30th Jun 2011
national arbitration forum
Point Grey Research, Inc. v. Administrator Domain / Vertical Axis, Inc.
Claim Number: FA1105001388025
Complainant is Point Grey Research, Inc. (“Complainant”), represented by Nicholas R. Gunn, Washington, USA. Respondent is Administrator Domain / Vertical Axis, Inc. (“Respondent”), represented by Ari Goldberger of Esqwire.com Law Firm, New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pointgrey.com>, registered with Nameview, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Carolyn M. Johnson (Ret.), Diane Thilly Cabell and Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 10, 2011; the National Arbitration Forum received payment on May 10, 2011.
On May 12, 2011, Nameview, Inc. confirmed by e-mail to the National Arbitration Forum that the <pointgrey.com> domain name is registered with Nameview, Inc. and that 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 18, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 10, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to email@example.com. Also on May 18, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on June 8, 2011.
On June 6, 2011 the Parties in this matter filed a Joint Stay Request with the Forum, which was granted on June 6, 2011. On June 7, 2011 Respondent filed a Request to Remove the Stay of Administrative Proceeding from the matter, which was granted on June 8, 2011.
On June 13, 2011, Complainant’s timely Additional Submission was received.
On June 16, 2011, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Honorable Carolyn M. Johnson (Ret.), Diane Thilly Cabell and Paul M. DeCicco, as Panelist.
On June 21, 2011, Respondent’s timely Additional Submission was received.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends as follows:
Complainant holds a valid U.S. trademark registration for the mark, POINT GREY, which is identical to the domain <pointgrey.com>. Complainant also holds valid U.S. and Canadian trademark registrations for the mark, POINT GREY RESEARCH, which are confusingly similar to the domain <pointgrey.com>.
Respondent has no rights or legitimate interests in <pointgrey.com>. Respondent has never engaged in a use of the domain at issue in connection with a bona fide offering of goods or services. The public has never known Respondent by the at-issue domain name or by the term “Point Grey” or any combination or derivation thereof.
Respondent is not engaged in legitimate noncommercial or fair use of the domain name. The domain currently resolves to a landing page that suggests that it is a resource for research and education. i.e., Respondent’s domain resolves to a webpage that contains links to research sites, booksellers, dictionaries, and other websites that sell products and/or services. Given the nature of Complainant’s business and the related registered mark, POINT GREY RESEARCH, such use is not only misleading to consumers in that it suggests an affiliation with Complainant’s goods and/or services, but willful.
Respondent receives click through or other revenue from links on its parked site. This conduct is inconsistent with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Failure to make an active use of a disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy 4(c)(iii). Section 4(a)(ii) of the Policy is satisfied, as Respondent has no legitimate interests in the domain name as defined in Sections 4(c)(i)-(iii) of the Policy.
Respondent registered and is using the <pointgrey.com> domain name in bad faith. Respondent’s business is buying and selling domain names. Shortly following Complainant’s adoption of the POINT GREY and POINT GREY RESEARCH marks, Complainant sought to purchase the <pointgrey.com> domain from what is believed to be the Respondent or a predecessor entity of Respondent. The initial proposed sale price was exorbitant and Complainant did not have the resources to pay. On September 17, 2001, a representative of the Complainant again contacted the registered owner of the <pointgrey.com> domain to ask if the domain was for sale. The domain owner made an offer to sell the <pointgrey.com> domain to Complainant for a sum of US$50,000.00. As with the first offer, this second offer was well beyond a reasonable price for the domain.
Respondent never engaged in a use of the at-issue domain name in connection with a bona fide offering of goods or services. On February 11, 2011, counsel for Complainant sent a letter to Respondent identifying Complainant’s rights in the domain and requested that Respondent discuss its transfer. Respondent failed to respond to counsel’s correspondence.
A review of links on the <pointgrey.com> website indicate that they are monetized through several PPC providers. The fact that the links re-direct through one or more PPC providers proves conclusively Respondent monetizes <pointgrey.com> in such a way that has been deemed a bad-faith registration and use of a domain.
Thus, Respondent has, in bad faith, intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and/or the links displayed on Respondent’s website.
Respondent contends as follows:
Respondent has a legitimate interest in the at-issue domain name because it incorporates the term “Point Grey,” which is the name for a geographic area in Vancouver, British Colombia and in Western Australia.
Respondent acquired the at-issue domain name as part of a large portfolio of descriptive term domain names without any knowledge of Complainant, its alleged trademarks or its business. Complainant is incorrect that its mark is so famous and distinctive that it may be inferred that Respondent lacks a legitimate interest in, and must have registered, the domain name in bad faith. Anyone may register a common geographic term in good faith, and such registration establishes the respondent’s legitimate interest where the domain name is registered without a complainant’s trademark in mind. Similarly, contrary to Complainant’s assertion, Respondent’s use of the domain name to display generic pay-per-click (“PPC”) links further establishes its legitimate interest.
In order to prove bad faith registration of a geographic common word domain, Complainant must proffer direct evidence the domain name was registered specifically to profit from Complainant’s mark. There is no such evidence here. Respondent obtained the domain name as part of a purchase of a large domain portfolio from CES Marketing, the original owner of the domain name. Respondent kept the at-issue domain name because it is a geographically descriptive domain that incorporates the term “Point Grey.”
Complainant does not have exclusive rights to the geographic term “Point Grey.”
Only one of Complainant’s registered marks, POINT GREY RESEARCH was registered prior to the December 12, 2007 registration date of the at-issue domain name.
Point Grey is a well-known neighborhood and electoral district in Vancouver, British Columbia. The neighborhood is also commonly known as West Point Grey, which is an exclusive neighborhood named after Captain George Grey. Complainant’s headquarters are in Vancouver, BC, not far from Point Grey.
Respondent acquired the at-issue domain name on December 12, 2007 as part of a large domain portfolio. Respondent believed that “Point Grey” was a geographic term which it believed that no party could claim exclusive rights. Respondent obtained the at-issue domain name as part of a purchase of a large domain portfolio from CES Marketing, the original owner of <pointgrey.com>. It did not acquire the domain name with Complainant’s trademark in mind and had no knowledge of Complainant, its web site, its business name or trademark when it registered the <pointgrey.com>. Respondent did not register the at-issue domain name with the intent to sell to Complainant, to disrupt Complainant’s business, or to confuse consumers seeking to find Complainant’s web site.
Respondent did not register the domain name to prevent Complainant from owning a domain name incorporating its trademark. Strong corroboration of the fact that Respondent acquired the domain name because of its geographic and descriptive nature, rather than targeting Complainant’s purported mark, is that Respondent has registered many other geographic term domain names.
Respondent hosts the at-issue domain name with a service which places pay-per-click (“PPC”) advertising links based on a Yahoo advertiser feed on hosted domain names, sharing the advertising revenue with the domain name owners. The links are auto-generated by Yahoo and are constantly changing based solely on Yahoo’s keyword advertising inventory and user search behavior. Here, there are generic links relate to various items of public interest. There are no links relating to Complainant’s business, or are there any “advanced digital camera technology” related links appearing on the web site.
Complainant’s registered trademarks, with registration dates subsequent to the registration date of the at-issue domain name, provide no enforceable rights under the Policy. Accordingly, Complainant cannot prevail on its common law trademark rights argument. If the Panel decided to consider Complainant’s two trademarks that were registered after registration of the at-issue domain name, the fact that the trademarks are comprised of a geographic term weighs heavily against Complainant because no party may be permitted a monopoly on a geographic term. Because the at-issue domain name and Complaint’s trademark are wholly different the distinction is clear. Consumers understand that a geographic identifier such as “Point Grey” is not to be confused with a company that identifies itself as “Point Grey Research.”
The fact that the term “Point Grey” is subject to substantial third party use further supports a finding of legitimate interest on Respondent’s part. Finally, Respondent’s legitimate interest is bolstered by the fact it uses the at-issue domain name in connection with the provision of generic pay-per-click (“PPC”) advertising links appearing on the web site, for which it receives a share of the revenue. Therefore, Respondent has a legitimate interest in the at-issue domain name.
Because “Point Grey” is a geographic term, which is equivalent to a common word under policy, Complainant must proffer direct evidence that the domain name was registered in bad faith. Absent direct proof that a common word domain name was registered solely for the purpose of profiting from Complainant’s trademark rights, there can be no finding of bad faith registration and use. There is no such proof that Respondent registered the domain name to profit from Respondent’s trademark.
Respondent is not attempting to compete with Complainant, disrupt its business, or prey on its mark in any way. Respondent has used the domain name for its web site which displays auto-generated generic PPC Ads related to general issues of interest. There is no evidence whatsoever that Respondent targeted Complainant’s mark.
The use of domain names to display generic advertisements constitutes use in connection with a bona fide offering of goods and services. None of the PPC links displayed on Respondent’s website were ever related to those services offered by Complainant. Complainant’s argument, without any case support, that that the auto-generated links are evidence of bad faith is without merit. The links are a permitted practice and are selected by Yahoo’s algorithms. Complainant’s argument that links “redirecting” are evidence of bad faith is incorrect. At all times, the links on Respondent’s website were automated and based on Yahoo’s algorithms.
Complainant is incorrect in its allegation that Respondent “improperly” responded to Complainant’s offer in September, 2001 to purchase the at-issue domain name by quoting a price of $50,000. Respondent did not own the domain name at the time, having purchased the domain name in December, 2007. Had Complainant believed that it had a legitimate UDRP claim it could have filed its Complaint in 2001 when the alleged offer to purchase was made. Complainant does not explain why it waited so long to assert this claim. In any event, this Respondent has not offered to sell the at-issue at any time.
The long delay in taking action bars the Complaint under the Doctrine of Laches which has been recognized under the Policy. Even if the Panel does not deny the Complaint on the basis of laches, the long delay, also raises an inference that the Complainant did not truly believe Respondent engaged in bad faith registration.
The Panel should find that Complainant’s long silence raises the inference that
Complainant did not believe Respondent’s registration and use of the Disputed Domain was in bad faith.
C. Additional Submissions
Complainant contends in its Additional Submission as follows:
It is undisputed that Complainant holds valid federal trademark registrations and the underlying rights for the marks, POINT GREY and POINT GREY RESEARCH, in the United States. It is undisputed that Complainant holds valid trademark registrations and the underlying rights for the marks POINT GREY RESEARCH and POINT GREY plus design, in Canada. It is also undisputed that the dates of first use set forth in the above registrations predate Respondent’s registration of the disputed domain by almost ten (10) years. Complainant’s trademark registrations conclusively establish its trademark rights in both the POINT GREY and POINT GREY RESEARCH marks.
Complainant’s longstanding common law rights in the POINT GREY and POINT GREY RESEARCH are indisputable. Complainant has provided evidence that it holds valid registrations of the marks, POINT GREY and POINT GREY RESEARCH, on the federal registers of the US Patent and Trademark Office and the Canadian Intellectual Property Office. Complainant now provides the evidence of its common law rights to the same through substantial use of the marks, POINT GREY and POINT GREY RESEARCH, in the United States (first use January, 1997), Canada (first use January, 1997), Australia (first use September, 1998), European Union (first use September, 1998) and Japan (first use September, 1998).
Respondent misstates trademark law governing geographic descriptiveness and ignores the principle of acquired distinctiveness a/k/a Secondary Meaning. Respondent claims that geographic terms cannot exist as valid trademarks, i.e., that rights cannot accrue in words or phrases that also exist as geographic terms. This is a fundamental misunderstanding of geographic descriptiveness. The analysis and refusal to grant trademark registration to a word or phrase is based not on correspondence to a geographic description, but whether the “primary significance of the mark is a generally known geographic location.” For example, under U.S. trademark law, a mark is primarily geographic if it identifies “a real and significant geographic location, and the primary meaning of the mark is the geographic meaning.” Respondent has failed to demonstrate that the name of a neighborhood in Vancouver, British Columbia is a significant geographic location. Indeed, the Wikipedia entry cited by Respondent lists 48 neighborhoods in Vancouver. To support a refusal to register geographic matter, the Trademark Act requires that the mark be primarily geographic, that is, that its primary significance be that of a geographic location. If the most prominent meaning or significance of the mark is not geographic or if the mark creates a separate readily understood meaning that is not geographic, registration should not be refused. Even if the Panel determines that the most prominent meaning or significance of the term Point Grey is geographic, U.S. trademark law specifically provides for registration of geographic terms that have acquired distinctiveness aka secondary meaning.
As recognized under U.S. trademark law, however, once a geographically descriptive term has acquired secondary meaning, it fully functions as a trademark and is allowed registration on the principal register.
Respondent does not dispute that the POINT GREY and POINT GREY RESEARCH marks have been registered in the U.S. If, as Respondent claims, Complainant cannot have trademark rights in said geographic terms, then Respondent is essentially arguing that the USPTO should not have registered the marks. The inescapable fact is, however, that the marks were registered, which means that the USPTO believes they have acquired a secondary meaning.
Respondent provides no evidence that it is commonly known by the disputed domain name or that Complainant granted it permission to use Complainant’s marks. Respondent provides no evidence that it made preparations to use the disputed domain or name corresponding to the disputed domain in connection with a bona fide offering of goods or services prior to the dispute. Respondent provides no evidence that it intends to make a legitimate, noncommercial or fair use of the dispute domain without intent for commercial gain to misleadingly divert consumers or to tarnish the mark.
There is an established distinction between using pay-per-click advertising for a legitimate business purposes, and using PPC advertising to unfairly mine and monetize the established, valued trademarks of others. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another.
Respondent uses the <pointgrey.com> domain name for a pay-per-click website. Respondent admits that it hosts the disputed domain at a service which generates and places PPC advertising links for Respondent on the disputed domain based on Yahoo’s user search behavior.
It is undisputed that around 1997, CES Marketing, the original owner of the disputed domain requested an exorbitant fee to transfer the disputed domain name to Complainant. It is also undisputed that in September 2001, CES Marketing, the original owner of the dispute domain requested $50,000 to transfer the domain name to Complainant. Under Paragraph 4b(i) of the Policy, circumstances indicating that a domain owner registered or acquired a domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the owner of the trademark are evidence of registration and use in bad faith. In other words, the bad faith use of CES Marketing tainted its title to the disputed domain name.
By December 2007, the month in which Respondent purchased “a large domain portfolio” from CES Marketing, Complainant had used the marks for approximately ten (10) years acquiring distinctiveness and incontestable rights to the marks in the United States, Canada, Australia, the European Union and Japan. Respondent has an affirmative duty to clear title to the properties it acquires. Either Respondent failed to clear title to the disputed domain or CES Marketing misrepresented its rights to the same.
Since this UDRP Action was filed, Respondent has changed the calibration of the disputed domain’s landed page. Had Respondent’s landing page at <pointgrey.com> been generic from the beginning, bad faith would have been less clear. The subsequent remedial act of changing the website tends to support Complainant’s position that the domain was registered and used in bad faith
Respondent contends in its Additional Submission as follows:
Complainant has not established that it had common law trademark rights to POINT GREY in existence when the at-issue domain name was registered. Despite being challenged as to this point in the Response, Complainant has failed to proffer any real evidence of secondary meaning in existence in 2007 when Respondent registered <pointgrey.com> in 2007. In fact, there is no evidence that Complainant even used POINT GREY standing alone in 2007. To the contrary, the evidence demonstrates such use did not commence until 2009 – two years after the domain name was registered. Accordingly, it is clear Respondent registered <pointgrey.com> in good faith. Because no mark for POINT GREY standing alone was in existence in 2007, registration in bad faith was impossible.
The only relevant trademark for purposes of this case is POINT GREY RESEARCH. Complainant was placed on direct notice that Respondent challenged the validity of its common law rights. In its Additional Submission it merely attached an affidavit of its Secretary which states that “as early as January 1997, we have used the trademarks POINT GREY and POINT GREY RESEARCH.” Not only has Complainant failed to provide evidence it used POINT GREY standing alone in 2007, as discussed below, no such evidence can exist because Complainant does not appear to have used the term standing alone at all at this time.
Finally, Respondent’s good faith use of the at-issue domain name further supports denial of the Complaint.
POINT GREY is a geographical location.
Complainant currently has trademark rights in POINT GREY by virtue of its registration of such mark with the United States Patent and Trademark Office.
Complainant did not have trademark rights in POINT GREY at the time the at-issue domain name was registered, for the purpose of this proceeding.
Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2)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.
Identical and/or Confusingly Similar
Complainant has rights in a mark which is confusingly similar to the at-issue domain name.
By virtue of registration with the United States Patent and Trademark Office and and registration with the Canadian Intellectual Property Office, Complainant shows that it currently has rights in POINT GREY and POINT GREY RESEARCH as well several related design marks containing POINT GREY. It is well settled that a complainant may establish rights by registering a mark with a trademark authority. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
The at-issue domain name utilizes the POINT GREY element of Complainant’s marks and adds the generic top-level domain (“gTLD”) “.com.” The affixation of a gTLD, in and of itself, does not adequately distinguish the disputed domain name from a complainant’s mark. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). The other differentiations between the marks and the at-issue domain name are either nill in the case of POINT GREY, or are trivial with regard to the other registrations. Therefore Complainant’s mark appears to be confusingly similar to the at-issue domain name pursuant to Policy ¶4(a)(i). See WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to the complainant’s mark, where the complainant holds the WEST JET AIR CENTER mark).
Rights or Legitimate Interests
Complainant fails to show that Respondent lacks rights and interests in respect of the domain name.
Complainant must first make out a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Complainant contends, and Respondent does not deny, that Respondent is not commonly known by the <pointgrey.com> domain name. WHOIS information identifies Respondent as the registrant, a name dissimilar to the domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Furthermore, Respondent does not appear to be authorized to register or use any of Complainant’s marks. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). Therefore, Complainant satisfies its slight initial burden regarding Respondent’s lack of rights and interests in the disputed domain name.
Respondent asserts that the terms of the <pointgrey.com> domain name are common and geographically descriptive terms and therefore Complainant does not have an exclusive monopoly on such terms on the Internet. Respondent contends that the domain name relates to a region in Canada, which in fact is close to where Complainant’s business is located, as well as region of Australia. The Panel agrees and since, as discussed below with regard to bad faith registration and use, Complainant makes no showing that the otherwise geographically descriptive POINT GREY mark has acquired secondary meaning at the time of the at-issue domain name’s registration Complainant fails to meet its ultimate burden regarding Respondent’s lack of rights and interests pursuant to Policy ¶ 4(a)(ii). See Sorel Corp. v. Domaine Sales Ltd., FA 96674 (Nat. Arb. Forum Mar. 28, 2001) (“Respondent has shown that SOREL is used as a geographic term. Complainant cannot claim an exclusive right to use the name SOREL, as it is not exclusively associated with Complainant’s business.”); see also Travel Berkeley Springs, Inc. v. Glens Country Estate, FA 96347 (Nat. Arb. Forum Feb. 16, 2001) (finding that the complainant could not have superior right to use of “Berkeley Springs” to the exclusion of other entities, particularly where there were many other businesses in Berkeley Springs that use “Berkeley Springs” as part of their business name).
Registration and Use in Bad Faith
The Complainant does not demonstrate that the at-issue domain name was registered and used in bad-faith.
Although Complainant has rights in a mark for the purposes of Policy 4(a)(i), Complainant makes no compelling showing that it had trademark rights in POINT GREY at the time the domain name was registered. Trademark registration for POINT GREY proffered by Complainant post-date the 2007 domain name registration. To establish trademark rights in 2007 Complainant must show that it had common law trademark rights in its mark(s) at such time. To do so with regard to a geographically descriptive mark such as POINT GREY Complainant must demonstrate to the Panel that the mark had secondary meaning even though it is apparent from the fact of the U.S. registration of POINT GREY on the principal register that the mark has since acquired distinctiveness. That is, Complainant must show that the consuming public, at the time the domain name was registered, primarily associated the mark with a particular producer, rather than the underlying product. The perspective is from that of the consumer rather than the claimant/producer.
But in its papers Complainant only offers bald statements that its marks were used in 2007 by way of its representative’s declaration attached to its Additional Submission, and nothing more. Use in commerce is a necessary, but insufficient to demonstrate common law trademark rights in a mark. In determining whether or not a descriptive mark has acquired secondary meaning, Courts (and Panels) will often consider the following factors: (1) the amount and manner of advertising; (2) the volume of sales; (3) the length and manner of the term's use; and (4) results of consumer surveys. See Zatarain’s Inc. v. Oak Grove Smokehouse, Inc, 698 F. 2d 786 (5th Cir 1983). See also, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") §1.7, available at http://www.wipo.int/amc/en/domains/search/overview2.0/#17 , June 22, 2011 (presenting in digest form the consensus response to “What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights?”)
Since not any of the Zatarain’s factors nor any other compelling evidence of Complainant’s common law trademark rights in POINT GREY is contained in the record, there is no basis from which the Panel may find that Complainant had trademark rights in POINT GREY at the time <pointgrey.com> was registered notwithstanding that the fact of the U.S. trademark registration conclusively shows that POINT GREY had acquired distinctiveness at the time the trademark registration was allowed on the Principal Register. Without trademark rights at the time the at-issue domain name was registered, proving bad faith registration and use is difficult at best.
Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, available at http://www.wipo.int/amc/en/domains/search/overview/index.html#31 (June 8, 2011).
If, as here, a complainant does not have trademark rights at the time an at-issue domain name was registered, generally there can be no bad faith registration on the part the domain registrant/respondent. Numerous decisions support this very logical proposition. See Ode d/b/a ODE and ODE - Optimum Digital Enter. v. Intership Ltd., D2001-0074 (WIPO May 1, 2001); Digital Vision, Ltd. v. Advanced Chemill Sys.,D2001-0827 (WIPO September 23, 2001); PrintForBusiness B.V v. LBS Horticulture,D2001-1182 (WIPO December 21, 2001) Although there may be exceptions to the rule, such exceptions require that “it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights.” See WIPO Overview, supra. But here the record contains absolutely no evidence to support an assertion of bad faith that might hang on such an exception.
Additionally, the evidence submitted on bad faith registration and use is sparse. Respondent purchased the at-issue domain as part of large portfolio in 2007 and without Complainant as a specific target of the purchase, although specific targeting of mark is a hallmark of cybersquatting. There is no evidence that Respondent was actually aware of unregistered common law rights, if any. Furthermore, the evidence does not support a finding that Respondent made any demand to Complainant for payment in excess of out-of-pocket costs. Rather there is an indication that the prior domain name owner made such a demand. The Panel also notes that the at-issue domain name is not currently advertised as being for sale.
Nor has Respondent registered the domain to the exclusion of Complainant. In fact Respondent registered domain long after Complainant had opportunity to register it in any number of top level domains. Therefore Respondent has not prevented Complainant from registering a domain reflecting its mark pursuant to Policy ¶4(b)(ii). Since the parties are not competitors Policy ¶4(b)(iii) is inapplicable. In considering Policy ¶4(b)(iv) the Panel finds that Respondent has not attempted to mislead because it is not offering goods and services that compete and not attempting to pose as Complainant by look, or feel, or endorsement.
Although it does appear that Yahoo!'s link schema tends to throw up links that relate to the "research" which is part of Complainant's mark; it is most likely that these were generated because there is web traffic to Complainant that skews the metrics used by Yahoo! Therefore it appears that the links are based on the mark POINT GREY RESEARCH, but the term "research" is specifically disclaimed by Complainant which claims uses in the fields of video cameras and computer software, hardware and design tools. Therefore Complainant's mark doesn't appear to incorporate any of the research activities described in the links. As there is no evidence that the domain was used in such a manner prior to 2011, the Panel cannot conclude that this was the intended purpose at the time of registration.
For the reasons discussed above the Panel finds that the domain name was not registered and used in bad faith.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <pointgrey.com> domain name REMAIN WITH Respondent.
Honorable Carolyn M. Johnson (Ret.),
Diane Thilly Cabell and Paul M. DeCicco, Panelists.
Paul M. DeCicco, Chair
Dated: June 30, 2011