15th Dec 2008
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Parallax Group International, Limited Liability Corporation v. Anything.com Ltd. (.ky)
Case Number: D2008-1545
1. The Parties
The Complainant is Parrallax Group International, Limited Liability Corporation of California, United States of America, represented by Fish & Associates, United States of America.
The Respondent is Anything.com Ltd. (.ky) of Grand Cayman, Cayman Islands, Overseas Territory of United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <norsk.com> is registered with Tucows, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 9, 2008. On October 10 and 13, 2008, the Center transmitted by email to Tucows, Inc. a request for registrar verification in connection with the domain name at issue. On October 13, 2008, Tucows Inc. 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. The Center sent an email communication to the Complainant on October 15, 2008, 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 amendment to the Complaint on October 15, 2008.
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 on October 17, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 6, 2008. The Response was filed with the Center on November 4, 2008.
The Center appointed a three member Administrative Panel consisting of John Swinson as presiding panelist and Michelle Brownlee and David E. Sorkin as the other panelists on November 27, 2008. The Panel finds that it was properly constituted. The Panelists have submitted the Statements of Acceptance and Declarations of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is Parrallax Group International, a California corporation with its principal place of business in San Clemente, California.
The Complainant owns a registered trademark in the United States of America for NÖRSK (U.S. Registration No. 3,214,870), covering “carpets for automobiles and residential and commercial carpeting”. This trademark was filed with the United States Patent and Trademark Office on August 14, 2005 and registered on March 6, 2007. According to the trademark registration certificate, the Complainant first used its NÖRSK trademark on January 31, 2004.
The Respondent is based in Grand Cayman, Cayman Islands.
The website operating from the disputed domain directs users to a search engine titled “Your Source For Virtually Anything. Norsk.com”. That website contains links to third party websites, grouped under general categories of interest such as “Finance”, “Travel”, “Software” and “Electronics”.
5. Parties’ Contentions
The Complainant makes the following contentions:
The Complainant owns a registered trademark in the United States of America for NÖRSK and the disputed domain name is confusingly similar to this mark, in overall sound and appearance. The disputed domain name and the Complainant’s trademark share the exact same spelling of the word “norsk”.
The Respondent has no rights or legitimate interests in the disputed domain name for two reasons. Firstly, it is not making a bona fide offering of goods or services in connection with the domain name and secondly, the Respondent is not commonly known by the domain name and has not acquired trademark or service mark rights in NORSK.
The Complainant alleges that the Respondent has registered and used the disputed domain name in bad faith by:
– engaging in a pattern of registering domain names with popular and common phrases that are likely to be desired for purchase, such as <home.com>. As the Respondent does not offer goods or services in connection with these domain names, it is likely that the Respondent registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name.
– intentionally attempting to attract for commercial gain, Internet users to the 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The Respondent replied to the Complainant’s contentions as follows:
The Respondent registered the disputed domain name because “norsk” is a common geographically descriptive term, which means a person with Norwegian ancestral identity or something originating from Norway. The Complainant does not have exclusive rights to this term.
The common nature of “norsk” is evident from an enormous amount of third party use of the term.
The disputed domain name is not identical or confusingly similar to the Complainant’s trademark. The Complainant’s trademark includes the letter “ö” with an “umlaut” above it, which is used in the Scandinavian alphabet. This small difference alters the pronunciation of the vowel sound, and is sufficient to eliminate a finding of confusing similarity. Also, the Complainant’s trademark is geographically descriptive and the Complainant is therefore entitled to only very limited protection.
The Respondent has a clear legitimate interest in the disputed domain name. The registration of descriptive term domain names, where there is no intent to profit from the trademark rights of another, establishes the Respondent’s legitimate interest. The Respondent uses the disputed domain name in connection with pay per click advertisements from which the Respondent receives a share of advertising revenue from Yahoo. Such use constitutes a bona fide offering of goods and services.
The disputed domain name was registered by the Respondent on April 1, 1998, which is five and a half years before the Complainant’s first use of the NÖRSK trademark. It is therefore impossible for the Complainant to show that the Respondent has used or registered the disputed domain name in bad faith. The Respondent could not have had a non-existent trademark in mind when it registered the disputed domain name.
There is no evidence supporting an inference that the Respondent had malicious intent in registering the disputed domain name. It did not register with an intent to sell it to the Complainant, to disrupt the Complainant’s business or to confuse the public. At the time of registration, the Respondent had no knowledge of the Complainant, its website, business name or trademark.
The Respondent’s registration of other generic terms like <home.com> and <medicine.com> does not support a finding of bad faith, as these names were registered based on their value as generic terms.
A finding of reverse domain name hijacking should be found, as there was no basis on which the disputed domain name could be transferred to the Complainant. The Complainant knew the date on which the disputed domain name was registered and was obviously aware that it did not use the trademark until at least five years after the registration date.
6. Discussion and Findings
To succeed in its claim, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the 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 with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
In this Panel’s view, the Complaint was severely lacking in detail. Bald assertions were made regarding the Respondent’s conduct or motives, with no reference to supporting evidence. As the Complainant carries the burden of proof in relation to each element, it is surprising that substantive content of the Complaint took up little more than one page.
The Panel finds that the Complainant has failed to discharge its burden in relation to paragraph 4(a)(ii) and (iii). Accordingly, it is not necessary in this case for the Panel to make a finding under the first element of the Policy.
The Panel considers that the Complainant has failed to show that the Respondent lacks legitimate interests in the disputed domain name. The disputed domain name comprises a simple, generic word (meaning something of or relating to Norway). In the circumstances before the Panel, the Respondent’s use of the disputed domain name is legitimate, as there is no evidence that the Respondent is taking advantage of the Complainant’s trademark rights in NÖRSK.
The Panel cannot find that the disputed domain name was registered or has been used by the Respondent in bad faith.
The uncontested facts are that the disputed domain name was registered on April 1, 1998. The only trademark rights that the Complainant relies upon are rights arising from United States Trademark Registration No. 3,214,870 for NÖRSK. According to the registration details, this mark was first used by the Complainant in January 2004. It is registered in respect of a quite narrow range of goods (carpets). The Complainant did not make any reference to owning earlier common law trademark rights in NÖRSK.
The registration of the disputed domain name clearly predates (by a significant period of over five years) any evidence of use and/or registration of NÖRSK by the Complainant. Based on the evidence before the Panel, it is therefore difficult to see how the Respondent could have registered the disputed domain name with notice of the Complainant’s trademark or other rights in NÖRSK (and therefore in bad faith).
There is ample authority supporting the view that a trademark that did not exist at the time the disputed domain name was registered cannot in general serve as the basis for a claim under the Policy, since it is impossible for the domain name to have been registered in bad faith (see for example, e-Duction, Inc. v. John Zuccarini, d/b/a The Cupcake Party & Cupcake Movies, WIPO Case No. D2000-1369).
The Panel does not agree with the Complainant’s argument that the Respondent’s registration of other domain names (such as <home.com>) constitutes bad faith. As mentioned above, provided these domain names were registered based on their value as generic terms (and without intent to trade off a third party’s trademark rights), the Respondent is may well to have a legitimate interest in these names. The domain names referred to by the Complainant all appear to have value as generic terms.
No other valid bases for bad faith were raised by the Complainant, and the Panel is therefore unable to find that the disputed domain name was registered or used by the Respondent in bad faith.
Reverse domain name hijacking
A complaint will in general have been brought in bad faith if the trademark in question postdates by a significant period the registration or acquisition of the disputed domain name by the Respondent (see for example Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151).
In this case, the disputed domain name was registered at least five years prior to the Complainant’s first use of the trademark. This information was available to the Complainant prior to it filing the Complaint. In addition, in the Panel’s view, the Complainant should have been aware prior to filing the Complaint of the descriptive meaning of “Norsk” and the widespread third party use of that term. Further, the Complainant has failed to show that the disputed domain name was registered in anticipation of the Complainant’s obtaining trademark rights in that term.
The Complainant failed to provide any substantive evidence in its Complaint. The Complainant should also have known at the time of filing the Complaint, that such a lack of evidence and authority would mean that the Complainant would be unlikely to satisfy the onus placed on it by the Policy.
In the Panel’s view, it should have been clear to the Complainant that at the time it filed the Complaint, it would not be able to succeed. The Panel finds that this is an appropriate case for a finding of reverse domain name hijacking, and so finds.
For all the foregoing reasons, the Complaint is denied.
David E. Sorkin
Dated: December 15, 2008