National Arbitration Forum




Atlanta Network Technologies, Inc. v. ANT.COM LIMITED


Claim Number: FA0903001253155



Complainant is Atlanta Network Technologies, Inc. (“Complainant”), represented by William D. Schultz, of Merchant & Gould P.C., Minnesota, USA.  Respondent is ANT.COM LIMITED (“Respondent”), represented by John Berryhill Pennsylvania, USA.



The domain name at issue is <>, which is registered with eNom, Inc. (“eNom”).



The undersigned, David H Tatham, Daniel B Banks, Jr. and Robert T Pfeuffer certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.



Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on March 19, 2009; the Forum received a hard copy of the Complaint on March 20, 2009.


On March 19, 2009, eNom confirmed by e-mail to the Forum that the <> domain name (“the disputed domain name”) was registered with it and that the Respondent is the current registrant of the name. eNom has verified that Respondent is bound by the its registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).


On March 31, 2009, a Notification of Complaint and Commencement of Administrative Proceeding setting a deadline of April 20, 2009 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 by e-mail.


A timely Response was received and determined to be complete on April 20, 2009.


On April 28, 2009 pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed David H Tatham, Daniel B Banks and Robert T Pfeuffer as Panelists.



Complainant requests that the domain name be transferred from Respondent to Complainant.



A. Complainant


Complainant provided copies of two U.S. trademark registrations ANT No. 3,381,449 and ANTONLINE No. 3,381,447 both of which were filed on June 20, 2007, and registered on February 12, 2008 claiming first use from February 25, 1997 for a wide variety of online retail store services in Class 35.


Complainant claims to be a well-known online retailer of electronics, computer products, video games, DVDs music and home and garden products since at least as early as 1996, with customers in the United States and in other countries around the world, and to have invested a significant amount of money promoting these products, all sold in connection with its trademark ANT. It contends that, as a result of its extensive use and promotion of that mark, consumers throughout the United States and world are aware of it, that it is recognized and relied upon as identifying Complainant as the sole source of online services, and as distinguishing its products and services from those of others so that, as a result, its trademarks ANT and ANTONLINE have acquired substantial goodwill and are an extremely valuable commercial asset. 


Complainant operates a website at <> where it claims to have marketed all of its above mentioned products since at least as early as 1996, and where it also offers a broader online search mechanism via the “Google” search engine.


Complainant contends that Respondent registered the disputed domain name <> on June 4, 1998, which is after it began using its trademarks. Complainant further contends that in or about 1999 Respondent’s domain name was associated with the Antagonist games network and Heckler’s Online, Inc.; that from about 2001 to 2002 Respondent changed the website several times each of which change dealt with video games; that in 2004 Respondent disassociated the website with video games (which, Complainant contends, infringed its trademarks for the sale of video games), and associated the website with a links directory, not only holding the domain name out for sale on <> but also including links on the website which related directly to the products which Complainant sold on its own website. Complainant contends that this use continued until approximately April 2006, when Respondent removed all content. Later in 2006 the website indicated that was “coming soon,”


Complainant states that, based on its trademark rights in ANT, it approached Respondent and demanded that the domain name be transferred. Complainant contends that during a telephone conversation with Complainant’s President, Mr. Charles Comerford, Respondent made the following statements:

·        Respondent admitted that the domain name was being held unused

·        Respondent admitted that he had thousands of other domain names

·        Respondent admitted that the domain name was being held to sell for millions of dollars

·        Respondent admitted that the website was “worthless,” but that he was looking for the “jackpot” if he could hook a “big fish”


Recognizing that Respondent spoke French, Mr. Comerford requested that Arnaud Choplin, one of Complainant’s computer programmers who speaks French, contact Respondent. Mr. Choplin did so and claims to have learned that the disputed domain name was being held and would be sold for million plus dollars.


Declarations to this effect from Messrs. Comerford and Choplin were annexed to the Complaint.  


After this, Complainant contends that Respondent changed the contents of the website to its current form, which is that of a search engine associated with, a  pay-per-click company which offers affiliates money for advertisements placed on its website. Complainant contends that this web search functionality directly overlaps with its own search engine technology.


Complainant contends that, on March 19, 2009 when it filed its initial Complaint, Respondent’s contact information set forth in the WHOIS was “Whois Agent, C/O” but that subsequent to this, the contact information was changed to ANT.COM LIMITED. 


Confusingly Similar.

Under this Heading, Complainant contends –

·        That the disputed domain name is identical and confusingly similar to its trademarks ANT and ANTONLINE and that the addition of .com to a mark is not a distinguishing feature. Consequently ANT.COM = ANT. 

·        That  consumers are likely to be confused that the current website located at the disputed domain name is sponsored by, affiliated with, or in some other way connected to itself.

·        That it has used a search engine in connection with its offerings of products since at least as early as 1996, which is well prior to Respondent’s first use of a search engine, and because consumers are able to search for the same products and services on both its and Respondent’s websites and retrieve similar results , confusion is likely.

·        That Respondent has changed the content of its website several times and that this shows the likelihood that Respondent disregards Complainant’s trademark rights, and that Respondent’s previous sites infringed its trademark rights based on the association with video games.

·        That it is natural for consumers to assume that the website located at the disputed domain name is associated, affiliated, or in some other way connected with Complainant because that site offers the same products via search and that Respondent’s use of links that are directly related to its products will increase the likelihood of confusion. 


            Rights or Legitimate Interest.

Under this Heading, Complainant contends –

·        That Respondent is not using the disputed domain name for a legitimate noncommercial or fair use because the name is commercially used to offer advertising and links to third party websites. 

·        That the registration of a domain name for the purpose of passively holding it for sale, and redirecting Internet users interested in another’s products, is not a bona fide offering of goods pursuant to paragraph 4(c)(i) of the Policy, or a legitimate noncommercial or fair use under paragraph 4(c)(iii) of the Policy.

·        That Respondent’s use of the disputed domain name after it had been contacted by Complainant, is not bona fide in that the intent was to cause unsuspecting consumers to click on Respondent’s pay-per-click links.

·        That Respondent has no bona fide interest in the disputed domain name pursuant to paragraph 4(c)(i) of the Policy in that prior to Complainant’s communication with Respondent, Respondent had no intent to use the domain name.  After the communication, Respondent directed the website to a pay-per-click search engine that was designed to divert traffic away from Complainant and which has been used by others to create confusion.   

·        That Respondent has received neither permission nor a licence to use Complainant’s trademark pursuant to paragraph 4(c)(ii) of the Policy.

·        That Respondent is not using the mark for legitimate noncommercial or fair use pursuant to paragraph 4(c)(iii) of the Policy because Respondent has used the domain name to (1) infringe on Complainant’s trademark rights, (2) as a placeholder site, and (3) a site for commercial advertising.

·        That Respondent’s admission that the sole purpose in maintaining the domain name was to hit the jackpot and sell the domain name for over a million dollars is not a legitimate interest.

·        That Respondent’s association with shows that the website at the disputed domain name is nothing more than a pay-per-click magnet and Complainant refers to the Decision in Google Inc. v. Jon G, FA0203000106084 (NAF April 26, 2002) as proof thereof.

·        That Respondent knew of Complainant and tried to capitalize on its offerings by placing pay-per-click advertising in connection with the search results.  The domain name is not connected to a bona fide offering of goods or services and is not a legitimate use.

·        That the respondent’s willingness to sell the disputed domain name for more than its out-of-pocket costs provides additional evidence that Respondent had no rights or legitimate interests in the contested domain name).

·        That Respondent is not commonly known by the mark and has not received permission from Complainant to use the mark.

·        That Respondent’s purpose in registering and using the domain name is to divert Complainant’s web traffic to a search engine that contains advertisements that forward to Complainants competitors. 

·        That Respondent’s use of the trademark ANT in the domain name misappropriates Complainant’s goodwill and cheats consumers into conducting searches on Respondent’s website when they think they will see information regarding Complainant and the products associated with it. 


            Bad Faith

Under this Heading, Complainant contends that the following actions by Respondent demonstrate its bad faith –

·        That Respondent’s registration of a domain name in association with the trademarks ANT and ANTONLINE shows the registration was in bad faith. 

·        That Respondent’s offer to sell the domain name for over $1,000,000.00 and admission that it traffics in domain names with the intention of hitting a jackpot shows bad faith pursuant to paragraph 4(b)(i) of the Policy. 

·        That Respondent’s registration of multiple domain names and use of the <> domain name in connection with products similar to those of Complainant with the constructive knowledge of Complainant’s trademark rights in that name shows bad faith pursuant to paragraph 4(b)(ii) of the Policy.

·        That Respondent’s passive holding of the domain name for a period of time and subsequent website that contains advertisements for Complainant’s competitors shows Respondent’s bad faith pursuant to paragraph 4(b)(iii) of the Policy. 

·        That Respondent’s intentional attempt to attract Internet users to its website by using a name that is confusingly similar to Complainant’s trademarks ANT and ANTLINE is also in violation of paragraph 4(b)(iv) of the Policy.

·        That offering a domain name for sale for an excessive value is evidence of bad faith. 

·        That Respondent has acted in bad faith by diverting customers to Complainant’s competitors.

·        That Respondent has acted in bad faith by intentionally attempting to attract internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s trademarks ANT and ANTONLINE.

·        That bad faith is shown because Respondent, after communicating with ANT, placed content on the website that created a likelihood of confusion.  After speaking with Complainant, Respondent associated the site at the disputed domain name with a search engine.  The search engine contained content delivered from 

·        That Respondent’s willingness to place content on its website that infringes on Complainant’s trademark rights shows its bad faith. 





B. Respondent


Respondent states that is a software development company which uses the disputed domain name for its corporate identity, and to provide distribution and service to the hundreds of thousands of installations of its Toolbar. This is a software product and it is downloaded from for installation into the Firefox browser some 39,900 times per week, with an accumulated number of downloads from that one site over 1,165,000 times as of the submission of the Response.


Respondent also states that Complainant should have known that the disputed domain name was publicly sold for a price of US$241,200 prior to its acquisition by Respondent, who has used the domain name for distributing its product and who has had no intention of, or conversations about, selling it.


Respondent further notes that Complainant apparently believes that it acquired the disputed domain name in 1998, but in fact Respondent acquired the name privately in October 2006 after the above mentioned highly publicized sale.


Identical or Confusing Similar

Under this Heading, Respondent notes that Complainant has two United States federal registrations for ANT and for ANTONLINE both of which issued in February 2008 in connection with online retail store services. However the above mentioned sale of the domain name actually preceded Complainant’s filing of its trademark applications.


Respondent notes that Complainant claims in its Complaint that it initially marketed its products online at the website and did so at least as early as 1996. However attached to the Response were: a WHOIS historical record from 2001, showing that the Complainant had not registered the domain name <> until 1997, as well as an extract from the record of the Georgia Secretary of State showing that the Complainant was only formed on February 25, 1997. Respondent therefore queries how Complainant could apparently have been using, in 1996, a domain name which was not registered until 1997, and when it itself did not exist until1997.


Respondent further notes that the history of the record of use of Complainant’s domain name <> has been blocked using a robots.txt file, thus rendering it impossible to confirm any of the Complainant’s claims about such use. Respondent contends that  this technique of hiding historical use of a domain name is a tactic normally used by cybersquatters in UDRP proceedings, and is a practice which has been held, in proceedings under the Policy, to be evidence of bad faith.


Respondent notes that Complainant claims to have been attempting to acquire the domain name since 2006, and suggests that, since it was apparently unable to obtain the domain name at that time, Complainant then proceeded to obtain registration of the trademark ANT in the United States in 2008. However Respondent contends that Complainant has shown no actual use of this name as a mark, apart from a representation of ANTONLINE in connection with its claimed “online retail store services.


Respondent therefore concludes that, under the first criterion of the Policy, Complainant has merely shown its ownership of a United States trademark registration, without any evidence of underlying use of the mark, and in connection with several demonstrably false statements.


Legitimate Rights or Interests

Under this Heading, Respondent states that it is in fact a corporation which was registered in Hong Kong in April 2008. This, it contends, was just prior to when it acquired the disputed domain name, by which it is commonly known.  Furthermore, it is not engaged in online retail store services. 


In addition, Respondent points out that, the word ANT is a common word, which is used concurrently as a business name or trademark by many other non-infringing and non-competing businesses. Annexed to the Response was a copy of a Google search for the term “ANT” which had more than 97 million results, among which Complainant does not appear among the first 100, but which rates Respondent highly and which, at No. 86, contains a reference to Respondent’s “ Toolbar”. Also annexed to the Response was a copy of 116 live or pending U.S. trademarks which include the word ANT, of which 4 are for the word ANT alone. Respondent therefore concludes that the term "ANT" is a common term which is not exclusively associated with Complainant, but which is used by a variety of parties, including Respondent, for purposes having nothing to do with the Complainant's alleged online retail store services.


Respondent states that it is the developer and distributor of the Toolbar. This has been distributed since prior to notification of the present dispute and is a “plug in” for Internet Explorer and Firefox browsers that allows users to download certain types of video files from the Internet, so that such video files may be stored, manipulated or viewed offline It also has other useful features. According to Respondent, its software has been downloaded more than a million times for Internet Explorer, and an annex to the Response contains evidence that its plug-in for Firefox has been downloaded 1,170,719 times, at a rate of 39,843 downloads per week. The same Exhibit shows that Respondent’s software product is rated 4 out of 5 stars by 74 posted reviews at <> the earliest of which is dated July 17, 2008.


Respondent contends that these reviews and other information about Respondent at various third-party sites demonstrate that Respondent has been legitimately using the domain name, and is commonly known as "ANT.COM".


In another annex to the Response, Respondent’s site is currently shown to be approximately the 11,313th highest ranked site on the internet, and the comparative traffic statistics show that Respondent’s site has climbed from about the 5000th most popular site to its present rank, while the Complainant’s site has only ranked from 40,000th to 50,000th during the same period. Respondent therefore concludes that it is better known for the Toolbar than is the Complainant for its online retail services.


Respondent sums up its position by saying that because, prior to notification of the dispute, it had developed and then launched a highly successful browser plug-in software product; because it has been engaged in bona fide use of the domain name prior to notice of the dispute; because its product has been approved for distribution by the Mozilla Foundation and has garnered significant favorable reviews and recommendations; because it is commonly known as; because it is not engaged in the conduct of online retail store services; and because it in fact does not sell a single item to consumers whatsoever, Complainant has failed to show that it lacks legitimate rights or interests in the disputed domain name.


Bad Faith

Under this heading, Respondent commences by setting out the history of the ownership of the disputed domain name. It contends that, as of October 3, 2006, the domain name was registered to a Mr. Murat Yikilmaz of Turkey but that in that year and other news outlets publically reported that <> had been sold on October 24, 2006 for US $241,000 to a Mr. Stephen Pacaud. Shortly thereafter, Mr. Pacaud entered into discussions with software developers interested in producing the toolbar, although without initially having a name for the product. Development and internal testing of the product proceeded for several months in parallel with arrangements to acquire the domain name from Mr. Pacaud.


Prior to the launch of the toolbar product, Ltd. was formed on April 7, 2008, and the domain name was transferred by Mr. Pacaud to Ltd. in a private transaction by July 3, 2008.


However, in the Complaint, Complainant has, according to Respondent, used records from to document how the disputed domain name was used by entirely unrelated parties for several years prior to the Respondent’s acquisition of domain name. Respondent asserts that what matters in the UDRP is the date when a disputed domain name is actually registered by the Respondent, why it registered the name, and what use it may have made of the name, not the activities of prior registrants and users of the domain name. Respondent contends that the activities of Mr. Yikilmaz, from whom the name was purchased for nearly a quarter million dollars, and the activities of other prior registrants before Respondent, are not relevant to the Respondent’s registration and use of the domain name and it quotes the case of The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services [23658] D2007-1438 (WIPO December 18, 2007) in support thereof.


Accordingly, Respondent contends, the only relevant party under the third criterion of the Policy for the purpose of determining bad faith registration and use is the Respondent – Ltd. – and not prior registrants of the domain name whose activities are not related to those of Respondent who is using the domain name to provide its search and video download toolbar software.


Referring to Complainant’s allegations that there was an offer to sell the disputed domain name, during a conversation which Mr. Choplin claims to have had on March 20, 2007 with Mr. Pecaud, Respondent points out that the Respondent in this Proceeding is Ltd., a Hong Kong corporation that was formed in 2008, and to which Mr. Pacaud transferred the domain name in 2008. Thus, Mr. Choplin’s statement that “Respondent was holding the domain name out for sale” must be wrong as Respondent did not exist when Mr. Choplin claims he made his telephone call in 2007. Furthermore, Respondent contends that it could not have been possible for Mr. Choplin to have spoken to Mr. Pecaud in France on March 20, 2007 since Mr. Pecaud was travelling at that time and had arrived in JFK airport in New York on March 19, 2007 as was demonstrated by copies of extracts from Mr. Pecaud’s passport which were annexed to the Response. In fact, Respondent alleges that at that time, Mr. Pacaud was engaged in confidential discussions with Respondent's developers relating to the development of Respondent’s software product, and he most certainly would not have told Mr. Choplin of such discussions. Respondent speculates that whoever answered Mr. Pecaud’s telephone may have said something flippant for the purpose of deterring an open-ended anonymous inquiry about an asset which had been recently purchased for nearly a quarter million dollars. Respondent asserts that neither it nor Mr. Pecaud have any knowledge of the conversation claimed to have been held by Mr. Choplin while Mr. Pecaud was travelling outside France.


Respondent believes that, by undertaking a little basic research, Complainant would have discovered in early 2007 that the domain name had recently been sold for $241,200. Respondent also notes that two months later, in June 2007, Complainant, who had never before claimed a trade or service mark right in ANT, filed a pair of trademark applications with the USPTO, and then brought this Proceeding after issuance thereof. Respondent therefore suggests that Complainant could have been aware of the sale of the domain name in late 2006, and was prompted to file its trademark applications for the precise purpose of attempting to make out a claim in this Proceeding.


The facts are that Respondent has obtained a valuable domain name, consisting of a rare three letter word, which it has used since such its acquisition for its popular Toolbar product. This has nothing to do with the Complainant's U.S. trademark claims in connection with its online retail store services.


Respondent states that its principals have been conducting research and development in the internet browser and search engine field since 2005. The name “Ant” was selected for the project, because the Respondent’s principals had conceived of creating a search and download utility in which a large quantity of users provide the necessary data to establish a search base. Because this “collective action” approach differs from the typical Google/Yahoo 'spider' method, Respondent’s principals believed that “ant” would be an appropriate name for their product since, unlike spiders, ants are insects which operate collectively. User behavior data collected by the software is utilized to generate “AntRank” website statistics, which may be viewed at Respondent’s site.


Respondent, having an intention to develop a browser plug-in product, and desiring to name it “Ant,” had every right to negotiate the transfer of the domain name from Mr. Pacaud in a private transaction, just as Complainant apparently sought to do. The only difference is that the Respondent was successful. When the project was ripe, and arrangements had been made for using the domain name, Respondent's principals founded Ltd. the product was launched within days of the final transfer of the domain and since obtaining the domain name, Respondent has continued to develop its software and has used the domain name for the purpose of distributing this software.


Respondent states that it does not understand Complainant’s allegations concerning its offering of an internet search function, or how such an offering demonstrates bad faith. Respondent contends that Complainant has only recently added a search box to the bottom of its web page which reads: “Can't find it on ANTOnline™? Search the web with ANT™ Search:” followed by an internet search box. An archived copy of the Complainant’s page from February 2008, which was annexed to the Response, contained no such search box so Respondent alleges that what Complainant has done is to copy the text from its own home page, “Search the Web with”, place a similar search box on its on site, and then brought this Proceeding claiming that the Respondent is “competing” with Complainant.  Respondent acquired the domain name in order to provide its search and video download toolbar software products and services. The mere fact that one can use a search engine to find consumer products on the internet does not mean that Respondent is providing “online retail store services” even if Respondent operated in the United States. Respondent contends that, like the filing of its two US trademark registration applications after being unsuccessful in obtaining the domain name, the appearance of an internet search bar on Complainant’s website is a recent invention and includes text copied from Respondent’s site, all for the purpose of making a false allegation in this Proceeding.


Respondent concludes that the term “ANT” is subject to concurrent use by numerous and mutually non-infringing entities for a variety of purposes, and Respondent is one of them. Even if one were to inappropriately apply a duty of notice of US trademark registrations to Respondent, the registration and use of the domain name by the Respondent has not been for online retail store services, and hence Respondent’s registration and use of the domain name would remain perfectly lawful. Complainant has failed to show bad faith registration and use by Respondent.



1.      Complainant was formed in 2007 since when it has traded as an online retailer of electronics, computer products, video games, DVDs music and home and garden products from a website situated at <>. It has two U.S. trademark registrations for ANT and ANTONLINE which were registered in February 2008 claiming first use from February 2007.

2.      Respondent was formed in Hong Kong in April 2008 and acquired the disputed domain name <> July 2008 which was only a few months after the name had been sold to a third party for nearly a quarter of a million US dollars. It has created what it has called the toolbar which is a plug-in software product which allows users to download various types of video files from the internet. This appears to be popular inasmuch as this had, by April 2009, already been downloaded over 1.1 million times with nearly 40,000 downloads per week.

3.      The Panel finds that the trademark ANT and the domain name <> are identical.

4.      The Panel finds that Complainant has not made out a prima facie case, so the Complaint fails.

5.      The Panel has declined to find that Complainant has indulged in reverse domain name hijacking.   



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.


Identical and/or Confusingly Similar

Complainant has proved that it has registrations with the USPTO of its trademark ANT and ANTONLINE and it was found, for example, in AOL LLC v. Interrante, FA 681239 (NAF May 23, 2006) that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).; also, in Hershey Co. v. Reaves, FA 967818 (NAF June 8, 2007) it was found that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”.


There can be no doubt that the disputed domain name <> is identical to Complainant’s trademark ANT, applying the long-standing convention that, when comparing a trademark with a domain name, any gTLD – such as .com – can be disregarded. It was found, for example, in SCOLA v. Wick, FA 1115109 (NAF February 1, 2008) that “the domain name at issue is identical to [the] complainant’s SCOLA mark, as the only alteration to the mark is the addition of the generic top-level domain “.com.; also, in Abt Electronics., Inc. v. Gregory Ricks, FA 904239 (NAF March 27, 2007) it was said that “The Panel also finds that Respondent’s <> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis..


There is no similarity between the disputed domain name and Complainant’s trademark ANTONLINE.


Respondent argues that its domain name is comprised of a common, descriptive term and as such cannot be found to be identical to Complainant’s mark. However this is not relevant as paragraph 4(a)(i) of the Policy is concerned only with whether Complainant has rights in a trademark and whether the disputed domain name is identical or confusingly similar to it. See, for example, Vance International, Inc. v. Abend, FA 970871 (NAF June 7, 2007) in which it was found that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under paragraph 4(a)(i)); and David Hall Rare Coins v. Texas Inernational Property Associates, FA 915206 (NAF April 9, 2007) in which it was said that “Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law”.


Respondent also argues that Complainant has not established common law rights in the ANT mark and indeed it is true that only the bare minimum of user evidence was submitted. However, since Complainant has a trademark registration of ANT, whether or not it has used it and so established common law rights in it is also not an issue.


Furthermore, Complainant did state, in its Complaint, that it first used the trademark ANT in 1996. Respondent pours scorn on this claim, pointing out that Complainant did not register its principal domain name until early in 1997 and that Complainant itself was not created in Georgia until then. The Panel agrees and holds that Complainant’s claim regarding its alleged use in 1996 was clearly a mistake. However both of Complainant’s two trademark registrations claim February 25, 1997 as their date of first use and, knowing the USPTO’s propensity for not accepting such claims absent proof thereof, the Panel is prepared to accept this date as the date when the trademark ANT was first used by Complainant.


Having held that the earlier trademark and the disputed domain name are identical, the Panel finds that paragraph 4(a)(i) is proved.


Rights or Legitimate Interests and Bad Faith

Under paragraph 4(a)(ii) it is always necessary, first, for any Complainant to make out a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden will shift to a Respondent to show it does have rights or legitimate interests. For example, it was held in Hanna-Barbera Products, Inc. v. Entertainment Commentaries, FA 741828 (NAF August 18, 2006) 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.


In these proceedings, there is a strong argument for saying that Complainant has not made out a prima facie case.


Complainant contends that Respondent has held the disputed domain name since its original registration on June 4, 1998 and has simply been changing the ownership and the WHOIS information in an attempt to evade transferring the disputed domain name. However this is strongly denied by Respondent, and the Panel prefers the latter’s version of the events by which it acquired the domain name and the subsequent use it made of it. 


For example, Respondent alleges that, since it did not exist until April 7, 2008 and, since it did not itself acquire the disputed domain name – quite legitimately – until July 3, 2008, then whatever use was made of the disputed domain name before that date has nothing to do with it and should not be taken into account. Whilst this is strictly relevant to a finding of bad faith, it is also a factor in deciding the question of legitimate rights and interest because all of Complainant’s accusation regarding this aspect appear to have occurred before the domain name was acquired by Respondent.


In the “WIPO Overview of WIPO Panel Views on Selected UDRP Questions” published in 2005 it is stated, in paragraph 3.7, that the consensus view is that while the renewal of a domain name does not amount to a new registration, “the transfer of a domain name to a third party does amount to a new registration”.


Respondent refers to the case of The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services [23658] D2007-1438 (WIPO December 18, 2007) in which it was held that Respondent could not have registered the domain name before Respondent existed, and that the general rule established by panels is that a subsequent acquirer of a domain name is held to have “registered” that domain name for purposes of the Policy as of the date of acquisition of the registration rights.


Also, in BWR Resources Ltd. v. Waitomo Assoc. Ltd., D2000-0861 (WIPO October 4, 2000) it was found that registration refers to the date when the respondent acquired the name from the person who first registered it.


Finally, in The Association of Junior Leagues International Inc. v. This Domain Name My Be For Sa c/o Legend .name, FA 857581 (NAF January 4, 2007) reference was made to the case of Christensen Firm v. Chameleon Data Corp., 2006 WL 3158246 (W.D. Wash. 2006). This was an Anti-Cybersquatting Protection Act (“ACPA”) case, and the court held that under the ACPA, each act of transfer was a new “registration” for the purposes of ACPA analysis. The UDRP Decision continued “[O]ne only needs to trace the registration date back to the most recent transfer instead of the original registration”.


On that basis, the Panel finds that Complainant has failed to meet its prima facie burden because Complainant has failed to establish that Respondent, rather than Respondent’s predecessors in interest, lacked rights and legitimate interests in the domain name under paragraph 4(a)(ii) of the Policy or acted in bad faith under paragraph 4(a)(iii).


Reverse Domain Name Hijacking

Although not actually using the term ‘reverse domain name hijacking’, Respondent comes close to accusing Complainant of it. For example, Respondent alleges that Complainant is harassing it and abusing the Policy in its attempt to gain transfer of the disputed domain name. Respondent asserts that Complainant has admitted that it has been attempting to acquire the <> domain name since 2006 but, after a year of being frustrated in its legitimate attempts, having never before claimed rights in its ANT trademark, Complainant filed an application for it at the USPTO. Respondent further asserts that Complainant, who had been trying to acquire the domain name, must have known about the sale of <> domain name for $241,200 in late 2006 and kept the information out of its Complaint.  Respondent also alleges that Complainant must be aware of its rights and legitimate interests in the <> domain name because Complainant has had one of Respondent’s “” toolbars on its own website since February 2008. 


In Labrada Bodybuilding Nutrition, Inc. v. Glisson, FA 250232 (NAF May 28, 2004) it was found that complainant engaged in reverse domain name hijacking where it used “the Policy as a tool to simply wrest the disputed domain name in spite of its knowledge that the Complainant was not entitled to that name and hence had no colorable claim under the Policy”. It was also found, in Curb King Borderline Edging Inc. v. Edgetec Int’l Pty., FA 105892 (NAF May 10, 2002) that, when a complainant is aware of facts that bear a direct relation to the dispute and fails to include them in its complaint, the complainant’s omission constitutes an abuse of the administrative proceeding, warranting a finding of reverse domain name hijacking.


On the other hand ‘reverse domain name hijacking’ is described in the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.and the Panel finds no actual evidence of this in Complainant’s behaviour. Respondent’s assertions are just that, and there is no proof thereof. The Panel therefore declines to find reverse domain name hijacking on the part of Complainant in these proceedings.  



The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another, LP v. Bill Zag and NWLAWS.ORG D2004-0230 (June 2, 2004). There is no evidence that this has occurred in this case and so, having succeeded in establishing only one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.








Mr. David H Tatham



Judge Daniel B Banks   and Judge Robert T Pfeuffer


Dated:  May 11, 2009






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