DECISION

 

Trimble Inc. v. Jeff Graham

Claim Number: FA2403002087048

PARTIES

Complainant is Trimble Inc. ("Complainant"), represented by Tara K. Hawkes of Holland & Hart LLP, Colorado, USA. Respondent is Jeff Graham ("Respondent"), Canada.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <trimble.ai>, registered with 101domain GRS Limited.

 

PANEL

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

 

Mr. Paul DeCicco, Esq., Mr. Adam Taylor, Esq., and Mr. Darryl C. Wilson Esq. (Chair) as Panelists.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on March 5, 2024; Forum received payment on March 5, 2024.

 

On March 6, 2024, 101domain GRS Limited confirmed by e-mail to Forum that the <trimble.ai> domain name is registered with 101domain GRS Limited, and that Respondent is the current registrant of the name. 101domain GRS Limited has verified that Respondent is bound by the 101domain GRS Limited 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 March 11, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 1, 2024, 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@trimble.ai. Also on March 11, 2024, 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 March 25, 2024.

 

Complainant provided an Additional Submission compliant with the rules on March 29, 2024. Respondent did not provide a compliant Additional Submission.

 

On April 3, 2024, pursuant to Respondent's request to have the dispute decided by a three-member Panel, Forum appointed Mr. Paul DeCicco, Esq., Mr. Adam Taylor, Esq., and Mr. Darryl C. Wilson Esq. as Chair, as Panelists.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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

The Trimble business began in 1978 with Charlie Trimble, and use of the TRIMBLE mark on equipment began at least as early as 1980, continuing since then to the present. In addition to the TRIMBLE mark, Trimble's services are also offered under the Trimble logo. Trimble's global businesses include development, manufacturing, and logistics operations throughout the world with products sold in more than 150 countries.

 

Respondent's self-reported registration of the disputed domain name occurred in 2018, more than forty-four years after Complainant first began using its TRIMBLE Company name, and at least 20 years after it registered the TRIMBLE mark. Respondent registered the disputed domain name without Complainant's permission or consent. Respondent is not and has never been associated or affiliated with Complainant and Complainant has never authorized Respondent to use the TRIMBLE trademark or any variation thereof. Respondent owns no legitimate trademark rights in the TRIMBLE trademark.

 

The disputed domain name resolved to a website offering services for users of Complainant's Trimble Business Center, for the likely purpose of diverting customers from Trimble's website to Respondent's website or to attract Complainant's customers and users to Respondent's Construction AI business. Complainant requested Respondent transfer the disputed domain name however, instead of transferring, Respondent put the disputed domain name up for sale with a minimum asking price of $300,000 and is now using the disputed domain name to redirect to meeno.ai. Further, Respondent operates no website at the disputed domain name but has configured it to send and receive email to pass itself off as Complainant in an effort to defraud Complainant, its customers, and/or its business associates.

 

Respondent's actions constitute trademark infringement, consumer deception, and unfair competition pursuant to U.S. law and the laws of various jurisdictions worldwide. Further, Respondent's behavior is likely to result in customer confusion and stands to damage the goodwill and trust Complainant has built up in the TRIMBLE marks. If left unchecked, Respondent's behavior will likely continue to confuse customers and potential purchasers and cause Complainant irreparable harm.

 

The disputed domain name is confusingly similar to Complainant's TRIMBLE marks because it wholly encompasses Complainant's well-known TRIMBLE trademark in its entirety, adding only the generic top-level domain .AI. Respondent lacks rights and legitimate interests in the disputed domain name because Respondent is not known by the disputed domain name, affiliated with Complainant in any way, nor authorized to use the TRIMBLE trademark. Furthermore, Respondent's use and registration of the disputed domain name is in bad faith.

 

B.       Respondent

In 2017 Trimble and myself, Jeff Graham, working as part of Pique Innovations Inc., began discussion about a collaboration to integrate some of Pique Innovation's machine learning research outputs into some of Trimble's offerings. After months of productive meetings, emails, and other correspondences Pique Innovations registered the <trimble.ai> domain so that it could be used for the new business.

 

We are not "domainers," or "cybersquatters." Our company, Pique Innovations Inc., and myself personally, have never sold a domain name. Our main domain name property, <construction.ai>, is used for showcasing our research and business. Myself and my co-founder spoke at a conference panel discussing Trimble Dimensions on Construction AI's technology, and how it integrates with Trimble's products in early November of 2023.

 

Pique Innovations Inc. spent hundreds of thousands of dollars developing machine learning software that interoperates with the Trimble suite of products, has nurtured a business relationship with Trimble Inc. over seven years, and attended Trimble's conference to speak about our companies' interrelationship. Pique Innovations Inc. is

not a domain cybersquatter lurking in the shadows and coming up with phishing schemes. Pique Innovations Inc. was licensed as an integrator by Trimble and granted API access to integrate with their Trimble Connect product, and its novel AI process is designed to work with Trimble's Business Center product via .DXF import.

 

Pique received the initial domain name correspondence from Trimble's lawyers dated November 20, 2023, featuring a cease and desist based on trademark infringement that also said we had no affiliation to the company and to hand over the domain immediately. Unsure of what to do, we removed the reference to its site, then re-directed the website twice, including to a page with a $300,000 asking price. Pique later re-directed the URL to 101 Domain's default landing page and then reached out to Trimble's CEO to flag the mis-understanding. Pique did not receive a response from Trimble, other than to acknowledge receipt of my email, until getting notice of this dispute.

 

The notion that the <trimble.ai> domain name is potentially being used for "phishing schemes," as Trimble alleges, is a very serious claim. Phishing is illegal, and we do not engage in that activity, or anything else that's illegal; nor did Trimble provide any evidence of our possible engagement in it. Additionally, we have never sent an email from <trimble.ai>. As mentioned earlier, our business is Scientific Research and Experimental Development, not spamming or phishing.

 

It is worth pointing out that the trademark documentation and case law Trimble provided is from America, whereas myself, and the company (Pique Innovations Inc, which pays for and owns the domain) is Canadian, and does not have an American subsidiary. On top of that, all of our shareholder investment, corporate revenues, and other non-dilutive funding comes from either the Canadian Government, Canadian businesses, or citizens. To point out the obvious, the trademark examples provided by Trimble are from American jurisdictions and do not apply to a Canadian person or corporation operating in Canada. What's more, in Canada, the name "Trimble" is trademarked only for a narrowly defined set of goods and services related to geospatial technology that neither I, nor Pique Innovations Inc., engage in or plan to.

 

C.       Additional Submissions

Complainant additionally notes Respondent's contention that he previously had cordial communications with Complainant dating back to 2017 and signed a non-disclosure agreement and an integration agreement with Complainant. Complainant states that although the parties may have engaged in cordial communications, at no point did Complainant instruct, encourage, or otherwise consent to Respondent's registration of a domain name containing Complainant's TRIMBLE Marks.

 

While Complainant may have granted Pique Innovations, Inc. a license to use Complainant's Trimble Connect software development kit "solely to enable [Respondent's internal applications] to access or interface with Trimble Connect for use by end users of [Respondent's internal applications]", this license did not extend to use of the TRIMBLE marks and registration of a domain name wholly incorporating the mark TRIMBLE.

 

Complainant also asserted Respondent's knowledge of Complainant's mark indicated bad faith registration and use by Respondent and repeated the assertion that Respondent registered the disputed domain to attract Complainant's customers for Respondent's financial gain. Further, Complainant argued that Respondent's acknowledgement of putting the domain up for sale at some point indicates an admission that Respondent was attempting to profit from the sale of the domain name.

 

Respondent did not make any additional submissions.

 

FINDINGS

Complainant is Trimble Inc. ("Complainant"), of Sunnyvale, CA, USA. Complainant is the owner of domestic and global registrations for the mark TRIMBLE, and related formatives, which it has continuously used since at least as early as 2002 in connection with its physical and digital products and services for diverse industries such as agriculture, construction, and geospatial and transportation logistics.

 

Respondent is Jeff Graham ("Respondent"), of Abbotsford, British Columbia, Canada. Respondent's registrar is located in Carlsbad, CA, USA. Respondent registered the disputed domain name in 2018. The Panel has not been provided with the exact registration date.

 

Complainant and Respondent collaborated in business relations from 2017 until sometime in 2023. Specifically both parties are engaged in technology industries that include the use of artificial intelligence (a/k/a AI) with their goods and services. However, Complainant states that it first became aware of the disputed domain name in 2023. Complainant also initially asserted,

 

"Respondent is not and has never been associated or affiliated with Complainant and Complainant has never authorized Respondent to use the TRIMBLE trademark or any variation thereof."

 

Complainant repeatedly made the above assertion in its complaint as the primary reason Respondent had no rights or legitimate interest in or to the disputed domain name. After reviewing Respondent's initial answer Complainant provided Additional Submissions that contradicted its earlier statement and instead indicated the parties "may" have exchanged cordial communications, and that the parties did actually sign cooperative agreements however none of them gave Respondent the right to register the disputed domain name.

 

As of October 17, 2023, the disputed domain name redirected to Respondent's website at www.construction.ai, which stated, amongst other things: "Construction AI has developed an automated takeoff system for roadbuilding that uses machine learning algorithms to extract cross-section data from PDFs and convert them into a working model that can be imported into programs like…Trimble Business Center…."

 

Complainant sent a legal letter to Respondent on November 20, 2023, to which Respondent replied on December 20, 2023.

 

As of February 9, 2024, the disputed domain name resolved to a web page which included an "Inquire to Purchase" link, which in turn led to a Sedo page offering the disputed domain name for sale with an asking price of $300,000.

 

So far as the Panel is aware, neither party ever used the domain name in connection with their ongoing joint business operations.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 asserts rights in the mark TRIMBLE based upon registration with the USPTO (see USPTO Reg. No. 2611875, registered August 27, 2002). Registration of a mark with the USPTO sufficiently establishes rights in the mark. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) ("Complainant's ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i)."). The Panel here finds that Complainant has established rights in the Marks under Policy ¶ 4(a)(i).

 

Complainant notes that the disputed domain name is confusingly similar to Complainant's TRIMBLE mark because it wholly encompasses Complainant's mark adding only the generic top-level domain .AI. Prior decisions have established that the addition of a gTLD "does not negate confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i)." See Ecolab USA Inc. v. Ahmad Ismail, FA2312002075429 (Forum Jan. 17, 2024) ("The ccTLD is a technical requirement of domain name registrations and does not remove the confusing similarity with Complainant's ECOLAB mark."); see also Bloomberg Finance L.P. v. Igor Gabrielan, FA2311002072420 (Forum Jan. 8, 2024) ("Under Policy ¶ 4(a)(i), adding the ".ai" gTLD to a mark does not differentiate the domain name from the mark it incorporates.") (finding confusingly similar to the BLOOMBERG mark).

 

Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).

 

The Panel here finds that the domain name is confusingly similar to Complainant's mark per Policy ¶ 4(a)(i).

 

The Complainant has proven this element.

 

Rights or Legitimate Interests

The Panel notes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) ("Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests"). Complainant has made out a prima facie case here.

 

Complainant asserts in its complaint that Respondent lacks rights and legitimate interests in the disputed domain name because Respondent is not known by the disputed domain name, is not affiliated with Complainant in any way, nor is Respondent authorized to use the TRIMBLE trademark.

 

Respondent asserts that as a result of their business relationship he registered the disputed domain name to be used with their new business endeavor. However, Respondent does not indicate that Complainant specifically authorized Respondent's registration of the disputed domain name. Nor does Respondent represent that he was ever commonly known by the domain name. Where WHOIS information suggests a respondent is not commonly known by a disputed domain name, if there is no further evidence to the contrary, Panels have found a respondent is not commonly known by the disputed domain name. See SPTC, Inc. v. Bonanzas.com, Inc., FA 409895 (Forum Mar. 14, 2005) (no rights or legitimate interest in domain name SOTHEBYSAUCTIONS.COM because respondent was not known by SOTHEBY'S name).

 

Here the WHOIS information does not indicate that Respondent registered or is known by the domain name. There is however conflicting evidence regarding whether Respondent was ever authorized, licensed, or otherwise permitted to use Complainant's mark.

 

Because Respondent has provided no direct evidence to contradict the Complainant's assertions that no authorization was granted by Complainant to Respondent to specifically register the disputed domain name the Panel here finds Respondent is not commonly known by, and lacks rights or legitimate interests in, the disputed domain name per Policy ¶ 4(a)(ii).

 

The Complainant has proven this element.

 

Registration and Use in Bad Faith

Complainant asserts that Respondent registered and uses the <trimble.ai> domain name in bad faith. Complainant additionally argues Respondent intended to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, and endorsement of Respondent's website, which is evidence of bad faith under Policy ¶ 4(b)(iv). See Nestlé Waters North America, Inc. v. Domain Administrator / Fundacion Privacy Services LTD, FA 1792308 (Forum July 22, 2018) (Finding Respondent uses the domain names to point to a site which offers links relating to Complainant's business. "Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of the Complainant.").

 

Complainant also argues that Respondent had actual knowledge of Complainant's mark when it registered the disputed domain name and attempted to sell the domain name when Complainant requested Respondent transfer the domain name. Actual knowledge of a complainant's marks at registration of a disputed domain name constitutes evidence of bad faith under the Policy. See Jerry Seinfeld, Castle Rock Entertainment and Warner Bros. Entertainment Inc. v Carlos Fernandez, FA 243510 (Forum April 23, 2004) ("The Panel finds that Respondent registered a domain name that it knew to be identical to the SEINFELD mark, in which Complainant had rights, which also evidences bad faith under Policy ¶ 4(a)(iii).").

 

Nevertheless, the evidence is clear that Complainant repeatedly misstated the nature of the relationship between the parties. The Respondent initially asserted there was a business relationship and Complainant later conceded that Complainant did engage with and sign contracts with Respondent regarding mutual proprietary non-disclosure as well as licensing Respondent's use of Complainant's products to interact with TRIMBLE products and services.

Although both parties ultimately acknowledged there were ongoing professional relations between them for an extended period of time, with some 3,000 emails passing between them according to Respondent's uncontested assertion, the Panel finds this is not primarily a business and/or contractual dispute between two companies that is outside the scope of the UDRP as some prior panels have concluded in similar matters. See e.g., J&M Manufacturing, LLC v. marwan taweel, FA 1894234 (Forum June 18, 2020), (the panel stated … [T]he Panel believes that each party might have rights in the disputed domain names. It would not be an abusive cybersquatting case but a contractual or legitimate business dispute and is therefore beyond the scope of the UDRP). Here the parties' business relations, as asserted, are unclear regarding the interplay of their joint venture and the domain name, however they have both filed pleadings addressing the issues as an abusive cybersquatting matter.

The Panel makes the following additional points regarding Complainant's submissions in these proceedings as they relate to Complainant's failure to evince registration in bad faith. First, Complainant's failure to directly address Respondent's assertion that the domain name was registered for the parties' joint venture that was in development. While Respondent could have been clearer about its intended use of the domain name, it is not inconceivable that Respondent had no detailed plan for the domain name in mind but, rather, possessed a generalized intention to use it in a good faith manner in cooperation with Complainant. Certainly, the Panel has seen nothing indicating that Respondent likely possessed some sort of underhand motive at the time of registration (2018), such as using the domain name as a sword to dangle over Complainant in future.

Second, Complainant exhibited a general lack of veracity and candor regarding the relationship between the parties, including lack of any evidence or detail from Complainant in relation to its unsupported accusation of phishing, and its misrepresentation of Respondent's additional domain names as proof of an alleged pattern of bad faith registrations.

Third, Complainant provided no evidence of use of the domain name before 2023. The Panel does not consider that the redirection of the disputed domain name to Respondent's website in 2023 constitutes evidence of Respondent's bad faith intent when registering the domain name some five years earlier.

Fourth, Respondent's actions that arguably equated to a bad faith offering of the domain name for sale only occurred after Complainant noticed Respondent of the instant proceeding having ignored Respondent's inquiry as to the nature of what Respondent thought must be a misunderstanding. The Panel does not consider that Respondent's offering of the domain name for sale in these circumstances can be said to reflect Respondent's state of mind when registering the domain name some five years earlier.

Accordingly, the Panel here finds that Complainant has not shown bad faith registration by Respondent, and thus has not shown bad faith registration and use per Policy ¶ 4(a)(iii).

 

The Complainant has NOT proven this element.

 

Dissent by panelist Paul M. DeCicco:

Respondent not only used the disputed domain name in bad faith but registered the domain name in bad faith as well. The past relationship between the parties does nothing to suggest that Respondent could reasonably have believed that he had any right to register the TRIMBLE trademark in a domain name. Registration and use in bad faith is virtually universally found where, as here, having no rights or legitimate interest in the domain name the respondent was aware of the Complainant's trademark at the time of registration. See e.g. Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name"); see also, Jerry Seinfeld, Castle Rock Entertainment and Warner Bros. Entertainment Inc. v Carlos Fernandez, FA 243510 (Forum April 23, 2004) also cited by the majority above.

 

Additionally, the ability to mind read or speculate about what Respondent may have intended at the time of registration is unnecessary since the undisputed facts following registration create a powerful inference regarding Respondent's primary reason for registering <trimble.ai>. Following registration Respondent passively held the domain name, offered the domain name for sale, and directed the domain name to various domain names and websites under the control of Respondent. Moreover, Respondent does not bother to suggest any particular good faith use he might have had in registering the domain name. It is hard for one to even image such a good faith use, except perhaps to turn the domain name over to Complainant when asked which Respondent refused to do. Respondent's actual uses for <trimble.ai> thus further enlighten Respondent's intent in registering <trimble.ai>.

 

Since I concur with the majority regarding Policy ¶ 4(a)(i), Policy ¶ 4(ii) and Policy ¶ 4(a)(iii) regarding Respondent's use of the domain name but additionally find bad faith registration, I conclude that the domain name should be transferred to Complainant.

 

DECISION

As Complainant has failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <trimble.ai> domain name REMAIN WITH Respondent.

 

 

 

Mr. Paul DeCicco, Esq., Mr. Adam Taylor, Esq., and Mr. Darryl C. Wilson Esq. as Chair

 

Dated: April 22, 2024