Imec International Stichting van Openbaar nut a/k/a Imec International v. IMEC Hosting
Claim Number: FA1702001716823
Complainant is Imec International Stichting van Openbaar nut a/k/a Imec International (“Complainant”), represented by Sydney R. Kokjohn of McDonnell Boehnen Hulbert & Berghoff LLP, Illinois, USA. Respondent is IMEC Hosting (“Respondent”), represented by Razmig H. Messerian of Loza & Loza, LLP, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <imec.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Karl V. Fink (Ret). (Chair); Paul M. DeCicco and G. Gervaise Davis, III as Panelists.
Complainant submitted a Complaint to the Forum electronically on February 10, 2017; the Forum received payment on February 10, 2017.
On February 13, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <imec.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 February 17, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 9, 2017 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@imec.com. Also on February 17, 2017, 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 March 8, 2017.
Complainant’s Additional Submission was received on March 13, 2017 and determined to be in compliance with the Rules.
Respondent’s Additional Submission was received on March 20, 2017 and was timely.
All submissions were considered by the Panel.
On March 20, 2017, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Hon. Karl V. Fink (Ret). (Chair), and Paul M. DeCicco and G. Gervaise Davis, III 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.
A. Complainant
Complainant is an independent research and innovation hub in nano-electronics and microchip technologies. Complainant has rights in the IMEC mark pursuant to its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,4560,655, filed Dec. 4, 1997, registered June 19, 2001). Complainant also has rights in the IMEC mark under the common law. Respondent’s <imec.com> (registered by Respondent on October 29, 1996) is identical to the mark because “.com” is a nondistinguishing feature.
Respondent has no rights or legitimate interests in <imec.com>. Respondent is not known as IMEC because “an Internet search” did not return results on a company called IMEC Hosting. Additionally, Complainant did not authorize Respondent to register the domain name. Further, Respondent is neither making a bona fide offering through the domain name, nor a legitimate noncommercial or fair use. Instead, the resolving website merely displays click-through advertising, the content of which is unrelated to Complainant.
Respondent registered and used <imec.com> in bad faith. Respondent has attempted to sell the domain name to Complainant for an excess of out-of-pocket costs under Policy ¶ 4(b)(i). Respondent has committed bad faith under the language of Policy ¶ 4(b)(iv) because there is no disclaimer on the resolving site, leading to the likely presumption of Internet users to believe the website is associated with Complainant.
B. Respondent
Respondent concedes that <imec.com> is similar to Complainant’s IMEC mark. However, Complainant has failed to establish common law rights to the IMEC mark prior to Respondent’s date of registration (October 29, 1996).
Respondent has rights or legitimate interests in <imec.com>. Respondent’s name “IMEC” stands for “International Marketing and Engineering Company.” Respondent is commonly known by the domain name. The word “Hosting” in Respondent’s name is descriptive of the services it offers to its clients, including website and web application hosting. After registering the domain name, Respondent began using <imec.com> to host webpages relevant to its bona fide offering of website and web application hosting and design services. Respondent’s Exhibit C shows webpages of <imec.com> offering web hosting and development services dating back as early as Apr. 3, 1997. Respondent has also used its website to host customer content. Respondent has been using <imec.com> for email since its inception: hm@imec.com; support@imec.com; sales@imec.com; webmaster@imec.com; hm_home@imec.com, webadmin@imec.com, webadmin@server.imec.com, and hminassi@imec.com. Respondent has common law rights to the IMEC mark that predate Complainant’s June 19, 2001 registration (filed Dec. 4, 1997). Four other entities have registered the IMEC mark in connection with varying goods and services. Respondent is currently engaging in legitimate noncommercial or fair use because it uses subpages at <imec.com> to store personal and other non-business related files and folders under a secure, password-protected system.
There is no bad faith where Respondent’s registration predates Complainant’s rights in the IMEC mark. Complainant fails to provide any significant evidence that its use of IMEC has caused the mark to acquire secondary meaning prior to Oct. 29, 1996. Respondent clearly did not target Complainant in offering to sell the domain to it for a large sum of money because all offers submitted by Complainant were done so anonymously. Further, while Respondent’s website at one time hosted pay-per-click links, this is not sufficient to declare bad faith under Policy ¶ 4(b)(iv). Also, there exists no likelihood of confusion with Complainant specifically because 15 other entities have IMEC domain names, and there is no proof that people looking for Complainant inadvertently end up on Respondent’s website.
In bringing this action, Complainant has demonstrated reverse domain name hijacking.
C. Additional Submission—Complainant
Respondent has failed to provide appropriate allegations or evidence demonstrating rights or legitimate interests in <imec.com>. Google search results return zero pages for the following searches: “IMEC Hosting” “International Marketing and Engineering Co.”; “International Marketing and Engineering Company”’ and “IMEC Hosting” Minassian. A lack of search results is evidence of lack of rights or legitimate interests in <imec.com>.
Respondent has not provided evidence that its purported business to which the domain name relates is currently operating. None of Respondent’s exhibits show current use of <imec.com>.
Complainant has used the IMEC mark worldwide since 1984 and has common law rights in the mark. Exhibit AA shows an archive site, <imec.be>, from November 6, 1996, displaying the IMEC logo trademark. Further, marketing materials, such as scientific reports, prominently incorporate Complainant’s IMEC logo trademark prior to the October 29, 1996 registration of <imec.com>. The November 6, 1996 archive also shows Complainant had an annual budget of $52.5 million and revenue of $26 million in 1995. Starting in the 1990s, Complainant was active in developing software for semiconductor device simulation and for design of large integrated chips, which were transferred to industry by the end of the 1990s. Further, Complainant entered into high-profile contracts with U.S. companies.
Third-party use of “IMEC” is irrelevant as to whether Respondent has legitimate rights or interests in <imec.com>. Further, Respondent provides no proof of alleged noncommercial use. Click-through advertisements are commercial use.
Since Complainant has established common law rights in the IMEC mark which actually predate Respondent’s registration of the domain name, Respondent should be deemed to have constructive knowledge of the mark and Complainant’s rights in the mark.
D. Additional Submission- Respondent
Respondent’s customer declarations establish current use. Respondent actively uses <imec.com> to test and develop client websites, including those of the declarants.
Respondent’s rendering of design, monitoring, and hosting services to <armenianmatch.com>, as evidence by the use of <server.imec.com> and apache@service.imec.com continuously since 2007, is further proof of Respondent’s current bona fide offering of website and web application design and hosting services.
Respondent’s active and current use of <imec.com> to stage, test, and demonstrate customer websites and web applications in connection with its bona fide offering of website and web application design and hosting services establishes rights and legitimate interests in <imec.com> under 4(a)(iii).
Respondent’s business emails establish current use. Respondent’s use of @imec.com email addresses for its business establishes rights and legitimate interest under 4(c)(i) without any need to demonstrate that <imec.com> is otherwise active.
Respondent’s noncommercial or fair use of <imec.com> establishes rights and legitimate interests under 4(c)(iii),
Complainant has failed to provide meaningful, material evidence that Respondent registered or used the disputed domain name in bad faith as is required by the Policy.
Numerous panels have held that complainants do not have absolute rights in short domains comprised of common letters even if the complainant has established evidence of trademark rights in the underlying mark. The domain <imec.com> comprises a generic or common collection of four letters that is used as an acronym to identify many different organizations. Respondent has identified 16 other registered domains resolving to 15 different entities that include IMEC that are unrelated to Complainant or Respondent. Respondent identified four other U.S. trademark registrants of the mark IMEC in connection with goods and services unrelated to Complainant.
Respondent’s ad does not constitute bad faith registration and use.
Complainant only provides evidence of use of <imec.be> as of November 6, 1996, which does not pre-date Respondent’s October 26, 1996 registration.
Complainant’s offering attempting to establish secondary meaning for IMEC before Respondent’s domain registration date is insufficient to establish secondary meaning for the IMEC mark.
A finding of reverse domain name hijacking is warranted. Complainant knew, or should have known about the existence of Respondent’s website and its contents in 1997. Complainant knew <imec.com> was generic, yet brought this action.
The facts show that Complainant knew of Respondent’s domain registration since at least 2007. The almost 10 year delay in bringing this action alone is evidence that it did not truly believe that Respondent had registered the disputed domain name in bad faith.
FINDINGS
For the reasons set forth below, the Panel finds Complainant is not entitled to the requested relief of transfer of the <imec.com> domain name.
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 is an independent research and innovation hub in nano-electronics and microchip technologies. Complainant claims it has rights in the IMEC mark pursuant to its registration with the USPTO (Reg. No. 2,4560,655, filed Dec. 4, 1997, registered June 19, 2001). USPTO registrations confer rights in a mark. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office). Additionally, where a valid registration of a mark exists, the relevant date in construing rights is the filing date. See Adorama, Inc. v. Moniker Privacy Services, FA 1610020 (Forum May 1, 2015) (“Trademark protection extends back to the application filing date of a registered mark.”). Accordingly, this Panel finds rights in the IMEC mark for Complainant that date back to December 4, 1997.
Complainant argues that Respondent’s <imec.com> (registered by Respondent on October 29, 1996) is identical to the mark because “.com” is a nondistinguishing feature. “.com” is a generic top-level domain which has not been considered an alteration that would create distinction in a domain name. See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). The Panel finds the elements of the domain name here to be congruent with those in F.R. Burger & Associates, Inc. and therefore find <imec.com> is identical to the IMEC mark under Policy ¶ 4(a)(i).
While Respondent argues that its registration of <imec.com> predates Complainant’s alleged rights in the 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 AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).
Complainant has proved this element.
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. Entm’t Commentaries, FA 741828 (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); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel holds 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 urges that it has rights or legitimate interests in <imec.com>. Respondent claims it is commonly known by the domain name. Respondent’s name “IMEC” purportedly stands for “International Marketing and Engineering Company.” The word “Hosting” in Respondent’s name is descriptive of the services it offers to its clients, including website and web application hosting. Respondents have succeeded under Policy ¶ 4(c)(ii) where evidence is provided that they have engaged in business under that name continuously. See Kryton Mktg. Div., Inc. v. Patton Gen. Contracting, FA 123868 (Forum Oct. 21, 2002) (holding that the respondent had rights and legitimate interests in the disputed domain name as it had been commonly known by the domain name and has been using the name "liquid siding" in marketing its goods and services since the 1990s). Given the length of time Respondent has held the domain name, coupled with the arguments and evidence of engagement in web hosting and design services, the Panel agrees that Respondent has established that it is commonly known by the terms of the domain name under Policy ¶ 4(c)(ii).
After registering the domain name, Respondent began using <imec.com> to host webpages relevant to its bona fide offering of website and web application hosting and design services. Evidence of a bona fide business purpose in using a domain name establishes rights under Policy ¶ 4(c)(i). See generally 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 has shown it used its website to host customer content. Respondent also alleges it has been using <imec.com> for email since its inception: hm@imec.com; support@imec.com; sales@imec.com; webmaster@imec.com; hm_home@imec.com, webadmin@imec.com, webadmin@server.imec.com, and hminassi@imec.com. Respondent therefore asserts it has met the threshold for common law rights to the IMEC mark that predate Complainant’s June 19, 2001 registration (filed Dec. 4, 1997). See generally Gourmet Depot v. DI S.A., FA 1378760 (Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”). However, the Panel notes that the threshold of common law rights is unnecessary for a respondent, as a respondent need only rebut a complainant’s prima facie case.
Respondent contends it is currently engaging in legitimate noncommercial or fair use because it uses subpages at <imec.com> to store personal and other non-business related files and folders under a secure, password-protected system. Personal use can be evidence of rights and legitimate interests under Policy ¶ 4(c)(iii). See RMO, Inc. v. Burbidge, FA 96949 (Forum May 16, 2001) (“A family information site is a legitimate non-commercial use.”). Accordingly, the Panel agrees that Respondent has adequately pled its rights and legitimate interests in or to the disputed domain name under Policy ¶ 4(a)(ii).
Complainant has not proved this element.
Since the Panel has concluded that Respondent has rights or legitimate interests in <imec.com> pursuant to Policy ¶ 4(a)(ii), the Panel also finds that Respondent did not register or use <imec.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.”).
Respondent argues that Complainant fails to provide any significant evidence that its use of IMEC has caused the mark to acquire secondary meaning prior to Oct. 29, 1996. Where a complainant has not established rights which predate a disputed domain name’s registration, there can exist no bad faith registration. See Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith where the respondent registered the domain name in question before application and commencement of use of the trademark by the complainant); see also Greyson Int’l, Inc. v. Loncar, D2003-0805 (WIPO Dec. 3, 2003) (“Paragraph 4(a)(iii) is conjunctive [requiring that] both registration and use in bad faith must be proven. Numerous panels have applied this language strictly, to deny complaints [where the complainant fails to prove both].”). The Panel agrees that Complainant’s evidence of rights in the IMEC mark prior to October 26, 1996 is scant and therefore it would have been a virtual impossibility for Respondent to target Complainant and trade off any goodwill associated with the mark at the time of registration.
Respondent argues under Policy ¶ 4(b)(i) that it clearly did not target Complainant in offering to sell the domain to it for a large sum of money because all offers submitted by Complainant were done so anonymously. Panels look to the facts and circumstances of each individual case in determining bad faith. See Id Software, Inc. v. Doom Gaming Connections, FA 95002 (Forum July 24, 2000) (finding that the respondent, registrant of <doom.com>, did not register or use the domain name in bad faith by placing the domain name for sale on the eBay auction website since there was no evidence of any attempt to sell during the first five years of ownership, so there could be no inference that the respondent acquired the name for the purpose of resale to the complainant or a competitor); see also Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Forum Feb. 21, 2002) (finding that “when a Complainant indicates a willingness to engage in a market transaction for the name, it does not violate the policy for a [the respondent] to offer to sell for a market price, rather than out-of-pocket expenses”). Here, this case involves a 4-letter domain name, which is inherently valuable—as seen by Complainant’s willingness to pay $50,000 for it. The Panel agrees that the parties were engaged in legitimate negotiations for purchase of the domain name and have differing opinions over the market value—which cannot amount to bad faith under Policy ¶ 4(b)(i).
Further, while Respondent’s website at one time hosted pay-per-click links, Respondent asserts this is not sufficient to declare bad faith under Policy ¶ 4(b)(iv). Also, there exists no likelihood of confusion with Complainant specifically because 15 other entities have IMEC domain names, and there is no proof that people looking for Complainant inadvertently end up on Respondent’s website. Panels have agreed that mere pay-per-click links do not amount to bad faith under Policy ¶ 4(b)(iv). See Tomsten Inc. v. Registrant [7281], FA 925448 (Forum Apr. 20, 2007) (finding the respondent’s parking of <archivers.com> domain name to advertise goods and services chosen from “the broadest generic meaning of the word ‘archivers’ rather than choosing goods and services offered by [the] complainant” thus the panel was unable to draw the conclusion that the respondent had shown any intention of diverting Internet traffic from the complainant to the firms promoted by the advertisements and links). The Panel agrees that Respondent did not target Complainant, and that Respondent has sufficiently pled legitimate use of the domain name, overcoming any notion of bad faith registration and use.
Complainant has not proved this element.
Doctrine of Laches
Since the Panel has found for Respondent on other grounds, there is no need to consider whether laches applies.
Reverse Domain Name Hijacking
Although the Panel has found Complainant has failed to satisfy its burden under the Policy, this does not necessarily require a finding of reverse domain name hijacking on behalf of Complainant in bringing the instant claim. See ECG European City Guide v. Woodell, FA 183897 (Forum Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.”); see also Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001) (noting that a finding of reverse domain name hijacking requires bad faith on the complainant’s part, which was not proven because the complainant did not know and should not have known that one of the three elements in Policy ¶ 4(a) was absent).
The Panel finds that reverse domain name hijacking has not been proved.
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 <imec.com> domain name REMAIN WITH Respondent.
__________________________________________________________________
Hon. Karl V. Fink (Ret). (Chair); Paul M. DeCicco and G. Gervaise Davis, III as Panelists.
Hon. Karl V. Fink (Ret.) for the Panel
Dated: March 29, 2017
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