Complainant is Instrumentation Northwest, Inc. of Seattle, Washington, United States of America (“U.S.”) represented by Lowe Graham Jones, PLLC, U.S.
Respondent is INW.COM c/o Telepathy, Inc. of Washington, District of Columbia, U.S. represented by ESQ PC, U.S. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Moniker Online Services, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 7, 2012. On March 7, 2012, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. On March 9, 2012, the Registrar transmitted by e-mail to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an e-mail communication to Complainant on March 12, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 15, 2012.
The Center verified that the Complaint together with the amended 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 March 15, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response April 4, 2012. The Response was filed with the Center April 4, 2012.
The Center appointed Robert A. Badgley, Lynda M. Braun and The Hon Neil Brown Q.C. as panelists in this matter on May 11, 2012. 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. 4. Factual Background
Complainant is a supplier of water monitoring and sampling systems in the environmental field. Complainant has used the mark INW since 1986 in connection with its offerings. Complainant registered the mark INW on the Principal Register of the United States Patent and Trademark Office in 1989 for electronic sensors, ground water sampling pumps, and ground water monitoring units.
Respondent registered the Domain Name in 2007. The Domain Name had been registered by another party in May 1997, and it apparently changed hands once before Respondent registered it, along with 70 other “three letter dot domains” Respondent registered that year. Since 1998, Respondent has purchased more than 1,000 domain names comprised of three letters in the second-level domain.
In March 2011, Complainant offered to purchase the Domain Name for USD 2,100. Respondent’s alleged agent promptly responded with a counter-offer of USD 120,000. 5. Parties’ Contentions A. Complainant
Complainant alleges that all three elements required for transfer of the Domain Name under the Policy have been fulfilled. Complainant asserts that Respondent has made no legitimate use of the Domain Name, and registered it primarily for purposes of selling it at a profit in bad faith under Policy paragraph 4(b)(i). B. Respondent
Respondent denies having any knowledge of Complainant or its mark at the time it registered the Domain Name. Respondent argues that Complainant’s “‘brand’ is limited to ‘water monitoring services in the environmental industry,’ hardly a household name or product.” In this connection, Respondent asserts that a Google search for “inw” yields numerous and disparate results unrelated to Complainant or its offerings. Respondent adds that no links related to Complainant’s goods or services have appeared at the web site to which the Domain Name resolves.
According to Respondent, the mere fact that a domain name is offered for sale at a profit does not by itself constitute bad faith under paragraph 4(b)(i) of the Policy. In this vein, Respondent emphasizes that it did not initiate the sale discussions; Complainant did. Further, Respondent asserts, in the absence of other indicia of bad faith, such as evidence that a respondent targeted the complainant’s mark at the time of registration, an offer to sell one’s domain name is not necessarily bad faith.
Respondent asserts that it has amassed a portfolio of domain names with only three second-level letters because they “have an inherent value because they are short and memorable.” Further, “three-letter acronyms have diverse commercial uses and belong exclusively to no one company.” According to Respondent, as supported with an affidavit, despite holding a large portfolio of three-letter domain names for nearly 15 years, Respondent has never been found in bad faith by a panel under the Policy with respect to any of those domain names. In three cases, Respondent notes, panels have denied complaints against Respondent.
Respondent asserts further that the favorable decisions it has experienced in prior cases under the Policy (in 2000, 2006, and 2007) “have been an important factor in Respondent continuing to invest large sums in acquiring 3-letter dot com domains.” This fact, Respondent argues, coupled with Complainant’s lengthy delay in bringing this Complaint, calls for the denial of the Complaint on grounds of laches.
Finally, Respondent claims that Complainant has committed reverse domain name highjacking (RDNH) within the meaning of the Policy. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
It is undisputed that Complainant has rights in the mark INW through registration and use. The Domain Name is identical to Complainant’s mark.
Accordingly, the Panel finds that Policy paragraph 4(a)(i) is satisfied. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel concludes that Respondent has a legitimate interest in the Domain Name under the Policy.
Complainant did not cite any case authority under the Policy to support its claim that Respondent lacks rights or legitimate interests in respect of the Domain Name. The Panel unanimously finds that Complainant does not have exclusive rights to the letters INW. There are many third-party uses of that combination of letters. Accordingly, the first to register a domain name incorporating those letters has a legitimate interest in such domain name, provided that it is not registered or used in bad faith. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel finds that Complainant has failed to establish on this record that the Domain Name was registered and is being used in bad faith. This case does not present a clear instance of cybersquatting. There is absolutely no evidence that Respondent had Complainant or its mark in mind when registering the Domain Name. Rather, on the record before it, the Panel agrees with Respondent that the registration of the three-letter Domain Name here was akin to registering a common word as a domain name. In such an instance, a domain name holder generally acquires rights on a first-come, first-served basis.
The Panel does not believe that constructive knowledge of the mark may fairly be imputed to Respondent here particularly since the field in which Complainant operates is a rather narrow one. This Panel does not believe that constructive knowledge, which is a very useful legal incident to trademark registration under U.S. trademark law for purposes of determining trademark infringement, applies across the board under the Policy for purposes of determining bad faith.
The Panel also holds that the mere fact of offering to sell this three-letter Domain Name for a steep price (USD 120,000) does not necessarily equate to bad faith under Policy paragraph 4(b)(i). This offer was made in response to an offer from Complainant. Moreover, for five years, Respondent never reached out to Complainant with an offer to sell the Domain Name. On this record, it is difficult to conclude that Respondent registered the Domain name “primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant” at a profit. Rather, the Panel concludes that Respondent registered this three-letter Domain Name because of its inherent value, quite like registering a common word. In such a case, Respondent is free to sell it at a profit.
The Panel unanimously concludes that Respondent is not in bad faith here. 7. Laches
The Panel also declines to rule on Respondent’s laches defense here, since it is unnecessary to do so in view of the Panel’s other rulings. Having said that, a majority of the Panel would have been prepared to apply the laches defense here, given the fact that Complainant sat on its perceived rights for many years (indeed, 15 years if one goes back to the original registration of the Domain Name). Because laches requires not only an untoward delay but also prejudice to the party asserting the defense, the Panel majority would also have to conclude that Respondent suffered prejudice as a result of the delay. In the present case, a majority of the Panel would have found that Complainant’s delay did work prejudice on Respondent. As noted by Respondent through affidavit testimony, it relied in part on the favorable decisions it received in other cases to continue its business strategy of acquiring a portfolio of three-letter domain names. In the face of these decisions, Complainant’s inexplicable delay served to reinforce Respondent’s belief that its registration of the Domain Name was legitimate and in good faith. 8. Reverse Domain Name Highjacking
Finally, the Panel declines to find reverse domain name highjacking on this record, although a finding of RDNH could arguably be supported here. Be that as it may, after carefully weighing all of the circumstances of the case, the Panel chooses to interpret this Complaint as misguided inasmuch as it was doomed from the start and should not have been brought. There is no hard evidence, though, that Complainant was ill motivated in lodging the Complaint. 9. Decision
For all the foregoing reasons, the Complaint is denied. The Panel also denies Respondent’s request for a finding of reverse domain name highjacking.
Robert A. Badgley
Presiding Panelist
Lynda M. Braun
Panelist
The Hon Neil Brown Q.C.
Panelist
Dated: June 1, 2012
Full & Egal Universal Law Academy