WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Buhl Optical Co. v. M, Inc.
Case No. D2000-1277
1. The Parties
1.1 The Complainant is Buhl Optical Co., a corporation, having its principal place of business at 1009 Beech Avenue, Pittsburgh, Pennsylvania, United States of America.
1.2 The Respondent is M, Inc., a corporation, having its principal place of business at 1475 Terminal Way, Suite E, Reno, Nevada, United States of America.
2. The Domain Name and Registrar
The domain name at issue is "", which domain name is registered with Melbourne IT, Ltd., d/b/a/ Internet Names Worldwide ("Melbourne IT"), based in Melbourne, Australia.
3. Procedural History
3.1 A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on September 27, 2000, and the signed original together with four copies was received on September 29, 2000. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated September 28, 2000.
3.2 On October 2, 2000, a Request for Registrar Verification was transmitted to the registrar identified in the Complaint, Network Solutions, Inc. ("NSI"), requesting it to: (1) confirm that the domain name at in issue is registered with NSI; (2) confirm that the person identified as the Respondent is the current registrant of the domain name; (3) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the registrar�s Whois database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact; (4) confirm that the Uniform Domain Name Dispute Resolution Policy (the "Policy") is in effect; (5) indicate the current status of the domain name.
3.3 On October 2, 2000, NSI responded by reply e-mail that the domain name "" is currently registered with Melbourne IT.
3.4 On October 5, 2000, the WIPO Center sent to the Complainant a Complaint Deficiency Notification, requesting that the Complaint be amended to reflect the current registrar of the domain name at issue and that the current registrar be served with a copy of the Complaint.
3.5 On October 6, 2000, the WIPO Center received in electronic format a copy of the Amended Complaint and on October 11, 2000, a hardcopy of the Amended Complaint.
3.6 On October 9, 2000, a Request for Registrar Verification was transmitted to Melbourne IT requesting it to: (1) confirm that the domain name at issue is registered with Melbourne IT; (2) confirm that the person identified as the Respondent is the current registrant of the domain name; (3) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the registrar�s Whois database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact; (4) confirm that the Uniform Domain Name Dispute Resolution Policy (the "Policy") is in effect; (5) indicate the current status of the domain name.
3.7 On October 10, 2000, Melbourne IT confirmed by reply e-mail that the domain name "" is registered with Melbourne IT, is currently in active status, and that the Respondent is the current registrant of the name. The registrar also forwarded the requested Whois details, and confirmed that the Policy is in effect.
3.8 The WIPO Center determined that the Complaint as amended satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"), the Uniform Rules, and the Supplemental Rules. The required fees for a one-person Panel were paid on time and in the required amount by the Complainant.
3.9 No further formal deficiencies having been recorded, on October 16, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, NSI and ICANN), setting a deadline of November 4, 2000, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by e-mail to the e-mail addresses indicated in the Complaint and specified in Melbourne IT's confirmation. In addition, the complaint was sent by express courier to the postal address given. Having reviewed the communications records in the case file, the Administrative Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent." In any event, Respondent's participation in these proceedings is proof that notice was received.
3.10 On November 4, 2000, the WIPO Center received in electronic format and on November 7, 2000, the WIPO Center received in hard copy a Response. The Respondent requested a three-member Panel and nominated three candidates for appointment as one member of the Panel. Payment in the requisite amount was made by wire transfer.
3.11 On November 7, 2000, the WIPO Center transmitted to the parties an acknowledgement of Receipt (Response).
3.12 On February 14, 2001, in view of the Respondent's designation of a three person Panel, the WIPO Center appointed David H. Bernstein, Jeffrey M. Samuels, and M. Scott Donahey to serve as Panelists, with M. Scott Donahey to act as Presiding Panelist. The WIPO Center set February 27, 2001, as the deadline for a decision, which was later extended to March 9, 2001.
4. Factual Background
4.1. Complainant filed for registration of the trademark BUHL in connection with projection lenses, slide projectors, film projectors, and overhead projectors with the United States Patent Office ("USPTO") on May 25, 1999, and the registration issued on October 12, 1999. Annex 8 attached to the Complaint shows date of first use of the mark as 1960.
4.2 Complainant also maintains a web site at "". The domain name "" was first registered on March 18, 1997.
4.3 Since 1930, Complainant has operated a business related to optical lenses and audiovisual products in Pittsburgh, Pennsylvania, United States of America. Complaint, Annex 4.
4.4 On July 17, 2000, Respondent registered the domain name "".
4.5 Respondent is not a licensee of Complainant and is not otherwise authorized to use any of Complainant's trademarks.
4.6 Respondent has used the domain name at issue to resolve to a web site that offers Internet email addresses for resale to individuals, including email addresses having common surnames as the Second Level Domain (SLD) name. "" was one such "surname-constructed" domain name offered as part of an email address to individuals, and located in the family name search section on the M, Inc. web site. An individual could elect the prefix preceding the "@," for example, "bob@."
4.7 All of the facts set out in paragraph 4.6, above, were known to Complainant at the time that Complainant filed its Complaint. Complaint, third and fourth unnumbered pages, Section V, Factual and Legal Grounds, and Annexes 3, 5, and 6 to the Complaint.
4.8 Respondent operates what has come to be known as a "vanity email service�." Respondent currently has approximately 100,000 registered customers for this service and has registered in excess of 15,000 domain names under various generic Top Level Domains (gTLDs). It currently actively uses more than 14,000 domain names in its business. Respondent has invested in excess of US$2,500,000 in acquiring and maintaining the domain names that it uses in its business.
5. Parties� Contentions
5.1 Complainant contends that Respondent has registered as a domain name a mark which is identical or confusingly similar to the trademark registered and used by Complainant, that Respondent has no rights or legitimate interests in respect to the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith. Complainant contends that a representative contacted someone at Respondent in 1997, and that Respondent offered to sell the domain name at issue for US$10,000.
5.2 Respondent contends that Complainant has registered as a trademark a common surname that is not entitled to protection as a mark, that Respondent has rights and legitimate interests in using a common surname as part of its email address business and that the domain name at issue was neither registered nor is it being used in bad faith. Respondent denies that anyone from Respondent ever discussed selling the domain name at issue to Complainant. Respondent contends that Complainant's conduct constitutes a bad faith attempt at reverse domain name hijacking.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall 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."
Since both the Complainant and Respondent are domiciled in the United States, and since United States� courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
(2) that the Respondent has no legitimate interests in respect of the domain name; and,
(3) that the domain name has been registered and is being used in bad faith.
Respondent's predecessor (which even at that time was doing business as "Mailbank") and its principal were involved in a well known case concerning issues almost identical to those presented to this panel in the case of Avery Dennison Corp., v. Sumpton, et al., 189 F. 3d 868 (9th Cir. 1999). In that case Respondent's predecessor, who was represented by the same counsel who represents Respondent in the present proceeding, was sued for trademark dilution by the Avery Dennison Corporation for its registration and use of the domain names "" and "". The names were being used in Respondent's predecessor's vanity email business.
Respondent's counsel argued that 1) the marks were not famous, 2) the nature of Respondent's business made the trademark status of "Avery" and "Dennison" irrelevant, and 3) the marks were registered in the ".net" gTLD, rather than in the ".com" gTLD.
The United States District Court held that Respondent's predecessor was not using the domain names "" and "" as a trademark and was not attempting to capitalize on the trademark value of the terms. "All evidence in the record indicates that Appellants register common surnames in domain-name combinations and license e-mail addresses using those surnames with the consequent intent to capitalize on the surname status of 'Avery' and 'Dennison.' Appellants do not use trademarks qua trademarks as required by case law to establish commercial use. Rather, Appellants use words that happen to be trademarks for their non-trademark value." Id., 189 F.3d at 880.
In considering the argument of Respondent's counsel that a distinction should be made between registrations in the ".com" gTLD and those in the ".net" gTLD, the Court stated: "As we recognized in Panavision, ".net" applies to networks and ".com" applies to commercial entities. Evidence on the record supports this distinction, and courts applying the dilution cause of action to domain-name registrations have universally considered "" Although evidence on the record also demonstrates that the ".com" and ".net" distinction is illusory, a fact finder could infer that dilution does not occur with a "" registration." Id., 189 F.3rd at 880-81 (citations omitted).
Respondent and Respondent's principal have been involved in two prior Panel proceedings. In the first decided, Steven H. Schimpff v. Jerry Sumpton, ICANN Case No. FA94333, the domain name at issue was "". In light of Respondent's vanity email business, the Panel found that Complainant had failed to prove that Respondent had no rights or legitimate interests in respect of the domain name at issue. The Panel further held that Complainant had failed to prove that Respondent had registered and was using the domain name at issue in bad faith. The Panel did not discuss the significance, if any, of a registration in the ".com" gTLD.
In the second case, Bosco Products, Inc. v. Bosco E-Mail Service and M, ICANN Case No. FA94828, the domain name at issue was ".". The Panel found that the Respondents had rights and legitimate interests in respect of the domain name at issue and that Respondents' use of the domain name was not a use of the term in its trademark sense. The Panel also found that Complainant had failed to prove that the domain name at issue had been registered or was being used in bad faith. The Panel rejected a request that the Complainant had been engaged in reverse domain name hijacking. Once again, the Panel id not consider the significance, if any, that the Second Level Domain name (SLD) had been registered in the ".com" TLD.
In the present action, the Panel finds the rationale of the prior decisions persuasive. Because "Buhl" is a bona fide surname, the Panel finds that Respondent is not using the SLD in its trademark sense, but rather is using the SLD in a legitimate business enterprise. Therefore, assuming that registration of an SLD that corresponds to a mark in the ".com" gTLD does not have independent significance, the Panel would find that the Respondent has rights and legitimate interests in respect of the domain name at issue.
Just as Respondent's counsel suggested in Avery Dennison, supra, some panelists have suggested that a distinction should be made between registration in the ".com" gTLD and the other gTLDs. See, e.g., Bridgestone Firestone, Inc., Bridgestone/Firestone Research, Inc. and Bridgestone Corporation v. Jack Myers, ICANN Case No. D2000-0190, at 4 0f 7 through 5 0f 7 (html format). Perhaps the most cogent argument for why such a difference should be recognized is set out in the dissent in the case of Bruce Springsteen v. Jeff Burgar and Bruce Springsteen Club, ICANN Case No. D2000-1532.
In that case, the Dissent notes that the average Internet user searching for a trademarked business would instinctively try www.. "The dominance of the '.com' name space is reflected in the common usage of the phrase '.com' as being synonymous with commercial activity on the Internet." The thrust of the Dissent's argument is that one who registers as an SLD the mark of another in the ".com" gTLD creates a likelihood of confusion and thus can have no right or legitimate interest in respect of the domain name.
While the Panel understands the nature of the concern, it is to some degree historical in nature. First, because .net and .org were not restricted gTLDs, many commercial enterprises have registered domain names in that space, just as many non-commercial entities have registered ".com" domain names. Moreover, the addition of the new gTLDs, including .biz, should further alter the pattern of thinking of the average Internet user. And there is demand for additional gTLDs should the already approved group establish that the system can absorb the traffic without eroding the efficiency of the system or the protections appropriately extended to trademark owners.
Accordingly, the Panel finds that the Respondent has rights and legitimate interests in respect of the domain name at issue. Although it is not therefore necessary to reach the issue of bad faith registration and use, the Panel notes that even had Respondent made the disputed offer to sell the domain name at issue, since the Respondent has rights or legitimate interests in respect of the domain name, such an offer of sale would not constitute bad faith. Allocation Network GmbH v. Steve Gregory, ICANN Case No. D2000-0016; Car toys, Inc. v. Informa Unlimited, Inc., ICANN Case No. FA93682; Etam, plc v. Alberta Hot Rods, ICANN Case No. D200-1654.
Since it is also not necessary to reach the issue of whether the Complainant has rights in the trademark advanced for the purposes of this proceeding, the Panel declines to do so.
In light of the questions surrounding registration in the ".com" gTLD, the Panel does not find that Complainant acted in bad faith nor that Complainant was engaged in reverse domain name hijacking.
7. Decision
For all of the foregoing reasons, the Panel decides that the Respondent has rights or legitimate interests in respect of the domain name at issue. Accordingly, the Panel denies the relief requested.
M. Scott Donahey
Presiding Panelist
David H. Bernstein
Panelist
Jeffrey M. Samuels
Panelist
Dated: March 1, 2001
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