29th Apr 2011

NATIONAL ARBITRATION FORUM

 DECISION 

Skycam, Inc. v. Administrator, Domain / Vertical Axis, Inc

Claim Number: FA1102001372311

    PARTIES

Complainant is Skycam, Inc. (“Complainant”), represented by Jody L. Factor of Factor & Lake, Ltd., Illinois, USA.  Respondent isAdministrator, Domain / Vertical Axis, Inc (“Respondent”), represented by Ari Goldberger of ESQwire.com Law Firm, New Jersey, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <skycam.com>, registered with Nameview, Inc.

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

Flip Petillion (President), Hon. Neil Brown QC and David E. Sorkin as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 10, 2011; the National Arbitration Forum received payment on February 10, 2011.

On February 18, 2011, Nameview, Inc. confirmed by e-mail to the National Arbitration Forum that the <skycam.com> domain name is registered with Nameview, Inc. and that Respondent is the current registrant of the name.  Nameview, Inc. has verified that Respondent is bound by the Nameview, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On March 1, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 21, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@skycam.com.  Also on March 1, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

A timely Response was received and determined to be complete on March 21, 2011.

Complainant submitted a timely Additional Submission on March 28, 2011.

Respondent submitted a timely Additional Submission April 4, 2011.

On April 4, 2011, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Flip Petillion, Hon. Neil Brown QC and David E. Sorkin as Panelists.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant asserts Respondent’s <skycam.com> domain name is identical to its SKYCAM mark. Complainant further contends that Respondent has no rights or legitimate interests in the domain names.  Finally, Complainant contends that Respondent registered and is using the domain names in bad faith.

B. Respondent

Respondent argues that the disputed domain name is a simple combination of two common and descriptive words – specifically the generic word ‘sky’ followed by the generic short-hand ‘cam’, which is common parlance for ‘camera’. Respondent contends that did not register the disputed domain name with Complainant’s trademark in mind and that it had no knowledge of Complainant, its website, its business name or trademark when it registered the domain name almost ten years ago.

Respondent argues i) that the disputed domain name is not identical or confusingly similar to a mark in which Complainant alleges enforceable rights, ii) that Respondent has rights and legitimate interest in the disputed domain name and, iii) that the disputed domain name was not registered or used in bad faith. Finally, Respondent contends that the Complaint should be barred by the doctrine of laches, because the Complainant waited more than ten years to initiate the UDRP proceedings.

C. Additional Submissions

Complainant

In its additional submission, Complainant argues that the doctrine of laches is not an appropriate defense, as it does not completely preclude the requested relief in the complaint and requires prejudice against the party from whom relief is sought.  According to Complainant, Respondent has not shown any evidence of prejudice.

Complainant further asserts that the alleged generic nature of the mark SKYCAM is of no relevance in assessing the identity or confusing similarity to Complainant’s registered trademark. Moreover, Complainant contends that Respondent’s use of the disputed domain name is unrelated to the alleged descriptive meaning of the domain name and that therefore, Respondent has no right or legitimate interest in the disputed domain name.

Finally, Complainant argues that Respondent has clearly acted in bad faith by not taking any proactive steps to avoid a bad faith registration. Furthermore, Complainant opines that evidence of bad faith registration can also be found in Respondent’s offer to sell the disputed domain name.

Respondent

In its reply to Complainant’s additional submission, Respondent argues that generic marks are unenforceable under the UDRP, even if the mark is registered and incontestable. Respondent contends to have rights and a legitimate interest in the disputed domain name, because of its descriptiveness.

Respondent further contends that the doctrine of laches is applicable and that the long delay in any event raises an inference that the Complainant did not truly believe that Respondent engaged in bad faith registration.

Finally, Respondent asserts that there is no evidence that Respondent was aware of Complainant in 2001 and no basis to conclude that Complainant was known by the public as ‘Skycam’. Absent direct proof that a descriptive term domain name such as <skycam.com> was registered solely for the purpose of profiting from Complainant’s trademark rights, there can be no finding of bad faith registration and use, according to Respondent.

FINDINGS

Complainant is the holder of the following trademark registration:

U.S. Reg. No. 1,634,708 – SKYCAM, issued on February 12, 1991.

Complainant first used its trademark September 1983.

Respondent, Vertical Axis, Inc. registered the domain name <skycam.com> on June 25, 2001. 

Respondent uses the disputed domain name in connection with a directory website displaying numerous third-party links.

The disputed domain name is offered for sale by a domain name broker.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

Respondent has no rights or legitimate interests in respect of the domain name; and

the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant, Skycam, Inc., uses the SKYCAM mark in connection with stabilizing equipment and systems for over-the-ground, remote-controlled, computer assisted stabilized photographic equipment for use with photographic camera and television video equipment.  Complainant has rights in the SKYCAM mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,634,708 issued February 12, 1991). This trademark registration sufficiently proves Complainant’s rights in the SKYCAM mark pursuant to Policy ¶ 4(a)(i).  See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).

Complainant asserts Respondent’s <skycam.com> domain name is identical to its SKYCAM mark.  Complainant contends the only distinction between Respondent’s domain name and its mark is the addition of the generic top-level domain (“gTLD”) “.com.”  The Panel finds that the addition of a gTLD to a mark is irrelevant to the Policy ¶ 4(a)(i) identical or confusingly similar analysis.  See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also SCOLA v. Wick, FA 1115109 (Nat. Arb. Forum Feb. 1, 2008) (concluding that “the domain name at issue is identical to [the] complainant’s SCOLA mark, as the only alteration to the mark is the addition of the generic top-level domain “.com.”). Accordingly, the Panel is of the opinion that Respondent’s <skycam.com> domain name is identical to its SKYCAM mark under Policy         ¶ 4(a)(i).

Respondent’s contention that the <skycam.com> domain name is comprised of common and generic or descriptive terms and as such cannot be found to be identical to Complainant’s mark is irrelevant under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark.  See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”).

Rights or Legitimate Interests

Under Policy ¶ 4(a)(ii), Complainant has the burden of establishing that respondent has no rights or legitimate interests in respect of the domain names.

It is sufficient for Complainant to make a prima facie showing that Respondent has no right or legitimate interest in the Domain Name in order to shift the burden of production to the Respondent, such that Respondent must come forward with concrete evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

Complainant established that Respondent has not been authorized or licensed to use any of Complainant’s marks.  Further, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).  See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).

Respondent’s disputed domain name resolves to a website that displays third-party links, some of which bear a semantic relationship to the domain name, along with a link that solicits offers to purchase the domain name.  While the use of a domain name to display pay-per-click links may be entirely legitimate, it is not clear that such use qualifies as a bona fide offering of goods or services sufficient to create rights or legitimate interests under Policy ¶ 4(c)(i).  See Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee, did not evidence rights or legitimate interests in the domain name); but see Accetta v. Domain Admin, FA 826565 (Nat. Arb. Forum Jan. 2, 2007) (finding the respondent’s use of the disputed domain name to operate a pay-per-click search engine was a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) because the terms of the disputed domain name were of common usage and did not refer to the complainant or its products).

Because the Panel’s conclusion as to the third element required by Policy ¶ 4(a), registration and use in bad faith, is dispositive of the present matter, the Panel declines to reach a conclusion on the question of rights or legitimate interests.

Registration and Use in Bad Faith

The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii).  See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy          ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).

The Panel finds that Respondent has not registered the <skycam.com> domain name in bad faith. There is no evidence that Respondent has violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant’s business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).

The general link to offer for sale a domain name incorporating generic terms is not probative of a “primary purpose” to sell the disputed domain name to Complainant and is in itself not evidencing that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(b)(i).  See Mark Warner 2001 v. Larson, FA 95746 (Nat. Arb. Forum Nov. 15, 2000) (finding that considering or offering to sell a domain name is insufficient to amount to bad faith under the Policy; the domain name must be registered primarily for the purpose of selling it to the owner of a trademark for an amount in excess of out-of-pocket expenses); see also AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (refusing to transfer the domain name where the complainant fails to prove that the consideration in the respondent’s offer of transfer is in excess of the respondent’s out-of-pocket costs directly related to the domain name).

There is also no evidence that Respondent did register the disputed domain name to prevent Complainant from owning a domain name incorporating Complainant’s trademark, or to disrupt Complainant’s business, or to confuse consumers seeking to find Complainant’s website.  Therefore, Respondent did not register or use the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) or (b)(iv).  See PRIMEDIA Special Interest Publ’ns. Inc. v. Treadway, D2000-0752 (WIPO Aug. 21, 2000) (holding that the respondent did not register or use the <shutterbug.com> domain name to disrupt the complainant’s business because the respondent’s contemplated use at the time of acquisition was not necessarily competitive with the complainant’s SHUTTERBUG magazine); see also Chestnutt v. Tumminelli, D2000-1758 (WIPO Feb. 2, 2001) (finding that the respondent did not register and use the <racegirl.com> domain name in bad faith because the complainant provided no evidence that the respondent intended to disrupt or divert business from the complainant).

As Respondent contends, the <skycam.com> domain name is comprised entirely of common terms that have many meanings apart from use in Complainant’s SKYCAM mark.  This is evidenced by the fact that the term “skycam” is subject to extensive third-party use, by news organizations, astronomers, photographers, and many other individuals and organizations.  The generic word “sky” is commonly combined with the term “cam,” which is the highly recognized short-hand for the term “camera.”  The registration and use of domain name comprising such a common term as “skycam” is not necessarily done in bad faith.  Respondent declares that it has registered numerous domain names that incorporate the words “sky” or “cam,” including <skyops.com>, <skyfest.com>, <skyview.com>, <skyglider.com>, <bowlcam.com>, <funcams.com>, <jeepcam.com>, and <bikercam.com>.  A respondent is free to register a domain name consisting of a common term. Since the domain name currently in dispute consists of such common terms, the Panel finds that Respondent did not register or use the <skycam.com> domain name in bad faith under Policy            ¶ 4(a)(iii).  See Zero Int’l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) (“Common words and descriptive terms are legitimately subject to registration as domain names on a ‘first-come, first-served’ basis.”); see also Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum July 9, 2004) (holding that the respondent’s registration and use of the <target.org> domain name was not in bad faith because the complainant’s TARGET mark is a generic term); see also Miller Brewing Co. v. Hong, FA 192732 (Nat. Arb. Forum Dec. 8, 2003) (finding that because the respondent was using the <highlife.com> domain name, a generic phrase, in connection with a search engine, the respondent did not register and was not using the disputed domain name in bad faith).

There is no evidence that Respondent knew or should have known of the SKYCAM mark when it registered the disputed domain name. Complainant provides no evidence of any marketing for its mark prior to the registration of the domain name on June 25, 2001. Accordingly, Respondent’s statement that it only targeted to register generic and descriptive terms, when registering the disputed domain name, is not refuted.  As a result, there is no evidence that Respondent did register the disputed domain name in bad faith under Policy ¶ 4(a)(iii).  See The Way Int’l Inc. v. Peters, D2003-0264 (WIPO May 29, 2003) (“As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy. The essence of the complaint is an allegation of bad faith, bad faith targeted at the complainant. For that bad faith to be present, the cybersquatter must have actual knowledge of the existence of the complainant, the trade mark owner.”); see also Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”).

DECISION

Having considered all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the <skycam.com> domain name REMAIN WITH Respondent.

Hon. Neil Brown QC and David E. Sorkin,  Panelists

Dated:  April 29, 2011

 

SEPARATE OPINION OF THE HONOURABLE NEIL BROWN QC CONCURRING IN THE RESULT

I concur with the majority decision that the Complaint should be denied, but disagree with some of the observations made in the course of that decision. I also feel that it is appropriate to make some comments on some specific issues raised by the parties in their submissions, in view of the time and effort they have clearly made in those submissions.

Identical and/or Confusingly Similar

I agree with the view expressed in the joint opinion that the domain name is identical to the trademark relied on by the Complainant. However, I disagree, with respect, with the part of the opinion that states:

“Respondent’s contention that the <skycam.com> domain name is comprised of common and generic or descriptive terms and as such cannot be found to be identical to Complainant’s mark is irrelevant under Policy ¶ 4(a) (i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark.”

The considerations relied on by the Respondent cannot be described as irrelevant, as the Policy itself requires a consideration of whether in every  case the domain name is identical or confusingly similar to the trademark. It may be and sometimes is the case that a domain name is so generic or descriptive that the objective bystander could not responsibly conclude that it is evoking the trademark. In other cases, of course, the domain name will be identical to the trademark, as it is in the present case. But that does not mean that the argument relied on by the Respondent must in all cases be irrelevant, for it may be very relevant.

Rights or Legitimate Interests

I would find that the Panel should go on to make a decision on this issue and that the decision should be that the Respondent has a right or legitimate interest in the domain name. As is frequently the case in such matters, the evidence is not as extensive or as clear as it would be in properly conducted court proceedings, but there is sufficient evidence to be reasonably certain about the reasons for the registration of the domain name and the use to which it has been put. Accordingly, there is enough evidence to show one way or the other whether the Respondent has a legitimate interest in the domain name. The evidence is to the effect that the domain name is of a descriptive nature and, although it is probably true to say that it is not a dictionary word, it is nevertheless true to say that the word has entered into modern parlance in recent years and is used in ordinary conversation to mean photographic processes carried out from aircraft or from some elevated vantage point, or, as is the case with the Complainant’s product, by cables.

There is also evidence tending to suggest that, when it registered the domain name, the Respondent intended to use the domain name in that sense rather than in the sense of a trademark or business name. That evidence is that the Respondent has registered a large portfolio of domain names incorporating the words ’sky’ and ’cam’, tending to suggest that its business model is to register generic names rather than to seek out the trademarks or business names of established businesses. Moreover, it has been suggested in decisions such asHotel Plaza Limited et al v. Vertical Axis Inc et al, D2008-1760 (WIPO Mar. 18, 2009), cited by the Respondent, that such registrations may be used to show that the intention of a registrant was to register a domain name because of its generic value. Another decision cited by the Respondent and illustrative of the same approach is C Brewer & Sons Ltd v. Vertical Axis , D2009-1759 (WIPO Apr. 11, 2010) where the domain name at issue was <wallpaperdirect.com> and the legitimacy of that domain name was shown from the fact that the registrant had registered other domain names using the words ‘wallpaper’ and ‘direct.’

That evidence is, of course, in addition to the Respondent’s direct evidence by way of sworn testimony.

That is not the end of the matter, of course, as a registrant in the position of the Respondent is expected to show that it has not targeted the complainant trademark owner. In the present case the domain name is used to advertise generic links such as “aerial photography”, “live cams”, “photo”, “beautiful scenery” and suchlike. Time does not permit to list all of the goods and services being promoted by means of those links. But generally they lead to products such as satellite weather, security systems and surveillance cameras, sky watch telescopes, photographic backgrounds, lenses for photographing the sky, GPS devices, landscape photographic artwork and football telecasts in HD. Even when the Respondent’s site uses the word ’skycam’, the word is used as a platform or vehicle  to promote photographic services in the sky, such as those relating to weather forecasts and views from skyscrapers. Evidence is rarely unequivocal, but in the present case there is strong evidence to show that there has been no targeting of the Complainant, for its name and product have not been used and nor has any aerial photographic system operated by cables, which is the essence of the Complainant’s process. The domain name has been used to promote goods and services coming within the popular meaning of the word ‘skycam’. The use of the domain name is thus wholly legitimate.

Pay-per-click links

In contrast to this view, however, the Complainant has submitted that the Respondent’s use of the domain name as a conduit to a series of pay-per -click links is not a bona fide offering of goods and services and hence cannot be legitimate. However, there are numerous UDRP decisions that dispute that proposition. One of the more recent of them is Future Steel Holdings, Ltd. v. Private Whois Service , FA 1350737 (Nat. Arb. Forum Dec. 6, 2010) where the panel had the advantage of considering cases decided prior to that date and concluded:

“The Panel determines that Respondent’s use of the <steelmaster.com> domain name constitutes a bona fide offering of goods or services pursuant to Policy       ¶ 4(c)(i).  See McMullen Argus Publ’g Inc. v. Moniker Privacy Servs., D2007-0676 (WIPO July 24, 2007) (holding that “pay-per-click websites are not in and of themselves unlawful or illegitimate”); see also EU Prop. Portfolio Ltd. v. Salvia Corp., FA 873726 (Nat. Arb. Forum Feb. 7, 2007) (holding that the respondent’s website usage of pay-per-click links was a bona fide offering of goods and services).”

In the first of the two cases relied on, McMullen Argus Publishing Inc. v. Moniker Privacy Services/Jay Bean, MDNH, Inc., D2007-0676 (WIPO July 24, 2007), the panel made some observations that are analogous to the present case,

when it said:

“Complainant must do more than just show pay-per-click use to establish bad faith. Contrary to Complainant’s assertions, pay-per-click websites are not in and of themselves unlawful or illegitimate, e.g., Terana, S.A. v. RareNames, WebReg, D2007-0489 (WIPO June 7, 2007); Fratelli Carli S.p.A. v. Linda Norcross, D2006-0988 (WIPO Oct. 4, 2006). Complainant has provided little evidence (as opposed to allegations of counsel) that Respondent selected the disputed domain name for a free ride upon Complainant’s mark. Complainant has made no showing that consumers and Internet users have been or are likely to be confused or to associate Respondent’s services with Complainant’s, and the Panel’s examination of the parties’ respective websites bears out this observation. There is no obvious imitation of Complainant or its services. Complainant has made no showing of a “pattern” of cybersquatting that might bring the case under paragraph 4(b)(ii) of the Policy.

Panels have often noted that the more descriptive a mark, the more difficult becomes Complainant’s burden of proof to establish registration and use with Complainant’s mark as a target. See, e.g., TLR v. United Engineering Services LLC, D2007-0148 (WIPO Apr. 9, 2007); American Appraisal Associates Inc. v. R Hagar, Kinja LLC, D2006-1556 (WIPO Jan. 29, 2007). And in factual circumstances very similar to those at issue in this proceeding, a number of panels have held that use comparable to that demonstrated by Respondent isbona fide for purposes of paragraph 4(a) (ii) and that registration in bad faith is lacking. See especially Mariah Media Inc. v. First Place® Internet Inc., D2006-1275 (WIPO Dec. 6, 2006); see also Canned Foods, Inc. v Ult. Search Inc., FA 96320 (Nat. Arb. Forum Feb. 13, 2001):

“Respondent is using the disputed domain name for an automotive-related business and did so prior to the commencement of these proceedings or any notice of this dispute. The website bears some relationship to the descriptive phrase for which Respondent claims to have registered the disputed domain name. Complainant’s mark is not “famous” in the trademark sense; Respondent has submitted evidence of use of the phrase by numerous others, in both trademarks and domain names, indicating that it enjoys far less than a single, universal recognition. Complainant and Respondent are not direct competitors. Particularly noteworthy is the fact that the disputed domain name has been registered and put to similar use by a party other than the mark owner for more than seven years.”

In the second of the cases cited, EU Property Portfolio Ltd. v. Salvia Corporation, FA 873726 (Nat. Arb. Forum Feb. 7, 2007), the panel said:

“Further, Respondent’s website usage of pay-per-click links is a bona fide offering of goods and services.  See INVESTools Inc v. KingWeb Inc., FA 598845 (Nat. Arb. Forum Jan. 9, 2006) (holding that the respondent’s use of the disputed domain name to operate a web directory with links to investment-related websites in competition with the complainant constituted a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i)); see also Eastbay Corp. v. VerandaGlobal.com, Inc., FA 105983 (Nat. Arb. Forum May 20, 2002) (finding that the respondent’s use of the disputed domain name as a portal to a commercial website featuring various advertisements and links constituted a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)).”

Accordingly, the panel in Future Steel Holdings, Ltd. v. Private Whois Service (supra) had an ample number of decisions before it to support its conclusion that the use of pay-per-click sites is, in appropriate circumstances, bona fide and legitimate. As has been noted above, an examination of the contents of the links at issue in the present case shows that they describe the goods and services coming within the generally accepted meaning of the word ‘skycam’.

Domain Name for Sale

The Complainant also takes issue with the fact that the domain name is for sale and argues that this fact shows a lack of legitimacy and bad faith on the part of the Respondent. The answer to that objection is that those who drafted the Policy clearly turned their minds to the possibility that domain name registrants might try to sell their domain names and to the question whether that was inappropriate. Equally clearly, those who drafted the Policy did not want to put an embargo on all sales of domain names or in all circumstances, as in one sense everything is for sale sooner or later, Accordingly, the inappropriate sale of domain names was given a narrow compass. First, it applies only to cases where the primary purpose of the registration or acquisition of the domain name was to sell it and not to cases where the primary purpose was to use it, even if a secondary or other purpose was to sell it if, fortuitously, a buyer came along or if the registrant could induce someone to buy it. Secondly, even if the primary purpose were to sell it, the sale must be intended as one to the trademark owner or a competitor; accordingly, it can safely be said that those who drafted the Policy saw nothing inappropriate in advertising a domain name for sale or otherwise trying to sell it to a party other than the trademark owner or a competitor. These limitations are clearly inconvenient to those who see something sinister in the attempted sale of a domain name but they are nevertheless the rules to be applied and it can hardly be said that an attempted sale is inappropriate if it falls outside the Policy; after all, the Policy is contractual and a domain name registrant takes a domain name subject only to the limitations of his contract with a registrar and the UDRP Policy incorporated into it. Apart from those limitations, a trademark owner must resort to litigation under the general law. In the present case, there is no evidence to show or suggest a primary purpose to sell to the trademark owner or a competitor; indeed, there is evidence to show that this was not its primary purpose, as its business model is to register generic domain names and make money by using them to sell goods and services even if, like other property, the domain name  is for sale. 

Accordingly, the fact that it is advertised for sale is not evidence by itself that the Respondent has no right or legitimate interest in the domain name.  Nothing in these remarks should be taken to mean that a sale or attempted sale coming within the terms of the embargo in the Policy should be ignored as, like all other provisions in the Policy, it should be enforced.

Allegation of bad faith

Both sides have addressed an additional issue opened up by the Complainant when it made its proposition that “The Respondent has a history of registering domain names that are identical or confusingly similar with another’s trademark in bad faith.” It then cited some decisions in support of that proposition and argued that the alleged history of the Respondent should be taken into account in the present proceeding

In my opinion, that argument is not supportable, as it has been said many times that each case should be decided on its merits: see, in support, the cases cited by the Respondent:  Shoulderdoc. Ltd v. Vertical Axis, D2006-0625 (WIPO Sept. 8, 2006), Nursefinders , Inc v. Vertical Axis, D2007-0417 (WIPO July 5, 2007); and Bright Horizons Family Solutions , Inc v.et al v. Vertical Axis, D2007-0795 (WIPO Oct. 12, 2007). It is entirely inappropriate to be judging intentions and conduct not on the basis of what can be established in the case at issue but on previous cases where the facts were entirely different. In any event, even if the general proposition, that a party can be judged by past conduct, were true, it is not supported by the factual result in the preponderance of cases where the Respondent’s conduct has come under scrutiny. In this regard, it should be noted that the Respondent has cited 28 decisions in which it has prevailed and it is apparent from reading those decisions that its business model and practices have frequently been approved and been seen to be above reproach.

Laches

It has now been held, although opinions on this issue are not unanimous among panelists, that laches or delay is a relevant consideration in UDRP proceedings. It was held by the unanimous three-person panel in The New York Times Company v. Name Administration Inc. (BVI), FA 1349045 (Nat. Arb. Forum Nov. 17, 2010) that laches is “a valid defense in any domain dispute where the facts so warrant.”(emphasis added).This principle should not, therefore, be lightly dismissed. It is not necessary to rely on it in the present case as the Complainant has been unsuccessful on other grounds. But the principle should be restated and held in reserve for use when appropriate on the facts.

Hon. Neil Brown QC, Panelist

Dated:  April 29, 2011

 

DISSENTING OPINION BY FLIP PETILLION ON THE ISSUE OF RIGHTS AND LEGITIMATE INTERESTS AND THE ISSUE OF BAD FAITH REGISTRATION AND USE

I agree with my two panelists colleagues as to the identity of the domain name with Complainant’s SKYCAM mark. However, I do not agree with my two panelists colleagues, where it is decided that there is no evidence of bad faith registration and use. In my view, the Respondent both registered and used the domain name in bad faith. Also, a decision about whether or not the Respondent had rights or legitimate interests in the disputed domain name was also required. In my view, as I have always done in the past decade in these kind of decisions, it is beneficiary to the case law in domain name disputes to discuss all three elements of the UDRP, even if the decision about one or more elements makes a decision on the remaining element(s) unnecessary. Hereunder, I will establish why I am of the opinion that i) the Respondent had no rights or legitimate interest in the disputed domain name, and that ii) the domain name was both registered and used in bad faith. Hence, I will show why relief should have been granted and the domain name should have been transferred from Respondent to Complainant.

Rights or Legitimate Interests

Although the Panel correctly observed i) that it is sufficient for Complainant to make a prima facie showing that Respondent has no right or legitimate interest in the Domain Name in order to shift the burden of proof to the Respondent, ii) that Respondent has not been authorized or licensed to use any of Complainant’s marks, iii) that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii), and iv) that Respondent’s disputed domain name resolves to a website that displays third-party links, some of which bear a semantic relationship to the domain name, along with a link that solicits offers to purchase the domain name, the Panel nevertheless decided i) that the use of a domain name to display pay-per-click links may be entirely legitimate and that it is not clear that such use qualifies as a bona fide offering of goods or services sufficient to create rights or legitimate interests under Policy ¶ 4(c)(i) and ii) that it was not required to reach a conclusion on the question of rights or legitimate interests given the Panel’s decision in relation to the third element required by Policy ¶ 4(a), registration and use in bad faith.

However, whereas some of the third-party links had a certain semantic relationship to the meaning that Respondent gave to the term ‘skycam’, it must be noticed that ‘skycam’ is not a dictionary word. Moreover, other links even had no semantic relationship whatsoever with the meaning Respondent gave to this term. The only interest of Respondent in the disputed domain name, that is identical to Complainant’s trademark, was to generate money through the use of pay-per-click links or through the sale of the domain name, as is evidenced by the offer to purchase the domain name, shown on the webpage linked to the domain name. In my view, it is clear that such use does not qualify as a bona fide offering of goods or services. There is abundant case law that supports the view that the use of a domain name to redirect Internet users to commercial websites with the purpose of earning a commission or pay-per-click referral fee does not evidence rights or legitimate interests in the domain, as such use does not constitute a bona fide offering of goods or services. See e.g., Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name); Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); Legacy Health System v. Nijat Hassanov, D2008-1708 (WIPO January 5, 2009) (finding that the use of a domain name does not constitute a bona fide offering of goods and services or a legitimate non commercial or fair use where the sole purpose of the disputed domain name is to resolve to pay-per-click advertising websites and collect click-through revenue from advertising links); Compart AG v. Compart.com / Vertical Axis, Inc., D2009-0462 (WIPO July 9, 2009) (finding that the mere fact that a word identical to a domain name exists as a defined dictionary term does not give rise to any rights or legitimate interests in the name on the part of a respondent who uses it as a pay-per-click page in a way that is not tied to the generic meaning of that word).

In addition, Respondent’s offer to sell the <skycam.com> domain name to the public further evidences Respondent’s lack of legitimate interests in the disputed domain name.  See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“UDRP precedent is clear that auctioning domains does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of domains.”); see also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests, where the respondent registered the domain name with the intention of selling its rights).

The Panel did not take into account Respondent’s offer to sell the domain name in assessing whether or not Respondent has rights or legitimate interests in the domain name. The Panel also made reference to one UDRP decision where it was held that because the domain name consisted of terms of common usage and did not refer to the complainant or its products, operating a pay-per-click search engine on the disputed domain name was a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). Accetta v. Domain Admin, FA 826565 (Nat. Arb. Forum Jan. 2, 2007). From this decision, the Panel did conclude that it is not clear whether or not the use of a domain name to display pay-per-click links qualifies as a bona fide offering of goods or services sufficient to create rights or legitimate interests under Policy ¶ 4(c)(i) and decided not to reach a conclusion on the question of rights or legitimate interests. 

However, in contrast with what was decided in the Acceta v. Domain Admin, the disputed domain name in the present case does refer to the Complainant and its products and services. For that reason alone, the Acceta v. Domain Admin decision should not have been taken into account. The fact that the disputed domain name does refer to the Complainant and its goods and services, in combination with Respondent’s offer to sell the domain name, could only have led to the conclusion that the disputed domain name was not used for a bona fide offering of goods or services and that Respondent had no rights or legitimate interests in the domain name.

Bad faith registration and use

The Complainant must prove on the balance of probabilities both that the domain name was registered in bad faith and that it is being used in bad faith (See, e.g., Telstra Corporation Limited v. Nuclear Marshmallow, D2000-0003 (WIPO Feb. 18, 2000); Control Techniques Limited v. Lektronix Ltd, D2006-1052 (WIPO Oct. 11, 2006).

Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith are the registration or acquisition of the domain names 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 documented out-of-pocket costs directly related to the domain name, the registration of a 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 domain name holder has engaged in a pattern of such conduct, and the use of the domain names for intentionally attempting to attract, for commercial gain, Internet users to a 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 web site or location.

In the present case, the <skycam.com> domain name resolves to a website that provides a hyperlink for a domain broker that allows Internet users to make offers to buy the disputed domain name. Such a general offer to sell the domain name appearing on the first page of the website linked to the domain name, serves as a strong indication that the domain name has been registered primarily for the purpose of selling the domain name for valuable consideration in excess of the documented out-of-pocket costs directly related to that domain name. As such, Respondent’s general offer to sell the disputed domain name to the public can amount to registration and use in bad faith under Policy ¶ 4(b)(i).  See Wrenchead.com, Inc. v. Hammersla, D2000-1222 (WIPO Dec. 12, 2000) (finding that offering the domain name for sale at an auction site is evidence of bad faith registration and use).

There are other indications that the <skycam.com> domain name was registered and used in bad faith. As shown by Complainant, Respondent has a history of registering domain names that are identical or confusingly similar with another’s trademark in bad faith. SeeBzzAgent, Inc. v. bzzagen.com c/o Nameview Inc./Vertical Axis, D2010-1188 (WIPO Sept. 10, 2010); see also Which ? Litd. v. Whichcar.com c/o Whois Identity Shield/ Vertical Axis, Inc., D2008-1637 (WIPO, Jan. 27, 2009); see also First Quality Musical Supplies, Inc. d/b/a First Quality Music v. Vertical Axis, Inc., FA 1070187 (Nat. Arb. Forum Oct.24, 2007).  Therefore, it can be concluded that Respondent has a history of cybersquatting.  Thus, the registration and use of the <skycam.com> domain name is part of a pattern of registering domain names, preventing the owner of the trademark or service mark from reflecting the mark in a corresponding domain name. As a result, Respondent’s behavior provides evidence of registration and use in bad faith under Policy ¶ 4(b)(ii).  See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another UDRP proceeding against the respondent to find that “this is part of a pattern of such registrations”).

Moreover, even if the registration of the disputed domain name was part of a practice of registering generic or descriptive expressions as domain names, Respondent cannot be willfully blind to whether the disputed domain name may violate trademark rights. After all, paragraph 2 of the UDRP provides that it is the registrant’s responsibility to determine whether its domain name registration infringes or violates someone else’s rights. The registration of multiple domain names with no appropriate mechanism for ascertaining whether these may be identical or confusingly similar to trademarks, may support a finding of bad faith. See e.g., Mobile Communication Service Inc. v. WebReg, RN, D2005-1304 (WIPO February 24, 2006) (finding that where a respondent registers large swaths of domain names for resale, often through automated programs that snap up domain names as they become available, with no attention whatsoever to whether they may be identical to trademarks, such practices may well support a finding that respondent is engaged in a pattern of conduct that deprives trademark owners of the ability to register domain names reflecting their marks.); HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, D2007-0062 (WIPO June 4, 2007) (finding that Registering a domain name that is identical to the distinctive trademark of another and using the domain name to generate revenue by directing internet users to the websites of the trademark owner’s competitors, without exploring in a meaningful way the possibility of third-party rights, is inconsistent with the good faith requirement.).

In the present case, the domain name is used to generate revenue by directing Internet users to the websites of third parties and Respondent has made no effort in finding out whether the domain name may be identical to trademarks. Such registration and use is inconsistent with the good faith requirement. Through the registration and use of the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Such registration and use of the disputed domain name constitutes bad faith under Policy ¶ 4(b)(iv).  See The Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)); see also MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme).

Finally, Respondent argues that it registered the disputed domain name approximately ten years before the filing of the Complainant.  Respondent claims this delay raises the inference that Complainant did not genuinely believe that Respondent has engaged in an abusive domain name registration.  Therefore, Respondent contends the Panel should bar the Complaint pursuant to the doctrine of laches. However, the doctrine of laches does not apply as a defense in UDRP proceedings.  See Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) (“The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defence of laches has no application.”); see also Drown Corp. v. Premier Wine & Spirits, FA 616805 (Nat. Arb. Forum Feb. 13, 2006) (finding that the laches defense was inappropriate under the Policy and that the time frame within which the complainant brought the proceeding was of no consequential value); see also Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (“Respondent’s efforts at arguing related equitable defenses such as estoppel and acquiescence are equally misplaced as these legal arguments are not contemplated by the Policy.  Moreover, recognition of these arguments in accordance with Respondent’s desires requires the Panel to make a legal determination regarding the continuing validity of Complainant’s DISNEY mark.  Such action is beyond the scope of the UDRP proceeding and if Respondent desires such an outcome it should avail itself of the proper judicial proceedings by which such a result might be accomplished.”).

In light of the above, I am of the opinion all three elements required under the ICANN Policy are established and that the Panel had to conclude that relief shall be GRANTED.

Accordingly, I hereby dissent and would have Ordered that the <skycam.com> domain name be TRANSFERRED from Respondent to Complainant.

Flip Petillion, Panelist, President

Dated:  April 29, 2011