IDN, Inc. v. Name Administration Inc. (BVI)
Claim Number: FA1209001461862
Complainant is IDN, Inc. (“Complainant”), represented by Dyan M. House of CARTER STAFFORD ARNETT HAMADA & MOCKLER, PLLC, Texas, USA. Respondent is Name Administration Inc. (BVI) (“Respondent”), represented by John Berryhill, Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lsda.com>, registered with iRegistry Corp.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Neil Anthony Brown QC, Hon. Bruce E. Meyerson (Ret.) as Panelists and Beatrice Onica Jarka as Panelist and Chair of the Panel.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 7, 2012; the National Arbitration Forum received payment on September 10, 2012.
On September 10, 2012, iRegistry Corp. confirmed by e-mail to the National Arbitration Forum that the <lsda.com> domain name is registered with iRegistry Corp. and that Respondent is the current registrant of the name. iRegistry Corp. has verified that Respondent is bound by the iRegistry Corp. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 11, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 1, 2012 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@lsda.com. Also on September 11, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on October 1, 2012.
Complainant submitted a timely Additional Submission on October 5, 2012.
Respondent submitted a timely Additional Submission on October 9, 2012
On October 10, 2012, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed as Panelists: Hon. Neil Anthony Brown QC, Hon. Bruce Meyerson (Ret.) and Beatrice Onica Jarka.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that thNational Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that:
i. LSDA (Reg. No. 3,791,770 registered May 25, 2010); and
ii. LSDA LOCKSMITH DEALERS OF AMERICA (Reg. No. 3,915,376 registered February 8, 2011).
i. LSDA (Reg. No. TMA368,133 registered April 27, 1990);
ii. LSDA LOCKSMITH DEALERS OF AMERICA (Reg. No. TMA364,164 January 12, 1990); and
iii. LOCKSMITH DISTRIBUTORS OF AMERICA LSDA (Reg. No. TMA346,768 registered October 21, 1988).
i. Respondent is not commonly known by the disputed domain name or the LSDA mark.
ii. Respondent is passively holding the domain name with the intent to profit from the sale of the domain name registration.
i. Respondent has attempted to sell the disputed domain name for a “substantial amount of money,” which is evidence of bad faith registration and use.
B. Respondent
Respondent contends that:
1. Respondent’s principal registered the disputed domain name in December 2001 and transferred the registration to Respondent, upon its formation in 2002.
2. Complainant’s assertions otherwise are false.
3. The disputed domain name consists of a four letter sequence that is neither unique nor exclusive to Complainant.
4. Complainant has provided no evidence that the disputed domain name was registered primarily for sale to Complainant or a competitor, and Complainant has not shown that the domain name has ever been used in association with “Keys, locks, hydraulic door closers, and locking units on windows and doors.”
5. Regarding to Identity or Confusing Similarity
i. Complainant has presented a variety of registration documents, but the expired and cancelled registrations cannot constitute evidence of trademark or service mark rights.
ii. Two of Complainant’s submitted registrations post-date Respondent’s registration of the disputed domain name, therefore Complainant must be suggesting that the Panel rely on “first use” allegations within the later registrations. The USPTO does not even rely on mere allegations of first use without evidence in an inter partes proceeding and neither should this Panel.
iii. The only document of relevance in this proceeding is the CIPO registration for LSDA (Reg. No. TMA368,133), which does satisfy the first criterion of the Policy. However, the Panel should consider the scope of this mark.
iv. The Panel is also urged to attempt to replicate Complainant’s “curious Google search results, in which only search results relating to the Complainant appear.” Many other companies and products come up with a search of the letters “LSDA” that are not related to Complainant.
v. Complainant has shown that, in 2001, Complainant’s predecessor held rights in “LSDA” in connection with keys and locks. Aside from this claim, the letters “LSDA” are neither unique nor exclusive to Complainant for other uses.
6. Regarding Legitimate Rights or Interests
vi. Complainant does not allege that Respondent has used the domain name at issue for any purpose relating to keys, locks, door hardware, or any of the goods or services in which Complainant trades.
vii. As shown by Complainant’s printout of the resolving website, Respondent has pointed the disputed domain name to a parking page headed by a graphic indicative of naming in general, and includes links such as “Change Name,” “First Names,” “Internet Name,” “Product Name,” “Trademark Name,” and other links leading to paid advertising.
viii. Complainant’s claim in connection with keys and locks does not confer a monopoly in the letters LSDA.
ix. UDRP panels have held that absent exclusive and famous association, the general registration and use of non-distinctive “acronymic” domain names is not illegitimate merely because one or another party may have rights in relation to particular goods and services, absent actual use of the domain name to engage in infringing conduct.
x. The Respondent registered an inherently valuable short domain name more than a decade ago, and Respondent’s use of the domain name is clearly not violative of Complainant’s trademark or service mark rights.
7. Regarding Bad Faith Registration and Use
xi. Because LSDA is neither unique nor exclusive to Complainant, the third criterion of the Policy requires Complainant to prove that the domain name was registered with specific intent relating to Complainant.
xii. Complainant’s claim that the disputed domain name was registered in 2006 is false.
xiii. In late 2001, Respondent believed that while all three letter domain names were registered, that four letter domain names would also be limited, and thus commercially valuable. Respondent set about registering four letter domain names, and owns many of them just beginning with the letter “l.”
xiv. Complainant’s assertions that Respondent registered the domain name because of Complainant’s expansion into other world markets in 2006 is simply false, as shown by the registration data.
xv. Complainant’s arguments relating to a sale offer are similarly found to be misleading. Complainant approached Respondent, with an undisclosed identity, and offered to buy the domain name registration. Respondent replied by stating that four letter domain names typically sell in the five figure range, which is an unexceptional fact.
xvi. The reason for Respondent’s non-reply to the Complainant’s claims of non infringement is that Complainant was simply attempting to instigate Respondent so that it could make out a claim under the Policy.
1. Complainant has not fulfilled the requirement that a respondent register a domain name for the primary purpose of selling such registration to Complainant.
2. The evidence shows this to be incorrect and false.
xvii. While laches may not be considered under the Policy widely yet, Complainant’s claim to have only recently become aware of the disputed domain name renders it unlikely that the disputed domain name can seriously be considered to have been disrupting Complainant’s business.
C. Complainant’s Additional Submission
By its Additional Submission, Complainant asserted:
1. The disputed domain name is not a random combination of four letters, and the LSDA mark is not generic or descriptive.
2. Complainant has proven its rights in the LSDA mark and that the disputed domain name is identical to the mark.
3. The record is devoid of evidence that Respondent has any rights or legitimate interests in the disputed domain name.
4. Prior panels have noted that “wholesale buyers of 3-letter combinations have to be careful when registering domain names,” and the same is true with 4-letter combinations for domain names.
5. Respondent’s general offer to sell the disputed domain name and offer to sell the disputed domain name at Respondent’s related company’s auction site constitutes bad faith.
6. Complainant contends that Respondent, through correspondence in Complainant’s Exhibit J, states that it purchased the disputed domain name at auction and now denies such auction. Complainant does not have further information available to it.
7. Complainant did not unreasonably delay in bringing this action.
i. Complainant only recently desired to develop a website for its business. Previous business had been achieved through distributor relationships.
ii. Complainant offered to buy the disputed domain name from Respondent anonymously because Complainant believed that the price would “skyrocket” if Respondent knew of Complainant’s trademark rights.
4. The Complainant’s rights extend to an exclusive right to use the letters “LSDA” in connection with the Complainant’s goods.
5. Had the Respondent been actually aware of the Complainant’s trademark registration such knowledge would be effective to warn the Respondent not to use the letters “LSDA” in connection to the Complainant’s goods.
6. Apart from the Canadian trademark registration, the Complainant provides no indication that it was famous, well known or likely to be known in particular by the Respondent
7. The Complainant’s new found interest in changing its market and course of trade recently, does not alter the Respondent’s intent in having registered the disputed domain name, nor does it affect the Respondent’s eleven years of not having violated the Complainant’s mark.
8. The fact that the Respondent was unwilling to deal the disputed domain name at an arbitrary price that the Complainant was willing to offer, does not represent bad faith as the disputed domain name is demonstrably not exclusively or famously associated with the Complainant.
9. The same argument is applicable for the Complainant’s assertions of bad faith in use of the disputed domain name by providing links to PPC.
The disputed domain name is common and generic/descriptive of many companies and products, and therefore, Complainant does not have an exclusive monopoly on the letters on the Internet.
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) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant asserts that it has rights in the LSDA mark, and similar marks. In support of this assertion, Complainant has supplied the Panel with evidence of trademark registrations with the USPTO for the LSDA (Reg. No. 3,791,770 registered May 25, 2010) and LSDA LOCKSMITH DEALERS OF AMERICA marks (Reg. No. 3,915,376 registered February 8, 2011). Complainant has also supplied its trademark registrations with the CIPO for the LSDA (Reg. No. TMA368,133 registered April 27, 1990), LSDA LOCKSMITH DEALERS OF AMERICA (Reg. No. TMA364,164 January 12, 1990) and LOCKSMITH DISTRIBUTORS OF AMERICA LSDA marks (Reg. No. TMA346,768 registered October 21, 1988).
The Panel finds that Complainant has successfully established its rights in the trademarks above under Policy ¶ 4(a)(i). See Dollar Fin. Group, Inc. v. Bankshire Corp., FA 1013686 (Nat. Arb. Forum July 30, 2007) (finding that the complainant established rights in its mark by registering the mark with the USPTO and CIPO).
Further, Complainant argues that the <lsda.com> domain name is identical to Complainant’s LSDA mark. The Panel notes that the disputed domain name contains Complainant’s mark entirely, while adding the generic top-level domain (“gTLD”) “.com.” Therefore, the Panel finds that the disputed domain name is identical to Complainant’s LSDA mark under Policy ¶ 4(a)(i). See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
While Respondent contends that the <lsda.com> domain name is comprised of common and generic/descriptive letters and as such cannot be found to be identical to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶ 4(a)(ii) and 4(a)(iii)).
However, the Respondent submits itself that Complainant’s Canadian trademark registration for LSDA is sufficient for Complainant to establish Policy ¶ 4(a)(i).
Therefore, the Panel finds that the Complainant has established the first element of the Policy.
On the second element of the Policy, the 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 UDRP ¶ 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 interest 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.”).
Complainant asserts that Respondent is not commonly known by the disputed domain name or the LSDA mark, as the WHOIS information identifies Respondent as “Name Administration, Inc. (BVI).” Complainant contends that Respondent is a domain name broker and thus lacks rights in the disputed domain name.
The Panel turns its attention to the composition of the disputed domain name which consists of four letters “LSDA”. Respondent argues that the four-letter string of the <lsda.com> domain name is common and generic/descriptive of many companies and products, and therefore, Complainant does not have an exclusive monopoly on the letters on the Internet. The Panel agrees with the Respondent even though the Complainant asserts that the combination of the four letters have no meaning except apart from Complainant’s mark and the few acronyms one can find in an internet search. As indicated by the Complainant itself and the Respondent’s assertions the four letters LSDA may stand for many companies and products. It is the Panel’s conviction that the Complainant’s rights extend to an exclusive right to use the letters “LSDA” in connection with the Complainant’s goods, and to defend against anybody who would use the said letters in connection with the Complainant’s goods.
In these proceedings, the Complainant does not allege that Respondent has used the domain name in dispute for any purpose relating to keys, locks, door hardware, or any of the goods or services in which Complainant trades.
The general use of a domain name comprising four letters which could stand for anything without targeting the Complainant’s business constitutes, in the opinion of the Panel sufficient grounding for the Respondent to establish rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See BioDelivery Sciences International, Inc v HLK Enterprises, Inc. c/o Domain Admin, FA 0804002275189 (Nat. Arb. Forum May. 19, 2008) (finding that “based on the fact that the disputed domain name and Complainant’s mark contain only four letters that could stand for many things unrelated to Complainant’s business, the Panel finds that Respondent’s use of the disputed domain name as a portal website is a showing of rights or legitimate interests under Policy ¶ 4(a)(ii).”); see also Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Nat. Arb. Forum July 23, 2004) (stating that “Complainant’s rights in the QWEST mark are limited to its application to the tele-communications industry,” where a variety of other businesses used the mark in unrelated fields).
Further, Complainant asserts that Respondent is passively holding the domain name with the intent to profit from the sale of the domain name registration. Within its Additional Submission, Complainant argues also that Respondent’s disputed domain name merely contains click-through links and that Respondent is holding the domain name to sell it. Complainant also argues that it approached Respondent to purchase the disputed domain name with an anonymous request of $1,300.00, which Complainant asserts Respondent rejected, stating that “typical deals her go in the mid five fig range . . .” Complainant states that it later contacted Respondent, informing Respondent of Complainant’s trademark rights and offering to buy the disputed domain name for $5,000.00, but that Respondent never contacted Complainant again.
The Panel acknowledges that Complainant’s assertions in certain circumstances might represent elements for a finding that the Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).
However, such circumstances are not met here, as absent exclusive and famous association, the general registration and use of non-distinctive “acronymic” domain names is not illegitimate merely because one or another party may have rights in relation to particular goods and services, absent actual use of the domain name to engage in infringing conduct.
The record shows that the disputed name had been registered in December, 2001.
The Panel agrees with the Respondent that the evidence on record demonstrates that Respondent registered an inherently valuable short domain name more than a decade ago and Respondent’s use of the disputed domain name is clearly not violative of Complainant’s trademark or service mark rights.
Considering the above, the Panel finds that the Complainant has failed to establish the second element of the Policy.
As found in the previous section, the disputed domain name consists of four-letter string which is common and generic/descriptive of many companies and products, unrelated with the Complainant’s products.
Moreover, as the record shows, the disputed domain name was registered in 2001. The Complainant argued that in previous years, much of the Complainant’s business for LSDA was done through distributor relationships. This assertion of the Complainant is in fact an admission of the fact that the Complainant was in no way primarily known to the consumers or to the Respondent. The Complainant goes further and explains, that only with the increasing use of the Internet in business, it desired to establish a website at a domain that reflected the principal trademark for LSDA products.
In addition, Complainant does not allege that Respondent has ever used the domain name in dispute for any purpose relating to keys, locks, door hardware, or any of the goods or services in which Complainant trades.
Respondent asserts that Complainant’s arguments relating to a sale offer are similarly found to be misleading. Respondent contends that Complainant approached Respondent, with an undisclosed identity, and offered to buy the disputed domain name registration and that Respondent replied by stating that four letter domain names typically sell in the five figure range, which Respondent claims is an unexceptional fact. Respondent asserts that Complainant also argues that, when Complainant revealed itself and claimed trademark infringement, Respondent no longer replied to Complainant’s sale inquiry. Respondent submits that the reason for Respondent’s non-reply is that
Complainant was simply attempting to instigate Respondent so that it could make out a claim under the Policy. Therefore, Respondent argues and the Panel has no reason not to agree that Complainant has not fulfilled the requirement that a respondent register a domain name for the primary purpose of selling such registration to Complainant, as Complainant has submitted no evidence indicating that Respondent registered the disputed domain name for the primary purpose of selling it.
Considering the above, the Panel finds that the Respondent has not registered and not used the disputed domain name in bad faith.
Therefore, the Panel finds that the Complainant has failed to establish the third element of the Policy.
Doctrine of Laches
The doctrine of laches has generally been held not to apply as a defense in UDRP proceedings. See Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) (“The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defence of laches has no application.”); see also Drown Corp. v. Premier Wine & Spirits, FA 616805 (Nat. Arb. Forum Feb. 13, 2006) (finding that the laches defense was inappropriate under the Policy and that the time frame within which the complainant brought the proceeding was of no consequential value); see also Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (“Respondent’s efforts at arguing related equitable defenses such as estoppel and acquiescence are equally misplaced as these legal arguments are not contemplated by the Policy. Moreover, recognition of these arguments in accordance with Respondent’s desires requires the Panel to make a legal determination regarding the continuing validity of Complainant’s DISNEY mark. Such action is beyond the scope of the UDRP proceeding and if Respondent desires such an outcome it should avail itself of the proper judicial proceedings by which such a result might be accomplished.”).
It is also true, however, that in recent times that generalized approach has been submitted to some criticism and that some panelists have taken into account laches or delay on the part of a complainant trademark owner in bringing proceedings. The Panel notes, in that regard, the unanimous decision of the 3 person panel in The New York Times Co. v. Name Admin. Inc. (BVI), FA 1349045 (Nat. Arb. Forum Nov. 17, 2010) which held in effect that laches is "a valid defense in any domain dispute where the facts so warrant." The Panel also notes the observations in the WIPO Overview, cited with approval as recently as July 3, 2012 in Victoria’s Secret Stores Brand Mgmt., Inc. v. Linda Cameron Pickard, Linda Watson, DAU2012-0015 (WIPO Mar. 7, 2012), that “Panels have also noted that a delay in bringing a complaint under the UDRP may make it more difficult for a complainant to establish its case on the merits, particularly in relation to the second and third elements” of the Policy.”
In the present case, it is not necessary to contribute any further to the debate on this issue as the Panel has been able to decide the case on the basis of more substantive issues dealt with above.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <lsda.com> domain name REMAIN WITH Respondent.
Beatrice Onica Jarka Chair and Panelist
Hon. Neil Anthony Brown QC Panelist
Hon. Bruce Meyerson (Ret.) Panelist
Panelists
Dated: October 23, 2012
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