ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
The Complainant is IPF Online Ltd., a company located at 33, D'Silva Road, Mylapore, Chennai, Tamil Nadu, India 600004. Complaint's representative for these proceedings is Raj Vasant Pandit. The Respondent is Applying thought.com, located at 6C, Sukhi Apts., 17 Rhenjus Street, Longford Town, Bangalore, Karnataka, India 560025. Respondent's representative for these proceedings is Rakesh Sud. The contested Domain Name is industrialproductsfinder.com and is registered with Tucows.com, Inc., an ICANN-accredited registrar.
2. Procedural History
The electronic version of the Complaint form was filed on-line through eResolution's Website on April 23, 2000. The hardcopy of the Complaint Form was received on May 2, 2000. Payment was received on May 3, 2000.
Upon receiving all the required information, eResolution's clerk proceeded to:
- Confirm the identity of the Registrar for the contested Domain Name;
- Verify the Registrar's Whois Database and confirm all the required contact information for Respondent;
- Verify if the contested Domain Name resolved to an active Web page;
- Verify if the Complaint was administratively compliant.
The inquiry led the Clerk of eResolution to the following conclusions: the Registrar is Tucows.com, the Whois database contains all the required contact information but the contested Domain Name resolves to an inactive Web page and the Complaint is administratively compliant.
On May 12, 2000, the Clerk's office notified the Complainant, the Respondent, the concerned Registrar, and ICANN of the commencement of the administrative proceeding.
With regard to confirming information about registration of the contested domain name, a first email was sent to the Registrar by eResolution Clerk's Office to obtain a copy of the Registration Agreement on May 12, 2000. The delay was due to a difficulty obtaining a response from the Registrar as to whom, within their organization, should be contacted. After numerous failed attempts and a phone call to Tucows.com, the requested information was received June 6, 2000.
The Clerk then proceeded on May 16 to send a copy of the Complaint Form and the required Cover Sheet (but not the extensive annexes which were not then available in digital form) to the respondent by email in accordance with paragraph 2(a)(ii) of the ICANN's Rules for Uniform Domain Name Dispute Resolution Policy. The Respondent acknowledged awareness of the proceeding in email exchanges with the Clerk's Office and in one email stated that it needed "a hard copy of the complaint including annexures." On May 18 the Clerk's Office sent hard copies of the Cover Sheet, the Complaint and the Annexes by postal airmail. Thereafter the Clerk's Office completed conversion of the hard copy annexes into digital form. As of the date of this decision no receipt of that mailing has been received and under ICANN Rule 2(f)(ii) the effective date for communications sent by postal service is the date marked on the receipt.
On June 9, 2000, the Clerk's Office contacted me, and requested that I act as panelist in this case.
On June 12, 2000, I accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On June 12, 2000, the Clerk's Office forwarded a user name and a password to me allowing me to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.
On June 12, 2000, the parties were notified that I had been appointed.
On June 16, 2000, copies of the annexes in digital form were sent to the Respondent at the email address listed in the WHOIS database. Although that email was apparently undeliverable, under ICANN Rule 2(f)(iii) June 16 becomes the date on which the annexes were communicated to the Respondent. In an additional effort to obtain actual service, a further email delivery of the Complaint, Cover Sheet and annexes was made to an email address that the Respondent had used in the prior email exchanges.
Finally, in an effort to assure a fully-informed adversarial process, hard copies of the Cover Sheet, Complaint and all annexes were sent by United Parcel Service to the Respondent on June 16. The UPS website reported that the package was delivered and signed for on June 21, 2000. The record established that the Respondent received the Complaint, Cover Sheet and all annexes.
The Respondent submitted a response on July 5, 2000. Although it is essentially a rhetorical polemic that is not particularly usefull and does not respond to the issues in a helpful manner, it has nonetheless been fully considered and given what little weight it deserves.
3. Factual Background
According to the allegations of the Complaint, which have essentially been verified by the Respondent, the Complainant is affiliated with a monthly subscription publication, Industrial Products Finder that has been widely circulated in India continuously since October 1972. It has a small circulation outside India and carries editorial material from "all over the world." The Complainant maintains a website, http://www.industrialproductsfind.com which has been operated continuously under that name since sometime after the domain name was registered with Network Solutions, Inc (or its predecessor) ("NSI") on 29 September 1998.
Because of the 26-character limitation for domain names that was in effect prior to this year, the domain name for the website was registered as industrialproductfind.com rather than industrialproductsfinder.com. On February 23, 2000, Complainant was advised by NSI that beginning February 26, 2000, domain names in excess of 26 characters would be available. Complainant promptly applied for the domain name industrialproductsfinder.com. That application process led to the discovery that the contested domain name had been registered by the Respondent with TUCOWS on February 23, 2000.
Although the Respondent has registered the domain name industrialproductsfinder.com, the URL http://www.industrialproductsfinder.com does not resolve to an active website. A search of the WHOIS database reveals that the Complaint has registered the domain names industrialproductsfinder.org and industrialproductsfinder.net with NIS on February 27, 2000.
4. Parties' Contentions
The Complainant contends that it has a protectible trademark in the phrase "industrial products finder," that the Respondent is using the domain name industrialproductsfinder.com in a confusingly similar manner, that the Respondent has no legitimate right to use the contested domain name, and that the Respondent registered and is using the domain name in bad faith.
As noted above, the Respondent has filed a polemic narrative in which it contends that this proceeding violates "natural human rights" because of some initial clerical confusion over the accurate domain name. The Respondent further essentially defends the right of domain name pirates to ply their trade and "compete" with established businesses by being the first to register a particular domain name. The response contains other utterly irrelevant observations. For purposes of this decision, there is no dispute over any relevant fact.
5. Discussion and Findings
The applicable provisions of the ICANN Uniform Domain Name Disputes Resolution Policy ("UDRP") require a Complaintant to allege and prove four separate elements:
i) the contested domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The ICANN policy is founded on a requirement that the Complainant have a legally protectable "trademark or servicemark" and absent proof of such a protectable intellectual property interest, the Complainant cannot secure relief under the UDRP. The requisite protection may be established either by proof of a registered mark or by proving rights to a common law protection.
Does the Complainant have a legally protectable mark?
The Complainant claims it has a protectable trademark on the basis of registrations with the Government of India "since 1972." However, the supporting documents presented by the Complainant are not "trademark" registration documents under India's Trade & Merchandise Marks Act 1958, Trade & Merchandise Marks Rules 1959, or any other India law or regulation respecting trademarks. (India does not recognize "service marks.") The supporting documents consist entirely of documents relating to registration of the periodical with the Office of the Registrar of Newspapers for India, the Indian Posts and Telegraphs Department and the Indian Newspaper Society. These documents, each of which is fully credited as valid and effective within its appropriate legal sphere, do not in any way establish the existence of a registered trademark as distinguished from periodical mailing privileges. Given the existence of Indian laws and regulations for the registration of trademarks, the obligation of the Complainant to establish its case by evidence and the absence of any evidence of a registered mark, I conclude that the Complainant has not established that it has a legally protectable registered trademark.
However, the Complainant has established that it has consistently used the phrase "industrial products finder" as the name of a established, widely circulated periodical published and distributed throughout India since 1972. That evidence is sufficient to establish, prima facie, a common law trademark in the phrase "industrial products finder" since India does recognize the existence of common law trademark rights. While those rights, in a common law judicial context, might not protect Complainant against use of the phrase merely as a domain name in a "virtual" context that is not necessarily similar to a hard copy periodical, the UDRP principles apply once trademark or servicemark rights have been established and under those principles the Complainant is not required to show that the Respondent's use of the domain name would be held to be unlawful in a common law cause of action.
Is the contested domain name identical or confusingly similar to the tradename?
The contested domain name is identical, at least for purposes of the UDRP, to the common law trademark. Differences in capitalization, formatting or spacing are irrelevant in the case of domain name identity. Given the fact that many, if not most, individuals who browse the Web today will use the established tradename of a concern in their first effort to reach that concern's webpage, this domain name is identical to the trademark, notwithstanding the Complainant's established prior use of a slightly different domain name for its current website.
Does the Respondent have any rights or legitimate interests in respect of the domain name?
The sole allegations of "illegitimacy" in the record are Complainant's statements that "the name is registered to us by the Government of India and in use by us as a monthly magazine since 1972" and that "none other than us has any rights to the name in India." Those allegations present a difficult issue for decision. The allegation of registration and continuous use by the Complainant, while it is sufficient to establish Complainant's rights, is totally insufficient to establish the absence of any rights in the Respondent. The otherwise unsupported allegation that "none other" have rights in the name is exceedingly thin. It is admittedly difficult to prove a negative, as envisioned by the UDRP, but a Complainant can at a minimum allege that the Respondent is not a subsidiary or affiliate and has not been licensed to use the trademark. When the Complaint makes no factual allegations and instead states only the ultimate legal conclusion that the respondent has no rights, it is difficult to infer that the conclusion is correct. The Respondent's submission on this issue does not provide any relevant information.
Because this Complaint can be resolved without having to decide this issue. I decline to decide whether a bare bones statement that "none other" have rights is sufficient.
Was the disputed domain name registered AND is it being used in bad faith?
The Complaint's allegation of bad faith is sparse indeed: "any use by another party of our name is party [sic] in bad faith" and the registration of the domain name by respondent on February 23, 2000 is a "clear act of bad faith." These conclusory allegations are simply insufficient to establish the bad faith that a complainant must show under the UDRP. Paragraph 4(b) of the UDRP sets out several illustrative examples of bad faith. While that list is not exhaustive, it includes as one example the following:
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 [respondent's] documented out-of-pocket costs directly related to the domain name (emphasis added)
Because of the unambiguous language in the highlighted clause, that example establishes that if a respondent has registered or acquired a domain name for purposes of transferring it to a known owner of a trademark at a cost not in excess of the respondent's documented out-of-pocket costs directly related to the domain name, such an acquisition or use is not in bad faith for purposes of the UDRP. Whatever might be the case under other legal regimes, such as the United States Anticybersquatting Consumer Protection Act, 15 U.S. Code § 1125(d), registration for purposes of selling the name to the owner of a trademark is not an unfair registration or use under the UDRP, if a transfer of the name for no more than documented out-of-pocket costs is available.
The Complaint states that the Respondent has a website at http://www.applyingthought.com. Treating that reference as an effective incorporation of the contents of the website into the Complaint itself, I visited the website and found that the Respondent offers website hosting services, among other services. It is reasonable to infer that one possible purpose of the Respondent's registration was to contact the Complainant and offer to host the Complainant's website, while also offering to transfer the domain name for out-of-pocket costs even if the website itself were not transferred from the current host. (Of course, if the Respondent attempted to condition transfer of the domain name on transferring the hosting of Complainant's existing website, that would plainly be a demand for consideration in excess of out-of-pocket costs and thus grounds for a finding of bad faith). However, based on reasonable inferences from the Respondent's filing, it appears equally likely that the Respondent registered the domain name in anticipation of extracting an illegitimate payment in excess of out-of-pocket costs from the Complainant or tying transfer of the name to the Complainant to a transfer of hosting services for the Complainant's established website. But there is no evidence in this record that any such improper demand for payment has been made. Indeed there is no indication that the Complainant contacted the Respondent to seek a transfer of the name before filing the Complaint. Were the Complainant to offer to pay the Respondent its out-of-pocket costs, and the Respondent then refuse to voluntarily transfer the name, the Complainant would have a new basis for filing a second UDRP complaint on which the panel might well conclude that the disputed domain name had been registered and was now being used in bad faith. But on the present record and in the absence of any allegation or evidence that the Respondent has established a website using the domain name or communicated any intention to sell, rent or transfer the name for an improper consideration, the record fails to sustain a reasonable inference that the Respondent has acquired and is using the domain name in bad faith. (In this connection, the fact that a nslookup check of the domain industrialproductsfinder.com produces a response is sufficient to establish the "use" element of the UDRP. It is not necessary that the domain name is being used as part of a website address.)
The Complainant has established, for purposes of the UDRP, a common law trademark in the phrase "industrial products finder" and the domain name industrialproductsfinder.com is identical to that trademark. It is unnecessary to decide whether the Respondent has any legitimate rights to use the trademark because the Complainant has failed to establish, on the present record, that the Respondent's use of the trademark in its domain name constitutes an unfair use within the meaning of the UDRP.
For the foregoing reasons the relief sought by the Complainant, transfer of the domain name to the Complainant, should not be granted.
Dated: July 7, 2000
Washington, DC USA
(s) Kenneth C. Bass, III