2nd Aug 2002
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wideport.com Inc. v. Deatherage Web Development
Case No. DBIZ2002-00249
- The Parties
Complainant is Wideport.com Inc., of 1100-120 Eglinton Avenue East Toronto, Ontario, Canada, represented by Mr. Steve Curry, its President and CEO.
Respondent is Deatherage Web Development of HC 73, Box 74-A Drury, Montana, United States of America, represented by Ari Goldberger Esq., of the ESQwire.com Law Firm of Cherry Hill, New Jersey, United States of America.
- The Domain Name and Registrar
The disputed domain name name is <411.biz> and the Registrar is OnlineNIC, Inc. dba China-Channel.com of San Francisco, United States of America.
- Procedural History
This is an administrative proceeding in accordance with the Start-up Trademark Opposition Policy for ".BIZ", adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001, ("the STOP"), the Rules for Start-up Trademark Opposition Policy for ".BIZ", adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001, ("the STOP Rules") and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for ".BIZ" ("the WIPO Supplemental STOP Rules").
The Complaint was filed at the WIPO Arbitration and Mediation Center ("the Center") on May 21, 2002. Its receipt was acknowledged on May 23, 2002. On June 10, 2002, the Center formally dispatched a copy of the Complaint by post/courier to Respondent at the address as recorded with the Registrar and by email. The Center included with that material a letter dated June 10, 2002, containing notification of the commencement of this administrative proceeding, with a copy of the Complaint to Complainant, the Registrar and ICANN.
The last day specified by the Center for a Response was June 30, 2002. At Respondent’s request, the Center granted an extension of time until July 7, 2002. A Response was filed on July 5, 2002, and its receipt was acknowledged by the Center on July 16, 2002. On July 25, 2002, the Center notified the parties of the appointment of Alan L. Limbury as panelist, Mr. Limbury having submitted a Statement of Acceptance and Declaration of Impartiality and Independence. That day the Center transmitted the case file to the Panel and notified the parties of the projected decision date of August 8, 2002.
The Panel is satisfied that the Complaint complies with the requirements of the STOP Rules and the WIPO Supplemental STOP Rules; the Center discharged its responsibility under paragraph 2(a) of the STOP Rules to employ reasonably available means calculated to achieve actual notice to Respondent of the Complaint; a Response was filed within the time prescribed by the Rules, as duly extended by the Center and the Panel was properly constituted.
The language of the proceeding was English.
- Factual Background
On February 1, 2000, Complainant launched an online directory service at the web site <411.ca> to deliver white and yellow page information for Canada and the United States.
On October 17, 2001, Complainant became the registered proprietor of Canadian trademark TMA337217 for the word "411" in respect of "built in vacuum systems, i.e. a motor which creates a vacuum, at the end of a pipe, which is built into a building, and has various outlets throughout the building; to these outlets can be attached extensions which are used to vacuum the building". This mark had originally been registered on February 19, 1988, by a company carrying on business as Budd Vacuum Company and was assigned to Complainant on September 20, 2001.
Respondent’s owner, Mr. Philip Deatherage, is a website developer who has been developing websites for about 5 years. Respondent became the registrant of the disputed domain name on March 27, 2002. Respondent also registered the domain names <my411.biz> and <my411.us>.
On May 3, 2002, Mr. Curry sent the following e-mail message to Mr. Philip Deatherage:
I noticed that you were successful in registering the domain 411.biz. This is a great name, and a hard one to get. We also had submitted pre-registration requests, but were obviously unsuccessful in getting the domain.
Being in the directory services business with 411.ca, we are looking for ways to expand our brand into the US market, and would like to find a way to use 411.biz to accomplish this objective.
This is a serious inquiry; we have been in business for 3 years, and are prepared to discuss your terms. Please let me know how we might be able to use, or acquire the rights to 411.biz. Thanks for your consideration"
On May 8, 2002, Mr. Curry sent to Mr.Deatherage the following e-mail:
Any thoughts from our conversation on Monday regarding lease vs buy options for 411.biz? thanks … Steve"
Mr. Deatherage replied as follows:
I have been trying to evaluate what it is worth to our company and what we could make from it if we kept it. We feel this domain could be very valuable to our company.
If we were going to sell it we would want to get close to $100,000 for it - as we don’t really wish to sell it – but will do if we are offered enough.
For a lease we could do the following:
For a 1 year lease -- $1,200 a month
For a 5 year lease -- $1,100 a month
For a 10 year lease -- $1,000 a month
These prices are not set in stone --- PLEASE MAKE AN OFFER on either buy or lease.
According to Mr. Deatherage’s declaration in these proceedings, which Complainant has not sought to deny:
"After I received the complaint in this matter, I called Mr. Curry to complain about his underhanded tactics. He admitted that he was not really interested in buying the domain name, but just wanted to trick me to make it look like I was violating the STOP Policy."
- Parties’ Contentions
Complainant relies on registered Canadian trademark TMA337217 for the word "411", which was originally registered on February 19, 1988, and on a common-law trademark based on the operation of the web site <411.ca>.
The domain in question is identical to the trademarks, both registered and common-law, for "411" which are owned by Complainant.
The numeric sequence "411" in North America is commonly known, and used for, the delivery of directory service information. All local telephone companies in both Canada and the United States support the delivery of such information by calling "411". Since Respondent is within the United States, it was well aware of the use of such services and cannot credibly argue that it was unaware of the use of "411" in this manner at the time of registering <411.biz>.
Complainant does not claim to have exclusive rights to the use of "411", since other trademarks exist within certain jurisdictions. However, it does claim to have a legitimate interest in this domain based on the above-mentioned trademarks and based on the fact that the online directory service business, under the domain <411.ca>, is the primary business of Complainant and has been for over 2 years.
Respondent has no such legitimate claim to the domain <411.biz>. Its primary business is web site design and development and, to the best of Complainant’s knowledge, has no prior connection with delivery of directory service information. Further, to the best of Complainant’s knowledge, Respondent has no trademarks associated with "411" and has no other domain names associated with this type of service. Respondent did not file a STOP claim for <411.biz> with the registry for this domain when the opportunity was available to it in the year 2001.
Respondent registered this domain in bad faith. Respondent cannot credibly claim it was unaware of the existence of trademarks for the term "411". This service is pervasive, and is widely known within both Canada and the United States as a directory service. Since Respondent clearly knew, at the time of registration, that this service was used, advertised and protected by trademarks, it registered the domain with the purpose of reselling it to one of such companies.
Respondent has indicated, both in email and telephone communication, the desire to sell or rent the domain <411.biz> to Complainant. In its email dated May 8, 2002, Respondent asked for either $100,000 or an ongoing lease payment of between $1,000 - $1,200 per month. While Respondent makes reference to keeping the domain and "using it", this is a commonly used ploy by domain speculators to drive up the price of the domain they are selling. This language, and any other similar language, is simply "enlightened disinterest" on behalf of the seller, and not a true intention to set up a completely new business for this web development company.
Respondent has also registered other .biz domains, which support a pattern of domain speculation. Of particular interest is the domain <altavista.biz> which, with the exclusion of the domain extension, is identical to <altavista.com>, a widely know search portal. The term AltaVista is a registered trademark of AltaVista Inc., which is majority owned by CMGI Inc. This is another example of Respondent registering a domain which is not an English word but rather a registered trademark of another firm. This is a pattern of behavior by Respondent. It clearly registered domains primarily for the purpose of reselling them to the legitimate trademark owners.
Respondent registered the domain <411.biz>, primarily for the purpose of selling or renting this domain to one of the trademark holders within North America. Respondent cannot credibly assert that it was unaware that such trademarks existed prior to its registration of this domain. Further, it has never, to the best of Complainant’s knowledge, offered any service under the "411" label, description or branding. It has indicated a desire to sell or rent this domain, and has shown a propensity for registering other domains which are also registered trademarks. At the time of filing this STOP claim, Respondent has not made any use of the domain <411.biz>. Any efforts to do so subsequent to the filing of this claim are simply a response to this STOP filing and do not indicate a legitimate use of the domain <411.biz>.
There is no basis for transferring the disputed domain name to Complainant. As Complainant readily admits in the Complaint, 411 is "commonly known, and used for, the delivery of directory service information." This is precisely the use to which Complainant admits it puts its so-called "411" trademark. It is undisputed that Complainant uses its 411 mark for a blatant generic or descriptive use.
The idea of Complainant claiming exclusive rights to a domain name containing this common word is arrogant, absurd, and an abuse of this administrative process. Make no mistake. Complainant is engaged in Reverse Domain Name Hijacking. But, worse, Complainant has misled this panel with its Complaint, which is based on a bogus trademark. The trademark is for "built-in vacuum systems." Of course, Complainant could never get a trademark registered for "411" for a directory service. Complainant simply acquired this trademark from its prior owner to help prop up its frivolous claim to Respondent’s domain name. The trademark was acquired under false pretenses, and is subject to cancellation on the grounds that it is clearly descriptive, since this violates the rules of the Canadian Intellectual Property Office.
Even if Complainant had a bona fide trademark for 411, it would have no enforceable rights under the STOP Policy to this common word. "411" is a generic term, used in a generic sense for Complainant’s online white and yellow page directory service. A generic mark provides its owner with no rights under the Policy. Registrants must be free, under all circumstances, to use a common term in the language in order to describe goods and services. This is not only applicable to domain name disputes, but it is a core principle of trademark law. Complainant admits this in the Complaint stating that it recognizes it does not have exclusive rights to the term.
Complainant’s deception does not stop with its bogus vacuum cleaner trademark. Complainant further misrepresents its communications with Respondent, creating the false impression that Respondent made an unsolicited offer to sell it the Disputed domain name when in fact Complainant was the one that initially approached Respondent with what it stated was a "serious inquiry," and gave further assurances of good faith in subsequent phone conversations. Little did Respondent know that Complainant was simply setting a trap as part of its reverse domain name hijacking scheme. Only after it filed this Complaint did Complainant own up to its sneaky charade, admitting to Respondent that this was its plan all along.
Contrary to the allegations in the Complaint, Respondent has a legitimate interest in the disputed domain name. <411.biz> incorporates the common word "411," and Respondent registered it for an online business directory. Respondent will generate revenues through advertisements and affiliate arrangements. Respondent clearly has a legitimate interest in the disputed domain name. There is absolutely no evidence of bad faith on the part of Respondent. Respondent never even heard of Complainant prior to receipt of Complainant’s IP claim, and Complainant has offered no evidence that the disputed domain name was registered with Complainant in mind – to sell it to Complainant, to disrupt Complainant’s business, to prevent it from reflecting its mark in a domain name, or to confuse consumers. Complainant’s trademark is wholly bogus and Respondent felt that it had every right to use a domain name containing a simple generic term. Complainant alleges that Respondent’s registration of other .biz domain names is an indication of bad faith, but those domains, including <altavista.biz>, are descriptive terms, and there is no evidence that any were registered in bad faith.
Accordingly, the Panel should deny the Complaint and find that Complainant has engaged in reverse domain name hijacking by bringing forth a case based on a flimsy claim to a generic word domain name, a bogus trademark, and a misleading allegation of bad faith.
The Response continued in much detail. The above is a summary.
- Discussion and Findings
STOP Rule 15(a) requires this Panel to decide this Complaint on the basis of the statements and documents submitted and in accordance with the STOP, the STOP Rules and any rules and principles of law that it deems applicable.
Complainant is required by paragraph 4 (a) of the STOP to prove each of the following three elements: --
(a) the domain name is identical to a trademark or service mark in which Complainant has rights;
(b) Respondent has no rights or legitimate interests in respect of the domain name; and
(c) the domain name has been registered or is being used in bad faith.
Rights in a trademark
The dictionary.com definition of "411" is "n. slang Information or knowledge, especially when acquired by word of mouth. [From 411, a telephone number for telephone directory information]" (Response, Ex. 4).
Under Canadian trademark law, a word that clearly describes a feature of the applicant’s wares or services may not be registered. (Response, Ex. 11).
Clearly Complainant would not have been entitled, as applicant, to register the mark 411 for use in connection with its online white and yellow pages directory services. Instead it acquired the mark by assignment from a company operating in the entirely different field of built-in vacuum systems, in respect of which the mark had originally been registered in 1988. Thus did Complainant’s name come to appear on the Canadian trademark register as proprietor of the 411 mark. There is no evidence of use of the mark by Complainant in relation to vacuum systems. The only evidence is of use in relation to directory services.
Nevertheless, unless and until that mark is cancelled, should any such proceeding be brought, the Complainant would appear to this Panel to be entitled to prevent others in Canada from using the mark in relation to built-in vacuum systems and thus to have some rights in the registered mark 411.
As to its claim to common law rights, Complainant has produced no evidence of secondary meaning acquired through its use of the mark 411 as part of its domain name <411.ca> and, indeed, Complainant expressly disclaims exclusivity in that mark.
The disputed domain name is clearly identical to Complainant’s registered trademark 411, the suffix ".biz" being inconsequential. Complainant has established this element.
Respondent’s evidence of use of the disputed domain name in association with directory services offered on its other web sites in not persuasive since that evidence was of use after these proceedings were commenced. However, because the word 411 is a generic term in the field of directory information, Complainant cannot have exclusive rights to it. Respondent has a legitimate interest in the disputed domain name by virtue of being the first to register it: Energy Source Inc. v. Your Energy Source, (NAF Case 96364); Ultrafem, Inc. v. Warren R. Royal, (NAF Case 97682); Coming Attractions, Ltd. v. Commingattractions.com, (NAF Case No. FA 94341). Complainant has failed to establish this element.
Complainant has not sought leave to file a supplementary submission to deny that it set out to trick Respondent into appearing to have registered the disputed domain name in bad faith. The Panel finds there is no credible evidence of bad faith on the part of Respondent. Complainant has failed to establish this element.
Reverse domain name hijacking
STOP Rule 1 defines reverse domain name hijacking as "using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name." See also STOP Rule 15(d). To prevail on such a claim, Respondent must show either that Complainant knew of Respondent’s unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith: Sydney Opera House Trust v. Trilynx Pty. Ltd., WIPO Case No. D2000-1224 and Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151 or that the Complaint was brought in knowing disregard of the likelihood that the respondent possessed legitimate interests:Smart Design LLC v. Hughes, WIPO Case No. D2000-0993.
Factors relevant to this issue are:
(a) Complainant’s acquisition by assignment of the registered trademark 411 in relation to a field totally foreign to its own activities;
(b) the timing of that acquisition (during the application process for <.biz> domain names);
(c) Complainant’s admission it does not have exclusivity in the word 411 and that it is in widespread use; and
(d) Complainant’s admission of its attempt to trick Respondent.
These factors all point towards awareness on the part of Complainant, before it filed the Complaint, that it could not register 411 as a mark in relation to its own activities, nor prove distinctiveness; that the acquisition by assignment was a manoeuvre to enable it to launch STOP proceedings should the disputed domain name not be allocated to it; and that 411 was a generic term that anybody could legitimately register as a domain name. Complainant’s admission of its attempted trick points towards bad faith on its part.
The Panel finds the Complaint was brought in an attempt at reverse domain name hijacking.
Pursuant to paragraphs 4(i) of the STOP and 15(d) of the STOP Rules, the Panel finds that this dispute is not within the scope of paragraph 4(a) of the STOP and accordingly the Complaint is dismissed.
Alan L. Limbury
Dated: August 2, 2002