WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Online Resources, Inc. v. On-Line Resources

Case No. D2001-0257

 

1. The Parties

The Complainant is Online Resources, Inc. located at 7600 Colshire Drive, McLean, Virginia 22101, USA, represented by Mintz Levin Cohn Ferris Glovsky and Popeo, P.C.

The Respondent is On-Line Resources located at 597 Wendy Drive, Newbury Park, California 91320, USA, proceeding pro se.

 

2. The Domain Name and Registrar

The domain name at issue is <onlineresources.com>. The domain name is registered with Network Solutions, Inc.

 

3. Procedural Background

Complainant filed its Complaint under the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy") with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") by e-mail on February 16, 2001, and in hardcopy on February 20, 2001. The Center verified that the Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Centerís Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). On March 7, 2001, the Center formally commenced this proceeding and set March 26, 2001 as the date for filing a Response.

On March 26, 2001, Respondent attempted to email its Response to the Center. It apparently experienced difficulties attaching its Response to the email, and sent multiple emails to the Center. The Center received ten separate emails, which included the Response. The Center acknowledged receipt of the Response by email dated March 28, 2001. On March 29, 2001, Respondent sent a "final completed version" of its Response to the Center.

On April 3, 2001, the Complainant filed a motion for default based on the contentions that Complainant had not received a copy of the Response as required by the Policy and that the submission of the "final completed version" of the Response on March 29, 2001, was untimely. Respondent replied that it had been experiencing e-mail difficulties throughout the relevant period, that it had attempted to send the Response to all parties, and that Complainant should have contacted it before April 3, 2001 to express its concerns.

Neither party requested a three-member panel. Accordingly, on April 18, 2001, after clearing for potential conflicts, the Center appointed David H. Bernstein as the sole panelist. The Panel has reviewed the Complaint and agrees with the Centerís assessment that it complies with the Policy, Rules and Supplemental Rules.

On April 23, 2001, following its initial review of the case file, the Panel issued an order requesting further submissions pursuant to Rule 12. The parties were asked to provide one or more affidavits providing details concerning (1) all communications, oral, written or electronic, between the parties prior to the filing of the Complaint in this proceeding, including, where available, copies of any letters, emails, or contemporaneous notes of telephone conversations; and (2) the content of the Respondentís website at <onlineresources.com> (and, where available, screen shots of the website) both (i) prior to the first contact between the parties and (ii) after the first contact between the parties but before the filing of the Complaint. Both parties timely submitted affidavits by April 30, 2001. Pursuant to Rule 10(c), the Panel reset the date for expected decision to May 18, 2001.

 

4. Factual Background

Complainant is a Delaware corporation with its principal place of business in Virginia. It has used the service mark "ONLINE RESOURCES" in connection with online banking services since 1990. In May 1995, it received a United States service mark registration for the mark for "providing banking services accessed via an online transaction display screen telephone system."

Respondent is a California business. It registered the domain name in 1996.

 

5. Partiesí Allegations

Complainant states that its registration constitutes prima facie evidence of its exclusive ownership of the mark "ONLINE RESOURCES" and that it has spent significant sums advertising and marketing its service under the mark, with the result that the mark is distinctive. Complainant further avers that the domain name is identical to its mark.

Complainant alleges that Respondent has no rights or legitimate interests in respect of the domain name at issue because: (1) Complainantís trademark registration predates Respondentís registration of the domain name; (2) Respondent is not Complainantís licensee or otherwise authorized to use the mark; and (3) Respondent does not use the domain name to provide information regarding any goods or services that it offers or intends to offer.

The Complaintís allegations of bad faith, in their entirety, are as follows:

"Upon information and belief, Respondent has acted in bad faith by registering the domain name ONLINERESOURCES.COM primarily for the purpose of selling the registration to Complainant or a third party in direct violation of paragraphs 4(a)(iii) and 4(b)(i) of the Policy."

"Upon information and belief, Respondent has never used the domain name ONLINERESOURCES.COM in connection with any products or services since registering the domain name in 1996."

"Upon information and belief, Respondent has registered the domain name ONLINERESOURCES.COM in order to prevent Complainant from using its mark ONLINE RESOURCES in a corresponding domain name, in direct violation of Paragraphs 4(a)(iii) and 4(b)(ii) of the Policy."

In its affidavit in response to the Panelís request for additional submissions, the Complainant states that it attempted to access Respondentís website before the pendency of this dispute, but found no website associated with the domain name at issue. Moreover, Complainant says that it attempted to contact Respondent via email and letter, but Complainantís email was returned as undeliverable. Eventually, Complainantís letter was forwarded to Respondent. The letter asked whether Respondent was interested in transferring the domain name to Complainant. In response, Respondentís sole proprietor called Complainant. According to the Complainant, Respondent said that it had recently refused an offer to sell the domain name at issue for $100,000. Later, but before the Complaint was filed, Respondent put up a "placeholder" website that used the name "On-Line Resources" but did not offer any goods or services.

Respondent states that it has used "On-Line Resources" as a service mark in connection with information resources and software downloads via an online Bulletin Board System since the 1980s.

Respondent alleges that Complainantís mark is generic, that Complainant in its registration specifically disclaimed exclusive rights to "Online" except as shown in the complete mark, that the registration uses an address different from Complainantís, and that many registered marks include "Online Resources."

Respondent further submits that it has never claimed to be a banking service or used its name in that context. Respondent states that its site contains information regarding its products and services, and has done so since 1996. (At another portion of the Response, Respondent suggests that nonuse would be of no moment because it has a legitimate interest in securing a priority of right, and because the Policy does not prohibit leaving sites fallow for years without effective use.) Respondent claims that it has never attempted to cause confusion, but that Complainant has done so by allowing the publication of an article in CNET News that linked Complainantís name to Respondentís website. Respondent also states that Complainantís multiple other domain name registrations, and its failure to register the domain name before 1996, prove that its interests are not impaired by Respondentís registration of the domain name at issue.

Respondent disputes Complainantís allegations of bad faith. It alleges that it did not register the domain name for purposes of sale, rental, or other transfer, but to reflect its business activities using a common term for such activities. Respondent claims that, because the term "online resources" is generic, the Panel may not infer that it registered the domain name in order to prevent Complainant from using its mark or to cause consumer confusion, and that it has not engaged in any pattern of abusive registration. It also claims that it was encouraged by an offer of a commission to place a banner ad for Complainant on its website, but that when it refused, Complainant "hijacked" the site by causing domain name servers to redirect traffic from <onlineresources.com> to Complainantís website for two years.

Finally, Respondent requests that the Panel make a finding of reverse domain name hijacking because the Complaint constitutes an abuse of the administrative proceedings.

In its affidavit in response to the Panelís request, Respondent agrees with most of Complainantís factual statements, but states that it was experiencing technical difficulties during the period in which Complainant attempted to access its website, and that its site and associated email address came down for a period associated with a transfer to a different internet services provider. Respondent did not, however, provide any printout of the content of the site prior to its experiencing these technical difficulties. Respondent further states that Complainantís ultimate success in contacting it demonstrates that there was no bad faith involved in having old contact information in the Network Solutions, Inc. registry, and that it could not control when the registry was updated. Respondent also states that it expressly told the Complainantís attorney that it had no interest in selling the domain name.

 

6. Discussion and Findings

Before reaching the merits, the Panel first will address the Complainantís motion for a default. The Panel denies that motion. Respondent, who is appearing pro se, made a good faith effort to submit its response by March 26, 2001, and did, indeed, submit a Response on that date. Respondentís failure to contemporaneously send a copy of the Response to Complainant caused no prejudice as Respondent sent a copy shortly after it learned of Complainantís non-receipt. As for the "final completed version" sent on March 29, 2001, it is not necessary for the Panel to decide whether to accept that Amended Response, because it is able to fully resolve this matter by considering only the March 26, 2001 Response. Thus, given Respondentís good faith and the lack of prejudice to Complainant, the Panel accepts the Response and denies Complainantís motion. Cf. Talk City, Inc. v. Robertson, Case No. D2000-0009 (WIPO Feb. 29, 2000).

The burden for the Complainant under paragraph 4(a) of the Policy is to prove:

(i) That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

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

(iii) That the domain name has been registered and used in bad faith.

In this case, the first element has been established. Complainant has a valid registration for "Online Resources" for services relating to online banking. Complainantís registration gives rise to a presumption that its mark is valid and not generic as applied to banking services. Because Respondent has not offered any compelling evidence to rebut the presumption of validity, the Panel concludes that Complainant has trademark rights and that the domain name is identical to its mark. EAuto, L.L.C. v. Triple S. Auto Parts, Case No. D2000-0047 (WIPO Mar. 24, 2000).

Complainant has failed, however, to establish the second and third elements of the Policy. "Online Resources" is, as Respondent points out, a fairly descriptive term as applied to a number of different online services. Marks can vary in whether they are generic, descriptive, suggestive, or arbitrary depending on the goods or services to which they refer (compare "Apple" for apples, "Apple" for lipstick, and "Apple" for computers). In addition, Complainant has submitted no evidence that its mark has substantial commercial strength, such that a significant number of Internet users might well expect that any use of "Online Resources" is associated with Complainant.

Respondent avers that it has operated under the name "On-Line Resources" for over a decade. Although the Panel would have preferred to receive some documentary evidence to support this assertion, the allegation, bolstered by Respondentís certification, is sufficient to show prior use of this name. At the minimum, Respondentís evidence that it has offered computer-related services under this name is more persuasive than Complainantís conclusory allegations to the contrary, and thus Complainant has failed to sustain its burden of proving a lack of any legitimate interest. Respondentís registration of a domain name to reflect a business name descriptive of Respondentís goods or services thus constitutes a legitimate use under ∂ 4(c)(ii) of the Policy, absent evidence that the adoption of the business name itself was illegitimate.

As for the requirement of showing bad faith, the Complaint does not even come close. The Complaint does no more than recite the conclusory allegations that Respondent exhibited bad faith, hewing closely to the words of the Policy. Notably, the Complaint does not allege any facts that show bad faith.

Complainant, in response to the Panelís request for further submissions, finally detailed its conversations with Respondent. In one such conversation, after Complainant expressed interest in acquiring the domain name, Respondent refused to sell the domain name and stated that he recently refused an offer for $100,000 for the domain name. If Respondent lacked a legitimate interest in the domain name, this might, depending on the context, be considered a veiled invitation to bid on the domain name, thus justifying an inference of bad faith. Policy ∂ 4(b)(i). In the context of this case, though, this evidence falls far short of constituting a bad faith offer of sale. Because Complainant has not met its burden of showing that Respondent lacks a legitimate interest in the domain name, the name is a business asset whose price Respondent was free to negotiate, if that was what it was doing. See, e.g., Etam, plc v. Alberta Hot Rods, Case No. D2000-1654 (WIPO, Jan. 31, 2001); General Machine Products Co. v. Prime Domains, Case No. FA0001000092531 (NAF, filed Jan. 26, 2000). Moreover, Respondentís owner states that he expressly told Complainantís counsel that the name was not for sale. There is thus ample evidence in this record to support a finding that Respondent did not register the domain name for the purpose of selling it to Complainant.

Complainant also alleges that Respondent exhibited bad faith under ∂ 4(b)(ii) of the Policy. That provision declares registration to be in bad faith if it is done "in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the registrant has] engaged in a pattern of such conduct" (emphasis added). Complainant presents no evidence whatsoever of any pattern; thus, its allegation "on information and belief" that Respondent violated paragraph 4(b)(ii) appears to be frivolous. Nor do the parties appear to be competitors, id. ∂ 4(b)(iii), nor is there a scintilla of evidence that Respondent is trying to gain commercially by causing confusion, id. ∂ 4(b)(iv).

 

7. Reverse Domain Name Hijacking

Respondent has asked the Panel to make a finding of attempted reverse domain name hijacking. Rule 1 defines reverse domain name hijacking as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name." See also Rule 15(e).

Although Complaints are certified and Panels may rely on the facts stated therein, conclusory allegations are, by themselves, inadequate because they provide no factual support for their assertions. Rather, Complainants must allege facts to support the assertions and, where available, should supplement these factual assertions with affidavit and documentary evidence.

In this case, the Complaintís treatment of the legitimate use and bad faith elements of the Policy falls below any acceptable standard. The Complaint offered no specifics regarding Respondentís website or Complainantís communications with Respondent. The only specific allegations in the Complaint involved Complainantís ownership of its mark. Given the facial deficiencies in the Complaint, the Panel called for further submissions to determine whether Complainantís decision to file a Complaint was at all justifiable or whether it instead constituted an attempt at reverse domain name hijacking.

Complainantís affidavit, submitted in response to the Panelís request, reveals that Complainant may have had some basis for suspecting that Respondent was a cybersquatter. In its supplemental submission, Complainant revealed for the first time that it could not find a website associated with the domain name and had difficulty contacting Respondent during its investigations. Even if Respondent is not responsible for these difficulties, they provided a reasonable basis for Complainant to conclude that Respondent was not a legitimate business, especially when Respondentís proprietor mentioned $100,000 in a conversation with Complainantís representative. Without knowledge of Respondentís past legitimate use, Complainant could reasonably have understood this statement as extortionate (although, if it did have that understanding, its failure to refer to these facts in the Complaint is inexplicable). Moreover, after receipt of Complainantís initial letter, Respondent put up a "placeholder" website that still did not offer any goods or services, no doubt contributing to Complainantís perception of cybersquatting. Thus, although the Panel was inclined to find reverse domain name hijacking given the paucity of proof in the Complaint, Complainantís affidavit demonstrates that Complainant had at least some basis to believe that Respondent violated the Policy.

Accordingly, and without condoning the Complainantís woefully inadequate Complaint, the Panel declines to find that Complainant engaged in attempted reverse domain name hijacking.

 

8. Decision

Complainant has failed to establish two of the three elements of the Policy: that Respondent lacks legitimate rights or interests in the domain name <onlineresources.com>, and that Respondent registered and is using the domain name in bad faith. The Panel therefore denies the Complainantís request that the domain name be transferred from Respondent to Complainant.

 


 

David H. Bernstein
Sole Panelist

Dated: May 15, 2001