WIPO Domain Name Decision D2009-1455 for torus.com

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Torus Insurance Holdings Limited v. Torus Computer Resources Case No. D2009-1455 1. The Parties

The Complainant is Torus Insurance Holdings Limited of Bermuda, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by Graham Watt & Co LLP, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Torus Computer Resources of Pennsylvania, United States of America. 2. The Domain Name and Registrar

The disputed domain name (“the Domain Name”) is registered with Network Solutions, LLC. 3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2009. On October 29, 2009, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the Domain Name. On October 29, 2009, Network Solutions, LLC 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 Domain Name. 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 the Respondent of the Complaint, and the proceedings commenced on November 9, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 29, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 30, 2009.

The Center appointed Warwick Smith as the sole panelist in this matter on December 9, 2009. The Panel finds that it was properly constituted. 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.

In view of the complexity of certain issues raised by this case (in particular, the bad faith registration issue discussed at pages 8-10 infra), and the subsequent intervention of the Christmas and New Year holiday periods, the time for the Panel to give its decision in the case is hereby extended to the actual date of the decision. 4. Factual Background

The Complainant is a corporation based in Bermuda. It holds two registered Community Trademarks which include the word “Torus”. One is a TORUS INSURANCE word mark, registered with effect from December 5, 2007, and the other is a TORUS INSURANCE figurative mark registered with effect from April 8, 2008. Both marks are registered in international class 36 for insurance, reinsurance, insurance brokerage, and related services.

An application to register “Torus” as a Community Trademark was filed on May 20, 2009. That application does not appear to have proceeded to registration. In the United States, the Complainant has two pending applications for registration of “Torus Insurance”, one for the word mark and one for a design mark. Neither mark appears to have proceeded to registration.

The Complaint offered little information about the Complainant's activities. The only information provided was a statement in the Complaint that the website at the Domain Name (“the Respondent's website”), as it stood on March 2, 2009, offered services which were “financial and therefore identical and similar to those offered by the Complainant”. The Respondent and the Domain Name

The Domain Name was created as long ago as July 16, 1997.

The Complainant produced a page from the Respondent's website as it stood on March 2, 2009. The page was prominently headed “State Tax Refund Service”, and there was an “STRS” logo immediately beside that heading. The website claimed that “State Tax Refund Service” was a professional sales and use tax consulting firm, which performed reviews for clients with a view to identifying where they might have overpaid sales and/or use tax, and assisting them to obtain refunds of the overpayments. The web page described the website operator as “A member of the PA Association of Community Bankers”. There were various click-on links consisting of expressions which generally appeared to be consistent with the nature of the business said to be carried on by the website operator, but the Complainant did not produce any of the web pages at these links. There was a copyright claim dated “2002-2007”, by “State Tax Refund Service”.

The Panel visited the Respondent's website on December 11, 2009. The Respondent's website contained a statement: “This Page is Under Construction – Coming Soon!” (An explanatory link explained that “Under Construction” indicated that the web page had been automatically generated as a placeholder for a domain name that had not yet been attached to an active website. The “Under Construction” designation was said to have replaced the “Not Found” error page, and was intended to notify visitors that a website would be coming soon.)

There were various click-on links, generally related to tax and tax refunds (e.g. “State Tax Refund”), or accounting (e.g. “certified public accountant”).

Generally, the Respondent's website appeared to be under the management of Network Solutions: there were a number of click-on links to web pages relevant to various aspects of Network Solutions' business (e.g. “Website Solutions”, “Online Marketing”, and “Design Services”). Also, Network Solutions' name and logo appeared at the top right hand side of the home page of the Respondent's website. Complainant's Attempts to contact Respondent

According to the Complaint, the Complainant sent an email to an email address found on the Respondent's website, on March 18, 2009. The Complainant says that a reminder was sent on June 11, 2009. No Response was received to either email. The Complainant also stated that several phone calls had been made to the telephone number listed on the Respondent's website in the period between July 9 and July 20, 2009, but there was no answer. A message left on the answerphone on August 3, 2009 did not draw any response.

The Complainant says that it has conducted various online searches to try to obtain details of “State Tax Refund Service” or “Torus Computer Resources”, without success. The Complainant did not identify the particular searches it undertook, and did not provide copies of any search results. 5. Parties' Contentions A. Complainant

The Complainant contends:

1. The Domain Name is identical to the distinctive element of all of the Complainant's marks, namely the expression “Torus”.

2. The Respondent has no rights or legitimate interests in respect of the Domain Name, having regard to the following:

(i) There is no evidence of the Respondent having used the Domain Name (or of it having made demonstrable preparations to do so) in connection with any bona fide offering of goods or services.

(ii) The Respondent (as an individual, business, or other organisation) has not been commonly known by the Domain Name.

(iii) The Respondent has acquired no relevant trademark or service mark rights, and has filed no application in any of the United States, European Union, United Kingdom, or international registers, for the mark TORUS.

(iv) The Respondent is making no legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant's mark. Nothing on the Respondent's website as it stood on March 2, 2009 bore any relation to the mark TORUS, although the services offered were financial and therefore identical and similar to those offered by the Complainant.

(v) It is doubtful whether any entity called “State Tax Refund Service”, or “Torus Computer Resources” actually exists and/or has ever traded.

3. The Domain Name was registered and is being used in bad faith, having regard to the following:

(i) The matters set out at paragraph 2 above lead to the incontestable conclusion that the Domain Name was registered primarily for the purpose of disrupting the business of a competitor, or that, by using the Domain Name, the Respondent intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website 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 the Respondent's website or location or of a product or service on the Respondent's website or location. B. Respondent

The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. What the Complainant must prove under the Policy - General

Under Paragraph 4(a) of the Policy, a complainant has the burden of proving the following:

(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) That the disputed domain name has been registered and is being used in bad faith.

Paragraph 15(a) of the Rules requires the panel to:

“… 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”.

Where a respondent has not submitted a response, paragraph 5(e) of the Rules requires the Panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the Panel may draw such inferences from a respondent's failure to comply with the Rules (e.g. by failing to file a response), as the Panel considers appropriate. B. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has proved this part of its Complaint.

The Complainant is the registered proprietor of the Community Trademark TORUS INSURANCE in respect of insurance and related services in international class 36, and it therefore has rights in that mark for the purposes of paragraph 4(a)(i) of the Policy. The expression “insurance” is probably descriptive of the Complainant's principal activity (having regard in particular to the Complainant's name), and the dominant part of this mark is undoubtedly the expression “Torus”.

The incorporation of “Torus” in the Domain Name is, in the Panel's view, sufficient to meet the “confusingly similar” test prescribed by paragraph 4(a)(i) of the Policy. “Torus” is not a widely known expression, and the Panel is satisfied that many Internet users who were familiar with the Complainant and its services would be likely to assume that the Domain Name would have some connection with the Complainant. C. Rights or Legitimate Interests

In view of the conclusion the Panel has reached on the issue of bad faith registration and use (as to which, see section 6D of this decision), it is unnecessary for the Panel to make any findings under paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:

(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent's] documented out-of-pocket costs directly related to the disputed domain name; or

(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant's trade mark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or

(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] website 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 [the respondent's] website or location or of a product or service on [the respondent's] website or location.

Notwithstanding the Respondent's failure to submit any Response, the Panel is not satisfied that the Complainant has proved that the Respondent registered, and has used, the Domain Name in bad faith. The Panel has come to that view for the following reasons.

1. The Domain Name was created as long ago as July 16, 1997, and there is nothing in the evidence to suggest that the Respondent might have subsequently acquired the Domain Name from the original registrant, or from some intermediate registrant. The onus of proof is on the Complainant, and the only proved registration of the Domain Name is that which occurred in July 1997. The Panel will proceed on the basis that the Domain Name was registered by the Respondent on that date.

2. There is no evidence whatsoever that the Respondent's purpose in registering the Domain Name back in 1997 was to disrupt the business of a competitor, as the Complainant contends. Indeed, there is no evidence that the parties were competitors at that time or that the Complainant even existed back in 1997. There is therefore no evidence to support the Complainant's argument based on paragraph 4(b)(iii) of the Policy.

3. Although the word “torus” may be an unusual word, it is in fact a dictionary expression. The New Shorter Oxford English Dictionary provides a number of definitions of “torus”, one of which is an expression used in geometry:

“a surface or solid generated by the circular motion of a circle about an access outside itself but lying in its plane; a solid ring of circular cross-sections; a body topologically equivalent to this, having one hole in it but not necessarily circular in form or cross-section”.

4. The Panel notes that the Center's online document “WIPO Overview of WIPO Panel Views on selected UDRP Questions”, states (in respect of domain names comprised of generic, or dictionary, words): “If a respondent is using a generic word to ... profit from the generic value of the word without intending to take advantage of complainant's rights in that word, then it has a legitimate interest” (Overview, paragraph 2.2). The essential issue in a case like this then, is whether a disputed domain name consisting of a generic word like “rectangle”, or “rhombus”, or “torus”, has been shown to have been registered with the intention of taking advantage of the complainant (trademark owner)'s rights in the corresponding longer expression “Rectangle Insurance”, “Rhombus Insurance”, or (as in this case) “Torus Insurance”.

5. As this Panel noted in Dreamstar Cash SL v. Brad Klarkson,WIPO Case No. D2007-1943:

“All of the examples of bad faith registration and use set out [at paragraph 4(b) of the Policy], require that the respondent must be guilty of having targeted the complainant or its mark in some way, or at least that the respondent must have had the complainant or its mark in mind when the respondent registered the domain name. (See for example The Perfect Potion v. Domain Administrator,WIPO Case No. D2004-0743, recently followed by this Panel in Christian Dior Couture v. Paul Farley,WIPO Case No. D2008-0008).”

6. In this case, the Respondent appears to be based in Pennsylvania in the United States, and the Complainant is a corporation with its headquarters in Bermuda, represented by solicitors in the United Kingdom. There is no evidence of the Complainant having traded in the United States at all, or of it having advertised or had any other presence in that country. Its applications to register “Torus Insurance” figurative marks were only filed with the United States Patent and Trademark Office on December 6, 2007 and April 9, 2008 respectively, and the Respondent had acquired (and presumably been using) the Domain Name for many years prior to those dates. Nor is there anything in the extract which the Complainant produced from the Respondent's website, which would suggest that the Respondent was somehow targeting the Complainant or its TORUS INSURANCE Community Trademarks. The Complainant does not appear to have been mentioned on the Respondent's website, and nor (as far as the Panel can tell) have there been links on the Respondent's website to websites operated by the Complainant's competitors. There was nothing in the March 2, 2009 page from the Respondent's website that the Complainant produced, which appeared to be connected with the insurance industry.

7. The Complainant has provided almost no evidence about the nature of its own activities. In particular, there is nothing in the evidence to suggest that its business activities include the provision of advice about obtaining tax refunds in the United States, or providing general accounting advice.

The Complainant's evidence relating to the Respondent's activities was equally inadequate. The only evidence about the Respondent's activities was the copy of the web page extract from March 2009, being a screenshot taken some 7 months before the Complaint was filed. Why the Complainant elected not to file a more recent screenshot from the Respondent's website, nor refer to earlier pages from the Respondent's website which are available on the Wayback Machine at , was not explained. And while the Complainant stated that “various searches” had been carried out online to try to obtain details of State Tax Refund Service or Torus Computer Resources, to no avail, the Complainant did not state what searches had been carried out, nor provide any search results. Without more detail, the Panel cannot place much weight on the Complainant's statement, nor on its submission that it is doubtful whether either entity actually exists or has ever traded.

8. Paragraph 4(b)(iv) of the Policy requires that the Panel be satisfied that the Respondent intentionally attempted to attract Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's mark. The onus of proof is on the Complainant. In all of the foregoing circumstances, the Panel is not satisfied that the Complainant has proved the necessary element of intention, or “targeting” of the Complainant's mark. Even in the absence of a Response, there is simply not enough in the evidence for the Panel to uphold the allegation under paragraph 4(b)(iv) of the Policy.

9. The Respondent's various defaults are insufficient to change that conclusion. (They include the Respondent's failure to file a Response, and its apparent failure to respond to emails said to have been sent to it on March 18, 2009, and June 11, 2009. There were also unsuccessful attempts by the Complainant to contact the Respondent by telephone.)

The Complainant did not provide copies of its emails, which were said to have been sent only “to try to establish contact”. Without seeing these emails, it is difficult for the Panel to say that any significant weight should be placed on the Respondent's failure to respond to the emails. For all the Panel knows, the content of the emails may not have been such as to alert the Respondent to the Complainant's present claims, or to persuade the Respondent that it was worth bothering to reply. Also, the fact that telephone calls made in July 2009 to a number which had been provided on the Respondent's website four months earlier went unanswered, does not advance the Complainant's position sufficiently to get it over the line on the “registration and use in bad faith” issue. There may have been valid reasons for the failure to answer the telephone, or to respond to messages, but even if there were not, mere silence on the Respondent's part in the face of the Complainant's attempts to make contact cannot, in the absence of other, more direct evidence, elevate the Complainant's case to proof that the Respondent has been using the Domain Name in bad faith.

10. The foregoing findings are sufficient to dispose of the Complainant's alternative allegations under paragraphs 4(b)(iii) and 4(b)(iv) of the Policy. In addition, the Panel notes that there is no proof that the Respondent registered the Domain Name in bad faith back in 1997. On its face, paragraph 4(a)(iii) of the Policy requires not only proof of bad faith use of a disputed domain name, but also proof that the disputed domain name was registered in bad faith. In this case there is no proof that the Complainant even existed back in 1997, and it therefore follows that there is no evidence that the Respondent “targeted” the Complainant, or had the Complainant in mind, when the Respondent registered the Domain Name in 1997.

11. The Panel notes that there have been several recent panel decisions in which very experienced panelists have taken the view that, once a complainant has proved use falling within paragraph 4(b)(iv) of the Policy, the complainant is not required to prove that the respondent acted in bad faith in registering the disputed domain name (even when the registration occurred many years prior to the proved bad faith use) - see for example Octogen Pharmacal Company Inc v. Domains by Proxy, Inc/Rich Sanders and Octogen e-Solutions,WIPO Case No. D2009-0786; City Views Limited v. Moniker Privacy Services/Xander, Jeduyu, ALGEBRALIVEI,WIPO Case No. D2009-0643; Zerospam Security Inc. v. Internet Retail Billing, Inc., Host Master,WIPO Case No. D2009-1276; and Ville de Paris v. Jeff Walter,WIPO Case No. D2009-1278). In the latter case, the (eminent) panelist summarized his views on this issue in the following terms:

“... it seems clear to this Panel that the intent and effect of the Policy is that the requirement of Paragraph 4(a)(iii) can, in certain circumstances, be met where the respondent has used the domain name in bad faith, even though it may have been acquired in good faith. As the [Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003] decision states ‘the relevant issue is ... whether in all the circumstances of the case, it can be said that the Respondent is acting in bad faith.'”

In view of the Panel's finding in this case that the Complainant has not proved use falling within paragraph 4(b)(iv) of the Policy, a review of those recent cases may not be necessary to the decision in this case. It is important to bear in mind the practical reality that application and related consideration of such approach would be likely to affect the outcome only in a mere fraction of cases decided under the Policy. However, the Panel feels bound to say that he has doubts about, and is not at this point disposed to embrace, the interpretation approach articulated in the Octogen line of cases. The issue which those cases raise is one of considerable substantive importance, so the Panel believes it is appropriate for the Panel to explain those doubts in this decision, even if this case falls to be decided on grounds which do not call for the application of the Octogen approach.

First, paragraph 4(a)(iii) of the Policy unequivocally requires proof of bad faith registration, as well as bad faith use. Secondly, the Final Report of the First WIPO Process, which led to the ultimate adoption of the Policy by ICANN, appears to have focused primarily on bad faith registration (e.g. see paragraph 151(i) of that Report: “a uniform administrative procedure for the cancellation of bad faith domains registered in deliberate abuse of trademark rights should be available in all open gTLDs” (this Panel's emphasis). Given that apparent emphasis on bad faith in the act of registration, this Panel doubts that the framers of the Policy could have intended that proof of bad faith use of the kind described at paragraph 4(b)(iv) of the Policy should always be deemed sufficient proof, on its own, that the disputed domain name has also been registered (possibly many years earlier) in bad faith. It rather seems to this Panel that such evidence of bad faith use would need to be found to co-exist with bad faith intent regarding the act of registration in order to satisfy the requirement of paragraph 4(a)(iii) of the Policy.

12. This Panel considers that, paragraph 4(b) of the Policy must be read consistently with paragraph 4(c)(i) of the Policy. Under the latter subparagraph, a domain name registrant who has made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services (before any notice of the dispute) is deemed unequivocally to have a right or legitimate interest in respect of the domain name. If that registrant, some years later, decides to put the domain name to an additional use which falls within paragraph 4(b)(iv) of the Policy, the Octogen and Ville de Paris line of cases would appear to require a finding of bad faith registration, in circumstances where the domain name was manifestly not registered in bad faith. There may be an answer to that apparent conundrum, but at this stage it is not obvious to this Panel what it might be. Certainly any approach which would retrospectively deem male fide, actions which, at the time they were taken, were perfectly bona fide, does not seem to this Panel to be an attractive answer.

13. The panel in Octogen looked to the wording of paragraph 2 of the Policy, and in particular the domain name registrant's deemed warranty (given at the time of registration) that it “(d) ... will not knowingly use the domain name in violation of any applicable laws or regulations”, in support of an argument that post-registration bad faith use can retrospectively convert a good faith registration into a bad faith one. Quite apart from the conceptual difficulty in ex post facto deeming that which was clearly legitimate when it occurred to have been illegitimate, it seems to this Panel that warranty (d) at paragraph 2 of the Policy was directed purely at the issue of use, and tells us nothing about what might or might not constitute bad faith registration. It seems at least arguable that warranties (b) and (c) at paragraph 2 of the Policy – registration will not infringe upon or otherwise violate the rights of any third party, and domain name not being registered for an unlawful purpose – are the ones directed at the respondent's state of mind at registration time, while (d) is concerned only with the registrant's subsequent use of the domain name.

14. With those considerations in mind, the Panel finds it interesting to contrast the introductory words in paragraph 4(b) of the Policy with the introductory words in paragraph 4(c). In paragraph 4(c), proof of any of the three examples provided in the paragraph “shall demonstrate” the respondent's rights or legitimate interests in respect of the disputed domain name. The meaning is clear beyond doubt: proof of any one of the listed circumstances will necessarily be fatal to the complaint.

The examples in paragraph 4(b) on the other hand, are merely said to constitute “evidence” of the registration and use of the disputed domain name in bad faith. That “evidence” is not stated to be conclusive, or irrebuttable. Comparing the different language used in the introductory parts of paragraphs 4(b) and 4(c), it seems at least possible that the intention was that proof of circumstances falling within any of the subparagraphs of paragraph 4(b) of the Policy would provide a sufficient basis for a panel to infer both bad faith registration and bad faith use under paragraph 4(a)(iii), in the absence of countervailing evidence. That interpretation would appear to have the advantage of accommodating the fact that, while subparagraphs 4(b)(i) – (iii) appear on their face to be concerned only with bad faith registration1, and paragraph 4(b)(iv) only with bad faith use, all four subparagraphs are deemed to provide evidence of bad faith registration and bad faith use.

In this Panel's view, at the end of the day, paragraph 4(b) only provides examples of the kind of evidence which will be indicative of bad faith registration and use. Paragraph 4(a)(iii) is clearly the paragraph with primacy, and it requires proof of both.

Evolution of panel thinking in response to new developments in the domain name system is no doubt something which should be encouraged. But panels must still apply the provisions of the Policy, with its careful balancing of the respective interests of trademark owners and domain name registrants. At least at this point in the evolution of the new thinking, this Panel remains unconvinced by, and is not at this stage disposed to embrace, the approach to the interpretation of paragraphs 4(a)(iii) and 4(b)(iv) which has been adopted in the Octogen, City Views Ltd, and Ville de Paris v. Jeff Walters line of cases. 7. Decision

For all the foregoing reasons, the Complaint is denied.

Warwick Smith
Sole Panelist

Dated: January 10, 2010

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