ADMINISTRATIVE PANEL DECISION

Under the ICANN Uniform Domain Name Dispute Resolution


 
Complainant: RAJ VASANT PANDIT
Respondent: VISHAL BHUTA
Case Number: AF-0224
Contested Domain Name: industrialproductfinder.com
Panel Member: Jonathan S. Bain, Esq.
 

 

1. Parties and Contested Domain Name

This proceeding is the result of a complaint by Raj Vasant Pandit (the "Complainant") against Vishal Bhuta (the "Respondent") pursuant to the Uniform Domain Name Dispute Resolution Policy (the "Policy") of the Internet Corporation for Assigned Names and Numbers ("ICANN"). The domain name which is the subject of this dispute is industrialproductfinder.com (the "Contested Domain Name"). The relief sought by the Complainant is the transfer of the Contested Domain Name from the Respondent to the Complainant.

2. Procedural History

The procedural history of this case is set forth in detail in the July 10, 2000 letter from the Clerk of the Disputes.org/eResolution Consortium ("DeC") to this Panel, a copy of which is attached hereto as Exhibit A. The most pertinent part of this history is that Respondent failed to respond to Complainant's complaint, or to DeC's notice to Respondent thereof, in accordance with the requirements of Section 5 of the ICANN Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules").

3. Factual Background

Complainant is the publisher of Industrial Products Finder, a monthly trade periodical published in India and devoted to industrial equipment. While Complainant does not appear to be the owner of any trademark registrations, Complainant's magazine has operated under the name "Industrial Products Finder" continuously for nearly thirty years.

Industrial Products Finder has also entered into a joint venture with several other entities to develop an extensive web site, www.industrialproductsfind.com, that is positioned as a vertical portal, exchange and catalog site devoted to the industrial equipment trade.

Respondent is listed as the both the administrative and technical contact in the registration record for the web site www.industrialproductfinder.com. This site appears to be a typical "under construction" site, with the home page consisting of nothing more than (1) the legend "Industrial Product Finder.com - Coming Soon", (2) a mailto address, and (3) a hyperlink to a second-level page, with the caption "Disclaimer". The only substantive content in the whole site is contained on this second-level page, which reads, in its entirety:

"DISCLAIMER:

This site www.IndustrialProductFinder.com is a site developed in general for providing information of various Industrial Products. This site is not related in particular to any Industry, Product, Advertising Media, Individual, etc. in particular. This site (or its Developers) are not responsible for any Product or Industry related to it or to the Sites Name. This site is a site by its self. Please verify the veracity of all information on your own before undertaking any reliance. We hereby expressly disclaim any implied warranties imputed by the laws of any jurisdiction."

Finally, while Complainant neglected to mention it in his pleading, the Panel takes judicial notice of the COM domain which is identical to Complainant's mark, namely industrialproductsfinder.com, registered by ApplyingThought.com, a web-hosting service based in Bangalore, India. It appears that ApplyingThought.com is unrelated to either of the disputants in the instant case, but there is no evidence before us to explain the status or import of this site.

4. Parties' Contentions

a. Complainant

The Complainant does not appear to own any registered trademarks in the mark INDUSTRIALPRODUCTSFINDER, or any variants thereof. Perhaps because of this, Complainant seems unduly concerned with establishing its common-law trademark rights in this mark. Complainant submitted nearly 700 pages of annexes, almost all of which seem intended to establish that he has used the mark INDUSTRIALPRODUCTSFINDER in commerce for over twenty-five years. For example, a full 675 pages of the the annexes submitted by Complainant were comprised of 3 complete issues of its magazine, Industrial Products Finder.

Complainant also describes his web site, www.industrialproductsfind.com, and provides various articles from computer trade magazines which appear to be intended to demonstrate that this site is both (a) well-known and (b) closely associated in the industrial equipment trade with Complainant's magazine, Industrial Products Finder. Complainant asserts that his inability to reflect the mark INDUSTRIALPRODUCTSFINDER in an exactly corresponding domain name was the result of a technical limitation on the length of domain names, which has since been eliminated, but Complainant does not explain the status of the domain industrialproductsfinder.com, discussed above.

Throughout his Complaint, the Complainant asserts that the Contested Domain Name is confusingly similar to the mark INDUSTRIALPRODUCTSFINDER. Complainant's pleadings, however, are remarkably devoid of any discussion of either Respondent's legitimate rights, or of whether Respondent acted in bad faith.1

b. Respondent

As discussed above, Respondent failed to file a Response in this proceeding.

5. Discussion and Findings

a. Failure to Respond

A respondent's failure to respond in accordance with Section 5 of the Rules is governed by Section 14 of the Rules, which states:

"14. Default

(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.

(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate."

Notwithstanding the somewhat misleading caption of this section, it is this Panel's view that a failure to respond or other default by a respondent should not give rise to a true default judgment procedure, along the lines of Rule 552. Rather, such a default should be evaluated in the context of all the other evidence before the panel, and where appropriate, fact-specific inferences adverse to the respondent may be drawn from such default. A sensible inference in many but not all cases3, would be that the facts alleged in the complaint are true.4 But even with this favorable presumption, a complainant still bears the burden of pleading at least a prima facie case; the effect of the default is simply that, once the complainant has done so, his burden of pursuasion is lower than it would be had the respondent denied or otherwise contraverted the allegations made in the complaint.

For the purposes of this decision, we shall take the Complainant's factual allegations as true, and proceed to evaluate whether these allegations constitute even a prima facie case under the Policy.

b. Elements of a Complaint Under the Policy

Section 4(a) of the Policy sets forth the three elements which must be proven by a complainant seeking relief under the Policy:

(i) The domain name in dispute must be "identical or confusingly similar to a trademark or service mark in which the complainant has rights";

(ii) The respondent must have "no rights or legitimate interests in respect of the domain name"; and

(iii) The domain name must have "been registered and is being used in bad faith".

We shall address each element in turn.

i. Confusing Similarity

As mentioned above, Complainant submitted voluminous annexes, most of which seem relatively inapposite to the dispute at hand. One salient factor that stands out in all of the annexes, however, is that the mark INDUSTRIALPRODUCTSFINDER appears to have acquired substantial secondary meaning.5 Given this, and given that the only difference between Complainant's mark and the Contested Domain Name is the omission of a single letter, we find that the Contested Domain Name is confusingly similar to Complainant's trademark.6

ii. No Legitimate Interest

Complainant has failed to make any cognizable claim that Respondent has no rights or legitimate interests in respect of the Contested Domain Name. The sum total of Complainant's pleadings on the subject were as follows:

"1) The Respondent's registration of the disputed domain name is illegitimate because it is identical to the name of our magazine except that the Respondent has dropped the s from the word products and made it singular instead of our plural products. 2) The magazine is the most famous and popular industrial magazine in India for the last 27 years and by usage and convention, it is our trade mark. 3) The Respondent has registered the name on 26 February 2000." 7

In light of the Respondent's default, it might be reasonable to draw a further inference that Respondent had no rights or legitimate interests, or he would have come forward to assert them. Given our finding below that Complainant has not sufficiently proven bad faith, however, it is not necessary to reach that decision.

iii. Bad Faith

The third element that Complainant must prove in order to obtain relief under the Policy is that the Contested Domain Name was registered and is being used in bad faith.

Complainant's pleadings are remarkably devoid of any factual allegations or legal assertions which, even if given a strong presumption of validity, would support a finding of bad faith. The totality of Complainant's assertions on the subject of bad faith are as follows:

"1)The magazine Industrial Products Finder is widely known and recognised in India for the last 27 years and is also known outside India as India's leading industrial magazine. The magazine's website www.industrialproductsfind.com was launched in August 1999, and is widely advertised.

2)It is generally believed that our website is industrialproductsfind.com (26 characters) and not industrialproductsafinder.com [sic] (28 characters)because of ICANN restrictions (lifted in late February - on limitation on the number of characters in a diomanin [sic] name, and that we would use the name of the magazine as the name of our website in the event a dispute over that name is settled in our favour.

3) The respondent, a Bangalore entity, where our disputed Name's registrant is also located, has registered www.industrialproductfinder.com in bad faith knowing full well that it is similar, almost identical to the name of our magazine." 8

The only portion of this statement that has even an arguable bearing upon the question of bad faith is Complainant's allegation that the Respondent registered the Contested Domain Name "in bad faith knowing full well that it is similar, almost identical to the name of our magazine." But even this allegation is merely a bald assertion, with no facts alleged to support it, coupled with a reiteration of Complainant's contention, already discussed above, that the Contested Domain Name is confusingly similar to Complainant's mark.9 Complainant offers no evidence of any actions or statements by Respondent that would satisfy any of the four indicia of bad faith set forth in Section 4(b) of the Policy10, or that would otherwise demonstrate bad faith on the part of Respondent.

There is a wide array of potential disputes between trademark owners and domain-name registrants, and the ICANN Policy is intended to address only a very narrow sub-category of such disputes, namely, those involving abusive domain registrations.11 Due to the highly expedited nature of the administrative proceedings under the Policy, the relative lack of formal due process in such proceedings, and the relative difficulty in assessing complex factual questions when deciding a case solely upon the pleadings, the Policy sets forth a rather restrictive set of criteria for determining whether a dispute is eligible for the specific remedy afforded by the Policy - and bad faith is the heart of these criteria.

It may well be that Complainant could successfully obtain relief in another forum where bad faith is not a prerequisite.12 Indeed, with the assistance of the plenary discovery process afforded by other forums, Complainant might be able to develop sufficient facts to successfully prove bad faith. For that matter, Complainant may already possess facts sufficient to demonstrate bad faith, and might be better able to frame those facts with the benefit of the motions practice afforded by other forums. But all this is conjectural: This Panel is limited to deciding this dispute solely on the facts presented by Complainant, and on those facts, we find that Complainant has failed to adequately prove that Respondent registered and used the Contested Domain Name in bad faith.

6. Conclusions

Because of Respondent's default in this case, we afford Complainant's complaint a presumption of truthfulness. Even if each of Complainant's allegations are taken as true, however, Complainant has failed to make even a prima facie case that would entitle Complainant to relief under the Policy.

Accordingly, the Complainant's request is denied, and in accordance with Section 3(c) of the Policy, this Panel orders that the domain name industrialproductfinder.com not be transferred to Complainant Raj Vasant Pandit and that the instant complaint be dismissed.

Entered and signed on the 21st day of July, 2000, in Gloucester, Massachusetts, U.S.A. by Jonathan S. Bain, Esq.

(s) Jonathan S. Bain

Presiding Panelist

1. See Sections 5(b)(ii) and 5(b)(iii) infra, respectively, for a discussion of Complainant's pleadings on these two issues.

2. Fed. R. Civ. P. 55.

3. This Panel can certainly envision cases where a complainant's allegations are so facially implausible that a presumption of validity would be unwarranted; that's not the case in this dispute, however. Complainant's allegations are entirely credible, in as far as they go; unfortunately for the Complainant, Complainant's allegations are not legally sufficient to support the relief requested. See Section 5(b)(iii), infra.

Conversely, the Panel can envision cases where a respondent's default raises inferences that go beyond the four corners of a complaint; one such example is the issue of legitimate rights. See Section 5(b)(ii), infra.

4. This approach has been adopted by several other panelists; see, e.g., Softquad Software, Inc. v. Eleven-Eleven, Ltd., AF-0143 (DeC, June 1, 2000); The Pep Boys v. E-Commerce Today, Ltd., AF-0145 (DeC, May 3, 2000).

5. Complainant never raised the issue of distinctiveness in his pleadings, but since Complainant appears to have proceeded pro se, and obviously went to great pains to submit a number of annexes which have no other apparent purpose, this Panel will address the issue sua sponte.

6. See Smoky Mountain Knife Works v. Deon Carpenter, AF-230 (DeC, July 3, 2000), for a discussion of whether the "confusingly similar" test set forth in Section 4(a)(1) of the Policy requires a full showing of likelihood of confusion.

7. Compl. Section 4(c), par. 2 (in response to the prompt: "Describe why the Respondent/Domain-name holder should be considered as having no rights or legitimate interests in respect to the contested domain name").

8. Compl. Section 4(c), par. 3 (in response to the prompt: "Describe why the contested domain name should be considered as having been registered and used in bad faith").

9. While this Panel is inclined to give Complainant's allegations a presumption of validity, due to Respondent's default (see Section 5(a), supra), Complainant must still offer at least some modicum of specific, factual allegations, not merely conclusory legal assertions. Complainant's burden is directly analogous to that borne by the party opposing a summary judgement motion: While the evidence offered by the party opposing such a motion is viewed in the light most favorable to that party, United States v. Diebold, Inc., 369 U.S. 654 (1962), such a party "may not rest upon the mere allegations [in its pleadings], but ... must set forth specific facts showing that there is a genuine issue for trial." Fed. R. Civ. P 56(e).

10. According to Section 4(b) of the Policy, indicia of bad faith can include, inter alia:

(i) The respondent registered the domain name for the purpose of selling it to the complainant or a competitor of the complainant;

(ii) The respondent has engaged in a pattern of registering domain names in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name;

(iii) The respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) The respondent has intentionally attempted to attract users to its web site by using the domain name to create a likelihood of confusion with the complainant's trademark.

11. An ICANN staff report prepared prior to the final approval of the Policy articulated this policy as follows:

"[The Policy] calls for administrative resolution for only a small, special class of disputes. Except in cases involving 'abusive registrations' made with bad-faith intent to profit commercially from others' trademarks (e.g., cybersquatting and cyberpiracy), the adopted policy leaves the resolution of disputes to the courts (or arbitrators where agreed by the parties) and calls for registrars not to disturb a registration until those courts decide. The adopted policy establishes a streamlined, inexpensive administrative dispute-resolution procedure intended only for the relatively narrow class of cases of 'abusive registrations.' Thus, the fact that the policy's administrative dispute-resolution procedure does not extend to cases where a registered domain name is subject to a legitimate dispute (and may ultimately be found to violate the challenger's trademark) is a feature of the policy, not a flaw. The policy relegates all 'legitimate' disputes--such as those where both disputants had longstanding trademark rights in the name when it was registered as a domain name--to the courts; only cases of abusive registrations are intended to be subject to the streamlined administrative dispute-resolution procedure."

ICANN, Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy, Section 4.1(c) (October 25, 1999).

12. Among other things, it would appear, on the facts presented to this Panel, that Complainant has at least a good prima facie claim for trademark infringement.

Exhibit A

Procedural History

Montreal, July 10, 2000

Name: Mr. Jonathan Bain

E-mail:

Re : industrialproductfinder.com

DeC AF-00224

_________________________

Sir,

You will find herein all the documentation related to the above-described matter. Furthermore, here is a summary and procedural history of the case in which you have agreed to act as lead panelist:

Summary:

File number: AF-0224
Complainant: Raj Vasant Pandit.
Respondent: Vishal Bhuta
Panel: 1 Member Panel
Remedy sought: Transfer

Procedural History:

The electronic version of the Complaint form was filed on-line through eResolution's Website on May 17, 2000. The hardcopy of the Complaint Form was received on May 23, 2000. Payment was received on May 23, 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 leads the Clerk of eResolution to the following conclusions: the Registrar is Alabanza inc., the Whois database contains all the required contact information, the contested Domain Name resolves to an active Web page and the Complaint is administratively compliant.

An e-mail was sent to the Registrar by eResolution Clerk's Office to obtain a copy of the Registration Agreement on May 12, 2000. Reminders were also sent. The requested information was received June 14, 2000.

The Clerk's Office proceeded to send a copy of the Complaint Form and the required Cover Sheet in accordance with paragraph 2 (a) of the ICANN's Rules for Uniform Domain Name Dispute Resolution Policy. The Clerk's Office fulfilled all its responsibilities under Paragraph 2(a) in connection with forwarding the Complaint to the Respondent on May 25, 2000. However, the domain name holder had transferred the domain name to Vishal Bhuta on May 24, 2000. Thus, a second notification was issued to the present domain name holder, Vishal Bhuta.

The Clerk's Office fulfilled all its responsibilities under Paragraph 2(a) in connection with forwarding the Complaint to the Respondent on June 15, 2000. That date is the commencement date of the administrative proceeding

The Clerk's Office fulfilled all its responsibilities under Paragraph 2(a) in connection with forwarding the Complaint to the Respondent on June 15, 2000. That date is the commencement date of the administrative proceeding.

On June 15, 2000, the Clerk's Office notified the Complainant, the Respondent, the concerned Registrar, and ICANN of the date of commencement of the administrative proceeding.

The e-mails were returned 'undeliverable'. No fax numbers were available on Better-whois, neither from the Registrar nor on the web site.

The complaint, official notification and all the annexes were sent by UPS to the respondent's various addresses. According to the UPS tracking system, all were delivered.

The Respondent did not submit a response, neither via the eResolution Internet site nor a signed version. He communicated with the Clerk's Office on June 19, 2000 and maintained that he was not contesting the Complaint and was willing to transfer it to the complainant. On June 20, 2000, he was informed to communicate with the Registrar and confirm the transfer of the domain name with us, once complete. The Clerk's Office was not informed of any settlement discussion between the parties. Upon verification on July 7, 2000, the web site is still active and Better-whois indicates that Vishal Bhuta is still the domain name holder.

On July 7, 2000, the Clerk's Office contacted Mr. Jonathan Bain, and requested that he act as panelist in this case.

On July 10, 2000, Mr. Jonathan Bain accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.

On July 10, 2000, the Clerk's Office forwarded a user name and a password to Mr. Jonathan Bain, allowing him to access the Complaint Form and the evidence through eResolution's Automated Docket Management System.

On July 10, 2000, the parties were notified that Mr. Jonathan Bain had been appointed and that a decision was to be, save exceptional circumstances, handed down on July 23, 2000.