The Complainant is D3 LED, LLC of Rancho Cordova, California, United States of America (“USA”), represented by Antoinette M. Tease, P.L.L.C., USA.
The Respondent is Haider Al-Rubaie of Manama, Bahrain. 2. The Domain Name and Registrar
The disputed domain name is registered with 1&1 Internet AG (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 29, 2016. On January 29, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 1, 2016, 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 February 4, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 24, 2016. The Response was filed with the Center on February 11, 2016. The Center asked for a confirmation that the submission was the Respondent’s complete Response, but no confirmation was received. Accordingly, the Center sent a procedural update on February 25, 2016.
The Center appointed Dr. Clive N. A. Trotman as the sole panelist in this matter on March 3, 2016. 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 mainly in the business of supplying display systems that use “LED” (light-emitting diode) technology. The displays include indoor and very large outdoor colour displays.
The Complainant holds a number of trademarks for D3 standing alone or in combination, of which the following are representative:
D3, United States Patent and Trademark Office (“USPTO”), registered January 8, 2008, registration number 3365320, class 9, for LED digital displays for commercial usage; LED luminous signs for commercial usage; LED displays for commercial usage.
Registration for the trademark D3 in class 9 is also held in Brazil, Dominican Republic, Kazakhstan, Mexico, New Zealand, South Africa and United Arab Emirates (“UAE”);
D3LED, USPTO, registered December 16, 2008, registration number 3548365, class 9, for LED digital displays for commercial usage; LED luminous signs for commercial usage; LED displays for commercial usage;
D3 DYNAMIC DIGITAL DISPLAYS, USPTO, registered December 9, 2008, registration number 3545318, class 9, for LED digital displays for commercial usage; LED luminous signs for commercial usage; LED displays for commercial usage.
Digital Data Dimensions, the Respondent’s company, which provided the Response, is mainly in the business of security and attendance systems and projects, queuing systems, software development and digital signage. Its products are named “TimeTech”, for example “TimeTech Attendance systems”, “TimeTech Queue System” and “TimeTech Digital Signage”.
The disputed domain name has a creation date of November 3, 2010. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions may be summarised as follows.
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which it has rights. The Complainant’s trademarks include D3 alone, or in combination where D3 is the first and dominant part of a trademark. The Complainant has used its trademark in commerce since at least as early as October 2006.
The Complainant further contends that, as far as it is aware, the Respondent does not have rights or legitimate interests in respect of the disputed domain name. A screen capture of the Respondent’s website to which the disputed domain name resolves, produced in evidence, displays the mark or logo D3 DIGITAL DATA DIMENSIONS. The Complainant says that a copyright notice dated 2015 suggests that the Respondent first began using the D3 DIGITAL DATA DIMENSIONS mark in 2015. This shows that the Respondent intended to usurp the goodwill in the Complainant’s trademark and to divert customers from the Complainant.
The Complainant also contends that the disputed domain name was registered and is used by the Respondent in bad faith. The Complainant held trademarks for D3 at the time when the disputed domain name was registered in November 2010. The Complainant sent a cease and desist letter to the Respondent in February 2015, for which a delivery receipt was obtained but no reply was received. The Respondent’s registration of the disputed domain name with “three” spelt out suggests the Respondent was aware of the Complainant’s D3 trademarks. The Respondent displays D3 on its website as D3, the superscript being an attempt to emulate the Complainant’s trademark.
The Complainant requests the transfer of the disputed domain name. B. Respondent
Digital Data Dimensions of Bahrain, which sometimes refers to itself as D3 and which provided the Response, denies the Complaint. Its contentions may be summarised as follows.
The Respondent has used the disputed domain name and the same logo since 2010.
Digital Data Dimensions does not have companies world wide but is based in Bahrain.
The Respondent’s business is different from the Complainant’s and is mainly related to security and attendance systems and projects, queuing systems, software development and digital signage.
The Respondent has never used the name D3LED. The Respondent’s use of D3 is an abbreviation for the company’s full name, which is not similar to the Complainant’s name. The Respondent’s products are branded TimeTech, and none carry the company name D3.
The Respondent’s dealings in the USA, UAE, Iraq, Saudi Arabia and other countries are through partners and not under the name D3.
In early 2016, the full ownership and management of D3 was changed, references to the USA and UAE were removed from the website and the company is now purely Bahraini with no partnership outside of Bahrain. This was formally registered and the intention was announced in the Arabic Official Newspaper. Copies of the Establishment Registration Certificate in the name of Digital Data Dimensions IT Solution, and of the Arabic Official Newspaper (in Arabic) were appended.
The Respondent says there is no evidence that it has used the name of D3LED, affected the Complainant’s business, or caused it any loss. The Respondent never knew of the Complainant and has never been asked about the Complainant or its products.
The Respondent expresses an interest in working with the Complainant. 6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute resolution provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
The Complaint was sent to Haider Al-Rubaie as the registrant of the disputed domain name. It was responded to on the letterhead of Digital Data Dimensions, displayed as D3 Digital Data Dimensions, of Bahrain, signed by the General Manager. It will be practical to refer to the Respondent in the impersonal. A. Identical or Confusingly Similar
The Complainant must prove that it has rights in a trademark to which the disputed domain name is confusingly similar. The Complainant has produced a schedule showing the details of its various trademarks for D3 standing alone or in combination with other words such as D3LED or D3 DYNAMIC DIGITAL DISPLAYS. Whilst no copies of registration documents have been produced, the trademarks listed are not contested by the Respondent. The Panel accepts that the Complainant has trademark rights satisfactory for the purposes of paragraph 4(a)(i) of the Policy.
The Complainant must prove that the disputed domain name, , is confusingly similar to a trademark of the Complainant. Considering first the trademark D3 standing alone, the Complainant has registration for this in the USA, Brazil, the Dominican Republic, Kazakhstan, Mexico, New Zealand, South Africa and the UAE.
In the exercise of its powers to undertake limited factual enquiries into matters of public record (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.5), the Panel found that a search of the Trademark Electronic Search System (TESS) for “D3” returned 170 records of USPTO trademark applications or registrations comprising or incorporating D3.
Trademarks live and registered at the USPTO for D3 standing alone were recorded in the names of:
D3Publisher of America (including class 9)
Blackridge Group
IV Science LLC
Debra A. Dieterly and Douglas K. Dieterly
Dimension 3 Associates (the D3 superscripted)
Nierenberg Investment Management Company, Inc. (the D3 superscripted)
Raining Data Corporation (including class 9)
Diagnostic Hybrids, Inc. (2)
D3 Air and Space Operations, Inc.
Nikon Corporation (including class 9)
D3 Radiation Planning, Inc.
California Board Sports, Inc.
A United Kingdom Intellectual Property Office (UKIPO) search for D3 yielded 90 results containing D3. Trademarks live and registered for D3 standing alone, excluding those above registered at the USPTO, were recorded in the names of:
mobilcom Communicationstechnik GmbH (including class 9)
Volvo Car Corporation
JKL Taizhou Garment Co., Ltd
(D3 design) Pediatrica Specialist S.r.l.
d.velop AG (including class 9)
Paul Fellows, Richard Fellows, partners in PFW Labels
TAN.365 Limited
Yash Raj Films Pvt. Ltd.
The lists above illustrate that the trademark term D3 standing alone is widely used by a variety of different companies in different spheres of business, including class 9, and is not inherently distinctive, nor is it exclusive to the Complainant. D3 as a trademark gives no indication as to what company, name, personal identity, goods or services it might represent. Evidently in the Complainant’s case D3 is derived from the category of products traded, i.e., dynamic digital displays, but nothing in the trademark D3 by itself conveys this.
The effective component of the disputed domain name, “dthree”, consists of a generic string that also evokes no possible indication of the goods, services, name or trademark to which it might refer.
Thus, neither the expression “dthree”, irrespective of the fact that it might sound like “d3”, nor the trademark D3, projects any particular meaning. Partly on that basis, and noting that D3 has been granted registration as a trademark for around 20 other entities on the USPTO and UKIPO registers alone, in a variety of different endeavours, the Panel is not sure that the metaphorical reasonable bystander would be likely to confuse the disputed domain name with the Complainant’s trademark. As expressed by the three member panel in the early case of Rollerblade, Inc. v. CBNO and Ray Redican Jr.,WIPO Case No. D2000-0427, with citations therein, “Indeed, genericness, if established, will defeat a claim of trademark rights, even in a mark which is the subject of an incontestable registration”. See also WOW Audio Visual Superstores Pty Ltd v. Comonoz Pty Ltd.,WIPO Case No. DAU2007-0003 and citations therein.
The Complaint makes much of the appearance on the Respondent’s website of the logo D3 DIGITAL DATA DIMENSIONS, comprising the name of the Respondent’s company, the D3 being superscripted (D3) on the Respondent’s website as it is on the Complainant’s website. Paragraph 4(a)(i) of the Policy is confined, however, to a comparison solely between the disputed domain name and the Complainant’s trademark; any trademark of the Respondent, whether registered or de facto, or the content of the resolving website, is of no consequence to the comparison required under paragraph 4(a)(i) of the Policy.
The Complainant also holds the trademarks D3LED and D3 DYNAMIC DIGITAL DISPLAYS. A domain name could, in certain circumstances, be held to be confusingly similar to a trademark of which it contains a recognisable part. The expression “dthree” is not, however, a part of the trademarks D3LED or D3 DYNAMIC DIGITAL DISPLAYS and the Panel is not certain, on balance, that a reasonable person would be likely to associate “dthree” with LEDs, dynamic digital displays, the Complainant or its trademarks.
The threshold for a finding of confusing similarity under paragraph 4(a)(i) of the Policy is conventionally low. Nevertheless in this case it may not be necessary to make a finding under paragraph 4(a)(i) of the Policy and the Panel will proceed to a consideration of paragraphs 4(a)(ii) and 4(a)(iii) of the Policy. B. Rights or Legitimate Interests
The Complainant has asserted that, as far as it is aware, the Respondent does not have rights or legitimate interests in respect of the disputed domain name. Paragraph 4(c) of the Policy provides for the Respondent to establish rights or legitimate interests in a disputed domain name by demonstrating:
“(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 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 above circumstances are without limitation and rights or legitimate interests may be established by the Respondent in any other way satisfactory to the Panel.
The disputed domain name was registered on November 3, 2010. In the terms of paragraph 4(c)(i) of the Policy, the earliest notice of the dispute was contained in the cease and desist letter sent to the Respondent on February 5, 2015, which the Complainant states was delivered. The disputed domain name was necessarily in use before the cease and desist letter was sent, and the Respondent says it was in use, with the same logo, from November 2010. The question is whether the offering of goods or services through the disputed domain name was bona fide. It is therefore pertinent to consider whether the registration and use of the disputed domain name have been in bad faith before returning to the question of rights or legitimate interests. C. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your website or location or of a product or service on your website or location.”
There is no claim or evidence that the Respondent has intended to sell the disputed domain name within the requirements of paragraph 4(b)(i) of the Policy.
There is no claim that the Respondent has engaged in a pattern of making blocking registrations within the meaning of paragraph 4(b)(ii) of the Policy.
There is no evidence that the Respondent’s primary purpose has been to disrupt the business of a competitor in terms of paragraph 4(b)(iii) of the Policy.
The Respondent’s primary purpose for the disputed domain name appears to have been self-promotion in the normal course of business. The Respondent asserts that its “type of business it’s far away from D3LED as our main business stream related to the security and attendance systems and projects, also we do provide the queuing systems, software development and digital signage, while D3LED provides LED Displays and LED lighting.” The Complainant has produced screen captures of the Respondent’s website presenting a somewhat different impression, with some pages portraying digital signage display systems for “businesses ... schools, campuses or healthcare organizations” and a number of LED display systems. Some pages bear the brand name TimeTech LED Display and the company name and logo D3 Digital Data Dimensions.
Whilst it is the Complainant’s clear conviction that the Respondent is intentionally trading on the Complainant’s goodwill by offering goods such as LED signage in competition, the focus of paragraph 4(b)(iv) of the Policy is whether the disputed domain name is used deliberately to confuse Internet users into visiting the corresponding website.
Paragraph 4(b)(iv) of the Policy requires that the misleading of Internet users by confusion would be intentional. The Respondent claims not to have known of the Complainant, and whilst it may often be difficult for a complainant to prove what another party knew, the concept of constructive notice is sparingly invoked under the Policy (WIPO Overview 2.0, paragraph 3.4). The Complainant, in a Declaration signed by its Vice-President of Electronic Design, can only say that it has shipped products to certain listed countries. On the available evidence, the Panel is not convinced that the Respondent has intended to target the Complainant. As stated by the three person panel in Rollerblade (supra), “The claim of bad faith registration and use rests on the claim that Respondent has intentionally attempted to attract for commercial gain Internet users to its site by creating a likelihood of confusion with the Complainant’s mark. The element of intent is a critical aspect of this claim. The mere presence of a likelihood of confusion or dilution is not sufficient to find bad faith under the Policy.”
The Complainant says that the failure of the Respondent to reply to the cease and desist letter is further evidence of bad faith registration. Such a failure to reply has in some cases been taken as an aggravating factor when finding bad faith (Ebay, Inc. v. E and Tony Caranci,WIPO Case No. D2000-1632).
On the evidence and on the balance of probabilities, the Panel does not find that the Complainant has established bad faith registration and use of the disputed domain name.
The question of rights or legitimate interests may now be revisited. In the terms of paragraph 4(c)(i) of the Policy the Panel is satisfied that the disputed domain name was in use for a bona fide offering of goods or services before the first notice of the dispute. The Complainant has failed to prove on the balance of probabilities that the Respondent did not have rights or legitimate interests in the disputed domain name.
The Complainant made allegations that amount to infringement of its trademark rights by the Respondent, including the use of a logo on the Respondent’s website having similarities to the Complainant’s own, with a superscripted D3. This is a separate matter. The Policy deals expeditiously with complaints of abusive registration of a domain name, but not with disputes alleging trademark infringement, which are properly heard in another forum. 7. Decision
For the foregoing reasons, the Complaint is denied.
Dr. Clive N. A. Trotman
Sole Panelist
Date: March 14, 2016
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