WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

VeriSign, Inc. v. Michael Brook

Case No. D 2000-1139

 

1. The Parties

Complainant is VeriSign, Inc. ("VeriSign"), a Delaware corporation, with its principal place of business at 1350 Charleston Road, Mountain View, CA, U.S.A. Respondent is Michael Brook ("Brook"), an individual whose address is 8 Tenth Street, Newbury, MA, U.S.A. 94043, United States.

 

2. The Domain Name(s) and Registrar

The domain names at issue are "vrsn.com," "vrsn.org," and "vrsn.net" (collectively, the "vrsn domain names") registered with Tucows.com, Inc. ("Tucows").

 

3. Procedural History

The WIPO Arbitration and Mediation Center (the "Center") received the third amended complaint of VeriSign on December 8, 2000. The Complainant made the required fee payments. The Center acknowledged the receipt of the Complaint to the Complainantís authorized representative and assigned this matter Case No. D 2000-1139.

On September 16, 2000, the Center requested Tucows to verify the registration data. By email of September 16, 2000, Tucows confirmed that it is the Registrar of the domain name registrations and, inter alia, that Brook is the current registrant.

Having verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), the Center on December 13, 2000, sent to Respondent, with a copy to the Complainant, a notification of the commencement of the administrative proceeding, together with a copy of the Complaint.

Brook submitted a response on January 1, 2001 and on January 4, 2001, the Center acknowledged to the parties that it had received said Response.

On February 12, 2001, after receiving a completed Statement of Acceptance and Declaration of Impartiality and Independence, the Center advised the parties that it had appointed Thomas L. Creel as a single panelist to resolve this dispute (the "Presiding Panelist").

After review of the papers filed, the Presiding Panelist requested Complainant to file a Reply to the Response and asked Respondent to clarify the record. These papers were filed, as well as responses thereto.

This decision is based on the information contained in the above documents.

 

4. Factual Background

This dispute concern VeriSignís mark VERISIGN. Complainant has adopted and registered this mark for use with digital identity certification systems used on computers. The mark is registered in the U.S. and in nineteen other countries. Originally, the mark was registered by Verifone, but since then Verifone has assigned the mark to VeriSign.

Complainant is also the owner of the trademark consisting of a stylized "V" in the form of a checkmark with a pixelized right tip. This mark was published for opposition in the U.S. Patent & Trademark Office on February 15, 2000. The goods are computer services.

On June 2, 1995, Complainant registered the domain name "verisign.com" and has been using the domain name to resolve to its corporate website since then.

Respondent registered the domain names "vrsn.com," "vrsn.org," and "vrsn.net." (the "vrsn domain names").

 

5. Partiesí Contentions

Complainant has requested that the domain name be transferred to Complainant because:

1) Respondentís domain names are confusingly similar to a mark in which Complainant has rights;

2) Respondent has no rights or legitimate interests with respect to the domain names;

3) Respondentís domain names were registered and used in bad faith;

Respondent alleges he has rights to the domain names "vrsn.com", Ďvrsn.org" and "vrsn.net." Specifically, he alleges:

1) He has a business plan and solid purpose for these domains. Specifically, he presented a written business plan to use the acronym vrsn as an on-line resource for voter registration and related services. He says the acronym "vrsn" stands for "Voter Registration Service Network"; and

2) The vrsn domain names are not confusingly similar to Complainantís trademarks because Complainant has no marks for vrsn. The vrsn domain names are not confusingly similar to the trademark verisign or the stylized V. Indeed, vrsn is an acronym that stands for four words and is not pronounceable as a word.

 

6. Discussion and Findings

The policy is addressed to resolving disputes concerning allegations of abusive domain name registration.

Paragraph 4(a) of the Policy establishes three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:

i) Respondentís domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

ii) respondent has no rights or legitimate interests in respect of the domain name; and

iii) Respondentís domain name has been registered and is being used in bad faith.

Each of the aforesaid three elements must be proved by a Complainant to warrant relief. They will be addressed separately below, after first addressing jurisdiction.

I. Jurisdiction and Procedure

In addition to jurisdiction over the subject matter of the dispute, it is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a Respondent has notice of proceedings that may substantially affect its rights. The policy and the Rules establish procedures intended to assure that Respondents are given adequate notice of the proceedings initiated against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a), Rules).

In this case, the Presiding Panelist is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the Complaint, of initiation of these proceedings, and allowed sufficient opportunity to Respondent to respond. Indeed, Mr. Brook filed a response and other pleadings.

Therefore, this Tribunal has jurisdiction to decide this dispute as presented.

II. The Identity or Confusing Similarity of the Domain Name with the Trademark or Service Mark (ß 4(a)(I))

In order to decide whether the vrsn domain names are confusingly similar to VeriSign, the first question is what is the standard to be applied as to whether or not something is confusingly similar.

The Policy is silent as to any definition of confusingly similar. Paragraph 15(a) of the Rules instructs this Panel as to the principles the Panel is to use in rendering its decision: "A Panelist shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." The Final Report of the WIPO Internet Domain Name Process (April 30, 1999 [http://ecommerce.wipo.int/domains/ process/ eng/processhome.html]) envisaged the very situation before this Panel, where the Complainant, Respondent, and the registrar are all domiciled in the United States stating "if the parties to the procedure were resident in one country, the domain was registered through a registrar in that country and the evidence of bad faith registration and use of the domain name related to activity in the same country, it would be appropriate for the decision-maker to refer to the law of the country concerned in applying the definition" of what became paragraph 4(a) of the Policy. Accordingly, this Panel may look to rules and principles of law set out in the statutes and decisions of the courts of the United States in determining this dispute.

The United States recently enacted the Anticybersquatting Consumer Protection Act. This statute is an anticybersquatting statute somewhat similar to the ICANN Policy. It too provides remedies for cybersquatting by registering a domain name which is "confusingly similar" to a trademark. The U.S. courts have addressed the standard for showing what is confusingly similar and have distinguished that standard from the standard of "likelihood of confusion" in the trademark law. United States courts have held that the "confusingly similar" language merely requires a comparison of the domain name itself to the trademark itself (Northern Light Technology, Inc. v. Northern Lights Club, et al., 97 F.Supp. 2d 96,115-118 (D. MA 2000), affirmed 236 F. 3d 57 (1st Cir. 2001)). That is, the standard does not require a contextual comparison of the mark versus the domain name as used in commerce, including for example, an analysis of the specific lines of commerce in which in the mark and the domain name are used. To equate "confusingly similar" with "likelihood of confusion" would undermine the goal of the statute of stopping individuals who use domain names that approximate distinctive marks, but who do not actively use the domain names other than to make them available for sale.

Applying this standard, the Panel finds there is no confusing similarity between the vrsn domain names and the stylized V trademark.

The Panel, however, does find there is confusing similarity between the vrsn domain names and the verisign trademark. While Complainant has not alleged or shown any trademark rights in vrsn itself, it has asserted that vrsn is the NASDAQ symbol for VeriSign i.e., that vrsn is recognized as another designation for "verisign." Thus, if a person tried to reach the VeriSign website by entering its NASDAQ symbol, it would be sent to Respondentís site. Other panels have found confusing similarity between abbreviations of the trademark used as domain names and the trademark itself. See, for example, Successful Money Management Seminars, Inc. vs. Financial Services of California, Claim No. FA 0006000095042 (fssr.com is confusingly similar to the Financial Strategies for Successful Retirement trademark). This conclusion is reinforced when it is considered that with the increased use of search engines like AOLís Keywords search, users can often reach desired websites regardless of domain names by typing in easy abbreviations or words.

III. Rights or Legitimate Interests in Respect of the Domain Name (ß 4(a)(ii))

Paragraph 4(c) of the Policy enumerates non-exclusive ways as to how a Respondent may establish rights to and legitimate interests in a domain name. These include the following circumstances: (i) before any notice to Respondent of the dispute, Respondentís use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Neither subparagraph (ii) nor (iii) is here applicable. Subparagraph (i) requires use of, or demonstrable preparations to use, the domain names "before any notice to Respondent of the dispute". Here, VeriSign sent a cease and desist letter to Respondent. The only evidence of record as to possible legitimate use is Respondents "business plan". That, however, is after that notice to Respondent on August 4, 2000. The plan submitted by Respondent is not dated, but it refers to the past presidential election (in November 2000), so it had to be after August 2000. So rights under subparagraph (i) are not established.

The Panel finds no other submission of evidence sufficient to establish any rights or legitimate interests in respect of the domain names at issue by any means not covered by paragraph 4 (c). Additionally, prior panel decisions have held that mere plans, without more, even when stated under oath, which this plan is not, cannot constitute the "demonstrable preparations to use" required under paragraph 4(c)(I) of the Policy. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270, Discussion and Findings at 5 and 6 of 7 (html format); SADD, Inc. v. Steven Weber, et al., WIPO Case No. D2000-0170; Stella Díoro Biscuit Co., Inc. v. The Patron Group Inc., WIPO Case No. D2000-0012, Discussion and Findings, Rights or Legitimate Interests, at 4 and 5 of 6 (html format). Finally, the Panel notes that Respondent's submissions do not include any certification required by the Rules, Rule 3 (b) (xiv). Therefore, they do not constitute valid submissions under the Rules entitled to evidentiary consideration.

Based upon the record, the Panel finds that Respondent has no rights or legitimate interests in the domain names.

Bad Faith

The third element Complainant must prove is in the conjunctive: the domain name "has been registered" and "is being used in bad faith."

The Policy provides in Paragraph 4(b):

"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 who is the owner of the trademark or service mark or to a competitor of that 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 website or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."

The Panel finds that the domain names have been both registered and used in bad faith. The facts upon which this finding is made include at least those set forth below.

When Complainant contacted Respondent about Respondentís registration of "vrsn.com", to notify Respondent of VeriSignís intellectual property rights in the registered name and to offer to purchase the domain name, Respondent thereafter registered "vrsn.net" and "vrsn.org". Such practices have been held to defeat a claim of rights or legitimate interest in respect of a domain name and establishes bad faith registration and use. See, e.g., Time Inc. v. Chip Cooper, WIPO Case No. D2000-1342.

Furthermore, while Respondent has registered the domain names "vrsn.com", "vrsn.org", and "vrsn.net", he has failed to construct a website at any of those addresses. The holding of a domain name as a mere placeholder has been held to show that the holder has no right or legitimate interest in respect of the domain name. Moreover, inaction itself, in terms of registering a domain name and failing to construct a website to which the domain name resolves, has been held to constitute bad faith use. Policy, ∂4(a)(ii). CBS Broadcasting Inc. v. Bert Grovers, Case No. D2000-0254; Telstra Corporation Limited v. Nuclear Marshmallows, Case No. D2000-0003; August Storck KG v. Mohamed, ICANN Case No. D2000-0196.

Finally, Respondent has registered in excess of 50 domain names. These names include, e.g., "egle.com" (eagle), "nxtl.com" (nextel), "amerivision.com", and "thenetworkingsolution.com". Passive holding of the domain name in the context of Respondentís registration of other domain names identical to or confusingly similar to the trademarks of others has been held to be bad faith registration and use under the Policy. Telstra Corporation Limited v. Nuclear Marshmallows, Case No. D2000-0003; August Storck KG v. Mohamed, ICANN Case No. D2000-0196. (Footnote 1)

 

7. Decision

For all of the foregoing reasons, Complainant has proved each of the three elements of paragraph 4 (a) of the Policy. Accordingly, this Panel finds for the Complainant. Respondent must transfer the three domain names at issue to the Complainant pursuant to paragraph 4i of the Policy.

 


 

Thomas L. Creel
Sole Panelist

Dated: March 7, 2001

 


 

Footnote:

1. Complainant stated in response to the Panelís request for additional information that it was submitting a document in a sealed envelope, which was to be opened only by the Panel. The panel has not opened that envelope so it has not been considered. It is being returned to the Center.