The Complainant is The Nanosteel Company, Inc., Providence, Rhode Island, United States of America, represented by Ellen Bossert, United States of America.
The Respondent is Graham Haynes, Rags of Ross On Wye, United Kingdom of Great Britain and Northern Ireland, represented by Lewis & Lin, LLC., 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 23, 2015. On September 24, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 24, 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 September 29, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 19, 2015. The Response was filed with the Center October 19, 2015.
The Center appointed Nicholas Smith, Christopher S. Gibson and Diane Cabell as panelists in this matter on November 6, 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 a manufacturer of iron-based alloys including advanced surface technologies, foils, powder metals and sheet steel. It has traded since 2002.
The Complainant is the owner of a number of trademarks consisting of the word "NANOSTEEL" (the "NANOSTEEL Mark"), for various metallic coatings and alloys, first registered in the United States in 2005 and first used in commerce in 2002.
The Domain Name was created on March 10, 2000 but first registered by the present Respondent on or around June 2011. The Domain Name is inactive. The Respondent is a UK citizen with a business presence in China who is in the business of registering and developing domain names. 5. Parties' Contentions A. Complainant
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant's NANOSTEEL Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the NANOSTEEL Mark. It owns trade mark registrations for the NANOSTEEL Mark in the United States dating back to 2005. The Domain Name is identical or confusingly similar to the NANOSTEEL Mark.
The Respondent has no rights or legitimate interests in the Domain Name. The Complainant has not authorized the Respondent to use and register any domain name incorporating the NANOSTEEL Mark. The Domain Name was registered by the Respondent in 2011. The Respondent is a cybersquatter or domain name broker who has not used the Domain Name for any legitimate business purpose in the years following the registration. Prior to registration the Domain Name was registered to a previous registrant and the Complainant made a number of offers to purchase the Domain Name. Such use does not grant rights or legitimate interests in the Domain Name.
The Domain Name was registered and is being used in bad faith. The Respondent is a professional cybersquatter who has registered over 600 domains of which only 20 have an active webpage. The previous owner of the Domain Name attempted to sell the Domain Name to the Complainant for various amounts well in excess of the cost of the Domain Name, being use in bad faith. B. Respondent
The Respondent is in the business of registering and developing domain names, all of which consist of common use, generic and dictionary words. The Respondent has registered hundreds of domain names including 33 domain names which contain "nano" and "steel".
At the time the Respondent registered the Domain Name the Respondent had no knowledge of the Complainant or any of its trade marks at the time it registered the Domain Name. It registered the Domain Name in good faith and in furtherance of its business practice of purchasing and developing common use, generic, dictionary word domain names into active websites. The Domain Name consists of two common, generic words being "nano" and "steel". Given the Respondent's demonstrated business interests, wholly descriptive dictionary word domain name portfolio containing many similar types of domain names, and the lack of any evidence of fame or status for the NANOSTEEL Mark, the Respondent clearly has legitimate rights and interests in the Domain Name.
The Complainant's allegations that the Respondent is a cybersquatter are unsupported by any evidence. The Respondent is a domain name broker who invests in generic domain names. Panels have held that the registration and holding of domain names comprised of common generic and dictionary words for their commercial value "may constitute use of the domain name in connection with a bona fide offering of goods or services (i.e. the sale of the domain name itself)." See Allocation Network GmbH v. Steve Gregory,WIPO Case No. D2000-0016. Nevertheless, the Respondent is not a mere domain name investor, it also develops domain names into active commercial or informational websites. Several of the Respondent's developed Web sites generate in the range of USD $500,000 in revenues annually. Out of the Respondent's hundreds of generic and dictionary word domain names, the Complainant cannot and did not cite a single one that is comprised of trademark terms. Indeed, the Respondent's ownership of 33 other domain names comprised of and containing the dictionary terms "nano" and "steel," along with hundreds of other common use, generic, dictionary word domain names, supports its position that it registered the Domain Name for its generic dictionary word meaning.
The Complainant's attempts to impute bad faith to the Respondent based on the alleged acts of the Domain Name's prior owner(s) is wholly disingenuous. Even if we assume that a prior registrant of the Domain Name used it in bad faith – which is not the case here – bad faith cannot be imputed to the Respondent based on the actions of an earlier registrant. See Ascendes Corporation dba MarketTouch v. Market Touch Limited,WIPO Case No. D2001-1186.
The Panel should also make a finding of Reverse Domain Name Hijacking based on the Complainant filing the case in awareness of the generic nature of the Domain Name and the Respondent's portfolio of generic domain names. The Complainant has made a number of speculative and baseless arguments under the second and third factors of the Policy, including attempting to target the Respondent with the alleged bad acts of the Domain Name's prior owners. 6. Discussion and Findings A. Identical or Confusingly Similar
To prove this element, the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant's trade or service mark.
The Complainant is the owner of the NANOSTEEL Mark, having registrations for the NANOSTEEL Mark in the United States. The Domain Name consists of the NANOSTEEL Mark and the top level domain ".com". Disregarding the .com domain, the Domain Name is identical to the NANOSTEEL Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
"Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you 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 (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 are making 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." (Policy, paragraph 4(c))
The Panel notes that the system of domain name registration is, in general terms, a "first come, first served system" and, absent pre-existing rights which may be applicable to impugn a registration, the first person in time to register a domain name would normally be entitled to use the domain name for any legitimate purpose it wishes. The Respondent says that his registration of the Domain Name on this basis, as part of his business in trading in domain names was sufficient to establish legitimate interests.
However, given the fact that the Respondent has not used the Domain Name in respect of any independent business, and given the use of the NANOSTEEL Mark as a trade mark by the Complainant that pre-dates that registration of the Domain Name by approximately nine years, the Panel declines to make a conclusive finding as to whether or not the Respondent has rights or legitimate interests in the Domain Name. Given the Panel's finding that the Respondent has not registered and used the Domain Name in bad faith (see below), the Panel concludes that in these circumstances it is not necessary to make a finding under this element of the Policy. C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owners of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) The Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website or location. (Policy, paragraph 4(b))
The registration and use requirements of paragraph 4(a)(iii) of the Policy are conjunctive, and a complainant bears the burden of proof on each. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. If either of the required elements are not established, the Complaint must fail. Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270 (denying transfer of the domain name because complainant failed to prove bad faith registration).
There is no evidence that the Respondent has engaged in a pattern of conduct of registering domain names (including the Domain Name) to prevent trade mark owners from registering a corresponding domain name. Nor is there any evidence that the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor: the Complainant and the Respondent are not competitors and the other domain names registered by the Respondent do not, on the evidence before the Panel, appear to correspond to particular brands unconnected to the Respondent. Indeed the Complainant, while identifying that the Respondent owns over 600 other domain names, did not identify a single domain name (other than the Domain Name in this case) that corresponded to a trade mark.
The Panel finds that the Complainant has not satisfied the burden of proof to show that:
a) the Respondent registered the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website; or:
b) there are circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name
The Panel reaches this conclusion for the following reasons:
1) the Domain Name was registered by the Respondent in 2011. The Panel does not accept the Complainant's submission that bad faith should be imputed by reason of the conduct of the previous registrant of the Domain Name; there being no evidence of any relationship between the Respondent and previous registrant.
2) the Respondent is located in a different country to the Complainant and has given sworn evidence that it had no knowledge of the Complainant or the NANOSTEEL Mark at the time it registered the Domain Name. Rather, its evidence is that it registered the Domain Name as part of its business in registering domain names consisting of descriptive words.
3) the Complaint provides no evidence of the reputation of the NANOSTEEL Mark at the time it registered the Domain Name, let alone such significant evidence of reputation that the Panel must conclude that the Respondent, located in a different country, was aware of the Complainant and its NANOSTEEL Mark at the time of registration.
4) the words "nano" and "steel" are common, generic, dictionary words. The combined phrase "nano steel" may descriptively refer to small, or microscopic, parts of steel. This is not a case where the trade mark replicated in the domain name is so unique that there is no possible alternative explanation for the registration of a domain name other than to take advantage of a complainant's mark; the Domain Name has a descriptive meaning in the English language.
5) the Respondent owns over 600 other domain names, none of which appear to correspond to particular trade marks (other than the Domain Name). The Respondent has provided evidence that, over an eight year period, he has registered 33 other domain names that contain either the word "nano" or "steel", including , and . This pattern of registering domain names that contain either the word "nano" or "steel" supports the Respondent's contention that the Domain Name was registered for its descriptive qualities and not because of any resemblance it has to the NANOSTEEL Mark.
The Complainant alleges that the Domain Name was registered and is used in bad faith because the "Respondent is a cyber-squatter, broker, or speculator, whose sole intent is to profit from the sale of the domain in excess of their direct out of pocket expenses". Regardless of whether the Respondent is a domain name broker, the Complaint does not provide any evidence that:
a) the Respondent is engaged in a business of selling domain names in which others have rights; or
b) that he registered the Domain Name knowing of the NANOSTEEL Mark.
The Panel accordingly declines to find that the registration of the Domain Name was in is bad faith on this basis.
The Policy is designed to deal with clear cases of cybersquatting, see Clockwork IP LLC, One Hour Air Conditioning Franchising, LLC v. Elena Wallace,WIPO Case No. D2009-0485 ("UDRP proceedings are for clear cases of cybersquatting, not for resolving trademark infringement and/or trademark dilution disputes or other matters more appropriately dealt with through the courts"). The onus of proof in showing the registration and use of the Domain Name in bad faith rests with the Complainant and, aside from evidence that the Respondent trades in domain names (that appear to consist of descriptive words) the Complainant has provided no evidence to support the conclusion that the Respondent was aware of the Complainant at the time of registration or used the Domain Name in bad faith. Accordingly the Panel finds that the Respondent has not registered and used the Domain Name in bad faith. 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 in Jazeera 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 has raised a number of significant issues. The Complaint provides no evidence of the reputation of the NANOSTEEL Mark and no evidence of any conduct of the Respondent that would show registration and use in bad faith. In particular, the Complainant fails to provide any evidence that it had any reputation in 2011, at the time of the registration of the Domain Name, let alone that the Complainant was so well-known that the Respondent's registration must have been made with the Complainant in mind, rather than for the descriptive qualities of the Domain Name. The Complaint is replete with assertions that the Respondent registered the Domain Name to take advantage of the Complainant despite the fact that the Domain Name consists of two descriptive words and the Complainant was aware that the Respondent had registered over 600 Domain Names including many consisting of descriptive terms. Finally the Complaint appears to imply that the Respondent is using the Domain Name in bad faith by reason of the conduct of the previous registrant of the Domain Name but does not provide any evidence of any connection between the Respondent and the previous registrant.
While noting that the Complainant's case has significant weaknesses the Panel does not make a formal finding of Reverse Domain Name Hijacking as the facts surrounding the matter, at the time the Complaint was filed, did not render it objectively hopeless. It reaches this conclusion following reasons:
a) at the time the Domain Name was registered by the Respondent the Complainant had a registered trade mark that was identical to the Domain Name that predated the registration of the Domain Name by six years.
b) the Respondent is in the business of registering large numbers of domain names, most of which have not been used since registration;
c) the Respondent has been the owner of the Domain Name for four years and, as of the date of the Complainant, has never used the Domain Name for any purpose. Indeed there is no evidence in the Response that the Respondent has any plans to develop a business or website at the Domain Name.
The Panel does not find that the Complaint was brought in bad faith. 7. Decision
For the foregoing reasons, the Complaint is denied.
Nicholas Smith
Presiding Panelist
Christopher S. Gibson
Panelist
Diane Cabell
Panelist
Date: November 18, 2015
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