1st May 2001
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
John Ode d/ba ODE and ODE – Optimum Digital Enterprises v. Intership Limited
Case No. D2001-0074
1. The Parties
The complainant in this administrative proceeding is JOHN E. ODE, d/b/a ODE and ODE – OPTIMUM DIGITAL ENTERPRISES of 4144 Bullard Avenue, Unit B Anchorage, Alaska 99506 USA.
The respondent in this proceeding is INTERSHIP LIMITED of Hundstensgaten 14-A, Motala, 59170 Sweden.
2. The Domain Name and Registrar
This dispute concerns the domain name ” ode.com “.
The registrar with which the domain name is registered is Network Solutions, Inc.
Herndon, Virginia, USA.
The domain was registered by the Respondent on or about May 18, 1997.
3. Procedural History
A complaint pursuant to the Uniform Domain Name Dispute Resolution Policy (“the policy”) and the Rules for Uniform Domain Name Dispute Resolution Policy (“the Rules”) both of which are implemented by ICANN on October 24, 1999, was received by the Center in electronic format on January 15, 2001, and in hardcopy on January 19, 2001. Payment in the required amount to the Center has been made by the Complainant.
On January 23, 2001, a request for registrar verification was sent to the Registrar requesting confirmation that it had received a copy of the complaint from the Complainant, that the domain name was currently registered with it and that the policy was in effect, and requesting full details of the holder of the domain name and advice as to the current status of the domain name.
On February 14, 2001, a formal response was received from the Respondent. On February 14, 2001, an acknowledgement of receipt of response was sent by the Center to the Respondent.
On, March 14, 2001, a notification of appointment of administrative panel and projected decision date (“the appointment notification”) was sent to the Complainant and the Respondent. In accordance with the Complainant’s request, the appointment notification informed the parties that the administrative panel would be comprised of a three member panel, comprising Clive Elliott, David Perkins and David Sorkin and advised that the decision should be forwarded to WIPO by April 24, 2001.
4. Factual Background
An ode is a common English word, which means a lyric poem.
The Complainant uses the service mark, ODE – OPTIMUM DIGITAL ENTERPRISES and has a pending U.S. Federal Service Mark Registration. The evidence indicates that the Complainant operates a web hosting business in Alaska.
The Respondent’s business, Intership Limited, provides offshore accommodation and crane barge services to the oil & gas offshore industry. The Respondent operates offshore barges and accommodation vessels and services for operators or contractors dealing with offshore exploration, production and construction, including platform and pipeline maintenance contracts.
The Respondent registered the domain name “ode.com” on May 18, 1997. The Complainant did not begin using its trademarks until May 28, 2000.
5. Parties’ Contentions
The Complainant claims:
The Complainant claims the Respondent’s registered domain name, “ode.com”, is identical to Complainant’s service mark, ODE, in which the Complainant has valuable common law and State of Alaska service mark registration rights. It is alleged the registered domain name, “ode.com”, is confusingly similar to the Complainant’s service mark, ODE – OPTIMUM DIGITAL ENTERPRISES, in which the Complainant has valuable common law rights and for which Complainant has a pending U.S. Federal Service mark Registration.
The Complainant claims that the Respondent has no rights or legitimate interests in “ode.com”. The Complainant believes the before notice was given to the Respondent of the dispute, the Respondent made no use of, or demonstrable preparations to use, the domain name “ode.com” or a name corresponding to the domain name in connection with a bona fida offering of goods or services. The Complainant also says that the Respondent has not been commonly known as ODE or as “ode.com”, and has acquired no trademark or service mark rights in ODE, and has made no legitimate noncommercial or fair use of ODE or “ode.com”.
The Complainant claims the Respondent has failed for a substantial period of time, over three and a half years, to make bona fida use of the domain name for its business. Following registration of “ode.com” in 1997, the Respondent had a “Welcome to the Future Web site of” site for “ode.com” for three and a half years
On November 6, 2000, the Complainant’s attorney sent a demand letter to the Respondent and to the Respondent’s administrative contact at Vanilla Limited re: “ode.com”., That demand letter was the Respondent’s first notice of the domain name dispute. The Complainant says that upon the Respondent’s receipt of the Complainant’s demand letter, the Respondent hastily replaced the “Welcome to the Future Web site of” site, with a cookie cutter World News web site consisting of World News information and a banner heading for “ode.com”. The site was up by November 8, 2000.
The Complainant claims that the Respondent has a pattern and practice of registering multiple domain names and has a pattern and practice of warehousing domain names for lengthy periods of time using the same undeveloped site Respondent used for years for “ode.com”, “Welcome to the Future Website of”. Four examples of domain names registered to the Respondent, which consist of identically undeveloped sites are said to be: “dockings.com”; “dock1.com”; “a1ship.com”; and “adsteam.com”. The Complainant states that this practice of warehousing and not using domain names provides strong evidence supporting Respondent’s bad faith registration of “ode.com”.
The Complainant says the Respondent’s administrative contact, Vanilla Limited, is known for its pattern and practice of warehousing domain names and trafficking in them without a bona fida intent to use the domain names.
The Complainant says it has not licensed or otherwise permitted the Respondent to use its common law trademark rights or its registered State of Alaska trademark rights in ODE or to apply for any domain name incorporating any of those rights.
The Complainant claims that the Respondent registered the domain name “ode.com” primarily for the purpose of selling the domain name for valuable consideration in excess of the Respondent’s out-of-pocket, minimal domain name registration costs.
Between June of 2000 and October of 2000, the Respondent’s agent, Vanilla Limited, offered “ode.com” for sale to the Complainant for amounts ranging up to USD $30,000. On November 3, 2000, the Respondent, through its administrative contact at Vanilla Limited, “Sarah Mohammed,” e-mailed a sales contract to the Complainant, offering to sell “ode.com” to Complainant for USD $5,000.
On November 6, 2000, the Complainant’s attorney served the demand letter to the Respondent and to Vanilla Limited. The Respondent has never responded to the demand letter. Vanilla Limited’s response to the demand letter was to claim that the offering of “ode.com” for sale was “erroneous” and that the Respondent did not intend to offer it for sale.
It is argued that the Respondent’s changed site following receipt of Complainant’s demand letter is a bad faith attempt to establish bona fida use of “ode.com”, is shown by the fact that the new web site is a carbon copy of another web site, “oil.com”. The only substantive difference is the banner heading. Both sites contain the same World News information and the administrative contact for both “ode.com” and “oil.com” is the known domain name warehouser, Vanilla Limited.
Finally, it is noted that as of January 7, 2001, the Respondent’s web site for “ode.com” still contains no good faith commercial use of ODE even after being put on notice of the domain name dispute. Except for the banner heading, no reference is made to ODE or to “ode.com” anywhere else in the web site. Likewise, the web site contains no reference to the Respondent.
The Respondent claims:
The Respondent says that ODE is a common word, meaning a lyric poem, with substantial third party use. ODE is also a simple 3-letter combination. The word is not fanciful, not a coined term, and has no secondary meaning. The Respondent registered ODE because it is a simple abbreviation for “Offshore Development and Exploration.”
The Respondent notes that the Complainant did not begin using its trade marks until May 28, 2000, more than three years after the Respondent registered the disputed domain name and only uses its mark in Alaska. It says, the Respondent, who does not reside in the United States, cannot be fixed with knowledge of an Alaskan trademark. The Complainant’s U.S. trademark application is not for ODE, but for ODE – OPTIMUM DIGITAL ENTERPRISES, and it was not filed until September 28, 2000.
The Respondent says that well before the notification of this dispute, the Respondent has been using the domain name for the purpose of operating a web site called Offshore Development and Exploration, which is clearly related to its core business and that the Respondent had a bona fide intent to use the domain name for such purpose at the time of registration, more than 3-years before the Complainant began to use its trademark.
It is also said that whether or not the alleged offer by Respondent to sell “ode.com” to the Complainant was erroneous or not, such offer was only in response to an inquiry from the Complainant, and this does not constitute bad faith, particularly where, as here, Respondent has a legitimate interest in the domain name.
The Respondent claims “ode.com” is a sophisticated and comprehensive web site dedicated to the offshore exploration and oil industry. It has substantial content related to energy resources, with related news refreshed several times per day, with extensive links to related sources, including coal, gas, OPEC, engineering, transport, consulting, production, geology, education, employment, drilling, pipelines, maintenance, etc. “ode.com” is a part of the extensive and highly acclaimed WorldNews.com network of sites, which is affiliated with the Respondent through common ownership.
It is argued that the fact that “ode.com” very closely mirrors the Respondent’s “oil.com” web site, as the Complainant alleges, does nothing to de-legitimize the Respondent’s interest in “ode.com”. There is no requirement at all in the Policy that a registrant need create a web site at all in connection with a domain name. It is said that here, the redirection alleged by Complainant is to Respondent’s own developed web site, so the legitimate interest is more pronounced.
Notwithstanding Respondent’s clear legitimate interest in the disputed domain name, in considering whether Complainant has carried its burden in proving that Respondent lacks rights or a legitimate interest in the disputed name “ode.com”, it is requested that the Panel consider the strength – or lack of strength – in the Complainant’s trademark. It is said the Complainant’s mark is weak because there are five active U.S. trademark registrations for the word ODE, and two pending trademark applications, which contain the word. U.S. Trademark Electronic Search System. A search on the Internet search engine Altavista for the term ODE yielded over 177,000 results for the term.
The Respondent says that in regard to the alleged sales negotiations between the Complainant and the Respondent, first of all, the offer was not made until the Complainant first contacted the Respondent about acquiring the domain name. This does not constitute bad faith and the Respondent is legally entitled to sell generic or merely descriptive domain names, provided that it has registered them in good faith.
Finally, the Respondent submitted that this is a case of Reverse Domain Name Hijacking.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the complainant must prove each of the following:
– The domain name is identical or confusingly similar to the trade mark; and
– The respondent has no right or legitimate interest in respect of the domain name; and
– The domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances that, if proved, constitute evidence of bad faith as required by paragraph 4(a)(iii) referred to above.
Paragraph 4(c) of the Policy sets out three illustrative circumstances that, if proved, constitute evidence of a right or legitimate interest as described in paragraph 4(a)(ii) referred to above.
Domain names are identical or confusingly similar
If paragraph 4a(i) of the Policy means that a Complainant must have rights in a trademark which antedates the date when the domain name in issue was registered, then the Complainant does not meet the requirements of this paragraph. If so he cannot succeed.
The Panel is of the view that this is arguably an essential requirement of paragraph 4a(i) of the Policy. This view is taken notwithstanding the minority decision of Mr. Thomas Creel disagreeing with this approach – see Panel Decision Firstgate Internet AG v David Soung D2000-1311. Notwithstanding this, we are of the unanimous view that the trademark must predate the domain name. Whether it arises because of paragraph 4(a)(iii) (requiring bad faith registration), rather than paragraph 4(a)(i) does not call for a decision by us at this time. In either case, the result is the same, as is apparent from our decision below.
No Right or Legitimate Interest
The Respondent, Intership Limited, seems to be an actual and bona fide trading business.
ODE, as an abbreviation for “Offshore Development Exploration”, is not incredible in the context of the offshore business of Intership Limited. It has to be given some weight at face value.
Having said this the Respondent’s evidence, through an unwitnessed affidavit, offers no evidentiary support for the bald assertion in paragraph 5 that the “ode.com” site was established prior to the November 6, 2000, “Cease and Desist” letter. It would have been simple to exhibit documentary proof to that effect. Also, the same deponent, Ms Gomez, baldly asserts that World News, Inc is affiliated with Intership Limited through common ownership but again no documentary proof is offered.
Parties must offer credible evidence – refer Do the Hustle v Tropic Web [D2000-0624]
“A Panel is not required to blindly accept assertions offered by a Respondent any more than it is required to accept unsupported assertions offered by a Complainant. It is especially important under this procedure to test Respondent’s assertions for evidentiary support and credibility, since normally the Complainant has no opportunity to counter the Respondent’s assertions, while the Respondent does have the opportunity to counter those of the Complainant.”
However, the circumstances in paragraph 4c of the Policy are not conclusive and, in any event, we do not believe a decision on paragraph 4a(ii) is required, since either the Complaint fails under paragraph 4a(i) for lack of trademark rights at the material time or under paragraph 4a(iii) for the reasons provided below. Accordingly, no view is required on this issue.
Registered and Used in Bad faith
Our view is that Complainant has not proved bad faith registration, and we have decided the case principally on that basis. We further find that the complaint was brought in bad faith, based on the fact that Complainant knew when he filed the complaint that the registration of the disputed domain name predated his own trademark rights.
Registration of Domain Name in Bad faith
There are ample authorities supporting the view that a trademark that did not exist at the time the disputed domain name was registered cannot serve as the basis for a claim under the ICANN Policy, since it is impossible for the domain name to have been registered in bad faith:
Sealstore.com L.L.C. v. Sealpool Ltd., No. FA96535 (NAF March 8, 2001)
e-Duction, Inc. v. Zuccarini, No. D2000-1369 (WIPO February 5, 2001)
Foresight Corp. v. Servos, No. AF-0473 (eResolution December 15, 2000)
Open Systems Computing AS v. Alessandri, No. D2000-1393 (WIPO December 11, 2000)
VBW Kulturmanagement & Veranstaltungs GmbH v. Ohanessian M, No. D2000-0675 (WIPO October 18, 2000)
ecast, Inc. v. Ecorp.com, No. AF-0308 (eResolution October 11, 2000)
Magic Software Enterprises Ltd. v. Evergreen Technology Corp., No. D2000-0746 (October 4, 2000)
Passion Group Inc. v. Usearch, Inc., No. AF-0250 (eResolution August 8, 2000)
Highlight Communications AG v. Auto Systems Inc., No. 2000-0512 (WIPO July 25, 2000)
Meteor Mobile Communications v. Dittmar, No. D2000-0524 (WIPO July 17, 2000)
Telaxis Communications Corp. v. Minkle, No. D2000-0005 (WIPO March 5, 2000)
Complaint Brought in Bad Faith
The following authorities directly support the proposition that a complaint is brought in bad faith if the trademark postdates the disputed domain name:
Foresight Corp. v. Servos, No. AF-0473 (eResolution December 15, 2000)
NetLearning, Inc. v. Parisi, No. FA95471 (NAF October 16, 2000) (Sorkin, dissenting)
ecast, Inc. v. Ecorp.com, No. AF-0308 (eResolution October 11, 2000) (Sorkin, dissenting)
These authorities support that view indirectly:
Goldline International, Inc. v. Gold Line, No. D2000-1151 (WIPO January 4, 2001)
Smart Design LLC v. Hughes, No. D2000-0993 (WIPO October 18, 2000)
K2r Produkte AG v. Trigano, No. D2000-0622 (WIPO August 23, 2000)
Qtrade Canada Inc. v. Bank of Hydro, No. AF-0169 (eResolution June 19, 2000)
Shirmax Retail Ltd. v. CES Marketing Group Inc., No. AF-0104 (eResolution March 20, 2000)
Applying these principles to the present facts, when the domain name was registered in May 1997, the Complainant was not doing business under the ODE name, so that the domain name could not have been registered by the Respondent in bad faith. It also follows that on the basis of the authorities referred to above, that an inference can be drawn that the complaint was brought on bad faith.
As we cannot see how the Complaint meets the requirement that the domain name was registered in bad faith, there is no need to consider whether there was use in bad faith. However, in case we are wrong on this issue, we find that the Complaint fails to meet any of the requirements of paragraph 4b of the Policy. When the Complainant asked the Respondent if it wanted to sell the domain name, it is not blameworthy or contrary to the Policy for the Registrant / Respondent to ask whatever it considers the market will take in a particular case. Here, there is no evidence of a pattern of conduct either.
In the present case, the domain name registrant would appear to be a bona fide entity. Further, the Complainant has not adduced evidence to contradict that inference.
On the facts of the case we find that the Complainant fails to make out his case under paragraph 4a(i) and/or (iii) of the Policy and has indeed brought this complaint in bad faith.
Accordingly, the complaint is denied.
Clive Lincoln Elliott
David Charles Langrigge Perkins
David E Sorkin
Dated: May 1, 2001