national arbitration forum

 

 DECISION

 

Selena USA, Inc. v. Vertical Axis Inc.

Claim Number: FA1206001448594

 

PARTIES

Complainant is Selena USA, Inc. (“Complainant”), represented by Wade Rector, Indiana, USA.  Respondent is Vertical Axis Inc. (“Respondent”), represented by Ari Goldberger of Esqwire.com, New Jersey, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <tytan.com>, registered with Fabulous.com Pty Ltd.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

 

Hon. Neil A. Brown, Beatrice O. Jarka and Dennis A. Foster (Chair) as Panelists.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 13, 2012; the National Arbitration Forum received payment on June 14, 2012.

 

On June 13, 2012, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <tytan.com> domain name is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name.  Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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 June 15, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 5, 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@tytan.com.  Also on June 15, 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 July 3, 2012.

 

On July 10, 2012, Complainant filed an Additional Submission, which was not in compliance with the National Arbitration Forum’s Supplemental Rule 7 with respect to timeliness.  As the Additional Submission did not comply with said rule, the Panel will not consider it in rendering the decision below.

 

On July 19, 2012, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Hon. Neil A. Brown, Beatrice O. Jarka and Dennis A. Foster (Chair) as Panelists.

 

By a Procedural Order dated August 6, 2012, the Panel decided it needed an extension until August 10, 2012  to file its Decision in this Case.   

 

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 name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

- Complainant is an American company that markets sealant and foam products for building and construction use.  It has been in operation since at least 1997 and gained large scale visibility in the United States in 2001.  Complainant now sells its goods in more than 70 countries globally.

 

- Complainant has obtained registrations for its TYTAN trademark since 1997 (in Poland), and registered that mark with the United States Patent and Trademark Office (“USPTO”) in 2008.

 

- The disputed domain name, <tytan.com>, is identical to Complainant’s TYTAN trademark.

 

- Respondent is interested in holding the disputed domain name only for sale to Complainant, or one of its competitors, for an amount far in excess of Respondent’s out-of-pocket registration costs.  After Complaint offered Respondent a reasonable price for the disputed domain name, Respondent informed Complainant that there was a “buy now” price of USD$40,000 for the name.

 

- There is no use associated with the disputed domain name, and no goods or services are offered in connection with it.  Respondent’s business name “Vertical Axis Inc.” has no correlation to the disputed domain name, <tytan.com>.  Respondent is not making a legitimate noncommercial or fair use of the name.

 

B. Respondent

- Respondent registered the disputed domain name on November 4, 2001 when the prior registrant failed to renew the registration.  Respondent had no knowledge of Complainant in 2001 when the disputed domain name was registered by Respondent.  A search of the USPTO registry shows that at least ten other entities have registered marks that incorporate the term, “tytan.”

 

- Respondent registered the disputed domain name as part of a large portfolio of domain names consisting of common or generic terms.  “Tytan” is a typographical variant of the common English language word, “titan.”  Over the years, Respondent has legitimately registered hundreds of domain names consisting of common words with typographical errors.

 

- The Complaint should be denied under the doctrine of laches because Complainant delayed so long after Respondent’s registration of the disputed domain name – more than eleven years – to bring the Complaint.  Moreover, such a delay mitigates any contention that Complainant believes that said registration transpired in bad faith.

 

- Trademark registrations occurring after the disputed domain registration date provide no enforceable rights under the Policy.  Complainant put forth contentions of only obscure mark registrations in Poland, the Czech Republic and Romania, existing prior to Respondent’s registration of the disputed domain name.  While Complainant may have rights in its mark now, it is unclear how extensive those rights were in 2001.

 

- Respondent has rights and legitimate interests in the disputed domain name.  Respondent registered <tytan.com> as a misspelling of a common English language word and not based on its possible trademark value. 

 

- Respondent uses the disputed domain name in connection with pay-per-click links related to the common meaning of the misspelled word.  Moreover, such links were auto-generated by a third party, Google.  Respondent has never used the disputed domain name to link to or compete with Complainant’s products. 

 

- Respondent did not register the disputed domain name with the sole intent to profit from Complainant’s trademark rights.  Moreover, the expiration of the name’s registration prior to Respondent obtaining the name demonstrates that any trademark claims had been abandoned as of that date.

 

- Respondent did not register or use the disputed domain name to compete with or disrupt Complainant’s business.  Respondent’s registration of numerous other descriptive terms, with misspellings, as domain names is further evidence of good faith with respect to registration and use of the disputed domain name.

 

- Respondent did not register the disputed domain name in bad faith as demonstrated by the delay in Complainant’s filing of the Complaint with respect to the registration date.

 

FINDINGS

Since at least 1997, Complainant has produced and marketed foam and sealant products used in the construction of buildings and houses.  Beginning in 1997, Complainant has obtained trademark registrations for its TYTAN mark in various European countries (e.g., Poland Patent Office Registration No. 130539; issued Aug. 6, 1997) and with the USPTO (Registration No. 3,519,158; issued Oct. 21, 2008).

 

Respondent is the registered owner of the disputed domain name, <tytan.com>, with a registration date of November 4, 2001.  Respondent registered the disputed domain name as part of its registration of multiple domain names. Respondent uses the disputed domain name to collect pay-per-click fees connected with third party links placed on Respondent’s website that is located at that name.

 

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

 

Complainant has provided the Panel with ample evidence (see Amended Complaint Annex) that Complaint possesses valid trademark registrations for the TYTAN mark with several European countries and the USPTO.  Such evidence convinces the Panel that Complainant has the requisite rights in its TYTAN trademark to comply with Policy paragraph 4(a)(i).  See United Way of America v. Alex Zingaus, FA 1036202 (Nat. Arb. Forum Aug. 30, 2007) (“Panels have long recognized Complainant’s registration of a mark with a trademark authority is sufficient to confer rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Williams-Sonoma, Inc. v. Kurt Fees c/o K Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding, among other things, that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).

 

The disputed domain name, <tytan.com>, replicates exactly Complainant’s mark with the addition of the gTLD, “.com”.  As the added gTLD is irrelevant for purposes of a domain name/trademark comparison under the Policy, the Panel finds that the disputed domain name is identical to Complainant’s TYTAN mark. See Luxair SA v. Puma Industrial Co., Ltd , D2009-0162 (WIPO Mar. 31, 2009) (where the panel found <luxair.com> to be identical to the LUXAIR mark); see also Snow Fun, Inc. v. James O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name, <termquote.com>, is identical to the complainant’s TERMQUOTE mark); see also Gardline Surveys Ltd v. Domain Finance Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).

 

The Panel rules that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

 

Rights or Legitimate Interests

 

In addressing whether Respondent has rights or legitimate interests in the disputed domain name, Complainant sets forth a prima facie case based on its holding of the TYTAN trademark which is identical to that name.  Moreover, Complainant has contended that Respondent satisfies none of the criteria cited in Policy paragraph 4(c) that might support the proposition that Respondent possesses such rights or interest.  In line with the consensus of prior UDRP decisions, the Panel must now assess whether Respondent has produced evidence sufficient to dislodge that prima facie case.  See Philip Morris USA Inc. v. yfmg, D2010-0058 (WIPO Mar. 2, 2010) (“Once the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name.”); see also G.D. Searle & Co. v. Martin Marketing, FA  118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”).

 

In its defense, Respondent has not asserted that it was granted a license or permission by Complainant to use its trademark in the disputed domain name.  Furthermore, with respect to Policy paragraphs 4(c)(ii) and (iii), Respondent contends neither that it, Vertical Axis, Inc., has been commonly known by the disputed domain name, nor that it uses that name for legitimate noncommercial or fair use purposes.

 

Respondent’s primary argument in support of its claim to rights and legitimate interests in the disputed domain name is that Respondent registered <tytan.com>, along with other domain names, for its descriptive value as a common word; and that collecting pay-per-click fees in connection with third party links displayed on the website associated with the disputed domain name is a “bona fide offering of goods and services” per Policy paragraph 4(c)(i).

 

Prior UDRP rulings have found legitimacy within revenue generation schemes that stem from collecting domain names that reflect descriptive terms, so long as the associated website offerings are consistent with the meanings of those terms.  In the case, Media General Communications, Inc. v. Rarenames, WebReg, D2006-0964 (WIPO September 23, 2006), the learned panelist devised a five-pronged test for establishing rights and legitimate interests in those circumstances, thusly:

 

- the respondent regularly engages in the business of registering and reselling domain names, and/or using them to display advertising links;

 

- the respondent makes good-faith efforts to avoid registering and using domain names that are identical or confusingly similar to marks held by others;

 

- the domain name in question is a “dictionary word” or a generic or descriptive phrase;

 

- the domain name is not identical or confusingly similar to a famous or distinctive trademark; and

 

- there is no evidence that the respondent had actual knowledge of the complainant’s mark.

 

Among other Policy panels that have adopted this test. See Domisys SAS v. Wachter Consulting Inc., D2008-0767 (WIPO July 10, 2008); see also Ayrton Senna Empreedimentos Ltda. v. Nett Corp, FA 1100619 (Nat. Arb. Forum Jan. 7, 2008); see also Gigglesworld Corp. v. Mrs Jello, D2007-1189 (WIPO Nov. 16, 2007).

 

When applied to the instant case, the Panel concludes that clearly the third and fourth conditions are unmet.  “Tytan” is not a “dictionary word;” and TYTAN is a distinctive trademark.   

 

In making its argument, Respondent relies heavily on three prior Policy decisions:  Vanguard Trademark Holdings USA LLC v. Admin. Domain / Vertical Axis, Inc., FA 1383694 (Nat. Arb. Forum May 31, 2011); C Brewer & Sons Ltd. v. Vertical Axis Inc., D2009-1759 (WIPO Apr.11, 2010); and Havanna S.A. v. Brendhan Hight, Mdnh Inc, D2010-1652 (WIPO Nov. 26, 2010).  In each case, panels were confronted with trademarks composed entirely of descriptive words: “national” in Vanguard, supra; “wallpaper direct” in C Brewer, supra; and “Havanna” (the common name for the capital of Cuba in several European languages) in Havanna, supra.  Thus, those panels allowed respondents to retain ownership of disputed domain names identical or confusingly similar to the corresponding mark on the basis of use involving pay-per-click linkage, because, as the panel in Vanguard, supra put it succinctly, “Ultimately, it is the common word that prevents a finding for Complainant.”

 

Notwithstanding the proclamations of Respondent to the contrary, “tytan” is not a descriptive or common word in the English language.  Moreover, it is not a common misspelling of the word “titan,” except among people who do not spell well.  Although aware that “tweets” and “texts” are swiftly eroding the practice of precise spelling in the English language, the Panel believes that some standards still remain – at least until the younger generation gains complete control.  “Tytan” is not an acceptable spelling of “titan;” no more than “tirant” is an acceptable spelling of “tyrant.”

 

As the Panel finds that the disputed domain name, <tytan.com>, is not a common or descriptive word, the Panel also finds that, in line with countless prior UDRP decisions, Respondent’s use of that name – identical to Complainant’s distinctive TYTAN trademark – for a website containing third party linkages to gain pay-per-click revenue does not constitute a bona fide offering of goods and services per Policy paragraph 4(c)(i).  See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (“Because the website at the disputed domain name is composed entirely of links to third-party websites, Respondent is not offering any goods or services on its website.”); see also Assoc. of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (“Respondent’s use of the domain name for commercial gain, presumably by earning click-through fees for diverting Internet users seeking information on Complainant to other websites, is not a bona fide offering of goods or services under Policy ¶ 4(c)(i)…”).

 

Since there has been no successful rebuttal to Complainant’s prima facie case, the Panel rules that Complainant has satisfied Policy paragraph 4(a)(ii).

 

Registration and Use in Bad Faith

 

The Policy requires that Complainant show that the disputed domain name was registered and is being used in bad faith.  Policy paragraph 4(b) suggests four circumstances which might give rise to such a showing:

 

(i) circumstances indicating that [respondent has] registered or [respondent has] 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 [respondent’s] documented out-of-pocket costs directly related to the domain name; or

 

(ii) [respondent has] 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 [respondent has] engaged in a pattern of such conduct; or

 

(iii) [respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

 

(iv) by using the domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] 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 [respondent’s] web site or location or of a product or service on [respondent’s] web site or location.

 

Complainant has selected paragraph 4(b)(i) above, upon which to base its claim of bad faith, by contending that Respondent offered to sell the disputed domain name for USD$40,000, which exceeds any reasonable costs it might have incurred directly related to the name.  However, the Panel finds flaws in this contention from the fact that Respondent’s demand for payment was not only in response to an inquiry initiated by Complainant, but came more than ten years after the disputed domain name was registered by Respondent.  Based on this record, it is difficult for the Panel to infer that Respondent intended primarily to sell that name to Complainant, or one of its competitors, at the time of registration.  Although Complainant had registered its mark in a few Eastern European countries before said registration by Respondent, Complainant admits that its business did not begin to flourish in the United States, Respondent’s domicile, until 2001 (the USPTO registration submitted by Complainant to the Panel cites September 1, 2001 as the commencement of commerce), preceding Respondent’s actions by mere months at best.  Simply put, the Complaint has failed to provide to the Panel enough evidence to rebut Respondent’s contention that it was not even aware of Complainant prior to registration of the disputed domain name. 

 

However, the Policy does not intend that the circumstances enumerated in paragraph 4(b) be the only circumstances upon which to base bad faith registration and use.  See Advanta Corp. v. St. Kitts Registry, FA 1068741  (Nat. Arb. Forum Oct.18, 2007) (“The Panel finds that the factors listed under Policy ¶ 4(b) are not the exclusive examples of evidence of bad faith registration and use.”); see also HSBC Finance Corp. v. Clear Blue Sky Inc., D2007-0062 (WIPO June 4, 2007) (“The examples of bad faith registration and use set forth in paragraph 4(b) are not meant to be exhaustive of all circumstances from which such bad faith may be found.”).

 

In its Response, Respondent suggests, through its inclusion of USPTO and Google searches using the term “tytan,” the ease with which it could have detected, even in 2001, various holders (other than Complainant or its competitors) of trademarks or brand names that used or incorporated that term.  These holders would have provided a ready, potential market for a sale price far in excess of Respondent’s out-of-pocket registration costs.

 

Respondent claims that it acquired the disputed domain name – after its previous owner allowed the registration to expire – primarily for use vis-a-vis its generic meaning.  As reasoned in the section above, the Panel finds no generic meaning for “tytan,” as opposed to “titan.”  However, even if conceding that “tytan” is equivalent to “titan,” the Panel does not view the web page shown in the Response (located at <tytan.com>) as offering goods, services or links that are associated with the meaning of that term.  Instead, the page seems to offer a general and random selection of links that do not relate to any descriptive term, other than possibly “miscellaneous.” 

 

Indeed, the Panel’s view of said page is that it is dominated by the topmost heading which suggests that the disputed domain name is for sale.  The Panel thus concludes that Respondent’s primary intent from the beginning was to sell the name, most likely in the hope that one of the entities that had a vested interest in the distinctive mark, TYTAN, would pay a premium price.  Moreover, Respondent’s continued use of that name was to derive as much commercial gain from confused Internet users searching for goods or services under that mark, until such an invested buyer emerged.  The Panel finds such activity to constitute bad faith registration and use of the disputed domain name.  See Regency Homes, L.C. v. RegencyHomes.com, D2004-0412 (WIPO July 28, 2004) (finding bad faith registration and use of the dispute domain name, based on the conclusion that “. . . Respondent registered a domain name in order to prevent an owner of a trademark or service mark from obtaining that mark in a corresponding domain name.”) (emphasis added); see also General Electric Co. v. Marketing Total S.A, D2007-1834 (WIPO Feb. 1, 2008).

 

Respondent makes much of the doctrine of laches as a bar to the Complaint.  The Panel agrees that certainly the delay from the time of disputed domain name registration to the filing of the Complaint, more than ten years, does not enhance Complainant’s contentions.  However, the major diminution in Complainant’s case caused by the delay centers on determining Respondent’s intentions at the time Respondent registered the disputed domain name, which topic is dealt with by the Panel above.  That conceded, even a case Respondent cites, C Brewer, supra, notes that “It has been long-established that the doctrine of laches has no bearing on domain name proceedings filed under the Policy.”  See also Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002).

 

In insisting that the laches doctrine be applied in this case, Respondent cites New York Times Co. v. Name Admin. Inc. (BVI), FA 1349045 (Nat. Arb. Forum Nov. 17, 2010), where the panel denied the complaint based specifically on a laches defense.  However, the ruling in that case emphasized the sophistication of the complainant, The New York Times Company, which failed to assert its rights in a timely manner.  Not to denigrate Complainant, but there is no evidence in the record to suggest a favorable comparison between it and The New York Times Company – a more-than-century-old famous company that is very active in internet publishing services – in terms of corporate sophistication with respect to trademark/internet rights.  Thus, the Panel finds no match in circumstances.  New York Times, supra, panel also referred to the detrimental reliance placed upon the respondent.  In this case, according to its Response, Respondent simply registered the disputed domain name and left it for a Google auto-generated service to select a website and links (which, as the Panel noted above, bear no discernible relationship to the misspelled word, “tytan” or “titan” for that matter).  Not much detriment there.  For these reasons, the Panel declines to apply the doctrine of laches to this case.

 

Accordingly, the Panel rules that Complainant has satisfied Policy paragraph 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel majority concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <tytan.com> domain name be TRANSFERRED from Respondent to Complainant.

 

                                        Beatrice O. Jarka, Panelist

Dennis A. Foster, Chair

 

Dated:  August 7, 2012

 

 

Tytan Dissent

The Hon Neil Brown QC, Panelist

 

 

The dissenting panelist’s view of this case is that the limited evidence on the record does not enable him to say on the balance of probabilities that the Complaint has been made out.

 

The Complainant and the trademarks it relies on.

 

The Complainant in these proceedings is Selena USA Inc. Selena USA Inc. is a company incorporated in Indiana, USA, where the company operates. It was incorporated on September 10, 2007[1]. The disputed domain name was registered by the Respondent on November 4, 2001.

 

As Selena USA, Inc is the Complainant, it is obliged under the terms of the UDRP to produce evidence to the effect that it has rights in a trademark or service mark.

 

The Complainant submitted evidence showing that it, Selena USA, Inc., owns a trademark registered with USPTO for TYTAN, applied for on September 12, 2007, a few days after the company was incorporated and registered on October 21, 2008, both dates being significant as they were well after the domain name had been registered.

 

The Policy requires only that a complainant show that it “has” trademark rights, not that it “had” them, which has often been said to be a low threshold. It is clear from the above evidence that the Complainant “has” a trademark, namely the US trademark, albeit one that was registered after the domain name was registered and by a company that itself came into existence some years after the domain name was registered, which of course must have consequences when other elements of the Policy come to be considered.

 

The United States trademark is the only trademark registered in the name of the Complainant. However, it relies on 3 other trademarks registered before the domain name and 3 others registered after the domain name. It submits that all of these trademarks are trademarks of Selena Group Inc. To that end the Complainant appended several trademark certificates to the Complaint.

 

The first problem with that evidence is that the certificates do not show that Selena Group, Inc was or is the owner of any trademarks at all. The various European trademarks relied on, although none of the certificates has been translated into English, appear to have been registered not in the name of Selena Group. Inc., but in the name of other European companies.

 

It is true that those companies carry the word Selena as part of their corporate name. But there is no evidence of whether they are related to Selena Group Inc in any way. There is also no evidence as to their relationship with the Complainant itself, whether the Complainant is a licensee of those companies or whether by some other means they have conferred any rights in the trademarks in question on the Complainant to enable the Complainant to say that it has rights in those marks.

 

The real problem with the evidence is that there is no explanation in the Complaint or the supplementary submission of the Complainant as to what association Selena Group Inc has with the Complainant and whether that association means the Complainant has rights in a trademark.

 

Nor is there any explanation of whether the European companies are subsidiaries or associated companies of the Complainant or each other.

 

Fortunately, the days are long since passed when such shortcomings would determine by themselves the outcome of legal proceedings and if there were evidence of such an association between the various companies and with the Complainant, a panel could properly  conclude that there was evidence that the Complainant itself had rights in the trademarks relied on.

 

However, in the present case:

 

(i)            the Policy expressly requires proof that it is the Complainant itself which has rights in a trademark, a requirement that is pivotal to the entire UDRP process and it is beyond argument that if the trademark is not in the name of the Complainant, there should be some alternative evidence to establish that the Complainant has rights in the mark[2];

(ii)          the Complainant  was clearly put on notice in the Response that it was being put to its proof on the issues in the proceeding and that in particular that its trademarks were under challenge ; the Complainant appreciated this as it returned to the contest with a supplementary submission, but one that did not offer any evidence on this issue;

(iii)         if the European companies are subsidiaries of the Complainant or associated with it in some other way, that could easily be proved by appropriate evidence which must be in the possession of the Complainant if it exists at all[3]; and

(iv)         the claim under consideration is one where the Complainant is seeking to prise a potentially valuable piece of personal property[4] from the Respondent; and the Respondent and the panel are therefore entitled to see that case made out by proper proof before such a drastic result follows.

 

As such, the issue under discussion is a matter of substance rather than formality and a panel is entitled to see actual evidence that makes out the requisite elements of the Complainant’s case. In particular, there should be evidence that the Complainant has rights in the trademarks relied on, either as a registered owner or licensee or on some other basis. It will be seen from the above analysis that the requisite evidence is not present, for there is no evidence that the Complainant is the owner of any trademark other than the US one; Selena Group Inc is clearly not the owner of the European trademarks as alleged in the Complaint and there is no evidence that the registration of any of the European trademarks give the Complainant any trademark rights.

 

It should be added that the Complainant does not claim that it has any common law or unregistered trademark rights.

 

Accordingly, the Complainant has rights in a mark, namely the United States mark, but it has not been shown that it has rights in any of the European marks. The case should therefore proceed to the remaining two elements of the Policy but on the basis that the only trademark in which the Complainant has rights is the United States trademark.

 

Rights and Legitimate Interests

 

The issue on this element comes down to whether the nature of the disputed domain name is such that it gives rise to a right or legitimate interest because it is the misspelling of an ordinary word.

 

The majority has correctly expressed the view that, to make out its case, there is an obligation on the Respondent to show that the word “tytan” in the domain name <tytan.com> is a “’dictionary word’ . . . (or) a generic or descriptive phrase . . .”. The majority has come to the conclusion that the word is none of those and that as a consequence the Respondent cannot show that it has the right or legitimate interest in the domain name that comes from using such a word in a domain name. The reason given for that conclusion is that it is not an “acceptable” spelling of the word “titan”. The view of this panelist is that to use “acceptable” spelling as a reason for deciding whether a word is “generic” or “descriptive”, or not, is unhelpful and will not enable problems of this sort to be resolved in the future. The test of acceptable spelling relied on by the majority immediately raises the question of how is it to be decided whether the spelling of a word in any given case is acceptable? In view of the fact that spelling is notorious for changing with the passage of time, it also raises the question: acceptable as at what time? Moreover, such a potentially variable test is a very insecure basis on which to expect parties to make future decisions on domain name matters, especially when there is a better test that would cause no such problems.  That test is simply to ask whether, despite the misspelling, the word sought to be invoked by the domain name is clear, or, to adopt the similar test in Dial-A-Mattress Operating Corp. v Ultimate Search, D2001-0764 (WIPO Sept. 26, 2001) (analyzing the exchange of “matress” for “mattress”) whether is it “likely and obvious . . .” that the word is a misspelling of another word.

 

Applying that test to the present case, some would say there is no need to state the obvious that the word “tytan” is a misspelling of the word “titan”, because it sounds the same, looks largely the same, is spelled virtually the same and is no better or worse than some of the other ways people apparently spell “titanic”[5] and presumably “titan”. An objective bystander might well ask: if “tytan” is not a misspelling of “titan”, then what is it?

 

It must surely be clear that the spelling of the domain name invokes the common, dictionary, generic or descriptive word “titan.” That view is reinforced by the fact that, as the Respondent points out, a Google search (confirmed by this panelist’s Yahoo! search) shows that there are many third party uses of the word in its spelling as in the domain name.

 

The evidence is also to the effect that part of the Respondent’s business is to register domain names that are misspellings of generic words. What is equally clear is that such a spelling is not accidental, but deliberate and designed to invoke the notion of a titan as an object of strength and power as in the Titans being mythological figures or “giants of incredible strength and stamina”[6] and to attract internet users who are looking for goods and services that come within that genre, no matter how it is spelled. It seems therefore that the Respondent has done little more than adopt the misspelling or altered spelling of a common, generic or descriptive word and as such should be free to use the word, provided it is done so properly and not in some underhand way to target or do damage to a trademark owner.

 

The question then is whether the Respondent has used the domain name in a generic or descriptive sense. The Respondent claims that it has done so. The majority of the Panel say that it has not, because it is used for links to third party websites. There are, however, many UDRP decisions, cited by the Respondent, to the effect that such a use of a domain name may be legitimate provided that the links carried are themselves generic .In the present case the Respondent   has used the website to which the domain name resolves to promote a very broad range of goods and services of a general nature and in common usage.

The Respondent has not used the website to promote the Complainant’s products or those in competition with them or to target the Complainant or its goods. Accordingly, the Respondent has been using the domain name in a generic or general sense and not in any sense of trying to trade off the Complainant’s trademark or present itself as the Complainant. See Accetta v. Domain Admin, FA 826565 (Nat. Arb. Forum Jan. 2, 2007) (finding the respondent’s use of the disputed domain name to operate a pay-per-click search engine was a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) because the terms of the disputed domain name were of common usage and did not refer to the complainant or its products).

 

Accordingly, this is a case of a generalized word being used to promote a general range of goods and services to the complete exclusion of the Complainant and its own goods and services. As such it gives rise to a right or legitimate interest in the disputed domain name

 

Bad Faith

 

The dissenting panelist also disagrees, with respect, on the finding of the majority on bad faith.

 

The disputed domain name was registered on November 4, 2001 and clearly the intention of the Respondent must be assessed as at that time. At that time, the Complainant had not been incorporated and its United States trademark, the only trademark in the name of the Complainant, had not been registered or even applied for. As has also been noted above, the Complainant did not allege that it or any associated company had established common law trademark rights in the name. It is therefore difficult to see how the Respondent could have been motivated by bad faith towards the Complainant or its trademark at the time of registration of the domain name when neither the company or its trademark existed. Even if the European trademarks and the dates when they were registered are taken into account, it is hard to conceive how or why the Respondent would have registered the domain name when, at that time, trademarks had been registered in Poland, the Czech Republic and Romania, but not in the United States or elsewhere where they may have come to the notice of the Respondent. In the face of the Respondent’s denials , its evidence that it had not heard of the Complainant, did not register the domain name because of the TYTAN trademark and that its business is built on the practice of registering generic words, including misspellings, the Respondent’s explanation of why it registered the domain name is at least plausible.

 

Moreover, it seems extremely unlikely that the Respondent registered the domain name because it knew of the Complainant or that the Complainant had achieved any sort of prominence in the United States by the time the domain name was registered on November 4, 2001. The Complainant’s evidence is that “TYTAN has been visible on a large scale in the U.S. since 2002 (see attached trade show documents).”

 

The documents referred to show an interest before then in the National Hardware show in Chicago , but it should be remembered that the Complainant itself was not incorporated until  September 10, 2007 and its trademark was not filed for until September 12, 2007 and registered until October 21, 2008, although the domain  name had been registered on November 4, 2001. As such, it seems likely that the Complainant’s involvement in the United States was peripheral until well after the domain name was registered.

 

A finding of bad faith is a serious finding and there should at least be cogent evidence that the Respondent probably had such a motivation, which on the evidence in the present case seems unlikely. The dissenting panelist does not accept the argument of the majority that the fact that the domain name is now for sale shows that this was the Respondent’s primary intent at the time the domain name was registered. It certainly does not show that the Respondent intended to sell the domain name to the Complainant or a competitor. That is the requirement of paragraph 4(b)(i) of the Policy and there is no evidence that that element has been made out. Indeed, it is extremely unlikely that it was or could have been the intention of the Respondent when the domain name was registered. The fact that it is for sale is entirely consistent with registering a domain name, developing it into a commercially valuable asset and then selling it, a business practice that is legitimate and long recognised as such. 

 

Accordingly, it cannot be said that the domain name was registered and used in bad faith.

 

Laches

 

On the question of laches, there are now a series of decisions to the effect that laches or delay may be taken into account and that each case should be judged on its own facts. However, the present case is deficient on more substantive grounds which should be the focus of attention.