13th Sep 2002
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sustainable Forestry Management Limited v. SFM.com and James M. van Johns "Infa dot Net" Web Services
Case No. D2002-0535
- The Parties
The Complainant is Sustainable Forestry Management Limited, a company incorporated under the laws of Bermuda, with its principal place of business in London, United Kingdom. The Complainant is represented by its general counsel, Mr. Eric Bettelheim.
The party initially named by the Complainant as the Respondent, was James M. van Johns "Infa dot Net" Web Services, with an address in Johnstown, Pennsylvania, United States of America. Subsequently, the Complaint was amended to identify the Respondent as "SFM.com", although the Complainant has continued to refer in the headings of documents filed by it, to Mr. van Johns and "Infa dot Net" Web Services" (in addition to sfm.com). The Respondent is represented by Mr. Ari Goldberger, of ESQwire.com Law Firm, of Cherryhill, New Jersey, United States of America.
- The Domain Name and Registrar
The domain name at issue is <sfm.com> ("the domain name"). The domain name is registered with Bulkregister.com, Inc, of Baltimore, Maryland, United States of America ("the Registrar").
- Procedural History
This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, in accordance with the Rules for the Policy approved by ICANN on October 24, 1999 ("the Rules") and the Supplemental Rules for the Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center (the "Center").
The Complaint was received by the Center on June 7, 2002 (hard copy) and June 17, 2002 (email copy).
Following receipt of an email inquiry from the Center, the Registrar confirmed on June 11, 2002, that it had received a copy of the Complainant’s Complaint, that the domain name was registered with the Registrar, and that the Registrant of the domain name is <sfm.com>. The Registrar provided an address in Turtle Creek, Pennsylvania for the domain name registrant, and the name "James M. van Johns "Infa dot Net" Web Services, of Johnstown, Pennsylvania, as the administrative contact for the domain name.
The Registrar’s advice of June 11, 2002, shows that the domain name was registered on March 3, 1999. The status of the domain name was described by the Registrar as "locked". The Registrar confirmed that the Policy applies to the domain name, and that the language of the registration agreement for the domain name is English.
On June 13, 2002, the Respondent’s representative contacted the Center requesting a copy of the Complaint. Mr. Goldberger advised that the Respondent had not received a copy of the Complaint.
On June 14, 2002, the Center forwarded to the Complainant a Complaint Deficiency Notification, listing a number of defects in the Complaint. One of those defects related to the person/entity specified in the Complaint as the Respondent – the Center advised the Complainant that its advice from the Registrar was that the Respondent is "SFM.com".
On June 17, 2002, the Complainant’s representative forwarded to the Center a document entitled "Response to Complaint Deficiency Notification". In this document, the Complainant rectified the specific deficiencies notified by the Center, with the exception of the issue the Center had raised over the naming of the correct party as Respondent.
In this document, the Complainant also described difficulties it had encountered in attempting to deliver a copy of the Complaint to the Respondent. It appears that the courier’s attempts to contact the Respondent were on all occasions but one met with a recorded message advising simply that the telephone was switched off. On June 17, 2002, having been informed by the Center of the contact details for the Respondent’s representative, the Complaint was sent by courier and email to the Respondent’s representative.
On June 18, 2002, the Complainant’s representative forwarded to the Center a Supplemental Response to the Complaint Deficiency Notification. This document still showed the administrative contact for the domain name as the Respondent. The Complainant alleged in this document that the originally named Respondent (James M. van Johns "Infa do net" Web Services) was the domain name registrant as revealed from the search of the bulk register WHOIS database. The Complainant alleged that the Respondent had altered its registration on June 11, 2001, to avoid the domain name registrant appearing on other global databases, including Versign. The Complainant alleged that this had been done in an effort at concealing the true identity of the domain name registrant, and provided further evidence of the Respondent’s alleged bad faith.
On June 26, 2002, the Center drew to the Complainant’s attention the Registrar’s advice that the domain name registrant was recorded as "SFM.com". The Complainant was advised that, in order to implement any Panel decision rendered at a later stage, there would need to be a further amendment to the Complaint, listing the correct registrant as Respondent. That communication from the Center was copied to the Respondent’s representative.
On June 27, 2002, the Complainant’s representative forwarded to the Center a document described as "Second Amendment to Complaint and Further Submission of the Complainant". In this document, the Complainant requested that the Complaint be amended to identify the Respondent as "SFM.com", with the address given at Turtle Creek, Pennsylvania.
With the various amendments to the Complaint described above, the Center was satisfied that the Complaint (as amended) met the formal requirements of the Rules and the Supplemental Rules. On July 3, 2002, the Center issued a formal Notification of Complaint and Commencement of Administrative Proceeding. The formal date of the commencement of the administrative proceeding was stated to be July 3, 2002, and the last day for the Respondent to submit its Response to the Complaint, was July 23, 2002.
On July 16, 2002, the Complainant submitted a further document entitled "Further Submissions of the Complainant and Request for Ruling in Default". This document described difficulties the Complainant says it encountered in attempting to serve the amendments to its Complaint on the Respondent. The document went on to allege various matters said to constitute bad faith on the part of the Respondent, and asked that a ruling be made that the Respondent "has no proper interest in the disputed domain name", and that the domain name should be transferred forthwith to the Complainant. The Center acknowledged receipt of the July 16 supplemental filing by the Complainant, and advised that it would be a matter for the Panel, when appointed, to decide whether to admit and consider the document.
The Respondent submitted its Response on July 24, 2002. Some amendments were made to the emailed version of the Response, by two emails sent to the Center, and copied to the Complainant’s representative, on July 24, 2002. The Response contained allegations of reverse domain name hijacking.
The Response refers to James M. van Johns "Infa dot Net" Web Services as the Respondent, rather than "SFM.com". However a declaration from Mr. Johns which is attached to the Response makes it clear that he was the person responsible for the registration of the domain name, and that he is the party with effective control over it. In the circumstances, the Panel is prepared to treat the Response as being filed on behalf of <sfm.com> as well as Mr. van Johns, and to assume that Mr. Goldberger is acting for the domain name registrant as well as Mr. van Johns.
On August 14, 2002, the Complainant filed a Reply to the Response. Again, the Center advised the Complainant that it would be a matter for the Panel in its discretion to decide whether the Reply document would be admitted and considered.
The Complainant elected to have its Complaint resolved by a one-person Panel. The Respondent sought a three-person Panel. Both parties have paid the required amounts to the Center.
The Center invited Mr. Warwick A Smith, of Auckland, New Zealand, to serve as Presiding Panelist in the case. It also invited Mr. David E Sorkin, of Chicago, Illinois, United States of America, and Mr. Tony Willoughby of London, United Kingdom, to be Co-panelists. The Center transmitted to all Panelists a form of Statement of Acceptance, and requested from each a Declaration of Impartiality and Independence.
All Panelists have advised acceptance and forwarded to the Center executed declarations of impartiality and independence. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.
The Center has forwarded to the Panel the relevant submissions and the record. In terms of Rule 15(b) of the Rules, in the absence of exceptional circumstances, the Panel is required to forward its decision by September 13, 2002.
The Panel has independently determined and agrees with the assessment of the Center that the Complaint as amended meets the formal requirements of the Rules and the Supplemental Rules.
- Factual Background
According to the Complaint, the Complainant is a corporation involved in the provision of forestry management services and forest products. The original Complaint says little more about the Complainant, but in its supplemental filing dated August 14, 2002 (which for reasons referred to later in this decision the Panel is prepared to admit and consider), it appears that the Complainant was incorporated in October 1999, and that its business involves environmental consulting and planning services, educational services and research, and development relating to the environment.
The August supplemental filing asserts that the Complainant’s operations are global, with operational centers in the United States, Europe and Australia. It says that the Complainant is known in the industry by and under the SFM trademark.
A March 2001 press release issued by the Complainant, and a number of articles annexed to its August 2002 supplemental filing, describe the nature of the Complainant’s activities. Very generally, it appears that the Complainant is involved in reforestation projects with a view to acquiring (and subsequently trading in) "carbon credits", which the Complainant expects to earn under the Kyoto Protocol (or under one or more national "greenhouse gas" emission reduction regimes adopted or likely to be adopted by countries ratifying the Kyoto Protocol).
An article in the July-August 2002 edition of the magazine "Environmental Finance", refers to Sustainable Forestry Management ("SFM"), as a "new fund vehicle" which has been in the planning stages for the past 2 years, but has recently been reinvented. The article reports that "SFM" is aiming to raise up to $200m by the end of the year, and will focus on forestry projects with the highest possible carbon yield. The article contains reference to "planned investments" in South America and Africa.
The Trade Marks Relied Upon
The Complainant does not rely on any registered trade mark or service mark. It produced (as an annexure to the original Complaint) a copy of a device featuring the letters SFM in the color white within a blue circle, with gray semi-circles diminishing in width positioned above and below the blue circle. This was said to be a "copy of the trade mark and service mark in which the Complainant has an interest". From the August 2002 supplemental filing, it appears that this device has also been used on the Complainant’s letterhead.
In its August supplemental filing, the Complainant attached a schedule showing the status of a total of seven trademark applications, four in the European Community and three in the United States. Two such applications (one in the European Community and one in the United States) appear to relate to the word mark SRM, and it is not clear what relevance they might have to this proceeding. It appears from the schedule that there is a Community Trademark registration for a blue circle device (apparently without reference to the letters SFM), but that all of the other applications for marks consisting of (or including) the letters SFM are either still pending, or, in the case of an application to register the word mark SFM in the United States, the subject of a "final refusal" notification from the US Patents and Trade Marks Office. The Complainant has not produced copies of any of the trade mark or service mark applications referred to in this Schedule.
In its August supplemental filing, the Complainant says that it was unaware that the application for the SFM word mark in the United States was the subject of a final refusal. It says that the office action of the US Patent and Trademark Office making the refusal to register final, was mailed to the Complainant’s trademark agent in the United States on June 27, 2002, but the agent did not report the change in status of the trademark application to the Complainant until enquiry was made following receipt of the Response in this proceeding. The Complainant says that it has until December 27, 2002 to file a request for reconsideration and/or a notice of appeal in response to the decision of the US Patent and Trade Marks Office not to accept the trademark for registration. The Complainant says that it is preparing the substance of a request for reconsideration and appeal, and is proceeding with both application and appeal.
As for its other trademark applications shown in the Schedule attached to the August 2002 supplemental filing, the Complainant says, "all but one of the other applications are expected to be accepted and to proceed to registration". Apart from the United States application for the word mark SFM, in respect of which a final refusal Notice has been received, the only other application to register the word mark SFM is the Community Trademark application No 1962448 filed on November 20, 2000. The Complainant does not say if this is the "other application" (i.e. other than the United States application for the word mark SFM), which is not expected to be accepted and to proceed to registration.
Attached to its Response, the Respondent has produced extracts from the United States Patent and Trademark office website, relating to the Complainant’s application to register the word mark SFM in the United States. The pages from the US PTO website produced by the Respondent (downloaded on July 23, 2002), show the applicant/owner as RIE Associates Limited, of 21 Southampton Row, London, United Kingdom. Similarly, a US PTO website printout downloaded on July 23, 2002, shows that the application for the mark SFM plus device was made by RIE Associates Limited. Neither printout refers to the Complainant, and in its August 2002 supplemental filing the Complainant did not address the question of the identity of the Applicant for these marks or the nature of any interest the Complainant may have in them.
The Respondent’s Web Page And the Complainant’s Pre-Commencement Communications
The Complainant has produced a copy of a page from the website at "www.tmictime.net", which it says is operated by the Respondent and which is the web site to which the domain name resolves. That page contains the statement: "website for [SFM.COM] domain name is under construction!" The page also contains the statement: "The domain name sfm.com has been reserved. A web site is coming soon!" This web page advertises a software product called "Evidence Eliminator", which appears to be a software product designed to protect the internet user’s privacy by removing from the user’s PC evidence of previous internet use (e.g. websites visited, etc). The Respondent does not dispute that it operates this web site.
The web page just referred to provided a click button for email contact with the site operator, and the Complainant has produced correspondence from its agent in which attempts were made to ascertain what was happening with the domain name, and indicating the agent’s interest in acquiring it. Email inquiries were first made to the website, and then to Mr. van Johns as the administrative contact for the domain name. Having received no response to the emails (and apparently having been unsuccessful with attempts to make contact on the telephone), the Complainant’s agent wrote to Mr. van Johns on May 28, 2002 asking if he was prepared to transfer the domain name. The letter stated "SFM Limited has interests in registrations of the trademark SFM in the major jurisdictions". It went on to say that the agent was authorized to agree a fair compensation price for the transfer of the domain name to the Complainant.
Also on May 28, 2002, the Complainant itself wrote to Mr. van Johns. This time, the letter threatened the filing of a Complaint with the Center, and asked that Mr. van Johns cease and desist any further listing or use of the domain name.
Neither the Complainant nor its agent received a response to any of these communications.
- Parties’ Contentions
- It is the owner of a trademark and service mark consisting of the letters SFM in the colour white within a blue circle with gray semi-circles diminishing in width positioned above and below the blue circle.
- It has pending applications for trademarks and service marks consisting of or containing the letters "SFM", in the United States and in the European community.
- The initials "SFM" are the initial letters of the Complainant’s name, and are incorporated in its corporate logo, trademark and service mark. The domain name is identical to the initials in the Complainant’s service mark and trademark.
- The Respondent does not appear to have rights to or legitimate interests in the domain name.
- The Respondent "would appear to have registered" the domain name as part of a pattern of conduct that has been the subject of several rulings in similar circumstances.
- The Respondent does not appear to be making any use, legitimate or otherwise, of the domain name.
- The circumstances indicate that the domain name was registered or acquired primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the owner of the trademark or service mark, to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the domain name registrant’s out-of-pocket costs directly related to the domain name and therefore in bad faith.
- The domain name "appears to have been registered" in order to prevent the owner of a trademark or service mark from reflecting the mark in a corresponding domain name.
- There is no evidence that any website is under construction, or "coming soon", as claimed in the Respondent’s web page.
- As the only use to which the Respondent has been putting the domain name is to refer internet users to the Respondent’s email address, there is a reasonable implication that the Respondent intentionally intended to attract for financial gain, internet users to the registrant’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location, or of a product or service on the registrant’s website or location.
- There is no evidence of the Respondent’s use of, or demonstrable preparations to use, the domain or a name corresponding to the domain name, in connection with a bona fide offering of goods or services.
- The Respondent has not been commonly known by the domain name, and the Respondent has acquired no trademark or service mark rights in regard thereto.
- The domain name registrant is not making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.
- The Respondent has registered numerous domain names in addition to the domain name, and does not appear to be using any of them for legitimate purposes. The Respondent has on numerous occasions behaved in similar fashion, and rulings have been entered against the Respondent in administrative proceedings such as this.
- The Respondent failed to reply to the Complainant’s numerous attempts to contact it, and the Respondent did not comply with the Complainant’s cease and desist letter.
- The Respondent has attempted to conceal the identity of the domain name registrant, by altering the registration. The administrative contact for the domain name (originally identified as the Respondent in the Complaint) has, since the start of the administrative proceeding, "twice manipulated the domain name’s registration details" in apparent attempts to frustrate these proceedings.
- The Respondent has appointed a representative who has not provided a postal or other address to which documents can be delivered, and has refused delivery of documents attempted by email, courier, or post. The Respondent has also provided a false address for the registrant of the disputed domain name.
- The fact that the Complainant has pending trademark applications for the mark SFM, is prima facie evidence of its rights in the mark (citing the National Arbitration Forum’s decisions inAmerican Anti-Vivisection Society v Ina.net Web Services(NAF Case No 95685) and Ontrac Data International Inc v Barbara Drewett (NAF Case No 99767), and the WIPO Decision Case No. D2002-0305 in La Francaise des Jeux v L Welsr).
- The Complainant has used the trademark SFM consistently and comprehensively since its incorporation in October 1999, in relation to environmental, consulting and planning services, educational services and research and development relating to the environment. The Complainant’s operations are global with operational centers in the United States, Europe and Australia. The Complainant is known in its industry by and under the SFM trademark.
- (In response to the Respondent’s allegation of reverse domain name hijacking), the Complainant was not guilty of bad faith in failing to disclose the "final refusal" status of its United States application No 76/166854 for the SFM mark. First, the Complainant has the other trademark applications in Europe and the United States referred to earlier. Secondly, the Complainant was unaware at the time of making the Complaint that the status of its application No 76/166854 had changed. The "final refusal" status of that application was only notified to the Complainant’s trademark agent in the United States on June 27, 2002, and the agent did not report the change in status to the Complainant until the Complainant had made inquiry following receipt of the Respondent’s Response in this proceeding. The "final refusal" of the Complainant’s United States application No 76/166854 isnotin fact a final indication that the application has failed – the Complainant can pursue (and is pursuing) the options of reconsideration by the US PTO and/or appeal.
- The Respondent intends to use the domain name for an anti-spam email service, to be called "Spam-Free Mail". "SFM" is a natural abbreviation for "Spam-Free Mail".
- SFM is a simple three-letter combination with substantial third party use.
- The Respondent had never heard of the Complainant when the domain name was registered, and there is no evidence that the domain name was registered with the Complainant in mind, or to confuse consumers.
- The Respondent’s failure to respond to the various attempts at contact made by the Complainant before the commencement of the proceeding, is irrelevant. Had the Respondent been interested in selling the domain name to the Complainant, it would have replied.
- The Complainant had not even filed a trademark application in the United States until over a year after the Respondent had registered the domain name.
- The three-letter term SFM is in common use by parties with no affiliation with the Complainant. A google.com search on "SFM" yielded over 60,000 web pages having no affiliation with the Complainant.
- The Complainant has no valid trademark on which to base the Complaint. Pending trademark applications do not provide the Complainant with enforceable rights (citing National Arbitration Forum Case No 97051,Business Architecture Group Inc v Reflex Publishing).
- The Complainant failed to disclose that its application No 76/166854 was the subject of a final refusal notification mailed on June 27, 2002, prior to the Complainant submitting its amended Complaint on July 3, 2002.
- There is no basis for a finding that the Complainant enjoys common law trademark rights to SFM. Citing theBusiness Architecture Groupcase (supra), a Complainant who does not have a registered trademark must demonstrate that it has common law trademark rights by showing that the mark has acquired distinctiveness when associated with the Complainant’s goods or services. The Complainant has produced no evidence of any such distinctiveness.
- The Respondent has a legitimate interest in the domain name. The mere intent to use a domain name for a business is sufficient to establish a legitimate interest. All that is required from the Respondent is a "plausible explanation" (citingWIPO Case No. D2000-1124,IG Index plc v Index Trade).
- While the Respondent has not yet developed its Spam-Free Mail service, and indeed has not yet developed the technology to do so, it will do so when the climate for raising funds to develop and operate the business improves. In the meantime the Respondent is using the domain name to generate advertising revenue. That also establishes Respondent’s legitimate interest.
- Anyone is entitled to register a three-letter combination, and the Respondent’s legitimate interest is establishedper seat the point of registration, since no other party can claim exclusive rights to it.
- There is no evidence that the domain name was registered and is being used in bad faith. None of the examples of bad faith registration provided at paragraph 4(b) of the Policy have been established. Specifically, there is no evidence of any intent to sell to the Complainant or to a competitor of the Complainant, to disrupt the Complainant’s business, or to prevent it from reflecting its trademark in a corresponding domain name. Nor is there any evidence of any intent to confuse consumers.
- The Complainant’s allegations relating to other proceedings allegedly involving the Respondent, were all default judgments where the Respondent did not have an opportunity to defend itself. In any event, those other proceedings have no relevance to this proceeding, which the Panel must decide on its own merits.
- Allegations of reverse domain name hijacking
The Respondent has a legitimate interest in the domain name, and has not been guilty of any bad faith. SFM is a common three-letter term to which the Complainant does not have exclusive rights. A Complaint is brought in bad faith when it is based on a trademark registration filed after the registration of the disputed domain (citing John Ode d/ba ODE and ODE – Optimum Digital Enterprises v Intership Limited, and the cases there referred to).
- The Complainant misrepresented the status of one of its alleged trademarks, stating that its marks were "pending in the United States" when in fact one of the applications (No. 76/166854) was the subject of the June 27, 2002 "final refusal to register" notification.
- Reverse domain hijacking occurs when a Complainant knows there is no plausible basis for its Complaint (citingProm Software Inc v Reflex Publishing Inc,WIPO Case No. D2001-1154 – "Complainant’s knowingly flimsy claim not only wholly fails to meet the threshold for transfer of the domain name at issue, but also constitutes reverse domain name hijacking."). In this case, the Complainant has no plausible basis for its complaint.
- The Late or Supplemental Filings
The Complainant filed a number of supplementary documents in order to meet the Center’s deficiency notification. Those supplemental filings are properly part of the Complaint notified to the Respondent, and they have been considered by the Panel.
In addition, the Complainant filed its document entitled "Further submissions of the Complainant and request for ruling in default" on July 16, 2002, and its supplemental submission document dated August 14, 2002.
The Panel declines to admit the Complainant’s July 16, 2002, supplemental filing. It was filed before the expiry of the period allowed for filing a Response, and at a time when no allegations of reverse domain name hijacking had been made against the Complainant. Furthermore, by July 16, 2002, the Respondent’s representative had communicated with the Center and provided additional contact details for the Respondent. In the circumstances, the Panel sees no basis for admitting the July 16, 2002, supplemental filing.
The August 14, 2002 supplemental filing is in a different category. By then, the Respondent’s Response had been lodged, with its allegations of reverse domain name hijacking. Under Rule 10(b) of the Rules, the Panel must ensure that each party is given a fair opportunity to present its case. That "fair opportunity" requires that the Complainant must be given a chance to respond to the allegations of reverse domain name hijacking. Given the width of the Respondent’s reverse domain name hijacking allegations (including references to earlier Panel decisions suggesting that a Panel should uphold an allegation of reverse domain name hijacking whenever there is no plausible basis for a Complaint, or where "it should have been apparent to the Complainant that it could not prove all the elements required by the Policy"), the Panel is satisfied that the Complainant’s August 14, 2002 supplemental submission should be admitted in full. The Panel has had due regard to it in reaching its decision in the case.
In the view the Panel takes of the case as a whole, there is no need for the Respondent to be given any opportunity to respond to the Complainant’s August 14, 2002 supplemental filing.
- Discussion and Findings
General Principles under the Policy and the Rules
Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving:
(i) That the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) That the domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [the respondent has] registered or 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 [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent has] 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 [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.
Paragraph 4(c) of the Policy sets out a number of circumstances, again without limitation, which may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, the disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Where, before any notice to [the respondent] of the dispute, [the respondent’s] 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; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) Where [the respondent is] 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 at issue.
Paragraph 15(a) of the Rules requires the 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 – domain name identical or confusingly similar to trademark or service mark in which Complainant has rights
The majority of the Panel is not satisfied on the evidence produced by the Complainant that it has rights in any trademark or service mark to which the domain name is identical or confusingly similar.
The Complainant is not the registered proprietor of any relevant trademark, but it has produced as an annexure to its August 2002 Supplemental Statement, a Schedule showing that it has made application to register seven trademarks, all in international Classes 35, 36, 41 and 42. Four of the applications are in the European Union and three are in the United States of America. Two of the trademarks referred to in that Schedule appear to relate to the word mark "SRM", and one (Community Trademark Application 2083731) appears to relate only to a blue circle device (apparently without reference to the letters SFM). Of the remaining four applications, two relate to the letters SFM with the blue circle device, and the other two are applications to register the word mark SFM.
One of the applications to register the word mark SFM was filed on November 16, 2000. This application is the United States one which is the subject of the final refusal notification referred to earlier. The other United States application which appears to be relevant, is a November 2001 application to register the letters SFM plus the blue circle device. The Complainant’s advice on this application is that it has received a letter from an examining attorney in the US Patent and Trademarks Office, "requesting additional information and/or making an initial refusal".
In the European Union, there is an application for the word mark SFM, and an application to register the letters SFM with the blue circle device. The Complainant’s Schedule advises that both applications are still subject to examination.
The Complainant has not produced copies of any of these applications, nor any supporting evidence which may have been filed with them.
In its August 2002 supplemental filing, the Complainant refers to the United States application for registration of the word mark SFM, and goes on to say: "All but one of the other applications are expected to be accepted and proceed to registration." The Panel is not told which of the applications the Complainant does not expect to proceed to registration.
A final matter relating to the applications for trademark registration, is that the US Patent and Trademarks Office website extracts produced by the Respondent, appear to show the owner/applicant as RIE Associates Limited, with a London address different from that of the Complainant or its representative. Whether there exists some licensor/licensee relationship between RIE Associates Limited and the Complainant is not explained, although the Complainant had the opportunity to do so in its August 2002 supplemental filing.
In the circumstances described above, the Panel (unanimously) considers that it can place little, if any, weight on the trademark applications described in the Schedule to the August 2002 supplemental filing.
The Complainant might still satisfy the requirements of paragraph 4(a)(i) of the Policy if it could show that it enjoys common law rights in a trademark which is identical to the domain name or confusingly similar to it. The Complainant might do that by demonstrating that it has made sufficient actual useof such a mark, that the mark has become distinctive of the Complainant or its products (Business Architecture Group Inc v Reflect Publishing, NAF Case 97051; Decision June 5, 2001).
However, the majority of the Panel is of the view that the Complainant has not produced sufficient evidence to establish that it enjoys any such common law rights. The Complainant was only incorporated in October 1999, and the article in the July-August 2002 edition of "Environmental Finance" refers to the Complainant as a "new fund vehicle", which has been in the "planning stages" for the past two years. The article contains reference to "planned investments" in South America, and it appears that the only project so far undertaken by the Complainant has been the funding of a reforestation project in Montana, USA (in exchange for carbon credits). Such evidence of use of the letters "SFM" as the Complainant has produced, suggests that the use has been recent, and primarily in conjunction with the blue circle device. (In its original Complaint, the trademark and service mark in which the Complainant claimed to have an "interest", was the mark incorporating the blue circle device with the letters "SFM" in white lettering. It says that this blue circle device has appeared on its letterhead.)
The Complainant has simply not produced enough evidence for the Panel to find that the Complainant has rights in the letters "SFM", apart from the blue circle device.
The articles do refer to the Complainant as "SFM", but it is not clear whether the simple shorthand abbreviation for the longer expression "Sustainable Forestry Management" has received significant public use without the blue circle device.
Even if there were sufficient use of the SFM mark (with or without the blue circle device) to establish the mark as a common law trademark or service mark, the Complainant has produced no evidence showing that it has a right to the mark. The point is put in issue by the reference to the company RIE Associates Limited in the US Patent and Trademarks Office website extracts produced by the Respondent, and the Complainant has not answered it.
The dissenting Panelist on this topic takes the view that paragraph 4(a)(i) is a relatively low hurdle for a complainant to overcome, the ‘crunch’ issue being paragraph 4(a)(iii). While agreeing with his colleagues that the evidence in support of the existence of common law rights is very sparse, the dissenting panelist believes that there is enough there for him to accept on the balance of probabilities that if a third party commenced trading in the same geographical and business area of activity under the name SFM, the Complainant would be likely to succeed in a passing off action. On that basis the dissenting Panelist takes the view that the Complainant has done just enough to establish common law trade mark rights in the mark SFM.
Paragraphs 4(a)(ii) and (iii) of the Policy – Respondent has no rights or legitimate interests, and domain name registered and being used in bad faith
The Panel’s finding that the Complainant has not demonstrated that the domain name is identical or confusingly similar to some trademark or service mark in which the Complainant has rights, is sufficient for the Panel to dismiss the Complaint without reference to the matters the Complainant is required to prove under subparagraphs (ii) and (iii) of paragraph 4(a) of the Policy.
However, it is clear to the Panel that the Complainant also faces insurmountable problems under paragraph 4(a)(iii) of the Policy (registration and use in bad faith). On this point, the Panel can state its views quite shortly. The domain name was registered in March 1999, well before the Complainant made any application to register any of the marks on which it relies. Indeed, the Complainant was only incorporated in October 1999, some seven months after the domain name was registered.
The Complainant must show that the domain name was registered in bad faith, the bad faith being directed at the Complainant. The fact that the Complainant did not exist at that date, means that the Complainant could only attempt to establish bad faith registration by reference to the prior rights of parties other than itself. It has produced nothing of that nature.
The Complainant has recited the various examples of bad faith registration and use set out at paragraph 4(b) of the Policy. However, it has not produced any evidence in support of those allegations. For example, there is no evidence of any intention to sell the trademark to the Complainant, or to a competitor of the Complainant, for a consideration in excess of the out-of-pocket costs directly related to the domain name. The Respondent’s failure to reply to the pre-commencement approaches made to it by the Complainant does not constitute evidence of any such intention.
Clearly, the Respondent could not have registered the domain name in order to prevent the Complainant from reflecting a trademark owned by it in a corresponding domain name, and there is no evidence of the domain name having been used primarily for the purpose of disrupting a competitor’s business.
Similarly, there is no evidence that the Respondent has intentionally attempted to attract internet users to its website by creating a likelihood of confusion with any SFM mark which might be owned by the Complainant.
The Complainant has referred to various other Panel decisions which it says show that the Respondent has acted in bad faith with regard to domain names on other occasions. However, the Panel must deal with this case on its own merits, and we cannot take into account decisions made in other cases on the basis of different evidence and submissions.
For all of these reasons, the Complaint must be dismissed.
- Reverse Domain Name Hijacking
Reverse domain name hijacking is defined in the Rules as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name". The onus of proving bad faith is on the Respondent. Mere lack of success of the Complaint will not be enough.
The view of the majority of the Panel on this topic, is that the Respondent’s allegations of reverse domain name hijacking should be upheld. The reasons for that view are as follows:
The evidence presented by the Complainant itself demonstrates conclusively that the disputed domain name could not have been registered in bad faith. The Complainant was incorporated and began using its claimed mark in October 1999, more than six months after the disputed domain name was registered. On this basis alone, the majority would find that the Complaint was brought in bad faith and constitutes an abuse of this administrative proceeding.
The Complainant appears to be a substantial enterprise and is represented by competent legal counsel, yet it initiated a proceeding that is quite clearly devoid of merit. Perhaps, it did so as a strategic negotiating tactic, or merely because the costs of pursuing this matter were lower than the costs of engaging in a critical analysis of its claims. In any event, the Complainant's actions have imposed substantial burdens and costs upon other participants in this process, including the Respondent and the Panelists, and more importantly, frivolous complaints such as this risk diminishing the credibility of the entire UDRP process. This Panel is not empowered to impose sanctions beyond a finding of reverse domain name hijacking, but this case serves as a good example of an instance in which such sanctions would likely be warranted.
The views of the dissenting Panelist on this topic, are as follows:
While the Complaint falls well short of success, and there are some troubling gaps in the Complainant’s case, on balance there is not enough in the evidence for the Panel to safely infer that the Complainant has acted in bad faith in invoking the Policy. The reasons for that opinion are as follows:
- The Panel cannot say for certain that, with more detailed and extensive evidence, the Complainant would not have shown that it enjoys some common law trademark rights in the mark.
- The Complainant has placed some weight on various other Panel decisions where the Respondent is said to have been guilty of bad faith. While other decisions decided on different facts and submissions cannot provide useful evidence in support of the Complaint in this case, the Respondent does acknowledge that it was involved in three of the cases cited by the Complainant. The Respondent says that they were all default judgments, where the Respondent did not have an opportunity to defend itself. The Respondent does not explainwhy it was apparently unable to defend itself. That may not be evidence against the Respondent in this case, but the Panel cannot safely conclude that the Complainant did notgenuinely believe that it could be.
- Nor can the Panel safely conclude that the Complainant must have appreciated the difficulties posed by the fact that the domain name was registeredbefore it could lay claim to any relevant trademark or service mark rights. As noted above, the Complainant appears to have believed that the references to the other Panel decisions could bridge that gap.
- The domain name has been registered for over 3½ years, but the only use made of it so far appears to have been as a link to one of the Respondent’s websites which is used for general advertising.
- A finding of reverse domain name hijacking will often be appropriate in circumstances where, prior to commencement of the administrative proceeding, the Respondent has provided the Complainant with clear and compelling evidence of its entitlement to register and use the domain name, but the Complainant has gone ahead with its complaint in the face of that evidence. In this case, the Respondent elected to ignore the Complainant’s pre-commencement approaches. To that extent, at least, the Respondent may be said to have encouraged the making of the Complaint.
- The Respondent points to the Complainant’s failure to disclose the "final refusal" notification on its United States application to register the word mark SFM as an indicator of bad faith on the Complainant’s part. However, it appears that the "final refusal" notification was only given on June 27, 2002, some weeks after the Complainant had filed its original Complaint. The Complainant says that it did not in fact learn of the final refusal notification until it made inquiry of its American agents following receipt of the Response in this proceeding. The Panel does not have any evidence which would entitle it to reject that explanation.
- There were a number of basic technical deficiencies in this Complaint as originally filed, and obviously necessary evidence in support of the claimed common law trademark rights was omitted. Those failings are perhaps more indicative of poor preparation and an apparent lack of appreciation of the requirements of the Policy and the Rules than of any bad faith in the filing of the Complaint.
For the foregoing reasons, the Panel’s unanimous decision is that the Complaint is dismissed. The Panel therefore declines to order a transfer of the domain name to the Complainant. In accordance with the views of the majority on the issue of reverse domain name hijacking, the Panel declares that the Complaint has been brought in bad faith and constitutes an abuse of the administrative proceeding.
Warwick Alexander Smith
(Dissenting on the issue of reverse domain name hijacking)
(Dissenting from the majority’s finding on Paragraph 4(a)(i) of the Policy)
Dated: September 13, 2002