WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Innotek, Inc. v. Sierra Innotek, Inc.
Case No. D2002-0072
1. The Parties
Complainant is Innotek, Inc. ("Complainant" or "Innotek"), a corporation organized under the laws of the State of Indiana, with its principal place of business located at Garrett, Indiana, USA.
Respondent is Sierra Innotek, Inc., ("Respondent" or "Sierra"), located at Cameron Park, California, USA.
2. The Domain Name and Registrar
The domain name at issue is (the "Domain Name"). The registrar is Network Solutions, Inc. (the "Registrar") located at 505 Huntmar Park Drive, Herndon, Virginia, 20170, USA.
3. Procedural History
On January 24, 2002, the WIPO Arbitration and Mediation Center (the "Center") received a copy of the Complaint via email. On January 25, 2002, the Center sent an Acknowledgment of Receipt of Complaint to Complainant. On January 28, 2002, the Center received hardcopy of the Complaint. The Complainant paid the required fee.
On February 1, 2002 after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Name and that the Domain Name is registered in the Respondent's name.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
On February 5, 2002, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.
On February 25, 2002, the Center received the Response of Respondent via email. On February 28, 2002, the Center received the Response of Respondent in hardcopy.
On March 20, 2002 after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the "Sole Panelist"), the Center notified the parties of the appointment of a single-arbitrator panel consisting of the Sole Panelist.
4. Factual Background
Since June 1990, Innotek has been using the trademark INNOTEK in connection with "remote electrical animal behavior training, data acquisition and analysis, and control systems comprising wireless radio frequency and data transmitters and receivers, and electrical temperature sensors."
On December 18, 1998, Innotek filed an application with the United States Patent and Trademark Office ("USPTO") to register the mark INNOTEK in connection with its goods. The USPTO registered the mark INNOTEK to Innotek on January 25, 2000.
Respondent registered the Domain Name on December 19, 1994.
5. Parties� Contentions
A.Complainant�s contentions
i. Complainant contends that it has a registration of the trademark INNOTEK and that its trademark registration is valid and subsisting.
Complainant further contends that through extensive advertising, Innotek has made the United States public aware of its INNOTEK brand products. For example, Complainant asserts that it has advertised its INNOTEK bark control collars in Veterinary Practice News, its INNOTEK wireless fence system in Pet Product News, and its INNOTEK retriever training system in the Ducks Unlimited journal. In addition, numerous hunting and fishing outfitters across the United States stock and sell INNOTEK brand products. For example, Cabela's, Herter's and Dunn's each stock numerous INNOTEK brand products, including retriever training systems, bark control collars, and wireless fence systems.
ii. Complainant argues that the Domain Name is identical with and confusingly similar to the INNOTEK mark, pursuant to Paragraph 4(a)(i) of the Policy.
Complainant further argues that numerous arbitration panels have recognized that the addition of a TLD designation, such as ".com", does not alleviate any confusion between a domain name and a trademark: "It is quite clear that the '.com' element of the domain name is to be ignored for the purpose of assessing similarity." Clerical Medical Investment Group Ltd. v. C, WIPO Case No. D2000-1228 at para. 6 (November 28, 2000). This principle was demonstrated in World Wrestling Federation, Inc. v. Michael Bosman, WIPO Case No. D99-0001 (January 14, 2000). Complainant states that the Domain Name is virtually identical to the INNOTEK mark except for the addition of ".com" to the Domain Name.
iii. Complainant contends that Respondent has no rights or legitimate interests in the Domain Name, pursuant to Paragraph 4(a)(ii), and that Respondent has failed to demonstrate any circumstances that constitute rights to or legitimate interests in the Domain Name.
Complainant further contends that Sierra does not have any federally registered trademarks. Sierra has never applied to register the mark INNOTEK with the USPTO. Complainant claims that Sierra does no business under the mark INNOTEK or under its name, SIERRA INNOTEK. A "Google" search conducted on November 20, 2001, for the words "Sierra Innotek" did not turn up a single match. Moreover, Sierra does not use the Domain Name to identify itself or to advertise its services or products. At the top of Respondent�s home page appears these words: "Welcome to the Web Site of I". Underneath that greeting is a statement that the webpage is nothing more than "a place holder for the home page of your own web site." A photograph also appears, of a rectangular electronic component with a small green screen. Nowhere on the page does there appear any information about Sierra. Complainant notes that a visitor to the site would not gain a clue about Sierra's operations or location.
Complainant further contends that Sierra is not using the Domain Name to identify itself or its products or services. Respondent is simply warehousing the Domain Name, apparently hoping that someone like Complainant will purchase the name for its own website.
Complainant conducted a search of the Internet and asserts that the Domain Name is not the only domain name being warehoused for future use. A search of the Internet turned up dozens of sites almost identical to Sierra's webpage. Each of these sites contains the statement that the webpage is nothing more than "a place holder for the home page of your own web site." Each of these sites also features a photograph of a rectangular electronic component with a small green screen. A partial list of these sites is as follows:
.
Complainant asserts that Sierra does not have any legitimate rights or interests in the INNOTEK mark, nor does Sierra have any rights or legitimate interests in the Domain Name. Sierra registered the Domain Name on December 19, 1994 and for almost seven years it has done nothing with the Domain Name. Complainant notes that the website is virtually identical to dozens of other websites, all featuring the same text and graphics, none of which has anything to do with a legitimate business. These websites are merely "place holders." Hence, Complainant continues, none of these websites, included, can be held to engage in a bona fide offering of goods and services. Cf. Primedia Magazine Finance Inc. v. Yelena M. Wright, WIPO Case No. D2001-1007 (November 8, 2001) (finding that linking of teen magazine site to adult cartoon site was not a "bona fide" offering).
Complainant argues that numerous arbitration panels have held that the registrant's failure to use a domain name in commerce is evidence that a registrant has no rights or legitimate interests in the domain name and that this result is consistent with United States trademark law. Sierra has merely warehoused its Domain Name and has not made a bona fide offering of goods and services in connection with that mark. Accordingly, argues Complainant, Sierra does not have any rights or legitimate interests in the Domain Name.
iv. Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of Paragraph 4(a)(iii).
Complainant alleges that Sierra was not incorporated until May 11, 1993 and did not register the Domain Name. Long before Sierra was incorporated or registered the Domain Name, Innotek had actively used its trademark across the United States.
Innotek asserts that it was incorporated in Indiana in 1990. It first used its INNOTEK trademark in June 1990. Not long thereafter, Innotek was selling its INNOTEK brand products across the United States, and the outdoor recreation press began reporting about Innotek's high-quality products.
Complainant asserts that Sierra may well have known about Innotek's products before it incorporated or registered the Domain Name, because the only trademark application Sierra ever filed suggests that Sierra is also engaged in outdoor activities. Complainant further alleges that Sierra may deliberately have traded on Innotek's growing reputation in the outdoor recreation, pet and hunting industries. Complainant argues that these facts support a conclusion that Sierra acted in bad faith in registering the Domain Name.
Complainant states that on similar facts other administrative panels have found bad faith registration. For example, in DCI S.A. v. Link Commercial Corp., WIPO Case No. D2000-1232 (December 7, 2000), the complainant had a well-known service mark in the dry cleaning industry. The respondent registered a domain name, which incorporated the complainant's service mark, but the respondent did not make any commercial use of that domain name. In fact, it was not clear what the respondent did. Nonetheless, the panel found the respondent had registered the mark in bad faith.
In reaching this decision, Complainant argues that the panel noted that: (1) the complainant had a well-known mark; (2) the respondent never produced any evidence "of any actual or contemplated good faith use" of the domain name; (3) the complainant's trademark "is neither a generic term nor particularly suggestive," (4) the respondent provided false details in its registration agreement, and (5) it was difficult to image any "active use of the domain name" that would not infringe the complainant's "rights under trademark law." Complainant asks that the Sole Panelist in this matter reach the same conclusion as the DCI S.A. panel and find that the "passive holding of the domain name by the Respondent amounts to the Respondent acting in bad faith." Complainant also cites Red Nacional De Los Ferrocarriles Espanoles v. Ox90, WIPO Case No. D2001-0981 (November 21, 2001) (finding that domain name used in connection with a "place holder" site was evidence of bad faith); Minnesota Monthly Publications Inc. v. Key Enterprises, FA0096381 (Nat. Arb. Forum February 14, 2001) ("The passive holding of the domain name by a competitor of Complainant is a strong indication of bad faith."); Clerical Medical Investment Group Ltd. v. C, WIPO Case No. D2000-1228 (November 28, 2000) ("It is becoming an established principle of this procedure under the UDRP that merely holding an infringing domain name without active use, can constitute use in bad faith"); Flor-Jon Films, Inc. v. Ron Larson, FA0094974 (Nat. Arb. Forum July 25, 2000) ("Further, absence of legitimate use is a basis for finding registration in bad faith.").
B. Respondent�s contentions
i. Respondent does not dispute that the Complainant has a registration of the trademark INNOTEK.
ii. Respondent does not dispute that the Domain Name is identical with or confusingly similar to the Complainant�s registered trademark.
iii. Respondent asserts that Complainant has diluted its own mark, because registration of the mark is further shared by a number of other entities in unrelated fields. Accordingly, Complainant cannot claim exclusive rights to the trademark. Complainant primarily relies on a federal registration for the mark INNOTEK, which was not filed until December 1998, four years after Respondent had registered and continued to use the Domain Name . Complainant also fails to note that there are at least two other INNOTEK corporations having registrations on the mark INNOTEK, in whole or in part. Respondent�s delay in seeking trademark protection for the mark INNOTEK for eight years should not prejudice the Respondent, which had fairly utilized this non-exclusive mark during that time to build a consistent and identifiable FTP and Email presence on the Internet for use with its client/customer base. Complainant has no more right to the Domain Name than any other corporation utilizing, in whole or in part, the mark INNOTEK.
Complainant submitted, as proof of Respondent�s lack of rights in the mark, the following items for consideration. Lack of a federal registration, the apparent lack of business under the mark (assessed using a GOOGLE search), a lack of identification with the mark based on a printout of the website placeholder; all resulting in the nonsensical conclusion that Respondent is warehousing the mark and perhaps all the marks found using placeholders. This warehousing is presumed to be for resale purposes.
The liberty taken with the evidence and conclusions leads Respondent to believe that Complainant has filed this action in bad faith and with the intent to reverse hijack the Domain Name from Respondent. This is supported by refutation of Complainant�s foregoing analysis.
First, lack of a federal registration does not render a party wholly devoid of rights in a mark. Rights accrue from use, not registration. This is particularly so with an arbitrary, but apparently not unique use, of the word INNOTEK. Respondent has used this mark, in whole or in part, to identify its business and, in the eight years intervening between its registration and this action, the Domain Name has come to be identified with Respondent. If not for Respondent�s use, perhaps the mark would have been registered to "Innotek, Inc." (another Innotek, Inc., not Complainant) which now uses for its domain name. Perhaps it would have been registered by "Innotek Powder Coatings, LLC" or "Innotek Corporation", each having federally registered trademarks.
Second, Complainant suggests that Respondent does not use the mark INNOTEK, as evidenced by a GOOGLE search. While common uses of domain names in 2002 are to promote consumer goods and services through the use of websites, Respondent�s use of the domain name is a refreshing throwback to the early days and ideas by which the Internet, FTP and Email grew. These are legitimate commercial uses and the lack of a formal website page does not detract from these real and viable commercial uses.
Complainant has further suggested that the placeholder at Respondent�s domain address, matching other such placeholders, is evidence of warehousing for purposes of resale. Complainant�s lack of diligence in investigating the purpose of these placeholders is surprising. The use of a placeholder would, at the least, suggest an intent to develop a website, and does not compel any conclusion that the site is available for resale. Complainant offers nothing, other than unsubstantiated accusations, that the Domain Name is available for sale. Certainly, Respondent denies this and asserts that eight years of Domain Name use to establish an Email presence known within its client/customer constituency would dictate that the Domain Name remain in Respondent�s possession No amount of money could compensate Respondent from the voluntary or involuntary eviction of Respondent from its eight-year cyber-address.
Complainant next suggests that the Domain Name is identical or confusingly similar to Complainant�s trademark. Respondent suggests that other Innotek sites are similarly plagued by this malady - is one such site. In fact, it deals with electronic devices and communications, a close match to Complainant�s field. The likelihood of confusion is high in that instance. Conversely, Complainant admits that Respondent, lacking a website page, conveys no information regarding its services. Respondent cannot confuse or divert Complainant�s market. Moreover, the exhibits to Complainant�s filing clearly reflect that much of Complainant�s market is derived through catalog sales originating, not at Complainant�s website addresses (of which it has many) but through third party catalog sales. Accordingly, the perceived evils of confusingly similar marks are not and cannot be practiced upon Complainant in this instance.
iv. Respondent denies that it registered or used the Domain Name in bad faith. Paragraph 4(b) suggests four types of evidence of bad faith registration, none of which applies.
That Respondent was incorporated after Complainant is not evidence of bad faith. The Domain Name was registered after Respondent�s incorporation and its use begun immediately thereafter. Complainant speculates that Respondent may well have known of Complainant�s products and, it is presumed, registered the Domain Name in bad faith for purposes of passing off. The evidence indicates otherwise. The parties are not in competition, Respondent has not utilized a website to divert and attract customers from Complainant and, in fact, has utilized the Domain Name for very fundamental and legitimate uses related to business communications with its client/customer base. All presumptions and conclusions drawn by Complainant are speculation not founded on facts. The decisions cited by Complainant clearly reflect the problems with Complainant�s argument. Unlike the circumstance outlined in those cited opinions, Respondent has provided evidence of legitimate use, there is no evidence of false registration information and Respondent�s use is consistent with its own common law rights in the mark as evidenced by the exhibit correspondence and emails. This does not amount to bad faith.
v. Respondent requests that the Sole Panelist make a finding of reverse domain name hijacking by the Complainant upon the evidence submitted by the Respondent.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Sole Panelist as to the principles that he or she 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."
Because both the Complainant and Respondent are domiciled in the United States and United States courts have recent experience with similar disputes, to the extent that it would assist the Sole Panelist in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Sole Panelist shall look to rules and principles of law set out in decisions of the courts of the United States. Tribeca Film Center, Inc. v. Brusasco-Mackenzie, WIPO Case No. D2000-1772 (April 10, 2001), n. 3.
Enforceable Trademark Rights
Complainant contends, without contradiction, that it has a registration of the trademark INNOTEK and that its trademark registration is valid and subsisting. Therefore, the Sole Panelist finds that for the purposes of this proceeding the Complainant has enforceable trademark rights.
Identity or Confusing Similarity
Complainant further contends, without contradiction, that the Domain Name is identical with and confusingly similar to the INNOTEK trademark pursuant to the Policy paragraph 4(a)(i).
Therefore, the Sole Panelist finds that the Domain Name is identical with or confusingly similar to the INNOTEK mark pursuant to the Policy paragraph 4(a)(i).
Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in the Domain Name pursuant to the Policy paragraph 4(a)(ii).
Respondent counters that it does not use the mark INNOTEK, as evidenced by Complainant�s own GOOGLE search. While common uses of domain names in 2002 are to promote consumer goods and services through the use of websites, Respondent�s use of the domain name was and is for FTP and Email.
The Policy paragraph 4(c) allows three nonexclusive methods for the Sole Panelist to conclude that Respondent has rights or a legitimate interest in the Domain Name:(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Sole Panelist finds that FTP and Email are legitimate commercial uses and the lack of a formal website page does not detract from these real and viable commercial uses. In addition, Complainant has failed to prove by a preponderance of the evidence that Respondent had actual or constructive notice of the INNOTEK trademark at the time Respondent registered the Domain Name.
Therefore, the Sole Panelist finds that Respondent has rights or legitimate interests in the Domain Name pursuant to the Policy paragraphs 4(a)(ii) and 4(c)(i). Accordingly, no analysis of bad faith under the Policy paragraph 4(a)(iii) is necessary.
Reverse Domain Name Hijacking
While Complainant has not prevailed on its claim, the Sole Panelist finds that Complainant has not engaged in reverse domain name hijacking.
7. Decision
The Sole Panelist concludes (a) that the Domain Name is identical with or confusingly similar to Complainant�s registered trademark INNOTEK. However, the Sole Panelist further concludes that the Respondent has rights or legitimate interests in the Domain Name. Therefore, the Sole Panelist refuses to order transfer of the Domain Name.
Richard W. Page
Sole Panelist
Dated: April 24, 2002
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