8th Nov 2007

WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Geometric Software Solutions Co. Ltd. v. Telepathy Inc.

Case No. D2007-1167

 

1. The Parties

The Complainant is Geometric Software Solutions Co. Ltd., Mumbai, India, represented by Ruoss Vögele Partner, Switzerland.

The Respondent is Telepathy Inc., Washington DC, United States of America, represented by ESQwire.com Law Firm, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <geometric.com> is registered with Moniker Online Services, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2007. On August 10, 2007, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On August 10, 2007, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 20, 2007. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 August 27, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response September 16, 2007. The Response was filed with the Center September 12, 2007.

The Center appointed Alistair Payne, Richard W. Page and David E. Sorkin as panelists in this matter on October 25, 2007 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 company specializing in computer aided design software. The Complainant operates primarily in India and through a subsidiary company operating in the United States of America named Geometric Software Solutions Inc. The Complainant has a registered device trademark for GEOMETRIC SOFTWARE SOLUTIONS in India since 2005 and in the United States of America since 2002. The Complainant has been using the trademark GEOMETRIC SOFTWARE SOLUTIONS in India since at least 1996.

The Respondent registers common words as domain names for development and resale. The Respondent apparently registered the Disputed Domain Name in January 20001. The Complainant has, prior to this Complaint, offered to purchase the Disputed Domain Name for $40,000. The Respondent refused this offer and countered with an offer to sell for $150,000. This offer was refused by the Complainant.

The Complainant is seeking the transfer of the Disputed Domain Name <geometric.com>.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Disputed Domain Name is identical with the dominant feature of its trademark for GEOMETRIC SOFTWARE SOLUTIONS. The Complainant also contends that the Disputed Domain Name is, at the very least, confusingly similar to its trademark. The Complainant asserts that even if the GEOMETRIC element of its trademark is considered generic or descriptive, in general, it is not generic in reference to the Complainant’s services. This, the Complainant contends, is due to the reputation it has established under the name “Geometric”. The Complainant contends that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant notes that the Respondent has not provided any evidence that it had demonstrable plans to use the Disputed Domain Name when it was registered. The Complainant also notes that the Respondent is not commonly known by the Disputed Domain Name and finally, the Complainant asserts that the Respondent is not using or making preparations to use the Disputed Domain Name for a bona fide offering of goods or services.

The Complainant contends that the Disputed Domain Name was registered and is being used in bad faith and they deny the Respondent’s allegations of reverse domain name hijacking. In particular the Complainant points to the Respondent’s previous record of having its registered domain names transferred to legitimate trademark holders in support of its contention that the Disputed Domain Name was registered in bad faith. The Complainant asserts that the Respondent has registered the domain name for the purpose of selling, renting or otherwise transferring it for fees in excess of the documented out-of-pocket costs demonstrating bad faith use.

B. Respondent

The Respondent denies that it is a cybersquatter and contends that it runs a legitimate business registering common words as domain names. The Respondent notes that the Disputed Domain Name is not identical to the Complainant’s trademark GEOMETRIC SOFTWARE SOLUTIONS. Furthermore, the Respondent asserts that the Disputed Domain Name cannot be confusingly similar to the Complainant’s trademark because the word “Geometric” is entirely descriptive and generic and there is substantial third party use of the word on the Internet. The Respondent asserts rights and legitimate interests in the Disputed Domain Name based on the generic nature of the word “Geometric”. They contend that the placement of pay-per-click advertisement links is a bona fide offering of goods and services because the Disputed Domain Name constitutes a common generic word.

The Respondent denies that it registered or used the Disputed Domain Name in bad faith. The Respondent notes that its registration of <geometric.com> predates the registration of the Complainant’s trademark registrations. The Respondent contends that any use by the Complainant of the word “Geometric” prior to 2000 was purely as a trade name granting them no common law rights. Furthermore, the Respondent asserts that they had no knowledge of the Complainant’s use of the name “Geometric” when they registered and used the Disputed Domain Name. The Respondent contends that the Complainant is abusing the Policy by taking this action. They contend that the action is wholly without merit and a finding of reverse domain name hijacking is warranted.

 

6. Discussion and Findings

If the Complainant is to succeed, it must prove each of the three elements referred to in Paragraph 4(a) of the Policy, namely that:

i. the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights;

ii. the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

iii. the Disputed Domain Name has been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has provided evidence of ownership of trademark registrations in India since 2005 and in the United States of America since 2002 for GEOMETRIC SOFTWARE SOLUTIONS. The Panel accepts that the dominant feature of the Complainant’s GEOMETRIC SOFTWARE SOLUTIONS trademark is the word “Geometric” as presented in larger bold font and as such the Respondent’s Disputed Domain Name is not identical to the Complainant’s trademark but it is confusingly similar to it.

Accordingly, the Panel is satisfied that the Complainant has fulfilled Paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainants must show a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Panel, as noted above, accepts that the Complainant does have rights in the trademark GEOMETRIC SOFTWARE SOLUTIONS. However, the difficulty for the Complainant is that the Respondent apparently registered the Disputed Domain Name on January 11, 2000, prior to the Complainant’s trademark registrations in India and the United States of America. Furthermore, the United States of America based Respondent registered the Disputed Domain Name less than 1 month after the date in which the Complainant alleges that it began operating under the name in the United States of America. The Complainant notes that the GEOMETRIC SOFTWARE SOLUTIONS trademark was first used in commerce in the United States of America in December 21, 1999. The Complainant has not provided the Panel with sufficient evidence prior to this date of a significant reputation in the mark or of any sufficient use of the trademark that may have put the Respondent on notice of the Complainant’s rights.

As the word “Geometric” is descriptive and generic it can be used by any third party in the absence of prior rights in the word or provided evidence of a reputation attached to that word for particular goods or services. On the balance of probabilities and in the absence of sufficient evidence to the contrary, the Respondent’s registration of the Disputed Domain Name was made in circumstances where it did not have notice of any competing or pre-dating rights owned by the Complainant.

However, because the Panel’s finding as to bad faith under Paragraph 4(a)(iii) is dispositive of the present matter, the Panel declines to reach a conclusion as to rights or legitimate interests under Paragraph 4(a)(ii)

C. Registered and Used in Bad Faith

For the reasons set out above the Panel does not agree with the Complainant’s contention that the Respondent must have been aware of the Complainant’s rights when it registered the Disputed Domain Name. Consequently, the Panel cannot infer that the Respondent registered the Disputed Domain Name in bad faith and it is, therefore, unnecessary to discuss subsequent use of the Disputed Domain Name.

The Complainant has therefore not satisfied the requirements of Paragraph 4(a)(iii) of the Policy.

D. Reverse Domain Name Hijacking

The Complainant has provided evidence that it was trading under the name “Geometric Software Solutions” in 1996, in India and in 1999 in the United States of America. On this basis it is possible that the Complainant genuinely believed that it had rights in the Disputed Domain Name. The Complainant had established that it used the word “Geometric Software Solutions” prior to the registration of the Disputed Domain Name in India. Therefore, the Complaint partly satisfied the requirements of the Policy. The Complainant’s evidence failed because it was not sufficient to establish that the Respondent had notice of this use when it registered the Disputed Domain Name. The Panel, therefore, does not believe that the Complaint was wholly without merit. On the balance of probabilities, therefore, the Panel does not believe that this was a case of reverse domain name hijacking.

 

7. Decision

For all the foregoing reasons, the Complaint and the allegations of reverse domain name hijacking are denied.


Alistair Payne
Presiding Panelist


Richard W. Page
Panelist (Dissenting)


David E. Sorkin
Panelist

Dated: November 8, 2007


DISSENTING OPINION

Apparently Respondent engages in the business strategy of choosing words or phrases commonly used in commerce, registering domain names using these words and phrases, then embarking on a strategy of maximizing the value of the domain names for sale to other businesses. Having registered domain names which incorporate these carefully chosen words or phrases, Respondent “parks” them with a third party who compensates Respondent on a pay-per-click basis. The third party then runs proprietary software incorporating algorithms designed to maximize the hits through Respondent’s parked domain names and to raise the profile of the related websites on the Internet to attract the attention of businesses interested in the affected line of commerce.

The intent of Respondent upon registration of the Disputed Domain Name appears to be a conscious strategy to register the domain name for eventual sale to a potential complainant or competitor, to prevent a trademark registrant from reflecting its name in a corresponding domain name, to disrupt a competitor’s business or to attract Internet users for commercial gain by confusing use of the domain name. Under these circumstances, paragraphs 4(b)(i)-(iv) of the Policy arguably apply and are prescribed criteria for bad faith under the Policy.

The majority opinion concludes that the Respondent did not have actual knowledge of this specific Complainant at the time Respondent registered the Disputed Domain Name and that any subsequent actions of Respondent are irrelevant. No consideration has been given to the artful strategy underlying Respondent’s activities.

Unfortunately, I cannot join my distinguished colleagues in approving Respondent’s actions without an analysis focusing on the underlying strategy.


Richard W. Page
Panelist (Dissenting)


1 According to the WHOIS data for the disputed domain name, it has a “Creation date” of January 11, 2000.