National Arbitration Forum

 

DECISION

 

Karsten Manufacturing Corporation v. Pingify Networks Inc.

Claim Number: FA0811001232823

 

PARTIES

Complainant is Karsten Manufacturing Corporation (“Complainant”), represented by John D. Titus, of The Cavanagh Law Firm, Arizona, USA.  Respondent is Pingify Networks Inc. (“Respondent”), represented by Creston Froats, British Columbia, Canada.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ping.me>, registered with GoDaddy.com, Inc.

 

PANEL

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.

 

Debrett G. Lyons, Calvin A. Hamilton and David S. Safran as Panelists.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 6, 2008; the National Arbitration Forum received a hard copy of the Complaint on November 6, 2008.

 

On November 7, 2008, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <ping.me> domain name is registered with GoDaddy.com, Inc. and that Respondent was the registrant of the name.  GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 November 14, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 4, 2008 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@ping.me by e-mail.

 

A timely Response was received and determined to be complete on December 3, 2008.

 

Complainant submitted an Additional Submission on December 19, 2008.  Complainant’s Additional Submission is considered untimely and deficient pursuant to Supplemental Rule 7 since it was received after the deadline for submissions.  The Panel has reconsidered that decision, as discussed below.  Respondent also made Additional Submissions which were received in a timely manner.

 

On December 12, 2008, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Debrett G. Lyons (chair), Calvin A. Hamilton and David Safran as Panelists.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant asserts trademark rights and alleges that the disputed domain name is identical to its trademark.

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. 

 

Complainant alleges that Respondent registered and used the disputed domain name in bad faith.

 

The detail of the Complaint is considered in the Discussion which follows below.

 

B. Respondent

Respondent does not contest that Complainant has trademark rights or that the disputed domain name is confusingly similar to the trademark but denies it acted in bad faith and argues that it has a legitimate interest in the domain name.

 

The detail of the Response is considered in the Discussion which follows below.

 

C. Additional Submissions

Both parties made Additional Submissions which have been taken into account by the Panel and which are referred to as required in the Discussion which follows below.

 

FINDINGS

1.      Complainant, along with its subsidiary company, Ping Inc., is a manufacturer of golfing equipment sold under the trademark PING.

2.      The evidence shows that the trademark has been in use for almost 50 years and is well known to the golfing and sports community.

3.      Complainant is the proprietor of many U.S. Federal trademark registrations including, for example, Reg. No. 704,552 for PING filed on September 3, 1959 and issued on September 20, 1960.

4.      Complainant also has trademark registrations in Canada including Reg. No. 373,788 filed on December 28, 1988 and issued on September 28, 1990.

5.      Respondent was incorporated in British Columbia, Canada, on March 10, 2008.

6.      The disputed domain name was registered on August 17, 2008.

7.      Respondent purchased the domain in a public auction for $USD 12,500.

8.      There is no relationship between the parties, nor prior to the Complaint had they been in contact with one another.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

 

Preliminary Procedural Issue 1: Deficient Additional Submissions

 

The National Arbitration Forum's Supplemental Rule 7 permits supplemental submissions provided that they are: (a) accompanied by an appropriate filing fee and (b) timely filed.   Complainant submitted out-of-time Additional Submissions and the National Arbitration Forum found non-compliance with Supplemental Rule 7.

 

In these circumstances the Panel has discretion whether to accept or reject those submissions.[i]  In this case, the Panel has accepted and given full consideration to Complainant’s Additional Submissions since Complainant gave a convincing reason for its failure to meet the due date and because the submissions are pertinent to the central matters at issue in this dispute.  Moreover, the Panel considers that the Additional Submissions should be considered because Respondent reacted by filing its own (timely) Additional Submissions which can only be properly understood in the context of prior argument.  Finally, Panel takes the view that the complexity of the dispute merits consideration of all submissions.[ii] 

 

Preliminary Procedural Issue 2: Identity of Respondent

 

Further to the Procedural History set out above, it is to be noted that on the date on which the Complaint was filed, November 6, 2008, the WHOIS information showed the domain name registrant as Domains By Proxy Inc.  As originally filed, Complaint nominated Domains By Proxy Inc. as Respondent.   After identification by the Registrar of Respondent and at the invitation of the National Arbitration Forum, the Complaint was amended to nominate the current Respondent.

 

Much of the argument from both sides centered on the question of who should be properly nominated as respondent.  Complainant was determined to treat Domains By Proxy Inc. as the respondent, whilst Respondent argued that it was the correct entity. Whilst this Panel is aware that the facts here invite a number of questions concerning interpretation of the Policy which have engaged the close attention of other panels,[iii] it is also conscious that the overriding intention of the Policy is to provide a practical alternative to court proceedings to combat abusive domain name registrations.  Against that fact would stand the manifest fiction of investing a proxy service company with either good faith or bad faith intentions.  This Panel takes the pragmatic view that if the identity of the beneficial owner of the domain name is known, can be readily identified, or is revealed by a registrar in response to a complaint, then it should be the named respondent and the case under the Policy should be made against that party.

 

The Panel finds that Respondent has been properly named. 

 

Substantive Issues

 

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;

(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.

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant has rights in the trademark acquired through registration,[iv] if not also through long term use.[v]

 

Complainant contends that the disputed domain name is legally identical to Complainant’s trademark because it contains that mark in its entirety and merely adds the ccTLD for Montenegro, “.me.”  Applying the principles developed and now broadly accepted under the Policy, the Panel finds that the disputed domain is identical to the trademark.[vi] 

 

The Panel has no hesitation in finding that Complainant has satisfied the first element of the Policy.

 

Rights or Legitimate Interests

 

In consequence of earlier findings, it is the rights or legitimate interests of the named Respondent which are under examination.  That said, the Panel finds that the circumstances described in the Complaint[vii] are sufficient to constitute a prima facie showing by Complainant of absence of rights or legitimate interest in the disputed domain name and so shift the evidentiary burden to the Respondent to show that it does have rights or legitimate interests in that name.[viii] 

 

Respondent’s key argument throughout its submissions is that it does have a legitimate interest in the disputed domain name (and so by extension can not have acted in bad faith). 

 

It has been observed by panelists in formative decisions that there is a necessary connection between the elements of legitimate rights, on the one hand, and bad faith, on the other.  In particular, if it can be seen that a respondent has rights in a domain name, then it is generally difficult to assimilate that with a conclusion that the respondent had acted in bad faith.[ix] 

 

Paragraph 4(c) of the Policy sets out certain circumstances which if found by the Panel to be proved demonstrate Respondent’s rights or legitimate interests in the domain name for the purposes of paragraph 4(a)(ii) of the Policy.  Those sets of circumstances are not exhaustive and other instances of legitimate interests might be in evidence however it is logical to first test the present facts against those given circumstances.  They are that:

 

(i)    before any notice to the domain name registrant of the dispute, the registrant used , or made 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;  or

 

(ii)   the domain name registrant (as an individual, business, or other organization) has been commonly known by the domain name, even if the registrant has acquired no trademark or service mark rights;  or

 

(iii)  the domain name registrant is making a legitimate non‑commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Subparagraph 4(c)(ii) and (iii) have no direct application to the facts of this case.  Subparagraph 4(c)(i) was argued by Respondent.  Unlike the other scenarios, it requires a certain state of affairs to have existed before Respondent had any notice of the dispute.  There is no evidence of pre-Complaint contact between the parties and so the relevant date is no earlier than November 14, 2008, the date on which Complaint was communicated to Respondent.

 

At various points in its submissions Complainant suggests that Respondent was on constructive notice of its rights, but for the purposes of paragraph 4(c)(i) of the Policy, the relevant determination is the date when Respondent first had any notice of the dispute.  Imputed knowledge of Complainant’s US or Canadian trademark registrations, for example, is not notice of the dispute.  Imputed knowledge of Complainant’s common law reputation is likewise not notice of the dispute.  The question before the Panel is whether what was done by Respondent prior to November 14, 2008 amounted to use, or preparations for use, of the disputed domain name in connection with a bona fide offering of services. 

 

Earlier UDRP decisions have held that even perfunctory preparations for use might suffice.[x]  Some more recent cases have imposed a higher standard.  What is clear is that paragraph 4(a)(ii) of the Policy refers to “rights” or “legitimate interests.”  The Panel takes the view that the draftsmen of the Policy used those two expressions deliberately, comprehending them to have different meanings.  Subparagraph 4(c)(i) itself draws out that distinction by requiring either use of the domain name, or demonstrable preparations for its use, in such a way to reflect a design where the former gave rise to a “right” and the latter to a “legitimate interest.”

 

Respondent alleges that it is a company still in a nascent state of business development.  It was incorporated in Canada in March 2008 to develop and bring to market a core product, “Personal Internet Notification Gateway,” with the acronym P.I.N.G.  That product is a software program which notifies an Internet user of specific information in a timely fashion, otherwise known as “pings.”  In May 2008, Respondent filed a US provisional patent application for the product, the invention being named in the application papers as a Personal Internet Notification Gateway.  Respondent also evidenced some rudimentary marketing materials and business plans.

 

Emergence of the “.me” ccTLD gave Respondent the opportunity to market the product under the name “Ping Me”.  Respondent purchased the domain name in a public auction for $ USD 12,500 and as part of the ‘sunrise’ process for new “.me” domains during May 6 – 20, 2008. 

 

Between purchase and Complaint, there was no developed website corresponding with the domain name.  It was parked with the Registrar and, Complainant alleges, was driving pay-per-click revenue through links to competitors in business to Complainant.

 

Respondent sought to excuse that by stating that:

 

It is a fact that these advertisements are the result of Go Daddy using their own default landing page and opportunistically placing golf advertisements on it. These were not our advertisements, nor do we have a stake in them, nor did we request them.

 

Respondent reacted to receipt of the Complaint by promptly contacting the Registrar with a request that ads be turned off, to which the Registrar acceded.

 

There is no doubt that these combined facts sent mixed messages to the Panel.  There is ample authority for the principle that a respondent can not abrogate responsibility for use of its domain name.  Numerous prior decisions have, rightly in this Panel’s view, held that there is bad faith use of a domain name if it is parked at a revenue driving website which trades on traffic drawn by the magnetism of a third party’s trademark.  The fact that links and advertising material might be added by the parking host and not by the domain name registrant itself has been held immaterial to the finding of bad faith use.  Nor, for that matter, is bad faith use swept away by curative steps taken only after notice of a complaint.

 

The Panel would be at liberty to find that Respondent’s use of the disputed domain name was not bona fide in terms of paragraph 4(c)(i) of the Policy.[xi]  Nonetheless, the better view is that this conduct should form part of the complete equation which measures whether there were in fact 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.

 

On a balance of the evidence, the Panel finds that the business being developed by Respondent prior to notice of the dispute was not a sham and would amount to a bona fide offering of goods or services.  Furthermore, the Panel finds that prior to notice of the dispute, the preparatory steps taken by Respondent to establish that offering in connection with the name “Ping Me” were legitimate and of substance.  The commitment in filing a US patent application speaks for itself, as does the fact that the name of the invention coincides directly with the acronym and, by coincidence, with the trademark.  Bearing in mind the nature of Respondent’s software product, it seems to the Panel that the “.me” domain name extension would be naturally desirable over others.

 

Against that landscape and in the face of a great many cases under this Policy where respondents have blatantly abused third party rights, the Panel is of the opinion that the bad faith use in this case should not disfigure Respondent’s other actions.

 

The Panel finds that Complainant has not discharged its onus to show that Respondent has no legitimate interests in the disputed domain name and so decides that Complainant has failed to satisfy the second element in Paragraph 4(a) of the Policy.

 

Registration and Use in Bad Faith

 

For the reasons set out above, it is not necessary to reach a finding on this aspect of the Policy.

           

DECISION

Having failed to establish at least one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

REVERSE DOMAIN NAME HIJACKING

Respondent contends Complainant is engaging in reverse domain name hijacking through its submission of this Complaint.  Respondent asserts it purchased the disputed domain name in an online auction in which Complainant failed to participate.  Respondent alleges Complainant is using the arbitration process in bad faith in an attempt to hijack the domain name.

 

The Panel cites with approval the case of Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001), where it was said that to prevail on a claim of reverse domain name hijacking, Respondent must show that Complainant brought the claim in bad faith despite the knowledge that Respondent has an unassailable right or legitimate interest in the disputed domain name, or that Respondent lacks the requisite bad faith registration and use of the disputed domain name.

 

In Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000), the panel found that the complainant committed reverse domain name hijacking where it “advanced arguments that were tortuously artificial in the extreme, reckless both as to the justification for making those arguments and the seriousness of the overall charge against Respondent, who was manifestly no cybersquatter.” [xii]

 

In this case, Complainant had no reason to be aware of Respondent’s start-up business.  Indeed, Respondent admits that it had taken steps to maintain the confidentiality of its product until launch.  There is no evidence of pre-Complaint correspondence between the parties which might suggest Complainant’s desire to attain the domain name from Respondent.

 

The least benign motives that could be ascribed to Complainant are that it made no visible attempt to identify the beneficial owner of the domain name and that it relentlessly pursued its case to treat the proxy service company as respondent for transparently tactical reasons.  Nonetheless, having regard to the authorities the Panel finds that this is not an instance of reverse domain name hijacking because Complainant brought this action in the belief that it has rights to the domain name.

 

 

 

 

Debrett G. Lyons

 

Calvin A. Hamilton

 

David S. Safran

 

 Panelists

Dated: January 5, 2009

 

 

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