SEVCOR, International, Inc. v. Innovation International

Claim Number: FA0101000096567

Complainant, a United States corporation based in Itsaca, Illinois, owns the service mark, "Retingency," which it first used in commerce in January, 1996 and which the United States Patent and Trademark Office registered on March 14, 2000. See Complainant’s Exhibit C. The mark is for "Executive Personnel Search, Placement and Recruitment Services." Id. In May, 1999, Complainant registered the domain name, "Retingency.com" through Network Solutions, Inc. ("NSI") (now VeriSign). Complainant made payment to NSI for the registration approximately five months later, in October, 1999. See Complainant’s Exhibit B. Unbeknownst to Complainant, NSI deleted the domain name for nonpayment. See Complainant’s Exhibit E. NSI returned the payment to Complainant in February, 2000. Id. Complainant discovered in the Whois database that Respondent had registered "Retingency.com" on February 18, 2000. See Complainant’s Exhibits D.

Complainant contends Respondent has no rights or legitimate interests in "Retingency.com" because Complainant owns the "Retingency" service mark and Respondent is not affiliated or associated with Complainant. Complainant further contends that Respondent registered "Retingency.com" in bad faith because Respondent did so after NSI deleted the domain name, a fact apparently unknown to Complainant until it was too late.

Respondent is a recruitment consultant company based in London, England, which was established in 1996. See Respondent’s Exhibits A, B. The term, "Retingency," according to Respondent, is a "recognised term within the search and selection profession for some years." Respondent’s brief, 4(c). Since at least October, 1999, Respondent has used the term, "Retingency," to identify its search methodology to potential clients. See Respondent’s Exhibits B-D. Respondent conducts most of its business in Europe. See Respondent’s Exhibits B.

Respondent does not dispute that the domain name in question is identical to Complainant’s service mark. Respondent contends, however, that it has had a legitimate interest in the term, "Retingency," in connection with a bona fide offering of services since before it received notice of this dispute.

I. NSI’s invoice for Complainant’s registration of "Retingency.com," dated May 11, 1999, states "Timely receipt of payment will ensure registration …". Complainant’s Exhibit A. The due date for payment was June 8, 1999. Id. Complainant did not attempt to make payment for the registration until approximately five months later, October, 1999. Complainant’s Exhibit B. Sometime prior to October, 1999, NSI deleted Complainant’s registration for "non-payment." Complainant’s Exhibit E. Respondent registered the domain name on February 18, 2000 and evidently made timely payment. See Complainant’s Exhibit D.

II. Complainant and respondent are both in the same profession, executive search consulting, though they practice on different continents. Neither is associated with the other. The term, "retingency," is a term that describes a search methodology used in the parties’ profession.

Prior to any notice of a dispute, a respondent’s use of "the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services" is evidence of a legitimate interest in the domain name. UDRP 4(c)(i) (emphasis supplied). Respondent in this dispute used the term, "Retingency," to identify a particular executive search methodology prior to any notice of a dispute. Respondent also represents that "Retingency" has been "a recognised term within the search and selection profession for some years." Respondent’s brief, 4(c); see UDRP 15(a) (the Panel will "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy"). In support of these points, Respondent submitted into evidence three documents it had presented to potential clients in which Respondent discussed the "retingency" concept, one of which is dated October 21^st, 1999.

Welltec ApS v. Dave Gardner, D2000-1145 (WIPO Oct. 31, 2000) presented analogous facts on this point. In Welltec, the complainant owned the trademark term, "Well Tractors," which identified a particular tool it sold. Respondent, who also was in the business of selling the tool, registered the domain name "welltractor.com." The panel found, based on its review of various industry publications in evidence, that "the term ‘well tractor’ [was] widely used in this business sector and the oil and gas industry generally for the device." In finding that the respondent had a legitimate interest in the domain name, the Panel stated:

Respondent in this case has presented less evidence in support of this point than the Welltec respondent. Specifically, Respondent has presented documents using the term, "Retingency," that only Respondent has produced. The Welltec respondent presented evidence that other industry competitors used the disputed term. Nonetheless, as noted supra, the Panel may decide a dispute on, inter alia, the parties’ statements. Moreover, Complainant has offered no evidence to the contrary. The evidence here is sufficient to support the finding that, like the Welltec respondent, Respondent in this case has a legitimate interest in the domain name despite Complainant’s service mark for the term.

The act of registering a lapsed domain name in and of itself does not necessarily evidence bad faith. In BAA plc v. Spektrum Media Inc., D2000-1179 (WIPO Oct. 17, 2000), the panel found that the act of registering a lapsed domain name - when coupled with additional aggravating factors - amounted to bad faith. In Spektrum, the complainant had used the domain name "heathrowexpress.com" for its Website from which it sold tickets and provided timetables for the rail link known as "The Heathrow Express," a transportation service connected with Heathrow Airport. Due to an oversight, the complainant had let its domain name registration lapse. The respondent, who had no connection with the complainant or Heathrow Airport, then registered the domain name for use with a "click through" site that redirected individuals to a commercial site. The commercial site owner, who likewise had no connection to the complainant or Heathrow Airport, paid the respondent for each individual who clicked through.

The Panel found that the respondent acted in bad faith not only because the respondent registered complainant’s lapsed domain name, but also because (1) the domain name gave the impression that the respondent was connected to complainant, (2) the respondent never even responded to complainant’s letters demanding that respondent relinquish the name, and (3) the domain name had intrinsic appeal since it was connected with a service to a world famous airport.

Here, the facts in evidence are dramatically different. Unlike the complainant in Spektrum, Complainant had never previously registered or maintained the domain name before letting its registration lapse. Unlike the Spektrum respondent, Respondent has previously used the term, "Retingency," in connection with its profession. Additionally, the term is generally recognized in the profession as identifying a particular search methodology. Finally, there is ample evidence from which to reasonably infer that Respondent registered the domain name in a good faith effort to promote its own business, not to disrupt Complainant’s business or trade on Complainant’s mark.

The domain is identical to Complainant’s service mark. Respondent has a legitimate interest in the domain name. There is no evidence that Respondent registered the domain name in bad faith.