WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Igor Lognikov v. Web Ventures, Nerdec, Inc. and Charles Edmunds Case No. D2009-1684 1. The Parties
1.1 The Complainant is Igor Lognikov of New York, United States of America, represented by Richard S. Ross, United States of America.
1.2 The Respondent is Web Ventures, Nerdec, Inc. and Charles Edmunds of Quebec, Canada, acting in person. 2. The Domain Names and Registrar
2.1 The disputed domain names , , , , , , and (the “Domain Names”) are registered with eNom (the “Registrar”). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2009. At the time of the filing of the Complaint the Domain Names had all been registered in the name of the “privacy service”, “Whois Privacy Protection Service, Inc”, but the Complaint identified the Respondent as “Charles Andrew Mc Gow-Edmunds aka Charles Edmunds aka David A. aka David A. Hrushka”. In response to a notification by the Center that the Complaint was administratively deficient in that it failed to sufficiently identify the trade marks relied upon, the Complainant filed an amendment to the Complaint on December 11, 2009.
3.2 On December 12, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On the same day, eNom transmitted by email to the Center its verification response. In that response the Registrar identified the “registrants” behind the privacy service to be, in the case of , “Nerdec Inc.”, and, in the case of all the other Domain Names, “Web Ventures”. On December 14, 2009, the Center notified the Complainant that the registrants of record for the Domain Names were not the persons identities specified in the Complaint. The Complainant filed a further amendment to the Complaint in this respect on December 16, 2009.
3.3 The Center verified that the Complaint together with the two amendments 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 December 18, 2009.
3.4 That same day the Center received an email from Charles Edmunds. In that email Mr. Edmunds stated that the domain name was not owned by Nerdec Inc. and the WhoIs contact information should be “updated to reflect accurate information”.
3.5 In accordance with the Rules, paragraph 5(a), the due date for Response was January 7, 2010. The Response was filed with the Center on January 8, 2010.
3.6 The Center appointed Matthew S. Harris as the sole panelist in this matter on January 15, 2010. 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.
3.7 The Complainant has not objected to the late filing of the Response. Instead on January 19, 2010 the Complainant served a supplemental submission seeking to address certain points made in the Response. On January 20, 2010, the Respondent served a supplemental submission in reply. 4. Factual Background
4.1 The Complainant is an individual with an address in Brooklyn, New York. The Complainant appears to have been engaged since April 2002 or thereabouts in the business of the provision of services related to the provision of downloadable software for website development comprising pre-formatted modifiable templates.
4.2 The Complainant is the owner of Community Trade Mark No. 5074761 for the word TEMPLATEMONSTER. The application for the mark was filed on May 15, 2006 and the mark was registered on April 23, 2008. The mark is registered in class 42 for “Computer services, namely, providing website templates; website development services, namely, providing website design services for others.”
4.3 Notwithstanding the present WhoIs details for the Domain Names, it appears to be uncontested that the underlying present owner of the Domain Names is Charles Edmunds. This decision proceeds on that basis.
4.4 The WhoIs details for the Domain Names record registration dates in the following order:
: June 14, 2002
: October 4, 2002
: September 19, 2003
: September 8, 2003
: March 24, 2009
: March 24, 2009
: November 30, 2009
4.5 The Complainant was responsible for the initial registration of the oldest of these Domain Names (i.e. ). The exact circumstances surrounding the transfer of that domain name out of the hands of the Complainant into the hands of the Respondent are in dispute, but the Complainant lost control of that domain name in or about March 2007. Each of the other domain names was registered directly by the Respondent. The domain name appears to be a re-registration of the domain name in 2003.
4.6 For the most part the Domain Names have been used to direct Internet users to websites commercially associated in some way with the Complainant. The Respondent initially received affiliate fees in relation to sales achieved by reason of those redirections but in or about December 2008 the Complainant ceased to make those payments. It would appear that at some point thereafter the current dispute began. 5. Supplemental Filings and Consents to transfer
5.1 Before setting out the parties contentions in this case it is convenient to consider two procedural issues. The first is to what extent the Panel should consider the Supplemental Filings of the parties in this case.
5.2 Absent exceptional circumstances a supplemental filing will rarely be considered. In DK Bellevue, Inc. d/b/a Digital Kitchen v. Sam Landers,WIPO Case No. D2003-0780, the panel stated as follows:
“As is by now well-established, the Rules do not provide any right of reply. Parfums Christian Dior S.A. v. Jadore,WIPO Case No. D2000-0938 (November 3, 2000). Although supplemental submissions may be accepted to address new legal developments, see, e.g., Pet Warehouse v. Pets.Com, Inc.,WIPO Case No. D2000-0105 (April 13, 2000), or to rebut unexpected factual assertions, see, e.g., Pacific Fence & Wire Co. v. Pacific Fence and Jim Paradise,WIPO Case No. D2001-0237 (June 11, 2001), they should be allowed sparingly.”
5.3 However, in this case it is unnecessary to consider whether the submissions fall within any of the sparing exceptions recited in DK Bellevue, Inc. d/b/a Digital Kitchen, supra. The reason is that the Panel is unconvinced that either submission adds much, if anything, of significance to the real issues in this case.
5.4 What these submissions seek to address is a dispute between the parties as to how it is that the Respondent came to control one of the domain names the subject of these proceedings; i.e. . The Complainant contends that the domain name was “stolen” from him. The Respondent contends that this was a bona fide purchase from a third party. That dispute has involved allegations and counter allegations of dishonesty. For the reasons set out in the rest of this decision, the findings in this case are not dependent upon who is right in their allegations in this respect.
5.5 In any event, in his supplemental Submission the Respondent agrees to transfer the Domain Name to the Complainant. The Respondent had also agreed to the transfer of the Domain Names and to the Complainant. This leads on to the second procedural question; i.e. whether in such circumstances the Panel can and should simply order the transfer of these three of the Domain Names to the Complainant.
5.6 A number of UDRP panel decisions have considered the issue as to whether a disputed domain name can be transferred to the complainant where a respondent has unilaterally consented to that transfer. The issue was analysed in some detail in The Cartoon Network LP, LLLP v. Mike Morgan,WIPO Case No. D2005-1132. In that case the panel identified three different approaches adopted by panelists to justify transfer in those circumstances. They were: (i) to grant the relief requested by the complainant on the grounds of the respondent's consent without reviewing the facts supporting the claim (See Williams-Sonoma, Inc. d/b/a Pottery Barn v. EZ-Port,WIPO Case No. D2000-0207; SLUMBERLAND FRANCE v. CHADIA ACOHURI,WIPO Case No. D2000-0195); (ii) to find that consent to transfer means that the three elements of Paragraph 4(a) of the Policy are deemed to be made out and thereby reach the conclusion that transfer should be ordered (Qosina Corporation v. Qosmedix Group,WIPO Case No. D2003-0620; DESOTEC N.V. v. JACOBI CARBONS AB,WIPO Case No. D2000-1398); and (iii) to proceed to consider whether, on the evidence, the three elements of Paragraph 4(a) of the Policy are satisfied because the respondent's offer to transfer is not an admission of the complainant's rights (Koninklijke Philips Electronics N.V. v. Manageware,WIPO Case No. D2001-0796) or because there is some reason to doubt the genuineness of the respondent's consent (Société Française du Radiotéléphone-SFR v. Karen,WIPO Case No. D2004-0386; Eurobet UK Limited v. Grand Slam Co,WIPO Case No. D2003-0745).
5.7 In the Cartoon Network, supra, decision, the panel declined to follow the line of cases mentioned in (ii) above and refused to accept that a unilateral consent on the part of the Respondent deems the elements of Paragraph 4(a) to be satisfied, reasoning that “there is a difference between a unilateral consent to transfer and an admission of the elements of paragraph 4(a) of the Policy”. It also declined to address the substance of the case as had the panels in the cases mentioned in (iii) above. Instead, it formed the view that the panel had the power to order an immediate transfer under Paragraph 10(a) of the Rules1, without consideration of the Paragraph 4(a) elements, on the basis of genuine unilateral consent on the part of the respondent.
5.8 The present Panel agrees with this analysis. It accepts that an offer to transfer may not be an admission of the complainant's rights, but it does not follow that the Panel cannot order transfer where there is that consent. In the Panel's opinion this is far too narrow a reading of Paragraph 15(a) of the Rules2. The powers granted to a panel under Paragraph 10 are broad enough to permit this approach.
5.9 However, the fact that a panel may order the transfer of the Domain Name under the powers granted to it under Paragraph 10 of the Rules, does not mean that it must do so. The panel retains a discretion. There may be good reasons why although transfer without consideration of the substance of the case is an option, a panel decides not to follow that route. They include for an example, a positive demand by the complainant for a reasoned decision, or the belief on the part of the panel that there is a broader public interest in the activities of the respondent being made public (as to which see Sanofi-aventis v. Standard Tactics LLCWIPO Case No. D2007-1909). There may even be cases where a panel considers that notwithstanding the consent, it is so obviously clear that the domain name is not abusive or other circumstances exist that mean that it would be unconscionable to order the transfer in question.
5.10 In this case, the Panel considers it appropriate to exercise its powers under Paragraph 10 of the Rules to transfer the three relevant Domain Names that the Respondent has consented should be transferred to the Complainant. It will do so. Therefore, whilst this case was initially brought in respect of the registration of seven domain names, the Panel need only substantively consider the position in relation to the following four of the Domain Names:
;
;
; and
. 6. Parties' Contentions A. Complainant
6.1 In the initial Complaint the Complainant claimed to be the “exclusive worldwide owner” of the “service marks TEMPLATEMONSTER.COM and TEMPLATETUNNING.COM”. He claimed to have used the first of these alleged marks “in world commerce as least as early as April 2002” and the second of these alleged marks since May 2003. He claimed to have had these marks “in continuous use through authorized licensees of [the] Complainant” but the nature of these licences and the form that this alleged use took is not explained. The Complainant at that stage also claimed to be the owner of the “service mark MONSTERTEMPLATES.COM”, which it also registered as a domain name in June 2002 and which was used to redirect internet users to the “TEMPLATEMONSTER.COM” address.
6.2 Unsurprisingly, the vague nature of these assertions led the Center to request clarification of which marks the Complainant relied upon. This led to the filing by the Complainant of the first amendment to the Complaint. In that document the Complainant claimed that “TEMPLATEMONSTER.COM” and “TEMPLATETUNNING.COM” were “common law marks”. But no attempt was made to explain how such common law marks arose. Reference was also made to the Complainant's Community Trade Mark for TEMPLATEMONSTER. No mention was made of the previously claimed “service mark MONSTERTEMPLATES.COM” and the Panel therefore assumes that any reliance on this alleged mark was dropped.
6.3 The Complaint then went on at length to make allegations that it is not necessary to set out in any detail. Suffice it to say that the Complainant contends that the Respondent had unlawfully obtained control of the Domain Name.
6.4 The Complainant asserts that the Domain Name had been acquired “wilfully and with the intention to attempt to attract, and to attract, for commercial gain, Internet users to his web site, as an affiliate and reseller of Complainant's licensee's TEMPLATEMONSTER.COM web site with a goal of deriving unearned or inflated commissions from Complainant's licensees”. He also asserts that was with a similar use in mind that the Respondent acquired the , and Domain Names.
6.5 So far as the remaining the Domain Names are concerned (i.e. , and , all of which remain in issue in these proceedings), the entirety of the Complainant's factual allegations is to be found in one paragraph of the Complaint that reads as follows:
“Respondent's conduct and activity as alleged above is further evidenced by still yet another pattern of bad faith by Respondent. Respondent engaged in bad faith by acquiring, without authorization, the confusingly similar domain names [, and ]”.
6.6 The Complainant further contends that as a result of registrations of the Domain Names the Respondent has been paid “unearned commissions equal to USD$123,514”.
6.7 This activities on the part of the Respondent are said to satisfy the requirements of the Policy. B. Respondent
6.8 A large part of the Response is directed to the Complainant's allegation to the effect that the Respondent had unlawfully acquired the Domain Name. There is no need to recount this.
6.9 The Respondent denies that the Complainant owns common law service marks in the terms “” and “”, and that “only domain names and no referenced symbols can be found anywhere on either websites” and that symbols such as SM, TM and ® are not displayed.
6.10 The Respondent admits the Complainant's ownership of a Community Trade Mark TEMPLATEMONSTER. He also refers to a trade mark 78612360 filed by the Complainant on April 19, 2005 in respect of the same term at the USPTO, but which for some reason is not relied upon by the Complainant.
6.11 The Respondent also accepts and asserts that the Complainant “owns” websites operating from the domain names , , , , , and .
6.12 The Respondent accepts that the Domain Names and , were registered for use in conjunction with the “with the affiliate program that was offered to affiliate partners by TemplateMonster / TemplateTuning in 2003”. He denies that this was the case with but no explanation is offered as to why this domain name was registered.
6.13 The Respondent maintains that he first became “an affiliate partner of TemplateM” in early 2002. He claims at that time affiliates “were encouraged to drive traffic to the affiliate program any way possible that would bring them more sales” and he asserts that “it is known” that affiliates would use various means to achieve that traffic and this included the registration of “template” related domain names. He further claims that over time “TemplateMonster” placed restrictions on the way in which those affiliates operated but that these did not extend to the use of domain names.
6.14 The Respondent also claims to have been an active affiliate of “MyTemplateStorage” affiliate programme. This, the Respondent claims, was launched by the Complainant in late 2004 or early 2005 and “was designed to help recruit new affiliates as well as fusion two services, namely TemplateM and TemplateT into one manageable program.”
6.15 The Respondent admits that his affiliate related activities involved the use of domain names to drive Internet users to the Respondent's sites and asserts that “nothing was ever hidden to TemplateMonster”. He also exhibits what he calls “sales transcripts” and which appear to be print outs of webpages providing “sales details” for the “” affiliate programme in 2005. An extract is reproduced below.
This evidence is said to support his claim that “the majority of sales” (whether this be in respect of all affiliate programmes or a subset of these is not clear) between 2002 and 2005 originated from the Respondent.
6.16 The Respondent also provides what he describes as a “list of affiliates that also signed-up to participate in the TemplateMonster affiliate partner program in 2002-2003” and which used domain names “that resemble similarly to that of the Respondent”. The domain names identified are:
;
;
;
; and
6.17 In light of these assertions the Respondent contends that the Complainant cannot make out his claim under the Policy. He claims that the use of the Domain Names in connection with the Complainant's affiliate programs for periods ranging from 6 years to 1 ½ years provides it with a right or legitimate interests. Reference is made in this respect to the decision of Datastream International Limited v. Micro Management Systems, NAF Claim No. FA94382 (which is said to be a case where the respondent's use of the domain name in offering services for three years provided rights or a legitimate interest).
6.18 On the question of bad faith he contends that his rights in predate the Complainant's rights and that he necessarily lacked the requisite intent to register that domain name in bad faith. In this respect he relies upon Interep National Radio Sales, Inc. v. Internet Domain Names, Inc., WIPO Case No. D2000-0174, and Open Systems Computing AS v. Alberto degli Alessandri,WIPO Case No. D2000-1393. He also refers to the statements “[W]e are of the unanimous view that the trademark must predate the domain name” in John Ode d/ba ODE and ODE - Optimum Digital Enterprises v. Intership Limited, WIPO Case No. D2001-0074 and “[w]hen a domain name is registered before a trademark right is established, the registration of the domain name is not in bad faith under Policy 4(a)(iii) because the registrant could not have contemplated the complainant's non-existent right” to be found in SPB Software House v. SPB Online Services., Ltd., NAF Claim No. FA1067638.
6.19 The Respondent also refers to a Skype conversation that he claims took place in January 2009 between the parties in relation to the Domain Names. According to the Respondent that conversation including the following statements:
“[Repondent]
2:41 PM - What about domain like - which I also
own
2:42 PM - sorry.
2:42 PM - I mean templatesm
[Complainant's Representative]
2:43 PM - Well, that one was legitimate and I think we can buy it from
you. As we are going to buy monstertemplate from other affiliates.
[Repondent]
2:43 PM - , etc.. as well?
[Complainant's Representative]
2:43 PM - No.
[Repondent]
2:43 PM - I own many such domains
2:44 PM - as you know I also have with about 15
variants
[Complainant's Representative]
2:44 PM - Templatetuning is not that important. You should be
prepared for that, because once company invests a lot of money into the
brand - one day it will start protecting it. Not a problem with e-turnkeys
[…]
[Complainant's Representative]
3:06 PM - If I were you, I wouldn't think and choose $14K option and
Richard will prepare a document where you will get protected from any
future potential problems regarding these names.
3:07 PM - And you will still be able to use your templatetunning name
3:07 PM - and earn commissions”. 7. Discussion and Findings
7.1 The Complainant must make out his case in all respects under paragraph 4(a) of the Policy. Namely the Complainant must prove that:
(i) the Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names (paragraph 4(a)(ii)); and
(iii) the Domain Names have been registered and are being used in bad faith (paragraph 4(a)(iii)).
7.2 The Panel will address the three aspects of the Policy listed above in turn in relation to the four Domain Names that remain in issue in these proceedings, i.e.:
;
;
; and
. A. Identical or Confusingly Similar
7.3 It is clear, and the Respondent accepts, that the Complainant is the owner of a Community Trade Mark for TEMPLATEMONSTER. The Domain Nname is simply that term pluralised combined with the “.com” TLD. In the circumstances, there is no doubt that this Domain Name is confusingly similar to a registered trade mark in which the Complainant has rights. So far as the Domain Name is concerned, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
7.4 The position in relation to the Domain Names that remain in issue in these proceedings is far less straightforward. The only similarity between these “non-monster” Domain Names and the Complainant's Community Trade Mark is that they share the word “template”. The problem is that templates are primarily the subject matter for which that mark has been registered. The specification for the mark covers “Computer services, namely, providing website templates”. Therefore, the word “template” in that mark performs a wholly descriptive function in respect of those services. In the opinion of the Panel, this does not provide a sufficient similarity for there to be “confusing similarity” for the purposes of the Policy.
7.5 That is not quite the end of the matter so far as the registered trade mark is concerned. The specification of that mark appears to extend somewhat beyond “website templates”. It also covers “website development services, namely, providing website design services for others”. Does this make a difference? Notwithstanding the Panel's previous comments as to the purposes of paragraph 4(a)(i) of the Policy in Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227 (which are set out in further detail below), the Panel concludes that it does not. The word “template” obviously has a descriptive meaning in the context of the provision of computer design services and the Panel remains un-persuaded that the word in isolation performs any independent non- descriptive function so far as design services provided under the Complainant's registered mark are concerned.
7.6 Significantly, the Complainant does not seek to argue otherwise in his Complaint. Indeed, it is not even clear that the Complainant seeks to rely upon this registered mark at all so far as the “non-monster” Domain Names are concerned. The Community Trade Mark was raised for the first time in the amendment to the Complaint. There was a mere assertion of ownership of that mark and no attempt to address the issue of confusing similarity between that mark and the Domain Names the subject matter of the Complaint. If the Complainant is not prepared to make his case clear in this respect, it is not for the Panel to guess what that case might be. Therefore, so far as the “non-monster” Domain Names are concerned, the Panel finds that the Complaint has failed to make the requirement of “confusing similarity” as that term is understood under the purposes of the Policy.
7.7 That still leaves the Complainant's claims so far as the alleged “” and “” service marks are concerned. These the Complainant asserts are “common law marks”, but the Complainant's case in these proceedings as to the existence of these marks is wholly inadequate.
7.8 The issue of the recognition of “common law” or “unregistered” trade marks under the Policy was addressed in some detail by this Panel in Antonio de Felipe v. R,WIPO Case No. D2005-0969:
“6.15 Regardless of the exact extent of possible unregistered trademark rights for the purposes of the Policy, one thing is reasonably clear. Unregistered trademark rights do not exist in some nebulous way across the breadth of the countries in which a complainant proves it has a reputation. These rights derive from national laws and do not exist divorced from such laws. They therefore depend upon the extent to which the laws of a particular country recognise or do not recognise that the activities of the complainant provide unregistered rights in that country.”
7.9 The Complainant does not properly address that issue. The Complainant does not identify where he claims “common law” rights and mark. He simply asserts that the marks have been used “in worldwide” commerce.
7.10 However, perhaps the Panel should give the Complainant the benefit of the doubt in this respect. Perhaps since the Complainant would appear to be based in the United States the Panel should assume that the Complainant at least claims such rights in the United States. The Panel certainly accepts that unregistered rights are recognised in the United States, but that of itself does not establish Complainant's claim of such rights. The Complainant must put forward evidence as to why it is that he is the owner of these claimed rights.
7.11 Cogent evidence of this sort is wholly lacking in this case particularly so far as the alleged “” service mark is concerned. The Complainant claims to have used “” as a mark since April 2002, and “” as a mark since May 2003. This use appears to have been not direct but through “authorised licensees” of the Complainant, who are “authorized to register the service marks a [sic] domain names and operate those domains for the stated services”. There is also a reference of the redirection at one time of another domain name “to the TEMPLATEMONSTER.COM address”.
7.12 So stated more simply (and one wonders why the Complainant could not have stated his case simply in this respect) it is possible reasonably to infer that with his permission or at his direction third parties have registered and for the operation of website that promote the sale of website templates. Whether there is one or more websites is not clear but perhaps it is to be inferred from the assertion of redirection that there is or was at least a website operating from the Domain Name. The business would appear to be not insubstantial given another reference in the Complaint to commissions being paid to the Respondent in the region of USD120,000 but the size and extent of the business is otherwise unexplained.
7.13 There is no other assertion or explanation of how these terms are used. No claim that there is any use of the terms “” or “” in any other sense and no evidence of what the websites looked like at any time. Crucially there is no evidence offered to the Panel as to how these terms are understood by relevant consumers in the United States and to what extent, if at all, they have developed such a reputation that they are associated with the Complainant's services. In short the Complainant has wholly failed to bring forward evidence that he has developed common law rights in the United States in either of these alleged marks.
7.14 Matters are clarified a little in the Response. There the Respondent explains the affiliation process in greater detail and appears to accept that websites have operated from both the and Domain names. Significantly, it also refers to the Complainant by the names “TemplateMonster” and “MyTemplateStorage”. The implication seems to be that these terms may be used as trading names in some broader sense (and this is an issue that the Panel will come back to on the issue of bad faith).
7.15 Even so, the Panel remains unconvinced this changes the analysis. There may well have been trade mark use of the term “”, but even if that use gives rise to unregistered rights, the Complainant is in no better position in this respect than he is in relation to his registered trade mark TEMPLATEMONSTER.
7.16 So far as “” is concerned, even if one accepts that there has been some form of trade mark use of that term, it is a term is far more inherently descriptive than “templatemonster”. The domain name suggests the “tuning” of “templates”, which seems to be a concept that is directly related to the services offered by the Complainant. Lastly, but by no means least, the Complainant in a Skype conversation appears to have stated:
“Templatetuning is not that important. You should be prepared for that, because once company invests a lot of money into the brand - one day it will start protecting it”.
This is almost tantamount to an admission that relatively little money has been invested in that “brand” to date.
7.17 In short, the Complainant bears the burden of proof on this issue of showing common law rights. He has failed to carry it so far as the alleged “” mark is concerned.
7.18 In coming to this conclusion the Panel has borne in mind its own comments in Research in Motion Limited v. One Star Global LLC,supra, as follows:
“It is necessary to recognise that the term of confusing similarity is a low threshold test the purpose of which is effectively to assess whether a complainant has sufficient rights so as to give it standing to bring a complaint (see, for example, Aubert International SAS and Aubert France SA v. T Co.,WIPO Case No. D2008-1986). ....
It is against this “standing” requirement that the word “confusing” is to be understood.”
7.19 These were comments made in respect of cases where unregistered trademark rights were said to exist and the question was whether the mark and domain name were “confusing” rather than in respect of the question whether rights exist at all. But even one accepts that they should apply with equal force to the assessment of whether rights exist, a complainant must at least make some effort to get over the threshold posed by paragraph 4(a)(i). In this case the Complainant has failed to make even that minimal effort notwithstanding the fact that the Center even took the step of suggesting that the Complainant clarify the rights it relied upon, and the Complainant is represented by a lawyer that professes to be familiar with intellectual property law.
7.20 In summary, so far as the Domain Names that remain in issue are concerned, the Complainant has only satisfied the requirements of 4(a)(i) of the Policy in respect of the Domain Name . It is, therefore, only necessary to consider the other aspects of the Policy so far as this Domain Name is concerned. B. Rights or Legitimate Interests
7.21 The Respondent's position in this case is relatively simple. He does not appear to claim that he in any real sense, trades using any name that is embodied in the Domain Name. He instead claims that he registered this and the other Domain Names for the purpose of directing Internet users to one or other of the websites with which the Complainant is associated. He further contends that he has done this for many years and with the Complainant's active encouragement.
7.22 The Panel is unconvinced that the Respondent's assertion that the length of the use in question per se is sufficient to give him a right or legitimate interest. The Respondent cites Datastream International Limited v. Micro Management Systems, supra, but this short decision, which contains limited reasoning and was decided in the early days of the UDRP, does not provide good authority for such a broad ranging proposition. Mere passage of time is of itself insufficient to provide a right.
7.23 As to the claim of consent, the Panel is again unconvinced. Rights and legitimate interests in a Domain Name are to be assessed at the date that proceedings are commenced (see for example Axelion GmbH v. Eric H. Schunk, WIPO Case No. D2008-1701). The Respondent does not point to any subsisting agreement or arrangement in this respect and it is clear that for some time the complainant has objected to the Respondent's use of the Domain Names.
7.24 Therefore, to succeed under this head in this case the Respondent must in this case point to some independent right or legitimate interest. Merely holding and using a domain name to take advantage of its generic and descriptive meaning might provide such an interest (see Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,WIPO Case No. D2007-0267). But in the case of such a claim would be clearly unsustainable. As is discussed in greater detail under the heading bad faith below, the Domain Name is being held by the Respondent not because of any generic meaning in the word “template” and “monsters” together, but because of the similarity of the Domain Name to a term that is used by the Complainant in his business.
7.25 In the circumstances, the Complainant has, at least so far as the Domain Name is concerned, made out it case under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
7.26 As has already been stated above and notwithstanding the lengthy submissions filed by both parties in this case, the motives for the Respondent's registrations are reasonably clear. The Respondent registered and has used Domain Names that are similar to domain names used by or connected with the Complainant's business in order to generate revenues for himself under one or a number of the Complainant's affiliate programmes.
7.27 Absent the question of alleged consent (to which the Panel will return) the Panel is of the view that the registration and subsequent use of the Domain Name involved registration and used in bad faith. When stripped of the complications associated with alleged consent, this is, so far as the Domain Name is concerned, essentially a case of typosquatting. The Domain Name was chosen because of its close similarity to domain name under the control of, or otherwise associated with, the Complainant's business. There is only one letter difference and it is reasonably obvious that the Respondent hoped that the close similarity between the two names would result in Internet users typing in his Domain Name rather than the domain name. The Respondent thereby hoped to achieve a commercial advantage in the form of the payment of commissions.
7.28 The Respondent suggests that this does not show bad faith because at the time the Domain Name was registered, the Complainant's TEMPLATEMONSTER mark did not exist. However, in the view of the Panel this position seeks to perpetuate a misunderstanding of how the Policy operates.
7.29 This Panel addressed this point recently and in some detail in Body Accounting, Inc. v. Affinity Domains, Energy First, WIPO Case No. D2009-1419. In that case the Panel stated that what was important was that:
“6.29 ... the respondent must be aware that the complainant is, or is about to be, using a specific term in a trade mark sense to describe the source of its goods or services and have an intention to take unfair advantage of the complainant's intended or actual trade mark use.”
7.30 The fact that a complainant actually acquires local law trade mark rights in the future is important for the purposes of paragraph 4(a)(i) of the Policy. Such rights are a minimal requirement that a complainant must satisfy in order to be able to avail itself of the mechanism that the Policy provides. However, whether or not it is apparent at the time or registration that they will necessarily come into existence is not important so far as the paragraph 4(a)(iii) assessment is concerned.
7.31 The reasons for this approach were set out by this Panel in St Andrews Links Ltd v. Refresh Design,WIPO Case No. D2009-0601. In that case the Panel rejected a similar argument that an alleged lack of unregistered rights at the date of the relevant domain name prevented a finding of bad faith registration. The Panel stated:
“It is worth noting in this respect that not all jurisdictions recognise unregistered trade mark rights. Therefore, if the Respondent's arguments were right it would lead to a situation that a complainant might fail in an allegation of bad faith registration simply because it conducts its activities in such a jurisdiction and the domain name in issue was registered prior to the complainant having registered its rights. The Panel does not believe that the Policy operates in that way. So far as possible, the concept of bad faith should be interpreted in such a way that it has its own separate meaning under the Policy and is not dependent on the laws of the country in which the complainant or respondent operates (see 1066 Housing Association Ltd. v. Mr. D. Morgan,WIPO Case No. D2007-1461 and Fundación Calvin Ayre Foundation v. Erik Deutsch,WIPO Case No. D2007-1947). ”
7.32 Although not quite put in these terms, the Panel also believes this to be broadly in line with the discussions at paragraphs 1.4 and 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions.
7.33 So was the Respondent aware of the Complainant's use or intended use of the term “TemplateMonster” in a trade mark sense at the time of registration and did he intend to take advantage of the fact? The Complainant has not helped himself in this case by the poor way in which his case has been presented, but on balance the Panel is of the view that the answer to that question in this case is “yes”. The Respondent throughout the Response uses the term “TemplateMonster” to identify the Complainant's business. He does not assert that the Complainant went by some other name and merely used the as part of a URL for that business. Therefore, absent the question of consent, bad faith registration and use would be made out in this case.
7.34 None of the cases cited by the Respondent in this issue persuade the Panel otherwise. In Interep National Radio Sales, Inc. v. Internet Domain Names, Inc., supra, the domain name in issue was . The respondent in that case had registered the domain name for a “radio splash website referring people to online radio stations” and claimed it was not aware of the complainant at the time of registration. In Open Systems Computing AS v. Alberto degli Alessandri, supra, the domain name in issue was . Again the respondent claimed that it was unaware of the complainant's use of the relevant term at the time of registration. The panel found that the respondent had given a “reasonably plausible explanation” for registration of the domain name and that it should be given the “benefit of the doubt on this issue”.
7.35 In John Ode d/ba ODE and ODE - Optimum Digital Enterprises v. Intership Limited, supra, the domain name in issue was . Once again the respondent gave an explanation for registration of the term and had registered the domain name before the complainant had started using the marks upon which it relied. Significantly, the panel held as a matter of fact that at the time of registration the complainant was not doing business under the ODE name. Lastly, in SPB Software House v. SPB Online Services, Ltd., supra, the domain name was . In its decision the panel determined as a matter of fact that “the record indicates that Respondent was unaware of Complainant's mark at the time Respondent registered the domain name”.
7.36 So in all of the cases cited by the Respondent in this case the registrants were unaware of the Complainant's use of a particular term in a trade mark sense at the time of registration. Given this, the decisions of the various panels in each of these cases that there was no bad faith registration are in this Panel's opinion quite right. The facts are distinguishable from the facts in the present case.
7.37 The Panel accepts that in both the Ode and SPB cases the panels went further than this. There are statements in these decisions that suggest that the existence of a mark as at the date of registration is a rigid pre-requisite for a finding of bad faith registration. However, these were both cases in the early days of the existence of the Policy. Things have moved on from then and as paragraph 3.1 of the WIPO Overview indicates, the position now is somewhat more nuanced.
7.38 That leads finally to the question of consent. The Panel accepts that this is a point of importance. In General, if a domain name has been registered with the consent of a complainant it cannot have been registered in bad faith. However, in this Panel's view, this is an issue on which it is for a respondent to make the running. If save for consent, the facts suggest that a domain name had been registered and used in bad faith, then it is the respondent that bears the burden of proof that the Complainant consented to that activity.
7.39 The Panel admits that it has found this aspect of the present case most troubling. It has not been the easiest issue to decide, particularly given that the Panel has reached the conclusion that the Complainant has (whether through negligence or by design) given a less than fulsome explanation as to the true circumstances surrounding his dealings with the Respondent. However, ultimately, and not without hesitation the Panel has formed the view that the Respondent has not made out his allegations in this regard. There is undoubted evidence that the Respondent obtained payment from the Complainant in respect of referrals from this Domain Name. There are, for example, the sales printouts that have been exhibited to the Response. The Panel is also prepared to accept that the Complainant was aware of that use and that the Respondent was open and upfront about his use of the Domain Name. But to this Panel that is not quite the same as consent to such use, let alone consent to the initial registration of the Domain Name. Indeed, the main thrust of the Response is that “no limitations were setup by TemplateMonster on how users” could encourage traffic.
7.40 In this Panel's view, however, an absence of express limitation is not the same as consent. The Panel is prepared to accept that the Complainant may have tolerated and perhaps even positively welcomed traffic to the relevant website that had been generated in that manner. At one point the Respondent seems to go one step further in his allegations. The Respondent claims that affiliates were encouraged to send traffic “any way possible”. However, what form that encouragement took is not described and no evidence is offered to support or clarify that statement. In the absence of more direct evidence that the Respondent was told that he could register a domain name that was virtually the same as that of a website operated by the Complainant with just the addition of an “s”, then the Panel is not prepared to find that there was consent in this case.
7.41 In the circumstances, and albeit with some hesitation, the Panel finds that the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy so far as the Domain Name is concerned3. 8. Decision
8.1 For all the foregoing reasons, in light of the Respondent's consent and in accordance with Paragraphs 4(i) of the Policy and 10 and 15 of the Rules, the Panel orders that the Domain Names , , and , be transferred to the Complainant
8.2 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.
8.3 For all the foregoing reasons the Complaint is denied in respect of the Domain Names , , and .
Matthew S. Harris
Sole Panelist
Dated: January 29, 2009
Full & Egal Universal Law Academy