3rd Nov 2004
RMT, Inc. v. Domain Finance Ltd.
Claim Number: FA0408000313843
Complainant is RMT, Inc. (“Complainant”), represented by Nathan D. Jamison of Quarles & Brady LLP, 411 East Wisconsin Avenue, Milwaukee, WI 53202. Respondent is Domain Finance Ltd. (“Respondent”), represented by Ari Goldberger of ESQwire.com Law Firm, 35 Cameo Drive, Cherry Hill, NJ 08003.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rmt.com>, registered with Bulkregister, LLC.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Judge Carolyn Marks Johnson, Professor David Sorkin and Houston Putnam Lowry (Chartered Arbitrator and chair) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 16, 2004; the Forum received a hard copy of the Complaint on August 18, 2004.
On August 20, 2004, Bulkregister, LLC. confirmed by e-mail to the Forum that the domain name <rmt.com> is registered with Bulkregister, LLC. and that the Respondent is the current registrant of the name. Bulkregister, LLC. has verified that Respondent is bound by the Bulkregister, LLC. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 23, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 13, 2004 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
A timely Response was received and determined to be complete on September 27, 2004.
A timely Additional Submission was received from Complainant on October 1, 2004.
On October 11, 2004, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Judge Carol Marks Johnson, Professor David Sorkin and Houston Putnam Lowry (Chartered Arbitrator and chair) as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
[a.] Similarity of Domain Names to Remain Trademark: ICANN Rule 3(b)(ix)(1); ICANN Policy ¶4(a)(i).
The domain name at issue is <rmt.com>. This is identical to the name of the Complainant and Complainant’s trademarks, with the exception of the added “.com” suffix. Numerous cases under the policy have found such use of a Complainant’s trademark to be confusingly similar according to Policy ¶4(a)(i). See Maple Leaf Sports & Entertainment Ltd. v. Toronto Maple Leafs!, D2000-1510 (WIPO Jan. 24, 2001); WestJet Air Center, Inc. v. West Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001).
[b.] Respondent’s Lack of Rights in the Domain Names: ICANN Rule 3(b)(ix)(2); ICANN Policy ¶4(a)(ii).
Complainant RMT, Inc. is an environmental engineering and consulting firm that provides services throughout the world. It has been doing business as RMT since at least 1977 and has been the owner of U.S. Trademark Registrations for “RMT” since 1987. The RMT name and mark are famous in the oil and gas industry. RMT, Inc. is a subsidiary of Alliant Energy Corporation.
Respondent operates a web site at the <rmt.com> domain name that is entitled “RMT Oil & Gas.” That is the only reference to “RMT” anywhere on the page, however. Instead, the page contains international, national and regional news related to the energy industry. A graphic in the upper right corner of the <rmt.com> home page states that it is affiliated with the “World News Network.” Clicking on this link takes Internet users to the home page of the “World News Network,” located at <wn.com>.
Complainant’s RMT mark is not generic or descriptive nor is it a geographic term. The only connection between the term “RMT” and the oil and gas industry is due solely to Complainant’s use of the mark in connection with the oil and gas industry. This is distinguishable from the situation in Kur- und Verkehrsverein St. Moritz v. Domain Finance Ltd., D2004-0158 (WIPO June 14, 2004), where the complaint was dismissed because the domain name at issue, <stmoritz.com>, was a geographic term.
Furthermore, the Respondent is not “commonly known” by the <rmt.com> domain name, pursuant to Policy ¶4(c)(ii). See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶4(c)(ii) does not apply); Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
The website currently located at <rmt.com> is operated by, and contains much the same content as, the World News Network. For example, the left-hand side of the home page of <rmt.com> contains a list of “WN Channels.” And the right-hand side contains a clickable map that offers “World News by Continent.” Additionally, the copyright notice at the bottom of the <rmt.com> home page indicates that the copyright is owned by “barges.com.” There is absolutely no evidence that the Respondent is known as or does business as “RMT.”
[c.] Respondent’s Bad Faith Registration and Use of Domain Names: ICANN Rule 3(b)(ix)(3); ICANN Policy ¶4(a)(iii).
Respondent has engaged in bad faith with respect to the <rmt.com> domain name. Respondent purchased the <rmt.com> name for the purpose of directing Internet users to the “World News Network” family of sites by creating a likelihood of confusion with the Complainant’s mark. Complainant inquired about purchasing the <rmt.com> domain name in April 2003. In a response email sent to Complainant on April 10, 2003, Respondent offered to sell the <rmt.com> domain name to Complainant for $75,000 and claimed that the current owner of the domain name was developing a “Russian Marine Times” news site for the domain. No such site was ever developed by Respondent, however.
Complainant again inquired about purchasing the <rmt.com> domain name from Respondent in March 2004. Before this inquiry, Internet users who entered <rmt.com> into a web browser were redirected to the World News Network home page at <wn.com>. After receiving Complainant’s inquiry about purchasing the <rmt.com> name, the Respondent created a new website with the title “RMT Oil & Gas” that contained essentially the same content as the World News Network page at <wn.com>. Respondent also responded to Complainant’s inquiry by offering to sell the <rmt.com> domain name for $40,000.
Respondent’s actions demonstrate a continuous bad faith intent to profit from the RMT name and mark by diverting customers looking for RMT, Inc.’s site to Respondent’s web site that is effectively a portal to its World News Network sites, by creating a likelihood of confusion with the RMT name as to the source, sponsorship, affiliation or endorsement of Respondent’s web site. This act falls within Section 4(b) of the Policy. There can be no question that Respondent has violated the Policy by registering and using this domain name, incorporating RMT, Inc.’s famous name, with no rights to use the domain name, and with a bad faith intent to profit from such domain name at the expense of RMT, Inc.
The Disputed Domain is composed solely of the common 3-letter combination RMT. RMT is a very common abbreviation used by thousands of third parties for many different word combinations. An advanced search on the Google.com search engine for “RMT” excluding “environmental,” “environment,” and “engineering,” to eliminate pages referencing Complainant, yielded over 200,000 web pages containing the common 3-letter combination. These include: RMT.org.uk (Britain’s largest specialist transport union); Reliable Multicast Transport (rmt); RMT Aviation; RMT.com.pk (Reliability, Motivation, Trust); religioustolerance.org/rmt.htm (Repressed Memories and Recovered Memories Therapy); rmt.org (Rockville Musical Theatre).
Respondent registered rmt.com simply because it was an available 3-letter domain name that it believed no party had exclusive rights to. Respondent owns many Internet domain names, but Respondent is no cybersquatter. Respondent has registered thousands of domain names, which are predominantly generic, common words, or city names, and they have all been registered for development in connection with one or more sites which are a part of Respondent’s WorldNews, Inc. network of web sites located at <http://worldnews.com>. Respondent’s generic domain names include: broadcasting.com, oil.com, gas.com, helicopters.com, cranes.com, cocoa.com, cartoons.com, filmreview.com, textiles.com, sailboats.com, pollution.com, population.com, and students.com.
WorldNews.com includes over 3,000 different sites that receive approximately 12 million visitor sessions per month. Respondent invites the Panel to review Respondent’s WorldNews.com network. The site speaks for itself. From aesthetics to coverage, it’s quite simply one of the best news content web sites on the Internet. WorldNews.com’s excellence has been recognized by many organizations. Forbes.com states that WorldNews.com:
provides quick access to the latest news from around the world, from Baghdad to Tokyo. One-click gets you to headlines from any region of interest. Choose New Delhi from the menu and up comes articles from Hindustan Times and the Khaleej Times. Need to know what's happening in Asia? A click brings you breaking news about the country's economy. Site also provides video broadcasts and savvy editorials.
Entrepreneur Magazine has called WorldNews.com “a necessary bookmark…. If it happened somewhere on this planet, you’ll find the details here.” Respondent is obviously a serious web site operator that has invested tremendous capital and resources in web site development, and is not a cybersquatter.
Respondent did not register the Disputed Domain to sell to Complainant or to any other party. Respondent did not register the Disputed Domain to disrupt Complainant’s business. Respondent did not register the Disputed Domain to prevent Complainant from reflecting its trademark in a domain name. Respondent is not using the Disputed Domain to derive commercial benefit by confusing users seeking Complainant’s web site. It is true, as alleged in the Complaint that Respondent indicated it would sell the Disputed Domain to Complainant for $75,000. However, it is undisputed this was in response to Complainant’s unsolicited inquiry to purchase the Domain Name. As alleged in the Complaint, “Complainant inquired about purchasing the <rmt.com> domain name…” (emphasis added). Respondent, otherwise, never offered to sell the domain name to Complainant or to any party.
As Complainant alleges, Respondent had intended to develop a web site for RMT.com called Russian Marine Times. The site has not yet been developed. Respondent instead chose to use RMT.com for a news site related to the offshore oil and gas drilling and exploration industry. Rmt is short for “remote,” which describes the remote nature of offshore drilling, an industry in which Respondent’s principal shareholder is heavily involved. The main shareholder in Domain Finance Ltd. is also the main shareholder in Intership Ltd., a company that provides offshore construction, supply, accommodation and crane vessel services to the oil and gas offshore industry. The barges.com web site, linked at the top of RMT.com describes the Intership business. Respondent also operates web sites at Oil.com, Gas.com, Offshoreconstruction.com, and Floatinghotels.com. It is because Respondent is heavily involved in the remote offshore oil and gas exploration industry that it chose to associate RMT.com with this business. It is not true, as Complainant suggests, that Respondent made RMT.com an oil and gas news site because of Complainant’s affiliation with Alliant Energy Corporation. Respondent had no knowledge that Complainant is a subsidiary of Alliant Energy Corporation, and Complainant had never heard of Alliant Energy Corporation at all. Moreover, from a review of the Alliant Energy web site at <http://alliantenergy.com>, it is clear that Alliant Energy’s business has nothing to do with the international offshore oil and gas exploration news covered on the RMT.com site. To the contrary, Alliant Energy is an energy utility. Accordingly, there is no connection between the RMT.com web site and Complainant’s business as Complainant suggests. The Panel is encouraged to review Respondent’s web sites, including <http://barges.com>, <oil.com>, and <gas.com> which clearly demonstrate that Respondent’s purpose for having an oil and gas news web site at RMT.com is to promote its own businesses.
Bases for Respondent to Retain Registration and Use of Disputed Name
Under the Policy, to prevail on its claim to obtain the rights to the Disputed Domain, Complainant must demonstrate three things:
1. that the disputed domain name is identical or confusingly similar to its trademark;
2. that respondent has no rights or legitimate interest in the domain name; and
3. the domain name was registered and is being used in bad faith.
(Policy, ¶¶4(a)(i)-(iii).) Complainant bears the burden of proof as to each element of its claim. (Policy ¶4(a).)
A. Complainant’s Trademark is Identical to the Disputed Domain
Respondent does not dispute this element of the Policy. However, because Complainant has not proven the other elements of the Policy, it is not necessary for the Panel to evaluate this element of the Policy.
B. Respondent Has Rights And A Legitimate Interest In The Domain Name
The second element Complainant must prove is that Respondent has no rights or legitimate interest in the name. The Complaint fails here. Paragraph 4(c) of the Policy lists three circumstances that can demonstrate a registrant’s rights or legitimate interest in the disputed domain name:
(i) before any notice to you 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;
(ii) you (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;
(iii) You 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.
(Policy ¶4(c)(i) - (iii).)
“RMT” is simply a 3-letter combination to which Complainant does not have exclusive rights. From RMT Aviation to the Rockville Musical Theatre, there are literally hundreds, if not thousands, of entities and individuals all over the world that use the common 3-letter combination RMT as abbreviations for their names. A search on the Internet search engine Google.com search engine for “RMT” -- excluding “environment,” “environmental” and “engineering” to eliminate pages referencing Complainant -- yielded over 200,000 web pages containing the common 3-letter combination. This substantial third-party use is evidence that Complainant does not have exclusive rights to the term RMT and, thus, supports Respondent’s legitimate interest in the Disputed Domain. Energy Source Inc. v. Your Energy Source, Case No. 96364 (NAF Feb. 19, 2001)(“energy source” “not exclusively associated with Complainant’s business”).[i]
Complainant alleges that Respondent does not have a legitimate interest because it is not known as RMT. However, a domain owner does not have to be known by a domain name to establish a legitimate interest. It is well-established that, like common words, 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 a simple letter-combination domain name. Tenenhaus v. Telepathy, Inc., Case No. 94355 (NAF May 17, 2000) (complainant not entitled to “exclusive use of the domain name DAF”);[ii] Trans Continental Records, Inc. v. Compana LLC, No. D2002-0105 (WIPO April 30, 2002)(“use of [LFO.com] . . . even for sale, is a legitimate business.”);[iii] Kis v. Anything.com Ltd., No D2000-0770 (WIPO Nov. 20, 2000)(registration of 2 and 3-letter domain names found to be legitimate.)[iv] As the Panel noted in Kis v. Anything.com,
The Domain Name at issue here is a three-letter second-level domain within the popular ".com" top-level domain. All or nearly all of the three-letter names have long been taken; respondent itself holds a number of other short domain names (as reflected in Network Solutions' Whois database), including "an.com", "hw.com", "vz.com", "xv.com", "yz.com", "zw.com, "aex.com", "fii.com", "ldn.com", "lna.com", "mhi.com", "nnc.com", "otl.com", "tbj.com", "tca.com", "ukt.com", "vaz.com", "vdj.com", "wla.com", and probably many more. Respondent appears to have selected the Domain Name "kis.com" because of its length . . . , rather than because it corresponds to Complainant's trademark -- indeed, it seems unlikely that Respondent was even aware of Complainant's trademark when it selected the domain name.
Under appropriate circumstances the offering for sale of a domain name can itself constitute a bona fide offering of goods or services for purposes of paragraph 4(c)(i) of the Policy. . . .
Under these circumstances, the Administrative Panel finds that Respondent has a legitimate interest in the Domain Name.
Moreover, Respondent uses the Disputed Domain for an offshore oil and gas exploration news site as part of its Worldnews.com network of web sites. The term RMT is short for “remote,” which describes the remote nature of offshore drilling. Such use establishes Respondent’s legitimate interest. One UDRP panel made the following finding of fact about this Respondent: “Respondent and its "affiliated" company Serenade Limited has developed and is exploiting an informational network composed of various websites.” Kur- und Verkehrsverein St. Moritz v. StMoritz.com, Case No. D2000-0617 (WIPO Aug. 17, 2000).[v] Respondent operates 3,000 different news sites, which are visited by 12 million visitors per month. The excellence of Respondent’s Worldnews.com network has been recognized by Entrepreneur and Forbes magazines. As noted, Respondent operates web sites at <oil.com>, <gas.com>, and <barges.com> which is why it elected to point the Disputed Domain to an oil and gas exploration web site.
Accordingly, because Respondent has a legitimate interest in the Disputed Domain, the Complaint should be denied.
C. Complainant Has Not Demonstrated That The Domain Name Was Registered and Is Being Used In Bad Faith
The third element that Complainant must show is Respondent’s bad faith registration and use. The Complaint fails on this count as well. The Policy identifies four circumstances that may constitute evidence of bad faith registration and use:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.
(Policy ¶¶4(b)(i) - (iv).)
There is absolutely no evidence that Respondent registered the Disputed Domain to sell to Complainant. Nor is there any evidence that Respondent had even heard of Complainant or its purported trademark when it registered the Disputed Domain. Absent evidence such knowledge of Complainant’s trademark when Respondent registered the Disputed Domain, it is impossible for Respondent to have registered the Disputed Domain in bad faith. Accordingly, the Complaint must be dismissed for this reason alone.
It is further well-established that absent direct proof that a common term domain name was registered or acquired solely for the purpose of profiting from Complainant’s trademark rights, there can be no finding of bad faith registration and use. Ultrafem, Inc. v. Warren Royal, supra. There, the 3-member panel, in ruling in favor of the owner of the common term domain name Instead.com held:
A bad faith showing would require the Complainant to prove that the Respondent registered instead.com specifically to sell to the Complainant, or that the value of "instead" as a domain derived exclusively from the fame of its trademark. Neither has been proven in this case. In the absence of an intent to capitalize on the Complainant’s trademark interest, the Complainant cannot assert an exclusive right over a domain name that is a common, generic term. (emphasis added).
Here, the undeniable fact is that “RMT” is an extremely common 3-letter combination, appearing on over 200,000 third-party web pages unrelated to Complainant. This extensive worldwide third party use is overwhelming evidence that Complainant does not enjoy exclusive use of the Disputed Domain, thus it cannot be concluded that Respondent selected the Disputed Domain with Complainant in mind. It did not. There can be no bad faith registration where there is no evidence that a respondent had knowledge of a Complainant or its mark. Kis v. Anything.com Ltd., supra. (“the Administrative Panel finds that there are no indications that Respondent knew of Complainant or its trademark when registering the Domain Name.”). As set forth in the legitimate interest section, Respondent certainly has used the Disputed Domain in connection with the bona fide offering of services through it WorldNews.com network of web sites – a use expressly acknowledged as constituting a legitimate interest by another UDRP panel. This is obviously not bad faith use.
There is no evidence Respondent had knowledge of Complainant or its mark when it registered the Disputed Domain. As recently held in the 3-member decision in The Landmark Group v. DigiMedia.com, L.P., No. 285459 (NAF Aug. 6, 2004),[vi] “Respondent cannot be found to have engaged in bad faith registration of Complainant’s mark if it had never heard of Complainant’s mark at the time of the registration.” See also DK Bellevue, Inc. v. Landers, D2003-0780 (WIPO Nov. 24, 2003) (no bad faith registration if respondent had not heard of complainant’s mark at time of registration)[vii]; Intermap Techns. Corp. v. Salvage Elec. Inc., FA 203130 (NAF Dec. 12, 2003)[viii]; Experimental Aircraft Ass’n (EAA) v. EAA.COM, FA 206309 (NAF Dec. 16, 2003).[ix] Accordingly, bad faith registration cannot be established.
Complainant attempts to establish bad faith based on the reply by Respondent’s unsolicited inquiry to purchase the Disputed Domain. It is undisputed, however, as alleged in the Complaint, that “Complainant inquired about purchasing” the Disputed Domain. There is no evidence that Respondent sought to sell the Disputed Domain to Complainant. Respondent’s reply to this inquiry is not evidence that Respondent registered the Disputed Domain with the intent to sell it to Complainant. There is not even any evidence that Respondent had knowledge of Complainant when it registered the Disputed Domain. Respondent stating a price to sell the Disputed Domain in response to Complainant’s purchase inquiry does not constitute bad faith under the Policy. As the Panel held in Pocatello Idaho Auditorium District v. CES Marketing Group, Inc., Case No 103186 (NAF Feb. 21, 2002)[x]:
There are numerous ICANN decisions which have recognized that the owner of a domain name has a legal right to sell a domain name when asked if he or she will transfer or sell it. Panels have noted that "there is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy." N.C.P. Marketing Group v. Entredomains, D2000-0387 (WIPO July 5, 2000).
See Also General Machine Prods Co. v. Prime Domains, supra. (Complainant “solicited the offer to sell . . . . These facts do not indicate any bad faith.”); Piper.com The New Piper Aircraft, Inc. v. Piper.com, No.FA94367 (NAF May 2, 2000) (Complainant made unsolicited offer to purchase).[xi] Accordingly, Respondent’s reply to Complainant’s inquiry to purchase the Disputed Domain does not establish bad faith.
Respondent further alleges bad faith based on the fact that Respondent has associated the Disputed Domain with an oil and gas news web site, because Complainant is an affiliate of Alliant Energy Corporation. However, there is no evidence that Respondent was aware of this connection. It had no such knowledge. It never heard of Alliant Energy Corporation and had no knowledge that Complainant had any connection to the oil and/or gas industry. The only reason that Respondent has associated the domain name with oil and gas is because its principal shareholder operates companies that provide services to the offshore oil and gas drilling industry and operates news web sites in connection with its <oil.com>, <gas.com>, <barges.com> and other offshore oil and gas industry web sites. Respondent is involved in environmental engineering consulting, and the affiliated company, Alliant Energy Corporation, is an energy utility. Had Respondent truly had a bad faith intent, it would have associated the domain name with environmental engineering. Neither the businesses of Complainant or Alliant are related to Respondent’s business. There simply is no evidence of bad faith registration or use. Respondent registered the Disputed Domain for the simple reason that it was an available 3-letter combination to which no party had exclusive rights. That does not constitute bad faith registration of a domain name, which is required to be proven by a Complainant seeking transfer of a domain name under the UDRP.
Accordingly, for all the above reasons, Complainant has failed to meet its burden of proving bad faith registration and use and, the Complaint must, therefore, be dismissed.
C. Complainant’s Additional Submission
A. Respondent has Presented no Actual Evidence of Legitimate Use of the <rmt.com> Domain Name.
Complainant’s “RMT” marks are well known in the oil and gas industry. Complainant has consulted in the oil and gas industry since 1984 in the United States, as well as internationally in such places as Venezuela, Algeria, India, Tunisia, Mozambique, and elsewhere. Its clients include BP Amoco, Exxon Mobil, Shell Oil, Sunoco, and Conoco. As the attached “SOQ” (statement of qualifications) and printouts from RMT’s internet website <http://www.rmtinc.com/oil.htm> show, Complainant’s “RMT” mark is internationally famous in the oil and gas industry.
Domain Finance’s only present use of the disputed domain name is to wrongfully capitalize on RMT’s mark and reputation in the oil & gas industry solely to direct traffic to their news site, or to attempt to sell its domain registration. Prior to May 2004, Respondent was not using the disputed domain except to redirect traffic to its <wn.com> domain and was presumably waiting for a buyer of the domain. This is not engaging in a bona fide offering of goods or services pursuant to Policy ¶4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell the domain name suggests it has no legitimate use). Domain Finance, Ltd., had not previously used the <rmt.com> domain -- it merely used the domain to redirect traffic to its <wn.com> site. It was only after RMT expressed an interest in purchasing the domain in an e-mail to Domain Finance, Ltd., did the respondent concoct a bogus “RMT Oil & Gas” site, which merely regurgitates <wn.com> content. There is no other reference to “RMT” other than at the top of the site. In sum, there is no evidence that respondent or any of its services were ever known by the <rmt.com> domain name and thus Respondent does not have any rights in the disputed domain name. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001).
In an attempt to manufacture a legitimate use, Respondent first argues that it was developing a web site called “Russian Marine Times” for the <rmt.com> domain name. Yet, a Google® search of “Russian Marine Times” shows zero hits. Respondent first made this claim on April 10, 2003, yet there is no evidence that Respondent has ever done anything toward developing this alleged site in the eighteen months since it first made this claim other than registering a domain name confusingly similar to Complainant’s registered marks. Respondent just made up the name “Russian Marine Times” in a self-serving attempt to avoid a finding of bad faith because it has the initial letters “RMT.” The Panel should see through these transparent shenanigans by the Respondent.
Then, Respondent changes its tune and argues that the three-letter phrase “RMT” is a commonly used abbreviation for “remote.” Yet Respondent does not provide any evidentiary support for this argument. This is because it is simply not true. Google® searches show that the acronym “RMT” is not used in the oil & gas or offshore drilling industry for the abbreviation of “remote.” Complainant’s consultants, who are familiar with the oil and gas industry, do not routinely use that acronym in their work, nor are they familiar with the term as being routinely used by their oil and gas industry clients. The <rmt.com> domain has nothing to do with Respondent’s business except that Respondent has put a bogus title on a news webpage capitalizing on the RMT name, which is well-known in the oil & gas industry.
In the end, Respondent has produced no evidence of legitimate use of the <rmt.com> domain name other than unsupported assertions and contradictory, self-serving statements. It follows that Complainant has established Respondent’s lack of rights in the domain name under Policy ¶4(a)(ii).
B. Respondent Registered the <rmt.com> Domain Name in Bad Faith
Respondent is making no actual use, and has never made any actual use, of the <rmt.com> domain name other than to wrongfully direct traffic to its site by capitalizing on Complainant’s mark, and to offer it for sale to the highest bidder. Respondent offered the domain name to Complainant for an outrageous amount starting at $75,000 and again for $40,000. Respondent makes much of the fact that RMT had inquired about the purchase of the domain. However, the offer to sell can be in the form of a counteroffer. See Magnum Piering, Inc. v. The Mudjackers, D2000-1525 (WIPO January 29, 2001) (“Cybersquatters often wait until a trademark owner comes calling; they should not be able to avoid the Policy by being the second to speak.”)
Complainant’s attempts to sell the domain name to Complainant for an exorbitant price is evidence of bad faith. Domain Finance stated in their offer that the price was to “cover costs” associated with the creation of a website for the non-existent “Russian Marine Times.” Curiously, those same “costs” were $35,000 lower a year later when Domain Finance again offered the domain for sale to RMT, Inc. for $40,000. Notably, even after eighteen months of allegedly working on a website and incurring costs of “$75,000,” there is no website. Taken together, these facts show ample evidence of bad faith. See Mondich v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the Respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith).
The fact that Domain Finance, Ltd., claims to have no knowledge of RMT’s mark is not evidence that it lacked bad faith. Registration of an infringing domain name despite actual knowledge is evidence of bad faith registration pursuant to Policy ¶4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that “[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse”). RMT’s mark has been in use in the oil and gas industry since 1984 and has been registered with the USPTO since 1988. If Respondent, were truly operating in the oil and gas industry, it would have recognized the RMT mark. Under these circumstances, Respondent, should have at least constructive notice of RMT’s marks.
Finally, Respondent cites several cases purporting to hold that the use of a three letter acronym is allowable under any circumstances. None of these cases, however, are applicable to the facts of this case. In Tenenhaus v. Telepathy, Inc., FA 94355 (Nat. Arb. Forum May 17, 2000) (cited by Respondent), the Forum specifically found that the current use of the domain <daf.com> did not conflict with or interfere with that complainant’s business. Here, Respondent’s use of the <rmt.com> domain clearly does conflict and interfere with RMT, Inc.’s business because it is wrongfully exploiting RMT’s mark in the oil & gas industry.
In Trans Continental Records, Inc. v. Compana LLC, D2002-0105 (WIPO Apr. 30, 2002), concerning the <lfo.com> domain, the LFO trademark was not registered, which was a significant factor in determining there was no bad faith. In the present case, “RMT” is a registered mark of RMT, Inc.
In Kis v. Anything.com Ltd., D2000-0770 (WIPO Nov. 20, 2000), the panel found that KIS was an abbreviation of Korean Information Site, which the panel found to “perfectly describe the nature and objective of [respondent’s] site.” (emphasis added). Here, Domain Finance, Ltd., argues that the letters “RMT” describe its site as being a well-known acronym in the oil and gas industry. But as shown above, there is absolutely no support for the Respondent’s argument that “RMT” describes anything about its site or that it is a well-known acronym for “remote” or anything else that is connected with Respondent.
Respondent registered a domain name identical to a well-known mark in the oil and gas industry, waited for the owner of the mark to inquire about purchasing it, and then attempted to sell it for an exorbitant amount. Respondent then concocted various theories out of thin air in an after-the-fact attempt to manufacture a legitimate use of the domain name. It follows that Respondent registered and used the <rmt.com> domain name in bad faith under Policy ¶4(a)(iii).
D. Respondent’s Additional Submission
Even though Respondent’s additional submission was not made in a timely fashion, the Panel accepts it as though it was made timely. The delay in submitting it was reasonable under the circumstances and caused no prejudice to Complainant.
While Complainant has attacked the legitimacy of Respondent’s use of the Disputed Domain and claims its registration and use have been bad faith, these allegations are not borne out by the undisputed facts.
1. Respondent Operates Legitimate Web Sites: It is Not a Cybersquatter
Respondent operates a recognized sophisticated global network of news web sites under its WorldNews.com umbrella of sites. There is no evidence that Respondent engages in abusive domain name registration to profit from the sale of domain names or to confuse users based on third-party trademark rights. The Panel can review the WorldNews.com web site and its various topical web sites to quickly recognize this irrefutable fact. The decision in Kur-und Verkehrsverein St. Moritz v. Domain Finance Ltd., D2004-0158 (WIPO June 14, 2004) – a 3-member panel decision which not only ruled in Respondent’s favor but found that the Complainant had engaged in Reverse Domain Name Hijacking – is compelling for recognition of the legitimacy of Respondent’s operation.
- Respondent Registers Common Words and Descriptive Terms to Which No Party Can Claim Exclusive Rights: Simple 3-letter Combinations Like RMT.COM Fall into this Category.
As set forth in the Response, and which can be validated by a review of the <http://worldnews.com> web site, Respondent registers domain names because they are generic words in common use (oil.com, gas.com, phones.com, cartoons.com, broadcasting.com) and descriptive terms for its news sites (worldnews.com, wnscience.com, basketballdaily.com). As noted in the Response, it is well-established that anyone is entitled to register such domain names for any purpose. Like common words and descriptive terms, simple 3-letter combinations, to which no party can claim exclusive rights, are also fair game for anyone to register. Respondent registered RMT.com to use in connection with WorldNews.com. Accordingly, Respondent has rights and a legitimate interest in the Disputed Domain.
- There is No Evidence the Disputed Domain Was Registered With Complainant in Mind and, thus, Bad Faith Registration Cannot be Established
All of Respondent’s allegations of bad faith concern actions taken by Respondent after the Disputed Domain was registered. As noted in the Response, Respondent has no knowledge of Complainant or its mark when it registered the Disputed Domain, nor of its purported connection to oil and gas exploration. Respondent registered the Disputed Domain on May 19, 1997 – more than 7 years before the initiation of this dispute. Complainant admits in the Complaint that its first contact with Respondent was in April 2003, when it “inquired about purchasing” the domain name. Complainant has proffered no evidence that Respondent had knowledge of its mark when it registered the Disputed Domain and/or that the Respondent registered the Disputed Domain with Complainant’s mark in mind. Accordingly, bad faith registration cannot be proven. Village Resorts Ltd. v. Steven Lieberman;[xii] (proof of bad faith requires “evidence of bad faith at the time of initial registration”); Futureworld Consultancy Pty Ltd. v. Online Advice, No. D2003-0297 (WIPO July 18, 2003)(“there is no evidence to show that the disputed domain was registered with the Complainant in mind…”).[xiii]
Complainant’s argument that “constructive knowledge” of its mark is enough to establish bad faith is inapplicable in the case of a common 3-letter term. The only UDRP case cited by Complainant to support this argument, Digi Int’l v. DDI Sys, did not involve a common word or simple 3-letter combination. To the contrary, the Disputed Domain was <digidis.com>. Where the mark is a common term, specific evidence of bad faith is required because it cannot be concluded that Complainant was a target of the registration. Canned Foods, Inc. v Ult. Search Inc., No. FA 96320 (NAF Feb. 13, 2001) (“There are dozens of other enterprises that use the term "Grocery Outlet," therefore one cannot conclude that Complainant must necessarily be the special target);[xiv] Lumena s-ka zo.o. v. Express Ventures LTD, No.94375 (NAF May 11, 2000).[xv]
Accordingly, because Respondent registered the Disputed Domain without knowledge of Complainant or its mark, and because there is no evidence that Respondent registered the Disputed Domain with such knowledge, bad faith registration cannot be proven and the Complaint must, therefore, be denied.
The Panel makes the following findings:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has 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.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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 established rights in the RMT mark by registering it with the United States Patent and Trademark Office (Reg. No. 1,490,637 issued May 31, 1988 and Reg. No. 1,490,638 issued May 31, 1988). See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption).
The <rmt.com> domain name registered by Respondent is identical to Complainant’s RMT mark because the domain name fully incorporates the mark, adding only the generic top-level domain (gTLD). The Panel may find that the addition of a gTLD to Complainant’s identical mark is irrelevant and insufficient to negate the confusing similarity of the domain name. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that the <bodybyvictoria.com> domain name is identical to Complainant’s BODY BY VICTORIA mark). Thus, the Panel may conclude that the disputed domain name is identical to Complainant’s RMT mark pursuant to Policy ¶4(a)(i). See Shirmax Retail Ltd. v. CES Mktg Group Inc., AF-0104 (eResolution Mar. 20, 2000) (refusing to interpret Policy ¶4(a)(i) in the conjunctive rather than disjunctive sense in holding that “mere identicality of a domain name with a registered trademark is sufficient to meet the first element [of the Policy], even if there is no likelihood of confusion whatsoever”).
Rights or Legitimate Interests
Respondent is not commonly known by the <rmt.com> domain name. While Complainant and Respondent are both in the similar channels of commerce (relating to the oil and gas business), it is possible Respondent may not have heard of Complainant’s mark.
Since Complainant has registered its trademark, Respondent has at least constructive notice of the mark (even if Respondent does not have actual notice). While it is true trademarks are accorded different levels of enforcement depending on whether they are fanciful, misapplied or merely descriptive, these issues are not considered in the UDRP. We do not re-examine the United States Patent and Trademark Office’s decision to register a trademark, Opus Northwest Construction Corporation v. Opus Realty and Eldon Chan, FA0408000318960 and MGW Group, Inc. v. Gourmet Cookie Bouquets.com, FA0405000273996. There is no dispute RMT is Complainant’s registered trademark.
The only question remaining is whether or not Respondent has any rights to the domain name (having satisfied ourselves Complainant has rights in a three letter trademark).
Respondent has used the domain name since May 18, 1997 without hearing from Complainant. While Respondent’s web site links to sister web sites (ie: wn.com), it does not simply forward the viewer. The services provided seem to be bona fide services. Therefore, ¶4(a)(i) is satisfied because Respondent was using the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services before any notice to Respondent of the dispute. While Respondent might well be infringing upon Complainant’s trademark, such a determination is beyond the scope of the UDRP.
Registration and Use in Bad Faith
It was not necessary to consider this issue in light of the Panel’s decision on previous issue.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Houston Putnam Lowry, Chartered Arbitrator and Chair Panelist
Judge Carolyn Marks Johnson,
Professor David Sorkin
Dated: November 3, 2004
[i] Energy Source Inc. v. Your Energy Source, Case No. 96364 (NAF Feb. 19, 2001)
[ii] Tenenhaus v. Telepathy, Inc., Case No. 94355 (NAF May 17, 2000)
[iii] Trans Continental Records, Inc. v. Compana LLC, No. D2002-0105 (WIPO April 30, 2002
[iv] Kis v. Anything.com Ltd., No D2000-0770 (WIPO Nov. 20, 2000)
[v]Kur- und Verkehrsverein St. Moritz v. StMoritz.com, Case No. D2000-0617 (WIPO Aug. 17, 2000)
[vi] The Landmark Group v. DigiMedia.com, L.P., No. 285459 (NAF Aug. 6, 2004)
[vii] DK Bellevue, Inc. v. Landers, D2003-0780 (WIPO Nov. 24, 2003)
[viii] Intermap Techns. Corp. v. Salvage Elec. Inc., FA 203130 (NAF Dec. 12, 2003)
[ix] Experimental Aircraft Ass’n (EAA) v. EAA.COM, FA 206309 (NAF Dec. 16, 2003)
[x] Pocatello Idaho Auditorium District v. CES Marketing Group, Inc., Case No 103186 (NAF Feb. 21, 2002
[xi] Piper.com The New Piper Aircraft, Inc. v. Piper.com, No.FA94367 (NAF May 2, 2000)
[xii] Village Resorts Ltd. v. Steven Lieberman, Case No. D2001-0814 (WIPO Aug. 29, 2001)
[xiii] Futureworld Consultancy Pty Ltd. v. Online Advice, No. D2003-0297 (WIPO July 18, 2003
[xiv] Canned Foods, Inc. v Ult. Search Inc., No. FA 96320 (NAF Feb. 13, 2001)
[xv] Lumena s-ka zo.o. v. Express Ventures LTD, No.94375 (NAF May 11, 2000)