national arbitration forum

DECISION

TruTag Technologies, Inc. v. Strategic Solutions International

Claim Number: FA1309001520496

PARTIES

Complainant is TruTag Technologies, Inc. (“Complainant”), represented by George R. Schultz of Schultz & Associates, P.C., Texas, USA. Respondent is Strategic Solutions International (“Respondent”), Oklahoma, USA.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <trutag.com>, <truetag.net>, and <truetag.org>, registered with DOMAIN.COM, LLC.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Hon. Karl V. Fink (Ret.), as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 19, 2013; the National Arbitration Forum received payment on September 19, 2013.

On September 20, 2013, DOMAIN.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <trutag.com>, <truetag.net>, <truetag.org> domain names are registered with DOMAIN.COM, LLC and that Respondent is the current registrant of the names. DOMAIN.COM, LLC has verified that Respondent is bound by the DOMAIN.COM, LLC 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 23, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 15, 2013 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@trutag.com, postmaster@truetag.net, postmaster@truetag.org. Also on September 23, 2013, 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 14, 2013.

Complainant made a timely Additional Submission dated October 21, 2013.

All submissions were considered by the Panel.

On October 22, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), 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.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

Complainant’s Contentions

Policy ¶ 4(a)(i)

Complainant uses the TRUTAG mark to offer product authentication and brand solution products for multiple industries including individual medicines, medical products, food items, and consumer goods. Complainant’s TRUTAG mark is particularly used in the form of microtags that are applied to products, which help to prevent counterfeiting, improve tracking and authentication, provide informatics, and add efficiency, among other qualities. Complainant has registered the TRUTAG mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 4,118,914 filed May 8, 2009; registered March 27, 2012).
Respondent registered the <trutag.com>, <truetag.net>, and <truetag.org> domain names. The <trutag.com> domain name is identical to the TRUTAG mark in that it merely adds the generic top-level domain (“gTLD”) “.com” to the mark. Both the <truetag.net> and <truetag.org> domain names add a gTLD and an additional letter “e” to the mark.

Policy ¶ 4(a)(ii)

Respondent is not known as any of the <trutag.com>, <truetag.net>, and <truetag.org> domain names, but is known as “Strategic Solutions International.” Complainant has not authorized or approved Respondent’s use of the TRUTAG mark in domain names.
Respondent uses each of the <trutag.com>, <truetag.net>, and <truetag.org> domain names to host websites that promote hyperlink advertisements, as well as a “Rewards Card” program that sends Internet users to more hyperlink advertisements.
Respondent has engaged in typosquatting and thus lacks rights or legitimate interests in this domain name.

Policy ¶ 4(a)(iii)

Respondent has engaged in a pattern of bad faith by registering several domain names in the current dispute, all of which infringe on Complainant’s mark.
Respondent disrupts Complainant’s business by using the <trutag.com>, <truetag.net>, and <truetag.org> domain names fto host competing hyperlink offerings.
Respondent uses the <trutag.com>, <truetag.net>, and <truetag.org> domain names to promote sponsored advertisements so as to accrue click-through revenues every time an Internet user selects one of the hyperlinks on the domain names’ resolving websites. As Respondent owns at least seventy-four domain names that merely promote sponsored content, it seems very likely that Respondent registered and used the <trutag.com>, <truetag.net>, and <truetag.org> domain names to generate monetary gains.
Respondent’s typosquatting of the <trutag.com>, <truetag.net>, and <truetag.org> domain names is in itself evidence of bad faith.

B. Respondent

Policy ¶ 4(a)(i)

Respondent has used the TRUETAG and TRUTAG marks in connection with its livestock health monitoring systems since 2006. Respondent also registered all of the domain names in 2006. As the USPTO allows for the same or similar marks to be used in different fields, and as Respondent is not providing microtags under its TRUETAG and TRUTAG marks, Respondent’s first use of these marks in 2006 evidences prior rights.

Policy ¶ 4(a)(ii)

Respondent registered the <trutag.com>, <truetag.net>, and <truetag.org> domain names in 2006 to protect its interests on the Internet, and prevent cybersquatters from registering confusingly similar domain names. Respondent did not know that registrars automatically park domain names, and Respondent has not witnessed any accession to wealth from any of these advertisements.

Policy ¶ 4(a)(iii)

Respondent is not a serial cybersquatter. Respondent is in the field of research and development, and as such, registers a multitude of domain names relevant to its fields of research so as to prevent the names from being registered by others. A majority of the domain names listed by Complainant as evidence of a “pattern of bad faith registration” are used in relation to an insulating container devised by Respondent and protected now by U.S. Patent No. 8,499,947 registered in August 2013.
The domain names could have been registered in bad faith when Respondent, when the domain names were registered in 2006, 2-3 years before Complainant’s first use of its trademark.

Reverse Domain Name Hijacking

Complainant could have confirmed the fact that Respondent had rights by conducting a simply search of the term “truetag” in connection with the term “strategic-solutions” and found that Respondent had been using the marks since 2006. Given Complainant’s extensive usage of the WHOIS databases to find information, it is likely that Complainant did in fact know these details about Respondent yet filed this Complaint anyway.

FINDINGS

For reasons set forth below, the Panel finds Complainant is not entitled to the relief requested.

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) 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.

Identical and/or Confusingly Similar

Because the Panel concludes that Complainant has not satisfied Policy ¶ 4(a) (iii) Registration, and use in Bad Faith, the Panel will not analyze this element of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).

Rights or Legitimate Interests

Because the Panel concludes that Complainant has not satisfied Policy ¶ 4(a) (iii), Registration and use in Bad Faith, the Panel will not analyze this element of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).

Registration and Use in Bad Faith

The Panel finds that Respondent has not registered or used the <trutag.com>, <truetag.net>, and <truetag.org> domain names in bad faith. The Panel finds that Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). 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); see also 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 UDRP ¶ 4(a)(iii)).

The disputed domain names could not have been registered in bad faith when Respondent’s registration of the domains predates Complainant’s first use of its trademark. In Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001), the panel agreed that when domain name registration predates the first use of the complainant’s mark there must be no relief granted as the requisite Policy ¶ 4(a)(iii) bad faith at registration is not possible. The Panel agrees that Respondent did not register the <trutag.com>, <truetag.net>, and <truetag.org> domain names in Policy ¶ 4(a)(iii) bad faith. See also TB Proprietary Corp. v. Village at La Quinta Realtors, FA 416462 (Nat. Arb. Forum Mar. 28, 2005) (concluding that because the respondent’s domain name registration predated the complainant’s trademark filing date and alleged date of first use, the panel found that “there was no bad faith on the part of Respondent when registering the subject domain name”).

Complainant has not proven this element.

Reverse Domain Name Hijacking

Although the Panel finds that Complainant has failed to satisfy its burden under the Policy, this does not necessarily render a finding of reverse domain name hijacking on behalf of Complainant in bringing the instant claim. 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.”)

The Panel does not find Reverse Domain Name Hijacking.

DECISION

Complainant 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 <trutag.com>, <truetag.net>, <truetag.org>domain names REMAIN WITH Respondent.

Hon. Karl V. Fink (Ret.), Panelist

Dated: October 28, 2013