meanings apart from the use of the AATI acronym alleged by Complainant. Moreover, the registration and use of domain names comprising such common acronyms is not necessarily done in bad faith. The Panel finds that Respondent did not register or use <aati.com> in bad faith under Policy ¶ 4(a)(iii). See BioDelivery Sciences International, Inc, supra (“The four letters that create the asserted mark and the disputed domain name could stand for many things that do not interfere with Complainant’s business. Therefore, bad faith registration and use of the disputed domain name pursuant [to] Policy ¶ 4(a)(iii) has not been proven.”).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <aati.com> domain name shall remain with Respondent.
Daniel B. Banks, Jr., Panel Chair
Dr. Beatrice Onica-Jarka, Panelist
Hon. Neil A. Brown, QC, Panelist
Dated: January 1, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page