AINS, INC. v. Name Administration Inc. (BVI)
Claim Number: FA1111001413667
Complainant is AINS, INC. (“Complainant”), represented by Janice W. Housey of Symbus Law Group, LLC, Virginia, USA. Respondent is Name Administration Inc. (BVI) (“Respondent”), represented by John Berryhill, Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ecase.com> (“the Domain Name”), registered with IRegistry Corp.
The undersigned 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.
Hon. Daniel B. Banks, Dr. Roberto Bianchi and Alan L. Limbury as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 1, 2011; the National Arbitration Forum received payment on November 1, 2011.
On November 1, 2011, IRegistry Corp. confirmed by e-mail to the National Arbitration Forum that the <ecase.com> domain name is registered with IRegistry Corp. and that Respondent is the current registrant of the name. IRegistry Corp. has verified that Respondent is bound by the IRegistry Corp. 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 4, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 25, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to email@example.com. Also on November 4, 2011, 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 on November 8, 2011.
On November 23, 2011, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Hon. Daniel B. Banks, Dr. Roberto Bianchi and Alan L. Limbury as Panelists.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
Complainant says the Domain Name is identical to its United States registered trademark eCASE, No. 3,720,219, in which Complainant also claims common law rights, in respect of computer software for workflow and case management. Complainant also owns numerous domain names incorporating the word “ecase”. Respondent has no rights or legitimate interests in the Domain Name, which was renewed and is being used in bad faith.
Complainant says Respondent has registered the Domain Name intending to either: (1) profit from the sale of the Domain Name by selling it to Complainant; (2) profit from the sale of the Domain Name by selling it to a competitor of Complainant so that the competitor could divert sales; (3) develop its own web site(s) using Complainant’s trademark, with the intent to divert customers away from Complainant, cause confusion in the marketplace, or otherwise trade on the goodwill and name of Complainant; and/or (4) prevent Complainant from registering the Domain Name for its own use in its business.
To Complainant’s knowledge, Respondent has never used the Domain Name in the bona fide offering of goods or services, has never been known by the Domain Name and has never made any legitimate noncommercial or fair use of it and clearly is not doing so currently. See Annex D. The Forum has repeatedly held that passive holding of a domain name is not legitimate use. See TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's passive holding of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”); see also Am. Online, Inc. v. Kloszewski, FA 204148 (Nat. Arb. Forum Dec. 4, 2003) (“Respondent's passive holding of the <aolfact.com> domain name for over six months is evidence that Respondent lacks rights and legitimate interests in the domain name.”).
Respondent regularly renewed the Domain Name knowing that it is not the lawful owner of the trademark upon which the Domain Name is based. There is no evidence that Respondent registered the Domain Name for any bona fide reason.
Even if the Respondent did not possess any bad faith intent at the time the Domain Name was first registered, every time Respondent renewed the registration, the same constituted a bad faith registration. See RapidShare AG v. Fantastic Inv. Ltd., FA 1338403 (Nat. Arb. Forum Oct. 8, 2010) (finding that “bad faith” can include renewal of a domain name after the issuance of the mark); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. 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).”).
In the instant matter, the only possible conclusion is that Respondent registered (including renewal registrations), and is using and holding the Domain Name, for some bad faith reason(s) (e.g., to improperly secure contact information/lead information for customers looking for Complainant).
In sum, Respondent is not using the Domain Name in connection with a bona fide offering of goods, or a legitimate noncommercial or fair use, and has not done so. Thus, it appears clear that Respondent is attempting to use the Domain Name to profit from its bad faith intentions.
In light of the above, Respondent's conduct clearly establishes that Respondent registered and used the Domain Name in bad faith, contrary to ICANN regulations. Each renewal was a bad faith registration and the lack of any intention to use the Domain Name legitimately is clear evidence of the bad faith use of the Domain Name.
Respondent says Complainant has demonstrated that it owns a number of unused domain names registered a few days ago and that it owns a US trademark registration certificate of recent vintage for which it applied on an intent-to-use basis some years after Respondent’s registration in March, 2002 of the Domain Name, and which Complainant did not commence to use until 2009.
The term “ecase” is widely and non-distinctively used in connection with a variety of electronic device case products. This should be no surprise, given the tendency to use “e” as a prefix to generic goods and services.
Respondent acquired the Domain Name in March 2002, and has consistently used it in connection with paid advertising links to cases for electronic devices, such as laptop cases, Ipod cases and Macbook cases. Complainant has failed to demonstrate that this use prior to notice of a dispute has been illegitimate.
Complainant has provided no factual basis to conclude Respondent knew or should have known of either Complainant, or Complainant’s claimed mark, at the time the Domain Name was registered. The Domain Name was registered years before any commercial activity alleged by Complainant. Indeed, Complainant’s trademark application itself does not allege “first use” by Complainant until 2009.
Prior establishment as a trademark is a pre-requisite to bad faith domain name
registration. See, e.g., Asset Data Corp. v. Name Admin. Inc. (BVI), FA 699525 (Nat. Arb. Forum July 10, 2006). Complainant has failed to demonstrate a chronologically-relevant legal right against which to cybersquat at the time the Domain Name was registered.
Instead of addressing this issue, the Complaint attempts to breathe life into the “renewal as bad faith registration” argument, which has been repeatedly and specifically rejected. See Monkey-Says, LLC v. Admin Admin., FA 1386071 (Nat. Arb. Forum June 16, 2011). The relevant US law, 15 USC § 1125(b) likewise does not extend to renewals, as recently confirmed by the Ninth Circuit in GoPets Ltd. v. Hise, 2011 WL 4394353 (9th Cir. Sept. 22, 2011).
Since domain names may be registered for renewal periods as long as nine years, even if one were to accept the “renewal as re-registration” premise for bad faith purposes, Complainant has not identified a date on which the Domain Name registration was renewed in relation to Complainant’s trademark registration, issued December 1, 2009.
The Complaint fails to establish how Respondent’s use of the Domain Name in connection with cases for electronic goods has anything to do with Complainant’s software goods and services, whatever they are, since the Complaint does not describe them. It is therefore immaterial when the Domain Name was registered. Accordingly, not only is the “renewal as re-registration” argument fundamentally flawed, but the Complaint makes no effort to establish how Respondent’s use of the Domain Name implicates any intent whatsoever relating to the goods and services for which [Complainant] claims distinctive association with its mark.
Respondent says the Policy, Rule 15(e) requires the Panel to consider whether a proceeding was brought in bad faith. In this regard Respondent submits:
(i) Complainant failed to conduct competent diligence, as all of the decisional principles here are clearly set forth and findable within a moment’s use of the Forum’s own search function in relation to the very Respondent here at hand;
(ii) the Complaint fails to mention two prior electronic inquiries by Complainant’s counsel, without identifying herself as such, seeking to purchase the Domain Name from Respondent. Respondent questions why an attorney would not identify herself as one when contacting a party having an adverse interest to one of her clients; and
(iii) the Complaint also fails to mention one such enquiry by Complainant’s Director of Business Development and Vice President of Sales, also without identifying himself as such. His message read: “Due to today's economy, I am starting a home business. I am interested in your domain name as it is a good fit for services I want to provide, and am able to propose $1,500 for the rights to the name. I can be reached via my home email . . .” Respondent says this was a willfully false communication by interstate or international electronic means originating in the United States, for the purpose of obtaining a thing of value on false pretenses, i.e. “wire fraud” under the relevant federal criminal statute:18 USC § 1343.
Respondent says all it has done is to register and to continue to use a domain name since 2002, years before Complainant’s alleged trade or service mark rights can conceivably be demonstrated, which domain name corresponds to a logical and generic term referring to cases for electronic equipment. Complainant, on the other hand, is a junior party whose conduct has consistently been one of attempting to conceal identities, and then engaging in blatant criminal conduct to obtain a domain name corresponding to an alleged mark which Complainant adopted years after Respondent’s registration, and which Complainant had every reason to know of when Complainant nonetheless decided to adopt the alleged mark. Finally, professional counsel has a duty of competence, and the UDRP is not, ten years on now, an obscure policy for which clear guidepost principles have not been established. Rather, the Complaint instead does not directly address the central issue here apparent to anyone with glancing familiarity with the Policy, but instead leaves the discredited “renewal as re-registration” fallacy dangling context-free, in the event the Panel might happen [not] to notice.
Complainant has failed to establish all the elements entitling it to relief.
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:
(i)the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii)Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii)the Domain Name has been registered and is being used in bad faith.
Complainant has established that it is the proprietor of United States registered trademark eCASE, No. 3,720,219, registered on December 1, 2009, in respect of computer software for workflow and case management, with a claim to first use in August, 2009. Complainant has provided no evidence to support its claim to common law rights in that trademark and its domain names were registered shortly before the filing of its Complaint, so do not advance this claim.
The fact that the Domain Name was registered by Respondent 7 years before Complainant acquired its trademark rights is irrelevant for purposes of Paragraph 4(a)(i) of the Policy but very relevant for purposes of Paragraphs 4(a)(ii) and 4(a)(iii). See, e.g., Nãofumomais v. Re-Surgir - Consultores em Desenvolvimento Individual e Organizacional, Lda., D2004-0399 (WIPO Aug. 23, 2004); see also Valve Corp. v. ValveNET, Inc., D2005-0038 (WIPO Mar. 9, 2005).
The Panel finds that the Domain Name is identical to Complainant’s registered mark, the gTLD “.com” being disregarded as irrelevant.
Complainant has established this element of its case.
Paragraph 4(c) of the Policy sets out, without limitation, circumstances which, if proved, establish the registrant’s rights to or legitimate interests in the disputed domain name. Respondent relies on the circumstances specified in sub-paragraph 4(c)(i):
[B]efore any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
The screenshot of Respondent’s website on which Complainant relies (Complaint, Annex D), dated October 6, 2011, is of a single webpage entitled “ecase.com: The Leading Laptop Cases Site on the Net”, announcing the Domain Name has recently been listed for sale, and containing links including “Workerscompcases” and “Cases for iPad”, as well as numerous other links with no apparent connection to any meaning attributable to the Domain Name. Respondent’s evidence (Exhibit D) includes earlier screenshots revealing use of the Domain Name to display links promoting carrying cases, briefcases and cases for electronic devices such as laptops, with a copyright date prior to Complainant’s trademark registration. The Panel rejects Complainant’s assertion that such use is passive use and finds it to be use, prior to notice of this dispute, in connection with a bona fide offering of goods and services of the kind which the Domain Name describes.
Accordingly, the Panel finds Complainant has failed to establish absence of rights and legitimate interests in the Domain Name on the part of Respondent.
When Respondent registered the Domain Name in 2002, it could not have harboured any of the bad faith intentions alleged by Complainant, for which there is no evidentiary support in the Complaint, since Complainant possessed no rights in the eCASE trademark at the time.
Complainant effectively concedes as much, since it relies on an allegation of bad faith renewal as constituting bad faith registration, citing RapidShare AG v. Fantastic Inv. Ltd., FA 1338403 (Nat. Arb. Forum Oct. 8, 2010), and Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007). Respondent contends that this proposition has been rejected, citing Monkey-Says, LLC v. Admin Admin., FA 1386071 (Nat. Arb. Forum June 16, 2011), 15 USC § 1125(b) and GoPets Ltd. v. Hise, 2011 WL 4394353 (9th Cir. Sept. 22, 2011).
The position is not as clear as Respondent suggests. In Eastman Sporto Group LLC v. Jim & Kenny, D2009-1688 (WIPO Mar. 1, 2010), the learned panelist postulated circumstances in which renewal could be regarded as registration for the purposes of the Policy, while acknowledging that in some circumstances:
[I]t might well be appropriate to continue to find otherwise “infringing” use still within the safe harbors of paragraphs 4(c)(i) or 4(c)(ii). The obvious case that comes to mind is when the respondent had nothing to do with the intervening circumstances that changed things – a trademark is registered after initial registration but before renewal, and the use to which the respondent puts the domain name remains materially unchanged, for example. That is a matter for panels in future cases.
In this case it is unnecessary for the Panel to decide whether there are circumstances in which renewal should be regarded as registration for the purposes of the Policy, since there is no evidence before the Panel of any renewal by Respondent of the Domain Name registration after Complainant’s acquisition of trademark rights in 2009. Further, since Respondent’s use of the Domain Name has remained essentially unchanged since long before Complainant acquired its trademark rights, there is no evidence of bad faith use, i.e. use with Complainant or its mark in mind, with intent to take advantage of Complainant’s reputation, either before or after Complainant’s trademark rights were acquired.
Accordingly the Panel finds that Complainant has failed to establish this element of its case.
Reverse Domain Name Hijacking
Rule 1 defines reverse domain name hijacking as “using the Policy in bad faith to attempt to deprive a registered domain‑name holder of a domain name”. See also Rule 15(e). To prevail on such a claim, it has been held that a respondent must show either that the complainant knew of the respondent’s unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith, such as in Sydney Opera House Trust v. Trilynx Pty. Ltd., D2000‑1224 (WIPO Oct. 31, 2000), and Goldline Int’l, Inc. v. Gold Line, D2000‑1151 (WIPO Jan. 4, 2001), or that the Complaint was brought in knowing disregard of the likelihood that the respondent possessed legitimate interests, such as in Smart Design LLC v. Hughes, D2000‑0993 (WIPO Oct. 18, 2000), or that the complainant knew it had no rights in the trademark or service mark upon which it relied and nevertheless brought the Complaint in bad faith, such as in Zuckerman v. Peeris, DBIZ2002‑00245 (WIPO _Aug. 12, 2002), and HER MAJESTY THE QUEEN v. Virtual Countries, Inc., D2002‑0754 (WIPO Nov. 27, 2002).
Here the Complainant must have been aware that its mark was weak and that it had no evidence to support its claim to common law trademark rights, since none was provided; that Respondent had been using the Domain Name in relation to cases for electronic devices since long before Complainant acquired its trademark rights and that such use had not changed, and that it had no evidence that the Domain Name had been renewed after the trademark was registered. Accordingly Complainant must have been aware that its case was hopeless. The panel concludes that the Complaint was brought in bad faith in an attempt at Reverse Domain Name Hijacking.
Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Alan L. Limbury, Presiding Panelist
The Hon. Daniel B. Banks Dr. Roberto Bianchi
Dated: December 1, 2011
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