Complainant is Inspectorate America Corporation of Lauderdale, Florida, United States of America ("United States"), represented by Ballard Spahr, LLP, United States.
Respondent is Netcorp, LLC of Glendale, California, United States, represented by John B. Berryhill Ph.d. Esq., United States. 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 October 2, 2017. On October 3, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 4, 2017, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on October 13, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 2, 2017. On November 1, 2017, Respondent sent an email to the Center requesting a four calendar day extension to submit its Response. On November 2, 2017, the Center granted the automatic four calendar day extension for response. The Response was filed with the Center November 6, 2017.
The Center appointed Robert A. Badgley, Richard G. Lyon and Adam Taylor as panelists in this matter on December 6, 2017. 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
Complainant describes itself as an "independent analytic testing organization" which "offers oil testing services to production machinery, manufacturing equipment, power generation, marine, heavy construction, mining, trucking, transit and aircraft industries." Complainant offers an online software application for managing oil analysis program data known as LOAMS, an acronym for Lube Oil Analysis Management System.
Complainant holds two registered trademarks. First, the stylized mark LOAMS was registered with the United States Patent and Trademark Office ("USPTO") on June 1, 1999 under Reg. No. 2248502 in connection with computer software (class 9). Second, the word mark LUBE OIL ANALYSIS MANAGEMENT SYSTEM (LOAMS) was registered with the USPTO on May 25, 1999 under Reg. No. 2246946 in connection with a computer software program (class 9).
On its own website, Complainant features a stylized mark LOAMS which differs stylistically – and significantly – from the stylized LOAMS mark registered by Complainant. The stylized LOAMS mark on the website bears an "®" registration symbol, but Complainant has submitted no evidence that this stylized mark is registered.
The Domain Name was registered on April 17, 2003. For several years, the Domain Name has resolved to a parking page featuring hyperlinks to various sites offering loan-related services. It is undisputed that Respondent derives pay-per-click revenue from such hyperlinks. There is no evidence that Respondent's website has ever contained a hyperlink to any site related to oil or lubricants or oil testing or anything related to Complainant's business.
Fourteen years after the Domain Name was registered, Complainant's counsel sent Respondent a cease-and-desist letter on June 8, 2017. Respondent's counsel responded by letter dated June 13, 2017. In that letter, Respondent's counsel stated that Respondent "has never heard of your client and has never used the domain name in association with any purpose relating to lubricant analysis." Respondent's counsel also stated: "My client's use of the domain name to provide a paid advertising directory relating to loans, as shown in your letter and has been the consistent use of the domain name for many years, in no way violates your client's specialized, figurative and apparently-abandoned mark for lubrication analysis products and services."
Respondent's counsel also stated: "Your suggestion that use of a typographic variant of a generic term for purposes relating to the generic meaning of that word does not constitute a legitimate use of a domain name, is misinformed." Respondent's counsel then supplied the citation to a prior decision under the Policy, Dial-A-Mattress Operating Corp. v. Ultimate Search,WIPO Case No. D2001-0764 (involving ), in which the panel had stated: "We accept that a consumer who is either correctly or wrongly spelling the word 'mattress' is most likely and obviously looking for a mattress and that the Respondent should not be unfairly hindered from running a web site directed to the sale of mattresses or the supply of information relating thereto. That is, under the Domain Name."
Complainant sent another letter to Respondent's counsel, evidently on June 30, 2017, but the letter is not contained in the record. Complainant sent a chaser e-mail on July 17, 2017, to which Respondent did not reply, directly or through counsel.
Respondent put into evidence several other domain names it owns, each reflecting a misspelling of a generic word or phrase, such as , , , and . Respondent is in the business of using such domain names to set up directory pages related to the subject of the misspelled generic term and derive pay-per-click revenues through hyperlinks, much as Respondent has done vis-à-vis the Domain Name in this case. 5. Parties' Contentions A. Complainant
Complainant contends that it has satisfied all three elements required under the Policy for a transfer of the Domain Name. The thrust of Complainant's case is that the Domain Name is identical to Complainant's LOAMS mark, and Respondent is using the Domain Name improperly for commercial gain by deriving pay-per-click revenues at the website to which the Domain Name resolves. B. Respondent
Respondent disputes the Complaint on all three elements of the Policy. The Panel will not discuss each of Respondent's arguments, because doing so is unnecessary to the disposition of this case. Respondent's essential point is that it has never targeted Complainant's LOAMS mark, but has pursued its longstanding business model of registering domain names reflecting a misspelling of a generic word in the hope of attracting typo-driven Internet traffic and deriving commercial gain. According to Respondent, this activity is legitimate and has been found to be so in prior decisions under the Policy. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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
Although the issue is slightly more nuanced than it might seem at first blush (for reasons whose explication is not necessary to the disposition of this case), the Panel is prepared to conclude that Complainant has rights in the mark LOAMS through registration and use, and that the Domain Name is identical to the LOAMS mark.
Complainant has established Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] are making a 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.
The Panel need not address this issue, in view of its conclusion below on the "bad faith" issue. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, "in particular but without limitation," are evidence of the registration and use of the Domain Name in "bad faith":
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other on line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location.
The gist of Complainant's claim is that Respondent is in violation of the above-quoted Policy paragraph 4(b)(iv).
The Panel unanimously concludes that there is no evidence whatsoever of registration and use of the Domain Name in bad faith. First, there is no reason to believe that Respondent was aware of Complainant or its LOAMS mark, given the relatively specialized field of commerce in which Complainant operates. Complainant provided no evidence, beyond a bald assertion, that its LOAMS mark has achieved widespread recognition. Respondent flatly denied having ever heard of the LOAMS mark, and the Panel finds Respondent's denial to be very plausible.
Second, as Respondent spelled out clearly in its pre-Complaint response to Complainant's cease-and-desist letter, it registered the Domain Name because it reflects a common misspelling of the generic word "loans", and Respondent is in the business of capitalizing on the misspelling of generic terms. This type of activity has been held to be legitimate in numerous prior decisions under the Policy. For example, in the Dial-A-Mattress Operating Corp. v Ultimate Search decision, supra, cited by Respondent to Complainant prior to this proceeding, the panel so held. See also, Florim Ceramiche S.p.A. v. Domain Hostmaster, Customer ID: 24391572426632, Whois Privacy Services Pty LTD / Domain Administrator, Vertical Axis Inc.,WIPO Case No. D2015-2085 (respondent's use of , a misspelling of "credit", to advertise credit services was not bad faith despite complainant's CEDIT mark).
Third, as Respondent pointed out in pre-proceeding correspondence, the hyperlinks at the website to which the Domain Name resolves do not have and have never had any relationship to Complainant or Complainant's competitors, products, or services, or to oil or lubrication analysis.
In sum, there is simply no basis to conclude that Respondent was seeking to engender consumer confusion between Complainant's LOAMS mark and the Domain Name.
Complainant has not established Policy paragraph 4(a)(iii). D. Reverse Domain Name Hijacking
Respondent did not make a formal request for a finding of reverse domain name hijacking, i.e., a finding that the Complaint was brought by Complainant in bad faith, but the Panel may make such a finding of its own initiative – and elects to do so here. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 4.16 ("it is not necessary for a respondent to seek [a Reverse Domain Name Hijacking ("RDNH")] finding" in order for a panel to make such a finding).
This Complaint was doomed before it was filed. Complainant, who was represented by counsel, should have known this. The Domain Name was registered back in 2003, and the content of the website to which it resolved bore no relationship to Complainant's goods and services, or those of a competitor of Complainant, or to anything even remotely close to such goods and services.
More importantly, in pre-dispute correspondence, Respondent plausibly denied having had any knowledge or awareness of Complainant's mark, spelled out its motivation for registering the Domain Name, confirmed that it had been using the Domain Name for years in pursuit of its legitimate business purpose, and supplied authority to Complainant and its counsel for the proposition that Respondent's activities were not in bad faith. Nonetheless, Complainant could not take "No" for an answer, and chose to launch its foredoomed Complaint.
The Panel unanimously finds that Complainant, in these circumstances, is guilty of reverse domain name hijacking. 7. Decision
For the foregoing reasons, the Complaint is denied. This Complaint was brought in bad faith and constitutes reverse domain name hijacking.
Robert A. Badgley
Presiding Panelist
Richard G. Lyon
Panelist
Adam Taylor
Panelist
Date: December 13, 2017
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