Michael Wheeler v.
Rarenames, Inc. c/o RareNames WebReg
Claim Number: FA0812001237607
PARTIES
Complainant is Michael Wheeler Alaska, USA (“Complainant”). Respondent is Rarenames, Inc. c/o RareNames
WebReg (“Respondent”), represented by Erik
S. Zilinek, of NameMedia, Inc.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <w2b.com>, registered with Domainadministration.com
Llc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Hon. Sir Ian Barker, Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on
On
On December 23, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of January 12, 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 postmaster@w2b.com by e-mail.
A timely Response was received and determined to be complete on
On
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant owns a registered
The Respondent has registered or has acquired the disputed domain name
primarily for the purpose of selling, renting or otherwise transferring the
registration to the Complainant who is the owner of the trademark or to a
competitor for valuable consideration in excess of the Respondent’s
out-of-pocket costs directly related to the disputed domain name.
The Respondent has shown the disputed domain name for sale at US$21,200
as of December 2, 2008.
B. Respondent
In contrast to the Complaint, the Response is extremely comprehensive
and is supported by an affidavit from the Respondent’s Chairman and Chief
Executive Officer, Mr Conlin. He deposes
that the Respondent registered the disputed domain name on
Since 1999, the Respondent has developed a large portfolio of domain
names incorporating common words, generic and short terms, as well as 10s of
1,000s of names incorporating 3-character acronyms. Some of these are offered for sale to the
general public through <mydomainsBB.com>.
The Respondent did not register the disputed domain name for the
purpose of selling it to the Complainant.
When the Respondent registered the disputed domain name – more than 2
years before the Complainant filed its trademark application – the Respondent
did not know, nor could it have known, that the Complainant had any interest in
what was otherwise a generic acronym.
Because the Respondent knew nothing of the Complainant’s geographically-remote
use of its later registered mark, it could not have registered the disputed
domain name with the intent of disrupting the Complainant’s business.
The Complainant made no attempt to contact the Respondent through the
Respondent’s publicly available trademark complaint procedure at <mydomains.com>. The first notice the Respondent received of
the dispute was on
The Respondent’s proprietary technology allows it regularly to screen
acquired domain names against trademarks filed and registered in the US Patent
& Trademark Office (US PTO). Because
there was no trademark registered as of the date the Respondent acquired the
disputed domain name, there was no result from any such search. As part of further efforts to avoid invading
third-party rights, the Respondent has installed robots.txt to prevent its
domain names as well as the content of the websites associated therewith from
being indexed by search engines.
Consequently, its domain names and associated websites do not appear in
organic search results and thus never alongside the Complainant’s primary
domain name or the content of its associated website.
In other words, the only way for Internet users to access, much less
discover the websites of its domain names, is to directly type the domain name
into the address bar of the browser. The
Respondent disputes that the Claimant holds rights in the acronym W2B, although
it acknowledges that the Complainant does have a registered trademark.
The Respondent is conducting a legitimate business of dealing in domain
names, particularly generic domain names or common acronyms. It clearly falls within Paragraph 4(c)(i) of
the Policy in that it was conducting a legitimate business before notice to it
of the dispute. It has demonstrated use
of the disputed domain name in accordance with the bona fide offering of goods and services. The expression “W2b” is by no means
exclusively associated with the Complainant.
It appears in numerous third-party web-pages unrelated to the
Complainant.
Since acquiring the disputed domain name and before notice of the
dispute, the Respondent has used the disputed domain name in connection with Internet
advertising in a variety of subjects related, among other things, to the web
business relevance of the acronym W2b.
Thus, it constitutes a bona fide offering
of goods and services. Banco do Brasil S.A v. The Universal Kingdom
LLC, D2008-0389 (WIPO June 6, 2008).
In that case, the Respondent registered to resell 49 generic domain
names. The panel held that no inference
concerning the respondent’s knowledge could be drawn from the nature of the
disputed domain name, even if it consisted of a short common place
acronym. A domain name which
incorporated a common acronym constituted the use of the domain name for a bona fide offering of goods and services
(see Williams, Babbitt & Weisman, Inc. v. Ultimate Search, FA 98813
(Nat. Arb. Forum Oct. 8, 2001).
Moreover, it is established that the sale of domain names constitutes a
bona fide offering of goods and
services where the respondent is unaware of the complainant’s rights in a mark
(see Micron Tech., Inc. v.
Audiopoint Inc. v. eCorp, D2001-0509 (WIPO June 14, 2001)).
Further, the Complainant has not proved the third element that the
Respondent registered and used the disputed domain name in bad faith. There is nothing to indicate that the Respondent
registered or acquired the disputed domain name primarily for the purpose of
selling, renting or otherwise transferring the registration to the Complainant
or a competitor. At the time the
Respondent registered the disputed domain name, it was unaware of the Complainant’s
mark or the Complainant, since the Complainant had not at that stage registered
(or even applied to register) its trademark.
Registration or general offers to sell domain names which consist of a
common acronym cannot be considered acts of bad faith – see Trana SA v. Rarenames,
Webreg, D2007-0489 (WIPO June 7, 2007).
Merely offering to sell a domain name to the general public is not bad
faith under the Policy and the acquisition of deleted domain names has been
endorsed as a bona fide practice
under the Policy – see Vernons Pools Ltd v. Vertical Access Inc.,
D2003-0041 (WIPO March 12, 2003). The
fact that a disputed domain name was registered after being deleted favours the
Respondent because the deletion is a signal that the prior registrant has
abandoned any claim to it.
FINDINGS
(a)
The
disputed domain name is identical to a registered trademark in which the
Complainant has rights.
(b)
The
Respondent has demonstrated that, before any notice to it of the dispute, it
has used the disputed domain name in connection with the bona fide offering of goods and services. Therefore, the Respondent has established a
defence under Paragraph 4(c)(i) of the Policy.
(c)
The
Complainant has not proved that the Respondent has no rights or legitimate
interests in the disputed domain name.
(d)
The
Complainant has not proved that the disputed domain name was registered and is
being used in bad faith.
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.”
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.
Although the Complainant’s trademark was registered
after the Respondent acquired the disputed domain name, the consensus view of
UDRP panelists is that a complainant may still obtain a finding of a name identical
or confusingly similar to a trademark.
The UDRP makes no specific reference to the
date on which the owner of the trademark acquired rights. (See WIPO
Overview of WIPO Panel Views on Selected UDRP Questions, Paragraph 1.4 and
the authorities there noted).
However, that commentary notes that, in these
circumstances, it can be difficult to prove that a domain name had been
registered in bad faith since it is difficult to show that it had been
registered with a future trademark in mind.
That is, of course, the very situation in this case. The Complainant has, therefore, proved the
first element of Paragraph 4(a).
The Complainant has offered no real evidence
to support a finding of a common law mark prior to the trademark registration. See
WIPO Overview at paragraph 1.7 for what needs to be shown for a successful
assertion of a commonlaw mark.
The Respondent has gone to considerable
lengths in its Response to show that it conducts its business as a dealer in
domain names in a responsible manner. It
has filed an affidavit from its Chief Executive which demonstrates that the
Respondent goes to some trouble to ascertain that no domain name registration
is likely to infringe a
The Respondent has clearly demonstrated that
it comes within Paragraph 4(c)(i) of the Policy in that, prior to its first
notice of the dispute (which was not until
Furthermore, it is doubtful that the
Complainant has established even a prima
facie case in support of its arguments that the Respondent lacked rights
and legitimate interests. The disputed
domain name is an acronym for terms in generic and of common use. It is a legitimate business practice to be a
generic name reseller and the Respondent has established its rights and
legitimate interests in the disputed domain name as part of its business (see Front
Range Internet Inc. v. Murphy, FA 145231
(Nat. Arb. Forum April 4, 2003).
The Respondent has not proved that, at the
time the Respondent registered the disputed domain name, the Complainant knew
of its then common law mark, if it had one.
As Paragraph 3.1 of the WIPO
Overview comments: “Normally
speaking, where a domain name is registered before a trademark right is
established, the registration of the domain name was not in bad faith because
the registrant could not have contemplated the complainant’s non-existent
right.”
The Complainant has not established anything
like what is necessary to establish a common law mark existing prior to the
date of registration. The Complainant
must show the name has become a distinctive identifier associated with the
Complainant and its goods and services.
Relevant evidence of a secondary meaning includes length of time and
amount of
It is quite clear that the Respondent has
acted in good faith throughout and there is no possibility of a finding of
either bad faith registration or use.
DECISION
Having considered all three elements under the ICANN Policy, the Panel
concludes that relief shall be DENIED.
Hon. Sir Ian Barker, Panelist
Dated: January 29, 2009
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page