13th Jan 2009
Hologic Inc. v. Vertical Axis, Inc. c/o Domain Administrator
Claim Number: FA0811001233395
Complainant is Hologic Inc. (“Complainant”), represented by Theodore Allen, Massachusetts, USA.Respondent is Vertical Axis, Inc. c/o Domain Administrator (“Respondent”), represented by Ari Goldberger, of ESQwire.com Law Firm, New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fullterm.com>, registered with Nameview, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Diane Cabell, Christopher Gibson, and Paul M. DeCicco as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 11, 2008; the National Arbitration Forum received a hard copy of the Complaint on November 14, 2008.
On November 21, 2008, Nameview, Inc. confirmed by e-mail to the National Arbitration Forum that the <fullterm.com> domain name is registered with Nameview, Inc. and that the Respondent is the current registrant of the name.Nameview, Inc. has verified that Respondent is bound by the Nameview, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 25, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 15, 2008 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
A timely Response was received and determined to be complete on December 15, 2008.
On December 30, 2008, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Diane Cabell, Christopher Gibson, and Paul M. DeCicco as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends as follows:
The domain name <fullterm.com> is identical or confusingly similar to the trademark FULL TERM in which the Complainant has rights.
Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name is not in connection with a bona fide offering of goods or services.
By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s website or location.
Respondent contends as follows:
There is no basis for transferring the disputed domain name <fullterm.com> to Complainant; Complainant is engaging in Reverse Domain Name Hijacking.
The Whois record for the disputed domain name shows that the Respondent registered the domain name on April 26, 2001.Complainant’s U.S. trademark registration was filed February 23, 2006, nearly five years after Respondent registered the disputed domain name. The Complainant’s mark was first used in commerce December 31, 2004.Complainant’s trademark, consequently, provides no rights under the Policy.The Respondent could not have had a non-existent trademark in mind when it registered the at-issue domain name.
The Complaint should also be denied because Respondent has rights and legitimate interest in the disputed domain name.The disputed domain name incorporates the common dictionary term “full term” which means “of or noting the entire duration of normal pregnancy.”A legitimate interest is established at the point of registration where it is not registered to profit from another’s trademark rights.It is impossible for there to have been a mal-intent in this case since Complainant had no trademark in 2001 when the domain name was registered.Respondent’s legitimate interest is further supported by its use of the domain name to display pay-per-click (“PPC”) links that constitutes use of a domain name in connection with the bona fide provision of goods and services under the Policy.
There is no evidence that Respondent registered the disputed domain name in bad faith.Respondent did not register the disputed domain name with Complainant’s alleged mark in mind, and could not have had knowledge of Complainant’s mark since the mark did not exist at the time Respondent registered the disputed domain name. Therefore, Respondent did not, and could not, register the disputed domain name with the intent to sell it to Complainant, to disrupt Complainant’s business, or to confuse consumers seeking to find Complainant’s web site, or to prevent Complainant from owning a domain name incorporating its’ trademark. Respondent registered the at-issue domain name when its registration expired and the registrar deleted it. At such time the domain name became available for anyone to register.Registration of domain names in this manner is entirely in good faith.
Respondent alleges Complainant has engaged in Reverse Domain Name Hijacking. The Complainant knew or should have known the Disputed Domain was registered prior to the Complainant’s filing its U.S. trademark applications, making it impossible to prove bad faith registration.Moreover, Complainant’s mark is descriptive of its “Fetal Fibronectin Test” which is a test to determine whether or not a pregnant woman is likely to deliver a baby prematurely, i.e. prior to “full term” delivery.
Complainant’s inaction for several years raises the inference that Complainant did not believe Respondent acted in bad faith during that time.
Strong corroboration of the fact that Respondent registered the Domain because of its descriptive nature, rather than targeting Complainant’s purported mark, is that Respondent has registered numerous other domain names incorporating pregnancy, medical and parenting-related common and descriptive terms.
Respondent hosts the disputed domain name on a website which displays Yahoo sponsored search advertisements. Respondent receives a share of the advertising revenue generated by the website.
The fact that the term “full term” is subject to substantial third party use further supports a finding of legitimate interest on Respondent’s part.
It is impossible to prove bad faith registration and use here since the disputed domain name was registered before Complainant’s first use of its alleged mark and the trademark application filing date.
Even if proof of bad faith were not impossible, Complainant still could not make out a case of bad faith registration and use.Absent direct proof that a common word domain name was registered solely for the purpose of profiting from Complainant’s trademark rights, there can be no finding of bad faith registration and use. Respondent registered <fullterm.com> because it incorporated a descriptive term, and because the prior registrant of the domain name failed to renew it.As a result, the domain name expired, was deleted, and became available for anyone to register.Respondent simply registered domain names that happened to become available when they were deleted.
Complainant waited 5 years after it applied for its trademark before bringing this Complaint.While laches is not a defense normally recognized under the Policy, the long unexcused delay in bringing this action raises the inference that Complainant did not believe the Respondent had been engaging in bad faith.
The Complainant should have known it could not prove bad faith registration.This conduct indicates Reverse Domain Name Hijacking.
Complainant has trademark rights in the FULL TERM mark by virtue of an assignment of the United States Patent and Trademark Office registration to one of its divisions.
The disputed domain name consists of the descriptive term “fullterm.”
Complainant’s mark is identical to the disputed domain name.
Complainant acquired its trademark rights in FULL TERM subsequent to Respondent registering the disputed domain name.
Respondent has rights or legitimate interests in respect of the domain name.
Respondent did not register and use <fullterm.com> in bad faith.
Complainant did not engage in Reverse Domain Name Hijacking.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
The trademark registration for FULL TERM is not held in the Complainant’s name but rather by CYTYC Corporation Delaware, 250 Campus Drive Marlborough, Massachusetts 01752 (CYTYC).Complainant alleges that CYTYC is a division of Complainant.If true, there is a sufficient identity between Complainant and the mark holder to allow Complainant standing in this proceeding. Since there is no evidence to the contrary, the Panel will treat the Complainant as the real party in interest and proceed as if Complainant is the nominal holder of the FULL TERM mark.
Complainant has rights in a trademark that is, for the purposes of this proceeding, identical to the disputed domain name.The trademark registration with the USPTO gives it rights in the mark under Policy ¶ 4(a)(i). The registration shows the first date of use in commerce to be December 31, 2004.Rights date back to the filing date of Complainant’s trademark registration.See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (holding that the complainant established rights in marks because the marks were registered with a trademark authority); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of complainant’s trademark rights date back to the application’s filing date).
It is well settled that omitted spaces and the addition of a generic top-level domain, such as “.com”, are each irrelevant when applying Policy ¶ 4(a)(i). The <fullterm.com> domain name is therefore identical to Complainant’s FULL TERM mark. See Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to complainant’s mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ … [is] insufficient to differentiate the disputed domain name from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”); see also Victoria’s Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that the <bodybyvictoria.com> domain name is identical to the complainant’s BODY BY VICTORIA mark).
Even if the <fullterm.com> domain name is comprised of common, descriptive terms, this fact is is not a relevant consideration under Policy ¶ 4(a)(i). Policy ¶ 4(a)(i) analysis needs only to consider whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to such mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”).
Likewise, the fact that Respondent’s registration of the disputed domain name predates Complainant’s rights in the mark is of no consequence under Policy ¶ 4(a)(i). As noted above, this section of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).
Therefore, the Panel concludes that the disputed domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name. Once established, the burden then shifts to Respondent who must demonstrate that it nevertheless has rights or legitimate interests.See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).The threshold for Complainant’s showing is low.SeeStarwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005).
Although the Complaint is almost wholly conclusory, Complainant nevertheless shows that the WHOIS record for the at-issue domain name lists the registrant as an entity other than “FULL TERM.” The listed registrant is “Vertical Axis, Inc. c/o Domain Administrator.”There is thus an inference pursuant to Policy ¶ 4(c)(ii) that Respondent is not commonly known by the disputed domain name.See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Furthermore, Complainant contends and offers evidence that Respondent’s use of the disputed domain name is not made in connection with a bona fide offering of goods or services. If true, the Panel may find that Complainant has failed to make a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).See ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”)Complainant has thus met its slight burden by putting forth a prima facie showing that Respondent lacks rights or interests in respect of the domain name and the burden shifts to Respondent to demonstrate rights or legitimate interests.
Respondent claims that it registered the disputed domain name because of its generic value. Consistent with that claim there is no evidence that Complainant, or anyone else for that matter, had trademark rights in the disputed domain name at the time of the domain name’s registration.See Bacchus Gate Corp. et al v. CKV et al, No. D2008-0321 (WIPO May 20, 2008)(legitimate interest may be established where domain is registered based on “generic value of the word,” as opposed to taking “advantage of a complainant’s rights in that word.”); citing Express Scripts, Inc. v. Windgather Invs. Ltd. et al, D2007-0267 (WIPO Apr. 26, 2007). Given that the disputed domain name is generic, Complainant does not have an exclusive right to the words FULL TERM. Respondent thereby shows that it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Nat. Arb. Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes). We also note that Respondent uses the domain name to reference a portal website and is thereby engaging in a bona fide offering of goods or services under Policy ¶ 4(c)(i).See Eastbay Corp. v. VerandaGlobal.com, Inc., FA 105983 (Nat. Arb. Forum May 20, 2002) (finding that the respondent’s use of the disputed domain name as a portal to a commercial website featuring various advertisements and links constituted a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)).
Given the forgoing, the Panel finds that Respondent has rights and legitimate interest in respect of the disputed domain name.
Registration and Use in Bad Faith
Complainant offers little basis upon which the Panel may find that Respondent registered and is using the domain name in bad faith.Complainant simply asserts – without providing any explanation or factual support whatsoever – that Respondent is creating a likelihood of confusion as to Complainant’s source, sponsorship, affiliation or endorsement of Respondent’s website that is referenced by the disputed domain name. However, the fact that the disputed domain name was registered before Complainant had trademark rights in the FULL TERM mark precludes a finding of bad faith under Policy 4(a)(iii).Since Complainant had no trademark rights in FULL TERM at the time Respondent registered the disputed domain name, it is impossible for Respondent to have had any bad faith intent regarding the registration. See Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith where the respondent registered the domain name in question before application and commencement of use of the trademark by the complainant); see also Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb.Forum May 16, 2007) (finding no bad faith registration or use where the respondent registered the disputed domain name before the complainant began using the mark); see also TB Proprietary Corp. v. Village at La Quinta Realtors, FA 416462 (Nat. Arb. Forum Mar. 28, 2005) (because the respondent’s domain name registration predated the complainant’s trademark filing date, the panel found that “there was no bad faith on the part of Respondent when registering the subject domain name”).
Complainant thus fails to meet its burden of proof regarding bad faith registration and use under Policy ¶ 4(a)(iii).See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii)).
Reverse domain name hijacking
Reverse Domain Name Hijacking equates to using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.See Supplemental Rule 1.A finding of Reverse Domain Hijacking maybe warranted where the Complainant “knew or should have known at the time it filed the Complaint that it could not prove one of the essential elements required by the Policy.”Carsales.com.au Ltd. v.Flanders, D2004-0047 (WIPO Apr. 8, 2004);Futureworld Consultancy, Pty Ltd v. On-line Advice, D2003-0297 (WIPO July 18, 2003). Even if Complainant fails to satisfy its burden under the Policy, it does not necessitate finding reverse domain name hijacking. See ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.”); see also Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001) (noting that a finding of reverse domain name hijacking requires bad faith on the complainant’s part, which was not proven because the complainant did not know and should not have known that one of the three elements in Policy ¶ 4(a) was absent).
In the instant case, Complainant fails to proffer convincing evidence that supports its claim that the Respondent has no rights or legitimate interest in the at-issue domain name. Complainant likewise fails to present evidence that Respondent acted in bad faith in registering and using the disputed domain name. Moreover, there is no effort made in the Complaint to provide any relevant explanation of bad faith, beyond a conclusory one-sentence assertion that mirrors the language of Policy ¶ 4(b)(iv).Under the circumstances, the Complaint is quite deficient in this respect. Complainant knew or should have known that its trademark FULL TERM was registered well after the Respondent registered its domain name corresponding to the generic term FULL TERM. Perhaps Complainant should have also known that it could not prevail without presenting the Panel with at least some explanation tending to support its bare allegation that the Respondent acted in bad faith in registering and using such domain name.
Nevertheless, while the Complainant’s case is weak and its pleading leaves much to be desired, it does not rise to the level necessary for a finding of Reverse Domain Name Hijacking.There is no sufficient evidence to show that the Complainant brought the Complaint in bad faith.The Complainant, through one of its divisions, did have a trademark registration for a mark that is identical to the disputed domain name.Complainant also presented a prima facie showing that Respondent lacked rights or interest in the domain name. Finally, Complainant supplied a screen print of the commercial website to which the disputed domain name resolves. Therefore, the Panel finds that the Complainant’s conduct in filing its Complaint did not amount to Reverse Domain Name Hijacking. See Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
The Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED. A majority of the Panel finds that Complainant did not engaged in Reverse Domain Name Hijacking.
Diane Cabell and Christopher Gibson, Panelists
Paul M. DeCicco, Presiding Panelist
Dated: January 13, 2009
National Arbitration Forum