[GTMS] Global Transmission Media Solutions v. Renny Thomas
Claim Number: FA1210001465897
Complainant is [GTMS] Global Transmission Media Solutions (“Complainant”), represented by Jason B. Burrows, Utah, USA. Respondent is Renny Thomas (“Respondent”), represented by Zak Muscovitch of The Muscovitch Law Firm, Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gtms.com>, registered with Tucows, Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Francine Tan as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 4, 2012; the National Arbitration Forum received payment on October 4, 2012«DateHardCopy».
On October 5, 2012, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <gtms.com> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. 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”). A deficiency notice was issued to Complainant on October 5, 2012 as Tucows, Inc. had not been correctly reflected in the Complaint as the Registrar of the disputed domain name. A timely amended Complaint was submitted.
On October 8, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 29, 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@gtms.com. Also on October 8, 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 26, 2012.
On November 8, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Francine Tan as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National 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 is the registered owner of the trade mark [GTMS Design mark image redacted] (U.S. Registration No. 3,351,273) (the “GTMS design mark”) covering “Installing satellite dishes; satellite dish installation and repair” (International Class 37) and “Planning, development and technical support of electronic communications networks; Technical support, namely, monitoring of network systems; Custom design and engineering of telephony systems; Engineering services, namely, engineering for the Satellite Telecommunications Industry; Technology consultation in the field of Satellite Telecommunications, Content Management, and System Engineering” (International Class 42). The mark is reflected on the trademarks register as having been in use since 2006.
The letters in the disputed domain name are an abbreviated form of Complainant’s name. The fact that the disputed domain name is identical to its service mark has resulted in incalculable loss of revenue and Complainant’s intention is for the disputed domain name, inter alia, to support its entire online retail store for video content distribution. Complainant has received a number of complaints from its customers following from the fact that it does not own the disputed domain name.
Complainant has since 2006 monitored the use of the disputed domain name and found that there has been no activity which would suggest Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. Respondent does not appear to have ever posted any actual content. There is also no evidence to suggest that Respondent has ever been known by, or that Respondent has acquired any trademark or service mark rights to, the disputed domain name. The disputed domain name has not resolved to any active webpage but is “lifeless and unresponsive on the standard domain parking page from the registrar”. Complainant adds that there are two other domain names registered in Respondent’s name which have remained lifeless and inactive.
Complainant submitted evidence of its attempts in the middle of 2011 to contact Respondent to express its interest in the disputed domain name and to explore the possibility for a transfer. There was no response from Respondent. As the new lapse date for the disputed domain name is December 2012, Complainant felt that it was necessary to act now to secure its interests.
On the issue of bad faith registration and use, Complainant reiterates the facts above and adds that evidence relating to two other domain names which have not been in use shows bad faith under paragraph 4(b)(ii) of the Policy as it reflects that Respondent has engaged in a pattern of such conduct. Complainant has not been able to identify an actual motive for Respondent’s holding on to several domain names. Complainant’s attempts to contact Respondent on several occasions have not achieved any response. It is asserted that “the lack of response and negative impact on [them] because of being in this stalemate can be construed as a form of bad faith”. Complainant is concerned that its current and potential clients will not be able to connect with them and securing the domain name in line with its branding is desirable.
B. Respondent
Respondent notes that Complainant first used its mark on August 25, 2006 and there is no claim nor evidence of any use which preceded that date. Complainant has not alleged nor provided evidence of any common law rights in the GTMS mark and the only mark upon which Complainant is able to rely upon is its single GTMS design mark which was registered in 2007. Complainant chose to adopt a corporate name and GTMS design mark when it knew or ought to have known that the disputed domain name had already been registered seven years before that, in 1999. Complainant gave evidence of its various attempts to purchase the disputed domain name but nowhere in the written solicitations did it claim that it has any legal right to the transfer of the disputed domain name. Complainant further expressly admits that the Complaint was brought now “in case the Respondent chose to renew the Domain Name in December”, which is, ostensibly, an attempt to use the UDRP procedure to obtain the disputed domain name.
Respondent is a 51-year old Canadian citizen who registered the disputed domain name in 1999 for the reason that he was interested in starting his own business in financial planning and investment areas, particularly for immigrants to Canada from India, given his own Indian heritage and successful experience as an immigrant to Canada. He conceived in 1999 the unregistered business name, Global Trade Management Services, from which “GTMS” is derived. Respondent was engaged in a variety of employment and small business endeavors and did not focus on developing his GTMS business. In 2003, he decided to get more serious about this and printed business cards for Global Trade Management Services, reflecting <gtms.com> as the web address. Respondent did, therefore, demonstrably engage in preparations to use the disputed domain name although he never set up a website for it. Respondent has consequently satisfied the criterion in paragraph 4(c)(i) of the Policy. Further, Respondent consistently used the disputed domain name for e-mail. This constitutes use of a domain name and is a “legitimate interest”.
There is no basis under the Policy to award a domain name away from a respondent merely because the complainant contends that it can “better use” or has a “superior right” to the domain name. A balancing of which party has a “better” right is not authorized under the Policy.
Respondent has an inherent legitimate interest in the disputed domain name as it consists of a generic combination of four letters of the alphabet. It has been established in previous panel decisions under the Policy that where a domain name is generic, the first person to register it in good faith is entitled to it.
Respondent has never engaged in nor has he been accused of cybersquatting in respect of the other two domain names referred to in the Complaint. These domains were in any event not registered or used in bad faith. Neither does Respondent have a legal obligation to use them.
On the issue of paragraph 4(a)(i) of the Policy, there is no need for the Panel to reach a conclusion on this since Complainant has failed to make its case under paragraph 4(a)(ii) and (iii). In any case, Respondent submits that the disputed domain name is not identical nor confusingly similar to Complainant’s GTMS design mark which comprises a design and the words “SERVICE AT A HIGHER LEVEL”.
Paragraph 4(a)(iii) of the Policy requires both bad faith registration and bad faith use to be established. With regard to the former, it is an obvious factual impossibility for the disputed domain name to have been registered in bad faith for the simple reason that it was registered nearly seven years before Complainant was incorporated and before it adopted its mark. In relation to the latter, the doctrine of “passive holding” relied upon by Complainant as the sole purported evidence of bad faith use is not applicable nor determinative of bad faith use in the absence of a finding of bad faith registration in the first place. Neither can bad faith be found in Respondent’s unwillingness to engage in negotiations and to sell the disputed domain name; Respondent has no obligation whatsoever to do so.
Respondent asserts that Complainant is guilty of Reverse Domain Name Hijacking, the basis for which is supported by the foregoing facts. The circumstances provide ample and compelling evidence that the Complaint was brought in bad faith simply as a “last resort” since Respondent refused to negotiate a sale of his domain name which was registered in good faith.
(a) The disputed domain name is confusingly similar to the GTMS design mark in which Complainant has rights.
(b) The Respondent has legitimate rights or interests in respect of the disputed domain name.
(c) The disputed domain name has not been registered in bad faith.
(d) Reverse Domain Name Hijacking is found in this case.
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.
The letters GTMS in Complainant’s registered design mark appear prominently therein. As the letters (rather than the words “SERVICE AT A HIGHER LEVEL”) constitute the dominant portion of the design mark, the Panel finds that the disputed domain name is confusingly similar to Complainant’s GTMS mark.
Paragraph 4(a)(i) of the Policy has been established.
The following are examples of circumstances whereby a respondent may show it has rights or legitimate interests in a particular domain name (paragraph 4(c) of the Policy):
“(i) before any notice to you of the dispute, your 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 or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial 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”.
Whilst Complainant has made various statements towards supporting its claim that Respondent has no rights or legitimate interests in respect of the disputed domain name, the Panel is of the view that Respondent has provided admissible and relevant evidence which demonstrates that he has a legitimate right and interest therein, namely the evidence submitted showing the use of the dispute domain name for e-mail purposes and the printing of his business cards for the Global Trade Management Services business in 2003. The Panel agrees that the use of a domain name for e-mail is a legitimate interest within the meaning of the Policy (see Tesla Industries, Inc. v. Stu Grossman d/b/a SG Consulting¸ FA 547889 (Nat. Arb. Forum Dec. 5, 2005). In arriving at its conclusion, the Panel has taken into consideration the fact that the disputed domain name consists of a combination of letters which is generic and which any number of other persons could choose to adopt and register as a domain name. In view of this, there is no reason why anyone should be precluded from registering a domain name such as this one on a “first come, first served” basis.
The Panel is not persuaded that there is a pattern of conduct that can be said to exist simply from the fact that Respondent has registrations of two other domain names which do not appear to be used. Respondent has explained that the domain names mentioned, namely <modayil.com> and <saintgregorios> refer, respectively, to the family name of the Respondent’s sister-in-law and to the patron saint of the Respondent’s family in Kerala, India. There is nothing to suggest that these are identical to registered and/or recognizable trade marks. Moreover, these certainly fall short of the standard which ought to be applied to the sort of evidence required to make a finding of a “pattern of conduct”.
The Panel also finds that Complainant has failed to establish that the disputed domain name was registered in bad faith. The Panel agrees that there is no way the disputed domain name could be said to have been registered in bad faith when it was registered so many years before Complainant was incorporated as a company and before it commenced use of the GTMS design mark. This conclusion is consistent with the consensus view of panelists set out in paragraph 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (Second Edition):
“Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date [see further paragraph 1.4 above], when a domain name is registered by the respondent before the complainant's relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right.”
In the circumstances, since Complainant has failed to establish the first requirement under paragraph 4(a)(iii), namely the registration of the disputed domain name in bad faith, there is no need for the Panel to consider the issue of use in bad faith.
Reverse Domain Name Hijacking
Reverse Domain Name Hijacking is defined under the UDRP Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”. Paragraph 15(e) of the UDRP Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”.
Whilst the failure of a complainant to establish its case and to succeed in a domain name dispute proceeding is certainly not, in and of itself, a basis for concluding that the complainant acted in bad faith, in this case, the Panel is of the view that a finding of Reverse Domain Name Hijacking is warranted. What is rather clear from the contents of the Complaint is that the main motivation for the commencement of these administrative proceedings stems from a frustration on the part of Complainant in not having been able to obtain the domain name <gtms.com> which corresponds to the initials of its company name and the letters in the GTMS design mark, its attempts to contact Respondent to negotiate a transfer of the domain name having failed. Complainant was clearly aware that the disputed domain name had been registered since December 1999 and should have realised from that fact alone that it had no basis whatsoever for alleging bad faith registration on the part of Respondent, which is one of the essential elements required by the Policy. To use the UDRP administrative proceeding as Complainant’s last resort to “[securing the domain name] for [its] branding to match with [its] trademark” and because of its concern “that a growing number of [its] potential customers will be unable to connect with [them]” constitutes an abuse of the proceedings. As was stated in the case of ELK Accessories Pty Ltd v. Parnaz Farahani Elk.com, D2012-0455 (WIPO May 15, 2012).
“Initiating domain name dispute resolution proceedings necessarily involves putting the parties to a considerable expenditure of time and in many cases cost and the Policy must not be used unless the complainant has a reasonable and credible belief it is entitled to succeed. In particular, proceedings must not be commenced in an unjustifiable attempt to pressure a domain name owner into releasing a legitimately held domain name predating any trademark rights held by the complainant, see Sustainable Forestry Management Limited v. SFM.com and James M. van Johns “Infa dot Net” Web Services,WIPO Case No. D2002-0535.
[…]
Finally, it should also be said that it was the Complainant who, on no evidence at all, accused the Respondent of acting in bad faith. That, itself, is an act of bad faith and is part of the reason why the Panel has made the finding of Reverse Domain Name Hijacking. Such allegations should not be made lightly or without cogent evidence to support them and certainly not where, after obtaining instructions, it must have been apparent to the Complainant that no such allegation could properly be made against the Respondent.”
This was a Complaint that should never have been filed. Complainant knew that the disputed domain name was registered at least around seven years before it was incorporated and before it acquired registration rights in the GTMS design mark. The Panel therefore makes a finding, pursuant to Paragraph 15(e) of the Rules, that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceedings.
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 <gtms.com> domain REMAIN WITH Respondent.
FRANCINE TAN, Panelist
Dated: November 19, 2012
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