The Complainant is International Lighting Corporation of Hammond, Indiana, United States of America ("U.S."), represented by Miller, Canfield, Paddock & Stone, PLC, U.S.
The Respondent is Beat Brunner and Interlight SA of Pully, Switzerland, self-represented. 2. The Domain Name and Registrar
The disputed domain name (the "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 November 9, 2015. On November 10, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 12, 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 November 17, 2015. On December 4, 2015 the Respondent filed a request for extension, which was automatically granted by the Center in accordance with paragraph 5(b) of the Rules. In accordance with the Rules, paragraph 5, the due date for Response was December 11, 2015. The Response was filed with the Center on December 11, 2015.
The Center appointed Nick J. Gardner as the sole panelist in this matter on December 17, 2015. 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. 4. Factual Background
The Complainant is a U.S. company. It owns U.S. trademark No. 4821756 for the word INTERLIGHT registered in classes 9 and 11 in respect of a range of goods connected with lighting, and in class 35 in respect of retail services for lighting related products. This registered trademark was applied for on August 21, 2014 and registered on October 6, 2015. It records a claimed first use in commerce of January 31, 1993.
Beyond the details of this trademark and an assertion by the Complainant that it has been in business using the INTERLIGHT trademark since 1993, the Panel has not been furnished with any further information about the Complainant, its products, or its history.
The Domain Name was originally created on June 19, 1997. Further details as to the history of the Domain Name are discussed below.
The Respondent is a Swiss company, which has a business in the medical instruments and diagnostics field. Mr. Brunner appears to be the driving force behind the Respondent and registered the Domain Name before the corporate entity Interlight S.A. was formed. For present purposes nothing turns on the distinction between Mr. Brunner and Interlight S.A. and the Panel proposes to treat them as a single Respondent. 5. Parties' Contentions A. Complainant
The Complaint rather confusingly refers throughout to the Domain Name as "www." thereby confusing a website located at the Domain Name with the Domain Name itself. The Panel proposes to assume that the Complaint is to be understood as directed at the Domain Name but relying upon the Respondent's website in support of the allegations made.
The Complainant says that the Domain Name is confusingly similar to its registered trademark INTERLIGHT.
It then says that the Respondent has no rights or legitimate interests in the term "interlight". The Complainant says that its use of the term INTERLIGHT commenced in January 1993 whilst the Domain Name was not registered until June 19, 1997 and was not acquired by the Respondent until sometime in 2008. The Complainant says that the website at "www." is shown as being "under construction" and that has been the case all the time the Respondent has owned it.
The Complainant says that it emailed the Respondent in January 2015 about the Domain Name but received no reply. It says it has also attempted to telephone the Respondent about the Domain Name but the Respondent has not been prepared to speak to it.
The Complainant says that the Respondent's registration and use is in bad faith because (i) the Domain Name is the same as the Complainant's trademark and (ii) the Respondent has made no attempt to use the Domain Name in respect of a bona fide offering of goods or services and (iii) the Domain Name was acquired by the Respondent primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trademark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the Domain Name and (iv) the Respondent's use of the Domain Name for a website with a name the same as the Complainant's trademark creates 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 Complainant's website. B. Respondent
The Respondent has produced a very detailed Response with accompanying documentary evidence, and set out numerous authorities in relation to its case. It is not necessary to repeat all that the Respondent has said here. The salient points the Respondent makes are as follows.
First the Respondent says the Complaint is entirely deficient because it is directed at a website rather than a domain name, and as such makes no sense. It invites the Panel to dismiss the Complaint on this basis.
The Respondent then says that the Complainant's trademark was registered only shortly before the Complaint was filed. The Respondent was incorporated as Interlight S.A., a Swiss company in 2001 and the Domain Name itself registered in 1997, long before the Complainant's trademark existed.
It disputes the Complainant has exclusive rights in the term INTERLIGHT either internationally or even in the U.S. and points out there are other entities with U.S. registered trademarks for that term and suggests that the Complainant's trademark may not be valid. It also identifies various entities in other countries using the term "interlight" for lighting related businesses.
It says it operates in a different field, medical instruments and diagnostics, and says there is no risk of confusion given that the Complainant's business concerns light bulbs.
The Respondent says that the Complainant has not accurately set out previous correspondence which it received and which comprised unsolicited emails from the Complainant. It provides as examples the following (names and personal details omitted]:-
"Tue, 21 Dec 2010 10:14:44 -0600
From: ***********
To: ********@
Subject: Offer for www.
Hello
What would it take for us to purchase this domain from you?
Thanks
*********"
and
"Date: Tue, 15 Nov 2011 16:03:18 -0600
From: *******
To: ***********@
Subject:
Hello
We are still interested in purchasing the domain I
Please advise on how much or what it would take for you to sell us the
domain www.
Thanks
*****"
and
"Date: Thu, 09 Feb 2012 12:12:28 -0600
From: ******
To: *********@
Subject: I
Hello again.
We would still be very interested in purchasing your domain
Do you have a price in mind or any idea of what it would take for you to
depart with domain?
Thanks and once again we are very interested in purchasing your domain.
*******"
and most recently
Date: Tue, 13 Jan 2015 09:24:55 -0600
From: ******
To: ********@
Subject: WWW.INTERLIGHT.COM
Hello Mr. *******
I would like to schedule a time to speak with you about my company,
Interlight purchasing the domain www. from you. We will
cover all costs associated with this transition. Please provide me a
telephone number and time which works for you. I have an associate
fluent in German and Swiss German
*****"
The Respondent says that it registered the Domain Name on June 19, 1997 and has always been the registrant. It says that all that happened in 2008 was a change of registrar and hosting provider not of registrant.
The Respondent says it has used the Domain Name for company emails and the webpages which the Complainant refers to were automatically generated by its hosting provider. It says that it is a perfectly legitimate use of the Domain Name to use it just for email and this has been a key part of its business for over 15 years.
The Respondent says it has a legitimate interest in the Domain Name as it corresponds to its corporate name and it is duly registered in Switzerland and provides relevant documents evidencing this is the case. The Respondent says it has been and is commonly known by the Domain Name. The Respondent says it has registered its company name in the Swiss Register of Commerce and in several public directories and it can readily be found in Internet searches under its name.
The Respondent says that before it received any notice of the dispute, there is evidence of the Respondent's use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services as it has been used for its business emails all the time. It says that due to Swiss law business and personal emails contents cannot be disclosed, but it places in evidence sample email headers from before the Respondent received any notice of the dispute from the last years. It says it has over 20,000 emails archived which use the Domain Name. .
The Respondent denies that the Domain Name was registered in bad faith. It says that as at the date of registration it had never heard of the Complainant, and at that date the Complainant's U.S. tradename "Interlight" was totally unknown, and not registered anywhere in any trademark registry, not even in the U.S. nor in Switzerland, and even if that was not the case it was also unknown in the Respondent's field of activities. It points out that the domain name the Complainant uses, , was not registered until April 2 , 2002. It says that even today, the Complainant's U.S.-registered trademark INTERLIGHT for lighting is not an internationally well known mark, nor is it registered internationally.
The Respondent makes many more points in support of its 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 Preliminary Matter
As a preliminary matter the Panel declines to accept to the Respondent's request to reject the Complaint as it is directed at a website rather than a domain name. Whilst the terminology used is confusing the Complaint is nevertheless understandable, and the Respondent has clearly been able to understand it and respond to it. Substantive Matters
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 owns a registered trademark in respect of the term INTERLIGHT. It is not within the jurisdiction of the Panel to address the Respondent's arguments that the Complainant's INTERLIGHT trademark may not be valid. The Panel therefore holds that the Disputed Domain Name is identical to the INTERLIGHT trademark. It is well established that the specific Top-Level of the domain name (in this case ".com") 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
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 disputed 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 trademark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial 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 finds there is clear evidence that both (i) and (ii) apply in this case. (iii) does not apply as the Respondent's use has not been non-commercial. The term "interlight" comprise two ordinary English words, "inter" and "light" which are conjoined. The Panel considers these could readily be independently derived and sees no reason to doubt the Respondent's account that this is what it did long before it had any knowledge of the Complainant, still less of any dispute. The Complainant says that it was in business using the INTERLIGHT trademark with effect from 1993 and its US registered trade mark records a first use of that date. However the Panel has not been provided with any information as to what the nature or scale of the use was in 1993 (or indeed at any other date). Accordingly there is no evidence before the Panel which would give rise to even an inference that the Respondent knew of the Complainant, or its business or its INTERLIGHT trademark as at the date the Respondent registered the Domain Name, or at the date the Respondent adopted its corporate name, Interlight S.A. The Respondent's evidence clearly establishes it has carried out a genuine and bona fide business for many years and long before it became aware of the Complainant. It also establishes that it is known by its name which is in substance identical to the Domain Name.
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
Whilst the Panel's finding under (B) above is sufficient to enable a conclusion to be reached in relation to this Complaint, the Panel also finds that there is no evidence to suggest that the Domain Name has been registered and used in bad faith. The Respondent says it had never heard of the Complainant or its INTERLIGHT trademark product when it registered 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 also accepts the Respondent's evidence that it has been the registrant of the Domain Name at all times since it was registered.
The Panel also rejects the further allegations made by the Complainant as to the Respondent having registered the Domain Name with a view to selling it to the Complainant, or so as to create a likelihood of confusion. There is no evidence to support these allegations and they are clearly inconsistent with the actual nature of the Respondent's business and the way in which the Domain Name has been used. Also the Respondent did not reply to any of the Complainant's unsolicited emails seeking to purchase the Domain Name which is consistent with the Respondent's account that he told the Complainant in a telephone call that he did not wish to sell the Domain Name.
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.
A 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 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 Al 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 reasoning in these cases is directly relevant to the present case.
In the view of the Panel, the present Complaint is one which should never have been launched and where the case as advanced by the Complainant was not likely to succeed. It was also presented in an incomplete manner. There are multiple defects in the case advanced by the Complainant.
The following are the most obvious:
a. The Complainant should have appreciated that establishing registration and use in bad faith in respect of a domain name which was a conjoining of two ordinary English words was likely to involve difficult considerations, especially given the timing issues involved (see (c) below). The Complainant appears to have ignored any such considerations.
b. The Complaint in large measure simply repeats wording from the Policy without any proper attempt to consider or explain why the quoted wording was relevant or applicable.
c. The Complainant's registered trademark only issued in 2015. The Complainant must have known this was the case but did not point it out in the Complaint or explain why the Complaint should nevertheless succeed in relation to a domain name that had been registered 18 years earlier.
d. The Complainant's registered trademark records a first use date in 1993 but apart from asserting that it had used the trademark INTERLIGHT since 1993 the Complainant has provided no details of the nature or extent of such use and has not explained why the Respondent should have known of the Complainant or its trademark when it registered the Domain Name.
e. The Complainant must have appreciated that the Respondent's corporate name corresponded to the Domain Name and either knew or could have readily established that the Respondent was a bona fide Swiss company - but it made no attempt to address this.
f. The Complainant did not put in evidence all of the email correspondence it had previously had with the Respondent. When that correspondence was placed in evidence by the Respondent it was revealed to be a series of unsolicited attempts by the Complainant over several years seeking to buy the Domain Name. At no point does the correspondence suggest the Complainant has any rights to the Domain Name or that the Respondent was in any way in the wrong.
g. The Complaint appears to equate the website "www." with the Domain Name and suggests the nature of that website led support to its case. It must either have known or could have readily established that the Respondent had a bona fide business and appears to have simply ignored this fact, and the possibility that the Respondent was using the Domain Name for email.
h. Having failed by the email correspondence referred to above to reach an agreement with the Respondent to transfer the Domain Name the Complainant simply launched the present proceedings. These were presented in a very limited 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 fact that the Complainant was legally advised this was a case which the Complainant should have appreciated had no reasonable prospects of success. The Panel therefore finds 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
Sole Panelist
Date: December 28, 2015
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