WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Shem, LLC v. Solytix, Inc. Case No. D2009-0739 1. The Parties
Complainant is Shem, LLC of Highland Park, Illinois, United States of America, represented by the law firm Neal, Gerber & Eisenberg, United States of America.
Respondent is Solytix, Inc. of Hohenwald, Tennessee, United States of America, represented by the law firm WilmerHale, United States of America. 2. The Domain Names and Registrar
The disputed domain names and are registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 5, 2009. On June 5, 2009, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain names. On June 5, 2009, GoD, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on June 17, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 7, 2009. The Response was filed with the Center on July 7, 2009.
The Center appointed Richard G. Lyon as the sole panelist in this matter on July 16, 2009. The Panel finds that it was properly constituted and has jurisdiction over this proceeding. The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
Complainant is a holding company that obtained the rights to the AUTOCAR trademark in 2001. The AUTOCAR trademark was first registered in the United States Patent and Trademark Office in 1905, and nine other AUTOCAR trademarks have been registered there since: one in 1966, and the remaining eight between 2002 and 2005. The AUTOCAR trademark has been used continuously since 1905 in connection with the manufacture, promotion, and sale of automotive products, especially heavy-duty trucks. The AUTOCAR trademark had multiple owners prior to Complainant.
Respondent registered in July 1998 and in August 1998. Today these domain names resolve to sites with several automotive-related links. These are not “standard” pay-per-click sites. Each is different, and each has photographs, advertisements in color, different advertisements and links, and several links to non-automotive sites. The site at “www.” states “Copyright 1984 - 2000, Solytix, Inc.”
The Panel's review of the archives at “” indicate that in 2000 the “www.” site had a description of a business oriented at tips to consumers for automotive maintenance and repairs. For example, “Car care tips and links to help you keep your car running great and looking good. This site aims to build a list of useful links for motorists interested in understanding more about car repair, car maintenance, and troublshooting. Car discussion forums are also a great way to learn more. Come back often to see new and more useful urls and tips regularly.” 5. Parties' Contentions
The parties' contentions may be summarized as follows: A. Complainant
The disputed domain names are identical to Complainant's registered AUTOCAR trademark, as the addition of a top-level domain such as “.com” or “.org” has no legal significance.
Respondent has no rights or legitimate interests in respect to the disputed domain names because the domain names are not and never have been used in connection with a bona fide offering of any goods or services. Respondent is not referred to or commonly known by “autocar”, and Respondent has no license from or legal relationship with Complainant. Rather, is no more than a place-holder webpage, with third party advertisements, and , once a place-holder webpage, is now an empty webpage. Respondent owns 42 other domain names, 41 of which are either inactive or are merely place-holder web pages, used for third-party advertisements.
Respondent registered and has used the disputed domain names in bad faith because it is “inconceivable” that Respondent “innocently registered” the disputed domain names given the AUTOCAR mark's “worldwide fame.” Rather, Respondent intentionally registered them to profit from the goodwill attaching to Complainant's mark, and to preclude Complainant as mark owner from registering the AUTOCAR mark as a “.com” or “.org” domain name. Respondent's passive holding of the disputed domain names also indicates bad faith.
Anticipating a possible claim of laches based upon the fact that the disputed domain names have been registered for eleven years, Complainant notes that the defense of laches is not provided for under the Policy, that panels have refused to entertain the defense, and that the length of time Respondent has owned the disputed domain names does not excuse its improper registration and use of them. B. Respondent
Respondent does not dispute Complainant's trademark rights or the fact that the disputed domain names are identical to the AUTOCAR mark.
Respondent does have rights and legitimate interests in the disputed domain names because Respondent made demonstrable preparations, before notice of this dispute, to use them in connection with the bona fide offering of a car diagnostic service. Andrew P. Borden, a founder, submits an affidavit that he and Stephen D. Longo, another founder, are both engineers who spent a considerable amount of time developing the software that would support Respondent's car diagnostic website. Shortly after registering the disputed domain names Respondent explored business relationships with several service providers and partners in connection with Respondent's planned car diagnostic business including Big O Tires, LLC, AutomotiveC to send out information and advertisements about Respondent's website, and Mitchell International and Alldata to diagnose Respondent's website software. Respondent pursued joint marketing agreements with Johnson Auto and several other automotive part suppliers. Additionally, Respondent set up advertising links and revenue streams for “www.” by creating associations with other notable car-related websites, such as “”. Respondent operated an online car repair forum on “, which received hundreds of hits each day, before registering the disputed domain names. Respondent chose the disputed domain names not because of Complainant's mark, but rather to combine the two key words most used to search for Respondent's online car repair forum: “car” and “auto.” Respondent previously operated another online car repair forum on “www.”; thus, it was not always a place-holder webpage. In addition to Mr. Borden's testimony Respondent submits documentation from 1998-2000 such as emails and a business plan for one of its prospective partners as evidence of its preparations to make use of the disputed domain names.
Respondent did not register and does not use the disputed domain names in bad faith because at the time of the registration Respondent did not have knowledge of Complainant or its trademark rights. The AUTOCAR mark is not so pervasive and famous as Complainant asserts, as the mark has changed owners and the nature of the products sold under the mark many times. Eight of the AUTOCAR trademarks were not registered until after Respondent registered the disputed domain names. Actual knowledge of Complainant's mark cannot be imputed onto Respondent. Respondent did not attempt to trade off of Complainant's good will. Autocar is a very small company, as admitted by Autocar's Vice President of Sales and Marketing in 2005; thus there is little good will to exploit. Respondent's use of the AUTOCAR mark is not so related to Complainant's business to create confusion and infringe the AUTOCAR trademark.
As to laches, the fact that Respondent has owned and used the disputed domain names for over eleven years without complaint and without attempting to sell them to Complainant undermines Complainant's charge of bad faith. In fact Respondent has never attempted to sell any of its other domain names, despite multiple requests. Respondent asserts that no laches defense is necessary as the Complaint should be denied based on ordinary application of the Policy. 6. Discussion and Findings A. Identical or Confusingly Similar
As Respondent concedes, the disputed domain names are identical to Complainant's registered AUTOCAR trademark. Complainant has satisfied the first necessary element under the Policy. B. Rights or Legitimate Interests; Registration or Use in Bad Faith
There is no dispute that Respondent is not commonly known by either of the disputed domain names or that Respondent has been granted no rights in the disputed domain names from Complainant. The contested issue is whether Respondent has established that it comes within the safe harbor provided by paragraph 4(c)(i) of the UDRP: that it made demonstrable preparations, before notice of the dispute, to use the disputed domain names in connection with a bona fide offering of goods or services. See SFX Entertainment, Inc. v. Phillip Cushway,WIPO Case No. D2000-0356.
Proof of demonstrable preparations to use a disputed domain name does not require a showing of “a fully operational business.” DigiPoll Ltd. v. Raj Kumar,WIPO Case No. D2004-0939. Rather, it is sufficient for Respondent to show that, before notice of the dispute, preparations to use a disputed domain name were made, “even if…those preparations were ‘perfunctory', meaning superficial, or mechanical.” Evidence of demonstrable preparations may include “a business plan or partners, the proposed technology or how it would function, how the business would be financed, [or] a timetable.” Ibid.
This Panel finds that Respondent provided sufficient evidence to prove demonstrable preparations for use of both disputed domain names in connection with an actual or putative car diagnostic business. Respondent has shown with sworn statements and contemporaneous documents that:
- Prior to registration Respondent operated an online car repair forum, evidencing Respondent's pre-existing interest in the car diagnostic business.
- Respondent also operated a similar car repair forum on , one of the disputed domain names, for a time.
- Respondent developed software to be used with the disputed domain names to help perform car diagnostics.
- Respondent pursued numerous business relationships with possible third party services providers and partners, both to generate profits for Respondent's websites and to advertise Respondent's business on other websites.
Respondent has shown considerably more than “superficial or mechanical” preparations to use the disputed domain names. The Panel's review of the record corroborates Respondent's assertion that Complainant's characterization of Respondent's sites as placeholders is inaccurate.
The inquiry does not end here, of course, as Respondent's offering of its car diagnostic service must also be bona fide. Complainant argues that Respondent is deliberately infringing the AUTOCAR trademark to trade off of Complainant's good will, and that such use precludes a bona fide offering. See Oorah, Inc. v. Simchat Torah Beit Midrash,WIPO Case No. DTV2007-0003 (stating that “a deliberate infringement of another's trademark rights does not entail a bona fide offering of goods or services”).
Complainant provides no evidence that Respondent had knowledge of Complainant's trademark rights when Respondent registered the disputed domain names in 1998, or of facts from which the Panel could infer such knowledge. Complainant does little to support the alleged “world-wide” fame of its mark other than point out that the mark has been registered for over one hundred years. Unlike the marks in the cases relied on by Complainant,1 AUTOCAR is hardly a household or even common word. Complainant has made no showing that the word is uniquely or commonly associated with it, although such evidence (if it exists) is readily available to Complainant.
Complainant's reliance on Respondent's constructive knowledge of the AUTOCAR mark is misplaced. Ordinarily the American doctrine of constructive knowledge, under which the public is presumed to have knowledge of any registered trademark, does not apply in Policy proceedings. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 3.4. A complainant in a Policy proceeding ordinarily must show actual, not constructive, knowledge. Janet E. Sidewater v. Worldwide Media, Inc.,WIPO Case No. D2006-1281 (stating that “the doctrine of ‘constructive notice'” available at common law “has not been engrafted into the Policy”). A complainant also must ordinarily show that that the respondent targeted the complainant, Gold Medal Travel Group plc v. Damir Kruzicevic,WIPO Case No. D2007-1902. Nothing in the record in this proceeding points to such targeting.
Sometimes bad faith in registration may be inferred from long non-use. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Not here, however, for several reasons. For one thing, as noted above Respondent's use has not been totally “passive.” Respondent has shown not only demonstrable preparations to use the disputed domain names for active websites, but some (albeit minimal) actual use. For another, passive holding alone is insufficient to prove bad faith. Usually there must be some showing of a well-known mark or some other recognized bad faith conduct. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, NAF Claim No. FA 406512 (holding that a showing of extraordinary fame “is a necessary prerequisite to a bad faith claim premised on a passive holding,” and that an offer by Respondent to sell the domain name is important). Finally, while the Policy does not recognize the equitable defense of laches, the fact that Complainant waited eleven years to dispute Respondent's disputed domain names makes it more difficult to prove that the disputed domain names were registered or used in bad faith, and to overcome Respondent's legitimate use defense. The E.W. Scripps Co. v. Sinologic Industries,WIPO Case No. D2003-0447; see also America Online, Inc. v. GO Technology Corporation, NAF Claim No. FA 403101 (finding that “Complainant's inaction for…9 years…implies that Respondent does not have the requisite bad faith intent”); Square Peg Interactive Inc. v. Naim Interactive Inc., NAF Claim No. FA 209572 (stating that “although laches by itself is not a defense to a complaint brought under the Policy, Complainant's delay in seeking relief is relevant to a determination of whether Respondent has been able to build up legitimate rights in the disputed domain name in the interim, and whether it is using the Domain Name in bad faith”).
The language of the Policy itself defeats Complainant's final asserted ground for a finding of bad faith, that “Respondent has violated Paragraph 4(a)(ii) the Policy by intentionally seeking to prevent Complainant from reflecting the mark in a corresponding domain name.” Paragraph 4(b)(ii) gives as an example of bad faith a respondent's “regist[ration of] the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name,” but that provision requires that the respondent “have engaged in a pattern of such conduct.” Complainant provides no evidence that Respondent, intentionally or otherwise, has registered other domain names to the detriment of corresponding mark owners.
Complainant has failed to satisfy the second or third necessary elements of a claim under the Policy. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Richard G. Lyon
Sole Panelist
Dated: July 30, 2009
Full & Egal Universal Law Academy