Visual Systems, Inc. v.
Development Services Telepathy, Inc.
Claim Number: FA1004001318632
PARTIES
Complainant is Visual Systems, Inc., represented by Hoang-chi
Truong, of Fenwick & West LLP, (“Complainant”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cygnet.com>, registered with Moniker.
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.
James Bridgeman as Chair.
Judge Ralph Yachnin as Panelist.
The Hon. Neil Brown QC as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on April 12, 2010.
On April 13, 2010, Moniker confirmed by e-mail to the National
Arbitration Forum that the <cygnet.com> domain name is
registered with Moniker and that the
Respondent is the current registrant of the name. Moniker
has verified that Respondent is bound by the Moniker
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 April 19, 2010, the Forum
served the Complaint and all Annexes, including a Written Notice of the
Complaint, setting a deadline of May 10, 2010 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@cygnet.com by
e-mail. Also on April 19, 2010, the Written Notice of the Complaint, notifying
Respondent of the email 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 May 20, 2010.
Complainant’s Additional Submission was received on May 26, 2010 in
compliance with Supplemental Rule 7.
On May 28, 2010, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed James Bridgeman as Chair, Judge Ralph Yachnin as Panelist and The Hon. Neil Brown QC as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is a
Complainant submits that it has rights in
the CYGNET trademark through its ownership of the U.S.P.T.O service mark
registration described below and its use of the mark in relation to its
software services.
Complainant submits that the disputed
domain name is identical to Complainant’s CYGNET mark because the .com gTLD
extension is not taken into consideration when analyzing the identity between a
trademark and domain.
Complainant submits that it has therefore
satisfied the first requirement under Policy ¶ 4(a)(i).
Complainant submits that Respondent has
no rights or legitimate interest in the disputed domain name. Respondent has no
legitimate relationship to Complainant giving rise to any license, permission,
or authorization to register or use the disputed domain name, nor has
Complainant ever licensed or authorized Respondent’s use of the CYGNET Mark in
any manner.
Respondent is known as Development
Services and Telepathy, Inc. and is not commonly known by the CYGNET or <cygnet.com>
names. Respondent owns no relevant trademark applications or registrations for
CYGNET or <cygnet.com>. Respondent
cites Google
Inc. v. Miller, FA 1067791 (Nat’l
Arb. Forum Oct. 24, 2007) (holding that a domain Respondent had no rights or
legitimate interests in, and was not commonly know by, the domain name
<youtubex.com> where its “WHOIS information indicates that the Respondent
is ‘David Miller’”); Braun Corp. v. Loney, FA 699652 (Nat. Ar. Forum
July 7, 2006) (concluding that Respondent was not commonly known by the
disputed domain names where the WHOIS information, as well as other information
in the record, gave no indication that Respondent was commonly known by the
disputed domains, and complainant had not authorized the Respondent to register
domains containing its registered mark); Popular Enterprises, LLC v. Jang,
FA 811921 (Nat’l Arb. Forum Nov. 16, 2006) (Respondent’s
“WHOIS information does not suggest that [it] is commonly known by the <ntester.com> domain name”); Tercent
Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding
that the WHOIS information and its failure to imply that Respondent is commonly
known by the disputed domain name is a factor in determining whether Respondent
has any rights or legitimate interests in the dispute domain name).
Complainant argues that the term “cygnet”
is not descriptive or generic of Complainant’s software solutions or services,
nor is it a common surname, giving rise to Respondent’s rights or legitimate
interests in the disputed domain name.
The dictionary definition of the word “cygnet” is “a young swan” and
there is also a small town in
Complainant anticipates that Respondent
may argue that Complainant does not own exclusive rights in the CYGNET
mark. Complainant submits that any such
argument is irrelevant to this proceeding because whether or not there are other
third party uses of CYGNET does not give Respondent any rights or legitimate
interests in the disputed domain name.
The Policy does not require that Complainant have exclusive rights in
the trademark. Here, Complainant has
clearly shown that it has rights in the CYGNET mark as a result of, not only
its federal registration, but also its extensive use of the mark since December
1, 1995. The fact that there may be
other third party uses of CYGNET does not show that Respondent itself has
rights or legitimate interests in the disputed domain name; any such arguments
made by Respondent to this effect are irrelevant.
Respondent’s use of Complainant’s
trademark as a domain name to divert traffic to Respondent’s parked site is not
a bona fide offering of goods or
services, nor is it a legitimate non-commercial or fair use of the Domain
Name. See, e.g., Adobe Systems
Inc. v. Domain OZ, D2000-0057 (WIPO March 22, 2000) (using a disputed
domain to attract consumers to a Respondent’s website alone would not be sufficient
to establish rights or legitimate interests in the domain name). Respondent’s only plausible reason to
register and use the disputed domain name is to take unfair advantage of the
recognition associated with Complainant’s CYGNET mark by diverting consumers
from Complainant’s website to its parked site, where Respondent is benefiting
from the confusion and diversion by receiving pay-per-click commissions.
Complainant submits that given the above,
it is clear that Respondent has no rights or legitimate interests in the
disputed domain name, nor is the disputed domain name being used in a
legitimate fair use manner.
Complainant submits that it has therefore
succeeded in establishing that a Respondent has no rights or legitimate
interests in the disputed domain name as required by Policy ¶ 4 (a)(ii).
Complainant submits that Respondent
registered and is using the disputed domain in bad faith. In particular
Complainant submits that Respondent’s activities fall squarely into Paragraph
4(b)(iv) because Respondent has parked the disputed
domain name to take unfair advantage of the recognition associated with
Complainant’s CYGNET mark by diverting consumers looking for Complainant’s
CYGNET software solutions and services from Complainant’s website to Respondent’s
parked site, where it benefits from the confusion and diversion by receiving
pay-per-click commissions. Complainant
argues that Respondent’s bad faith is underscored by the fact that, despite its
statement that it would remove advertising links from the site, Respondent did
not immediately do so and continued to offer advertising links on the site well
after receiving Complaint’s demand to transfer the Domain Name to Complainant
so that it could continue to benefit from the resulting pay-per-click
commissions. See, e.g., REO
Speedwagon, Inc. v. Domain Administrator, FA 910799 (Nat. Arb. Forum March
23, 2007) (bad faith use and registration found; domain name used to attract
Internet users to generate per click revenue); National Association for
Stock Car Auto Racing, Inc. (NASCAR) v. RMG – Buy or Lease by E-mail,
D2001-1387 (WIPO Jan. 23, 2002) (panel found bad faith use because of
Respondent’s use of click-through advertising on the disputed site).
Complainant further argues that
Respondent’s registration and use of the disputed domain name is also in bad
faith because, despite having actual or constructive notice of Complainant’s
rights to the CYGNET mark, Respondent still registered and is using the
disputed domain name. Prior panels have found
that such behavior is indeed evidence of a Respondent’s bad faith in
registering and using a domain name. See, e.g., Samsonite Corp. v. Cologny Holding, FA
94313 (Nat’l Arb. Forum April 17, 2000) (holding that evidence of bad
faith includes actual or constructive knowledge of a commonly known mark at the
time of registration); DaimlerChrysler AG v. NOLDC, Inc. FA 677360
(Nat’l Arb. Forum May 29, 2006) (registration of a mark with the U.S. Patent
and Trademark Office serves as constructive notice of a complainant’s rights in
a mark, therefore, Respondent acted in bad faith by registering the
<mecedes-benz.com> and <mercede-benz.com> domain names despite its
constructive notice of complainant’s rights in the mark MERCEDES BENZ). Here, Complainant’s CYGNET Mark registered
July 15, 1997, years prior to Respondent’s registration and use of the Domain
Name. Respondent, therefore, had
constructive notice, if not actual notice, of Complainant’s rights in CYGNET. Thus, Respondent’s registration of the Domain
Name, despite its notice of Complainant’s rights to the CYGNET mark, evidences
bad faith.
Complainant submits that on information
and belief, Respondent is a speculator that simply hopes to license or sell the
domains in the future for profit, but had no specific use in mind at the time
of registration or acquisition.
Since its registration Respondent has
continually parked the disputed domain name to receive pay-per-click fees based
on the number of visitors who click on the links displayed on the site or on
the paid search advertisements and pop-ups generated from searches on the site.
Complainant states that upon discovering
Respondent’s registration and use of the disputed domain name, Complainant,
through counsel, called Respondent on January 25, 2010, notifying it of
Complainant’s trademark rights in the CYGNET Mark and demanding transfer of the
disputed domain name. Complainant has
furnished this Panel with copies of the correspondence that followed during the
month of February 2010. The President of the Respondent refused to agree to
transfer the disputed domain name on the grounds that the registration and use
of the disputed domain name in connection with a parked website did not
infringe Complainant’s rights in the CYGNET mark.
Complainant further states that at that
time the President of the Respondent company promised
that Respondent would remove all advertising links from cygnet.com
website. Complainant states that
notwithstanding that undertaking, Respondent nonetheless continued to advertise
on the site so that it can continue to receive pay-per-click revenues.
Anticipating that Respondent may claim
that Complaint is barred by laches because Complainant was aware of
Respondent’s registration and use of the disputed domain name long before
contacting Respondent and demanding the transfer of the domain, Complainant
submits that any such argument is also irrelevant because laches is not an
available defense in these proceedings. See,
e.g., Tax Analyst v. eCorp, D2007-0040 (WIPO April 10, 2007)
(although the parties are both located in the U.S., where courts recognize the
doctrine of laches, the panel nonetheless concluded that laches does not
properly apply to UDRP proceedings because the remedies under the ICANN Policy
are injunctive rather than compensatory in nature); The E.W. Scripps Company
v. Sinologic Industries, D2003-0447 (WIPO July 1, 2003) (the ICANN Policy
does not contemplate a defense of laches, which is contrary to its purposes); The
Hebrew University of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct.
7, 2002) (because there is no limitation period in the ICANN Policy and the
remedy available under the Policy is not equitable, laches has no
application). Therefore, the defense of
laches is not applicable here and should not be considered.
Complainant submits that it has satisfied
the third element of the test in Policy ¶ 4(a)(iii)
and is entitled to succeed in its application.
B. Respondent
Respondent submits
that there is no basis for transferring the disputed domain name cygnet.com to Complainant and alleges that
this is a case of reverse domain name hijacking.
Respondent does
not deny that the disputed domain name is identical or confusingly similar
to the CYGNET trademark but takes no position as to the enforceability of the
Complainant’s claimed trademark rights. Respondent does however submit that
Complainant does not have exclusive rights to use the common English language
word meaning “a young swan”. Respondent submits that
the word “cygnet” is the subject of tremendous
third party use as a trademark and on the Internet. Respondent submits
that there are 14 other pending and
registered U.S trademarks incorporating this term, and five Canadian
registered trademarks for a wide
variety of goods and services such as: aquatic herbicides; children’s books;
computer consultations; scientific instruments; wine; jewelry; financial
services; surgical clamps; nutrition consulting; pool water pumps; computer
programs; and jukeboxes.
Respondent asserts
that it has rights and legitimate interest in the <cygnet.com>
domain name. Respondent submits that anyone is entitled to register a common word in a domain name on a first-come
first served basis, provided there is no intent to target a trademark. Respondent states that it acquired the disputed
domain name because it incorporates a
common word, not with any intention of targeting a trademark, thereby
establishing Respondent’s legitimate interest in the disputed domain
name. Respondent’s use of the disputed
domain name in connection with a search
page or to display pay per click links further establishes Respondent’s
legitimate interest. Respondent has been investing in quality common word
domain names since 1997 believing they are easy-to-remember with multitudes of
potential online commercial applications. The disputed <cygnet.com> domain name is one such domain name acquired by Respondent.
Respondent
registered the disputed domain name
because it incorporated a common word to which it believed no party could
claim exclusive rights. Respondent did
not register the disputed domain name with Complainant’s trademark in mind.
Respondent is the
owner of numerous generic domain names such as: geometric.com, cordial.com,
workouts.com, flotsam.com, deduction.com, sultry.com, and between.com.
As noted, the disputed
domain name incorporates the name of a
small swan. Respondent is the registrant of numerous other bird and
animal-related domain names, such as Tanager.com (a brightly colored songbird);
Popinjay.com (a woodpecker); Goldfinch.com (a yellow bird); Porcupine.com;
Ermines.com (a weasel); Whelk.com (a snail); Dromedary.com (a camel);
Abalone.com (a mollusk); Woodchuck.net; Yellowfox.com; Yellowturtle.com;
Orangebird.com; Orangemouse.com.
Respondent submits
that common word domain names therefore serve well as online identities and, as
a result, are commercially valuable. Respondent states that its ultimate goal
is to develop its domain names or resell them to other entities looking for
easy-to-remember domain names for Internet addresses for their web sites. Respondent
hosts its underdeveloped domain names with domain name parking services which
pay Respondent a share of the advertising revenue they generate, and
industry-wide accepted practice.
The common word
“cygnet,” meaning a “young swan.” is subject to substantial third party use on
the Internet. A Google search for “cygnet,” excluding the terms
“cygnetscada.com;” “scada;” “visual;” “software;” “oil;” and “gas, to avoid
references to Complainant, yielded 959,000 third party results1. Examples
include: CygnetTheatre.com; CygnetRestaurant.com; CygnetEnterprises.com;
CygnetStudios.com; and many more. Google results annexed as Exhibit 2. There
are also 15 active pending and registered U.S. trademarks incorporating the
word “cygnet,” for a wide variety of goods and services such as: aquatic
herbicides; children’s books; computer consultations; scientific instruments;
wine; jewelry; financial services; surgical clamps; nutrition consulting; pool
water pumps; computer programs; and jukeboxes.
Respondent
purchased the disputed domain name
in October 2001, more than eight years ago because it incorporated a common
word to which it believed no party could claim exclusive rights.
Respondent denies
that it registered the disputed domain name with Complainant’s trademark in mind and submits that it had no
knowledge of Complainant, its web site, its business name or trademark when it
registered the domain name. Respondent further denies that it registered the disputed
domain name with the intent to sell to
Complainant, to disrupt Complainant’s business, or to confuse consumers seeking
to find Complainant’s web site. Respondent also denies that it registered the disputed
domain name to prevent Complainant from
owning a domain name incorporating its trademark.
Respondent has
been registering common word domain names for investment and development, since
1997, long before the advent of pay-per-click advertising, and long before
there were domain name parking services. Respondent registered common word
domain names in the belief that they best fulfill the purpose of a domain name
which is to be easy to remember. While Respondent has hosted the disputed
domain name at a number of domain name
parking services, such as Domain Sponsor and HitFarm, Respondent’s purpose in
registering domain names was not to park them.
Respondent submits
that “cygnet” is a common English word in the dictionary meaning “a young
swan.” The registration of domain names that contain common words are
permissible on a first-come,
first served basis, and such registration establishes the Respondent’s
legitimate interest, provided the domain was not registered with a trademark in
mind. National Gardening Association, Inc. v. CK Ventures, No. 1294457 (NAF
Feb. 16, 2010) (“common words and descriptive terms are legitimately subject to
registration as domain names on a first come, first-served basis”), quoting
Zero International Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000).
CNRV, Inc. v. Vertical Axis, Inc., No. 1300901 (NAF May 3, 2010)(legitimate
interest “[if] the domain names have been registered because of their
attraction as dictionary words, and not because of their value as trademarks”)
quoting Landmark Group v. DigiMedia.com, L.P., FA 285459 (NAF Aug. 6, 2004);i Canadadrugs.com et al.
v. ASM Bioventure, No. 568743 (NAF Nov. 29, 2005)(“disputed domain name name is comprised of common terms and
geographic identifiers, “Canada,” and “drug(s)” which are descriptive.”) ii
Baccus Gate Corp. et al v. CKV et al, No. D2008-0321 (WIPO May 20, 2008)(Legitimate interest established where domain is registered
based on “generic value of the word.”).iii C Brewer
and Sons Ltd. v. Vertical Axis, Inc., No. D2009-1759 (WIPO April 11, 2010)(“in general it is inherently more likely that a respondent
may have a legitimate interest in using a more descriptive domain name.”)
quoting Exotiq Properties Ltd., v.
David Smart, No. D2009-1672 (WIPO Jan. 25, 2010).
Respondent further
submits that it is significant that Complainant’s mark is a common dictionary
word subject to substantial third party use. There are close to one million
third party uses of the word “cygnet,” in connection with swans, for a theatre
company, an aerospace company, a
restaurant, studios, etc. There are also 15 third party U.S. registered
trademarks incorporating “cygnet,” for a wide variety of goods and services
such as: aquatic herbicides; children’s books; computer consultations;
scientific instruments; wine; jewelry; financial services; surgical clamps;
nutrition consulting; pool water pumps; computer programs; and jukeboxes. There
are also 5 Canadian trademarks incorporating “cygnet.” The numerous third party
uses of the term “cygnet,” further demonstrates that
“cygnet” is a word and not subject to exclusive use by Complainant. The Panel
should, therefore, conclude that Respondent has a legitimate interest in the Disputed domain name.
See e.g.Energy Source Inc. v. Your Energy Source, Case No. 96364 (NAF Feb. 19,
2001)(“[r]espondent has persuasively shown that the domain name is comprised of
generic and/or common descriptive terms, and, in any event, is not exclusively
associated with [c]omplainant’s business”).
Respondent denies
that the disputed domain name
was registered with Complainant’s trademark in mind. Respondent submits that to
the contrary, the evidence demonstrates that Respondent registered the disputed domain name because it incorporates a common word for a young swan. The evidence is
that Respondent has been acquiring common word and descriptive term domain
names since 1996. Respondent’s pattern of registration bolsters Respondent’s
position that it registers domain names based on the words they incorporate,
not because the word happens to be similar to the trademark of another entity.
Cf. C Brewer and Sons Ltd. v. Vertical Axis, Inc., No. D2009-1759,
supra. (Legitimate interest finding in connection with
the domain name wallpaperdirect.com supported in part by “the fact the
Respondent has registered so many domain names which include the words ‘wallpaper’
or ‘direct’”).
Respondent submits
that its claim to have a legitimate interest in the domain name is bolstered by
the fact that Respondent uses the disputed domain name to post pay-per-click advertising links
related to the descriptive meaning of the dsputed domain name, as well as generic links.
Respondent argues
that Complainant is simply wrong that Respondent’s use of the disputed
domain name in this manner is illegitimate,
citing C. Brewer and Sons Ltd. v. Vertical Axis, Inc., D2009-1759 supra.
(“there is nothing under the Policy which prohibits such conduct, and there
have been several decisions in which it has been held that operation of
pay-per-click websites can amount to a bone fide offering of goods and
services.”); See also Roderick W. Accetta v. Domain Admin et al., No. 826565
(Jan. 2, 2007).v (use of “domain name to operate a pay-per-click search engine
is a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i)”); Dial-a-Mattress Operating Corp. v. Ultimate Search, No.D2001-0764
(WIPO Sept. 26, 2001);vi Etam, plc v. Alberta Hot Rods, D2000-1654 (WIPO Jan.
31, 2001);vii GLB Servicos Interativos S.A. v. Ultimate Search, No. D2002-0189
(WIPO May 29, 2002).viii The Landmark Group v. Digimedia L.P., No. 285459 (NAF
Aug. 6, 2004);ix Target Brands, Inc. v. Eastwind Group, supra.; Sweeps Vacuum
& Repair Center, Inc. v. Nett Corp., No. D2001-0031 (WIPO Apr. 13, 2001).
Respondent submits
that one sole pay-per-click link on its website does not represent an intent to
confuse and misdirect consumers. In any event, the links do represent a
manifestation of Respondent’s intent since Respondent did not select them. They
were entirely automated. As held in Mariah Media Inc. v. First
Place Internet Inc. No. D2006-1275 (WIPO Dec. 6, 2006) (appearance of
links created by a third party domain monetization service does not constitute
bad faith on the part of the domain owner where they are unintended by
the domain name owner). See also
Aquascape Designs, Inc., supra. Aquascape Designs, Inc. v. Vertical Axis,
Inc.et al., No. 629222 (NAF Mar. 7, 2006)(finding of legitimate interest
notwithstanding that pay per click links related to complainant’s services
appeared on disputed domain name
name web site.).
Respondent argues
that to the contrary, its use of the disputed domain name to display pay-per-click links constitutes
use of the disputed domain name
in connection with a bona fide
offering of goods and services, which establishes Respondent’s legitimate
interest.
Respondent states
that Complainant, through its CEO sent an email to Respondent inquiring to
purchase the disputed domain name
and argues that the approach amounts to an acknowledgement of Respondent’s
legitimate interest in the disputed domain name, citing Prom Software, Inc. v. Reflex Publishing, Inc., No. D2001-1154
(WIPO Mar. 4, 2002) where the complainant offered to purchase the respondent’s
domain name. In finding a legitimate interest and denying the complaint, the
Panel stated that the complainant had failed to meet its burden of demonstrating
that the respondent has no right or legitimate interest in the domain name and
the complainant had actually established the apparent legitimacy of the
respondent's interest. Respondent further argues that the email exchange
between the principals of the two companies, initiated by Complainant,
unequivocally shows both that Complainant was well aware that it had no
entitlement to the domain name.
Respondent submits
that Complainant’s inquiry about purchasing the disputed domain name therefore constitutes a tacit
acknowledgement of Respondent’s legitimate interest in the disputed
domain name.
Accordingly,
Respondent submits that it has demonstrated that it has rights and a legitimate
interest in the disputed domain name and the Complaint must, therefore, be dismissed.
Respondent submits
that it registered and is using the disputed domain name in good faith.
Respondent argues that there is absolutely no evidence that Respondent targeted
the mark, nor is there a basis for inferring such intent. As one would expect
of a common word, there is tremendous third party use of the word “cygnet.”
An advanced Google
search for “cygnet,” excluding the terms “cygnetscada.com;” “scada;” “visual;”
“software;” “oil;” and “gas”, to avoid references to Complainant yielded
959,000 third party results.
Examples range
from an aerospace company to a
The registration
of the disputed domain name was
entirely in good faith based on the fact that it incorporated a common word
meaning a young swan, and was thus desirable. Respondent has registered
numerous domain names incorporating common words, including the names of birds
and animals, as is the case with the disputed domain name and numerous other common words as domain
names as listed above.
Respondent refutes
Complainant’s allegations that Respondent’s use of the disputed domain
name to post pay-per-click
advertisements establishes bad faith use by Respondent. There is no evidence
that any links have ever appeared on Respondent’s web site for third parties
selling goods and services similar to the goods and services covered by
Complainant’s trademark, i.e., software for the gas and oil industry. Links
that have appeared most commonly have been generic in nature (travel,
financial, health and beauty, insurance, shopping, etc.) or related to swans.
Some links have appeared which are related to the general category of software.
However, none were related to Complainant’s software for the oil and gas
industry. Moreover, the displayed links were auto-generated by a third-party
domain name parking service over which Respondent had no control and, thus, the
links do not represent Respondent’s intentions. Not only does the use of a
domain name to post pay-per-click links fail to establish bad faith
registration and use, such use has been found to establish a Respondent’s
legitimate interest under the Policy on numerous occasions.
Respondent accepts
that in 2005, almost 5 years ago, an isolated link appeared which was a pay-per-click advertisement for Complainant however
Respondent denies that the event constitutes bad faith use under the Policy
because the advertisement was directing consumers directly to Complainant. Respondent
argues that it is hard to understand how a link to Complainant’s business
(likely resulting from Complainant purchasing the Google Adwords keyword
“cygnet,”) is illegitimate.
Respondent submits
that other software links that appeared on its web page are not related to
Complainant’s business in any way as they are not directed to or related to the
oil and gas industry to which Complainant markets its software. In addition,
there are third party software companies also known as Cygnet.
Respondent argues
that bad faith use under the Policy arises where there is an intention to
confuse and misdirect consumers. There were many other links on that page,
including “Knox Swans;” “How to Keep Swans;” “Animal wallpaper;” and “Russ
Stuffed Animals.” Complainant’s argument that one link for their software
product among a hodgepodge of other links, including those related to “swans,”
constitutes a bad faith intent on Respondent’s part is patently absurd and
disingenuous. The likely reason a sponsored advertisement for Complainant’s
business appeared is that Complainant placed a Google Adwords bid for the
keyword “cygnet”, and authorized Google to syndicate this ad across Google’s
partner network, which at the time included the disputed domain name. Complainant’s ad presumably would also have
appeared in connection with a search on Google.com for the term “cygnet.”
A single,
isolated, unintended non-misleading link certainly does not support a finding
of bad faith registration and use under the Policy. Even if it were bad faith,
this single act would not retroactively convert an otherwise good registration
into a bad faith registration.
Respondent accepts
that it is true, as Complainant alleges, that Respondent, strictly as a
courtesy and without admitting any wrongdoing, agreed to remove the
pay-per-click links from the web site following receipt of a cease and desist letter from Complainant. Respondent also accepts that
certain links subsequently reappeared on its website but explains that this is the
result of a misunderstanding. Respondent hosted the disputed domain name with a company known as Above.com. Above.com
is a company that rotates its client’s domain names through several domain
parking services. At the time Respondent offered to remove the advertising
links the disputed domain name
was hosted with Domain Sponsor. Respondent had forgotten that the disputed
domain name was on the Above.com
service and believed erroneously that he only needed to instruct Domain Sponsor
to remove the links. For this reason, when Above.com cycled the disputed
domain name through two other parking
sites, BigJumbo.com and Skenzo.com, links appeared. As Respondent’s intention
was to remove all advertising links, the inadvertent appearance of some
advertising links was not a manifestation of Respondent’s intent and, thus, not a bad faith act on its part. Respondent adds that as
noted above, the use of a domain name to display pay-per-click ads is entirely
permissible and legitimate under the Policy.
Respondent states
that its offer to remove the links was made with an express statement that
Respondent was not admitting any wrongdoing, and there was no wrongdoing to
admit and adds that the links that have appeared at Cygnet.com have
overwhelmingly not been related to the goods and services marketed under Complainant’s Cygnet mark.
Respondent states
that in order to prove bad faith registration of a common word domain name, the
Complainant must prove that Respondent registered the disputed domain
name with the intent to specifically
target its mark.
Respondent argues
that because of the substantial third party use of the term, it cannot be
assumed that Respondent targeted Complainant’s trademark. Complainant needs to
present evidence of such intent, none of which has been produced -- because
there is none. The fact is that the only target of Respondent’s registration
was the common word, “cygnet.” Not only does that fail to support a finding of
bad faith registration, such registration in and of itself, establishes
Respondent’s legitimate interest.
Respondent submits
that the fact that Complainant waited more than 8 years after Respondent
registered the disputed domain name
– and two years after its CEO tried to buy it -- to bring this action raises an
inference that Complainant did not truly believe Respondent engaged in bad
faith registration and use of the domain. Complainant attempted to purchase the
disputed domain name long before
the initiation of this dispute.
In March 2008, Complainant’s President and CEO sent an inquiry attempting to
purchase the disputed domain name.
Respondent argues that an offer to purchase a domain name made outside of the
context of a settlement is a tacit acknowledgement of a respondent’s legitimate
interest in the domain name and therefore Complainant’s purchase inquiry is a recognition of Respondent’s legitimate interest in the disputed
domain name. Respondent points out that
Complainant’s President and CEO did not raise any trademark claim when
initiating the purchase inquiry.
Respondent objects
to the fact that Complainant is first raising a legal claim two years after its
failed purchase attempt. Respondent has not engaged in bad faith registration
or use. There is absolutely no evidence Respondent acquired the disputed
domain name with Complainant’s
trademark in mind. As alleged in the Complaint, and indicated in Complainant’s
Exhibit 11, in 2005, almost 5 years ago, an isolated link appeared on Respondent’s web site which was a
pay-per-click advertisement for Complainant that appears to have led directly
to Complainant’s web site. Accordingly Respondent submits that the Panel should issue a decision
denying the Complaint.
There is
absolutely no evidence of bad faith registration or use. Respondent did not
register the disputed domain name
with Complainant’s trademark in mind and had no knowledge of Complainant, its
web site, its business name or trademark when it registered the domain
name. Respondent did not register the disputed
domain name with the intent to sell to
Complainant, to disrupt Complainant’s business, or to confuse consumers seeking
to find Complainant’s web site. Respondent
did not register the disputed domain name to prevent Complainant from owning a domain name incorporating
its trademark.
While Respondent
has hosted the disputed domain name
at a number of domain name parking services, such as Domain Sponsor and
HitFarm, Respondent’s purpose in registering domain names was not to park them.
Respondent has been registering common word domain names for investment and
development, since 1997, long before the advent of pay-per-click advertising,
and long before there were domain name parking services. Respondent registered
common word domain names because it believes they best fulfill the purpose of a
domain name which is to be easy to remember.
“Cygnet” is a common dictionary word. Where a complainant’s mark is a common word with substantial
third party use, as it is here, the complainant must proffer evidence that
demonstrates that respondent has specifically intended to confuse consumers
seeking out Complainant. There is no
such proof here. In Drew Bernstein v. Action Advertising,
Inc., No. D2000-0706 (WIPO Sept. 28, 2000) the panel explained: the term "lip service"
used in the respondent’s domain
name is not an arbitrary or coined term
nor a distinctive trademark, but a common English phrase susceptible of more than one meaning or connotation, which
can be and is used in many commercial contexts and for this reason, the
Panel found that the evidence
was insufficient to establish bad faith
registration and use. See also, Canned Foods, Inc. v Ult. Search Inc., No. FA
96320 (NAF Feb. 13, 2001) (“There are dozens of other enterprises that use the
term "Grocery Outlet," therefore one cannot conclude that Complainant
must necessarily be the special target);xii Lumena s-ka zo.o. v. Express
Ventures LTD, Case No. 94375 (NAF May 11, 2000)(“no direct evidence that
Respondent registered the [generic] domain name with the intent of capitalizing
on Complainant’s trademark interest”).Ultrafem, Inc. v. Warren Royal,
No. 97682 (NAF Aug. 2, 2001)(“
Complainant cannot assert an exclusive right over a domain name that is a
common, generic term.”).There is no such evidence here. See also
Canadadrugs.com Partnership et al v. ASM Bioventure, No. 568743 (NAF Nov. 29,
2005)(“Respondent did not register the
<canadadrugsonline.com> domain name in bad faith because Complainant's
mark is comprised of common terms.”). As one 3-member panel recently noted, the
mere fact that a complainant has a trademark for a descriptive term does not
prohibit the registration of domain names incorporating that term. National
Gardening Association, Inc. v. CK Ventures, Inc., No. 1294457 (NAF Feb. 16,
2010)(“Complainant may have two trademark registrations containing the words
GARDENING WITH KIDS but that does not mean that these are not common words.”)
The fact that
there are numerous entities using the disputed domain name and others
who value this domain further
demonstrates that Respondent did not have Complainant’s trademark in mind, and
that the value of the disputed domain name does not derive from Complainant’s trademark. Respondent has received
several purchase inquiries from entities, including other trademark holders,
who have made opening offers in amounts ranging from $1,000 to $10,000.
The link on
Respondent’s site in 2005 that related to Complainant’s business was
auto-generated and, thus, does not constitute evidence that Respondent acted in
bad faith, i.e. they do not reflect Respondent’s intent. Mariah
Media Inc. v. First Place Internet Inc., supra.
Publicly available archived screenshots of Respondent’s web site demonstrate
overwhelmingly that the links on Respondent’s web site have had nothing to do
whatsoever with Complainant’s trademark over the course of eight years. In any
event, the link to Complainant’s web site, as well as other software links
unrelated to Complainant’s business, appeared years after the Disputed domain name
was registered. Accordingly these links are irrelevant in determining
Respondent’s mindset in when it acquired the Disputed
domain name. See Intuit Inc. v. Nett
Corp., No. D2005-1206 (WIPO Feb. 20, 2006).(“The earliest evidence that could
possibly amount to bad faith use is so long after registration that it cannot
outweigh the evidence tending to show good faith registration”). See also
Passion Group Inc. v. Usearch, Inc., eResolution case AF-0250; followed in Viz
Communications, Inc., v. Redsun et al, No. D2000-0905 (WIPO
Dec. 22, 2000); Yoomedia Dating
Limited v. Cynthia Newcomer / Dateline BBS, No. D2004-1085 (WIPO Feb.
22, 2005).
Respondent submits
that it registered the domain name in good faith and had no malicious intent
with respect to the use of the domain name either. Respondent further submits
that even if the links are deemed a bad faith use, the Complaint should nevertheless
be denied because there is no evidence of bad faith registration. The Motley Fool, Inc. v. Domain Works, Inc., No. D2006-1625
(WIPO Mar. 20, 2007)(to prove bad faith the original
domain registration must be in bad faith).
Complainant’s
action and its inaction demonstrate it did not truly believe Respondent has engaged
in bad faith registration. First, Complainant did not initiate these
proceedings until more than eight years following Respondent’s acquisition of
the Disputed domain name. Complainant was obviously aware the domain was registered to
Respondent as early as 2001 but failed to do anything for eight years.
While laches is
not generally recognized under the Policy, such a long delay in taking action, can raise an inference that the Disputed
domain name was not registered and used
in bad faith. C. Brewer and Sons Ltd. v.Vertical Axis, Inc., D2009-1759 supra.
There, the Complainant had delayed bringing a complaint for 8 years. The Panel
stated that: the Complainant has not been assisted by its delay in filing the
Complaint. The delay, together with the lack of evidence of goodwill and
reputation in the Trade Mark when the disputed domain name name was registered, and the Respondent’s
assertion that it had never heard of the Complainant when it registered and
commenced use of the disputed domain name name, gives rise to the inference that the disputed domain name name has not been registered and used in bad
faith.
As the Panel
stated in the recent decision in Vanguard Trademark Holdings USA LLC v. Nett Corp.,
No. 1262162 (NAF July 26, 2009) In reaching this decision this Panel accepts
that the doctrine of laches does not apply in the UDRP, but in the present case
there appears to be some merit in Respondent’s argument that if Complainant
were confident in its allegation of bad faith registration of the domain name
it would not have delayed so long in bringing this Complaint. See also Rolling
Stone LLC v. Robbins Carnegie Inc., No. 318048 (NAF Oct. 14, 2004)(delay could indicate that Complainant“ did not seriously
believe” that Respondent had violated the Policy.”) see also Bosco Prod., Inc.
v. Bosco email Servs., No. 94828 (NAF June 29, 2000) (“Without determining if
the passage of considerable time would alone bar Complainant from relief in this
proceeding, the Panel notes that Complainant does not explain why it has waited
nearly four years to try and resolve [the domain name dispute].”); New Piper
Aircraft, Inc. v. Piper.com, supra. (Complainant’s failure to initiate a suit
in over two years indicated that Complainant did not believe that Respondent
intended to attract customers through confusion). Like these cases, the panel
should find that Complainant’s silence for over 8 years, followed by
negotiations to purchase the domain name, raises the inference that Complainant
did not believe Respondent’s registration and use of the Disputed domain
name was in bad faith.
Finally, in citing
the early UDRP case of J. Crew International, Inc. v. crew.com, D2000-0054
(WIPO April 20, 2000) from the early days of the UDRP Complainant has neglected
to mention that there was a very strong dissenting opinion in this decision
that argued emphatically that the two panelists finding for the Complainant
were not applying the policy correctly. Gervaise Davis, the dissenting
panelist, stated: "In my judgment, the majority’s decision prohibits
conduct which was not intended to be regulated by the ICANN Policy. This
creates a dangerous and unauthorized situation whereby the registration and use
of common generic words as domains can be prevented by trademark owners wishing
to own their generic trademarks in gross. I cannot and will not agree to any
such decision, which is fundamentally wrong." Respondent submits that Mr.
Davis’ dissenting view has since become the prevailing view among UDRP panels.
Respondent’s activities have been reviewed by numerous other UDRP panels. The
vast majority have found that Respondent’s activities of registering common
word and descriptive domains comply with the UDRP policies even if other
entities have registered trademarks for a similar term. Shoe Land Group LLC v.
Telepathy, Inc. et al, No. 1255365 (NAF June 9, 2009); HM Publishers Holdings
Ltd v. Telepathy, Inc., No. D2002-0658 (WIPO Sept. 27, 2002);
Geometric Sofware Solutions Co. Ltd. V. Telepathy, Inc., No. D2007-1167
(WIPO Nov. 8, 2007); General Machine Products Co., Inc. v. Prime Domains (a/k/a
Telepathy.com), No. 92531 (NAF Mar. 16, 2000); U.S. Nutraceuticals, LLC v.
Telepathy, Inc., No. 365884 (NAF Jan. 17, 2005); Koninklijke KPN N.V.
v.Telepathy Inc., Case No. D2001-0217 (WIPO May 7, 2001).
Accordingly,
because Complainant has failed to establish that Respondent registered or used
the disputed domain name in bad
faith, the Complaint must be denied.
Respondent finally
submits that Complainant has abused the Policy by bringing a Complaint wholly
without merit. The disputed domain incorporates a common word subject to
substantial third party use, and third party trademarks. There is absolutely no evidence that
Respondent registered the disputed domain name with Complainant or its trademark in mind. Respondent argues that Complainant “knew or
should have known at the time it filed the Complaint that it could not prove
one of the essential elements required by the Policy.” Carsales.com.au
Ltd. v.
Accordingly, Respondent
submits that the Panel should find that Complainant has engaged in reverse
domain name hijacking.
C. Complainant’s Additional Submissions
In
detailed Additional Submissions Complainant accepts that Respondent is
correct that registering a domain name for its descriptive or generic value may
constitute a legitimate interest for the purposes
of ¶ 4(c) of the Policy, but submits that this proposition is true only if the disputed domain name (1) has not been
registered because of its value as a trademark and (2) is being used solely in connection with its descriptive or
generic meaning. See Landmark Group v. DigiMedia.com, L.P., FA 285459 (NAF Aug. 6, 2004) (pay-per-click landing pages are
legitimate if “the domain names have
been registered because of their attraction as dictionary words, and not because of their value as trademarks”). See
also mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc.,
D2007-1141 (WIPO Nov. 30, 2007) (if the pay-per-click links are based on the trademark value of the domain names, “the trend
in UDRP decisions is to recognize that such practices generally do constitute abusive cybersquatting”); Asian
World of Martial Arts Inc. v. Texas International Property Associates, D2007-1415 (WIPO Dec. 10, 2007) (disputed domains ordered transferred because the links on registrant’s site
were clearly based on the trademark value of the disputed domains as they were not about generic products that offered
professional force strength which
registrant argued was the commonly understood meaning of “proforce” as a
generic word for “professional
force,” meaning “strength”; rather, registrant’s site was focused on targeted
advertising and promotion of “karate”- and “martial arts”-related
products that were exactly the kinds of products sold by complainant under the
trademarks); Ustream.TV, Inc. v. Vertical Axis, Inc., D2008-0598 (WIPO July 29, 2008) (disputed domain
ordered transferred; even if “you stream” was descriptive of some services, the content of registrant’s site belies
its argument that it is using the disputed
domain solely in connection with its descriptive meaning because there is no
descriptive relationship between the
disputed domain <ustream.com> and conference call services, computer science training, and
business continuity services, all of which were advertised on registrant’s
site).
Similarly,
in casu, the fact that the term
“cygnet” may mean “a young swan” does not per
se give Respondent rights or
legitimate interests in the disputed domain name. Respondent must be using the disputed domain name solely in connection with
its descriptive or generic meaning, which is clearly not the case. In fact,
Respondent has admitted that the site to which the disputed domain name
resolves features pay-per-click
links for non-swan related categories such as travel, finances, health and
beauty, insurance, and shopping.
Therefore, it is clear that Registrant has not and is not using the disputed domain name solely in
connection with the descriptive or generic meaning of the term “cygnet.” Accordingly, it is reasonable to infer
that Registrant did not acquire the domain name based on a good faith belief that its value derived from the term’s
descriptive or generic qualities.
As
noted by previous administrative panels, “Paragraph 2 of the Policy implicitly
requires some effort to avoid
registering and using a domain name corresponding to the trademark of
another...[if a registrant] has not
indicated that it [has] explored the possibility of third-party rights in any
way before registering the disputed
domain name, [the registrant cannot form] the requisite good faith belief by closing its eyes to whether the domain
name was identical or confusingly similar to the trademark of another.” HSBC Finance Corporation v. Clear Blue Sky
Inc., D2007-0062 (WIPO June 4,
2007). Here, Respondent has not demonstrated that it registered the disputed
domain name because of its attraction
as a dictionary word or as a descriptive or generic term, therefore, Respondent
has no rights or legitimate interests
in the disputed domain name.
Furthermore,
the content of Registrant’s site does not reflect a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed
domain name. Rather, the disputed domain name is being used for pay-per-click pages at which advertisements are
displayed keyed to the term “cygnet,”
with revenue from those advertisements paid to Registrant. As prior
administrative panels have held, it is well established that pay-per-click
pages built around a trademark, as contrasted with pay-per-click pages built
around a dictionary word and used solely in connection with the merely descriptive or generic meaning of the word, do
not constitute a bona fide offering
of goods or services pursuant to ¶
4(c)(i) of the Policy, nor do they constitute a legitimate non-commercial or
fair use pursuant to paragraph 4(c)(iii). See mVisible Technologies, Inc v.
Navigation Catalyst Systems,
Inc.,
supra; Asian World of Martial Arts Inc. v. Texas International Property
Associates, supra.
Complainant
states that the fact that Complainant’s president made an inquiry to purchase
the disputed domain name is not per se an
acknowledgment of Respondent’s right or legitimate interest in the disputed domain name. In fact, it is common
for trademark owners to inquire about purchasing a disputed domain name as a
means to quickly resolve a domain dispute. If the registrant agrees to sell the
disputed domain name for less than
the cost of filing a UDRP or other action, it is more economically feasible for the trademark owner to purchase the domain
name compared to going through with a UDRP or other action. The facts of this case are distinguishable from that of Prom
Software, Inc. v. Reflect Publishing,
Inc., D2001-1154 (WIPO Mar. 4,
2002), cited by Registrant. In Prom Software, the complainant sought to acquire the domain name <prom.com> from the registrant who was using it to resolve to a site in connection with the
descriptive meaning of the word, i.e., school prom-related links as well as other content of general interest
to teens. Therefore, the complainant was trying to acquire a disputed domain
name in which it likely had no better rights than the registrant. These are not
the same circumstances here as Registrant does not have any right or legitimate
interest in the Domain Name because Registrant is not using the Domain Name in
connection with the descriptive or generic meaning of the term “cygnet.”
Consequently, contrary to Registrant’s assertions, Complainant’s president’s inquiry does not
constitute a tacit acknowledgment of Registrant’s legitimate interest in the Domain Name but,
rather, was an informal way for Complainant to have possibly resolved the dispute without resorting
to a UDRP or other action.
D. Respondent’s Additional Submissions
In detailed Additional Submissions Respondent inter
alia re-asserts that it did not question the enforceability of Complainant’s trademark, stating that it “did not
take a position regarding the enforceability of Complainant’s trademark.” Respondent simply indicated “the existence of
third party trademarks” to
demonstrate the weakness of Complainant’s trademark and the fact there is no
basis to infer Respondent targeted its trademark, since Complainant’s trademark
was one of several that incorporate
the common word “cygnet.”
Respondent
re-iterates that its legitimate
interest is, per se, established upon
registration of a domain name
incorporating a common word, where there is no evidence Respondent targeted Complainant’s trademark. The evidence demonstrates that the disputed domain
name was one of many common word
domain names registered by Respondent incorporating the names of birds and other animals. There simply is no
evidence demonstrating Respondent registered the disputed domain name with
Complainant’s trademark in mind, or any trademark in mind. In any event, it is not Respondent who must prove it
registered the disputed domain name based on its dictionary meaning, it is Complainant who has
the burden of proof of demonstrating the disputed domain name was registered to target its trademark. Complainant
has failed to meet this burden.
Complainant argues
that the offer by its President to buy the disputed domain was simply an offer to settle a dispute and not a
recognition of Respondent’s right to the domain name. Complainant argues that the offer was made as an
informal way to resolve the case in an attempt to avoid filing a UDRP or other action. The problem with Complainant’s
argument is that the President made
the purchase inquiry in 2008 - two years ago. If Complainant truly believed it had a claim at the time it made the purchase
inquiry, it would have filed the UDRP after getting no reply to its offer. Instead, Complainant
waited two years. Such a wait raises an inference that Complainant did not believe it had a valid claim.
Vanguard Trademark Holdings
FINDINGS
The domain name <cygnet.com> (the “Domain Name”) is the subject of this Complaint (ICANN Rule 3(b)(vi)).
The registrar of the Domain Name is
Moniker Online Services, LLC (“Registrar”).
Complainant owns U.S. Trademark
Registration No. 2,079,850 for CYGNET for “personal computer software for local
and wide area local networks used to construct business applications for
manufacturing, utilities, financial, transportation, and communications
industries,” with rights dating back to the June 22, 1995, application filing
date. In addition, Complainant has been
using the CYGNET Mark in connection with its software solutions and services
since December 1, 1995. Attached as Ex. 7 is a copy of the
Complainant also owns the following CYGNET-based domain names: cygnet.us; cygnetcentral.net; cygnetcomplete.com; cygneteop.com; cygnetetm.com; cygnetrealtime.com; cygnetrt.com; cygnetr-t.com; cygnetscada.com; cygnetscada.net; cygnetsoftware.ca; cygnetsoftware.net; cygnetsw.com; cygnetsystems.com; cygnetsystems.info; cygnetsystems.mobi; cygnetsystems.net; cygnetsystems.org; cygnetsystems.us; cygnetuserforum.com; cygnetusergroup.com; cygnetusergroupforum.com; cygnetusersgroup.com; cygnetusersgroup.net; cygnetusersgroup.org.
The disputed domain name was registered on June 28, 2001, five and a half years after Complainant began using the CYGNET Mark.
Respondent is a company based in
At all material times Respondent has arranged for the
disputed domain name to resolve to a search engine and Respondent receives
pay-per-click fees based on the number of visitors who click on the paid
advertisements and pop-ups generated from these searches.
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.
This Panel finds that Complainant has
established rights in the trademark CYGNET through its registration and use of
the mark in trade in relation to its software business.
This Panel further finds and that the
disputed domain name <cygnet.com> is identical to Complainant’s trademark
because it is well accepted that when comparing a domain name and a trademark
under the Policy, the .com domain extension may be ignored.
In the circumstances Complainant has
satisfied the first element of the test as set out in Policy ¶ 4 (a)(i).
This Panel accepts Complainant’s submissions that
the fact that Complainant’s president made an inquiry to purchase the disputed
domain name is not per se an acknowledgment of Respondent’s
right or legitimate interest in the disputed
domain name. This Panel accepts that a party may for
commercial reasons engage in negotiations to purchase a disputed domain name
without conceding that a registrant has a legitimate interest in the
registration.[1]
In Overview of WIPO Panel Views on Selected UDRP
Questions ¶ 2.2 the
question is posed: “Does a respondent automatically have a legitimate interest
in a domain name comprised of a generic (dictionary) word(s)?”
Both parties accept that the word “cygnet” is a
generic (dictionary) word. Complainant has adapted the word as a service mark.
Respondent states that it has chosen to register the word, along with many
other generic (dictionary) words because of its inherent value as an Internet
domain name without any reference to the goodwill of Complainant’s trademark.
The analysis
of the consensus of panelist’s views is as follows:
“Consensus view: If the complainant makes a prima facie case that the respondent has no
rights or legitimate interests, and the respondent fails to show one of the
three circumstances under Paragraph 4(c) of the Policy, then the respondent may
lack a legitimate interest in the domain name, even if it is a domain name
comprised of a generic word(s). Factors a panel should look for when
determining legitimate use would include the status and fame of the mark,
whether the respondent has registered other generic names, and what the domain
name is used for (a respondent is likely to have a right to a domain name
"apple" if it uses it for a site for apples but not if the
site is aimed at selling computers or pornography).
Relevant decisions:
402 Shoes, Inc. dba Trashy Lingerie v. Jack Weinstock and Whispers Lingerie D2000-1223,
Transfer
Classmates Online, Inc. v. John Zuccarini, individually and dba RaveClub Berlin
D2002-0635,
Transfer
Emmanuel Vincent Seal trading as Complete Sports Betting v. Ron Basset D2002-1058,
Transfer
Owens Corning Fiberglas Technology, Inc v. Hammerstone D2003-0903,
Transfer
However: If a respondent is using a generic word to describe his product/business
or to profit from the generic value of the word without intending to take
advantage of complainant’s rights in that word, then it has a legitimate
interest.
Relevant decisions:
Allocation Network GmbH v. Steve Gregory D2000-0016,
Denied
Porto Chico Stores, Inc. v. Otavio Zambon D2000-0270,
Denied
Asphalt Research Technology, Inc. v. National Press & Publishing, Inc. D2000-1005,
Denied
Gorstew Limited v Worldwidewebsales.com D2002-0744
among others, Denied.”
In determining the issue of legitimate use in the present case, this Panel is
conscious that Complainant has not claimed or provided evidence that CYGNET is
a famous mark, Respondent has for many years registered other generic names, and there is no evidence that Respondent has
ever had any intention of taking advantage of Complainant’s rights in the
CYGNET mark.
This panel is satisfied that on the balance of probabilities, Respondent
registered and is using the disputed domain name to profit from the generic
value of the word “cygnet” without any reference to Complainant’s rights or
goodwill.
It follows that on the balance of probabilities, applying the consensus
view, Respondent has rights and legitimate interest in the domain name as it
claims.
In the circumstances Complainant has failed
to establish the second element of the test in Policy ¶ 4 (a)(ii) and the Complaint must fail.
For completeness, this Panel further finds that
Complainant has failed to establish that Respondent registered and used the
domain name in bad faith.
Respondent has provided by way of a statement
from the President of the Respondent and in submissions, an entirely credible
explanation as to how it came to decide upon and register the disputed domain
name. Respondent is engaged in an entirely legitimate business of trading in
domain names and in itself such activities do not constitute bad faith.
Respondent has provided evidence that the
word “cygnet” is widely used as a trademark and on the Internet by third
parties.
On the balance of the evidence, this Panel
rejects Complainant’s submission that the only plausible reason that
Respondent had to register and use the disputed domain name was to take unfair
advantage of the recognition associated with Complainant’s CYGNET mark by
diverting consumers from Complainant’s website to its parked site, and thereby
benefit from the confusion and diversion by receiving pay-per-click
commissions. Respondent chose and registered the domain name without any reference
to Complainant or its goodwill. There
are no circumstances indicating that Respondent registered the domain
name primarily for the purpose of selling, renting, or otherwise transferring
the domain name registration to Complainant or to a competitor of Complainant. When Complainant approached Respondent with
an offer to purchase the disputed domain name Respondent did not engage in
negotiations.
It is accepted by both Parties that a link to
Complainant’s website appeared on Respondent’s web page in the year 2005. In
the circumstances outlined above, this Panel accepts Respondent’s submission
that the single, isolated, unintended non-misleading link does not support a
finding of bad faith registration and use under the Policy.
Neither is there any evidence that Respondent registered the domain name in order to prevent Complainant from reflecting the mark in a corresponding domain name or to disrupt Complainant’s business in any way.
While there may be similar cases where a
domain name consisting of a dictionary word is registered to take predatory
advantage of the goodwill of the owner of a trademark as demonstrated by the
examples given in ¶ 2.2
of the Overview of WIPO
Panel Views on Selected UDRP Questions, this Panel is satisfied that this was not the case in casu.
There is no evidence that Respondent has intentionally
attempted to attract, for commercial gain, Internet users to its web site or
other on-line location, by creating a likelihood of confusion with
Complainant's mark as to the source, sponsorship, affiliation, or endorsement
of Respondent’s web site or location or of a product or service on your web
site or location. Complainant’s
trademark and the disputed domain name consist of a commonplace English
language word meaning “a young swan” and Respondent has accumulated a store of
domain names consisting of descriptive words including a number of bird and
animal names. The disputed domain name was chosen for this purpose and not to
target Complainant’s goodwill.
This Panel accepts
Respondent’s submission that it is not Respondent who must prove it registered
the disputed domain name based on its dictionary
meaning; it is Complainant that bears the burden of proof of demonstrating the disputed domain name was registered to target its
trademark. On the evidence in the present proceeding, Complainant has failed to
meet this burden.
This Panel finds it unnecessary to decide
this case on the basis of the claimed defense of laches on the part of Claimant.
That being said this Panel takes an inference from Complainant’s delay prior to
and subsequent to Complainant’s approach to Respondent with an offer to
purchase the domain name.
Reverse
Domain Name Hi-Jacking
While there is a number of factors indicating
that Complainant brought this application in the knowledge that it was unlikely
to succeed, in particular the delay in bringing this Complaint, this Panel is
reluctant to make a finding of reverse domain name hi-jacking given that
Complainant has long standing established trademark rights in the word CYGNET
and Respondent has no trademark rights in the word.
DECISION
As the Complainant has not established all three elements required
under the ICANN Policy, the Panel concludes that relief shall be DENIED.
James Bridgeman, Panel Chair
Honorable Ralph Yachnin, (Ret.), Neil Anthony
Brown, Panelists
Dated: June 25, 2010
SEPARATE DECISION BY THE HONOURABLE NEIL ANTHONY BROWN QC ON THE ISSUES
OF LACHES AND REVERSE DOMAIN NAME HIJACKING
Laches
Although
it has not specifically raised the defence of laches by name, Respondent has in
fact raised the defence that the Complainant’s inaction over several years
demonstrates that it did not truly believe Respondent had engaged in bad faith
registration, a defence that is akin to laches. In advancing its argument, the
Respondent has said that while laches is not generally recognized under the
Policy, such a long delay in taking action, over 8 years in the present case
from when the domain name was registered, can raise an inference that the
domain name was not registered and used in bad faith ; the Respondent cites the
decisions in C.Brewer and Sons Ltd
v.Vertical Axis , Inc D2009-1759 , Vanguard
Trademark Holdings USA LLC v. Nett Corp., No.126162 ( NAF July 26,2009) and
several others.
The
Complainant, in its supplementary submission, argues that laches is not a
defence in UDRP proceedings and that even if it were, in the present case there
have “only been two years” between the time when the Complainant first inquired
about buying the domain name and the time when the Complainant was filed, which
is not long enough to give rise to laches. Moreover, the Complainant argues, there
is no evidence that the Respondent has suffered prejudice from the delay.
As
the parties have thus joined issue on the question of delay and its
consequences, whether it is called laches or something else, it seems somewhat
artificial not to give a ruling on the issue, a ruling to which the parties are
entitled.
It
could then be noted that this panelist was part of a majority in one case that
felt that there is scope for looking again at the assumption that laches has no
part to play in UDRP proceedings , a decision that has been the subject of at
least one commentary at www.cyberlawonline.com. In Board
of Trustees of the
“Complainant’s delay in filing the Complaint
and Respondent’s Defense of Laches
At
the outset, the Panel believes it necessary to discuss Complainant’s
considerable delay in filing this case under the Policy. This is because Respondent raised the issue
of laches in both its 2008 correspondence to Complainant and in its Response to
the Complaint. The Panel also observes
that the applicability of laches under the Policy has garnered some, but not
much, commentary in prior cases.
As
a general matter in litigation, laches is a defense to some claims where the
plaintiff has unreasonably delayed pursuing his claim, and as a result of such
delay the defendant has suffered prejudice.
Unlike a statute of limitations, which attempts to draw a bright
temporal line between a time-barred claim and a timely claim, laches is a more
malleable doctrine, and often entails a deeper factual inquiry.
A majority of the Panel (Messrs. Badgley and Brown) is prepared to acknowledge the possible applicability, in appropriate and limited circumstances, of laches in a case under the Policy.
Rule 15(a) provides that “a panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In the
It has also been said that laches should not apply to cases under the Policy because UDRP cases are supposed to be streamlined and quick, and application of a laches defense entails too intensive a factual inquiry to lend itself to the celerity of the UDRP process. See, e.g., The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003‑0447 (July 1, 2003) (laches defense runs counter to the Policy’s objectives). That may be true in some instances, but in others, Messrs. Badgley and Brown believe, it is possible that disposition of the laches question might be no more difficult than disposition of other questions that routinely come before UDRP panelists. Again, a majority of the present Panel (Messrs Badgley and Brown) believes that, in appropriate and limited circumstances, a laches defense might be sufficiently clear based on the limited record, so that its application would not unduly complicate or prolong the UDRP process.
However, the considerable delay in bringing this case does
color the merits of the dispute. As has
been observed in prior cases, even if laches does not apply, delay may reflect
the strength, or lack thereof, of a complainant’s case. See, e.g., AIB-Vincotte Belgium ASBL,
AIB-Vincotte USA Inc./Corporation
Ultimately, the majority of the Panel (Messrs Badgley and Isenberg) does not decide this case on the basis of a laches defense. This is because, among other reasons, Respondent did not present any hard evidence of prejudice it suffered as a result of Complainant’s considerable delay.
Panelist Brown takes the view that whether the delay is properly characterized as laches or not, the considerable delay on the part of Complainant in bringing the Complaint militates against its success in this proceeding. It should be remembered that Respondent registered the Domain Name as long ago as August 7, 1995, which is 14 years before the Complaint was filed. Such an extreme delay calls for some explanation. Although Respondent’s attorneys squarely raised the issue in correspondence and in the Response and relied on it as a defense, and although Complainant filed a Supplementary Reply to the Response and had an opportunity to explain its delay, it did not do so and did not put forward any facts to explain either the delay or the consequences that Respondent sought to draw from it.
In particular, Panelist Brown notes that there was no explanation given as to why, after Complainant sent its first letter of demand to Respondent and was rebuffed, it then waited a further five years before renewing its siege, and then a further year before actually filing the proceeding. These extended delays could not help but have lulled Respondent into the sense that either Complainant had decided it had no claim, had abandoned or waived it, or had no confidence in it. Respondent could not help but have been encouraged by the delay to continue running its e-mail service and subsequently its website.
Accordingly, although there may be no evidence of actual financial prejudice suffered by Respondent and although the whole matrix may not be properly characterized as laches, in Panelist Brown’s view, the delay and lack of explanation for it strengthen Respondent’s case for a right or legitimate interest in the Domain Name and negate Complainant’s case that the Domain Name has been used in bad faith. That is so because the unchallenged evidence is that Complainant by inactivity encouraged Respondent to continue to use the Domain Name in the way in which Complainant knew it was being used.”
Those remarks seem to be appropriate to the present case and in some respects they mirror the present proceedings. The domain name was registered 8 years before the Complaint was filed, a considerable period of time, calling for an explanation both of the effluxion of time itself and how and when the Complainant first came to be aware of the domain name. More importantly, the Respondent’s legal representatives raised in the Response the delay in its consequences so far as the Respondent was concerned. This certainly called for an explanation from the Complainant for the overall delay and, as the Complainant’s case is that it did not know of the domain name until “in 2008”, an explanation as to why it waited from 2008 until 2010 to file the Complaint. The Complainant filed a supplementary submission, so it had ample opportunity to give its explanation, but the only one that was forthcoming was that it has “only been two years”, which is not long enough to give rise to concern, but two years is a long time in a domain name case. As to prejudice, the prejudice is that the Respondent has been allowed to build up a business by using the domain name and without any actual challenge from the Complainant.
Finally, it should be recalled that the Complainant’s case is that the Respondent registered
the domain name in bad faith by intentionally engaging in an act of deception by creating confusion in the public mind. Accordingly, the observations I made in Shoe Land Group LLC v. Development, Services c/o Telepathy Inc. No: FA0904001255365 (NAF June 9, 2009) seem to be appropriate in the present case, for the facts were similar. I said in that decision:
“Alternatively, the delay of almost two years since
Complainant evinced a desire to buy the domain name leads to the same result.
More particularly, it can hardly be said that Complainant stood by during those
periods of time believing that Respondent was actively siphoning off its
potential customers and yet doing nothing of substance about it. As the
panelist said in The New Piper Aircraft,
Inc. v. Piper.com, FA
94367 (NAF May 2, 2000), one of the 3
cases cited by Respondent on this issue,
“Complainant’s waiting two years to complain after being advised of the existence of the site indicates that Complainant did not believe that Respondent intended to attract internet users to its site through confusion.”
All of that being so, it is reasonable to conclude that there should be more debate on
recognizing laches, or at least unexplained delay, as a defence to a UDRP claim. In any event, on the facts of the present case, enough is known to justify the conclusion that the Complainant did not demonstrate or believe that the Respondent registered or used the domain name in bad faith.
Reverse
Domain Name Hijacking
It is true that the
reason relied on by the majority for finding against reverse domain name
hijacking, that “Complainant has long
standing established trademark rights in the word CYGNET and Respondent has no
trademark rights in the word” may be factors weighed in the balance to decide
the issue. But they cannot decide the issue by themselves. It is important that
a panel apply the words of the Rules, which require it to examine the
submissions and decide, by taking everything into account, whether the
Complaint was brought in bad faith or as a form of harassment. A complaint that
is brought with an excess of optimism will not necessarily have been brought in
bad faith or as a form of harassment.
But a claim which the Complainant must be
taken to have known was destined to fail, especially when part of its case is
that it was the Respondent who acted in bad faith, when there was never any
evidence at all to support that proposition, must be at risk of a finding of
reverse domain name hijacking.
In the present case, before the Complaint was
filed, the Complainant had apparently looked at the record of how the Respondent
had used the domain name. That was sensible, for the Complainant’s trademark
was an ordinary English word descriptive of a young swan and the domain name
adopted the same word . But any fair and reasonable
observer should have concluded from the results of that examination (or at
least from the parts of it that found their way into the evidence) that the
Respondent had not used the word in the narrow use for which it had been
registered as a trademark, but in the generic sense in which it was usually used
as an word in the English language.
Moreover, it had not targeted the Complainant,
its line of products or its area of activity, but had been running, in
substance, a cygnet, bird and general commercial website with links to swans
and even schwans, as well as the usual offerings of goods and services found on
so many websites. This must have been apparent before the Complaint was filed.
Even if it were not so apparent at that time,
it was certainly made apparent in the Response, supported as it was by 9 pages
of evidence of archived screenshots from the Respondent’s website. Despite
that, the Complainant persisted with its allegations and bolstered its case by
the additional argument that if it could find one “non-swan” link on the
Respondent’s website, this showed that the Respondent had no right to the
domain name. That was an argument that was not supported by any authority, was
contrary to the long list of decisions cited by the Respondent and was doomed
to failure, as it is clear that the Policy and the Rules look, not to minutiae
like occasional “non swan” links, but to the substance of what the Respondent
was doing with the domain name and whether it was acting in a bona fide manner. The overwhelming
substance of the use made of the domain name was for “swan” and bird links, links
to Australia and Tasmania, no doubt because of the historic town of Cygnet in
Tasmania, together with “ non-swan” links which are just as legitimate.
However, the point is that the domain name was clearly not being used to target
the Complainant or its business.
It was therefore apparent, before and after
filing the Complaint, that it would fail.
For those reasons it is appropriate to make a
finding of Reverse Domain Name Hijacking.
Neil Anthony Brown, Panelist
Dated: June 25, 2010
Click
Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum
[1] Panelist Brown’s view is that the
fact that the inquiry to buy the domain name was made is a factor that may be
taken into account to show that the Complainant in this case believed the Respondent had some
right or interest in the domain name, although the conclusion to be reached
about such inquiries will depend on the facts of an individual case.