WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AtHome Corporation v. Metro.Net and The Innovation Group, Inc., a/k/a "Metro.Net. "
Case No. D2000-0422
1. The Parties
Complainant is At Home Corporation, a California corporation, with an address at 425 Broadway Street, Redwood City, California 94063, U.S.A. (AtHome).
The complaint states that Respondents are:
a. M, the administrative and billing contact for both domain names in issue, and
b. The Innovation Group, Inc., also known as "M".
The Respondents allegedly have business addresses at 5706 Commerce Boulevard, Rohnert Park, California 94928, U.S.A., and 7621 E. Gray Road, Suite B1, Scottsdale, Arizona 85331, U.S.A.
The response avers that Respondent is I, Inc., a California corporation, doing business as The Innovation Group and as M. Respondent(s) will be referred to here as Innovation Group.
2. Domain Name and Registrar
The domain names in issue are:
, and .
The registrar is Network Solutions, Inc. (NSI).
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received AtHome�s complaint on May 12, 2000 by email and on May 16, 2000 via hard copy. The Center verified that the complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). AtHome made the required payment to the Center. The formal date of the commencement of this administrative proceeding is May 23, 2000.
On May 16, 2000, the Center transmitted via email to NSI a request for registrar verification in connection with this case. On May 19, 2000, NSI transmitted via email to the Center NSI�s Verification Response, confirming that the registrant of the domain name is M, the registrant of the domain name is The Innovation Group, Inc. (with contact information c/o Metro.Net at the California address noted above and in the registration), and the domain name registrations in issue are in "Active" status.
On May 23, 2000, the Center transmitted Notification of Complaint and Commencement of the Administrative Proceeding, together with a copy of the Complaint, via email, facsimile and post/courier to "M/The Innovation Group." The Center advised that the response was due by June 11, 2000.
On June 12, 2000, the Center acknowledged receipt on June 10, 2000 of the Response to the Complaint.
AtHome elected to have the dispute decided by a single-member Panel. Innovation Group elected a Panel comprising three members. Innovation Group designated three candidates. Thereafter, AtHome proposed three candidates. As of August 7, 2000, a three-member Panel had been appointed, and the Center had transmitted the file to the panelists. Upon reviewing the file, one of the panelists perceived a potential conflict of interest. That panelist was recused. On September 1, 2000, the Center notified the parties of the appointment of another panelist. As a result of the foregoing, the Panel comprises Nick Gardner, Mark Van Buren Partridge, and David W. Plant (Presiding Panelist).
On September 2, 2000, the Center advised the parties that the Panel requested further information from the parties with respect to (a) complainant�s ownership of the marks in issue, or (b) other grounds in support of complainant�s standing in this proceeding. On September 8, 2000, AtHome served and filed its Supplemental Submission. On September 15, 2000, Innovation Group served and filed its Response to Supplemental Submission.
On September 27, 2000, the Center advised the parties that the due date for this decision had been extended from September 29, 2000 to October 17, 2000.
4. Factual Background; Parties � Contentions
a. The Trademarks
The complaint is based on the trademarks @work and @home, each of which is the subject of two U.S. federal registrations and additional registrations worldwide. Printouts regarding such registrations appear at Exhibits D and E to the complaint.
AtHome avers (paragraph 13) it has "extensive rights" in the two marks. AtHome avers also (paragraph 14) that, since 1995, AtHome has "invested significant resources" in the marks and has "thus developed considerable consumer recognition of, and goodwill in, these valuable marks." At paragraph 22, AtHome avers that through "its multi-million dollar sales and marketing efforts," plus "extensive press coverage and award recognition, " AtHome has "clear rights" to the two marks in the U.S. and throughout the world.
AtHome avers (paragraph 15) it has been offering telecommunications services under the @home mark for at least the past four years and intends to continue to do so. AtHome repeatedly avers it is the "owner" of the registrations of the @home mark (e.g. paragraphs 16, 17) 1. AtHome avers (paragraph 16) its "exclusive rights" in the @home mark run back to the filing dates (April 3, 1995 and July 19, 1996) of AtHome�s intent-to-use applications in the U.S.
AtHome avers (paragraphs 19 and 20) its U.S. federal applications to register the @work mark were based on intent to use. AtHome avers (paragraph 18) it has used the @work mark in providing "corporate Internet, intranet, and extranet connectivity solution, as well as networked business applications, for the past several years" and continues to expand such services in the U.S. AtHome avers (paragraphs 19 - 21), also repeatedly, it is the "owner" of the various registrations for the @work mark 2. AtHome avers (paragraphs 19 and 20) its "exclusive rights" in the @work mark date back to the filing dates of the U.S. applications (April 3, 1995 and July 19, 1996).
b. The Complaint Re Innovation Group�s Activities
AtHome avers inter alia as follows:
At paragraph 11, (1) the domain names are "virtually equivalent and verbally identical" to the trademarks "in which Complainant has rights," (2) Innovation Group has no rights or legitimate interests in the domain names, and (3) the domain names were registered and are being used in bad faith.
At paragraph 23, the domain names are "essentially identical" to the marks, "as the @ symbol stands for the word �at �."
At paragraph 24, Innovation Group lacks rights and legitimate interests; AtHome has not authorized Innovation Group to use the marks; Innovation Group has not used or prepared to use the domain names in connections with a bona fide offering of goods or services, or used the domain names as a trade name or other "source-identifier", or made any legitimate or non-commercial fair use of the domain names; and Innovation Group registered the domain names "solely for the purpose of misappropriating the goodwill" in the marks for Innovation Group�s own commercial gain.
At paragraphs 25 - 31, Innovation Group registered and is using the domain names in bad faith, viz.:
Paragraph 25, Innovation Group registered the domain names after AtHome had filed trademark applications and after various public announcements circa May 4, 1995.
Paragraph 26, prior to April 23, 2000, Innovation Group posted the domain names for sale on websites www. and www., and prior to May 3, 2000, offered for sale on an online auction site; at the auction site, the "starting bid" was US$13,000 for -- higher than Innovation Group�s out-of-pocket costs to register the domain. Copies of relevant webpages appear at Exhibit F.
Paragraph 27, on April 25, 2000, AtHome sent a letter to Innovation Group claiming Innovation Group was infringing AtHome�s marks and demanding transfer of the domain names to AtHome. A copy of the letter appears at Exhibit G.
Paragraph 28, Innovation Group called AtHome�s counsel on April 28, 2000, and
"notified her that Respondent�s attorney would be contacting her within the week. Neither Complainant nor Complainant�s counsel has since been contacted by Respondent�s attorney or Respondents."
Paragraph 29, Innovation Group "clearly" registered the domain names primarily for the purpose of selling the registrations to AtHome or to third parties, citing Policy 4(b)(i) and Panavision International, L.P. v. Dennis Toeppen, 141 F.3d 1316 (9th Cir. 1998).
Paragraphs 30 - 31, the decision in World Wrestling Federation Entertainment, Inc. v. Michael Bosnan, WIPO Case No. D99-0001, mandates transfer here.
At paragraph 32, AtHome requests that the domain names in issue be transferred to AtHome.
c. The Response
Innovation Group contests AtHome�s standing in this proceeding. In Section B.1.2., Innovation Group avers AtHome is neither the registered owner nor the recorded assignee of the U.S. registrations for the marks in issue 3. Innovation asserts AtHome is not the registered trademark owner of any U.S. trademark registration which is "the same as or similar to @home, @work, athome or atwork" (Sections B.3.a.1. and B.3.a.2.). The U.S. registrations are owned by (Section B.3.a.3.). Also, is the registered owner of every trademark registration in Exhibits D and E (Section B.3.a.4.). Innovation Group asserts is a California corporation formed on March 31, 1995 and is not a party to this proceeding (Sections B.3.a.5. and 6.). Finally, AtHome has "shown no rights in any trademark registration for @home or @work" (Section B.3.a.7.).
Innovation Group asserts AtHome has not proven the domain names are identical or confusingly similar. Innovation Group concedes @home and athome, and @work and atwork, are pronounced the same (Section B.3.b.1.). Innovation Group avers the two marks are "always encountered visually by the consumer because they are used exclusively on the Internet," and the @home mark is used almost exclusively with "excite@home" (Section B.3.b.2.). Innovation Group asserts the domain names are not identical to the marks and are "not confusingly similar when a visual comparison is made" (Section B.3.b.3.).
Innovation Group asserts AtHome has not proven Innovation Group has no rights or legitimate interests in the domain names. Innovation Group�s averments cite and track statements in a June 8, 2000 sworn affidavit of Joseph J. Cunningham, I, Inc.�s vice president (at Exhibit C to the response). Innovation Group avers I, Inc. was formed in 1994 as a California corporation and does business as "The Innovation Group" and as "M" (Section B.3.c.1.). M�s business has been and is "the provision of Internet services to home and business users" (Section B.3.c.2.). M�s business plan in 1995 was "to expand its service to provide a virtual private network for businesses ..." (Section B.3.c.3). In connection with "this new service, the M principals conceived of and registered, on May 11, 1995, domain names athome and atwork" (Section B.3.c.4.). The domain names were chosen "because they were short, easy to remember, and embodied the concepts of access to a private computer network from remote locations such as at home and at another work location" (Section B.3.c.5.).
Further with respect to its history, I, Inc. changed ownership and management, and did not launch the new services in accord with its expectations and business plans (Section B.3.c.6.). From May 1995 through March 2000, the domain names were not used and there was no website at either domain address (Section B.3.c.7.). Over the last three years, Innovation Group has received and rejected offers to purchase the names; Innovation Group "still planned on using the names in the future" (Section B.3.c.8.) In March 2000, the principals of I, Inc. abandoned their plans to use the name in connection with computer network access and created web sites at each address, "offering the names for sale" (Section B.3.c.9.).
Innovation Group asserts that a respondent�s reservation of domain names in anticipation of expansion of its business and use of the names in connection with such future business constitutes rights or legitimate interests in respect to the domain names, citing Policy 4(c) and Meredith Corp. v. CityHome, Inc., WIPO Case No. D20000223 (Section B.3.c.10). Also, offering for sale of a domain name may constitute use in connection with a "bona fide offering of goods or services, i.e. the sale of the domain name itself, citing Allocation Network Gmbh v. Gregory, WIPO Case. No. D2000-0016 (Sections B.3.c.11. and 12.).
Innovation Group cites Zero International Holding Gmbh & Co. Kommanditgesellschaft v. Beyonet Services and Stephen Urich, WIPO Case No. 2000-0161, for the proposition that a respondent has a legitimate interest in a domain name comprising a common English word (viz. zero) which respondent registered because it was "short, simple and easy to remember" (Section B.3.c.13.). Noting that the Zero panel pointed to numerous U.S. trademarks including the word zero, Innovation Group avers there are over 500 pending, registered or previously registered marks in the U.S. including the phrase "athome", and a similar number with regard to the phrase "atwork" (Sections B.3.c.14. and 15.). Innovation Group contends the domain names in issue here are common phrases, available as domain names "on a first come, first served basis" (Section B.3.c.15.).
Innovation Group concludes that, like respondents in the Allocation Network and Zero matters, Innovation Group has a legitimate interest in the two domain names in issue here (Section B.3.c.16.).
Innovation Group asserts AtHome has not proven Innovation Group registered and used the domain names in bad faith. Innovation Group asserts that AtHome has not and can not show any evidence of the kind set out in Policy 4(b) (Sections B.3.d.1. and 2.). Innovation Group avers the first uses by of the @home and @work marks were in 1996 and 1997, citing the four U.S. federal registrations (Sections B3.d.3. - 6.). Innovation Group registered the two domain names on May 11, 1995 -- one and one-half years before first used @home in commerce, and two years before first used @work in commerce (Section B.3.d.7.). A�s April 3, 1995 intent-to-use applications to register @home and @work gave AtHome Corporation no rights because is a separate entity from AtHome (Sections B.3.d.8. -10.).
Citing Meredith, supra, and I, Inc. v. Delighters, Inc. , WIPO Case No. D2000-0068.
d. Supplemental Pleadings
Because of Innovation Group�s challenge to AtHome�s ownership of the marks and to AtHome�s standing in this proceeding, the panel requested supplemental submissions from the parties on that issue.
1. AtHome�s Supplemental Submission
AtHome agrees that "many of the registrations and applications" for the marks in issue "are held in the name of ." AtHome asserts AtHome Corporation is a proper party because is a wholly owned subsidiary of AtHome Corporation. (Paragraph 1)
AtHome asserts (Paragraphs 2 and 3) that was formed in 1995 for the purpose of holding title to "the businesses� trademark applications and registrations." Also, the officers and directors of the two corporations are substantially the same, and "the activities of are controlled by and executed by personnel of AtHome Corporation." A assertedly has no other assets and no business operations apart from "the management of the company�s trademark applications and registrations, all significant decisions related to which are controlled by the parent entity."
Referring to K Mart Corp. v. Cartier, Inc., 486 U.S. 281, 299 (1988), and Vol. 2 of McCarthy on Trademarks, Chap. 16, Section 37 (4th ed. 1996), AtHome concludes that "the trademark registrations" on which AtHome relies are "the property of AtHome Corporation, and AtHome Corporation is a proper party to this proceeding." (Paragraphs 4 - 6).
In addition, AtHome avers (Paragraph 7) that AtHome is the entity that controls the use of the marks and has developed "substantial common law rights " in them. AtHome urges that Innovation Group admits that AtHome, through its wholly owned subsidiary, used the marks in connection with internet related services "since as early as 1995 ...," citing Sections B.3.d.3. - 6. of the Response.
AtHome avers (Paragraph 8) it has used the domain name , consumers identify "at home" based domains with AtHome, and Innovation Group�s "use of (or rather offer to sell)" the identical domain is clearly intended to trade off the goodwill AtHome has developed in "the @HOME marks and domain name.
AtHome aver (Paragraph 9, citing the response Section B.3.d.3.).
"Such use and establishment of common law trademark rights was, again by the Respondent�s own admission, prior to Respondent�s �use� of the or domains."
AtHome iterates that Innovation Group�s offer to sell the domain names is evidence of registration and use in bad faith under Policy 4(b)(i).
Finally, AtHome urges (Paragraph 10) that finding AtHome is a proper party will further the interest of efficient resolution of this dispute.
2. Innovation Group�s Response to Supplemental Submission
Innovation Group avers that public records available to it do not reflect ownership information concerning AtHome and . Further, Innovation urges K Mart is inapplicable because the ownership issue there had to do with U.S. customs regulations. Moreover, Innovation Group urges K Mart cites a different section of McCarthy than the section quoted by AtHome. At the section cited in K Mart, McCarthy states:
"The Patent and Trademark Office takes the position that ownership of marks among parent-subsidiary corporations ... is largely a matter to be decided between the parties themselves."
Innovation Group assets that McCarthy correctly notes that "only the owner of the trademark can be the registrant" and in a "parent-subsidiary relationship, regardless of their being related companies, only one can be the owner." Innovation Group asserts also that McCarthy states:
"... if a parent corporation claims that it is the owner and the one who controls use by the subsidiaries, then all registrations must be in the name of the parent."
Innovation Group contends that any rights enjoyed by AtHome as a result of usage were the result of usage licensed or permitted by the owner, and all of AtHome�s common law usage occurred after Innovation Group registered the domain names.
Innovation Group criticizes AtHome�s discussion of bad faith in its supplemental submission, and contends that AtHome has misconstrued Policy 4(b)(i), which refers to a registrant having "registered or acquired the domain name primarily for the purpose of selling ... ." Innovation Group urges that the evidence shows it did not acquire the domain names for the purpose forbidden by Policy 4(b)(i).
Finally, Innovation Group challenges AtHome�s efficiency argument, noting that on May 3, 2000 Innovation Group notified AtHome of Innovation Group�s view that AtHome had no ownership rights, and nevertheless, -- the registered owner --, did not bring this complaint.
5. Discussion and Findings
Paragraph 4.a. of the Policy directs that AtHome must prove, with respect to the each domain name in issue, each of the following:
(i) The domain name is identical or confusingly similar to AtHome�s trademarks in issue here, and
(ii) Respondent has no rights or legitimate interests in respect of the domain name, and
(iii) The domain name has been registered and is being used in bad faith.
Paragraph 4.b. of the Policy sets out four illustrative circumstances, which for purposes of Paragraph 4(a)(iii) above shall be evidence of the registration and use of a domain name in bad faith.
Paragraph 4.c. of the Policy sets out three illustrative circumstances any one of which, if proved by respondent, shall demonstrate respondent�s rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii) above.
a. Standing
Paragraph 4.a.(i) of the Policy contemplates proceedings relating to trademarks in which "the complainant has rights." It does not require that complainant own the marks in issue.
The dispositive issue here is not who owns the registrations for @home and @work. The issue is whether AtHome has demonstrated sufficient "rights" in the marks to warrant its appearing as complainant without . Common law rights in trademarks arise primarily through use, not mere registration. It is not seriously disputed here that AtHome has been and is indeed the user of the marks in commerce in the U.S. and elsewhere in the world. As Innovation Group points out, such use must have been with the permission of the nominal owner, . The record here supplies ample support for the conclusion that AtHome has the requisite rights in the two marks.
AtHome could have avoided unnecessary delay and expense in resolving this matter if it had joined as a party to these proceedings and had not resorted to asserting that AtHome is the "owner" of the registrations for the two marks. However, notwithstanding that failure, AtHome has shown that it has sufficient "rights " in the @home and @work marks to justify its standing as sole complainant in this proceeding.
b. Identity or Confusing Similarity
AtHome has the burden of proving this element and each of the other two elements of Paragraph 4.a. of the Policy.
The @home and @work marks and the corresponding domain names in issue are virtually identical on their faces. Innovation Group concedes the marks and domain names are "pronounced the same." Innovation Group�s argument that the marks and the domain names are used exclusively visually is not persuasive. Trademarks and domain names are often referred to orally. Even if Innovation Group were correct in its assessment of use, the @ symbol is commonly used, not only in the Internet world but elsewhere, to denote the word "at". Thus, on this record, this element has been established.
c. Rights or Legitimate Interests
The question of whether Innovation Group had rights or interests in the domain names at the time of registration turns on whether or not the registration was in good faith. This is dealt with at section d below.
Since May 11, 1995, the situation at Innovation Group has changed significantly. In 2000, Innovation Group decided to abandon its 1995 business plans and decided not to use the two domain names in issue. In March 2000, Innovation Group offered the two domain names for sale -- starting at US$13,000 for .
This about face on Innovation Group�s plans and conduct, coupled with the accelerating use and burgeoning popularity of the two marks in issue, supports an inference that as of March 2000 and thereafter Innovation Group has had no rights or legitimate interests in the two domain names. The Panel so finds.
d. Registration and Use in Bad Faith
Registration and use of the domain names in issue in bad faith are matters of the appropriate inferences to draw from circumstantial evidence. Both registration in bad faith and use in bad faith must be proved by AtHome.
The key question in these proceedings is whether or not at the time Innovation Group effected the registrations concerned, it did so in bad faith.
It is not disputed that on May 4, 1995 there was some public announcement by the Complainant of the proposed launching of a new venture. This was described in one of the examples (see below) as "the new company AtHome (which uses the shorthand symbol for "at")". The evidence filed by the Complainant as to this publicity is:
a United Press cutting printout which in its heading is described as being in the section "Regional News" with a distribution of "Colorado";
an extract of an article from the Chicago Sun-Times; and
a report from what is described as the "Nightly Business Report" with a copyright notice referring to Community Television Foundation of South Florida.
These are all dated May 4, 1995 and are described as being "sample press releases" (paragraph 14 of the Complaint).
Innovation Group filed its registrations for the domain names on May 11, 1995.
The inference the Panel is invited to draw is that Innovation Group�s filing was made having become aware of the Complainant�s activities as a result of the publicity concerned and in an opportunistic event to register names which would be of value to the Complainant.
In rebuttal to that inference, Innovation Group has provided the Affidavit of Mr. Cunningham described above. The Affidavit is critical. It states that the domain names;
"were chosen because they were short, easy to remember, and embodied the concept of access to a private computer network from remote locations such as at home and at another work location" and "to the best of my knowledge and belief none of the principals of I Inc had any knowledge before May 11 1995 of any entity using or planning to use the trade marks @home, @work, athome, atwork or any similar trade mark".
The question the Panel has to determine is whether this Affidavit suffices to rebut the inference arising out of the timing of Innovation Group�s application. The Panel has a number of reservations as to the content of Mr. Cunningham�s affidavit in that:
It is in conclusory terms. It contains very limited details as to the activities concerned and in particular does not exhibit any contemporaneous documents.
The statement as to a lack of awareness is qualified in that Mr. Cunningham describes it as being "to the best of [his] knowledge and belief".
However, the Panel considers that the domain names concerned are such that they could have been independently derived. The evidence is not clear as to exactly how much publicity the Complainant generated prior to May 11 1995. Had the coincidence of timing been combined with names which could not realistically have been independently derived an Affidavit of this nature would clearly have been inadequate. As it is, the words are common terms, are highly descriptive and indeed describe the services which Innovation Group, according to Mr. Cunningham, proposed to provide. In all the circumstances, the Panel considers that it is not able (without the benefit of cross examination) to go behind Mr. Cunningham�s Affidavit. In reaching this conclusion the Panel would not want to suggest that it would always be the case that a conclusory Affidavit of the kind filed here would be adequate. The combination of such an Affidavit with domain names which could have been independently derived is, however, sufficient to cause the Panel to consider that it is unable to rule in the Complainant�s favor.
On this record, therefore there is insufficient evidence for the Panel to find that Innovation Group registered the two domain names in bad faith because it is plausible that "atwork" and "athome" were names selected without knowledge of AtHome�s plan. While the sequence of events in May 1995 gives rise to a curious coincidence of activities on the parts of the two sides in this dispute, the Panel cannot with confidence conclude that AtHome has carried its burden of proof on the issue of registration in bad faith.
If the Panel had concluded the registration had been in bad faith, it would have been satisfied that the subsequent use amounted to bad faith. Innovation Group�s lack of use for five years and its specific use in 2000 of offering to sell each domain name to the highest bidder, starting at US$13,000 for , after no use of the domain addresses by Innovation Group for five years, strongly suggests bad faith use in 2000. Innovation Group has provided no rationale for its US$13,000 starting price in the anticipated auction of each domain name.
e. Reverse Domain Name Hijacking.
The Panel does not find reverse domain name hijacking or abuse of this proceeding.
6. Decision
In light of the findings by the Panel, the Panel decides that AtHome has met its burden of proving (a) the two domain names in issue are identical to the two marks in issue, i.e. is identical to @home and is identical to @work, (b) Innovation Group has no rights or legitimate interests in respect of the two domain names. However, AtHome has not proven that Innovation Group registered the two domain names in bad faith. Had AtHome established registration in bad faith the Panel would have concluded the subsequent use was in bad faith. AtHome needs, under the Policy, to establish that both registration and use were in bad faith. It has not done so.
Accordingly, the Panel declines to require that the registration of the and domain names be transferred to AtHome.
The Panel declines to find that AtHome is guilty of reverse domain name hijacking.
David W. Plant
Presiding Panelist
Nick Gardner Mark Van Buren Partridge
Panelists
Dated: October 23 , 2000
Footnotes:
1. Each registration reproduced at Exhibit D shows that is the registrant. A is not a party to this proceeding.
2. Each registration reproduced at Exhibit E show that is the registrant. A is not a party to this proceeding.
3. Innovation Group
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