14th Jan 2014
national arbitration forum
Andtech Corporation v. Portmedia Domains / Portmedia Holdings Ltd
Claim Number: FA1310001523495
Complainant is Andtech Corporation (“Complainant”), represented by Darren S. Rimer of Rimer & Mathewson LLP, California, USA. Respondent is Portmedia Domains / Portmedia Holdings Ltd (“Respondent”), represented by Ari Goldberger of Esqwire.com, New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <andtech.com>, registered with eNom, Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
The Honourable Neil Anthony Brown, QC, Paul Michael DeCicco and Hugues G. Richard as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 9, 2013; the National Arbitration Forum received payment on October 9, 2013.
On October 9, 2013, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <andtech.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. Registrar, eNom, Inc. has verified that Respondent is bound by the eNom, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 10, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 30, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to email@example.com. Also on October 10, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on October 30, 2013.
A timely Additional Submission was received from Complainant and determined to be complete on December 20, 2013.
A timely Additional Submission was received from Respondent and determined to be complete on December 26, 2013.
On January 2, 2014, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown, QC, Paul Michael DeCicco as Panelists and Hugues G. Richard as Chairman.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant Andtech Corporation offers services in connection with the installation of security systems, the installation of computer networking hardware, the installation of antenna systems, the installation of telephone systems, for monitoring security systems, and for controlling building environmental access and security systems. Since its inception, Andtech Corporation has been providing security systems installed for various residential and commercial customers, and offering the necessary alarmed-response security monitoring services which go hand in hand with Complainant’s security systems. Andtech Corporation owns, since December 25, 2012, U.S. trademark Registration No. 4,263,111 for its ANDTECH trademark (See Complaint, Exhibit 1). In addition to the aforementioned registration, Complainant claims that it has been using its trademark for its security-related services since 1990. Andtech Corporation also owns a domain name registration for <andtech.net>, from which it promotes its products and services.
Complainant asserts that the disputed domain name, <andtech.com>, which was registered by the Respondent on September 4, 2003, is confusingly similar to its ANDTECH trademark. Andtech Corporation points out that the disputed domain name is identical to its ANDTECH trademark, with the addition of the “.com” Top-Level Domain.
Complainant maintains that Respondent has no rights or legitimate interests in the disputed domain name <andtech.com>. In addition, it states that the term “Andtech” in its ANDTECH trademark is a coined term used since 1990. Furthermore, there is no dictionary meaning for the term “Andtech” according to Complainant.
Complainant specifies that Respondent is hiding behind the privacy service, Moniker Online Services LLC and uses several business addresses for its business: both the Oregon address along with the Florida address (See Complaint, Exhibits 6 and 7).
According to Complainant, Respondent’s rejection of Complainant’s offer to purchase the disputed domain name for $1,000, and subsequent demand of $20,000 in exchange indicates Respondent’s lack of rights or legitimate interests in the disputed domain name.
Complainant adds that Respondent is not using the disputed domain name to make a bona fide offering of goods or services. Andtech Corporation emphasizes that Respondent has used the disputed domain name since 2004 to attract Internet users to its web portal, and as a result collects revenue from Internet users seeking Complainant’s business.
With respect to the issue of “bad faith” registration and use, Complainant contends that Respondent’s request of $20,000 for the disputed domain name constitutes an attempt “to profit from the sale of the Domain Name to Complainant.” Andtech Corporation reports that Respondent’s website features an offer to sell the domain name to anyone wishing to make an offer. Furthermore, according to Complainant, Respondent registered the disputed domain name for the purpose of redirecting Internet users, seeking Complainant’s business, for its own commercial gain from pay-per-click fees.
Respondent Portmedia first takes aim at Complainant’s trademarks, noting that Complainant does not have rights in the ANDTECH trademark prior to December 25, 2012, date at which Complainant obtained its trademark registration. As such, Respondent claims that Complainant has no registered trademarks that pre-date Respondent’s registration of disputed domain name. Moreover, Portmedia indicates that Complainant has failed to provide the evidence required to show common law rights in a trademark. Such evidence would include proving secondary meaning in the words “and” and “tech”.
Respondent argues that it registered the <andtech.com> domain name on September 4, 2003, because it incorporates a descriptive term composed of two generic and descriptive common words in the English language. It did so after its prior owner did not renew the domain name and it expired, was deleted, and offered for registration again.
Respondent next reports that it has rights and a legitimate interest in the <andtech.com> domain name composed of the two common terms “and” and “tech.” Respondent’s legitimate interest is further bolstered by the fact that it uses the disputed domain name in connection with the provision of related pay-per-click advertising links appearing on the website, for which it receives a share of the revenue.
Respondent maintains that the disputed domain name was not registered in bad faith as the evidence indicates that such registration was consistent with its well-established business practice. Portmedia has registered thousands of domain names incorporating common 3 and 4 letter combinations. In addition, there is a substantial third-party use of the term “Andtech” as suggested by an advanced Google search for “And” and “Tech” yielding 25,300,000 results. In essence, Respondent alleges that domain names comprised of common words are available on a first come first serve basis.
Respondent claims that it did not register the disputes domain name with Complainant’s trademark in mind. It asserts that it had no way of knowing that Complainant existed because Complainant operates only in Southern California and did not obtain its trademark until December 2012.
Respondent also argues that it did not register the <andtech.com> domain name with the intent to sell it to Complainant. Portmedia registered the disputed domain name with the goal of reselling it to another entity looking for easy-to-remember domain names for Internet addresses for their websites. Anyone has the right to register and sell a domain name which was registered based on its generic meaning. Respondent’s use of the link stating “To purchase this domain, click here,” is a standard link appearing on all of Respondent’s hosted websites.
Respondent next takes the panel through the history and intent surrounding its acquisition of the disputed domain name. Respondent specifies that it did not register the disputed domain name to disrupt Complainant’s business as it is not attempting to compete with Complainant or prey on its mark in any way.
Respondent maintains that it did not register the disputed domain name to confuse consumers seeking to find Complainant’s website. Part of Respondent’s business model consists of hosting underdeveloped domain names with domain name parking services which pay a share of the advertising revenue they generate. Respondent then uses the disputed domain name to host pay-per-click advertising links based on a Google advertiser feed on hosted domain names, sharing the advertising revenue with the domain name owners. Respondent points out that the usage of a link offering to sell a domain name is not “use” that would attract Internet users to the site by creating a likelihood of confusion with a mark.
According to Respondent, the use of a privacy service does not support a finding of bad faith, particularly, where there is no evidence that Complainant was unable to contact Respondent or serve it with the Complaint.
Finally, Respondent contends that Complainant should be barred pursuant to the doctrine of laches. Respondent reports that the <andtech.com> domain name was registered ten years before Complainant filed with the USPTO and that Complainant’s silence for over a decade raises the inference that Complainant did not believe it had a claim to the disputed domain name.
C. Additional Submissions
In its Additional Submissions, Complainant asserts that Respondent’s combination of the words “and” with “tech” is not a descriptive term.
Complainant further contends that it secured its trademark rights long before Respondent registered the disputed domain name.
Complainant reports having sold more than $13,000,000 in services since 1990 with more than $5,000,000 of the sales taking place before Respondent registered the disputed domain name in 2003.
Complainant then asserts that Respondent is unable to point to any legitimate use of the ANDTECH mark for its business. Therefore, Respondent does not use the disputed domain name to offer any bona fide goods or services for sale.
On the topic of Complainant’s delay in seeking the disputed domain name transfer, Complainant adds that there has been no prejudice to Respondent.
In its Additional Submissions, Respondent first notes that the dispute concerns a common word domain name and Complainant has sought to obfuscate this.
Respondent is located in Hong Kong and asserts that there is no reason it would have heard of Complainant in Southern California.
As per the Respondent, the disputed domain name was registered and used for ten years before the trademark was registered by Complainant. Therefore, Complainant has no registered trademark to rely on. In the case of its alleged common law trademark rights, Complainant has not shown secondary meaning associated with Complainant exclusively or substantially.
Finally, Respondent contends it registered and used the disputed domain name in good faith long prior to the existence of Complainant’s alleged trademark and as such warrants a finding of reverse domain name hijacking.
The Panel finds that the trademark in which Complainant has rights and the disputed domain name are identical; that Respondent has rights or legitimate interests in the disputed domain name; and that the domain name was not registered and is not being used in bad faith.
Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2)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 Panel finds that the disputed domain name is identical to the ANDTECH trademark. Adding a Top-Level Domain such as “.com” is insufficient to differentiate a disputed domain name from a given mark. See Fed’n of Gay Games, Inc. v. Hodgson, D2000-0432 (WIPO June 28, 2000) (finding that the domain name <gaygames.com> is identical to the complainant's registered trademark GAY GAMES).
The evidence indicates that the registration of the <andtech.com> domain name by Respondent predates Complainant’s alleged rights in the mark. The Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion 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)); 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).”).
Rights or Legitimate Interests
The Panel concludes that Complainant has not sustained its burden of proving that Respondent has no rights or legitimate interests in the disputed domain name. See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)). The Panel is persuaded that Respondent is using the domain name in connection with a bona fide offering of goods and services and is making a fair use of the domain name. See Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
Upon review of all the evidence, the Panel finds that Respondent’s use of a disputed domain name to feature pay-per-click links was a bona fide offering of goods and services. See Multicast Media Networks, LLC v. MDNH, Inc., FA 434268 (Nat. Arb. Forum Apr. 28, 2005) (finding that the respondent’s use of the disputed domain name to operate a pay-per-click website from which Respondent derives revenue was considered a bona fide use within the meaning of Policy ¶ 4(c)(i), especially considering the extended period of such use). As per the reasons detailed above, the Panel finds that Respondent has rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) through its bona fide offering of goods and services under Policy ¶ 4(c)(i).
Registration and Use in Bad Faith
The Panel concludes that the disputed domain name was not registered and is not being used in bad faith. The Complainant’s reliance on Respondent’s alleged use of a privacy service does not convince the Panel that the domain name was registered in bad faith. Nor does the fact that Respondent presumably earns income from its pay-per-click site.
The evidence indicates that Respondent has not registered or used the <andtech.com> domain name in bad faith having not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to 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 respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).
Furthermore, according to the Panel, Respondent’s offer to sell the disputed domain name does not constitute bad faith use and registration. The evidence further indicates that Respondent had no intent to sell the domain name to Complainant under Policy ¶ 4(b)(i) when Respondent registered the disputed domain name. In addition, the standard link “To purchase this domain, click here,” appears on all of Respondent’s hosted websites, and is not used to attract Internet users to the site by creating a likelihood of confusion with the trademark. See JCM Germany GmbH v. McClatchey Jr., D2004-0538 (WIPO Sept. 17, 2004) (holding that the respondent did not violate Policy ¶ 4(b)(i) by attempting to sell the disputed domain name for profit because the respondent did not register the domain name with the intent to sell it to the complainant or one of its competitors). Therefore, the Panel agrees that Respondent’s attempt to sell the disputed domain name was not done in bad faith pursuant to Policy ¶ 4(b)(i).
As per the evidence, there was no attempt on behalf of Respondent to disrupt or compete with Complainant’s business. Respondent uses the disputed domain name to post auto-generated pay-per-click ads for technology related items and does not target Complainant’s business. See PRIMEDIA Special Interest Publ’ns. Inc. v. Treadway, D2000-0752 (WIPO Aug. 21, 2000) (holding that the respondent did not register or use the <shutterbug.com> domain name to disrupt the complainant’s business because the respondent’s contemplated use at the time of acquisition was not necessarily competitive with the complainant’s SHUTTERBUG magazine). As such the Panel finds that Respondent did not register the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
Upon review of all evidence, there is no proof of bad faith registration or use relating to the <andtech.com> domain name because Respondent had no reason to know about Complainant or its alleged common law trademark. Previous panels have found that actual knowledge of a complainant and its mark must exist for a finding of bad faith. See Way Int’l Inc. v. Peters, D2003-0264 (WIPO May 29, 2003) (“As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy. The essence of the complaint is an allegation of bad faith, bad faith targeted at the complainant. For that bad faith to be present, the cybersquatter must have actual knowledge of the existence of the complainant, the trade mark owner.”). The Panel finds that Complainant did not prove that Respondent had knowledge of Complainant or its mark and that Respondent registered or used the domain name in bad faith under Policy ¶ 4(a)(iii).
Doctrine of laches
Having regard to the evidence and submissions and to the fact that the proceeding can be determined on more substantive issues, the Panel declines to find that the doctrine of laches should operate as a defense in this case. See Hebrew Univ. of Jerusalem v. Alberta Hot Rods,D2002-0616 (WIPO Oct. 7, 2002) (“The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defense of laches has no application.”).
Respondent claims that Complainant waited over ten years from the date the disputed domain name was registered to initiate this Complaint and that this delay can indicate that Complainant did not believe that Respondent engaged in abusive domain name registration. However, the elements required to apply the defense of laches have not been met given that no detriment has been shown. For those reasons the Panel declines to apply the doctrine of laches as a defense.
Reverse Domain Name Hijacking
The Panel declines to declare this a case of reverse domain name hijacking, concluding that the Complaint was not brought in bad faith and does not constitute an abuse of the administrative proceeding under paragraph 15(e) of the Rules. 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”). In other words, simply because a complainant does not prevail does not mean that it brought the Complaint in bad faith. After taking all of the evidence into account, the Panel takes the view that Complainant was entitled to take steps to protect its trademarks by filing the Complaint.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <andtech.com> domain name
REMAIN WITH Respondent.
Hugues G. Richard,
The Honourable Neil Anthony Brown, QC,
Paul Michael DeCicco,
Dated: January 14, 2014