WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Echelon Corporation v. RN WebReg, a.k.a. Rarenames, LLC
Case No. D2003-0790
1. The Parties
The Complainant is Echelon Corporation, Los Angeles, California of United States of America, represented by Blakely, Sokoloff, Taylor & Zafman, LLP, United States of America.
The Respondent is RN WebReg, a.k.a. Rarenames, LLC, Washington, District of Columbia, of United States of America, represented by ESQ Law Firm, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Direct Information Pvt Ltd. dba D.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 7, 2003. On October 8, 2003, the Center transmitted by email to Direct Information Pvt Ltd. dba D a request for registrar verification in connection with the domain name at issue. On October 9, 2003, Direct Information Pvt Ltd. dba D transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 14, 2003. The Center verified that the Complaint together with the amendment to 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").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced October 14, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response November 3, 2003. The Response was filed with the Center on November 3, 2003.
The Center appointed Frederick M. Abbott, Sally M. Abel and David E. Sorkin as panelists in this matter on November 17, 2003. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
By email of December 1, 2003, the Center notified the parties that based on exceptional circumstances the due date for a decision by the Panel was extended until December 8 and later December 15, 2003.
4. Factual Background
Complainant has registered the word trademark "DIGITAL HOME" on the Principal Register of the U.S. Patent and Trademark Office (USPTO), registration no. 2,184,412, dated August 25, 1998, in International Class (IC) 9, covering "computer hardware and software in the nature of control devices for use in residential building automation, and computer development programs, computer hardware, communications, transceivers, routers, network management software, and installation software for use in residential building automation", claiming date of first use and first use in commerce of March 2, 1998. Complainant has disclaimed exclusive rights to use "DIGITAL" apart from the mark as shown. ( Complaint, para. 11 & Exhibit C)
Complainant has registered the "DIGITAL HOME" mark in a number of countries outside the United States, namely Canada, China, Denmark, France, Germany, Ireland, Korea, Norway, Spain, Switzerland and Taiwan. Complainant has furnished evidence of such registrations. (Id., para. 11 & Exhibit C)
Complainant has used the "DIGITAL HOME" mark in commerce in the United States and elsewhere to identify its computer hardware and software products (id., para. 11 & Exhibit D).
Complainant was the registrant of the disputed domain name, . Complainant indicates that through an inadvertent error arising from the termination of an earlier domain name dispute it failed to renew registration of the name, allowing its registration by Respondent. (Id., at para. 11)
According to the Registrar�s verification response, Respondent is the current registrant of the dispute domain name. A Network Solutions WHOIS database search printout furnished by Complainant indicates that the current record of registration was created on August 16, 2003, in the name of Respondent (Complaint, Exhibit A).
Respondent purchased the disputed domain name from the domain name auction site P for US $3,701 in August 2003. Respondent has provided evidence in the form of an invoice from P, dated August 19, 2003, in that amount.
Respondent has submitted an affidavit of Michelle Miller, Director of Business Development for Respondent, dated November 3, 2003, stating in relevant part:
"We did not purchase the domain name (the "Disputed Domain") for the purpose of selling it to Complainant. We had no knowledge, whatsoever, of Complainant when we registered the Disputed Domain."
Complainant transmitted a cease and desist and transfer demand to Respondent via email, telefax and courier mail on September 3, 2003. In that demand, Complainant offered to reimburse Respondent for its domain name registration fee. Negotiations followed during which Respondent offered to sell the registration of the name to Complainant for $20,000, with indications that a lower amount might be acceptable. Complainant rejected Respondent�s offer. As of October 3, 2003, Respondent was offering the disputed domain name for sale at the auction website "BuyD" for the asking price of $20,000. (Complaint, para. 11 & Exhibit F; Response, paras. II and III).
The Registration Agreement in effect between Respondent and Direct Information Pvt Ltd. dba D subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory Administrative Proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties� Contentions
A. Complainant
Complainant asserts that it has rights in the trademark "DIGITAL HOME" based on use in commerce in the United States, registration in other countries, and as evidenced by registration at the USPTO and trademark offices outside the United States (see Factual Background, supra).
Complainant alleges that the disputed domain name, , is identical or confusingly similar to its mark.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name because Respondent has not made demonstrable preparations to use it in connection with a bona fide offering of goods or services. Complaint alleges that Respondent�s registration and use of the disputed domain name for purposes of resale does not establish rights or legitimate interests in the name.
Complainant states that Respondent registered and used the disputed domain name in bad faith because Respondent�s sole purpose in registering it was to offer it for sale at a substantial price. Complainant also asserts that Respondent�s offer of the domain name for sale on an auction website interferes with Complainant�s business, and creates a likelihood of confusion as to Complainant�s sponsorship or endorsement of the auction website.
Complainant asserts that Respondent has evidenced a pattern of registering domain names incorporating the marks of third parties and offering them for sale, as evidenced in Prisma Presse v. BuyD, WIPO Case No. D2001-1073, decided October 22, 2001, wherein Respondent was found to have abusively registered and used the domain name by offering it for sale.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to it.
B. Respondent
Respondent contends that Complainant does not have trademark rights in the term "DIGITAL HOME" because such term is generic or, at best, descriptive. Respondent argues that the term "DIGITAL HOME" is often used on the Internet and elsewhere in a commonly descriptive sense. Respondent contends that generic and descriptive marks are unenforceable under the Policy even if they are registered.
Respondent argues that because "DIGITAL HOME" is a generic or commonly descriptive term, "Respondent, ipso facto, has rights and a legitimate interest" in the name. Respondent contends that because Complainant does not have exclusive rights in the term "DIGITAL HOME", mere ownership of the registration establishes rights and legitimate interests in Respondent.
Respondent contends that the sale of a generic or commonly descriptive term constitutes a bona fide offering of goods and services that establishes Respondent�s legitimate interest in the disputed domain name.
Respondent argues that it did not register the disputed domain name for the purpose of selling it to Complainant. Respondent states that for a finding of bad faith to be made, there must be direct evidence that the name was solely acquired for the purpose of profiting from Complainant�s trademark rights, either because (a) the domain name was acquired specifically for sale to Complainant or (b) the value of the name offered for sale derives exclusively from the fame of the trademark. Respondent contends that because the disputed domain name is generic or commonly descriptive, and it did not intend to sell the mark to Complainant, it did not act in bad faith.
Respondent denies that it intended to interfere with Complainant�s business or that it registered and used the disputed domain name to create Internet user confusion.
Respondent indicates that in the earlier proceeding referenced by Complainant as evidence of a pattern of conduct, Respondent did not file a response and the decision was made on the basis of unrebutted allegations.
Respondent argues that Complainant�s previous ownership of the disputed domain name is not a factor for consideration under the Policy.
Respondent requests the Panel to reject Complainant�s contentions and its request for transfer of the disputed domain name.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this Administrative Proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
In this case, the Respondent has filed a timely Response. The Panel is satisfied that the Respondent had adequate notice of the proceedings.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) respondent�s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondent�s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has submitted evidence of use of the term "DIGITAL HOME" in commerce in the United States and registration of the term "DIGITAL HOME" as a trademark on the Principal Register of the USPTO and on a number of trademark registers outside the United States. In the United States, registration on the Principal Register establishes a presumption that the mark is valid and of the registrant�s exclusive right to use the mark in commerce. In countries of the European Union which have implemented the First Trade Mark Directive, including Denmark, France, Germany, Ireland and Spain where Complainant has also registered the "DIGITAL HOME" mark, registration of a mark confers rights on the holder.
Respondent has challenged the validity of Complainant�s rights in the "DIGITAL HOME" mark on grounds that the term is commonly descriptive or generic, and has supported its claim by submission of a Google search for the exact phrase "digital home" which yielded 168,000 search results. A number of those results indicate uses of the term in relation to residential automation. The term also appears to be commonly used in the phrase "digital home recording".
The majority of the Panel does not consider the term "DIGITAL HOME" to be generic in the trademark law sense of referring to a genus or class of thing. Although a person might refer to a "well-wired" residence as their "DIGITAL HOME", such usage would not appear sufficiently common to establish the term as generic in that sense, nor has Respondent suggested another sense in which the term might be understood to commonly refer to a genus of thing (as in "bed" or "flower").
The Panel accepts that the term "DIGITAL HOME" may be used in a descriptive sense, but that does not end its inquiry from a trademark law standpoint. A person might describe their residence as a "DIGITAL HOME", or might use the term in connection with other terms as in "DIGITAL HOME recording". However, Complainant has not registered the term "DIGITAL HOME" in connection with all possible uses of the term, or to cover all fields of commerce. Complainant has obtained registration in the United States (and other countries) for a line of computer hardware and software products as to which it has submitted evidence to the USPTO of distinctiveness in its line of commerce. Respondent has offered little evidence that the term "DIGITAL HOME" is used by third persons in connection with the sale of computer hardware and software products that are competitive with those of Complainant. The Panel does not consider this evidence sufficient to rebut the presumption of Complainant�s rights in the "DIGITAL HOME" mark based on U.S. federal registration.
Moreover, even if the Panel considered that the mark was commonly descriptive and unenforceable in the United States, it would not be in a position to make such a determination with respect to Complainant�s rights established by registration in other national jurisdictions. Respondent has offered no challenge to the rights asserted by Complainant based on its registrations outside the United States. Absent any rebuttal, the Panel considers valid the trademarks established by registration in European Union countries.
The Panel determines that Complainant has trademark rights in the term "DIGITAL HOME".
Since the disputed domain name adopts the term effectively without modification, the Panel determines that the disputed domain name is identical to a trademark in which Complainant has rights. Complainant has established the first element for a finding of abusive domain name registration and use.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you 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 (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 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." (Policy, paragraph 4(c)).
Respondent contends that it has rights or legitimate interests in the disputed domain name on two grounds. The first is that because the term "DIGITAL HOME" is generic or commonly descriptive, mere registration of the disputed domain name establishes rights or legitimate interests.
Regarding this contention, the majority of the Panel notes its earlier determination that the term "DIGITAL HOME" is not generic, and is not commonly descriptive in the sense that Complainant has established the term as distinctive in its line of commerce.
This does not mean that a person might not establish rights or legitimate interests in the disputed domain name based on use of the term "DIGITAL HOME" in a fair descriptive sense. Paragraph 4(c)(iii) of the Policy contemplates just such eventuality, and numerous panel determinations under the Policy have allowed fair use in such contexts. However, the fact that a person might establish fair use of a term does not mean that registration of the term standing alone establishes such fair use. The Policy expressly contemplates that a person may establish fair use by using the term, and Respondent has offered no evidence of such "making use" (or preparations for making use), save as discussed following. The majority of the Panel does not consider that the mere registration of a term identical to a trademark that might be subject to fair use establishes rights or legitimate interests in the disputed domain name.
Respondent�s second argument is that offering for sale a domain name incorporating a generic or commonly descriptive term constitutes a bona fide offering of goods or services establishing rights or legitimate interests. In the first place, Respondent�s argument ignores the initial clause of paragraph 4(c)(i), which indicates that such bona fide offer should occur prior to notice of a dispute. Respondent has not demonstrated that it offered the disputed domain name for sale prior to Complainant�s apparently prompt notification of its objection to Respondent�s registration of it. But leaving aside this technical point, the Panel majority again notes that Respondent has offered for sale a domain name that is identical to a trademark in which Complainant has rights. This undercuts Respondent�s theory. The offering for sale of a domain name incorporating Complainant�s trademark is not a bona fide offering of goods or services.
The purchase and sale of generic or commonly descriptive terms does not contravene the Policy. Such purchases and sales are undertaken frequently and represent a substantial business on the Internet. Where, as here, the alleged generic or commonly descriptive term is a trademark registered in numerous countries and the domain name derives its value substantially from the trademark, the purchase and sale does not enjoy the legitimacy argued by Respondent.
The Panel finds that Complainant has established that Respondent has no rights or legitimate interests in the disputed domain name, and has therefore established the second element necessary for a finding of abusive domain name registration and use.
C. Registered and Used in Bad Faith
The Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of bad faith (Policy, paragraph 4(b)). Among these are (1) circumstances indicating that the domain name has been registered or acquired by a respondent "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [respondent�s] documented out-of-pocket costs directly related to the domain name" (Id., paragraph 4(b)(i)); (2) that a respondent has registered the domain name "in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct" (id., paragraph 4(b)(ii)), and (3) that a respondent "by using the domain name, � [has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainant�s mark as to the source, sponsorship, affiliation, or endorsement of [respondent�s] web site or location of a product or service on [its] web site or location" (id., paragraph 4(b)(iv)).
Respondent concedes that it registered the disputed domain name for the purpose of reselling it. It paid $3701 to purchase the domain name from an auction website.
Respondent does not dispute Complainant�s assertion that when contacted in respect to transfer of the name it offered to sell it to Complainant for $20,000. It has posted the domain name for sale on the BuyD auction website at an offering price of $20,000.
Respondent contends that its registration with the intent to offer the domain name for sale, and subsequent offering for sale, does not constitute bad faith within the meaning of paragraph 4(b)(i) of the Policy because it neither intended to sell the domain name to Complainant or its competitor, nor did it seek to take advantage of the value of a well known mark. In Respondent�s view, it is the fortunate beneficiary of the coming available for purchase of a generic or commonly descriptive term of which it is seeking to take legitimate profitable advantage. To support its theory, Respondent largely relies on the decision in Ultrafem Inc. v. Warren R. Royal, NAF No. FAO106000097682, decided August 2, 2001.
There are numerous decisions under the Policy holding that offering for sale a domain name incorporating a trademark on a public auction website may constitute evidence of bad faith registration and use, including one such decision in a proceeding which involved an affiliated entity of Respondent as respondent, Prisma Presse v. BuyD, WIPO Case No. D2001-1073, decided October 22, 2001. In Prisma Presse, the trademark "GEO" and "GEO MAGAZINE D�exception" was registered in France, used on magazines in France and other countries outside the United States, and was largely unknown in the United States. Respondent was and is based in the United States. An affiliated entity of Respondent was determined to have engaged in abusive domain name registration and use based, inter alia, on its offering it for sale on a public auction website.
An important factor distinguishes the decisions in Ultrafem Inc. v. Warren R. Royal and Prisma Presse v. BuyD. In the former, the respondent was found to have a legitimate interest in the disputed domain name based on preparation to use it in connection with a bona fide offering of goods or services. A downturn in the Internet economy prevented its business plans from reaching fruition. In that context, the fact of offering the domain name incorporating a generic term used as a trademark () for sale on an auction site was determined not to constitute bad faith. In Prisma Presse, by way of contrast, there was no response and no determination that the respondent had rights or legitimate interests in the disputed domain name (). Respondent seeks to discount Prima Presse by referring to its failure to file a response, adding "The panel specifically stated that respondent �might have rebutted� the findings with respect to legitimate interest. It is respectfully submitted that the evidence here substantially rebuts Complainant�s evidence" (Response).
In the present proceeding, the only evidence of rights or legitimate interests submitted by Respondent is its contention that the disputed domain name is generic or commonly descriptive, and that buying and selling generic or commonly descriptive domain names is a legitimate business.
The Panel majority reiterates that buying and selling domain names incorporating generic and commonly descriptive terms is a legitimate enterprise that does not contravene the Policy. The problem in the instant proceeding is that the disputed domain name is identical to a trademark registered in twelve countries. There is a substantial value in the domain name based on Complainant�s establishment and use of the "DIGITAL HOME" trademark.
Respondent seeks to rebut the inference of value based on the trademark by assertion that it "had no knowledge, whatsoever, of Complainant when we registered the Disputed Domain". Respondent offered a substantial sum of money ($3701) for the disputed domain name at the auction website ("www.P"). P monitors expiring and deleted domain name registrations. It attempts, at the point of expiration or deletion, to register names in which users of its site have indicated an interest. It conducts an auction of the name when multiple users of its service have indicated interest in the same domain name. When the registration for the disputed domain name in this proceeding expired, Respondent was presented by P with the option to bid on it, and Respondent elected to make a substantial monetary offer.
Respondent is based in Washington, D.C., USA. The mark is listed on the Principal Register of the USPTO. A readily searchable database of registrations on the Principal Register is freely accessible on the Internet. Respondent is a sophisticated trader in Internet domain names. The Panel majority infers that Respondent would have acted with ordinary care to determine what third party interests there might be such as may affect the resale value of the disputed domain name. The Panel majority is not prepared to accept as a defense to bad faith registration in the circumstances of this case that Respondent had no knowledge of Complainant�s mark. The Panel majority considers that in these circumstances it is appropriate to draw an inference that Respondent had knowledge of Complainant�s mark.
Respondent has sought a substantial sum of money for a domain name that is identical to a trademark in which Complainant has demonstrated rights. There are potential alternative purchasers to Complainant that might be able to demonstrate rights or legitimate interests in the disputed domain name by making use of it in a manner acceptable under paragraph 4(c) of the Policy. Yet the fact remains that Respondent is not itself seeking to or making legitimate use of disputed domain name. Respondent concedes that its business model does not contemplate making use of domain names other than to buy and sell them. In this case, it has bought and is seeking to sell a domain name identical to trademark in which Complainant has demonstrated rights.
The Panel considers that in these circumstances, the registration and offering for sale of the disputed domain name on a public auction website for a price substantially in excess of its out-of-pocket expenses in connection with the name constitutes bad faith registration and use of the domain name within the meaning of paragraph 4(a)(iii) and 4(b) of the Policy.
Complainant has established the third element necessary for a finding of abusive domain name registration and use. The Panel will therefore direct the Registrar to transfer the disputed domain name to Complainant.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, , be transferred to the Complainant
Frederick M. Abbott
Presiding Panelist
David E. Sorkin
Panelist
Dated: December 15, 2003
DISSENT:
I dissent. Complainant has established only one of the three factors of the applicable test.
A. Identical or Confusingly Similar
I join in the conclusion that Complainant has satisfied the first factor of the test, that the domain name is identical or confusingly similar to Complainant's trademark, but I cannot join in that part of my esteemed colleagues reasoning that "digital home" necessarily is not a generic term. In the first 10 of approximately 168,000 hits, the Google search results provided by Respondent contain references to "the digital home industry", the "Digital Home Working Group", and "Digital Home Magazine", with no obvious references to Complainant's DIGITAL HOME products. A court might well find "digital home" to be generic when used in connection with home networking and automation technology.
However, whether or not a court might ultimately hold that the term "digital home" is a generic one, is beyond the scope of our inquiry in this matter. Complainant has established that it has trademark registrations sufficient to invoke the Policy, and that the domain name is identical to that registered mark. Complainant need do no more as to the first factor of the test.
B. Rights or Legitimate Interests
I agree with my colleagues that "the purchase and sale of generic or commonly descriptive terms does not contravene the Policy." For this reason, I cannot agree that Complainant has carried its burden of proving that Respondent has no rights or legitimate interests in the domain.
Complainant alleges that registration and use of a domain for the purpose of resale does not establish rights or legitimate interests in a domain. My colleagues essentially disagree with Complainant, as noted above, but then conclude that the mere existence of Complainant's trademark prevents Respondent's efforts to sell the domain, in the ordinary course of Respondent's domain sales business, from being "a bona fide offering of goods or services" for purposes of the Policy. This circular reasoning essentially undermines this element of the test.
If all a complainant need show to eliminate the "bona fide offering of goods and services" defense is that Complainant has trademark rights in a word or phrase identical to the domain, then there is little or no need for the second element of the test. Instead, this portion of the test could be modified to ask only if the respondent is actively making a "fair use" of the domain or it is the respondent's nickname. While such amendment may occur at some future date, that is not the test today.
In fact, as quoted by the majority, above, the Policy specifically provides that the examples as to how a respondent might prove its rights or legitimate interests in the domain are simply that: examples. The Policy states: "Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all the evidence presented, shall demonstrate your rights or legitimate interests ..." (Policy, paragraph 4(c); emphasis added).
Respondent attests that it had no knowledge of Complainant or of Complainant's DIGITAL HOME trademark when it acquired the domain name at auction. Respondent submits Google web search results identifying "about 168,000" results for "digital home"; my own repetition of that exercise revealed "about 410,000" results using the Google search engine. I did not identify any references to Complainant or to its use of DIGITAL HOME in my brief perusal of the first few pages of those results. Many of the results that do appear in the search underscore the fact that the phrase "digital home" signifies to many the networking of computers and other electronics in the home ("the digital home experience", "building the digital home", "driving the digital home"). If the mark in question was HOME ELECTRONICS and the challenged domain , would the majority still find Respondent has no rights or legitimate interests in the domain?
In my view, the Respondent's explanation of its selection of the domain satisfies paragraph 4(c) of the Policy.
C. Registered and Used in Bad Faith
For the reasons set forth above, I cannot concur in my colleagues' conclusion that Complainant has established bad faith registration and use. Respondent claims to have had no prior knowledge of Complainant or its trademark; "digital home" is widely used as a descriptor in the home electronics networking and home automation industries.
The majority points to Respondent's sophistication in the domain name industry as proof of bad faith. With all due respect, Respondent's sophistication may, in fact, cut the other way. A sophisticated player in the domain name industry should know that a business model based on cyberpiracy is unlikely to be a successful one, and is unlikely to pay a premium for a domain likely to be immediately and successfully challenged in a UDRP proceeding such as this. A sophisticated player in the technology world would know that "digital home" is widely used throughout the home electronics and automation industries, and a web search, such as the one Respondent conducted for this proceeding, would bear that out.
In finding bad faith my colleagues essentially have imported into the Policy the constructive notice provision of U.S. trademark law, at least as to domain holders who register domains for the purpose of resale. While imposing the constructive notice burden on the adopter of a trademark is appropriate, extending it to apply to adopters of domain names, such as in the matter before us, far exceeds the scope of the Policy. I cannot agree that where a respondent obtains the domain for purposes of resale, the only relevant inquiry under the Policy is whether the complainant has established trademark rights. This is the result of the majority's decision, from which I respectfully dissent.
Sally M. Abel
Dissenting Panelist
Dated: December 15, 2003
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