ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
The Complainant is IPF Online Ltd, 33, D'Silva Road, Mylapore, Chennai, Tamil Nadu, 600004, India.
The Complaint named ApplyingThought.com, located 6C, Sukhi Apts. 17 Rhenjus Street, Longford Town, Bangalore, Karnataka, 560025, India, as Respondent and Registrant of the contested domain name. ApplyingThought.com's administrative, billing and technical contact was listed as Rakesh Sud. However, the Response identifies the Respondent as "John Hitfield rep by Rakesh Sud". The Response does not give postal addresses for John Hitfield or Rakesh Sud, only email addresses.
The contested domain name is industrialproductsfinder.com, which was registered with Tucows.com on February 23, 2000 by ApplyingThought.com; Rakesh Sud was named as the contact person. The contested domain name later was transferred. A current whois search identifies the Registrant as IndustrialProductsFinder.com, 98th Ave., 21 Saturn Apartments, Minneapolis, MN 55444-1000, USA. (See Attachment A.) The contact person is John Hitfield, of the same address. No telephone number is given.
The contested domain name currently reverts to an active website, which contains a single page (see Attachment B.) The page has a banner for IndustrialProductsFinder.com at the top, then provides an ability to search several general search engines (e.g., Altavista.com) for a product. The website contains no other information.
2. Procedural History
This Complaint is related to a former complaint filed with eResolution, AF-0198. The administrative decision in the first case can be found at http://www.eresolution.ca/services/dnd/decisions/0198.htm. That decision was issued July 7, 2000.
The electronic version of the present Complaint form was filed on-line through eResolution's Website on July 24, 2000. Due to difficulty in sending certain documents, the Complainant requested and was granted an extension to file the hardcopies. The hardcopy of the Complaint Form and annexes were received on September 12, 2000. Payment was received on August 18, 2000 although the confirmation was only received on August 31, 2000.
There were lengthy delays due to communication problems between banks, compounded by the Complainant's government-run email provider's difficulties, which is experiencing numerous down times. The Complainant was granted extensions in view of the problems.
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 essential contact information for Respondent;
- Verify if the contested Domain Name resolved to an active Web page;
- Verify if the Complaint was administratively compliant.
This inquiry lead the Clerk of eResolution to the following conclusions: the Registrar is Tucows.com, 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.
A first email was sent to obtain confirmation of the Registration agreement on July 25, 2000. Confirmation was received the same day.
Mr. Sud, the original Respondent, sold the domain name to Mr. Hitfield before the Official Notification, which in turn created other delays. Even after he sold the domain name, original Respondent persisted to write to request information frequently, to which he attached automatic reminders. Mr. Hitfield then appointed Mr. Sud as his prime contact. After the domain name was sold, another e-mail was sent to the Registrar by eResolution Clerk's Office to obtain confirmation and a copy of the Registration Agreement on September 13, 2000. The requested information was received September 13, 2000.
The Clerk then 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 forwarding the Complaint to the Respondent, notifying the Complainant, the concerned Registrar and ICANN on September 13, 2000. This date is the official commencement date of the administrative proceeding.
All emails to the domain name holder were successful. All the emails to the web site's contact address email@example.com, which is Mr. Rakesh Sud's email, were received. The faxes failed.
The complaint, official notification and all the annexes were sent to the Respondent, Mr. John Hitfield, via registered mail with proof of service to his address in the USA. The address is nonexistent.
The Respondent, Mr. Hitfield, requested that we copy all information to Mr. Rakesh Sud and then authorized him on September 20, 2000 to reply to us on his behalf and named him his prime contact.
On October 2, 2000, the prime contact submitted his response via eResolution Internet site. eResolution did not receive a signed version of the response.
On October 13, 2000, 2000, the Clerk's Office contacted Ms. Sandra Sellers, and requested that she act as panelist in this case. On October 16, 2000, Ms. Sandra Sellers accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On October 16, 2000, the parties were notified that Ms. Sandra Sellers had been appointed and that a decision was to be, save exceptional circumstances, handed down on October 30, 2000.
Rather than handing down the decision, on October 30, 2000, the Panelist issued the following:
NOTICE TO THE PARTIES
The Panelist has determined that further information is necessary before a decision can be rendered in this proceeding. Please respond to the following questions, with a maximum of two (2) pages, excluding attached documents. Both parties must serve their replies on the clerk and the opposing party by 5:00 PM, Montreal time, Monday, November 6, 2000. Responses to the other party's reply will not be permitted. The Panel will consider the responses and issue a decision by Monday, November 13, 2000.
Additional Information to be provided by Complainant
1) The Complainant shall provide a copy of the complaint OS 5330/2000 filed in a Bangalore court re the contested domain name. If the complaint is not in English, please provide an English translation.
2) With respect to OS 5330/2000 filed in a Bangalore court:
a) state the date the complaint was filed;
b) state the date the complaint was served;
c) identify all parties;
d) state the relief requested;
e) state the full name of the court and the judge before which the matter is pending;
f) identify all dates set by the court, or attach a scheduling order, if one has been issued in English;
g) state whether any motions have been filed, and if so, the title of the motion, the date of filing, and whether a response has been filed;
h) state the date of trial, or if none has been set yet, give an estimate of when the matter may be heard;
i) state when the judge's opinion may be expected to be issued;
j) state whether the court has been informed of ICANN proceeding nos. AF-198 and AF-291; and
3) state whether any party has asked the Bangalore court for a stay pending decision in ICANN proceeding no. AF-291.
Additional Information to be Provided by Respondent
4) When was the domain name sold to John Hitfield?
5) Does John Hitfield know about IPF Online Ltd. v. Applying Thought.com, AF-198, the earlier proceeding concerning industrialproductsfinder.com? When did John Hitfield become aware of that proceeding? What is John Hitfield's current area of responsibility concerning the domain name?
6) Does Rakesh Sud retain any ownership interest in the domain name? What is Rakesh Sud's current area of responsibility concerning the domain name?
7) The Response states "That the domain name had been available from domain name brokers suggests that the Complainant had the option of purchasing the name." (Response, Section 3(b) - Other Grounds, Paragraph 7. Please explain:
a) when the domain name had been available from domain name brokers;
b) where that information could be found (if on the Internet, provide the URL);
c) whether the domain name was purchased as a result;
d) the asking price for the domain name; and
e) provide a copy of the listing of the domain name for sale.
Both parties submitted timely responses to the Panelist's Notice.
3. Respondent's Request for a Stay
In its initial Response, Respondent noted that Complainant had filed a lawsuit in a Bangalore court, and requested that this proceeding be stayed in favor of the Bangalore suit.
As requested by this Panel, the Complainant submitted a copy of the complaint filed on August 6, 2000 in the Court of the City Civil Judge, Bangalore, India. The Complainant in the Bangalore suit is IPF Online Ltd; the Respondents are Rakesh Sud and ApplyingThought.com. The Complainant requested several types of relief, including transfer of the contested domain name to the Complainant, temporary and permanent injunctions, delivery of all impugned materials, damages, and costs.
On August 8, 2000, the court granted an ex parte temporary injunction restraining Respondents from using, transferring or otherwise alienating the contested domain name. On August 10, 2000, Rakesh Sud responded by email that he had ''alienated the domain name industrialproductsfinder.com last month itself and have no control over the same.''
The Bangalore court has not set a date for trial.
Paragraph 18 of the ICANN Rules for Uniform Domain Name Dispute Resolution Policy state:
(a) In the event of any legal proceedings initiated prior to or during an adminstrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.
Several other domain name disputes have involved requests to stay the ICANN administrative proceeding until a decision has been rendered in a co-pending lawsuit. See, e.g., Innersense International Inc. v. Keith Manegre, eResolution AF-0278; Weber-Stephen Products Co. v. Armitage Hardware, WIPO D2000-0187; World Publications, Inc. v. World Pen, WIPO D2000-0736; ISL Marketing AG v. The European Unique Resources Organisation 2000 BV, WIPO D2000-0230; Computer Futures Recruitment Consultants Ltd. v. Keith Phillips and Computerfutures Ltd.,eResolution AF-0106.
In Computer Futures Recruitment Consultants Ltd. v. Keith Phillips and Computerfutures Ltd.,eResolution AF-0106, the Panel denied the request for a stay because it found the real party in interest was not a party to the court action. Similarly, in this proceeding concerning industrialproductsfinder.com, neither Respondent John Hitfield nor the current Registrant, IndustrialProductsFinder.com, is a party in the Bangalore suit. The real parties in interest are present only in this ICANN administrative proceeding. It also should be noted that in the current whois search, Registrant IndustrialProductsFinder.com and John Hitfield list postal addresses in the United States, and may not be subject to the jurisdiction of the Bangalore court.
Further, this proceeding is distinguishable from Innersense International Inc. v. Keith Manegre, eResolution AF-0278. In Innersense, the Panel stayed the ICANN proceeding because the court had issued an ex parte order restraining the respondent from selling or transferring the domain name registration absent further court order. The Panel determined that ''it would not be appropriate for the Panel to make an order with a practical result that is directly contrary to the apparent purpose of the Court Order.'' In this proceeding concerning industrialproductsfinder.com, the Bangalore court similarly has issued an order restraining transfer of the contested domain name. However, industrialproductsfinder.com was transferred from Respondent Rakesh Sud to IndustrialProductsFinder.com/John Hitfield before the Bangalore court issued the restraining order, and IndustrialProductsFinder.com/John Hitfield is not a party to the Bangalore suit. Consequently, any action taken by this Panel against IndustrialProductsFinder.com/John Hitfield cannot thwart the purpose of the Bangalore court's order.
Accordingly, this Panel denies Respondent's request to stay this administrative proceeding, and will proceed to determine whether to grant Complainant's request to transfer industrialproductsfinder.com to Complainant.
4. Factual Background
This Panel adopts the Factual Background set forth in Administrative Panel Decision AF-0198 as it relates to Complainant's activities. In brief, Complainant is affiliated with a monthly publication, Industrial Products Finder, which has been circulated continuously since October 1972. Complainant has a companion website at http://www.industrialproductsfind.com, which it registered with Network Solutions Inc. on September 29, 1998 (see Attachment C.)
The facts relevant to this proceeding are rather complicated, due to the existence of two ICANN proceedings, the transfer of the contested domain name in between, and the co-pending lawsuit in India. This Panel deems the following chronological events of 2000 are relevant to this decision:
Feb. 23 Respondent ApplyingThought.com/Rakesh Sud registered industrialproductsfinder.com with Tucows.com
Feb. 26 Complainant applied to NSI for industrialproductsfinder.com (the first day NSI permits registration of domain names in excess of 26 characters); Complainant found the contested domain name already was registered to Respondent
Feb. 28 Complainant called Rakesh Sud and offered to buy industrialproductsfinder.com for US$750
Feb. 29 Sud emailed a refusal but offered to transfer industrialproductsfinder.com to Complainant for free if Complainant were to pay Rs 95,00,000 (~US$205,000) "towards the street children of Bangalore"
Apr. 23 Complainant filed the complaint in the first ICANN administrative proceeding (AF-0198)
May 12 eResolution sent email to Registrar Tucows.com to confirm information and Registration Agreement
May 16 eResolution sent complaint to Rakesh Sud, which he acknowledged by asking for hard copies
June 6 Tucows.com responded and confirmed
July 7 Administrative Panel Decision in AF-0198 issued; found that industrialproductsfinder.com did not revert to an active website; found that Complainant had not proven its case and denied relief, but indicated Complainant may file another complaint
July? Hitfield bought industrialproductsfinder.com
July 23 industrialproductsfinder.com record updated [according to current whois searches]
July 24 Complainant filed the complaint in this ICANN administrative proceeding (AF-0291); also requested extension to file hard copies
July 25 eResolution sent inquiry to Tucows.com to confirm information and Registration Agreement; Tucows confirmed; eResolution determined the domain name resolved to an active web page
Aug. 6 Complainant filed Bangalore lawsuit
Sept. 12 eResolution received hardcopies of documents from Complainant
Sept. 13 eResolution sent another email to Tucows.com to obtain confirmation of the domain name transfer and copy of the registration agreement - confirmation received the same day; ICANN proceeding AF-0291 is commenced
Oct. 2 Rakesh Sud filed electronic Response on behalf of John Hitfield; a signed version was never received by eResolution
5. 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.
Respondent generally contends that the phrase "industrial products finder" is generic, without secondary meaning, and not entitled to trademark protection. Respondent contends that it has legitimate rights and is using the domain name. Other contentions are spurious and not worth summarizing.
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
2) that the respondent has no legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and used in bad faith.
The question before this Panel is whether the Complainant has satisfied the requirements of Paragraph 4(a) with respect to these three elements, all of which must be proved by Complainant.
Complainant has rights in a protectible trademark
This Panel adopts the discussion and findings in AF-0198, and determines that the evidence is sufficient to establish a common law trademark in the phrase "industrial products finder."
The contested domain name is identical or confusingly similar to Complainant's trademark
This Panel adopts the discussion and findings in AF-0198, and determines that the contested domain name, industrialproductsfinder.com, is identical or confusingly similar to Complainant's trademark.
Respondent has no legitimate interest or rights in the contested domain name
Complainant contends, and Respondent does not dispute, that (1) the trademark has been in continuous use since 1972; and (2) Complainant has not licensed or leased its trademark to any other party, nor does Complainant have any connection whatsoever with the Respondent. This Panel therefore finds that Respondent has no rights or legitimate interest in the contested domain name.
Respondent contends that it "has set up a website and is doing business on the domain name." However, industrialproductsfinder.com currently reverts to a web site containing a single page, which purports to search for industrial products. In reality, when a user enters a product for which to search, the user leaves industrialproductsfinder.com for the site of one of the general search engines, such as Altavista.com, and the general search engine performs the search and delivers the results. Respondent's site contains no independent content. This Panel finds that Respondent's website does not support its claim of legitimate interest in the contested domain name.
The contested domain name was registered and is being used in bad faith
ICANN UDRP Policy 4(b) sets forth examples of circumstances that shall constitute evidence of bad faith:
B. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant … for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.
The evidence indicates that both the original Registrant-Respondent, ApplyingThought.com/Rakesh Sud, and the current Respondent, John Hitfield, have registered and used the contested domain name in bad faith.
ApplyingThought.com/Rakesh Sud registered and used the contested domain name in bad faith
On February 28, Complainant offered to purchase industrialproductsfinder.com from ApplyingThought.com/Rakesh Sud for US$750. On February 29, Sud emailed a refusal but offered to transfer industrialproductsfinder.com to Complainant for free if Complainant paid Rs 95,00,000 (~US$205,000) towards the street children of Bangalore. Paragraph 4(B) find bad faith if Respondent requires "… valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name" to transfer the domain name registration to the complainant; it does not require that Respondent actually receive it. This demand alone supports a finding of bad faith by ApplyingThought.com/Rakesh Sud.
There appear to be other grounds on which to find that Rakesh Sud registered and used the contested domain name in bad faith. According to the Complainant's contentions in the complaint filed in the Bangalore court, it appears that Sud engaged in a pattern of registering domain names to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name. Specifically, Sud registered the following domain names:
ApplyingThought.com (well-known by-line of Wipro infotech Ltd.);
Taste the Thunder.com (well-known by-line for Thums up, owned by the Coca-Cola Co.);
Dil Maange More.com (well-known by-line for Pepsi, owned by Pepsi, Inc.);
Bring Home the Leader (well-known by-line for Videocon Televisions, owned by Videocan);
Believe in the Best (well-known by-line for BPL products, owned by BPL).
Current whois searches verify that Rakesh Sud is the Registrant of these domain names (see Attachment D.) Accordingly, it appears that Complainant's contentions are credible, and support a second basis for finding bad faith against Rakesh Sud.
IndustrialProductsFinder.com/John Hitfield registered and used the contested domain name in bad faith
The current whois search for industrialproductsfinder.com lists the address for the Registrant, IndustrialProductsFinder.com, and for the contact, John Hitfield, as 98th Ave., 21 Saturn Apartments, Minneapolis, MN 55444-1000, USA. (See Attachment A.) However, when eResolution attempted to serve the Complaint via registered mail with proof of service to this address, the address was nonexistent. Interestingly, the Response to the Complaint in this proceeding omits an address for both John Hitfield and his designated representative, Rakesh Sud, despite the Response Form's request for this information. Providing false information or refusing to provide information supports a finding of bad faith registration and use.
Another issue concerns whether Hitfield knew of Complainant's claims to the contested domain name when he purchased it from ApplyingThought.com/Rakesh Sud. The evidence is inconclusive, but only because Hitfield evaded responding specifically to questions from this Panel. The October 30 Notice to the Parties requested the following:
Additional Information to be Provided by Respondent
4) When was the domain name sold to John Hitfield?
5) Does John Hitfield know about IPF Online Ltd. v. Applying Thought.com, AF-198, the earlier proceeding concerning industrialproductsfinder.com? When did John Hitfield become aware of that proceeding? …
4) July 2000
5) Yes I know. I am aware there was a proceeding which Rakesh had won just after buying the domain name. I asked for details and got them as soon as the present proceeding was informed to me.
Hitfield does not state the exact date in July 2000 on which he obtained the contested domain name. Based on his answer to question 5 ("…Rakesh had won [the proceeding] just after buying the domain name"), it appears that Hitfield bought the contested domain name while the first ICANN proceeding was still pending. Further, it is reasonable to conclude that the actual transfer occurred before July 23, which is the "Updated Date" identified in the current whois records (see Attachment A.) Given Hitfield's lies and evasiveness concerning his address, and his less-than-specific responses to this Panel's questions, this Panel feels justified in drawing adverse inferences and finds that Hitfield knew of Complainant's claims against the contested domain name at the time he purchased and registered industrialproductsfinder.com. This further supports a finding of bad faith by Hitfield.
Accordingly, this Panel finds that Complainant has met all the requirements of UDRP 4(a). Complainant's Request to transfer the domain name industrialproductsfinder.com to Complainant is GRANTED. Registrar Tucows.com is directed to transfer name industrialproductsfinder.com to Complainant.
Date: November 13, 2000
McLean, Virginia, USA
(s) Sandra A. Sellers