Complainant is The Institute of Electrical and Electronics Engineers Incorporated, Piscataway, New Jersey, United States of America, represented by the law firm Dorsey & Whitney, LLP, United States of America.
Respondent is IARAS / Administration IARAS, Drums, Pennsylvania, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with ABCDomain LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 25, 2010. On June 28, 2010, the Center transmitted by email to ABCDomain LLC a request for registrar verification in connection with the disputed domain name. On July 7, 2010, ABCDomain LLC 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 8, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 28, 2010. Respondent did not submit any response. Accordingly the Center notified Respondent’s default on July 29, 2010.
The Center appointed Richard G. Lyon as the sole panelist in this matter on August 5, 2010. The Panel finds that it was properly constituted and has jurisdiction over this administrative proceeding. The Panel has submitted his 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 is a not-for-profit corporation with its principal place of business in New Jersey, United States of America. Plaintiff holds many United States trademarks that consist of or include the letters IEEE, and has used this abbreviation as its service identifier since 1963 for promoting expertise in many technical areas around the world. One activity for which Complainant uses its marks is holding conferences on various technical and scientific subjects. Complainant’s principal domain name is , and it is commonly known by its initials IEEE.
According to the website maintained at the disputed domain name, Respondent is “a European Research Unit located in Cyprus.” Although the contact details provided by the registrar give an address in the Commonwealth of Pennsylvania, United States of America, apparently Respondent is run by two individuals, one in Berlin, Germany and the other in Boston, Massachusetts, United States of America.
Respondent registered with the disputed domain name in 2007 or earlier. According to the Internet archive (or “Wayback machine”), in December 2007 the disputed domain name resolved to a single page, an apparent check-the-box survey, “what will be the best ,” giving the Internet user choices among “Mirror of IEEE.org; Web site about standards; Armenian Information Technology web site; Blank page; [and] Other (send suggesstions [sic] to info@.”
The disputed domain name currently resolves to an active website with a heading “The Institute for Environment, Engineering, Economics and Applied Mathematics.” According to this website this entity “is a non-profit organization devoted to promoting economic and cultural advancement. Established in 2006, the Institute organizes multidisciplinary conferences for academics and professionals, mainly in the fields of engineering, science, and education. The Institute for Environment, Engineering, Economics and Applied Mathematics holds conferences and courses in both industrialized and developing nations.” There are links on this website allowing an Internet user to register at upcoming conferences sponsored by this organization.
Complainant sent Respondent a cease and desist letter on May 27, 2010, demanding transfer to disputed domain name. Respondent replied by email, stating “We do not have any relation with IEEE and we do not use the name of IEEE[.] We have never claimed that behind us it is the IEEE.” 5. Parties’ Contentions A. Complainant
Complainant contends as follows:
Complainant has well-established federally-registered service marks in IEEE. The disputed domain name is identical to Complainant’s service marks except for the country code TLD “.am” (for Armenia), which is not relevant for purposes of paragraph 4(a)(i) of the Policy. Complainant has never licensed Respondent to use any of its marks, and Respondent has never been known by the initials incorporated into the disputed domain name. Respondent’s only use of the mark of the disputed domain name has been in bad faith, competing with Complainant in one of the areas of services provided by Complainant. Respondent had “actual notice and constructive notice” of Complainant’s “famous” marks when it registered the disputed domain name. By so doing, and by appealing to Complainant’s members and customers, Respondent has initially intended to attract Internet users to its site by giving the misleading impression then Respondent is somehow affiliated with Complainant. Complainant cites further evidence of bad faith: providing incomplete or inaccurate contact information to the registrar, and changing the content of its website to delete any references to Complainant immediately following receipt of the cease-and-desist letter. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
The requirements of the Policy are conjunctive; failure of Complainant to prove any of them results in the denial of the Complaint. The Panel is not satisfied that Complainant has carried its burden of proof that Respondent registered the disputed domain name in bad faith and accordingly the Complaint fails.
As noted, Respondent registered the disputed domain name in 2007 or earlier. To establish registration in bad faith ordinarily requires Complainant to show that Respondent had actual knowledge of Complainant and its marks when the disputed domain name was registered, and that the disputed domain name was selected expressly to target Complainant to take advantage of its marks. See, e.g., Gold Medal Travel Group plc v. Damir Kruzicevic,WIPO Case No. D2007-1902; Janet E. Sidewater v. Worldwide Media Inc.,WIPO Case No. D2006-1281. Given the nature of Policy proceedings, with no discovery, each of these two discrete elements may be proven inferentially, see Net2phone Inc v. Delta Three Inc.,WIPO Case No. D2007-0644 and cases cited there at notes 3-11.
In this case actual knowledge of Complainant’s marks may be inferred from the evidence supplied by Complainant. The 2007 screen shot, quoted above, indicates Respondent’s knowledge of Complainant and its marks shortly after the date of registration. Respondent’s principals are apparently professors in technical fields, another fact from which actual knowledge may be inferred, since Complainant’s marks, whether or not “famous” in the trademark sense, are extremely well-known in scientific circles.
This same screen shot is the only basis for an inference of targeting at the time of registration. The best inference from that screen shot is that Respondent considered targeting Complainant at the date of registration or shortly thereafter. In most UDRP proceedings this would suffice for a panel to infer the necessary targeting, for when as here a distinctive mark is involved there is usually no other apparent plausible legitimate reason for selecting the disputed domain name. But in this proceeding there is another plausible, even obvious, reason. With the country code identifier “.am” the disputed domain name corresponds exactly to the initials of the institute operated by Respondent. This Panel thinks it equally likely that Respondent chose the disputed domain name for this reason and did not, at the time of registration, intend necessarily to take advantage of the renown of Complainant’s marks. According to Respondent’s website the institute was established in 2006, and it would have been entirely natural for Respondent to take advantage of the Armenian cc.TLD and adopt a domain name that incorporated its initials exactly.1
The usual indicia of cybersquatting are not to be found in this case. Respondent has not been a party to any other Policy proceeding, so far as the Panel has been able to determine. Respondent did not register other top-level or country domains incorporating Complainant’s marks. Even when, two years after registration, Respondent began to use the disputed domain name to promote its institute there was no mimicry of Complainant or its website and no reference to Complainant or its mark. Respondent’s business and use of the disputed domain name rely on considerably more than the domain name itself. The institute and its conferences appear to be legitimate;2 as that word is used in ordinary English. Respondent or an affiliate appears to operate a real business that functions independently of the website maintained at the disputed domain name. That fact differentiates this proceeding from the all-too-frequent practice of generating click-through revenues from page of hyperlinks solely to third-party sites chosen to take advantage of the complainant’s mark. In click-through cases the domain name, because of its similarity to the complainant’s mark, creates the business; here at least arguably it is the business that is competitive independently of the domain name.
It is entirely possible, as Complainant implies, that the institute now operated by Respondent was intended from its inception to parrot Complainant’s name and marks. But this is neither obvious nor the only reasonable conclusion from the record before the Panel. Without lengthy investigation and the development of a full factual record the Panel cannot with any confidence accept it to be true or indeed even more likely than a simple opportunity to grab a six-letter domain name that embodied the initials of Respondent’s institute.
The Policy does not authorize any such investigation, and in these circumstances the Panel prefers to leave the parties to the national courts. Several factors influence the decision to do so.
Respondent’s conferences may as Complainant alleges compete for attendees with conferences sponsored by Complainant. If that be the case, whatever Respondent’s motives at the time of registration, its current use of the disputed domain name may very well infringe Complainant’s marks, in the United States and elsewhere.3 And it appears from the Complaint that the similarity between Complainant’s initials IEEE and Respondent’s initials IEEEAM in the offering of conference-related services, not the use of a single country code domain name, is Complainant’s real bone of contention with Respondent. Trademark infringement is a far more substantial and complicated cause of action than cybersquatting, with stakes far greater than entitlement to a single domain name. The national courts exist to resolve such disputes; a Policy panel lacks jurisdiction and competence to do so. Lonely Planet Publications Pty Ltd v. Mike Tyler,WIPO Case No. D2004-0670. Respondent and at least one of its principals are located in the United States and should thus be amenable to infringement or other proceedings in the Complainant’s home courts. Of course, nothing in the Panel’s opinion is binding on the parties in subsequent litigation.
Complainant has failed to prove that Respondent registered the disputed domain name in bad faith. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Richard G. Lyon
Sole Panelist
Dated: August 12, 2010
1 Certain country code identifiers coincide with common words (“.me” for Montenegro, “.no” for Norway, for example) or letter combinations of obvious commercial value (“.md” for Moldova; “.tv” for Tuvalu). Though not relevant in determining similarity under paragraph 4(a)(i) of the Policy, such an identifier clearly has relevance under the other two clauses of paragraph 4(a), as bearing on the circumstances surrounding registration. See GmbH v. Alan Lin,WIPO Case No. DME2009-0008.
2 For example, the conferences are cited on third party websites.
3 Trademark infringement, of course, does not always establish cybersquatting. See, e.g., Toronto Star Newspapers Limited v. Capital Networks, Ltd.,WIPO Case No. DTV2001-0002 (“It may be that the subject domain name violates the intellectual property rights of the Complainant, but that is not a matter to be resolved in this domain name dispute process. The focus of this proceeding is narrow and specific.”)
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