The Complainant is SK Lubricants Americas of Houston, Texas, United States of America, internally represented.
The Respondent is Andrea Sabatini, Webservice Limited of Hong Kong, China represented by ESQ, P.C., United States of America. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 1, 2015. On September 2, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 2, 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. Further to a deficiency notification issued by the Center, the Complainant submitted an amendment to the Complaint on September 12, 2015. On September 4 and 7, 2015, the Center received email communications from the Respondent.
The Center verified that the Complaint together with the amendment to 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 September 17, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 7, 2015. On October 7, 2015, the Respondent requested four days of extension to submit its Response. The Response was filed with the Center on October 9, 2015.
The Center appointed Nick J. Gardner, Paul C. Van Slyke and The Hon Neil Brown Q.C. as panelists in this matter on November 11, 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
The Complainant is the US subsidiary of a Korean company which manufactures and sells lubricants. One of its products is an oil which is branded "zic".
According to the Complaint, and not disputed by the Respondent "The ZIC brand was launched in October 2010, and is now available in over 40 countries. The SK lubricants Americas Finished Lubricants division is in the process of launching their ZIC branded product line in the United States automotive aftermarket, with expected availability via the Warehouse Distributor channel in 2016.". Beyond this brief statement the Panel has not been furnished with any further information about this product, its current status or its history.
The Complainant owns several registered trademarks in respect of the term ZIC. These include US registration no. 3496951 registered in September 2008 in classes 1, 6 and 15 in respect of lubricating oil and other related products and Hong Kong, China registration no. 15400 registered on February 4, 1997 in class 4 in respect of lubricating oils and other related products.
The Domain Name was originally created on September 6, 2003. Further details as to the history of the Domain Name are discussed below.
The Respondent is an individual who is in the business of trading in domain names. At the time the Complaint was filed the Domain Name was used to host a parking page which comprises automatically generated links to third party sites. As is common the Respondent receives advertising revenue in respect of any "click through" traffic the parking page links generate. The amounts in question are not known to the Panel although likely to be modest. The Respondent is also prepared to sell the Domain Name to any third party who may wish to buy it, subject to agreeing a price he finds acceptable. 5. Parties' Contentions A. Complainant
The Complaint is extraordinarily short and appears to have been prepared on the mistaken assumption that all that is required to achieve its desired remedy is to complete a form with the minimal amount of information necessary and to have entered something, however short, under each applicable heading. Following a deficiency notification by the Center the Complainant filed further information by email as an amendment to the Complaint, but beyond identifying certain specific additional trademarks owned by the Complainant this filing provides little additional information.
As best the Panel can understand it the Complainant's case is as follows:
The Domain Name is identical to its ZIC trademark.
The Respondent has no rights or legitimate interests in the term "zic".
The Respondent obtained the Domain Name on February 28, 2015 and is offering it for sale, and is in the business of selling domain names. The Complaint relies upon what it says was an offer by the Complainant to buy the Domain Name from the Respondent but which did not result in a concluded agreement – this history is discussed in more detail below. These factors are relied upon by the Complainant as evidence of bad faith although no explanation as to why these factors actually constitute bad faith is provided. B. Respondent
The Respondent has produced a very detailed Response and set out numerous authorities in relation to its case. It is not necessary to repeat all that the Respondent has said here. Where appropriate the cases relied upon are addressed by the Panel in its decision below. The salient points the Respondent makes are as follows.
So far as the Domain Name is concerned the Respondent says that Domain Name was registered in 1994 by its first owner Zenith Insurance Company, then re-registered in 2003 by its second owner, who at some point between 2003 and 2015 either transferred or secured the domain asset with Domain Capital, who then listed the Domain Name for auction with Heritage Auctions which sold the Domain Name to the Respondent in February, 2015, the Respondent being the winning bidder in a public auction process.
The Respondent admits he is in the business of registering and selling domain names. He says that is legitimate. He also says his portfolio of domain names is used to create parking pages, and those pages generate advertising revenue. He says this is a common and legitimate form of business and his purchasing the Domain Name was a normal part of this business. Specifically he says that he obtained the Domain Name simply because it was an available three letter sequence and all such three letter sequences are inherently valuable because they are short and memorable, and because three-letter acronyms have diverse commercial uses and belong exclusively to no one company. He says there will typically be many organisations or products which have a name or a product or service which if portrayed as an acronym will correspond to a given three letter sequence and hence such sequences are valuable assets. He says he has also invested in , , , , , , , , , , , and . The Respondent says he had never heard of the Complainant or its ZIC brand when he purchased the Domain Name and says the Complainant is not a "household name".
The Respondent also says that the Complainant is not the exclusive user of the three letters "zic." For example, he identifies the original owner of the Domain Name which was Zenith Insurance Company. Additionally, he says many third parties identify themselves with the "ZIC" acronym such as: Zic News; Zanzibar Insurance Company; Siplast- Zic System; Zulia Industrial Constructions; Crist, Sears & Zic, LLP (and many other individuals with the last name Zic). The Complainant also says that a search of the United States Patent and Trademark Office Database shows at least 12 other third party trademarks that claim rights to "Zic" which belies the Complainant's claim to exclusive use and enjoyment of the acronym.
The Respondent says that at all times since purchasing the Domain Name it has been used to host a parking page comprising automatically generated links to third party web sites. He admits he earns revenue from this practice which is part of his business model but says such revenue is used to defray costs associated with maintaining his portfolio of domain names. He says none of the links which have been generated have ever deliberately had any connection with the Complainant or its business, and that if any such connection has occurred it has been inadvertent.
The Respondent makes many more points in support of his arguments but it is not necessary to consider those further – where relevant they are addressed below. The Respondent also says this is a case which had no prospect of success and should never have been brought and amounts to Reverse Domain Name Hijacking. 6. Discussion and Findings
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel in respect of the Domain Name that:
(i) The Domain Name is identical with or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) The 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
The Complainant has established that it (or its parent company) owns a number of registered trademarks for ZIC. The Panel holds that the Domain Name is identical to the ZIC trademark. It is well established that the specific top level of the domain name (in this case ".com") typically does not affect the domain name for the purpose of determining whether it is identical or confusingly similar – see for example Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429. Accordingly the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The letters "zic" in the Domain Name are simply three letters of the alphabet. Those letters when conjoined in this way do not form a recognizable word – but they can of course be an acronym for any set of three words which start with these three letters. There is no evidence that the Respondent has any independent rights in these letters other than whatever rights he may have as a result of purchasing the Domain Name and holding it for sale and using it in relation to a parking page and deriving advertising revenue from that activity. He says that purchasing the Domain Name with a view to holding it for sale, and in the meantime using it for a parking page is itself an activity which amounts to a legitimate interest.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Domain Name:
(i) before any notice to the Respondent of the dispute, 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) the Respondent has been commonly known by the Domain Name, even if the Respondent has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The question in this case is whether holding a domain name for resale, and in the meantime using it in respect of a parking page generating "pay per click" revenue, is itself sufficient to generate an independent right or interest. Is it a "bona fide offering of goods or services" that being the only one of the above criteria which might apply?
In this respect the Panel agrees with the consensus view as expressed in paragraph 2.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), as follows:
"Panels have generally recognized that use of a domain name to post parking and landing pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a 'bona fide offering of goods or services'…or from 'legitimate noncommercial or fair use' of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder. As an example of such permissible use, where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP, provided there is no capitalization on trademark value (a result that PPC page operators can achieve by suppressing PPC advertising related to the trademark value of the word or phrase). By contrast, where such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion".
In the present case the Domain Name is not a generic term per se but it is simply a series of three letters and as such has no specific meaning. The evidence the Complainant has filed does not establish that the parking page operated by the Respondent (which is no doubt automatically generated) operates in a way which results in a connection to goods or services connected with the Complainant.
The Respondent's argument is that he had a right or legitimate interest in the Domain Name because the Domain Name is an acronym and/or a three letter combination and, as such, the Complainant could not have exclusive rights to it as against the Respondent or anyone else. That would seem to be so as a matter of common sense and it is supported by previous UDRP decisions dating from the very beginning of the UDRP.
Thus, as early as the year 2000 it was decided in Tenenhaus Philippe v. Telepathy, Inc, NAF Claim No. 94355 that the complainant trademark owner did not have exclusive rights to the acronym DAF, as many other parties also used it. Likewise in 2000 in Kis v. A Ltd,WIPO Case No. D2000-0770 the legitimate interest in short letter domain names seems to have been confirmed by that panel's statement that:
"The Domain Name at issue here is a three-letter second-level domain within the popular '.com' top-level domain. All or nearly all of the three-letter names have long been taken; respondent itself holds a number of other short domain names (as reflected in Network Solutions' Whois database), including '', '', '', '', '', '', '', '', '', '', '', '', '', '', '', '', '', '', '', and probably many more. Respondent appears to have selected the Domain Name '' because of its length (if not because it represents an acronym for the Korean Information Site), rather than because it corresponds to Complainant's trademark – indeed, it seems unlikely that Respondent was even aware of Complainant's trademark when it selected the domain name."
In 2002, in Trans Continental Records, Inc v. Compana LLC,WIPO Case No. D2002-0105 a further panel again held that the complainant had not established the lack of a right or legitimate interest in the acronym in the domain name , although the complainant had a trademark for LFO.
More recently, in 2008, it was held in BioDelivery Sciences International, Inc. v. HLK Enterprises, Inc. c/o Domain Admin, NAF Claim No. 1175189 that there was a legitimate interest in the domain name stating as follows:
"However, based on the fact that the disputed domain name and Complainant's mark contain only four letters that could stand for many things unrelated to Complainant's business, the Panel finds that Respondent's use of the disputed domain name as a portal website is a showing of rights or legitimate interests under Policy paragraph 4(a)(ii). See Louis Vuitton Malletier S.A. v. Manifest Info. Servs., NAF Claim No. 796276 (concluding that the domain name consisted of two letters that could stand for many things and that therefore the respondent could establish rights or legitimate interests in the disputed domain name despite the complainant having rights in the LV mark)."
To the same effect was Banca Monte dei Paschi di Siena S.p.A v. Charles Kirkpatrick,WIPO Case No. D2008-0260 where the panel highlighted the significance of short-letter expressions that have meanings other than those claimed by the complainant by noting:
"The Respondent was at the time of registration, of the view that no one company could claim exclusive rights in MPS because it stood for so many things. From its own searches of the term 'MPS', the Panel finds the Respondent's view reasonable…"
Specifically with respect to acronyms the panel said:
"The Panel acknowledges that MPS appears to be an extremely common 3-letter combination which can relate to a number of third parties other than the Complainant. MPS is also an acronym for a substantial number of things, including systems, societies, and syndromes."
The Panel accepts that the right to register such acronyms cannot be unlimited. Knowing of a complainant's trademark, registering a domain name to copy the trademark or using it to trade off it or to target the trademark owner or act inappropriately towards it must put the registrant in a different position and put at risk its claim to have a right or legitimate interest in the domain name. But in the absence of such factors, and none are present in this case (save possibly for the Complainant's Hong Kong, China trademark registration which the Panel discounts for the reasons discussed below in relation to bad faith issues), the Respondent has as much right as anyone else to use expressions such as acronyms, generic, dictionary words or other domain names made up from a small number of letters.
Accordingly the Complainant has failed to establish that the second condition of paragraph 4(a) of the Policy has been fulfilled. C. Registered and Used in Bad Faith
The Complainant's case here is best illustrated by quoting verbatim the correspondence the Complainant's managing director sent to the Respondent in the form of an email dated August 6, 2015:
"Mr. Sabatini,
I am contacting you once more to offer a settlement in the case of the www. domain name. We are aware that you are the registered owner of the domain name and have an interest in owning Z. We are willing to compensate you if you are willing to reach a settlement quickly however it is our strong belief that you have registered this domain in bad faith as defined by the ICANN Uniform Dispute Resolution Dispute Policy. According to this policy if the following scenarios exist, the domain can be ruled as registered in bad faith:
1. The Domain name is a registered trademark of the complaining party
2. Proof that the domain was registered in bad faith. Bad faith can be proven if an offer was made to the holder of the trademark by the registered domain holder.
a. We have it on record that an offer was made to SK lubricants in Korea to sell the domain name in
question (Z). In addition, record exists on the web that this domain was listed for sale.
b. This constitutes bad faith according to the ICANN Uniform Dispute Resolution Dispute Policy
Since the preponderance of evidence suggests that you registered this domain knowingly and with the intent to profit, we are willing to offer you a settlement of $3,000 US Dollars in order to expedite the transfer of the domain. Should you choose not to accept this settlement agreement, we will pursue a complaint with ICANN as is our right to do so. We are certain based on initial communications that the complaint will be resolved in our favor. Should that occur, domain ownership will be transferred to SK with no compensation for you. I urge you to accept this offer. If you do not respond by 12:00 PM (Midnight) United States Central Standard Time on Sunday, August 9, 2015, we will begin the complaint proceedings after which time there will be no recourse for you.
I apologize if the strong tone of this email is upsetting to you however, it is a priority that this communication is clearly understood.
Sincerely,
[…]
Managing Director
It is not clear to the Panel whether the above email was formulated with the benefit of legal advice but it does not matter – the statement that an offer to sell a domain name which corresponds to a trademark is itself evidence of bad faith is simply wrong. Carrying on business in registering descriptive or generic domain names is not of itself objectionable – see for example X6D Limited v. Telepathy, Inc.,WIPO Case No. D2010-1519 for a case discussing this issue and the applicable principles. Offering domain names for sale is not of itself objectionable – see Allocation Network GmbH v. Steve Gregory,WIPO Case No. D2000-0016 for an example of a case where the relevant considerations were discussed in relation to this issue.
There may be circumstances where a registrant (or a purchaser) of a domain name which is a generic word or an acronym has knowledge of the rights of the trademark owner in a way which could raise issues as to the good faith or otherwise of the registrant. In order to establish the applicability of such circumstances it is incumbent upon a complainant to explain to a UDRP panel, with appropriate supporting evidence, why it is that a registrant should be considered to have actual knowledge of the complainant and/or the complainant's rights (or deemed knowledge if that is the complainant's case). In the present case no attempt whatsoever has been made in this regard. Beyond a bare assertion that the ZIC branded product exists and is sold in a number of countries the Panel has no knowledge at all of how well known the Complainant's trademark is, what sales its trademarked products enjoy, what advertising or marketing is carried out in relation to such products, or as to any other of the multitude of possible factors that may go to show that a Respondent was (or possibly should have been) aware of the Complainant's rights.
The Respondent says that he obtained the Domain Name simply because it was an available three letter sequence and all such three letter sequences are likely to have some value. He says there will typically be many organisations which have a name or a product which if portrayed as an acronym will correspond to a given three letter sequence and hence he seeks to acquire such sequences. The Response identifies the original registrant, Zenith Insurance Company, and several other organisations as examples of organisations where the acronym "zic" is applicable.
The Respondent says he had never heard of the Complainant or its ZIC product when he obtained the Domain Name. That account seems to the Panel to be entirely credible and believable and the Panel sees no reason to doubt the Respondent's statement.
The Panel accepts that a registrant cannot be "willfully blind" to whether a domain name may violate trademark rights. The question however is what amounts to "willful blindness". The primary obligation on a registrant is set out in paragraph 2 of the Policy and that obligation is to determine if its registration violates another party's trademark rights. This is not however an absolute obligation which bars any registration of any domain name if someone else, somewhere in the world, has a trademark (however obscure) corresponding to the domain name. The question of when the registration will amount to a violation of rights is one of fact and degree, depending upon many factors, such as the geographical locations concerned, the nature and scale of the trademark owner's business, how well known and/or famous the trademark in question is and so on. In the present case the Panel is satisfied that the nature of the rights that the Complainant had at the relevant date were not such as to render the Respondent guilty of willful blindness when it registered the Domain Name.
In reaching this conclusion the Panel has had in mind the fact, as appears from the very limited evidence filed by the Complainant, that the Complainant does have a registered trade mark in Hong Kong, China, where the Respondent is resident, in respect of the term "zic". Curiously the Complainant itself does not appear to have placed any particular reliance on this fact. It also transpires that the Respondent has not addressed this issue in its Response, even though the Response does discuss in some detail why trademarks registered in jurisdictions other than that of the Respondent are not relevant. The Panel surmises that the Respondent may have failed to notice the existence of this trademark – not altogether surprisingly given that its detail was added by amendment and the Complainant has not drawn attention to it. Nevertheless the Panel considers this issue should be taken into account. Even assuming in the Complainant's favour (without deciding the point) that the Respondent should be fixed with deemed notice of a registered mark within his own jurisdiction what would such knowledge have imputed to him? It would have notionally informed him that a third party had a registered mark for "zic" dating from 1997 for a relatively narrow class of goods (lubricating oils and associated products) in a specific category. It would not show that acronym as being the name of the registrant and there is no other evidence before the Panel of any actual activity in Hong Kong, China, which should have alerted the Respondent to any particular significance to be attached to that acronym's use by the Complainant. Indeed the evidence is wholly unclear as to exactly what use (if any) the Complainant had actually made of the trademark in Hong Kong, China. The Panel agrees with the Respondent that a three letter acronym of this type is likely to be of general application to many interested parties, and no one party is likely to be able to claim a monopoly on use of the acronym in all fields of activity. In these circumstances the Panel sees no reason why imputed knowledge of a particular registered trademark in a specific field should have precluded the Respondent for bidding for the Domain Name at a public auction, or having won the auction from subsequently keeping and offering for sale the Domain Name. Given this conclusion by the Panel it does not need to decide whether in fact it would be appropriate to impute such knowledge to the Respondent.
Taking into account all the above factors the Panel concludes that the registration and use of the Domain Name by the Respondent cannot be in bad faith. Accordingly the Complainant has failed to establish that the third condition of paragraph 4(a) of the Policy has been fulfilled. D. Reverse Domain Name Hijacking
Paragraph 15(e) of the Policy provides that 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.
In Jazeera Space Channel TV Station v. AJ Publishing aka Aljazeera Publishing,WIPO Case No. D2005-0309, the majority of the three-member panel noted that the onus of proving that a complainant has acted in bad faith is on the respondent, and that mere lack of success of the complaint is not of itself sufficient to constitute reverse domain name hijacking. The majority went on to note that:
"Allegations of reverse domain name hijacking have been upheld in circumstances where a respondent's use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy (see Goldline International, Inc v. Gold Line,WIPO Case No. D2000-1151). See also Deutsche Welle v. DiamondWare Limited,WIPO Case No. D2000-1202, where an allegation of reverse domain name hijacking was upheld in circumstances where the complainant knew that the respondent used the at-issue domain name as part of a bona fide business, and where the registration date of the at-issue domain name preceded the dates of the complainant's relevant trademark registrations."
The three-member panel in Yell Limited v. Ultimate Search,WIPO Case No. D2005-0091 noted that whether a complainant should have appreciated at the outset that its complaint could not succeed will often be an important consideration.
In the view of the Panel this is a complaint which should never have been launched. The Complainant should have appreciated that establishing registration and use in bad faith in respect of a domain name which had first been registered many years previously and which was a three letter acronym was likely to involve difficult considerations. The Complainant appears to have ignored any such considerations. It initially adopted an entirely unwarranted and unnecessarily aggressive approach to the Respondent in the form of its email correspondence including its email of August 6, 2015 (see above) which was materially incorrect in important respects. Having failed by that correspondence to force the Respondent to transfer the Domain Name at the price the Complainant was prepared to pay, it simply launched the present proceedings. These were presented in a very limited and inadequate manner, and with no proper consideration of the issues involved, the factual background, or what the Complainant had to establish if it was to present a credible case. Given the nature of the Policy and the multiplicity of previously decided cases dealing with similar issues in relation to short acronym type domain names, this was a case that had no reasonable prospects of success. If the Complainant took competent legal advice it should have appreciated that this was the position. If it did not take competent legal advice it has only itself to blame. In all the circumstances the Panel agrees with the Respondent that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
7. Decision
For the foregoing reasons, the Complaint is denied. The Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Nick J. Gardner
Presiding Panelist
Paul C. Van Slyke
Panelist
The Hon Neil Brown Q.C.
Panelist
Date: November 23, 2015
Full & Egal Universal Law Academy