VEDA GmbH v Future Media Architects, Inc. / com fma

NATIONAL ARBITRATION FORUM

DECISION

VEDA GmbH v. Future Media Architects, Inc. / com fma

Claim Number: FA1009001347931

PARTIES

Complainant is VEDA GmbH ("Complainant"), Germany. Respondent is Future Media Architects, Inc. / com fma ("Respondent"), represented by James E. Rosini of Kenyon & Kenyon LLP, New York, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <veda.com>, registered with MONIKER ONLINE SERVICES, INC.

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.

R. Glen Ayers and Anne M. Wallace as Panelists and Bruce E. O'Connor as Chair.

PROCEDURAL HISTORY

This decision is being rendered in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the National Arbitration Forum’s UDRP Supplemental Rules (the “Supplemental Rules”).

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 22, 2010; the National Arbitration Forum received payment on September 22, 2010.

On September 23, 2010, MONIKER ONLINE SERVICES, INC. confirmed by e-mail to the National Arbitration Forum that the <veda.com> domain name is registered with MONIKER ONLINE SERVICES, INC. and that Respondent is the current registrant of the name. MONIKER ONLINE SERVICES, INC. has verified that Respondent is bound by the MONIKER ONLINE SERVICES, INC. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the Policy.

On September 30, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 20, 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@veda.com. Also on September 30, 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 October 21, 2010.

A timely Additional Submission from Complainant was received and determined to be complete on October 25, 2010.

A timely Additional Submission from Respondent was received and determined to be complete on October 29, 2010.

On November 5, pursuant to Respondent's request to have the dispute decided by a three-member Panel, the Forum appointed R. Glen Ayers and Anne M. Wallace as Panelists and Bruce E. O'Connor as Chair.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A. Complainant

In support of its contentions, Complainant submits various documents.

Complainant is one of Europe's oldest IT consulting and software development firms. It was founded in 1977 and has since offered IT development services to an international clientele.

Complainant is the owner of a series of trademarks including the term VEDA (the "VEDA mark"), that have been registered with the European Union’s Office of Harmonization for the Internal Market (“OHIM”), Germany, with the German Patent and Trade Mark Office (“GPMA”), and with the World Intellectual Property Organization ("International"). Typical are CTM registration No. 001571967, dated 10 November 2001 and German registration No. 2,016,073 dated June 26, 1992.

The services covered by these registrations include:

Holding of seminars and training courses in computers and computer programs; consultancy and technical support related to computers and computer programs; computer programming, except in the field of games; computer program rental and leasing by licence; maintenance of computer programs.

The VEDA mark is being actively used for such services.

Identical or confusingly similar

The domain name in dispute <veda.com> is identical to the VEDA mark.

The disputed domain name is being used to forward the viewer to the Respondent's website using the domain name <fma.com> that offers substantially the same services as does Complainant under the VEDA mark.

At its website, Respondent describes itself as an "Internet development company with a global presence." Furthermore, Respondent advertises its web development services on its website. Respondent offers fundamentally identical services as Complainant in the field of IT development and is actively seeking partners for these services at its website.

The domain name in dispute is not associated with any content but is a pure redirect to Respondent's website using the domain name <fma.com>.

Rights or legitimate interest

Respondent offers no goods, services or even any individual content under the VEDA mark (sic - the disputed domain name), in that the domain name is exclusively used to forward any visitors to Respondent's website using the domain name <fma.com> and the business name "Future Media Architects." The services at this website and at other commercial websites linked to this website compete with Complainant's services.

Registration and use in bad faith

Respondent's use of the domain name is commercial. Respondent has engaged in a prolonged and documented pattern of bad faith domain name registrations, as evidenced by numerous (and cited) UDRP decisions.

Even though the VEDA mark is not registered at Respondent's offshore place of establishment on the British Virgin Islands, it is prudent to assume that Respondent was aware of Complainant and its rights upon obtaining the disputed domain name:

VEDA is a term that refers to ancient Sanskrit literature but has no meaning whatsoever in the field of IT services, other than Complainant's business and mark;

The VEDA mark is registered with WIPO, OHIM, and GPMA, and can be found upon a simple Google search and in the public database of the WIPO Arbitration and Mediation Center for previous domain name disputes;

In 2003, WIPO found that the disputed domain name had been registered in bad faith by Nicholas Silverstone and ordered the domain name to be transferred to Complainant. Due to a technical error, the domain name was never actually transferred and was later picked up by Respondent.

In light of the above, Respondent had actual or constructive knowledge of the VEDA mark and its associated business when Respondent registered the disputed domain name.

Respondent is using the disputed domain name to disrupt Complainant's business by redirecting Internet users attempting to find Complainant's services to Respondent's website using the domain name <fma.com> offering competing services.

Respondent is profiting from such redirection as well as advertising revenue from its further commercial sites linked to its primary website.

B. Respondent

In support of its contentions, Respondent submits various documents and the declaration of Thunayan Khalid AL-Ghanim, its founder and Chief Executive Officer.

Complainant abandoned the domain name in dispute after prevailing in the prior UDRP proceeding and did not assert any further rights or make any attempt to own the domain name for over seven years. Complainant's abandonment is compelling evidence that Respondent could not have been acting in bad faith by registering a valuable, generic, four-letter domain name.

This case illustrates an unfortunate trend in UDRP cases, that the proceedings have become a vehicle for businesses who failed to obtain a desirable domain name to now wrest the domain name from its legitimate owner for the relatively low price of a UDRP proceeding. The situation is exacerbated by precedent, which has placed Complainant in an inherent position of strength, merely requiring it to present a prima facie case. While Respondent has prevailed in numerous (and cited) UDRP actions, each action presents the possibility that a misunderstanding of Respondent's business will result in a transfer of the domain name in dispute.

The disputed domain name includes the generic word "veda", which Complainant admits has a generic meaning relating to "ancient Sanskrit literature", but that is really the name of the sacred scripture of Hinduism. "Veda" is also a common name among women of Indian descent and there are numerous other trademark applications and registrations worldwide that incorporate the term "veda".

Complainant's action is simply a case of reverse domain name hijacking. Complainant's delay in acting after prevailing in its prior UDRP proceeding compels at least a finding of no bad faith.

Respondent does not develop or sell domain names for or to third parties. Rather, Respondent already has developed a number of its own domain names in full featured (and cited) websites. Respondent has plans to continue to develop its domain names, including the disputed domain name, in the future as time and resources permit.

Respondent is also developing a service to offer vanity email addresses. This service will allow people to buy email addresses reflecting their names, personalities, or hobbies. In order to implement such a comprehensive vanity email service, it is necessary to own an extensive number of domain names including names and generic words so that individuals are able to choose the routing email address they desire.

Respondent was not aware of Complainant or the VEDA mark until it received notice of the Complaint and certainly not in 2003 when it acquired the disputed domain name. Instead, Respondent seized the valuable generic word "veda" when it became available on the open domain name market as a result of Complainant's abandonment. Respondent acquired the disputed domain name because of its experience that four-letter domain names have a great deal of inherent value regardless of any potential association with any particular party, because they are short and easy to remember. In addition, domain names with a specific English meaning are particularly valuable.

Confusing similarity

Complainant does not allege that any of the services listed in its registrations overlap with any service offered by FMA because Respondent does not provide any of the listed services.

Because consumers are used to seeing "veda" in use by numerous different entities in a variety of different contexts, they are able to distinguish among them. There, there is no likelihood of confusion resulting from Respondent's ownership of the disputed domain name.

Rights and legitimate interests

Because "veda" has a specific, generic meaning apart from any connection with Complainant, Respondent has legitimate rights and interest by acquiring this generic term when it was available.

Respondent also has a legitimate right to the disputed domain name because it is part of Respondent's library that will be offered in connection with its vanity email service.

Respondent has also sought to use all of its domain names legitimately while it prepares to develop those names or use them in connection with its vanity email service. Due to conflicting decisions relating to click-through advertising, Respondent has ceased using such on all of its undeveloped domain names and has redirected them to its main page at <fma.com>, which does not feature any click-through advertising.

Registration and use in bad faith

Intent is a critical element necessary to support a claim of bad faith registration and use of a domain name. Complainant's general allegations are insufficient to meet Complainant's burden.

The evidence in this action proves that Complainant abandoned any rights it had in the disputed domain name. It is not credible that Complainant was sufficiently motivated to file a UDRP in 2002, but then waited until 2010 to correct an error in obtaining the relief granted in early 2003. Once rights have been abandoned, subsequent use or assertion of those rights does not relate back to the previous pre-abandonment use.

Complainant has provided no evidence that Respondent had actual knowledge of Complainant when Respondent registered the disputed domain name. Respondent's strategy of purchasing short, generic domain names when they become publicly available was motivated solely by the desire to use these domain names in connection with its development activities.

The doctrine of constructive knowledge is widely rejected by panelists. This is appropriate because there is no duty to conduct a trademark search prior to registration of a domain name.

Respondent's business activities do not overlap with any trademark rights owned by Complainant. Complainant has failed to meet its burden of providing evidence of its allegation that Respondent is using the disputed domain name to disrupt Complainant's business: the evidence proves that the domain name was linked to Respondent's main website to comply with previous UDRP decisions.

Had Complainant conducted reasonable due diligence, it would have realized that Respondent does not compete with, nor is likely to ever compete with, Complainant.

Reverse domain name hijacking

Instead of contacting Respondent, Complainant chose to go forward with the Complaint even though it must have known that it had no chance of prevailing, as it has no supporting evidence for the majority of its allegations. Also, Complainant was willfully ignorant of Respondent's business, despite Respondent's business description being available on its website. Complainant's intentional bad faith is also shown by misrepresenting to the Panel significant portions (of) Respondent's web site so as to create a false association between Respondent and Complainant.

C. Complainant's Additional Submission

In support of its contentions, Complainant submits various documents and the declaration of Dr. Ralf Graessler, its managing partner and CEO.

A major part of Complainant's business consists of developing and implementing web-based software-as-a-service solutions, in particular Internet portals for business users providing information in the fields of human resources, finance & accounting, and controlling. Complainant itself is providing the development in some cases, sometimes in conjunction with external partners.

Complainant has not abandoned the disputed domain name.

Upon obtaining the UDRP decision, Complainant ordered an employee responsible for managing of its domain names to take the necessary steps to have the UDRP decision implemented. That employee, however, made a formal mistake in the procedure, which was caused by his misunderstanding of instructions in the English language, a language in which he as a German national was not fluent.

After it became apparent that the disputed domain name had not been transferred to Complainant but rather sniped by the Respondent, Complainant took every step available to have this mistake corrected, including several letters to ICANN and to the new registrar, but in vain. Complainant did not contact Respondent, because information on the Internet made it clear that Respondent is not a legitimate business entity but merely a commercial domain-grabber who would never have willingly transferred the domain name.

Respondent has no legitimate interest

Respondent claims that less than 0.02% of its domain names have been used for legitimate business interests.

None of these are used for legitimate interests. Looking at the respective web sites, it becomes evident that these so-called "full-featured web sites" are nothing more than Potemkin villages, serving no other purpose that being present in token use in UDRP proceedings.

Complainant discusses in detail each of Respondent's web sites using the domain names <mp3.tv>, <dj.net>, <efx.com>, <osk.com>, <ai.com>, <jackass.com>, <oxide.com>, <palette.com>, <cooperators.com>, <liquidmedia.com>, <officeworks.com>, <fed.com>, <jogging.com>, <monsters.com>, <falcons.com>, <rumblemail.com>, and <vgt.com>. Complainant notes that these web sites include sparse content, outdated content, or no content at all.

Respondent states that its domain names are not for sale but admits that this statement does not keep people from making it offers of up to a million dollars for its domain names.

Respondent eliminated click-through advertising not for any legitimate reason but to look better in UDRP proceedings.

Respondent's latest invention for this purpose - an imaginary vanity email service in which people could register email addresses such as "scholar@veda.com" - is even less believable that its Potemkin villages.

The disputed domain name was obtained seven years ago. Respondent has the funds to obtain more than 100,000 domain names, but claims to be unable to put even a single one of these domains to genuine use to setup an email service.

Respondent's bad faith

Respondent acquired a valuable four-letter domain name from a person that had just been ordered to transfer it to Complainant. Prudency would have dictated Respondent to undertake at least the bare minimum of research whether a third party claimed rights in the domain name before investing in it and using it to advertise its own services. The barest minimum of research would have readily produced Complainant's claim.

Respondent either did no research whatsoever or did research and acted in spite of its results. Either establishes Respondent's bad faith in obtaining the disputed domain name.

On its own website at <fma.com>, Respondent claims to develop web portals and invites strategic partners to join it in doing so. This is also a major part of Complainant's business.

In this case, Respondent either knew or should have known the disputed domain name to be subject to claims by another party and which Respondent had no legitimate business interest in whatsoever other than adding the disputed domain name to Respondent's hoard and keeping it away from legitimate businesses like Complainant. Either demonstrates bad faith on the part of Respondent.

D. Respondent's Additional Submission

In support of its contentions, Respondent submits various documents and a declaration of Andrew Tupper, the founder and Principal Creative Director of Kern & Lead Design Studio.

Complainant's Additional Submission is not repudiation of its abandonment of the disputed domain name, but rather a thinly veiled, unsubstantiated character attack against Respondent. This demand for a value judgment is inappropriate and beyond the scope of the UDRP.

Complainant abandoned its rights

Complainant has failed to explain or support its "excuse" for taking seven years to implement an old UDRP victory. Complainant does not provide any explanation how it came to the determination of its employee's mistake nor does it provide any supporting documents, including the correspondence with "ICANN and the new registrar." Complainant also does not identify any information "openly available on the Internet" in 2003 that would have explained Complainant's failure to contact Respondent at the time the alleged "formal mistake" was made.

In light of the nearly automatic transfer of a domain name resulting from a UDRP decision, it is difficult to imagine what "formal mistake" prevented the transfer to Complainant. Ultimately, however, Respondent was an innocent party who acquired the disputed domain name after its abandonment.

Respondent has a legitimate interest

The test of legitimate use is not whether the web site meets a particular level of sophistication, utility or profitability, but rather whether the registrant is making any legitimate use.

Respondent develops its Internet properties into full-featured web sites whether or not Complainant finds the content to its liking. It is common practice for legitimate web sites to use news aggregator services. One of Respondent's web sites makes products available through a partnership with a third party (Cafepress.org) that provides merchandise services that are widespread on the Internet. Respondent offered its previous projects as examples of implementation of its business plan, not that each of its projects was successful, profitable, or continually updated.

Respondent's lack of profit is not a factor under the UDRP in determining whether Respondent has a legitimate interest. Also, Respondent can, and does, reject offers to purchase its domain names and does not sell them to third parties.

Complainant's contentions regarding Respondent’s redirection of all of its domain names to <fma.com>, which Complainant contends is evidence of Respondent’s lack of legitimate interest in the disputed domain name, are without UDRP support.

Respondent's vanity email service is substantially ready for launch. Beta testing vanity email addresses have been operational even though the service is not live to the public. PayPal prevented respondent’s web site developer from setting up an account on Respondent's behalf, because Respondent is a foreign company. Respondent is now attempting to set up the necessary account as well as deal with the implicated tax issues so as to finalize the project. The development of this service has only take one and a half years, not the seven years asserted by Complainant.

Respondent did not acquire in bad faith

Even had Respondent complied with the "barest minimum of research" standard of Complainant, it would have found that Complainant had no competing trademark claim relating to the disputed domain name.

There is no duty to conduct a trademark search prior to registration of a domain name, especially where the domain name as here is composed of a generic word in which registration is on a first come, first serve basis.

Any search would have revealed Complainant's abandonment of its rights in the disputed domain name and Respondent would have been rightly confident that Complainant had no competing rights in that domain name.

Respondent is not using in bad faith

Complainant mistakenly equates Respondent's business with Complainant's own, which it claims consists of "developing and implement web-based software-as-a-service solutions." Respondent's business is based on the websites and services it creates around its Internet properties, Internet portals, and technology, and not on the actual development activities."

Just because both parties may enter into strategic partnerships does not create an overlap between the parties' services. Respondent is only potentially interested in partnerships that advance its web initiatives, whereas Complaint appears to work in conjunction with strategic partners on their initiatives.

FINDINGS

Policy Paragraph 4(a)

The Panel finds that Complainant has rights in the VEDA mark and that the disputed domain name is confusingly similar to that trademark. The Panel finds that Complainant has established that Respondent has no rights or legitimate interests in and to the disputed domain name. The Panel finds Complainant to be unpersuasive on the issue of bad faith registration and use.

Reverse Domain Name Hijacking

The Panel finds that Respondent has failed to establish that Complainant has engaged in reverse domain name hijacking.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

1. (1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

2. (2) Respondent has no rights or legitimate interests in respect of the domain name; and

3. (3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant claims rights in the VEDA mark through its registrations with the OHIM (CTM Reg. No. 001571967 issued October 11, 2001) and with the GPMA (German Reg. No. 2,016,073 issued June 26, 1992). The Panel finds that these trademark registrations sufficiently prove Complainant’s rights in the VEDA mark. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark). It is irrelevant whether Complainant holds trademark registrations with the trademark authority in the country in which Respondent resides. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).

Respondent’s <veda.com> domain name is identical to the VEDA mark. The Panel finds that the addition of the generic top-level domain (“gTLD”) “.com” does not sufficiently distinguish the disputed domain name from the mark. See SCOLA v. Wick, FA 1115109 (Nat. Arb. Forum Feb. 1, 2008) (concluding that “the domain name at issue is identical to [the] complainant’s SCOLA mark, as the only alteration to the mark is the addition of the generic top-level domain “.com.”); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).

The Panel's findings are consistent with those of the panel in the prior UDRP proceeding involving the disputed domain name. See Veda GmbH v. Nicholas Silverstone, D2002-1040 (WIPO Jan. 2, 2003) (“Respondent's domain name is identical to Complainant's Trademark, and to Complainant's quite well-known trade name.")

Respondent's contentions regarding the generic nature and third party use of "veda" and the resultant absence of likelihood of confusion are irrelevant to this element of the Policy. See Interactive Data Corporation v. Maharaja Global c/o Tamal Das Gupta, FA 1305447 (Nat. Arb. Forum March 29, 2010) ("A determination of 'confusing similarity' under Policy ¶ 4(a)(i) involves only the comparison of a disputed domain name and a trademark. That determination is different than the test for trademark or trade name infringement based on 'likelihood of confusion' or 'confusing similarity' that also involve a comparison of the markets in which the parties operate.")

Complainant has carried its burden of proof under ¶ 4(a)(i) of the Policy.

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interests in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”)

The Panel finds that Complainant has made such a prima facie showing. Respondent's web site development services are within the scope of, or closely related to, the "consultancy and technical support related to ... computer programs" and "computer programming" services for which the VEDA mark has been registered. And, both Complainant and Respondent are engaged in such development services on their own accord.

Paragraph 4(c) of the Policy lists three circumstances in particular, without limitation, that demonstrate rights or legitimate interests of a domain name registrant to a domain name, for the purposes of Policy ¶ 4(a)(ii):

(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or

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

(iii) the Respondent 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.

Respondent does not contend that the circumstances of ¶ 4(c)(ii) or ¶ 4(c)(iii) are present in this case. Respondent is not known by the domain name and Respondent's intended use is commercial.

Regarding ¶ 4(c)(i), the Panel finds that Respondent did not have notice of this dispute before filing of the Complaint. Respondent denies any prior knowledge of Complainant or the VEDA mark, and Complainant states that it did not make prior contact with Respondent. Nor can Complainant's prior trademark registrations be counted on to establish such notice. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”).

Did Respondent engage in bona fide preparations to use the disputed domain name prior to the Complaint?

Complainant contends that Respondent offers no goods, services, or even individual content using the disputed domain name, and rather redirects visitors to Respondent's web site at <fma.com> that provides services that compete with Complainant's services. Respondent contends that the disputed domain name includes a generic term that will be used in conjunction with a web site or a vanity email service to be developed by Respondent. Complainant says that Complainant and Respondent are in direct competition. Respondent says that Complainant misrepresents Respondent's business model, which is to develop its domain names only for its own use. Complainant contends that none of Respondent's domain names have been used for any legitimate interests and contends that all of Respondent's web sites exhibit only token use for the purpose of UDRP proceedings. Respondent contends that it is making a legitimate use of many of its domain names, albeit not to Complainant's liking, and that its vanity email service is substantially ready for launch, having been under development for one and a half years.

On balance, the Panel is not persuaded by Respondent's contentions.

Respondent's absence of substantial web site development of almost all of its domain names, and especially for the disputed domain name that Respondent has owned for seven years, cannot outweigh the competition that is occurring through the redirection of visitors to <fma.com>. Respondent's different "business model" argument also does not sit well - what appears to a visitor to Respondent's web site is the existence of a web site developer like Complainant. See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks); see also ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees... is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”)

Respondent's passive holding of the domain name for over seven years is also evidence of its lack of legitimate rights or interest in the domain name. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”); see also Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).

Finally, Respondent's evidence regarding its proposed vanity email service is sparse. That evidence consists only of the statements of Messrs. AL-Ghanim and Tupper that development of the service is substantially complete and that only a payment system needs to be implemented, and the statement of Mr. Al-Ghanim that the email service is in beta. Because no further details and no documentary evidence have been submitted, the Panel finds these statements to be unpersuasive.

Complainant has carried its burden of proof under ¶ 4(a)(ii) of the Policy.

Registration and Use in Bad Faith

The circumstances of Paragraph 4(b) of the Policy are illustrative but not exhaustive of the circumstances under which bad faith registration and use under Policy ¶ 4(a)(iii) can be established.

Paragraph 4(b) reads:

[T] he following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

In each of the circumstances listed in Policy ¶ 4(b), or otherwise, the Complainant must establish that Respondent intentionally and actively registered and used the domain name at issue for the purpose of causing injury to the Complainant. And, Respondent must have known or should have known of Complainant's mark.

Lack of rights or legitimate interests under Policy ¶ 4(a)(ii) does not automatically translate into a finding of bad faith under Policy ¶ 4(a)(iii).

Proof of Policy ¶ 4(a)(iii) generally requires more than assertions of bad faith. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii)); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).

It is on this element of the Policy that Complainant's case founders.

Complainant contends that Respondent purchased the disputed domain name from the losing party in the prior UDRP proceeding. Respondent contends that it purchased the disputed domain name on the open market without any knowledge of Complainant or the VEDA mark. Complainant contends that the term "veda" has no meaning whatsoever in the field of IT services. Respondent says that it purchased the disputed domain name because of its value as a generic, four-letter word in the English language. Complainant contends that Respondent was obligated to conduct research before purchasing the disputed domain name. Respondent denies that it was under any such obligation.

On balance, the Panel is not persuaded by Complainant's contentions.

Complainant has not provided any evidence supporting Complainant's contention that Respondent purchased the disputed domain name from the losing party in the prior UDRP proceeding. The Panel is also struck by Complainant's admitted and intentional failure to contact Respondent after Respondent's acquisition of the disputed domain name. See Yupi Internet Inc. v. Mercantil Inc., FA 117302 (Nat. Arb. Forum Sept. 19, 2002) (“While the UDRP [P]olicy might well help in a lapsed domain name case, it won’t help those that continue to slumber on their rights by failing to contact Respondent before . . . substantial expenses in creating a website at a newly acquired domain name [are incurred]”); see also Mutineer Rest. v. Ultimate Search, Inc., FA 114434 (Nat. Arb. Forum Aug. 23, 2002) (finding the respondent’s practice of registering domain names incorporating generic terms that become available in the marketplace, often through failure to renew registration, does not evidence bad faith registration or use under the UDRP “unless the selection of the domain name and the manner in which it is used are related to its correspondence to Complainant's trademark”).

Constructive knowledge afforded by Complainant's trademark registrations is not sufficient to support a finding of bad faith registration and use. See The Way Int’l Inc. v. Peters, D2003-0264 (WIPO May 29, 2003) (“As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy. The essence of the complaint is an allegation of bad faith, bad faith targeted at the complainant. For that bad faith to be present, the cybersquatter must have actual knowledge of the existence of the complainant, the trade mark owner.”)

Also, Respondent was under no obligation to conduct a trademark search prior to its registration of the disputed domain name. See FormLinc Information v. Credit Suisse Grp., FA 96750 (Nat. Arb. Forum Apr. 18, 2001) (“[I]t is clear from the travaux preparatoires of the Policy that mere failure to conduct a trademark search does not constitute bad faith.”)

And, Complainant has not demonstrated that any of the specific circumstances in ¶ 4(b) are present in this case. See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith).

Complainant has not carried its burden of proof under ¶ 4(a)(iii) of the Policy.

Reverse Domain Name Hijacking

The Panel has found that Complainant has satisfied Policy ¶ 4(a)(i) and ¶ 4(a)(ii). The Panel concludes that Complainant has not engaged in reverse domain name hijacking. See ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.”); see also Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001) (noting that a finding of reverse domain name hijacking requires bad faith on the complainant’s part, which was not proven because the complainant did not know and should not have known that one of the three elements in Policy ¶ 4(a) was absent).

DECISION

Complainant not having established all three elements required under the Policy, the Panel concludes that relief shall be DENIED.

Bruce E. O’Connor, Chair

R. Glen Ayers and Anne M. Wallace, Panelists

Dated: November 29, 2010