The Complainant is IEC - International Electrotechnical Commission of Geneva, Switzerland, represented by Etude de Me Philippe Azzola, Switzerland.
The Respondents are Levante Online Services Ltd. and IEC Communications Ltd. of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by ESQ PC, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 19, 2015. On August 19, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 20, 2015, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 25, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 14, 2015. At the request of the Respondent and by consent from the Complainant, the due date for filing a Response was extended to September 22, 2015. The Response was filed with the Center September 22, 2015. The Complainant filed an unsolicited supplemental filing on October 5, 2015.
The Center appointed Warwick A. Rothnie, The Hon Neil Brown Q.C. and Jacques de Werra as panelists in this matter on October 12, 2015. 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
According to the Complaint, the Complainant is an international non-governmental organization devoted to international cooperation in standardization and related matters in the fields of electricity, electronics and related technologies.
The Complainant was first established in 1906 in the United Kingdom. Its headquarters have been located in Switzerland since 1949. Since 1979, it has enjoyed “Special Consultative Status” with the United Nations Economic and Social Council. Its formal name is International Electrotechnical Commission. Since 1974, the Complainant has adopted in its Statutes and Rules of Procedure the abbreviated title “IEC”.
Amongst other things, the Complainant is the owner of Swiss Trademark Registration No 597476 which is for “IEC & logo” in International Classes 9 and 16. This registration dates from 1992. The Complainant is also the owner of an International Registration derived from the Swiss Trademark Registration which designates numerous countries under both the Madrid Agreement and the Madrid Protocol. The International Registration dates from 1993.
The Complainant also claims it is well-known throughout the world as “the IEC” as a result of its activities in publishing standards and other technical publications, certification activities and through the activities of the various national committees that are affiliated with it in many countries including the United States, the United Kingdom and Australia. It has over 2,500 publications under its name jointly with the International Standards Organisation.
The Complainant also draws to the Panel’s attention its registration of the domain name since 1996.
The disputed domain name was registered by the Respondents on June 1, 2001.
Since that date, it has resolved to a website which consists mostly of pay-per-click advertising links. In November 2012, the Complainant discovered the Respondents’ website which, at that time, included links to purchase copies of the Complainant’s standards through an entity appearing to be called Innovative Technology. Correspondence between the parties ensued between March and June 2013, at the end of which, a representative of the Respondents indicated that the going price for a three-letter “.com” domain name was “in the six figure range”.
Shortly before the Complaint was filed, the Respondents’ website ceased to be active. 5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondents have no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
Before proceeding to the substance of the dispute, the Panel needs to rule on the admissibility of the Complainant’s supplemental filing.
Paragraph 12 of the Rules empowers the Panel of its own motion to request further statements or documents from the Parties. The Policy does not otherwise contemplate further documents in the proceeding apart from the Complaint and the Response.
Paragraph 10 of the Rules, however, gives the Panel a wide discretion relating to procedural matters subject to an overriding requirement to ensure that parties are treated equally and given a fair opportunity to present their respective cases. Consistently with the objective of providing an efficient and effective online dispute resolution mechanism, paragraph 10(c) directs the Panel to ensure that the proceeding takes place with due expedition. Subject to the overriding obligations mentioned, paragraph 10(d) empowers the Panel to determine the admissibility, relevance, materiality and weight of the evidence.
It is not clear that the material in the proposed supplemental filing addresses matters that could not reasonably have been addressed in advance. However, it does seek to respond directly to the submissions in the Response and in a number of respects does clarify the Complainant’s argument. The Respondents have not objected to inclusion of the supplemental filing in the record. In these circumstances, the Panel admits the Complainant’s supplemental filing into the record. A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of at least the registered trademarks referred to in section 4 above.
On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant’s proved trademarks: see, for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol,WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin,WIPO Case No. D2002-0420. This is different to the question under trademark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
The Complainant’s registered trademarks take the form of the letters IEC with three horizontal lines underneath them, against a contrasting background. The disputed domain name differs from this logo form in that it consists only of the three letters “IEC” and the “.com” generic Top Level Domain (gTLD).
It is of course well established that, in making the comparison, it is permissible to disregard the “.com” component of the disputed domain name as a functional aspect of the domain name system: Telstra Corporation Limited v. Ozurls,WIPO Case No. D2001-0046, Ticketmaster Corporation v. DiscoverNet Inc.,WIPO Case No. D2001-0252.
The letters “IEC” are the prominent and dominant part of the Complainant’s registered trademark. The three horizontal lines are a noticeable but subordinate feature. As the only verbal element of the trademark, the three letters “IEC” will typically be the reference point for the Complainant’s trademark. They look and sound the same as the Second Level Domain component of the disputed domain name.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied. B. Registered and Used in Bad Faith
In the circumstances of this case, the Panel considers it appropriate to consider the third requirement under the Policy next.
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent: see, e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey LtdWIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
The Complainant contends that such a finding is appropriate here because it asserts that the Respondents had to conduct a prior rights search before registering the disputed domain name. If the Respondents had done so, the Complainant contends, they would have easily found the Complainant and its use of the IEC mark. Accordingly, the Complainant says the Respondents registered the disputed domain name in bad faith. The Complainant further contends that the registration of a domain name containing the name or trademarks of well-known businesses leads to an inference of intention to profit from the well-known trademark.
The Complainant relies on the parking of the disputed domain name at a pay-per-click website which, in 2012, included links offering for sale copies of the Complainant’s publications as use in bad faith. In addition, it says that the implied offer to sell the disputed domain name for a sum “in the six figure range” is also bad faith.
In response, the Respondents flatly deny any knowledge or awareness of the Complainant or its trademark when registering the disputed domain name. They state they are in the business of registering “generic” domain names for their intrinsic value and turning them to account. In that connection, the Respondents point out that two and three letter domain names are scarce properties and highly valuable in their own right as they are simple to remember and type and can be relevant to a wide range of different businesses and uses.
The Respondents identify a significant number of businesses quite unrelated to the Complainant which are named, or have in their name, “IEC” and also some common uses of the acronym. The Complainant points out that the businesses identified by the Respondents also have other words or identifiers in their names. According to the Complainant, this highlights the distinctiveness of its trademark. The Complainant, however, does not have a registration for “IEC” simpliciter. There can be no doubt that the Complainant is an important organisation which does important work. While the Complainant may also be well-known in the particular field of standards setting and certification for electricity and electronics, the evidence submitted by the Complainant does not satisfy the Panel that the Complainant has such a well-known reputation as to block or prevent use in other fields or to lead to a conclusion that the Respondents were probably well aware of the Complainant and its work.
In these circumstances, the Panel does not find the Respondents denial of knowledge of the Complainant or its trademark as inherently implausible or contradicted by the facts.
As summarized in paragraph 3.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), panels have rejected the concept of constructive notice under the Policy as a general rule. In some cases, however, panels have recognised that paragraph 2 of the Policy may impose obligations on those engaged in buying domain names for resale and/or advertising purposes to engage in good faith efforts to avoid registering domain names based on another’s famous or well-known trademark. See e.g., mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141; and Grundfos A/S v. Texas International Property Associates,WIPO Case No. D2007-1448.
As a general rule, those cases involved trademarks which were inherently distinctive and not common or dictionary words. In addition, those cases involved clear evidence of use of the relevant domain name to promote links to products competitive with the trademark owner’s products.
The circumstances of this case are very different from those cases. First, as noted, the Complainant’s registered trademarks are not for “IEC” simpliciter. The three letters “IEC” are an acronym which can be (and is) applied across many fields by many different businesses.
Secondly, to the extent that the Complainant has established reputation in “IEC” on the record in this case, it is in a quite specific and distinct field. The evidence from the Respondents shows that for more than 10 years, the website to which the disputed domain name resolved did not include links to businesses or services competing with the Complainant’s activities. The Complainant does point to the links it found in November 2012 from the Respondents’ website to a website selling the Complainant’s own standards. That is very different to using the Complainant’s trademark to divert potential customers to a competitor. Moreover, so far as the evidence before the Panel goes, that appears to have been a rather isolated instance and not systematic.
The price suggested by the Respondents to the Complainant for the disputed domain name does not assist the Complainant as it is equally consistent with the Respondents’ claim that they registered the disputed domain name for its intrinsic value as a three-letter domain name.
In these circumstances, the Panel is unable to find that the disputed domain name was registered in bad faith. Accordingly, regardless of any conclusions the Panel might reach under the second limb of the Policy or the requirement of use in bad faith, the Complaint must fail. C. Reverse Domain Name Hijacking
The Respondents seek a ruling that the Complainant has engaged in Reverse Domain Name Hijacking.
Paragraph 15(e) of the Rules provides, in part:
If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Paragraph 1 of the Rules defines “Reverse Domain Name Hijacking” to be “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”.
The Respondents say such a finding should be made because the Complainant took no action for 12 years after the disputed domain name was registered. In addition, the Respondents contend that the Complainant knew, or should have known, when it brought the Complaint that it was totally devoid of merit or, at the least, that its claim under the bad faith limb was doomed to failure.
The Panel does not consider this to be an appropriate case in which to make a finding of reverse domain name hijacking.
First, the Panel notes that laches or delay have not usually been considered disentitling under the Policy: WIPO Overview 2.0 paragraph 4.7. In this particular case, while the disputed domain name was registered in 2001, there is no evidence before the Panel that the Complainant knew about the disputed domain name then or at any time until November 2012. Correspondence between the parties about the ownership of the disputed domain name followed promptly thereafter. The Panel does not consider that constitutes delay warranting the sanction sought by the Respondents.
Secondly, the Complaint has failed in this case on the basis that the Respondents have not been shown to have registered the disputed domain name in bad faith. While in the particular circumstances of this case it may be thought that the Complainant did not have a particularly strong case, that question ultimately turns on an assessment of all the objective and subjective evidence before the Panel. The Panel is not prepared to find that testing that issue was so unwarranted as to deserve the sanction of a finding of reverse domain name hijacking. 6. Decision
For the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Presiding Panelist
The Hon Neil Brown Q.C.
Panelist
Jacques de Werra
Panelist
Date: October 22, 2015
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