6th Dec 2011
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Planate Management Group LLC v. Vertical Axis, Inc. / WhoIs Privacy Services Pty Ltd
Case No. D2011-1535
- The Parties
The Complainant is Planate Management Group LLC of Alexandria, Virginia, United States of America, represented by Mosaic Legal Group, PLLC, United States of America.
The Respondent is Vertical Axis, Inc. of Christ Church, Barbados / WhoIs Privacy Services Pty Ltd of Fortitude Valley, Queensland, Australia, represented by ESQwire.com Law Firm, United States of America.
- The Domain Name and Registrar
The disputed domain name <planate.com> is registered with Fabulous.com (the “Registrar”).
- Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 12, 2011. On September 13, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 15, 2011, the Registrar transmitted by email to the Center its verification response confirming that the Respondent Vertical Axis, Inc. is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 September 23, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 13, 2011. The Response was sent by Respondent on October 13, 2011 (in Respondent’s time zone) and received by the Center on October 14, 2011 (in the Center’s time zone).
The Center appointed Andrew Brown QC, David H. Bernstein and The Hon Neil Brown QC as panelists in this matter on November 22, 2011. 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.
- Factual Background
The Complainant, Planate Management Group LLC (“Complainant”), is the owner of a United States (“U.S.”) trademark registration for the word mark PLANATE for business management consulting. The trademark registration dates from November 21, 2008 and states a first use of January 4, 2008 and a first use in commerce of January 12, 2008. The Complainant owns a second U.S. trademark registration for PLANATE plus a logo with exactly the same specification of services, date of application and date of claimed first use. The Complainant states that within these specified services it provides “international installation and management solutions and services including for federal governments”. (These were not further elucidated.)
Although two Respondents are named (one being WhoIs Privacy Services Pty Limited), it is acknowledged via a declaration from Julie Marshall, a manager with the first-named Respondent, that Vertical Axis, Inc. is the beneficial owner of the disputed domain name.
Vertical Axis, Inc (“Respondent”) registered the disputed domain name on February 27, 2005. The disputed domain name was originally registered to another party on July 15, 2001. After that initial registration expired, the disputed domain name was deleted and then offered for registration again, at which time the Respondent registered it in 2005.
- Parties’ Contentions
The Complainant contends that the disputed domain name is identical to its U.S. registered trademark for the word mark PLANATE.
The Complainant asserts that since registration of the disputed domain name (February 27, 2005) the Respondent has never used it for any bona fideoffering of goods or services or for any noncommercial/fair use. The site has only been used as a monetized holding page for Pay Per Click (PPC) advertising. It is claimed that many of the links and associated search results on the disputed domain name are “actually in direct competition with the Complainant’s business marketing, consultancy and installation management services”.
Although the Complainant acknowledges that “Planate” is a defined word in the English language (flattened, plane) it asserts that this does not of itself “provide for the PPC website to constitute a legitimate interest creating rights for the Respondents”. The Complainant considers that the Respondent is not using the disputed domain name in connection with its dictionary meaning but rather as a misspelling of “planet”. This, it is said, is further evidence that the Respondents have no rights or legitimate interest in the disputed domain name. Finally, the Complainant states that the Respondent has not been commonly known as “Planate”.
The Complainant alleges that the Respondent has acted in bad faith. It states that, even if the Respondent registered the disputed domain name prior to the Complainant’s first use on November 8, 2007 (a date differing from that in the United States Patent and Trademark Office records), paragraph 2 of the Policy requires the registrant to determine whether the registration infringes someone else’s rights. Therefore, as a professional domainer, the Respondent should have ascertained whether it was infringing or violating someone else’s rights every time it renewed the domain name registration.
The Complaint asserts that, if the Respondent did not specifically know of the Complainant or its trademark rights when it renewed the disputed domain name, “the finding of bad faith registration would still be confirmed under the circumstances of this case by [the Respondent’s] willful blindness”.
As to bad faith use, the Complainant relies on the fact that the Respondent is using the disputed domain name as a PPC parking page, thus diverting Internet traffic. It points to the Respondent’s involvement in more than 30 UDRP proceedings before WIPO as well as “countless others” before arbitration and mediation forums. Finally, the Complainant points to the fact that the homepage of the disputed domain name advertises that the disputed domain name is for sale.
The Respondent denies that it has registered or used the disputed domain name improperly.
First, the Respondent states that it registered the disputed domain name on February 27, 2005 over three years before the identified first use of the Complainant’s registered trademark on January 4, 2008. The Respondent says it was impossible for it to have known of the Complainant or to have intended to target a trademark that did not then exist.
Second, the Respondent registered the disputed domain name after the prior registrant failed to renew it and because the Respondent considered it a typographical error of the common word “Planet” as well as a dictionary word. This is supported by the declaration of Julie Marshall.
Third, the Respondent disputes the contention as to bad faith use. It states (verified by declaration) that the disputed domain name is hosted with “Hitfarm.com a service which places PPC advertising links based on a Yahoo advertiser feed on hosted domain names, sharing the advertising revenue with the domain name owners. We have used the Domain Name to display PPC links related to the common meaning of the word ‘Planet’”1. The Respondent states it is simply using a typographical variation of a common English word “Planet” and there is no evidence that it has targeted the Complainant’s mark.
In this regard, the Respondent objects to an exhibit from the Complainant purporting to show objectionable links relating to the Complainant. The Respondent states that such links do not appear on the Respondent’s landing page and “appear to be fabricated by Complainant by entering search terms into the search box on Respondent’s landing page. Respondent cannot replicate the search run by Complainant, and challenges the relevance of Exhibit F”.
Finally the Respondent states that the Complainant has not explained why it waited six years from the date of the Respondent’s registration to initiate this Complaint and that this is a case where the Complainant has engaged in reverse domain name hijacking.
- Discussion and Findings
- Identical or Confusingly Similar
The Complainant has established the requirements of paragraph 4(a)(i) of the Policy. At the date the Complaint was filed, it owned a U.S. trademark registration for PLANATE. The evidence of the existence of trademark rights is measured as being the date the Complaint is filed, not the date of registration of the disputed domain name.2
As the disputed domain name is identical to the Complainant’s registered trademark for the word PLANATE, this element of the Policy has been met.
- Rights or Legitimate Interests
The Panel finds that the Complainant has not made out the second element of the Policy. The Respondent has filed declaration evidence that the disputed domain name was registered because it was a misspelling of “planet” and also an English word in its own right.
Registration of domain name based on a misspelling of a dictionary word can, in some circumstances, reflect a legitimate interest. See e-Duction, Inc. v. John Zuccarini, d/b/a The Cupcake Party & Cupcake Movies, WIPO Case No. D2000-1369. Here, unlike as in the e-Duction case, the links on the Respondent’s PPC website largely relate to planets, the word that was allegedly misspelled. The Respondent has also provided evidence that it does register misspellings of common English words as domain names and has provided 47 examples of such registrations.
- Registered and Used in Bad Faith
The Panel finds that the Complainant has not established this element of the Policy.
The Panel is satisfied that the Respondent did not have the Complainant’s trademark in mind at the time of registration of the disputed domain name because, as at the date of registration, the Complainant had not used or registered its trademark and did not do so until at least January 4, 2008. The Respondent registered the disputed domain name on February 27, 2005 some three years before the Complainant’s first use in commerce of its trademark PLANATE and 3 years and 9 months before the Complainant filed its trademark applications.
In such circumstances, the actions of the Respondent in registering the disputed domain name were not bad faith. Except in circumstances where a Respondent has advance knowledge of a trademark, registration of a domain name cannot be bad faith where the Respondent could not have contemplated the Complainant’s non-existent right: See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) paragraph 3.1.
The Complainant goes on to contend, however, that the Respondent should have ascertained whether it was infringing or violating someone else’s trademark rights every single time it renewed the disputed domain name registration i.e. on April 23, 2008, February 20, 2009, February 23, 2010 and February 8, 2011. This is in reliance on paragraph 2 of the Policy which requires that domain name registrant to warrant that:
“(d) You will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name infringes or violates someone else’s rights.”
On the facts of this case, the Complainant cannot remedy the fatal deficiency in this Complaint (i.e. the inability to show registration of the disputed domain name in bad faith) by relying on paragraph 2 to retrospectively attack that original registration. The reasons for this are:
(a) In the present case, even though it is a professional domainer, the Respondent has shown that it registered the disputed domain name at a time and in circumstances where the Complainant had no rights in the mark PLANATE. Further, the Respondent has produced declaration evidence that the disputed domain name was registered because it was a misspelling of “planet” and an English dictionary word in its own right;
(b) Even at the first renewal date on April 23, 2008, the Complainant had not yet filed a trademark application with USPTO so there was no public notice that could have come to the attention of the Respondent. Nor has the Complainant filed any evidence to show actual use of its trademark before that date or the extent of such public use;
(c) The Complainant has not filed any evidence to show that the Respondent changed the nature of the disputed domain name after the successive renewals nor that it specifically targeted the Complainant. Cf. Gassan Diamonds B.V. v. Internet-Dating.Com, WIPO Case No. D2011-0774 (finding bad faith based on renewal where respondent changed its use of the domain name after renewal to take advantage of the trademark value of complainant’s mark).
The Panel also finds on the facts that the Complainant has not demonstrated that the Respondent has used the disputed domain name in bad faith. Although PPC pages are of no societal value, see e.g. Ustream.TV, Inc. v. Vertical Axis, Inc., WIPO Case No. D2008-0598, given that the PPC links here related to the dictionary meaning of the misspelled word and not to the services offered by Complainant under its trademark, and that Respondent therefore has a legitimate interest in operating such a page (at least for purposes of the Policy), the use cannot be considered to be in bad faith.Havanna S.A. v. Brendhan Hight, Mdnh Inc, WIPO Case No. D2010-1652; National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424.
Accordingly, the Complainant has not met its burden of establishing the probability that the Respondent registered and has used the disputed domain name in bad faith.
- Reverse Domain Name Hijacking
Paragraph 1 of the Rules defines “Reverse Domain Name Hijacking” as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”. See also paragraph 15(e) of the Rules. For the Panel to find attempted Reverse Domain Name Hijacking, the Respondent must show that the Complainant knew or should have known of the Respondent’s “unassailable right or legitimate interest” in the disputed domain or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith”. See Sydney Opera House Trust v. Trilynx Pty. Limited,WIPO Case No. D2000-1224.
A finding of Reverse Domain Name Hijacking has been held to be appropriate only where it should have been clear to a Complainant that it could not prove one of the essential elements under the Policy, or where there has been an apparent attempt to mislead the Panel or to bully a Respondent into handing over a domain name. See e.g. IUNO Advocatpartnerselskab v. Angela Croom, WIPO Case No. D2011-0806.
In the present case it is self-evident from the facts that the Respondent did not know and could not have known of the Complainant’s rights in the mark PLANATE because they did not come into being until (at least) three years after registration. This fact would be self-evident to the Complainant itself and indeed is acknowledged in the Complaint where it is stated:
“Even if the Respondent registered the ‘www.planate.com’ domain name prior to the Complainant’s first use of the trademark on November 8, 2007 …”
Even in its fallback for contention of bad faith registration based on paragraph 2 of the Policy i.e. assertions as to what the Respondent should have done on renewal, the Complainant specifically allows for the fact that the Respondent did not know of the Complainant or its trademark:
“These renewals notwithstanding, if the Respondent did not specifically know of the Complainant or if its trademark or [of] its trademark rights when it renewed the disputed domain name multiple times, the finding of bad faith registration should still be confirmed under the circumstances of this case by Vertical Access Inc’s willful blindness.”
No cogent evidence was advanced of willful blindness on the part of the Respondent. Further, even the leading decisions on the applicability of paragraph 2 of the Policy, contemplate that renewal might not be bad faith if there is no material change in the use to which the domain name is put after the renewal. See e.g. Eastman Sporto Group LLC v. Jim and Kenny, WIPO Case No. D2009-1688.
In the circumstances, the Complainant clearly 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, i.e. bad faith registration. In this regard the Panel also notes that the Complainant waited well over 3 years from first use of its trade trademark to lodge this Complaint.
The Panel therefore considers that the Complaint does amount to Reverse Domain Name Hijacking.
For all the foregoing reasons, the Complaint is denied.
Andrew Brown QC
David H. Bernstein
The Hon Neil Brown QC
Dated: December 6, 2011