WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Alloy Rods Global, Inc. v. Nancy Williams
Case No. D2000-1392
1. The Parties
The Complainant is Alloy Rods Global, Inc., a corporation organized in the State of Delaware, United States of America (USA), with place of business in Wilmington, Delaware, USA.
The Respondent is Nancy Williams, an individual with address in Bellevue, Washington, USA.
2. The Domain Name and Registrar
The disputed domain name is <alloyrods.com>.
The registrar of the disputed domain name is Dotster, Inc., with business address in Vancouver, Washington, USA.
3. Procedural History
The essential procedural history of the administrative proceeding is as follows:
(a) The Complainant initiated the proceeding by the filing of a complaint by e-mail and courier mail received by the WIPO Arbitration and Mediation Center ("the Center") on October 16, 2000. Payment by Complainant of the requisite filing fees accompanied the courier mailing. On October 24, 2000, the Center transmitted a Request for Registrar Verification to the registrar, Dotster, Inc. (with the Registrarís Response received by the Center on October 25, 2000). On October 27, 2000, the Center completed its formal filing compliance requirements checklist.
(b) On October 27, 2000, the Center transmitted notification of the complaint and commencement of the proceeding to Respondent via e-mail and courier mail. On October 31, 2000, Respondent notified the Center by e-mail that the courier mail materials had not been received at her post office box. Following exchange of e-mail correspondence between Respondent, Complainant (opposing an extension of time for filing) and the Center, and Respondentís furnishing of a street mailing address, the Center granted a 10-day extension to Respondent for the filing of her response.
(c) Respondentís response was received by the Center via e-mail on November 25, 2000. Respondent also transmitted the response to Complainant. Respondent elected to have this dispute decided by a three-member panel.
(d) On December 1, 2000, Complainant transmitted via e-mail (and subsequently via hardcopy) to the Center and Respondent its list of proposed panelists, as well as a reply to Respondentís response. On December 2, 2000, Respondent transmitted via e-mail to the Center and Complainant a motion to strike Complainantís reply (including an alternative request to submit a sur-reply). On December 4, 2000, the Center notified Complainant and Respondent that a determination regarding the submission and acceptance of documents in addition to the complaint and response would be made by the panel appointed in this matter.
(e) On December 27, 2000, the Center notified Complainant and Respondent of the appointment of Frederick Abbott, Richard Page and David Post as the Administrative Panel in this matter. Each of the aforesaid panelists had provided to the Center an executed Statement of Acceptance and Declaration of Impartiality and Independence. The Center notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to the Center by January 9, 2001. On December 27, 2000, the Panel received an electronic file in this matter by e-mail from the Center. The Panel subsequently received a hard copy of the file in this matter by courier mail from the Center.
(f) On January 2, 2001, the Panel notified the parties (and the Center) by e-mail that it would accept and consider Complainantís reply to Respondentís response, and that Respondent had leave until midnight U.S. Pacific Time on January 9, 2001 to file a sur-reply. The Panel advised the Center and the parties that it would subsequently indicate a proposed revised date for rendering its decision. The Panel denied Complainantís subsequent e-mail request for an interpretation directed to Respondent of its order granting Respondentís request to file a sur-reply.
(g) On January 9, 2001, Respondent transmitted its sur-reply to the Panel (and Complainant and the Center) via e-mail.
The Panel has not received any additional requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The proceedings have been conducted in English.
4. Factual Background
Complainant has registered the trademark "ALLOY RODS" on the Principal Register of the United States Patent and Trademark Office (USPTO), Reg. No. 2340539, dated January April 11, 2000, covering welding wire (in international class 006) and welding electrodes (in international class 009) (Complaint, Annex F). Complainant has disclaimed exclusive use of "RODS" apart from the mark as shown "as used in connection with welding electrodes in rod form". Complainant has asserted a first use in commerce of the ALLOY RODS mark in 1944. (Id., para. 10 and Annex F). Complainantís USPTO registration for "ALLOY RODS" is valid and subsisting.
Complainant has filed an application for registration of "ALLOY RODS" as a Community Trade Mark with the Office for Harmonisation in the Internal Market (OHIM), application no. 000480186, filing date March 3, 1997, in international classes 6 and 9.
According to the registrarís verification response to the Center, dated October 25, 2000"Williams, Nancy" is the listed registrant of the domain name <alloyrods.com>. The Administrative Contact is "Williams, Nancy". A Dotster WHOIS database search dated August 3, 2000 indicates that the registrar is "Dotster", that the record of registration was created on May 7, 2000, and that the record was last updated on May 7, 2000. This search report indicates that <greatdomains.com> is acting as domain server for <alloyrods.com> (Complaint, Annex A). A subsequent Dotster WHOIS database search dated September 27, 2000 indicates that the record of registration was updated on August 18, 2000. This later record adds information regarding "Williams, Nancy" as Administrative Contact, indicating <vDirectories.com> as part of the contact listing. It also indicates that "VDIRECTORIES.COM" is acting as domain server for <alloyrods.com> (Complaint, Annex B).
By e-mail dated August 9, 2000, Complainant (through its counsel) sent a cease and desist and transfer demand to Respondent referring to, inter alia, its USPTO registration of the "ALLOY RODS" mark. (Complainant also transmitted such demand via certified mail that was not successfully delivered.)
As of September 27, 2000, Respondent had posted a web page at <alloyrods.com>, consisting of a heading and two paragraphs of text. This page stated, inter alia:
<alloyrods.com> is in development.
This Website is part of vDirectories.com network of Internet directories.
Vdirectories.com supplies directories of products and services where companies are able to list contact information. Through these directories potential clients can find suppliers of those products and services.
(launch date to be announced as each individual directory nears completion)" (Complaint, Annex M)
Nancy Williams is the listed registrant of numerous domain names (GeekTools WHOIS database search reports dated August 3, September 27 and October 9, 2000, Complaint, Annex O). Most of such domain names appear to incorporate generic or commonly descriptive terms (e.g., <911football.com>, <911sportstickets.com>, <vibranthealthnow.com>). However, at least some of the domain names registered to Respondent include trademarks of third parties, such as <worldbanksolutions.com> and <dmovieline.com>) (Complaint, Annexes P & R).
Ten domain name registrations listed to Nancy Williams relate to industrial products, including <lockingbolts.com>, <plasticnuts.com>, <extruderubber.com>, <nylonbaskets.com>, <plasticrods.com>, <stainlesssteelbushings.com>, <allloyrivets.com>, <pumpvalves.com>, <chemicalheaters.com> and <acidpumps.com>. The records of the aforesaid registrations were created in a period between May 3 and May 17, 2000, and were last updated on August 18 and 19, 2000 (Response, Exhibit, Dotster WHOIS database search reports).
Respondent has submitted as evidence of her intention to create a business an Internet chat session transcript dated June 19, 2000. Most of this session transcript consists of questions from Respondent and answers from a representative of "DialToneInternet" concerning terms and conditions for domain server services. Of some relevance to these proceedings are the following statements by Respondent:
"One specific item is that DialToneInternet would not have any rights whatsoever to collect data on my customers of any sort Ė as I consider my customers information, profiles etc Ė including e-mails, cookies, credit card, phone number, addresses etc etc to be their private businesses and my business ONLY.
"I will have many websites on server and it takes a lot of time to move.
"I will NEVER use bulk lists of any sort. But I will be writing to companies as I give them free listings on my website. They will most likely be happy to have these listings. But you never know." (Response, Exhibit)"
On and before August 7, 2000, the <alloyrods.com> domain name was listed for sale on the GreatDomains.com website (Complaint, para. 22 and Annex K, Affidavit of Jeffrey M. Gitchel, dated October 13, 2000) (undisputed by Respondent).
As of September 27 and October 9, 2000, numerous domain names registered to Respondent were listed for sale on the GreatDomains.com website. While most of those names appear to be commonly descriptive or generic, both <worldbanksolutions.com> (as of September 27, 2000 printout) and "dmovieline.com" (as of September 27, 2000) were offered for sale with minimum offer set at $300 (Complaint, Annex Q).
The Service Agreement in effect between Respondent and Dotster subjects Respondent to Dotstersí dispute settlement policy, the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration (Policy, para. 4(a)).
5. Partiesí Contentions
Complainant indicates that it has registered and long used in commerce the trademark "ALLOY RODS".
Complainant alleges that by virtue of its registration of the "ALLOY RODS" mark, Respondent had constructive notice of its rights in the mark.
Complainant alleges that the disputed domain name <alloyrods.com> is identical or confusingly similar to its mark.
Complainant alleges that Respondent has no rights or legitimate interests in the <alloyrods.com> domain name since as of the notification of a dispute from Complainant, Respondent had made no use or preparations to use the mark for the bona fide offering of goods or services. Complainant states that Respondentís posting of a site in development web page after notice of the dispute, as well as Respondentís switching of web servers, are ex post facto efforts to establish rights under the Policy.
Complainant indicates that Respondent has registered and used the disputed domain name in bad faith by offering it for sale for consideration in excess of her out-of-pocket costs in connection with the name. Complainant suggests that Respondentís numerous domain name registrations and offers for sale are evidence of bad faith.
Complainant states that Respondent has registered the disputed domain name in order to prevent it from registering its mark as a domain name, and that its registration of marks of others, including <worldbanksolutions.com> and <dmovieline.com>, constitute a pattern of such registrations, evidencing bad faith.
Complainant alleges that Respondent has provided false contact information, and that this constitutes bad faith.
In reply to Respondentís response, Complainant indicates that Respondentís justification in offering the disputed domain name and other domain names for sale on <greatdomains.com> is not convincing since many registrars offer free domain name "parking" services without a requirement that the names be offered for sale.
In reply to Respondentís response, Complainant also indicates that Respondentís purported business plan was developed only in response to its cease and desist and transfer demand, and that in any case Respondent has not provided substantial evidence of a business plan.
In reply to Respondentís response, Complainant further indicates that the descriptive character of its mark does not relieve Respondent from its obligation not to use the mark in a manner that is likely to cause consumer confusion, and that Respondentís junior use of the mark to attract consumers of alloy rod products would be confusing to consumers.
Complainant requests that the Panel direct the registrar to transfer the disputed domain name to it.
Respondent states that she registered the disputed domain name <alloyrods.com> as part of a business plan to create a business-to-business directory of enterprises furnishing goods and services. Respondent indicates that her registration of a number of domain names incorporating commonly descriptive terms for industrial products in the May-June 2000 period constitutes evidence of her plan. In addition, Respondent states that a chat room transcript from June 2000 supports her claim of intention to establish a business-to-business Internet service.
Respondent claims that her offer for sale of the disputed domain name and other domain names on GreatDomains.com was undertaken merely as a matter of business convenience and cost saving since GreatDomains.com provides a free domain name parking service in connection with names that are offered for sale. Respondent claims that she was unprepared to establish her own server when she registered the disputed domain name and other names.
Respondent asserts that Complainantís "ALLOY RODS" mark is descriptive and should not have been registered by the USPTO. In any event, Complainantís registration is for a narrow segment of the alloy rod market, that is, welding wire products, and that Respondentís use of the term "alloy rods" is for a broad class of combination metal rod products.
In her sur-reply, Respondent indicates that although she offered the disputed domain name for sale on <greatdomains.com>, she did this only pending establishment of a dedicated server, that she did not offer the name to Complainant or its competitor, and never received or negotiated an offer for the name. She indicates that her actions regarding other domain names are not relevant to this proceeding.
In her sur-reply, Respondent also indicates that consumers of the broad class of alloy rod products would not be likely to confuse Respondentís <alloyrods.com> website with that of a supplier of alloy rod welding materials.
6. Discussion and Findings
The Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
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 for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., para. 2(a), Rules).
In this proceeding, Respondent has furnished a detailed response and sur-reply to the complaint and reply in a timely manner. Respondent received adequate notice of these proceedings.
As noted in the Panelís order regarding Complainantís request to submit a reply and Respondentís objection (and alternative request to file a sur-reply), Complainantís proposed reply addressed facts and circumstances that may not have been known or foreseen by it when filed its complaint, such that allowing its submission was consistent
with giving Complainant a fair opportunity to present its case. The Panel exercised its discretion under paragraphs 10 and 12 of the Rules to accept Complainant's reply, and gave Respondent the right to file a sur-reply.
Paragraph 4(a) of the Policy sets forth 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; and
(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.
Complainant is the holder of a USPTO trademark registration for the word mark "ALLOY RODS" and has used that mark in commerce (see Factual Background, supra). Complainantís registration of the "ALLOY RODS" mark on the Principal Register at the USPTO establishes a presumption of its validity in U.S. law. (Footnote 1) The Panel determines that Complainant has rights in the trademark "ALLOY RODS". Based on the 1944 date of first use claimed in Complainantís trademark registration, and in the absence of contrary evidence from Respondent, the Panel determines that Complainantís rights in the mark arose prior to Respondentís registration, on May 7, 2000, of the disputed domain name <alloyrods.com>.
Respondent has registered the domain name <alloyrods.com>. This name is identical to Complainantís trademark "ALLOY RODS", except that (1) the domain name adds the generic top-level domain ".com", (2) the domain name employs lower case letters, while the mark is generally used with initial capital letters, and (3) the domain name eliminates the space between "ALLOY" and "RODS".
Insofar as domain names are not case sensitive, and the elimination of space between terms is dictated by technical factors and common practice among domain name registrants, the Panel concludes that use of the lower case letter format in "alloyrods.com", and the elimination of spaces between the words "ALLOY" and "RODS" to form that name, are differences without legal significance from the standpoint of comparing "alloyrods.com" to "ALLOY RODS". (Footnote 2) Similarly, the addition of the gTLD ".com" is without legal significance since use of a gTLD is required of domain name registrants, ".com" is one of only several such gTLDs, and ".com" does not serve to identify a specific enterprise as a source of goods. (Footnote 3)
Respondent indicates that she intends to use the disputed domain name for an Internet-based enterprise involving business-to-business directory services that will refer to "alloy rods" in a broader sense than the alloy welding wire and electrode product line that Complainant identifies with its "ALLOY RODS" mark. She argues that Internet users and consumers are not likely to be confused by her use of the mark in the disputed domain name since they will not confuse a directory of suppliers of alloy rods with a single supplier of alloy rod welding products.
The Panel does not accept Respondentís contention. Through its registration of the "ALLOY RODS" mark at the USPTO, Complainant has established a presumption of secondary meaning in that term. Persons in the industrial materials sector are presumed to associate the term "alloy rods" with Complainant as a source of goods. When an Internet user in the industrial materials sector enters "alloyrods.com" in its browser, it will expect to be directed to a website maintained by Complainant. Instead, that user will be diverted to a website maintained by Respondent that offers the products of competing suppliers of alloy rod products. Although some Internet users may enter "alloyrods.com" in their browser seeking a wider range of alloy rod products than are associated with Complainant, there is a sufficiently close connection between Complainantís narrower product line and the broader potential class of alloy rod products that a significant risk exists that Internet users seeking Complainantís products will be diverted to other suppliers of the same class of products.
Respondent does not indicate that she intends to use <alloyrods.com> for an encyclopedia of metals, or for an academic research pursuit. She intends to use it to attract Internet users seeking to buy or sell alloy rod products. She intends to step into Complainantís channel of trade.
Moreover, although Respondent has presented some evidence of planning for a business, her principal activity to date has been offering domain names for sale on the GreatDomains.com website. Her alleged future plans for use of the <alloyrods.com> mark are entirely speculative. The Panel is reluctant to attribute a specific design to her speculative business plan, and thus to assume that her use of the <alloyrods.com> name will not create confusion.
The Panel determines that Respondentís domain name <alloyrods.com> is confusingly similar to Complainantís "ALLOY RODS" trademark, and that Complainant has established the first of the three elements necessary for a finding of abusive domain name registration.
The second element of a claim of abusive domain name registration is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, para. 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii)
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial 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." (Policy, para. 4(c)).
There is no evidence on the record of this proceeding to suggest that Respondent has been commonly known by the disputed domain name, or that Respondent has made legitimate noncommercial or fair use of the name.
Respondent has sought to establish rights or legitimate interests in the disputed domain name by asserting that she has made demonstrable preparations to use the name in connection with a bona fide offering of services, before notice to her of this dispute.
Complainant asserts that registration of its mark at the USPTO constitutes constructive notice to Respondent of its ownership of the "ALLOY RODS" mark. Since its trademark registration preceded Respondentís domain name registration, it claims that Respondent effectively had notice of a dispute prior to any activities she may have undertaken with respect to her business plan.
The Panel accepts that registration on the Principal Register constitutes constructive notice of ownership of a mark under U.S. trademark law, (Footnote 4) and generally negates a junior userís defense of good faith adoption of a mark. However, the Panel is reluctant to construe paragraph 4(c)(i) of the Policy in a way that equates trademark registration with notice of a dispute since to do so would largely eliminate the defense of bona fide use before notice. Respondent received a cease and desist and transfer demand from Complainant on August 9, 2000 and had notice of a dispute from at least that date.
Respondent registered the disputed domain name along with ten other descriptive names of industrial products in May 2000. She also registered at least 50 other domain names, including many descriptive names having no connection with industrial products. Complainant has submitted evidence that Respondent has offered at least 28 of those names (in addition to the disputed domain name) for sale on the <greatdomains.com> website, including the <alloyrods.com> name. She did not establish her <vDirectories.com> server and remove the <alloyrods.com> name from offer for sale until on or about August 18, 2000, after notice of this dispute. Respondentís principal evidence of a plan to create a business-to-business directory is an Internet chat session transcript from June 2000 that indicates discussion of data concerning "my customers" and companies that will be given "free listings" on "my website".
Respondent would have us infer from (1) 10 domain names referring to industrial products out of at least 60 domain names concerning a random selection of descriptive terms; (2) at least 29 of which were offered for sale on GreatDomains.com and (3) a chat session transcript that might be connected with a myriad of potential Internet activities, that she has made demonstrable preparations to use the "alloyrods.com" name in connection with a bona fide offering of services. The Panel is unwilling to draw such an inference, particularly in light of Respondentís offering of the disputed domain name for sale. The offering for sale of the disputed domain name is simply inconsistent with Respondentís claim that she intended to use it to develop a business-to-business directory, and undercuts her claim to a legitimate interest in the name.
The Panel does not accept that Respondentís offer for sale of the disputed domain name should be overlooked because GreatDomains.com offers a free parking service. GreatDomains.com is manifestly an Internet service for the offer and sale of domain names. Listing a domain name on that site is not a necessary incident of free parking. A domain name registrant makes a choice to use that service among many other potential free parking services that do not require offering the name for sale. While Respondent may have found it convenient to park the disputed domain name at GreatDomains.com while she investigated possible business opportunities, she nevertheless undertook to offer it for sale.
The Panel finds that Respondent has not established rights or legitimate interests in the disputed domain name, and Complainant has established the second element necessary for a finding of abusive domain name registration.
The Policy indicates that certain circumstances may, "in particular but without limitation," be evidence of bad faith (Policy, para. 4(b)). Among these circumstances are: (1) that the domain name has been registered or acquired by a respondent "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 [respondentís] documented out-of-pocket costs directly related to the domain name" (id., para. 4(b)(i)); (2) that a respondent has 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 [the respondent has] engaged in a pattern of such conduct" (id., para. 4(b)(ii)); (3) that a respondent has "registered the domain name primarily for the purpose of disrupting the business of a competitor" (id., para. 4(b)(iii); and (4) that a respondent "by using the domain name, Ö [has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of [respondentís] web site or location of a product or service on [its] web site or location" (id., para. 4(b)(iv)).
The four criteria set forth in the paragraph 4(b) are nonexclusive. Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003. In addition to these criteria, other factors alone or in combination can support a finding of bad faith.
Respondentís registration of Complainantís mark as a domain name has prevented Complainant from reflecting its mark in a domain name. Respondentís registration of the "World Bank" and "Movieline" marks in corresponding domain names (<worldbanksolutions.com> and <dmovieline.com>) indicates that Respondent has engaged in a pattern of such conduct. The Panel finds that Respondent has acted in bad faith within the meaning of paragraph 4(b)(ii) of the Policy.
Respondent has offered the disputed domain name for sale to the public. There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent.
Although Respondentís offer of the disputed domain name for sale was not made specifically to Complainant or its competitor, offers for sale to the public may nevertheless constitute evidence of bad faith under the Policy. This is based on the nonexhaustive character of the express list of bad faith factors in paragraph 4(b) of the Policy, and the lack of a justification for awarding financial gain to persons for the mere act of registration of the marks of others. Respondent has sought to profit from the mere registration of Complainantís trademark as a domain name. Respondent has offered domain names using the marks of others (<worldbanksolutions.com> and <dmovieline.com>) for sale as well. The Panel concludes that Respondent registered the disputed domain name for the purpose of selling it for a price in excess of her out-of-pocket costs directly related to the name. The Panel determines such registration and use to be in bad faith.
As indicated above, the Panel has also concluded that the disputed domain name is confusingly similar to Complainantís mark. Respondent has used the disputed domain name to attract Internet users to a website indicating that she will be offering information about products for sale on that site. This use occurred only after notice of a dispute from Complainant. Therefore, the Panel also finds that Respondent has acted in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
Complainant has established the third and final element necessary for a finding that the Respondent has engaged in abusive domain name registration.
The Panel will therefore request the registrar to transfer the domain name <alloyrods.com> to the Complainant.
Based on its finding that the Respondent, Nancy Williams, has engaged in abusive registration of the domain name <alloyrods.com> within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain name <alloyrods.com> be transferred to the Complainant, Alloy Rods Global, Inc.
Frederick M. Abbott
Richard W. Page
Dated: January 31, 2001
Dissenting Opinion of David G. Post
I agree with the panel majority that this is a close case, and that reasonable people might disagree about the outcome. It is a close case because Complainant has a credible and believable story that the Respondent acted in "bad faith," and that she has no legitimate rights or interest in the domain name AlloyRods.com, and Respondent also has a credible and believable story that she did not act in "bad faith," and that she has legitimate rights or interest in the domain name <alloyrods.com>.
As with many close cases, the outcome here turns on how burden of persuasion has been allocated. Under the UDRP, "the Complainant must prove . . . each of [the] three elements" of the UDRP claim, viz. That
"(i) [Respondentís] domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(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."
UDRP Para. 4(a).
Our job is, first, to determine whether complainant has met that burden. It is not to choose which story Ė Complainantís or Respondentís -- we believe is most likely to be true. Because I do not think Complainant has sustained its burden here, I dissent.
I pass over element (i); I think it clear that Respondentís domain name is confusingly similar to Complainantís trademark "Alloy Rods." In regard to elements (ii) and (iii), the Complainant brings forward the following evidence, as set out in the majority opinion: Respondent Nancy Williams is the listed registrant of over 60 domain names. The vast majority of those "incorporate generic or commonly descriptive terms" (e.g., <lockingbolts.com>, <plasticnuts.com>, <extruderubber.com>, <nylonbaskets.com>, <plasticrods.com>, <stainlesssteelbushings.com>, <allloyrivets.com>, <pumpvalves.com>, <chemicalheaters.com> and <acidpumps.com.>). Two of her domains (in addition to the one in contention here) "appear to incorporate trademarks belonging to third parties" (<worldbanksolutions.com> and <dmovieline.com>)
Respondentís domains were not operational; a number of them, including Alloyrods.com, were "parked" using the facilities provided by <greatdomains.com> (http://www.greatdomains.com). <greatdomains.com> offers parking services at no charge for any registered domain name. A parked domains is given a "proxy page" that is displayed to any users who attempt to navigate to the domain in question; all such proxy pages, at <greatdomains.com>, display a form that allows a visitor to the page to submit a "bid" for the domain name in question. There is no evidence that Respondent has ever sold, or received any bid for, any of her domain names.
The majority apparently concludes on the basis of these facts that Respondent is acting in "bad faith." The UDRP itself provides some guidance about what constitutes "bad faith." "Registration and use of a domain name in bad faith" can be shown by evidence that:
(i) [Respondent has] registered or [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 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.
(ii) [Respondent has] 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 [Respondent has] engaged in a pattern of such conduct; or
(iii) [Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondentís] 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 [Respondentís] web site or location or of a product or service on [Respondentís] web site or location
UDRP Para. 4(b) (emphasis added).
There is no suggestion that Respondentís behavior fell into categories (ii), (iii), or (iv); there was no "pattern" of registering domain names in order to prevent trademark owners from using them (4(b)(ii)), no "disrupting the business of a competitor" (4(b)(iii)), and no web site at Alloyrods.com to confuse with complainantís (4(b)(iv)).
The majority must conclude, then, that Respondentís "primary purpose" in registering this domain name was to sell it to "the owner of the trademark" Ė i.e., to Complainant -- (or to "a competitor" of Complainantís).
The evidence does not, in my view, support that conclusion. The only evidence that Respondent had any interest in selling any of her domain names at all was that they were parked at Greatdomains.com Ė which, as noted above, solicits offers for all of its parked domains. Even assuming for argumentís sake that Respondentís primary purpose was to sell domain names, and that that is why she chose the Greatdomains.com service, more than that is required to establish "bad faith"; there is, as the majority acknowledges, nothing wrong with selling domain names. To constitute bad faith, Respondentís "primary purpose" must be to sell domain names to trademark owners.
But if that were indeed her purpose, she behaved in a most peculiar manner; why go and register 60 domains using names that have clear and unambiguous generic uses, names like <lockingbolts.com>, <plasticnuts.com>, <extrudedrubber.com>, <nylonbaskets.com>, <plasticrods.com>, <stainlesssteelbushings.com>, <alloyrivets.com>, <pumpvalves.com>, <chemicalheaters.com> and <acidpumps.com>? The owner of a trademark in "nylon baskets" or "pump valves" is not likely to make her an offer for any of her domains for the simple and obvious reason that there will be no owner of a trademark in these generic terms.
Unfortunately for Respondent, generic terms, sometimes, can be trademarked Ė Paperback Software, for example. The trademark does not attach, of course, to the items generically described; nobody can trademark "paperback" in connection with soft-cover books, or "pump valves" in connection with pump valves. One of the generic terms Respondent chose ("alloy rods") fell into that category. It had been trademarked by Complainant, not, of course, in connection with "alloy rods" themselves but with welding wire. There is no evidence that Respondent knew of Complainantís ownership of this trademark, and the entire pattern of Respondentís behavior suggests just the opposite; presumably, she made the reasonable (though ultimately incorrect) judgment that this, too, was a generic term over which there would likely not be any trademark rights (and therefore no trademark owner from whom money might be forthcoming).
Because the most reasonable inferences to be drawn from Respondentís conduct here do not support Complainantís assertion of "bad faith," I dissent.
David G. Post
January 31, 2001
1. 15 USCS ß 1057(b). See, e.g., Avery Dennison v. Sumpton, 189 F.3d 868 (9th Cir. 1999).
2. See Brookfield Communications v. West Coast Entertainment, 174 F.3d 1036, 1055 (9th Cir. 1999).
3. See Sporty's Farm v. Sportsman's Market, 202 F.3d 489, 498, (2d Cir. 2000), citing Brookfield, id. For purposes of its decision, the Panel need not address whether ".com" may be capable of acquiring secondary meaning in another context.
4. 15 U.S.C.ß1072.