ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
Complainant is a limited liability company with its primary business office in Thornton, Colorado. Respondent is an individual residing in Ava, New York.
There are four contested domain names (see caption above).
2. Procedural History
The electronic version of the Complaint form was filed on-line through eResolution's Website on July 28, 2000. The hardcopy of the Complaint Form and payment were received on the same date.
On August 4, 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 sent to the postmaster of the referred domain names were the only ones to have been returned 'undeliverable'.
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.
On August 24, 2000, the Clerk's Office notified the Respondent and the Complainant of the failure of the Respondent to respond to the complaint. It also informed the parties that according to ICANN Rules Art.5 (ix)(e): "If a respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint"
On August 28, 2000, the Clerk's Office contacted the undersigned panelist, and requested that she act as panelist in this case. On September 6, 2000, she agreed to act as panelist in this case. On September 8, 2000, the parties were notified that she had been appointed and that a decision was to be, save exceptional circumstances, handed down on September 21, 2000.
3. Factual Background
Complainant is the owner of a federally registered service mark "SPACEIMAGING" for providing access to remote sensing satellites; data and information products, including images, photographs, and maps; and providing technical consulting services in the field of earth imaging. The federal registration was issued on May 27, 1997.
In addition, Complainant has used the mark "IKONOS" in commerce since September 4, 1999, in connection with a satellite; data and information products, including images, photographs, and maps; and providing technical consulting services in the field of satellite-based earth imaging. There is no evidence of federal or state trademark registration for the "IKONOS" mark, or of any pending registrations.
Respondent registered the four contested domain names with Network Solutions, Inc. (hereinafter "NSI"). A search of NSI's whois database reveals that these four domains were apparently all created on the same day: January 19, 2000. Thus these four domain name registrations post-date the Complainant's federal registration of "SPACEIMAGING" and its first use in commerce of "IKONOS."
Complainant apparently initiated contact with Respondent in March 2000 regarding the disputed domain names. Copies of the initial correspondence are not on file, but two e-mail messages from Respondent are attached to the Complaint. The first, dated March 6, 2000, states that Respondent "was relatively new to the purchasing of domain names, and when I searched the data base for names I looked for companies that I thought would be ones that would be profitable and yours was one of them. I did not think of any trade names, trademarks, etc." Further in the message is an offer to "transfer" the names, but that Respondent "can't afford to just freely turn over the domain names." The second, dated March 15, 2000, states that "I am willing to accept a reasonable offer for these domain names. You and I are both aware that there is [sic] some of the domain names that infringe on trademark rights of your client . . .."
4. Parties' Contentions
Complainant alleges in count 4C of its complaint that :
(1) Respondent's domain names are confusingly similar to the marks. The Complainant acknowledges that parts of each domain name are composed of generic terms, such as "SATELLITE" but nonetheless these generic terms fail to distinguish the domain names from Complainant's marks "SPACEIMAGING" and "IKONOS."
(2) Respondent has no legitimate interests in these domain names because his e-mail messages reveal that he chose the domain names on the basis of companies "that would be profitable" rather than for any demonstrated other business reason. Complainant also points out the Respondent does not have a registered trademark in either of the two marks ; the Respondent has not made use of the domain names ; and that Respondent has not been commonly known by the domain names.
(3) Respondent has registered the domain names " in the hopes of selling or otherwise transferring the name for a profit in excess of registration costs."
As stated earlier, no response has been filed to these allegations.
5. Discussion and Findings
The procedural posture of this case is complicated by the fact that the Respondent has not filed a response to the complaint. Because there is no response, I will accept as true all factual allegations in this unopposed complaint. I thus proceed to the determination whether Complainant has met its burden of proof of meeting each of the three required elements of Paragraph 4(a) of the ICANN Uniform Dispute Resolution Policy (hereinafter UDRP):
(1) Identity or Confusing Similarity of Respondent's Domain Name to Complainant's Registered Mark:
a. Rights in a Mark
ICANN UDRP Paragraph 4(a)(i) requires that the Complainant has a rights in a trademark or service mark. Several decisions under ICANN's UDRP have found that this paragraph covers unregistered as well as registered trademarks. See, e.g., MathForum.com, LLC v. Weiguang Huang, WIPO Case No. D2000-0743 (quoting The British Broadcasting Corporation v. Jaime Renteria (WIPO Case No. D2000- 0050, March 23, 2000) "This Administrative Panel acknowledges that the Uniform Policy in paragraph 4(a)(i) refers merely to a 'trademark or service mark' in which the Complainant has rights, and in particular does not expressly limit the application of the Uniform Policy to a registered trademark or service mark of the Complainant. Further, this Administrative Panel recognizes that the WIPO Final Report on the Internet Domain Name Process (the Management of Internet Names and Addresses: Intellectual Property Issues, April 1999), from which the Uniform Policy is derived, does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names. It is therefore open to conclude that the Uniform Policy is applicable to unregistered trademarks and service marks."). Based on these non-binding precedents, as well as my own interpretation of the open-ended language of Paragraph 4(a)(i), I find rights protectible under the UDRP can extend to unregistered (or common law) trademarks or service marks.
What constitutes sufficient evidence of common law trademark or service mark rights? If the mark is (1) distinctive (or has acquired secondary meaning) and (2) in use, then the rights may attach. See J. Thomas McCarthy, McCarthy on Trademarks (hereinafter "McCarthy") § 16.01.
(i) Distinctiveness :
In 2E Corporation v. Imagisys Inc., E-resolution Case No. AF-0162 (2ecorp.com), the panel applied the following test for existence of a trademark right absent proof of registration :
The general rule regarding distinctiveness is that an identifying mark is distinctive and capable of being protected if it either is inherently distinctive or has acquired distinctiveness through secondary meaning. Lanham Trade-Mark Act, § 2(e, f), as amended, 15 U.S.C.A. § 1052(e, f). Trademarks may be classified as (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful; [the] latter three categories of marks, are considered inherently distinctive. Lanham Trade-Mark Act, §§ 2, 45, as amended, 15 U.S.C.A. §§ 1052, 1127. Secondary meaning is used generally to indicate that a mark or dress "has come through use to be uniquely associated with a specific source." Restatement (Third) of Unfair Competition § 13, Comment e (Tent.Draft No. 2, Mar. 23, 1990). "To establish secondary meaning, a manufacturer must show that, in the minds of the public, the primary significance of a product feature or term is to identify the source of the product rather than the product itself." Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 851, n. 11, 102 S.Ct. 2182, 2187, n. 11, 72 L.Ed.2d 606 (1982).
Complainant has not made any arguments regarding distinctiveness, whether inherent or based on secondary meaning. Here, the issue of distinctiveness applies only to the mark "IKONOS," which is apparently not a plain English word. It appears instead to be derived from the Greek word for image. Words that are descriptive or generic in another country or in a language may not meet the distinctiveness requirement of U.S. trademark law. Some courts have applied the doctrine of foreign equivalents, under which a non-English-language word is " translated into English and then tested for descriptiveness or genericness." McCarthy § 12 :13. Under this test, the word "image" is descriptive of a product that in Complainant's own words includes "images, photographs, and maps." It is also descriptive of "technical consulting services in the field of satellite-based earth imaging." However, even if the English translation of "IKONOS" (rather than "IKONOS" itself) is applied to a satellite, it is arguably suggestive. A suggestive mark "requires imagination to make a connection between the mark and an attribute of the product." Official Airlines Guide, Inc. v. Goss, 6 F.3d 1385, 1391 (9th Cir. 1993). The primary product to which the mark is attached is a satellite. Suggestive marks are not as strong as arbitrary marks, but both suggestive and arbitrary marks are considered distinctive without a showing of secondary meaning.
(ii) Use :
Furthermore, the mark is clearly in use in connection with goods and services. Complainant alleges that the mark is used in connection with "a satellite, data and information products, including images, photographs, and maps, and providing technical consulting services in the field of satellite-based earth imaging. " Attached to the complaint are two exhibits that illustrate use in commerce of "IKONOS ": (1) a news release dated November 5, 1999 ; and (2) a company brochure dated July 14, 2000. Both of these documents are taken from the Complainant's website (www.spaceimaging.com). They both clearly indicate the use of the mark in connection with a satellite. In another decision under the UDRP, the panel found common law marks based on evidence of website content, showing that the mark was "tightly associated with several goods and services." Squires v. Zuccarini, E-resolution Case No. AF-0218 ("peepingmoes").
In conclusion, I find that the mark "IKONOS" is both distinctive and in use, as applied to satellites. This gives the Complainant common law rights in this unregistered mark. In addition, Complainant has clearly demonstrated federal rights in the mark "SPACEIMAGING," based on registration.
b. Confusing Similarity
The contested domain names are not identical to Complainant's registered mark "SPACEIMAGING", or to its common law mark "IKONOS." Nor is there is evidence of actual consumer confusion. Nonetheless, several facts support the inference of confusing similarity.
First, the contested domain names are a combination of the marks and generic terms relating to Complainant's business, such as "SATELLITE" and "SPACEPHOTO." If these generic terms had little obvious relationship to Complainant's business, then it is possible that consumers would not be confused. If, for example, the Respondent had registered the domain name "IKONOSCAR," this might be a closer call. Although trademark rights should not give rise to associated rights in any and all generic words, the particular generic words chosen by Respondent are suspiciously closely associated with the goods and services for which Complainant has rights. A fair number of decisions under the ICANN UDRP have found that the combination of a generic word with a protected mark can lead to confusing similarity. See, e.g., Nokia Corporation v. Nokiagirls.com aka IBCC (WIPO Case No. D2000-0102 ("nokiagirls"); Eauto, L.L.C. v. Triple S. AutoParts d/b/a/ Kung Fu Yea Enterprises (eautolamps.com).
Moreover, although Complainant's mark "SPACEIMAGING" itself could be considered a generic term, the Patent and Trademark Office has seen fit to issue a registration for this term in connection with Complainant's business. The purpose of a domain name panel is not to arbitrate the legitimacy of a registered mark, and a registered mark is primae facie evidence of that mark's validity.15 U.S.C. § 1057(b).
Thus, I find confusing similarity between each of Respondent's domain names and Complainant's marks. Although I am concerned about the unwarranted expansion of domain name protection to generic words, especially those used by legitimate competitors, I emphasize here that the generic words affixed to these domain names are not just any generic words. They have everything to do with Complainant's business, and thus lead to the legitimate possibility of confusion on the part of consumers. Moreover, as discussed below, Respondent does not appear to be a legitimate competitor in the area of satellites or related services.
(2) No Rights or Legitimate Interests of the Respondent in Respect of the Domain Name: As pointed out in the Complaint, there are at least four factual bases for inferring no rights or legitimate interests in the domain names:
Taken together, these facts lead to the very strong inference that Respondent's right or interest in the domain names is minimal to non-existent. Respondent has not filed any papers or otherwise pointed to any evidence to rebut these inferences, pursuant to ICANN UDRP Paragraph 4c. For example, it has not shown that it has been commonly known by the domain name,s even though it may have not acquired trademark or service mark rights.
In conclusion, I find that Respondent has no right or legitimate interest in any of the four contested domain names, and Complainant has satisfied its burden of proof that this second UDRP element is satisfied.
(3) Respondent's Bad Faith Registration and Use: This third element can be demonstrated by
"circumstances indicating that [Respondent has] 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 . . . for valuable consideration in excess of . . . documented out-of-pocket costs directly related to the domain name. ICANN UDRP Paragraph 4(b)(i) (emphasis added).
Here, Respondent does not appear to be actually using the domain names for any legitimate business purpose. None of the domain names resolve to active websites. It appears that he is engaging in negotation with the Complainant over possible transfer of the domain names. The uncontested allegations in the Complaint demonstrate that Respondent himself stated he "was relatively new to the purchasing of domain names, and when [he] searched the data base for names [he] looked for companies that [he] thought would be ones that would be profitable and yours was one of them." The active negotiation, coupled with Respondent's stated strategy in searching for registrable domain names, leads to the conclusion that he registered the domain names with the intent to transfer them to the Complainant.
On the other hand, at the time Respondent registered the domain names, it is possible that he did not believe that Complainant had trademark rights in "SPACEIMAGING" and "IKONOS," and thus did not have the requisite intent or purpose to transfer these domain names "to the owner." As discussed earlier, the former mark is arguable generic and the latter mark is not registered. With respect to the latter mark, at least, Respondent could not be on constructive notice of Complainant's rights. In Respondent's words, "I did not think of any trade names, trademarks, etc." when he was registering the domain names. However, in a later e-mail message, he apparently concedes that "You and I are both aware that there is [sic] some of the domain names that infringe on trademark rights of your client . . .." Thus, by the end of the negotiation preceding the initiation of this arbitration, Respondent was on notice of the existence of rights in these marks. Moreover, the simultaneous registration of four highly related domain names leads to the inference that Respondent had the requisite intent or purpose to transfer these domain names to Complainant at some future point.
Respondent has not rebutted any of Complainant's allegations. The preponderance of the evidence suggests that Respondent did register the domain names with the purpose of transferring them to an owner of a trademark or service mark.
Paragraph 4(b)(i) further requires the purpose of transferring the names for valuable consideration. Although there is no evidence of any actual dollar amount offers, respondent stated to Complainant that he "can't afford to just freely turn over the domain names." And on March 15, 2000, he stated that "I am willing to accept a reasonable offer for these domain names." A reasonable inference to be drawn from these uncontested statements is that Repondent had the purpose of obtaining compensation above his out-of-pocket costs.
In conclusion, I find that Complainant has met its burden of showing that the third element of the UDRP has been satisfied.
6. Conclusions and Relief
In conclusion, Complainant has met its burden of proof of meeting each of the three required elements of Paragraph 4(a), as supplemented by Paragraph 4(b), of the ICANN UDRP. I order that the domain names be transferred.
Seattle, WA USA 9/22/00
(s) Margaret Chon