12th Sep 2012
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
S.C. ALTOM CONSULTING S.R.L. v. Domain Administrator, PortMedia and Moniker Privacy Services
Case No. D2012-1326
1. The Parties
The Complainant is S.C. ALTOM CONSULTING S.R.L. of Cluj Napoca, Romania, represented by Bulboaca & Asociatii SCA, Romania.
The Respondent is Moniker Privacy Services of Pompano Beach, Florida, United States of America, and Domain Administrator, PortMedia of Hong Kong, China, represented by ESQwire.com Law Firm, United States of America.
2. The Domain Name and Registrar
The disputed domain name <altom.com> is registered with Moniker Online Services, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2012. On June 29, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 3, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. On July 4, 2012, the Center sent an email communication to the Complainant providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 5, 2012.
The Center verified that the Complaint together with the amended 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 the Respondent of the Complaint, and the proceedings commenced on July 6, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 26, 2012. The Response was filed with the Center on July 26, 2012.
The Center appointed Assen Alexiev, Andrew F. Christie and The Hon Neil Brown Q.C. as panelists in this matter on August 27, 2012. 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
The Complainant is a Romanian software testing company, founded in 2008 by a group of test consultants. It provides exclusively software testing services and software testing consultancy for independent evaluation of various client software products. During the last 4 years, the Complainant’s client portfolio has continuously grown and diversified, and the Complainant opened an office in Helsinki in June 2011.
On March 20, 2012, the Complainant submitted before the OHIM its application No. 010743292 for the registration of the combined trademark ALTOM as a Community trademark for services in International Classes 38, 41 and 42. The application was published in the Community Trademarks (CTM) Bulletin No. 2012/092 on May 17, 2012.
The Complainant is the holder of the domain name <altom.ro>, registered on April 22, 2008, and the domain name <altom.fi>, registered on June 1, 2011.
The disputed domain name was registered on May 12, 2002.
5. Parties’ Contentions
According to the Complainant, one of the main goals of the company is to consolidate the testing community and contribute to changing the view on testing. This goal is reflected in the name “Altom”, which the founders have chosen as the name of the company. This name translates as “a different new person”, echoing an old Romanian saying “Ma simt un alt om” (literally, “I feel like a new person”, meaning a positive change).
The Complainant submits that the disputed domain name is identical to a trademark in which the Complainant has rights. Although the Complainant’s ALTOM trademark is not registered yet, it should be considered as a trademark for the purposes of the Policy, in view of the established case law in this regard in disputes under the Policy. Also, the use of the term “altom” for the purpose of distinguishing the Complainant’s services from those of other market players must be considered a “trademark” as required by the Rules. The disputed domain name is identical to the ALTOM trademark, as both include only the word “altom”. As the disputed domain name cannot contain a graphical representation, the graphic element of the ALTOM trademark cannot be taken into consideration in the analysis of the similarity between the disputed domain name and the trademark.
The Complainant contends that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent cannot justify any legitimate interest in respect of the disputed domain name. It is not commonly known or identified as a business or otherwise by the name “altom“, and is not the holder of any trademark or other intellectual property right consisting of, or comprising the name “altom”. A Google site search with the query “altom” produces no result related to the Respondent, who does not carry out any activity using the word “altom”. The only arguable basis for claiming that a domain name owner has legitimate interests in the disputed domain name would be a showing that it has prior rights in the name, or that it was affiliated to an entity having such rights. The use of the disputed domain name by the Respondent is illegitimate and unfair, and is made with the intention of obtaining a commercial gain by selling the disputed domain name for valuable consideration and not with the legitimate intention of using the disputed domain name to host a webpage.
The Complainant alleges that the Respondent has registered and used the disputed domain name in bad faith. The only content of the website at the disputed domain name is an announcement that the disputed domain name is for sale and can be purchased for at least USD 1,500 (as indicated in Annex 9 to the Complaint). The contact form that a person interested in acquiring the disputed domain name has to complete, contains the following disclaimer: “The existence of this form does not constitute an offer to sell this domain, and the owner of this domain is not otherwise stating any intention to sell the domain. By hereby submitting a request for information and/or an offer you are acting as the sole initiator of a possible transaction between you and the owner of this domain.” Persons attempting to make an offer receive the message: “The owner might not respond to offers under 1,500 USD”, and cannot continue the offer submission procedure. But if they offer a price higher than USD 1,500, the offer submission procedure continues. This offer submission procedure is organized by “Domain Brokers” – a website created in order to connect buyers and sellers of premium top level domains. The Respondent’s decision to use the services of a professional domain name sale website is a clear proof of its intention to sell the disputed domain name. The initial price of USD 1,500 that the Respondent asks for the transfer is equal to WIPO fee for submission of a UDRP complaint, which indicates that the Respondent tries to discourage any interested person to submit a UDRP complaint, given the period of time in which a decision on the complaint is rendered.
The Complainant further submits that it has contacted the Respondent in order to purchase the disputed domain name, and the Respondent requested the amount of USD 20,000 for this purchase to take place.
The Respondent has used a privacy service, which the Complainant alleges indicates that it is aware of the illicit nature of its actions and of the legal consequences of such behavior, and is seeking to limit its liability.
According to the Complainant, all the circumstances described above show that the Respondent has developed a predatory and parasitical practice in order to exploit the lack of registration of easy-to-remember domain names for the purpose of reselling them for valuable consideration in excess of its out-of-pocket costs directly related to their registration.
On the basis of the above arguments, the Complainant requests the transfer of the disputed domain name.
The Respondent rejects the allegations of the Complainant and requests the dismissal of the Complaint.
It points out also that the Complaint should be barred under the doctrine of laches, as the Complainant has taken no actions to protect its alleged rights for an extended period of time.
The Respondent asserts that the Complainant does not have a registered ALTOM trademark, having first applied for a trademark in May 2012. Absent a registered trademark that pre-dates the registration of the disputed domain name, the Complainant would need to demonstrate unregistered or common law trademark rights. To establish unregistered or common law trademark rights to a family name such as “Altom”, the Complainant must present evidence of secondary meaning – that consumers identify the term “altom” exclusively, or almost exclusively, with its products or services. The Complainant has not demonstrated any secondary meaning as of the date of this Complaint and did not have any trademark rights when the disputed domain name was registered. Having started its operations in 2008, it is highly unlikely that in just four years the Complainant would have garnered sufficient notoriety to establish itself as exclusively associated with the name “altom”. The Complainant has failed to present any evidence to support that its alleged mark has acquired the secondary meaning necessary under the Policy to establish that it had unregistered or common law trademark rights at the time the disputed domain name was registered or at present.
The Respondent contends that it has rights and legitimate interests in the disputed domain name. It is established under the Policy that the first to register a domain name containing a common personal name has a legitimate interest in it, notwithstanding that it may be identical to a trademark. Like the registration of domain names that contain common words or terms, registration of surnames as domain names is permissible on a first come, first served basis, and such registration establishes the Respondent’s legitimate interest, provided the disputed domain name was not registered with a trademark in mind. The Respondent purchased the disputed domain name because it reflected the common Irish surname “Altom”, to which no party could claim exclusive rights. The name “Altom” is subject to extensive third-party use on the Internet unassociated with the Complainant. The family name “Altom” shows 30,065 times in the online database of United States Census and Voter Lists at “www.ancestry.com”. A Google search for “Altom” reveals approximately 853,000 third-party results with results on the first two pages that include: Altom Transport; Altom Construction; Altom Publishing; Altom Farms; and ten individual profiles with the last name Altom (e.g. Jason Altom, Kelly Altom, and Tim Altom). The Google results confirm that the English speaking world recognizes “Altom” as a common family name subject to extensive third party use unrelated to the Complainant.
As part of its business, the Respondent has registered and owns many surname domain names and thousands of generic word domain names. The Respondent registers common word domain names because they best fulfill the purpose of a domain name – to be easy to remember. Common word domain names therefore serve well as online identities and, as a result, are commercially valuable. The Respondent hosts underdeveloped domain names with domain name parking services which pay a share of the advertising revenue they generate, which is an accepted practice in the industry. The disputed domain name is hosted with a service which places pay-per-click (“PPC”) advertising links based on a Google advertiser feed on hosted domain names, sharing the advertising revenue with the domain name owners. The Respondent has used the disputed domain name to display PPC advertising links related to the general interest topics, and has never placed any links related to the Complainant or its business on its webpage. The links are auto-generated by Google and are constantly changing based on Google’s keyword advertising inventory and user search behavior. The Respondent owns thousands of domain names, and the Google auto-generated links appear on all of them at any time. The Respondent further submits that contrary to the Complainant’s assertion, the above conduct of the Respondent represents a bona fide provision of advertising services and gives rise to a legitimate interest in the disputed domain name.
The Respondent states that it uses the disputed domain name to post advertising links for general topics of interest and links related to job opportunities, and there is no evidence that any links related to the goods and services covered by the Complainant’s mark have ever appeared on the Respondent’s website and that the Respondent’s use of the disputed domain name targets the Complainant in any way.
The Respondent submits that the disputed domain name was registered on May 12, 2002 – six years before the Complainant formed its company. According to the Respondent, this circumstance makes it impossible for the Respondent to have registered the disputed domain name with the Complainant’s trademark in mind and to have had any knowledge of the Complainant, its website, its business name and trademark when it purchased the disputed domain name.
The Respondent further contends that it has not registered the disputed domain name with the intent to sell it to the Complainant, to disrupt the Complainant’s business, or to confuse consumers seeking to find the Complainant’s website. It did not register the disputed domain name to prevent the Complainant from owning a domain name incorporating its trademark. The Complainant has set forth no evidence demonstrating that the Respondent registered the disputed domain name for such reasons.
According to the Respondent, the offering of the disputed domain name for sale is not improper and does not make the use of the disputed domain name illegitimate; a business based on reselling domain names satisfies the legitimate interest prong of the Policy, provided there is no evidence a trademark was targeted by the registrant.
Finally, the Respondent contends that because of the substantial third-party use of the last name “Altom”, the Complainant must produce specific evidence of bad faith to prove that the Complainant’s mark was the reason the Respondent registered the disputed domain name. The Complainant’s argument that bad faith should be inferred because the disputed domain name is for sale and therefore the owner must be using the website in order to obtain an undeserved gain, is not correct. Absent a direct proof that a common term or last name domain name was registered or acquired solely for the purpose of profiting from the Complainant’s trademark rights, there can be no finding of bad faith registration or use of the disputed domain name.
6. Discussion and Findings
The Panel will first deal with the submission of the Respondent that the Complainant should be barred on the ground of laches. The Panel recognizes that there are differing views on whether and to what extent delay by the Complainant in asserting its rights may be a ground for denying the Complaint and/or whether it is a matter to be taken into account in considering the requisite elements set out in paragraph 4(a) of the Policy. In the particular circumstances of this case, the view of the Panel is that the Complaint should be decided on the substantive issues discussed in this decision.
Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(i) the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the Respondent has registered and is using the disputed domain name in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied that the disputed domain name is identical to the name “Altom”, in which the Complainant alleges to have trademark rights. Since the generic top-level domain (gTLD) “.com” is generally disregarded for the purposes of the test of confusing similarity, the only relevant part of the disputed domain name is the section “altom”, and it coincides with the word element of the ALTOM trademark application of the Complainant.
However, the central issue here is whether the Complainant has trademark rights in the term “altom”.
The evidence provided by the Complainant shows that on March 20, 2012, it has filed its application No. 01743292 for the registration of the trademark ALTOM as a Community trademark. The trademark is a combination of the word element “Altom” and a graphical element. The application was published on May 17, 2012 in the Community Trademarks (CTM) Bulletin No.2012/092. The CTM-ONLINE database of the OHIM, available at “http://oami.europa.eu/CTMOnline/RequestManager/en_SearchBasic”, shows that on August 17, 2012, an opposition against all services included in this application was filed by the French company Alstom S.A., based on its prior registered CTM ALSTOM with registration No. 000948729. On August 27, 2012, this opposition was found by the OHIM to be admissible, and the opposition proceedings now appear to have commenced.
The analysis of the above evidence leads the Panel to the conclusion that at present the Complainant does not have registered rights in the trademark ALTOM. The OHIM has not yet taken a decision on the substance of its trademark application, and in view of the opposition proceedings that have commenced against it, it is unclear whether and when the trademark will be registered as a CTM. Therefore, the existence of its trademark application, without more, is insufficient for the Panel to decide that the Complainant has rights in the trademark ALTOM for purposes of the present UDRP proceeding.
Since the Complainant has not established that it has registered trademark rights in the name “Altom”, in order to succeed it needs to satisfy the Panel that it has unregistered or common law trademark rights in this identifier. To do so, the Complainant has to establish that it has actually used the name “Altom” in its business as an identifier of its services, and that this name has become a distinctive identifier associated with the Complainant or its services, and has thus acquired the so-called “secondary meaning”. As summarized in paragraph 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), specific assertions of relevant use of the claimed trademark supported by relevant evidence of its “secondary meaning”, including in respect of the length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition, would be required.
However, the Complainant has not made any such specific assertions about the use of the name “Altom” and has not provided any relevant evidence that this name has become a distinctive identifier of its services in any given geographical area or market. If such evidence existed, it must have been within the knowledge of the Complainant, but it has not produced it before the Panel. Therefore, the Panel finds that the Complainant has not established that it has unregistered or common law trademark rights in the name “Altom”.
For these reasons, the Panel is of the opinion that the Complainant has failed to prove the first element of the test under the Policy, paragraph 4(a). In this situation the Panel is not required to rule on the remaining two elements of the test. Nevertheless, the Panel is of the opinion that the circumstances of the case warrant such a ruling, and it follows below.
B. Rights or Legitimate Interests
The Policy requires the Complainant to make at least a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant makes such a showing, the Respondent has to provide evidence to demonstrate that it has rights or legitimate interests in the disputed domain name. The burden of proof, however, always remains on the Complainant to establish by a preponderance of the evidence that the Respondent lacks rights or legitimate interests in the disputed domain name. See the WIPO Overview, paragraph 2.1.
The Complainant alleges that the Respondent has no rights and legitimate interests in the disputed domain name, as it is not commonly known or identified by the name “Altom”, and is not the holder of any trademark or other intellectual property right consisting of, or comprising the name “Altom”. The Complainant also alleges that the use of the disputed domain name by the Respondent is illegitimate and unfair, and is made with the intention of obtaining a commercial gain by selling the disputed domain name for valuable consideration and not with the legitimate intention of using the disputed domain name to host a webpage. These allegations may be regarded as sufficient to sustain the required prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name.
On its part, the Respondent has asserted that the name “Altom” is a common Irish surname, so no party can claim exclusive rights over it. The registration of surnames as domain names is permissible on a first-come, first served basis, and such registration establishes the Respondent’s legitimate interest, provided the disputed domain name was not registered with a trademark in mind. The Respondent has also contended that as part of its business it has registered many surname domain names and thousands of generic word domain names, and that the disputed domain name is hosted with a service which places PPC advertising links related to topics of general interest, and that no links related to the Complainant or its business have ever been placed on its webpage there. The Respondent has claimed that this conduct represents a bona fide provision of advertising services that gives rise to a legitimate interest in the disputed domain name.
The Panel has carefully considered the arguments of the parties and the evidence submitted by them. Although the Complainant has asserted that the use of the disputed domain name by the Respondent is illegitimate and unfair, and is made with the intention of obtaining a commercial gain by selling the disputed domain name for valuable consideration, the Complainant has neither claimed nor proven that the Respondent has targeted with its conduct the Complainant or its trademark. On the other hand, the argument of the Respondent is that “Altom” is a common Irish surname, although the Panel had not been aware of this.
In view of the above, and in light of the fact that the disputed domain name was registered about six years before the incorporation of the Complainant, the Panel is satisfied that it is more likely than not that the Respondent has not had the Complainant in mind when it chose to register the disputed domain name, and that the motive of the Respondent to register and use the disputed domain name was likely related to it (namely, the term “Altom”) being a common Irish surname.
The Panel also accepts the argument of the Respondent that absent any reference to a third party or to its trademark, the registration of a common surname may give rise to rights and legitimate interests of the Respondent in the disputed domain name. As discussed in the WIPO Overview, paragraph 2.2, in order to find rights or legitimate interests in a domain name based on the generic or dictionary meaning of a word contained therein, the domain name would need to be genuinely used or at least demonstrably intended for such use in connection with the relied-upon meaning, and not to trade off third-party rights in the name. Although it may not be the case that the Respondent is using the disputed domain name for purposes directly connected with its descriptive meaning, this Panel is of the opinion that the use of the disputed domain name for posting PPC advertising links may still be regarded as legitimate in the circumstances as long as it does not aim to exploit the goodwill of the Complainant, for which there is no evidence before this Panel.
In view of the above, and in the lack of any evidence that the Respondent has targeted the Complainant by registering a domain name that consists of a surname, the Panel finds that the Complainant has failed to show that the Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the holder has registered or has 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 the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder 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 the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’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 your website or location or of a product or service on the holder’s website or location.
The Complainant argues that the Respondent has registered and used the disputed domain name in bad faith because the main motive behind the actions of the Respondent was to extract an undue profit from the sale of the disputed domain name.
The evidence brought before the Panel does not lead to the conclusion that the Respondent’s behavior with respect to the disputed domain name is in bad faith. It has not been established that the Respondent has registered the disputed domain name in order to sell it to the Complainant specifically or to trade off the goodwill of the latter. As asserted by the Respondent, the disputed domain name represents a common surname, and it is not conceivable that the Respondent could have known of the Complainant at the time of the registration of the disputed domain name, which took place six years before the incorporation of the Complainant. Instead, it appears that the Respondent has registered the disputed domain name in view of its generic character and without targeting the Complainant. In such circumstances, the Panel does not find it is illegitimate for the Respondent to attempt to sell the disputed domain name to interested third parties.
For these reasons, the Panel finds that the Complainant has failed to establish that the Respondent has registered and used the disputed domain name in bad faith.
For all the foregoing reasons, the Complaint is denied.
Andrew F. Christie
The Hon Neil Brown Q.C.
Dated: September 12.2012
Concurring Opinion with Minority Finding of Reverse Domain Name Hijacking
I agree with the decision but I would have also made a finding of Reverse Domain Name Hijacking in this case.
I have already expressed my views in general terms about this issue and those views may be found in an article at “http://domainnamewire.com/2009/07/13/an-arbitrators-view-of-reverse-domain-name-hijacking/” and in the following decision: Shoe Land Group LLC v. Development, Services c/o Telepathy Inc., NAF Claim No. 1255365. Naturally, all such observations are open to the qualification that all cases must be judged on their merits and in the light of the facts in each individual case.
It seems to me quite clear, in the light of the way that the Rules, paragraph 15(e) and the definition of Reverse Domain Name Hijacking in the Rules, paragraph 1, are drafted, that the issue may be considered even if the Respondent has not asked for such a finding.
In the present case, the facts justify a closer look at whether such a finding should be made and in my opinion it should be made.
The Complainant’s case was hopeless from the beginning and should not have been brought. It may well be that the Complainant and its lawyers were not familiar with the UDRP. But even if that were the case, a cursory examination of the Policy shows that certain basic elements must be proved and if those preparing the Complaint find, as anyone familiar with the facts of this case must have deduced, that it would be impossible to prove those elements, the claim should not be brought.
There was never any prospect of proving any of the three elements in the Policy as the facts clearly do not exist to prove them and the Complainant seemed to acknowledge this by not even attempting to prove them. It did not submit that it had a registered or common law trademark or adduce any facts that, even on the most charitable interpretation, showed that it had such an entitlement. Its case on the other two elements was a series of formal assertions and reliance on the fact that the disputed domain name was for sale. It also overlooked the main point about this case which is that the disputed domain name was registered 6 years before the Complainant was incorporated, requiring that for the Respondent to be liable, even in a layman’s sense, it must have had what were referred to in Success Bank v. ZootGraphics c/o Ira Zoot, NAF Claim No. 1259918 as “psychic powers” to predict that the Complainant would be incorporated several years later.
All of this might be put down to inexperience rather than bad faith. But what has swayed me is that instead of dealing with the evidence, the Complainant chose to attack the Respondent’s bona fides and to allege, before it saw the Response and the Respondent’s version of events, that it was guilty of bad faith and that it was “predatory and parasitical”, apparently because it had registered a domain name that the Complainant, 10 years later, now wanted, but which is for sale at a price it does not want to pay.
Such allegations can always be made, but they should not be made unless there seem on reasonable grounds to be facts to support them. Moreover, those who make such allegations run the risk of an examination of their own bona fides, for allegations of bad faith made without supporting facts are themselves a form of bad faith and that is the feature that the Rules require to be in evidence before a finding of Reverse Domain Name Hijacking may be made. When it is then seen on such an examination that its own case, complete with accusations of bad faith and of other allegedly improper behaviour, is not only without merit but entirely baseless, a finding of Reverse Domain Name Hijacking is open and should be made in an appropriate case. This case, on the totality of the evidence is such a case and it is by no means a borderline one.
I would therefore make a finding that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
The Hon Neil Brown QC
Dated: September 12.2012