16th Nov 2010
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
X6D Limited v. Telepathy, Inc.
Case No. D2010-1519
1. The Parties
The Complainant is X6D Limited of Limassol, Cyprus, represented by Bracewell & Giuliani LLP, United States of America.
The Respondent is Telepathy, Inc. of Washington, D.C., United States of America, represented by ESQwire.com Law Firm, United States of America.
2. The Domain Name and Registrar
The disputed domain name <xpand.com> is registered with Fabulous.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 8, 2010. On September 10, 2010, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the disputed domain name. On September 13, 2010, Fabulous.com transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 14, 2010. In accordance with paragraph 5(a) of the Rules, the due date for Response was October 4, 2010. The Response was filed with the Center on October 4, 2010 (US Eastern Time).
The Center appointed Brigitte Joppich, Dennis A. Foster and The Hon. Neil Brown QC as panelists in this matter on November 5, 2010. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.
4. Factual Background
The Complainant is a supplier of 3D solutions for multiplexes, small theaters, schools and home use.
The Complainant is registered owner of a United States trademark registration XPAND BEYOND CINEMA and design, filed on September 8, 2006 and registered on April 22, 2008, in connection with various goods and services in classes 9 and 41 (hereinafter referred to as the “XpanD Mark”). The Complainant also applied for registration of the trademarks XPAND and XPAND and design in 2010, claiming first use in commerce on September 8, 2006.
The disputed domain name was registered on June 25, 2003 and has been used in connection with a domain parking website showing sponsored links from third parties, inter alia, related to 3D glasses.
On July 28, 2010, the Complainant contacted the Respondent offering USD 10,000 for the disputed domain name. The Complainant’s offer was declined by the Respondent, which stated that it was looking for offers in the six-figure range.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The Complainant states that the disputed domain name is identical to its trademarks XPAND and confusingly similar to its trademark XPAND BEYOND CINEMA.
(2) The Respondent has no rights or legitimate interests in the disputed domain name as it is not a licensee or otherwise authorized to use the Complainant’s trademarks, as the disputed domain name is not comprised of a generic word, as the Respondent is not known by the name “xpand”, and as the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services but to receive pay-per-click revenue.
(3) The Complainant states that the disputed domain name has been used in bad faith for the following reasons: On its website at the disputed domain name, the Respondent requests a statement wherein the potential bidder for a domain name must agree that it has no legal claim to such domain name, therefore hindering third parties from making a good faith offer for that domain name. Furthermore, again according to its website, the Respondent is likely to ignore offers below USD 40,000 for a domain name. The Respondent’s use of the disputed domain name in connection with a website offering 3D glasses is supposed to constitute an infringement of the Complainant’s trademark rights. Finally, the Respondent is allegedly acting in bad faith by registering domain names in order to prevent trademark owners from reflecting their marks in corresponding domain names.
The Respondent denies the Complainant’s contentions. The Respondent asserts that it purchased the disputed domain name in June 2003 at an auction after its expiry because of its common intentional misspelling of the word “expand”.
Moreover, the Respondent claims extensive third party use of the term “xpand”, not only evidenced by the number of Google search results but also by the fact that there are eight registered United States trademarks incorporating the word “xpand” for a wide variety of goods and services.
The Respondent states that the Complainant does not have enforceable trademarks rights under the Policy as its first use of the term “xpand” post-dated the registration date of the disputed domain name by more than three years and as the Complainant failed to demonstrate common law trademark rights in the term “xpand”.
With regard to paragraph 4(a)(i) of the Policy, the Respondent states that the Complainant’s trademark and the disputed domain name are not confusingly similar.
With regard to the Respondent’s rights or legitimate interests, the Respondent states that the disputed domain name contains a common fanciful spelling of the word “expand” and an equivalent to such word, and that the registration of such domain name establishes a legitimate interest, provided the domain name was not registered with a trademark in mind. Furthermore, the Respondent states that the Complainant, through its USD 10,000 offer to purchase the disputed domain name, acknowledged the Respondent’s legitimate interest in the disputed domain name.
With regard to bad faith registration, the Respondent states that the Complainant did not start using the XpanD Mark until September 2006, more than three years after the Respondent registered the disputed domain name, and that the Respondent did not register, and could not have registered, the disputed domain name with the Complainant’s trademark in mind and had no knowledge of the Complainant, the Complainant’s website, the Complainant’s business name or trademark when it registered the domain name.
The Respondent also states that the disputed domain name has not been used in bad faith. The Respondent argues that the isolated link for 3D glasses was auto-generated and unintentional, and thus does not constitute any evidence that the Respondent acted in bad faith.
Furthermore, the Respondent states that the purported print-out of the Respondent’s website annexed as Exhibit E to the Complaint is misleading as it does not represent the page that appears to users when they arrive at the website to which the disputed domain name resolves but shows the results page that a user would see only after clicking on the 3D glasses link.
The Respondent finally requests a finding that the Complainant engaged in reverse domain name hijacking.
6. Discussion and Findings
The first point to be dealt with is the late submission of the Response. Where a response is submitted late, paragraph 14(a) of the Rules requires a panel to proceed to its decision based on the complaint only unless “exceptional circumstances” exist. Also relevant are paragraph 10(b) of the Rules, which requires a panel to treat the parties fairly and equally, and paragraph 10(c) and (d) of the Rules, which allows a panel to extend time periods and to determine the admissibility, relevance, weight etc. of evidence.
In this case, the Response was only one day late and was received by the Center before the appointment of the Panel. The Panel will take the Response into consideration because the present proceedings will not be affected by the Respondent’s minor delay in filing the Response.
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the disputed domain name is identical or confusingly similar to the Complainant’s trademark; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name consists of the term “xpand”, which is included in the Complainant’s trademark.
The fact that the Complainant’s trademark contains additional elements, namely the additional words “beyond cinema” and graphical elements, does not hinder a finding of confusing similarity. It is well established that the similarity between a trademark and a disputed domain name is neither eliminated by the fact that the trademark includes additional graphical elements (cf. Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031; EFG Bank European Financial Group SA v. Jacob Foundation, WIPO Case No. D2000-0036; Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447; Sydney Markets Limited v. Nick Rakis trading as Shell Information Systems, WIPO Case No. D2001-0932) nor by the fact that the trademark includes additional generic elements which are not included in the disputed domain name (cf. Corcom, Inc. v. Jazette Enterprises Limited, WIPO Case No. D2007-1218: omission of the word “sports”; Shell Vacations LLC, Shell Vacations Club, L.P. v. Pluto Domain Services Private Limited/PrivacyProtect.org, WIPO Case No. D2008-1713: omission of the word “club”; Stanworth Development Limited v. Michael Rand, WIPO Case No. D2008-0158: omission of the word “online”).
Furthermore, it is well established that the specific top level domain name is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).
On balance, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark because the essence of the trademark is incorporated in the domain name (and also in the Panel’s view, some Internet users might think that the “xpand” part of the domain name is referring to the XPAND trademark).
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the respondent of the dispute, the use by the respondent 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) 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) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among UDRP panelists that a complainant has initially to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of producing that the respondent has rights or legitimate interests in the disputed domain name will then shift to the respondent.
The Complainant contended that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy and has made out its prima facie case.
The Respondent denied the Complainant’s contentions, stating that the term “xpand” is generic and that the registration of such domain name establishes a legitimate interest. The Respondent further argued that the Complainant, through its USD10,000 offer to purchase the disputed domain name, acknowledged the Respondent’s legitimate interest in the disputed domain name.
On the balance of interests, the Panel finds that the Respondent enjoys legitimate interests in the disputed domain name for the following reasons:
The Panel considers the disputed domain name contains at its second level a single descriptive term. Many English words starting with “ex“ are commonly misspelled by omitting the “e” at the beginning, inter alia, “xtreme” (misspelling of “extreme”), “xchange” (misspelling of “xchange”), “xcess” (misspelling of “excess), “xact” (misspelling of “exact”), “xcel” (misspelling of “excel”), and so forth. In the Panel’s assessment, the public readily identifies the misspelled word in these cases. The Panel also notes that both parties are from the United States, and believes that the United States Patent and Trademark Office also considers the word “xpand” to be merely descriptive, finding more generally (in a different case) that a novel spelling of a merely descriptive term is merely descriptive as well if purchasers perceive the different spelling as the equivalent of the descriptive term.
Due to the commercial value of descriptive or generic domain names it has become a business model to register and sell such domain names to the highest potential bidder. Such a practice – including the sale of the domain name – has been found to constitute use of the domain name concerned in connection with a bona fide offering of goods or services provided that the registration of the domain name was not undertaken with intent to profit from or otherwise abuse a complainant’s trademark rights (cf. Allocation Network GmbH v. Steve Gregory, WIPO Case No. D2000-0016 (<allocation.com>);General Machine Products Company, Inc. v. Prime Domains (a/k/a Telepathy, Inc.), NAF Claim No. 92531 (<craftwork.com>); Shirmax Retail Ltd. v. CES Marketing Group, Inc., E-Resolution Case No. AF-0104 (<thyme.com>); CAR TOYS, INC. v. INFORMA UNLIMITED, INC., NAF Claim No. 93682 (<cartoys.net>); Robert Chestnutt v. Jennifer Tumminelli, WIPO Case No. D2000-1758 (<racegirl.com>); COMING ATTRACTIONS, LTD. v. COMINGATTRACTIONS.COM, NAF Claim No. 94341 (<comingattractions.com>); John Fairfax Publications Pty Ltd v. Domain Names 4U and Fred Gray, WIPO Case No. D2000-1403 (<financialreview.com>)).
Accordingly, the Panel finds in the circumstances of this case that the Respondent has a legitimate interest in the disputed domain name in this specific case due to its generic nature under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Considering the finding under 6.B above, the Panel need not come to a decision on registration and use in bad faith. However, in view of the requested finding for reverse domain name hijacking, the Panel wishes to point out the following:
The Respondent acquired the disputed domain name in 2003. The Complainant did not use the XpanD Mark until September 2006, more than three years after the Respondent registered the disputed domain name. The Complainant did not provide any explanation as to how the Respondent could possibly have been aware of the Complainant and the Complainant’s mark when registering the disputed domain name.
It is the common view among UDRP panelists that when a domain name is registered before a trademark right is established, the registration of the disputed domain name was generally not in bad faith because the registrant could not have contemplated the complainant’s non-existent right (cf.Question 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions; John Ode d/b/a ODE and ODE - Optimum Digital Enterprises v. Intership Limited, WIPO Case No. D2001-0074; Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827; PrintForBusiness B.V v. LBS Horticulture, WIPO Case No. D2001-1182). There are certain exceptions to this rule, however, circumstances justifying an exception have not been brought to the Panel’s attention on the record of this case and are hardly conceivable given the fact that the registration of the disputed domain name precedes the Respondent’s use of its XpanD Mark by more than three years.
Accordingly, the Panel concludes that the third requirement of the Policy has not been established either. The Complaint must therefore fail in this regard as well.
7. Reverse Domain Name Hijacking
The Respondent requests a finding of reverse domain name hijacking. This 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.” Moreover, paragraph 15(e) of the Rules provides as follows: “If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
In the present case, the Complainant did not provide any explanation as to how the Respondent could possibly have been aware of the Complainant and the Complainant’s mark when registering the disputed domain name, which occurred more than three years before the Complainant started using its XpanD Mark. The Panel therefore accepts the Respondent’s allegation that the Complainant is using the UDRP as an alternative purchase strategy after the acquisition of the disputed domain name failed. Therefore, the Panel finds that the Complaint was brought in bad faith, in an attempt of reverse domain name hijacking: The Complainant knew or should have known at the time it filed the Complaint that it could not prove that the domain name was registered in bad faith (cf. Futureworld Consultancy (Pty) Limited v. Online Advice, WIPO Case No. D2003-0297; Kur- und Verkehrsverein St. Moritz v. Domain Finance Ltd., WIPO Case No. D2004-0158).
For all the foregoing reasons, the Complaint is denied.
Dennis A. Foster
The Hon. Neil Brown QC
Dated: November 16, 2010