17th Nov 2004
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Builder’s Best, Inc. v. Yoshiki Okada
Case No. D2004-0748
1. The Parties
The Complainant is Builder’s Best, Inc. of Jacksonville, Texas, United States of America, represented by McGarry Bair PC of Grand Rapids, Michigan, United States of America.
The Respondent is Yoshiki Okada of Seo-gu, Busan, Republic of Korea, represented by ESQwire.com Law Firm of Cherry Hill, New Jersey, United States of America.
2. The Domain Name and Registrar
The disputed domain name <nnn.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 15, 2004. On September 15, 2004, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On September 15, 2004, eNom transmitted by email to the Center a partial verification response confirming that the language of the proceedings is English and that the domain name would remain under Registrar Lock throughout the proceeding. In addition to eNom’s partial response, the Center made a WHOIS printout, which showed that the disputed Domain Name was registered with eNom, and that Respondent, Yoshiki Okada, was the current registrant of the disputed Domain Name as well as the administrative, technical and billing contact. The Center verified that 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 on September 20, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was October 10, 2004. At the Respondent’s request, the Center granted an extension of time until October 19, 2004, to file the Response. The Response was received by the Center on October 20, 2004.
The Center appointed Daniel J. Gervais as the sole panelist in this matter on October 29, 2004. The Panel finds that it was properly constituted. 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 owns United States Trademark Registration No. 962,040 for the mark NNN (stylized), dated June 26, 1973, as applied to flexible ducting; ventilating louvers; shutters; central vacuum systems; and dryer venting equipment consisting of vent hoods, dryer vent kits with either rigid or flexible ducting, window plates.
Complainant has continuously and consistently used this mark since 1971.
On November 3, 1997, the Respondent registered and is currently passively holding the domain name “nnn.com.” The Respondent also holds several other domain names generally composed of two or three letters or of common words or phrases, many of which are in Spanish (e.g., <costa.com>, <computadora.com>) but also in English (e.g., <discountit.com>) and originating in other languages (e.g., <kibbutz.com>, <karate.org>).
The Complainant tried to contact the Respondent to obtain a transfer of the domain name. The Respondent did not respond.
5. Parties’ Contentions
The Complainant argues that the Respondent registered a domain name that is substantially identical to Complainant’s stylized NNN trademark without any right or authorization to do so. Users of the Internet are likely to believe that the domain name <nnn.com> is owned by, related to, or sponsored by the Complainant, since Complainant is the only authorized user of the registered trademark NNN (stylized) in the United States.
The Respondent registered the domain name in November 1997. Complainant enjoyed wide use of the NNN mark for an extended period of time and well before the Respondent registered the domain name. Therefore, it is likely that Respondent had knowledge of Complainant’s trademark registration prior to registering the domain name. In the six and a half years that Respondent has been holding the domain name, he has made no effort to use the site for commercial or non-commercial purposes and the site remains passive. Further, Respondent has made no known use of the mark that can be considered a bona fide offering of goods or services. Respondent has not been commonly known by the domain name. Respondent does not have any trademark registrations in the United States or elsewhere for the NNN mark and does not appear to be doing any business under the mark at all anywhere in the world.
The Respondent registered over 148 domain names. Further, it appears from prior UDRP decisions that Respondent has a pattern and practice of holding domain names in an attempt to sell them for money. From an article available on the Internet, it is apparent that Respondent registered and offered for sale other domain names for up to US$50,000.
The Respondent is making no legitimate noncommercial or fair use of the domain name. Rather, Respondent’s use of the trademark NNN in the domain name is for the purpose of selling, renting, or otherwise transferring the domain name to the Complainant for consideration in excess of out-of-pocket expenses.
The Respondent’s use of Complainant’s trademark in the domain name is intentional and in bad faith. Complainant is unaware of any legitimate reason the Respondent may have for adopting the domain name. Respondent has not developed a website for <nnn.com>. The Respondent is passively holding the domain name and is not using it with any bona fide offering of the sale of goods or services. Respondent has clearly registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or to a competitor of Complainant for consideration in excess of Respondent’s out-of-pocket costs.
Respondent has made absolutely no attempt to respond to Complainant’s demands and attempts to contact him.
The Respondent’s only presumable purpose in registering <nnn.com> was to sell the domain for valuable consideration, which is a circumstance of use in bad faith specifically provided by paragraph 4(b)(i) of the Policy. The Respondent registered dozens of domain names, establishing a clear pattern of conduct of registering commonplace phrases for the purposes of selling such domain names to their rightful owner.
The Respondent argues that the Complaint is clearly frivolous, having been brought in bad faith and contains a flagrant misrepresentation that Complainant is the only authorized user of the registered trademark NNN in the United States, because there are 9 other registered United States marks that incorporate the 3-letter combination NNN — 6 for NNN alone.
The Complainant’s stylized mark, which is a geometric shape composed of 3 N’s, is not identical or confusingly similar to the domain name <nnn.com>. Complainant’s mark is in a stylized form consisting of 3 letter N’s in a circular array. The mark is so stylized that it does not appear as 3 N’s, but rather as a geometric shape. It could equally appear to be made of 3 Z’s. The overall impression of this mark is the composite logo, and not NNN. This is especially the case if the viewer is unaware that it is made of 3 N’s.
Accordingly, the domain name <nnn.com> and the Complainant’s stylized logo are not identical or confusingly similar.
“NNN” is simply a 3-letter combination and a common real estate term meaning “triple net” lease. Complainant does not have exclusive rights to this common 3-letter term, despite its misrepresentation to the contrary.
The Respondent has rights and a legitimate interest in the domain name because it incorporates the simple 3-letter combination NNN, a common real estate term, to which the Complainant does not have exclusive rights. It is well established under the Policy that anyone is entitled to register a domain name incorporating a simple 3-letter combination and that the first to register such a domain name has a legitimate interest in it, provided that 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 users.
In the more than six years the Respondent has owned the domain name, there is no evidence that he has ever offered to sell it to the Complainant.
It does not constitute bad faith to merely register multiple domain names, or to even offer them for sale. The Complainant points to a discussion board posting by the Respondent involving the sale of domain names. There is no evidence that the Respondent registered the domain name with the Complainant in mind. The Complainant did not say that the Respondent knew, or should have known, about its mark when he registered the domain name. He did not. The Respondent is not resident in the United States and there is no evidence that the Respondent could have, or should have, known of the Complainant when he registered the domain name. There is no evidence that the Complainant is well-known on or off the Internet. Absent proof that the Respondent had knowledge of the Complainant’s mark when he registered the domain name, the Complaint must fail.
While the Respondent is the registrant of several domain names, they generally incorporate only common terms or simple letter combinations. Anyone is entitled to register a 3-letter combination and the respondents’ legitimate interest is established per se at the point of registration, since no other party can claim exclusive rights to it.
Absent direct proof that the domain name, made up of a common abbreviation, 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.
It cannot be argued that the Respondent should have known of the Complainant’s mark when it registered the domain name. The Respondent is a resident of Japan. The Complainant operates in the United States Knowledge of a foreign trademark is not imputed to a domain name registrant under the Policy.
The Respondent’s failure to reply to Complainant’s emails indicates that he had no desire to sell the domain name.
The Complainant has referred to various other decisions under the Policy which it says show that the Respondent has acted in bad faith with regard to domain names on other occasions. However, the Panel must deal with this case on its own merits, and we cannot take into account decisions made in other cases on the basis of different evidence and submissions.
The Respondent’s non-use or passive holding of the Domain Name does not amount to bad faith. The Panel must study the specific facts of each case to determine whether bad faith can be established despite passive holding.
A finding of reverse domain name hijacking is warranted because the Complainant knew or should have known at the time it filed the Complaint that it could not prove one of the essential elements required by the Policy.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements is satisfied:
1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section 6.1); and
2. The Respondent has no rights or legitimate interests in respect of the domain name (see below, section 6.2); and
3. The domain name has been registered and is being used in bad faith (see below, section 6.3.).
Paragraph 4(a) of the Policy clearly states that the burden of proving that all these elements are present lies with the Complainant.
Pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom, as it considers appropriate.
A. Identical or Confusingly Similar
This question raises two issues: (1) does the Complainant have rights in a trademark; and (2) is the domain name identical or confusingly similar to such trademark or service mark.
There is no question that the Complainant owns a valid trademark registration for three “N”s stylized to form a circle. There is, however, an interesting question as to similarity. As was pointed out by the Respondent, there are several other NNN trademark registrations in the United States.
The test to be used here is similar to the one used in trademark law, based on a likelihood of confusion. The traditional test in trademark law is whether a substantial number of likely buyers could be misled. Even though some buyers may see the logo as three “Z”s, the Panel is convinced that many Internet users will read it as three “N”s. See Tengizchevroil v. Hardinvestments Limited. WIPO Case No. D2002-0061 (tengizchevroil.net); Sydney Markets Limited v. Nick Rakis trading as Shell Information Systems, WIPO Case No. D2001-0932 (sydneymarkets.com); Gardner’s Super Markets Inc. v. Ambassa Holdings, Inc., WIPO Case No. D2002-0253 (gardnersmarket.com); and PRODUCTOS EFE, S.A. v. Jaime Rentería, WIPO Case No. D2000-1810 (heladosefe.com).
The Panel agrees with the Respondent that the likelihood of confusion is generally proportional to the strength of a mark. The Panel also agrees with the Respondent that the strength of the mark is negatively affected by the parallel presence of other similar marks. Moreover, the Complainant is the holder of the oldest “NNN” registration in the United States listed by the Respondent and its title would thus be unaffected by later users, though the Complainant may not be able to prevent them from using their own NNN mark because of the passage of time and partial loss of distinctiveness. That is not a matter that this Panel must decide. As the holder of a registration for the NNN trademark, the Panel concludes that there is similarity between the mark and the disputed domain name.
The Panel thus finds for the Complainant on this first part of the test.
B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
As was decided by several administrative panels, while the Complainant has the burden of proof on this issue, once the Complainant has made a prima facie showing, the burden of production shifts to the Respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue.
Here, the Respondent basically argues that it has a legitimate interest because the domain name is composed of a common abbreviation for a type of real estate leasing transaction, namely the “triple net lease.” However, there is no evidence of any of the situations described in paragraph 4(c) and the Panel finds that the Respondent has not shown that he has a legitimate interest in the domain name. The Respondent has neither presented a credible case nor presented any plans as to how he would use a website devoted to triple net leases. He does not affirm that that is why he registered the domain name. He only mentions that this is a common meaning of “nnn.” In fact, the Respondent states that he “registered the Disputed Domain because it was an available 3-letter combination to which he knew no individual or entity could have exclusive rights.” This was a legal conclusion, not one of fact, and only tends to confirm that the Respondent registers a maximum number of domain names in hopes of selling them. That does not constitute a strong legitimate interest case when it conflicts with one or more registered trademarks.
The Panel thus finds for the Complainant on this second part of the test.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or 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 Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent 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 Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product.
The Complainant’s case hinges mostly on paragraph 4(b)(ii). That paragraph refers to a pattern of registering trademarks or service marks thus preventing owners from reflecting that mark in a domain name. The Respondent’s practice is predominantly to register common words and letters, and no one can be prevented from registering non-trademarked common words. There an advantage is given to the first to register. While one could probably envisage a system to remove deadwood registrations of this type from the DNS, that goes well beyond the scope of the Policy or this decision. The Respondent does, however, occasionally register words or combinations of letters that are valid trademarks and, in those cases, the Policy applies.
Based on the Complainant’s evidence–which, for the most part, is not contested in the Response on this point–, the Respondent is not using any of the domain names to set up web sites. He is trying to make a profit by selling them to the highest bidder and his business plan is clearly to attract someone who would be interested in the domain name, either because of the intrinsic meaning and value of the word or letters, including as a trademark in certain cases. His knowledge of domain name “brokerage” is confirmed by the evidence. In reply, his point is that that it may be so, but that it is not illegal. It is true, of course, that anyone is free to register a common word as a domain name and not use it.
The Complainant alleges bad faith registration based on knowledge by the Respondent that NNN was its mark. The Complainant’s evidence on this point is rather weak and it is flatly denied by the Respondent. Indeed, there is no evidence that the Complainant’s mark was known or even used in the Respondent’s country of residence. The fact that there are many NNN trademarks as was mentioned by the Respondent tends to show that the Respondent knew that NNN was a trademark. It could be Next Navy Network; or perhaps in Respondent’s case, Nippon News Network (Japan); or No New News; Notes Named Network, etc. But there is no evidence that the Respondent knew that NNN was the Complainant’s mark.
The Respondent’s general intent is to register domain names that could be of interest to someone else. He argues that NNN is the abbreviated name of a type of commercial lease. The Panel is not convinced. In this Panel’s view, however, to warrant a finding of bad faith under the Policy, in general, there must be some evidence of knowledge that the Respondent knew the domain name was identical or similar to the Complainant’s mark, not just ‘someone’s’ mark. Paragraph 4(b) of the policy focuses primarily on the Respondent’s intent or purpose. When paragraph 4(b)(ii) refers to the trademark owner, it seems to require that that trademark owner be the complainant. That leads this Panel to the conclusion that bad faith must be specific to the Complainant. Moreover, if a transfer is ordered, it benefits the Complainant and indirectly constitutes a finding against other potential claimants/trademark owners, including those who in this case could perhaps have a valid claim against the Respondent in respect of the same mark. As mentioned above, while the Complainant has the oldest United States registration of an NNN trademark, there are other NNN trademarks that have coexisted for several years. It may be, of course, that the Complainant would have a remedy available under United States law (Anti CyberSquatting Protection Act or other national law), but that is not for this Panel to determine.
On balance, because the Respondent did not know that NNN corresponded to the specific trademark of the Complainant and was essentially “just shooting in the dark,” the Panel finds that the Complainant has not proven the third part of the test of the Policy.
Because the matter turned on the relative strength of the parties’ evidence, and because the Complainant has a good case on two of the three applicable steps of the Policy, the Respondent’s request for a finding of reverse domain name hijacking is dismissed. The Respondent successfully defended the transfer request on the third step (bad faith), but adduced no credible evidence of a deliberate attempt to reverse hijack the domain name. The Panel can use its discretion in making such a finding, and for the reasons stated above, in this case, that discretion favors the Complainant.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Complaint and request for a transfer of the domain name is denied. The request for a finding of reverse domain name hijacking is similarly denied.
Daniel J. Gervais
Dated: November 17, 2004