12th Jul 2006
National Arbitration Forum
Hydrologic Services, Inc.. v. Name Delegation c/o Steven Sacks
Claim Number: FA0605000707617
Complainant is Hydrologic Services, Inc. (“Complainant”), represented by Deborah A. Basile, of Doherty Wallace Pillsbury Murphy P.C., One Monarch Place, 1414 Main Street, Suite 1900, Springfield, MA 01144-1900.Respondent is Name Delegation c/o Steven Sacks (“Respondent”), represented by Ari Goldberger, of ESQwire.com Law Firm, 35 Cameo Drive, Cherry Hill, NJ 08003, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hysr.com>, registered with Nameview, Inc.
The undersigned certifies 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.
Mr. David E. Sorkin, Mr. Jeffrey M. Samuels and the Honorable Charles K. McCotter, Jr.(Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 16, 2006; the National Arbitration Forum received a hard copy of the Complaint on May 22, 2006.
On May 18, 2006, Nameview, Inc. confirmed by e-mail to the National Arbitration Forum that the <hysr.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 May 30, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 19, 2006 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on June 19, 2006.
On June 26, 2006, an Additional Submission was received from Complainant in compliance with Supplemental Rule # 7.
On June 30, 2006, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Mr. David E. Sorkin, Mr. Jeffrey M. Samuels and the Honorable Charles K. McCotter, Jr. (Ret.) as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
As a U.S. Trademark owner, the Complainant has a right to exclusive use of the mark HYSR in the class of goods and services.Respondent is using the <hysr.com> domain name, to operate a website that features links to various competing and non-competing websites and services from which Respondent presumably receives referral fees.The use of a confusingly similar domain name to divert Internet users to a website not associated with Complainant is neither a bona fide offering of goods and services nor a legitimate noncommercial or fair use.In diverting Internet users to Respondent’s website for the purpose of commercial gain, Respondent has demonstrated bad faith in registering the <hysr.com> domain name.
Complainant’s mark is a “design plus words mark.”The trademark states that the design includes a “plain single line rectangle[e]” along with the letters HYSR.The overall impression of this mark is the composite logo with the rectangle, and not simply the letters HYSR.The mere letter string HYSR in a domain name is easily distinguished from this design.Accordingly, the <hysr.com> domain name, which does not include the rectangle design, is not identical or confusingly similar to Complainant’s mark.
Respondent contends rights and a legitimate interest in the domain name because it incorporates the simple four-letter combination HYSR, which is an acronym for a type of rocket known as HYSR, or HYbrid Sounding Rocket or HYbrid fuel Sounding Rocket.
Respondent has not used the <hysr.com> domain name in connection with the goods/services marketed by Complainant.No links related to Complainant’s goods or services have ever appeared on the website.Respondent resides outside of the United States and cannot be charged with constructive knowledge of a foreign trademark under the UDRP.Complainant and its mark are not well known in the U.S. or elsewhere.
Anyone is entitled to register a domain name incorporating a simple combination of letters and the first to register such a domain name has a legitimate interest in it, provided it was not registered with the purpose of selling to the complainant, disrupting its business, preventing it from acquiring a domain name incorporating its mark, or to confuse others.Complainant does not have exclusive rights to this four-letter combination.
Absent direct proof that a common term domain name was registered or acquired solely for the purpose of profiting from Complainant’s trademark rights, there can be no finding of bad faith registration or use.In order to prove bad faith Respondent must have been aware of Complainant when it registered the disputed domain name.
Respondent had no knowledge of Complainant or its mark when it registered the <hysr.com> domain name.Respondent is not a resident in the U.S. and there is no evidence that Respondent could have, or should have, known of Complainant when it registered the disputed domain name.
C. Additional Submissions
The services which Respondent provides are unknown.Respondent’s <hysr.com> domain name directs Internet users to a website that features a search engine.The search engine features links to various websites some of which compete with Complainant.An inference is raised that Respondent commercially benefits from the misleading domain name by directing Internet users to the search engine website.Respondent’s Response does not provide a specific description of the services provided by <hysr.com>.
The disputed domain is <hysr.com>.The trademark is HYSR enclosed by a plain single line rectangle, a composite logo.
Respondent has not explained why it uses HYSR which it states is an acronym for “hybrid sounding rocket.”The domain name <hysr.com> has nothing to do with rockets.
Bad faith is established by diversion of Internet users to a commercial website unrelated to Complainant’s business.
HYSR is not a descriptive word.
It is irrelevant that Complainant is not famous and that Complainant does not generate revenue from a large segment of consumers.
Respondent was not authorized or licensed to register or use the domain name incorporating Complainant’s trademark.Respondent is not commonly known by the disputed domain name.
Complainant’s mark and the disputed domain name are not identical or confusingly similar, because Complainant’s mark is a “design” plus words mark.Use of a domain name in connection with a pay-per-click search engine constitutes use in connection with a bona fide offering of goods/services.
Respondent contends that Complainant, in its Additional Submission, has abandoned its argument that Respondent had constructive knowledge of its mark when it registered the disputed domain thereby negating any claim of bad faith.Respondent says that it registered the disputed domain name because it is a four-letter combination to which no party enjoys exclusive rights.
The Panel has not considered the parties’ additional submissions which primarily consist of arguments raised from their initial submissions.There are no “exceptional circumstances” in this case that would warrant supplementation.Forum’s Supplemental Rule 7; see, e.g., Reichert, Inc. v. Patrick Leonard and Pat Leonard Surgical, Inc., FA 672010 (Nat. Arb. Forum May 24, 2006).
Complainant is a consulting company specializing in surface water hydrology and water resource management and planning.Complainant is the owner of U.S. Trademark Registration No. 2,397,530 for HYSR Design (Registration No. 2,397,530 issued Oct. 24, 2000) in connection with these services.Complainant is not well known on the Internet.
Respondent registered the <hysr.com> domain name with Nameview. Inc. on March 5, 2003.Respondent hosts the disputed domain name on a website that provides sponsored links and search results.The sponsored links are provided by Yahoo Search Marking and Respondent receives a revenue share when sponsored search results are clicked by users. The site features links to competing and non-competing web sites and services.
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.
As Complainant has failed to satisfy the third element of registration and use in bad faith, it is unnecessary for the Panel to address the first two elements.
Registration and Use in Bad Faith
Respondent claims that it registered the <hysr.com> domain name because it was an available four-letter combination to which it believed no individual or entity could have exclusive rights.Respondent denies having knowledge of Complainant or its design plus HYSR trademark when it registered the domain name.Respondent claims that it did not register the domain name with the intent to disrupt Complainant’s business, to confuse consumers seeking to find Complainant’s web site, or to prevent Complainant from owning a domain name incorporating its alleged trademark.In the view of the Panel, these self-serving claims are nonetheless plausible.
Given the brevity of the disputed domain name, the obscurity of the mark, the geographic locations of the parties, and the nature of the parties’ activities, it would not be reasonable to infer that Respondent had actual knowledge of Complainant or its mark when it registered the disputed domain name. See Jet Marques v. Vertical Axis, Inc., D2006-0250 (WIPO May 26, 2006) (a finding of bad faith registration requires that respondent registered the domain name with complainant’s trademark in mind); see also Futureworld Consultancy Pty Ltd. v. Online Advice, D2003-0297 (WIPO July 18, 2003) (“There is no evidence, whatsoever, that Respondent registered the domain name with Complainant in mind or that she even had heard, or should have heard of Complainant.”); see also Lumena s-ka zo.o. v. Express Ventures LTD, FA 94375 (Nat. Arb. Forum May 11, 2000) (finding no bad faith where the domain name involved a generic term, and there was no direct evidence that Respondent registered the domain name with the intent of capitalizing on Complainant’s trademark interest); see also Ultrafem Inc. v. Royal, FA 97682 (Nat. Arb. Forum Aug. 2, 2001) (“In the absence of an intent to capitalize on the Complainant’s trademark interest, the Complainant cannot assert an exclusive right over a domain name that is a common generic term.”).
Complainant has failed to sustain its burden of proof under Policy ¶ 4(a)(iii) that Respondent registered the disputed domain name in bad faith.
Complainant having failed to establish the element required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the Complaint be DISMISSED.
David E. Sorkin, Panelist
Jeffrey M. Samuels, Panelist
Honorable Charles K. McCotter, Jr. (Ret.), Panel Chair
Dated: July 12, 2006
National Arbitration Forum