Edward B. Hamrick dba Hamrick Software v. Name Administration Inc. (BVI)
Claim Number: FA1310001526981
Complainant is Edward B. Hamrick dba Hamrick Software (“Complainant”), represented by Darren S. Rimer of Rimer & Mathewson LLP, California, USA. Respondent is Name Administration Inc. (BVI) (“Respondent”), represented by John Berryhill of John B. Berryhill LLC, Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vuescan.com>, registered with iRegistry Corp.
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge has no known conflict in serving as Panelists in this proceeding.
M. Kelly Tillery, Chair and Panelist
The Honourable Neil Anthony Brown QC, Panelist
Linda M. Byrne, Panelist
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 28, 2013; the National Arbitration Forum received payment on October 28, 2013.
On October 29, 2013, iRegistry Corp. confirmed by e-mail to the National Arbitration Forum that the <vuescan.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 November 1, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 21, 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@vuescan.com. Also on November 1, 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 November 21, 2013.
Additional Submissions were received from Complainant on November 6, 2013 and from Respondent on December 2, 2013.
On December 2, 2103, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed M. Kelly Tillery, Esquire as Panelist and Chair, Neil Anthony Brown as Panelist and Linda M. Byrne as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant contends that:
1. Complainant owns valid and enforceable rights in his VUESCAN trademark. Complainant has been using his trademark for computer scanner software since March 4, 1999, and is the owner of U.S. Trademark Registration No. 3,743,816 VUESCAN;
2. The Domain Name <vuescan.com>, registered by Respondent on October 31, 2000, is identical to Complainant’s VUESCAN trademark, with the addition of the “.com” top-level domain;
3. Complainant has priority of use, with use dating back to March 4, 1999. There is no evidence that the Respondent has ever offered any bona fide goods or services using the Domain Name or the term VUESCAN. Respondent’s use of the domain name has been as a web portal, to make money from Internet traffic providing third party links to other photo scanning software, which compete with the Complainant’s software;
4. Respondent’s use of the disputed domain name to redirect Internet users to third-party websites disrupts Complainant’s business and constitutes registration and use in bad faith;
5. In addition, the Domain Name currently has an offer to sell the domain name to anyone wishing to make an offer. This offer to sell the domain name to the highest bidder constitutes a bad faith use of the domain name;
6. Complainant attempted to purchase the Domain Name from the Respondent for $250 in 2011. Respondent did not respond, and effectively refused to sell the Domain Name to Complainant for a nominal sum;
7. Since there is no generic or descriptive use of the Domain Name, the Respondent’s registration was made in bad faith, followed by the Respondent’s use as a portal, which also constitutes bad faith. .
B. Respondent contends that:
1. Respondent is the original Registrant of the domain name, having registered and used it since October 2000;
2. Complainant claims to have acquired distinctiveness in the mark on the basis of 11 ½ years of “substantially exclusive” use “next preceding the date of this claim” which date was September 2009;
3. Such date would have been long after the Respondent’s registration and use of the domain name;
4. There is no evidentiary basis to demonstrate common law rights in the disputed term as of the time the Respondent registered the domain name;
5. Even if the Complainant’s US rights were not junior to the Respondent’s registration of the domain name, the Respondent’s use of the domain name could not be considered to be infringing. Indeed, the words “view” and “scan”, corresponding to both versions of the phrase which the Respondent has registered as a domain name, are widely used by other parties;
6. Respondent has been legitimately using the disputed domain name for far longer than any claim of acquired distinctiveness by the Complainant in the claimed mark;
7. The domain name was registered by the Respondent in 2000, which pre-dates the Complainant’s proffered US trademark registration by nearly ten years, and thus could not have been undertaken in view of the Complainant’s registered trademark;
8. The domain name cannot be considered to have been registered in bad faith, as the Complainant has not demonstrated the existence of a trade or service mark right at the time the domain name was registered;
9. In 2005, the Complainant stated, “If you don't respond in 10 days, I will take legal action.” Ten days came and went, and the Complainant took no action.
10. Having legitimately acquired and used the domain name for years, the Respondent has every right to sell the domain name, or to respond to inquiries for its purchase, from any party.
C. Additional Submissions
Complainant further contends that:
1. Complainant had been doing extensive public testing of his VUESCAN software prior to March 4, 1999. As of June 10, 1998, Complainant had announced the release of his VUESCAN software, and a public discussion on usenet took place on June 10, 1998
2. Between June 10, 1998 and October 31, 2000 (the date the Respondent registered the Domain Name), there were 882 mentions of VueScan on usenet.
3. Thus, the Complainant’s trademark, VueScan, was used as a trademark for the sale of the Complainant’s software since March 1999, and has been referred to on usenet 882 times correctly, and most of the other 172 times incorrectly, between June 10, 1998 and October 31, 2000. During this time, Complainant sold approximately 16,375 copies of his VUESCAN software, at a price of $40 per copy of the software, for total sales of $655,000 during this time period. Complainant had average daily sales of about $1,100 for each and every day during this almost 20 month period. These sales took place both in the United States (about 50%), and throughout various countries of the world (the other 50% of sales).
4. Respondent is making money off click-through hyperlinks from people likely seeking the Complainant’s product, VueScan. This is not a legitimate use.
Respondent further contends that:
1. Complainant presents no evidentiary basis to conclude that persons visiting the Respondent’s site are seeking the Complainant’s product Complainant’s concession before the USPTO that the term is descriptive in relation to the Complainant’s scanner software, and had been so before September 2009, bars the Complainant, by the doctrine of equitable estoppel, from claiming that other descriptive uses of the term are somehow illegitimate, such as the Respondent’s use of the domain name since October 2000 and the Respondent’s use of the phonetically-equivalent, and undisputed, viewscan.com domain name since 2003. Complainant’s recent acquisition of a federal trademark registration in connection with scanner software does not negate the demonstrated fact that the terms “VUESCAN” and “VIEWSCAN” are not solely associated with the Complainant:
2. At the time the Complainant alleges to have commenced use of “VUESCAN” for scanner software, the now-expired US TM Reg. No. 2,076,914 for “VUESCAN” for reconditioned cable equipment was in full force and effect since 1997.
3. Complainant’s reference to Usenet conversations about Complainant’s software does not establish any fact of which the Respondent was actually aware, or of which the Respondent had a duty to be aware.
1. Complainant has met its burden to prove by a preponderance of the relevant, admissible evidence that Respondent’s Domain Name is identical and/or confusingly similar to a Trademark in which Complainant has rights.
2. Complainant has not met its burden to prove by a preponderance of the relevant, credible, admissible evidence that Respondent has no rights or legitimate interest in respect of the Domain Name.
3. Complainant has not met its burden to prove by a preponderance of the relevant, admissible evidence that Respondent’s domain name has been registered and is being used in bad faith.
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 contends that it has rights in the VUESCAN mark which has been used in interstate commerce in the United States for the provision of software for processing images, graphics, and text. Complainant owns a USPTO Registration for the VUESCAN mark (Reg. No. 3,743,816 filed Dec. 15, 2008; registered Feb. 2, 2010). A registered mark is evidence of having rights in that mark, dating back to the registration’s filing date. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). Therefore, the Panel finds that Complainant has rights in the VUESCAN mark based upon trademark registration dating back to December 15, 2008 pursuant to Policy ¶ 4(a)(i).
Complainant claims it began using its VUESCAN mark well before it filed for registration of its mark, beginning in April 1999. Complainant claims its software quickly was accepted as the leading scanner software because of its flexibility, ease of use, and compatibility with hundreds of scanners.
The USPTO Registration for the VUESCAN mark lists a date of March 3, 1998 as the mark’s First Use In Commerce. The Panel could find that Complainant has common law rights in the VUESCAN mark dating back to March 3, 1998 pursuant to Policy ¶ 4(a)(i). Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000), (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).
The <vuescan.com> Domain Name is identical to the VUESCAN mark. The Domain Name is nothing more than Complainant’s mark coupled with the gTLD “.com.” Fed’n of Gay Games, Inc. v. Hodgson, D2000-0432 (WIPO June 28, 2000), [the panel found that the domain name <gaygames.com> identical to complainant's trademark GAY GAMES]. As such, this Panel similarly finds that Respondent’s <vuescan.com> domain name is identical to the VUESCAN mark pursuant to Policy ¶ 4(a)(i).
While Respondent argues that its registration of the <vuescan.com> Domain Name predates Complainant’s alleged rights in the 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 AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).
While Respondent contends that the <vuescan.com> domain name is comprised of common and descriptive terms and as such cannot be found to be identical to Complainant’s mark, the Panel finds that such a determination is not necessary or appropriate 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)).
Therefore, Complainant has met its burden of proof on this first prong.
The Panel holds that Complainant has not established a prima facie case in that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
Respondent asserts that it has rights or legitimate interests in the disputed domain name. Respondent argues that it maintains a sizable portfolio of domain names comprising simple words, short phrases, and other descriptive or common terms for the purpose of providing keyword advertising in relation to the words in the domain name, and Respondent notes that it is also the registrant and operator of the domain name to which the disputed domain name is phonetically equivalent, <viewscan.com>. Further, Respondent points out that the links displayed do not relate to scanner software, as they are listed under headings such as “Digital Televisions,” “LCD Television,” “Plasma Televisions,” “Projection Televisions,” and so on.
As such, the Panel finds that Respondent has demonstrated that it uses the disputed domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(ii) and thus that Respondent has rights or legitimate interests in the <vuescan.com> domain name. See Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name); McMullen Argus Publ’g Inc. v. Moniker Privacy Servs., D2007-0676 (WIPO July 24, 2007) (holding that “pay-per-click websites are not in and of themselves unlawful or illegitimate”).
Therefore, Complainant has failed to meet its burden of proof on this prong.
The Panel finds that Complainant has failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See 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 the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
The Panel concludes that Respondent has rights or legitimate interests in the <vuescan.com> domain name pursuant to Policy ¶ 4(a)(ii), and that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
The Panel further finds that Respondent has not registered or used the <vuescan.com> domain name in bad faith. 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)).
Respondent argues that the disputed domain name was not acquired for the primary purpose of selling it to a trademark owner given that at the time of registration there was no evidence that such a mark existed. Respondent asserts that it has a business interest in the domain name that negates any instance of bad faith that would otherwise result from entertaining offers to purchase the domain name. The Panel finds that Respondent did not register and is not using the <vuescan.com> domain name in bad faith given that Respondent’s aim in registering and using the disputed domain name was not to eventually sell the domain to the Complainant pursuant to Policy ¶ 4(b)(i), but instead was to hold the merely descriptive domain name for its advertising and marketing Internet processes. See Etam, plc v. Alberta Hot Rods, D2000-1654 (WIPO Jan. 31, 2001) (“Respondent’s offer to sell the domain name does not constitute bad faith, in light of the fact that it has a legitimate interest in the domain name”).
Respondent notes that the links that are displayed via the <vuescan.com> domain name relate to televisions, not scanners or scanner software. In order to demonstrate bad faith under Policy ¶ 4(b)(iii) there needs to be shown some element of competition between the parties. See PRIMEDIA Special Interest Publ’ns. Inc. v. Treadway, D2000-0752 (WIPO Aug. 21, 2000) (holding that the respondent did not register or use the <shutterbug.com> domain name to disrupt the complainant’s business because the respondent’s contemplated use at the time of acquisition was not necessarily competitive with the complainant’s SHUTTERBUG magazine). Thus, the Panel finds no bad faith under Policy ¶ 4(b)(iii) given that Respondent is not targeting the scanner software industry in any way through the commercial hyperlink listings.
Respondent notes again that the disputed domain name is one of many domains that Respondent has registered in its business of maintaining domain names that incorporate descriptive phrases. In Mule Lighting, Inc. v. CPA, FA 95558 (Nat. Arb. Forum Oct. 17, 2000), the panel found no bad faith where the respondent had an active website that has been in use for two years and where there was no intent to cause confusion with the complainant’s website and business. The Panel finds that Respondent has an interest in the operation of its website and that it’s registration and use are thus not a product of Policy ¶ 4(b)(iv) bad faith.
Respondent next alleges that the <vuescan.com> domain name could not have been registered in bad faith as it was registered prior to Complainant’s acquisition of rights in the VUESCAN mark. Respondent notes that Complainant’s alleged date of acquired distinctiveness in its mark and its USPTO trademark registration post-date the Respondent’s acquisition and use of the <vuescan.com> domain name. Further, Respondent argues that the <vuescan.com> domain name clearly could not have been registered in 2000 for the purpose of targeted exploitation of rights which Complainant would not claim to have acquired distinctiveness in as of September of 2009. It has consistently been held that a domain name cannot have been registered in bad faith where its registration date pre-dates the time at which the complainant acquired rights in the allegedly-infringed-upon mark. See Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb. Forum May 16, 2007) (determining the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark). The Panel finds Complainant’s evidence of use prior to the Domain Name registration insufficient to support a finding of bad faith registration. Therefore, the Panel finds that Respondent did not register the <vuescan.com> domain name in bad faith under Policy ¶ 4(a)(iii).
Therefore, Complainant has failed to meet is burden of proof on this prong.
Doctrine of Laches
In 2005 and again in 2008, Complainant contacted Respondent threatening legal action in “ten days.” Complainant did nothing after Complainant’s positive assertion of rights and threat of action without action for over eight years directly implicates the Doctrine of Laches as Complainant was clearly aware of Respondent’s registration and use of the domain name as far back as 2005. The Panel considers the doctrine of laches as evidence for its considerations of the elements of the Policy. See Square Peg Interactive Inc. v. Naim Interactive Inc., FA 209572 (Nat. Arb. Forum Dec. 29, 2003) (“Although laches by itself is not a defense to a complaint brought under the Policy, Complainant's delay in seeking relief is relevant to a determination of whether Respondent has been able to build up legitimate rights in the Domain Name in the interim, and whether it is using the Domain name in bad faith.”); see also Meat & Livestock Comm’n v. Pearce, D2003-0645 (WIPO Oct. 27, 2003) (“Although laches is not a defence in itself under the Policy, the absence of any complaint over a long period of time in which domain names are in active use can suggest that such use does not give rise to a serious problem.”).
Respondent’s continued use for almost 9 years without further action by Complainant simply cannot constitute use in bad faith. Without that alone, Complainant’s Complaint fails.
Reverse Domain Hijacking
Respondent alleges that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute. Respondent contends that Complainant is attempting to deprive Respondent, the rightful, registered holder of the domain name, of its rights to use the disputed domain name. Respondent asserts that the domain name could not have been registered in 2000 for the purpose of targeted exploitation of rights which Complainant would not claim to have acquired distinctiveness in as of September of 2009. Respondent notes that Complainant approached Respondent multiple times over the years threatening legal action but did not follow through. Respondent believes that Complainant’s course of conduct over the years amounts to nothing more than an attempt to wrongfully acquire a domain name that rightfully belongs to Respondent through the misuse of procedures such as UDRP and the United States’ trademark registration process. Thus, the Panel could find that Complainant knew or should have known that it was unable to prove that Respondent lacks rights or legitimate interests in the <vuescan.com> domain name and that Respondent registered and is using the disputed domain name in bad faith.
However, the Panel finds that Complainant, in filing the Complaint in the circumstances described above may have been motivated more by unjustified optimism about the outcome of the proceeding rather than by an intention knowingly to harass Respondent and the Panel is not entirely persuaded that there is sufficient evidence of the latter. Accordingly, on balance and in the exercise of its discretion, the Panel is unable to find that reverse domain name hijacking has occurred. See NetDepositVerkaik v. Crownonlinemedia.com, D2001-1502 (WIPO Mar. 19, 2002) (“To establish reverse domain name hijacking, Respondent must show knowledge on the part of the complainant of the Respondent’s right or legitimate interest in the Domain Name and evidence of harassment or similar conduct by the Complainant in the fact of such knowledge.”); see also Labrada Bodybuilding Nutrition, Inc. v. Glisson, FA 250232 (Nat. Arb. Forum May 28, 2004) (finding that complainant engaged in reverse domain name hijacking where it used “the Policy as a tool to simply wrest the disputed domain name in spite of its knowledge that the Complainant was not entitled to that name and hence had no colorable claim under the Policy”).
Having not established two of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <vuescan.com> Domain Name REMAIN WITH Respondent.
M. Kelly Tillery, Chair and Panelist
The Honourable Neil Anthony Brown QC, Panelist
Linda M. Byrne, Panelist
Dated: December 23, 2013
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