ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
The Complainant, ONU s.r.l., is a limited liability company incorporated under Italian law and whose civic address is in Rome, Italy. The Respondent, Online Sales LLC, is a limited liability company whose civic address is in McLean, Virginia, USA. The contested domain name is onu.com and the Registrar is Register.Com.
2. Procedural History
The electronic version of the Complaint Form was filed on-line through eResolution's Website on 4 January 2001; payment was also received on that day. The hardcopy of the Complaint Form and annexes were received on 8 January 2001.
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 Register.Com, the Whois database contains all the required contact information but the billing contact, the contested domain name resolves to an active web page and the Complaint is administratively compliant.
An email was sent to the Registrar by eResolution Clerk's Office to obtain confirmation and a copy of the Registration Agreement on 5 January 2001. The requested information was received 11 January 2001.
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 12 January 2001. This date is the official commencement date of the administrative proceeding.
On 22 January 2001, the Respondent submitted his response via the eResolution internet site. The signed version of the Response was received on 25 January 2001.
On 31 January 2001, the Clerk's Office contacted me, David Lametti, and requested that I act as panelist in this case. On 1 February 2001, I accepted to act as panelist in this case and I filed the necessary Declaration of Independence and Impartiality. On 2 February 2001, the Clerk's Office forwarded to me a user name and a password, allowing me to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.
On 2 February 2001, the parties were notified that I, David Lametti, had been appointed and that a decision was to be, save exceptional circumstances, handed down on 16 February 2001.
3. Factual Background
The Respondent registered the domain name on 31 July 1998 [BetterWhois Register].
The Complainant registered onu.it on 22 May, 2000 [www.nic.it whois Register] and incorporated on 29 September 2000 [D004526], and received its trade license on 8 November 2000 [D004527]. On 7 December 2000, the Complainant asked the Respondent via email the price for the transfer price of onu.com, to which the Respondent replied on 8 December 2000 was $7,000 USD [D004523].
4. Parties' Contentions
The Complainant alleges:
(1) That the domain name onu.com is identical to a trademark or service mark in which the Complainant has rights, as per Policy paragraph 4(a)(i).
The Complainant notes that it is the holder of the domain name onu.it. It is safe to assume that the Complainant is arguing implicitly that the two domain names are identical except for the ccTLD and gTLD. The Complainant adds that they "absolutely need" the international .com gTLD.
2. That the Respondent has no rights or legitimate interests in the domain name, as per Policy paragraph 4(a)(ii).
The Complainant maintains that Online Sales, LLC seems to have as its only purpose the resale of the domain name to the highest bidder. Such bids are invited at the website of the domain name in question. The Respondent asked for $7,000 USD for a transfer in this case.
3. That the Respondent registered the name in bad faith, as per Policy paragraph 4(a)(iii).
The Complainant appears to assert that the proposed sale of the domain name constitutes bad faith.
The Respondent in turn asserts:
1. The Complainant has to failed to show that the Respondent's domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. It is asserted that Complainant has failed to show that it has any trademark or service mark rights in the name ONU. It is argued that a corporate name does not give the Complainant a trademark or a service mark, and, additionally, that the domain name is not similar to the Complainant's registered corporate name (Omnia Network Unlimited srl), but rather an acronym. This failure is fatal to the Complainant's action, as it follows that without rights in such a trademark or service mark in the name ONU, Complainant cannot prove that the disputed domain name is identical or confusingly similar.
2. The Respondent, prior to notice of this dispute, had been using the disputed domain in connection with a bona fide offering of goods or services. It is claimed that the Respondent has a business method of using registered domain names to drive traffic to a web page containing a presentation of wide ranging goods and services offered by companies that pay the Respondent on a per impression basis for visitors to their respective web sites. Respondent asserts that it also places banner and classified advertisements on this web site for which it also receives income. While the Respondent does offer for sale the domain names that it uses to drive traffic to the web sites of its advertisers, Complainant's statement that Respondent registered the domain name ONU.com "only for the purpose to resell it" is incorrect.
3. The Complainant has not shown that any of the criteria of bad faith can be attributed to the Respondent, the Respondent asserts that it has not registered and is not using the disputed domain name in bad faith as that term is defined in the ICANN Rules.
(i) The first indicia of bad faith, is that Respondent acquired the name primarily for the purpose of selling it to the Complainant who is the owner of trademark or service mark or to a competitor of the Complainant. First, as previously stated, Complainant does not own any trademark or service mark rights in ONU. Second, having acquired the name more than two years before Complainant came into being, it is not possible that the disputed name was acquired by Respondent for the purpose of selling it to Complainant or to a competitor of Complainant.
(ii) The second indicia of bad faith, namely that Respondent registered the domain name in order to prevent the owner of a trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent engaged in a pattern of such practice, is likewise not present. When Respondent registered the disputed domain name, Complainant was not in existence, hence, Respondent could not have registered the disputed domain name in order to prevent the owner of a trademark or service mark from reflecting it in a domain name. Additionally, as stated above, Complainant does not allege trademark or service mark rights in the name.
(iii) The third indicia of bad faith, namely that Respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor is not present. Once again the name was registered by Respondent long before Complainant was created. In addition, Complainant does not allege, and Respondent is not, a competitor of Complainant.
(iv) The fourth indicia of bad faith, namely that Respondent has used the domain name to attract users to its web site by creating the likelihood of confusion with Complainant's mark is also not present. First, Complainant does not have trademark or service mark rights in the disputed domain name. Second, Complaint does not allege any confusion even if it did have a mark. Complainant's bare allegation that Respondent offered the dispute domain name for sale is insufficient to establish bad faith under the ICANN Rules.
4. In addition, the Respondent alleges that the facts and circumstances establish that the Complainant has engaged in Reverse Domain Name Hijacking in violation of paragraph 15(e) of the Rules. The following facts, it is asserted, form a strong circumstantial case that all of the Complainant's actions were solely for the purpose of taking Respondent's domain name by launching a bad faith ICANN dispute. It is alleged that Complainant knew ONU.com was not available to it and attempted to create a scenario by which it could obtain the disputed domain name.
(i) Complainant acquired the domain name ONU.it in May 2000, a time when it was well aware that the disputed name ONU.com was not available. It then filed its incorporation papers in late September 2000 and was not formally approved until October 2000. According to the business license attached to the Complaint, it obtained its business license in November 2000. In December 2000, it allegedly made a pretext solicitation to Respondent inquiring about buying the disputed domain name for the sole purpose of filing an ICANN complaint.
(ii) The Respondent also notes that the original inquiry came form an email address of firstname.lastname@example.org, which was different from the Complainant's email address email@example.com. It is asserted that the inquiry was made using a email address for the purpose of hiding the fact that it was from the holder of domain name ONU.it. In early January it filed the instant Complaint.
(iii) The Respondent claims Complainant "just about admits as much" when it states "we absolutely need our international LTD (sic)."
5. Discussion and Findings
Identical or Confusingly Similar
The Complainant must show that either it has rights in a trademark or service mark, or it has somehow acquired analogous rights. It then must demonstrate that the impugned domain name is identical or confusingly similar to the domain name at issue.
The Complainant has failed in the very first step. There is no evidence presented of any registered marks in Italy or elsewhere. It has tendered evidence of its corporate name, which it registered by notarial act on 29 September 2000, and its acronym ONU. A corporate name, indeed any name, might acquire intellectual property rights over time as goodwill is accumulated in the name through business practice, reputation, notoriety, advertising, etc., even if not registered, and numerous decisions under the Policy have so held. However, in a few short months it would be difficult (though by no means impossible) for a corporate name to build the requisite degree of goodwill in either its official name or an acronym of that name to amount to an intellectual property right. In any event, in this case no proof was offered of any such right existing. If it is true that failure show substantial similarity is fatal to an action [see e.g. Copart v. SalvageNow (D2000-0417)], it must be even more true that failure to establish any right upon which to base subsequent identity or substantial similarity is also fatal to the Complainant's action.
The Panel thus concludes that the Complainant has failed to prove the requirements of Policy paragraph 4(a)(i). This is sufficient to dispose of the case in favour of the Respondent, since proving all of the component parts of paragraph 4 are incumbent on the Complainant by virtue of the very wording of the provision.
Nevertheless, I believe that certain aspects of remaining issues need to be addressed, as well as the Respondent's counter-claim of Reverse Domain Name Hijacking, and to these issues I now turn.
Rights or Legitimate Interest
The second requirement of paragraph 4, namely determining the rights or legitimate interests of the Respondent, presents a challenging issue regarding what is in effect almost pure cyberspeculating.
The Complainant asserts that the registration of a domain name merely for the purpose of selling it later on is per se a non-legitimate use. Indeed, the Respondent admits that it has registered this domain name in order to draw internet traffic to its website, where its advertisers pay on a per hit basis. Logging on to the website and navigating on it -- a legitimate practice for a Panelist to engage in [see e.g. Do The Hustle v. Tropic Web (D2000-0624)] -- shows that the Respondent is in fact in the practice of registering literally hundreds of domain names, all of which are composed of combinations of letters in conjunction with the gTLD .com. All of these registered domain names lead to the same website of advertisers. In addition, it is equally clear from this website that the hundreds of domain names are for sale. Moreover, judging by the size, typeset and overall general prominence of the sale words "The domain name www.onu.com [or other domain name] is for sale" on the webpage, it is clear that re-sale is in fact the primary purpose of the registration of onu.com and the other domain names.
Paragraph 4(c) enumerates the conditions under which a lack of legitimate interest or right is demonstrated by the Complainant or disproven by the Respondent. Given that the Respondent is neither commonly known by the domain name and is indeed making a commercial gain by diverting internet traffic to the website, the Respondent must rely on the argument that it was making use of the domain name in a bona fide offering of goods and services in order to show a legitimate interest or right.
In my view, this type of use - registering a massive number of names, in order to try to re-sell them, even though capitalizing on advertising revenue in the meantime, while legal, does not or should not in and of itself amount to the creation of a legitimate right or interest in a specific domain name capable of withstanding a claim form a legitimate right-holder in a confusingly similar mark. First, the domain name itself is one of many, and alone is not intrinsically linked to the offering of services: any name could be sold with no impact on the business of selling names. The term "in connection with a bona fide offering of goods and services" in my view refers to the marketing of a product and thus the domain name must impart some notion of the goodwill or reputation of the enterprise as a whole or of a product linked to it. The connection is not merely random, as is the case here; in other words, the substantive part of the domain name must embody some substantial aspect of the goodwill - in the usual scenario, one identifies a good or service with the domain name. Thus, even though the typing of the letters "onu.com" on a keyboard does connect one to a website, what is really on offer is a large number domain names. No one would ever connect intrinsically any of the domain names on offer to Online Sales, nor would they connect onu.com to the services of Online Sales. This connection to onu.com is at best tenuous. This conclusion helps to explain why both the practice of multiple holdings and ofpassive holding in and of themselves have been found by previous panels not to establish a legitimate interest or right [See e.g. VZ VermogenZentrum AG v. Anything.com (D2000-0527); Reed Publishing (Nederland) B.V. & Reed Elsivier v. Select Gourmet Foods (CPR004); Estate of Tupac Shakur v. Shakur Info Page AF-0346); and DLJ Long Term Investment v The Domain You Have Entered Is For Sale (FA0010000095755)]
Such an interpretation of paragraph 4(c) is necessary to prevent the blanket registration of domain names from creating so-called legitimate interests capable of infringing on the prior, legitimate intellectual property rights of others. Thus, even if the letters "onu" were chosen at random, as was likely the case here, their mere use in a such manner should not prevent other parties from successfully meeting the standards of paragragh 4 an action under the Policy. For example, it is quite conceivable that some of the many combinations registered by Online Sales are in fact popular acronyms - indeed "onu" itself is an extremely well-known acronym in French, Italian and Spanish, and is moderately-known acronym in parts of the USA - that do infringe upon the rights of legitimate right-holders.
Clearly in this case, even the most tenuous interest given by mass registration for the purpose of re-selling is enough to defeat the Complainant, who registered onu.it and incorporated its company name after the Respondent registered onu.com, both actions having been taken with prior knowledge of the registration of onu.com. The Complainant's knowledge of registration and lack of prior right is fatal here.
The Panel thus notes that while Complainant has failed completely to meet this requirement of Policy paragraph 4(a)(ii), the Respondent's registration would not likely have met the standard of a legitimate interest or right as outlined under paragraph 4(c) if faced by a Complainant who could establish some acquired rights in the domain name.
A related set of reflections arises in the examination of the question of bad faith, as it pertains to mass registrations.
There is no question that on these facts, the Respondent cannot be held in bad faith vis-à-vis the Complainant, since the Complainant registered onu.it and incorporated its company after the Respondent registered onu.com. Prior knowledge is essential to bad faith, and that was impossible for the Respondent to have had actual knowledge here.
Moreover, buying and selling domain names is not, in and of itself, evidence of bad faith, a principle now firmly entrenched in many decisions rendered made under the UDRP: see e.g. Apple Computer v. DomainHouse.com (D2000-0341), NCP Marketing Group v. Entredomains (D2000-0387);and DLJ Long Term Investment v Namewhiz.com-NameForSale (FA0010000095758). It is now trite to say that offering the domain name at a price higher than the out-of-pocket expenses of registration may be a sign of bad faith, but a finding of bad faith will depend on the context of a particular case. I only note here that previous decisions under the Policy have held lesser amounts of money requested by a respondent to be evidence of bad faith: see e.g. Dollar Rent A Car Systems v Lee Jongho (FA0008000095391).
Regardless of the asking price, it may very be that the practice of mass registration for the purposes of sale, if illegitimate, also constitutes bad faith in situations where those particular combinations of letters have infringed on a trademark or service mark or common law right. In my view, as a matter of policy, a mass registration of domain names resulting in the lack of prior actual knowledge of a specific legitimate trademark , service mark or common law right cannot be allowed as a defence to a claim of bad faith. This is true even where there is no deliberate attempt to captitalize on the goodwill or a specific mark - for example, with randomly-derived domain names. A mass registrant ought to realize that some of the domain names registered will infringe on the prior rights of others, even if he does not yet know of those rights or the right-holders. Some circumstances do, in effect, constitute constructive knowledge that might be equated to bad faith. Of course, the Policy at all times forces the Complainant to bear the various burdens of proof, so the position of cyber-speculators is by no means insecure.
Thus while the Complainant's assertions are insufficient to make its case in this regard, and it has in no way met its burden of proof, the Panel notes that mass registration and passive holding might be evidence of constructive bad faith in some cases as against certain right holders. The wording of the Policy and the facts of the case have ruled out the Complainant as a legitimate holder in this case, but this ruling in no way should be read as legitimating the Respondent's practice in the face of all potential complainants.
The Panel thus notes that the Complainant would not have met the criterion of Policy paragraph 4(b)(i) and thus the requirements of Policy paragraph 4(a)(iii).
Reverse Domain Name Hijacking
The essential question to be determined under this heading is as follows: has the Complainant launched a claim that is so groundless that it amounts to a form of harassment or a blatant attempt to acquire the rights of a legitimate name-holder?
Prior decisions have expressed the issue as one of a Complainant proceeding with a case with full knowledge of the Respondent's legitimate interest and lack of bad faith. Noted panelist M. Scott Donahey has framed the inquiry as follows:
To find that a party has engaged in reverse domain name hijacking, … the panel finds that a Respondent must show knowledge on the part of the Complainant of the Respondent's right or legitimate interest in respect of the domain name at issue and evidence of harassment or similar conduct by the Complainant in the face of such knowledge. [Plan Express, Inc. v. Plan Express (D2000-0565).]
As noted above, the Complainant registered onu.it and incorporated its company well after the Respondent registered onu.com. The Complainant knew of the Respondent's interest. The Complainant contacted the Respondent, asked for the selling price. One can infer that the price was deemed to be too high, and the Complainant launched this action. These circumstances point to the conclusion that the Complainant, in launching the action, was trying to strip the Respondent of the domain name.
A mitigating factor in defence of the Complainant, however, is that, as argued above, there is a legitimate question of whether the Respondent's practice of mass registration of domain names for diversion, advertising, and sale confers legitimate rights and is not analogous to constructive bad faith in the face of a legitimate right-holder. This uncertainty over the scope of legitimate action and bad faith in paragraphs 4(b) and (c) of the Policy with respect to the facts of the registration in this instance might be argued to justify the action taken by the Complainant.
Nevertheless, it is still the view of the Panel that the Complainant must have known that it had no prior rights in any trademark or service mark which would give it any possible claim in the domain name superior to those of the first-registrant Respondent. Given the knowledge of no possible right in a domain name already registered, any action against the registrant constitutes a form of harassment in the view of the Panel. Whether deliberate or not, the Panel finds that the conduct of the Complainant amounts to bad faith in and of itself, and is tantamount to Reverse Domain Name Hijacking.
As such, the Panel can only find that the grounds for Reverse Domain Name Hijacking under paragraph 15(e) of the Policy have been met.
The panelist concludes:
1. That the Complainant has no rights whatsoever in a trademark, service mark or any other right that is either identical or similar to the domain name onu.com;
2. That the Complainant has attempted to strip the domain name from the Respondent, a practice that is tantamount to Reverse Domain Name Hijacking.
Therefore, pursuant to paragraphs 4(i) of the Policy and the section 15(e) of the Rules , the Panel upholds the registration of the domain name onu.com, and finds in favour of the Respondent.
Date: 16 February 2001
(s) David Lametti