The Complainant is Telect, Inc. of Liberty Lake, Washington, United States of America (“United States”), represented by Lee & Hayes, United States.
The Respondent is Arvind Reddy of Hyderabad, India. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed 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 June 30, 2017. On July 3, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 5, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s 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 July 7, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 27, 2017. The Response was filed with the Center on July 26, 2017.
The Center appointed John Swinson as the sole panelist in this matter on August 1, 2017. 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 an American company which specializes in fiber optic networks and cables that has been in operation since 1982. The Complainant owns United States trade mark registration number 2322677 for CONNECTING THE FUTURE (registered February 29, 2000), as well as corresponding trade mark registrations in jurisdictions including Mexico, Canada, and the European Union (together the “Trade Mark”).
The Complainant owned the Disputed Domain Name from 2001 until 2014, when the Complainant inadvertently forgot to renew the registration.
The Respondent is a domain name investor based in India. He has worked in the domain name industry since 2002 and owns in excess of 10,000 domain names. The Respondent purchased the Disputed Domain Name on December 15, 2014. The Disputed Domain Name was originally created in 1999.
According to the Complainant, in early 2017, the Complainant became aware that a third party had registered the Disputed Domain Name. On May 10, 2017, a representative of the Complainant phoned a number listed on the website at the Disputed Domain Name and spoke with a domain broker about purchasing the Disputed Domain Name. The Complainant did not purchase the Disputed Domain Name. 5. Parties’ Contentions A. Complainant
Identical or confusingly similar
The Complainant submits that the Disputed Domain Name is identical or confusingly similar to the Complainant’s Trade Mark. The only differences between the Disputed Domain Name and the Trade Mark is the addition of the suffix “.com”.
Rights or legitimate interests
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name as the Complainant has not granted the Respondent any rights in the Trade Mark. The Complainant argues that the Respondent is not:
- using the Disputed Domain Name in connection with the bona fide offering of goods or services;
- commonly known by the Disputed Domain Name; and
- making a legitimate noncommercial fair use of the Disputed Domain Name.
Registration and use in bad faith
The Complainant submits that the Respondent registered the Disputed Domain Name for the purpose of selling or otherwise transferring it to the Complainant or to a competitor of the Complainant for commercial benefit. The Complainant submits that:
- the Respondent may have been able to see via publicly available information that the Complainant was the previous owner of the Disputed Domain Name which could have helped the Respondent approach the Complainant to make a sale;
- the Disputed Domain Name was still redirecting to the Complainant’s website after it was acquired by the Respondent; and
- the domain broker offered to sell the Disputed Domain Name for an amount that was USD 2,000 greater than what was advertised on the website at the Disputed Domain Name. B. Respondent
Identical of Confusingly Similar
The Respondent submits that the Trade Mark is a generic phrase that has no direct connection with the Complainant. To illustrate this point, the Respondent has provided the results of Internet searches of the term “connecting the future” to demonstrate that this tagline is used by a number of businesses unrelated to the Complainant.
Rights or Legitimate Interests
The Respondent submits that he is making a legitimate, noncommercial and fair use of the Disputed Domain Name without attempting to mislead Internet users or to damage the Complainant’s Trade Mark.
The Respondent states that his business buys and sells domain names. The business parks those domain names, and the parking pages feature pay-per-click (“PPC”) links. He highlights the position of previous UDRP panels that have found the use of a domain name to host a page comprising PPC links to be permissible where the domain name consists of an actual dictionary word or phrase and is used to host PPC links that are genuinely related to the dictionary meaning of the words of the domain name, and not to trade off the complainant’s trade mark.
The Respondent also highlights that the buying and selling of domain names has been recognized as a bona fide offering of goods or services.
Registered and Used in Bad Faith
The Respondent submits that there was no bad faith involved in the registration or use of the Disputed Domain Name and that the Complainant has failed to provide any evidence to support its argument that there was such use.
The Respondent rebuts the Complainant’s allegations in relation to bad faith. In particular, the Respondent submits that:
- He does not consider who the previous owner of a domain name may have been when making a business decision to purchase a domain name. He did not consider the Complainant’s prior ownership before he purchased the Disputed Domain Name.
- The Complainant’s statement that the website at the Disputed Domain Name was still redirecting to the Complainant’s website after he purchased it is false and impossible. The Respondent points out that the Complainant has not provided any evidence to support this claim.
- There has never been any attempt by the Respondent to exploit the fact that the Complainant was the previous owner of the Disputed Domain Name and the owner of the Trade Mark. The Respondent explains that the price for the Disputed Domain Name varied between sales platforms and that the sales process was handled by a broker. 6. Discussion and Findings
To succeed, the Complainant must prove that each of the elements provided in paragraph 4(a) of the Policy have been met. These include:
(i) the Disputed Domain Name is identical 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 Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The onus of proving these elements is on the Complainant. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Panel considers that the Disputed Domain Name is confusingly similar to the Trade Mark as it incorporates the Trade Mark in its entirety. The addition of the generic Top-Level Domain (“gTLD”) “.com” can be discounted for the purposes of establishing whether a disputed domain name is identical or confusingly similar to a trade mark. See Zynga Game Network, Inc. v. Emil Boc,WIPO Case No. D2009-1535.
Where the Complainant has a registered Trade Mark, it is not relevant to this element that there are uses of the trade marked expression by others.
For the above mentioned reasons, the Complainant is successful on the first element of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name as the Complainant has not granted the Respondent any right to use the Trade Mark, and that his use does not meet any of the ways in which rights or legitimate interests can be demonstrated in paragraph 4(c) of the Policy.
The Panel considers that the Respondent has provided sufficient evidence which demonstrates that he runs a legitimate domain name trading business and that he chose the Disputed Domain Name due to its generic wording and broad appeal rather than to benefit from any goodwill or value associated with the Trade Mark.
Previous UDRP panels have found that a domain name which hosts PPC links can confer rights or legitimate interests where the domain name consists of a dictionary word or descriptive phrase and the PPC links relate to the dictionary meaning of that word or phrase, and do not trade off the complainant’s trade mark (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), paragraph 2.9).
In Media General Communications, Inc. v. Rarenames, WebReg,WIPO Case No. D2006-0964, the use of domain names for advertising links was found to be a legitimate interest for the purposes of paragraph 4(c) of the Policy when:
“- the respondent regularly engages in the business of […] using domain names to display advertising links;
- the respondent makes good-faith efforts to avoid registering and using domain names that are identical or confusingly similar to marks held by others;
- the domain name in question is a ‘dictionary word’ or a generic or descriptive phrase;
- the domain name is not identical or confusingly similar to a famous or distinctive trademark; and
- there is no evidence that the respondent had actual knowledge of the complainant’s mark.”
In the present case, the Respondent is a domain name trader whose domain names are parked pending sale. The Disputed Domain Name is a generic phrase which is not solely attributable to the Complainant. Although the website at the Disputed Domain Name is a PPC link page (which also contains a link to a purchase page), the links featured on that page are generic. The evidence provided does not demonstrate that the links specifically relate to the Complainant, its competitors, or the industry in which the Complainant operates beyond any general reference that the phrase “connecting the future” might invoke. They do not attempt to trade off the Complainant’s (or a third party’s) name or trade mark.
The Complainant has not provided any evidence to support its submissions that the Respondent registered the Disputed Domain Name with knowledge of the Complainant.
Therefore, the Complainant does not succeed in establishing the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and used the Disputed Domain Name in bad faith.
Since the Complainant has failed to establish the second element of the Policy, it is not strictly necessary for the Panel to reach a finding on the third element. However, the Panel will briefly address the key aspects of this element for completeness.
The Complainant states that the Trade Mark is its “key tagline” which it has used for a considerable period of time. However, the Complainant did not provide any evidence of how it uses the Trade Mark, or why the Respondent, who is located in India, would have been aware of or targeted the Complainant or the Trade Mark at the time he registered the Disputed Domain Name. The Panel does not accept the Complainant’s submissions that the Disputed Domain Name continued to redirect to the Complainant’s website after it was registered by the Respondent; the claim appears to originate from a commercial domain name use report which combines a WhoIs record of March 1, 2015, and a website screenshot from April 11, 2014.
Further, the Complainant has failed to provide evidence that demonstrates that the Respondent is using the Disputed Domain Name to trade off the Complainant’s reputation, to mislead Internet users, or to disrupt the Complainant’s business. Although the Disputed Domain Name is for sale, there is no evidence that the Respondent purchased the Disputed Domain Name for the primary purpose of selling it back to the Complainant. The Panel also notes that there was a period of two years before the Complainant took action to reclaim the Disputed Domain Name.
The Panel finds that the Complainant has failed to prove that the Respondent has registered and is using the Disputed Domain Name in bad faith. 7. Decision
For the foregoing reasons, the Complaint is denied.
John Swinson
Sole Panelist
Date: August 15, 2017
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