WIPO

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Quoteseek Corporation v. Internet Marketing Group

Case No. D2002-0511

 

1. The Parties

Complainant is Quoteseek Corporation, a Massachusetts corporation with a principal place of business at 20 Elm Street, Reading, Massachusetts, 01867, United States of America.

Respondent is Internet Marketing Group, whose principal place of business is listed as P. O. Box 5001, Long Island City, NY 11105, United States of America.

 

2. The Domain Name and Registrar

The domain name at issue is <autogiant.net>.

The registrar is Tucows, Inc. 96 Mowat Avenue, Toronto, Ontario, Canada.

 

3. Procedural History

This administrative proceeding was brought in accord with the ICANN Uniform Name Dispute Resolution Policy dated October 24, 1999 (the "Policy"), and the ICANN Rules of Uniform Domain Name Dispute Resolution Policy, dated October 24, l999 (the "Rules"). The Complaint was received by e-mail on May 31, 2002, and in hard copy on June 5, 2002, by the WIPO Arbitration and Mediation Center (the "Center").

In accordance with Paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and Paragraph 5 of WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules") the Center has verified that the Complaint satisfies the formal requirements of the Policy, Rules and Supplemental Rules. Payment in the required amount to the Center has been made by the Complainant.

In accord with the Rules Paragraph 4 (c), the formal date of the commencement of the administrative proceeding is June 12, 2002.

On Monday June 24, 2002, Respondent moved for a 20 day extension of time owing to counselís crowded docket. By letter dated June 27, 2002, that motion was denied, but an extension was granted until July 8. Respondentís Response dated July 8, 2002, was sent July 9, 2002, by email, fax and FedEx , and the hard copy of the Response apparently is stamped as received by the Center July 10, 2002, while the Exhibits to the Response are stamped as received July 9, 2002. I determine that to be in substantial compliance with the extension granted.

Tom Arnold of Houston, Texas was appointed Sole Panelist on July 22, 2002.

 

4. Controlling UDRP Policy

Paragraph 4(a) of the UDRP provides that the Complainant has the burden of proof of all three of three facts:

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

(Respondent has explicitly conceded "identical" within the meaning of 4(a)(l) so that becomes a non-issue. So while there remains some interesting aspects of this requirement, I find that it is a non-issue, conceded by Respondent.);

(2) The Respondent has no rights or legitimate interests in respect of the

domain name;

(3) The domain name was registered and is being used in bad faith.

We consider the facts and arguments of the parties against that foundation law.

The Lanham Trademark Act treats trademarks which are brands for tangible goods, and service marks which are brands for intangible services, in different manners relative to some issues in this case, particularly whether alleged "uses" of that which has been argued as one or another kind of mark included adequately explicit brand connection between the mark and the service.

The parties have used the term "trademark" in places where it is ambiguous as to which kind of mark is intended. But "trademark" is nevertheless often used casually as generic to trade marks and service marks, overlooking the differences. It appears that each the ICANN Policy and Rules, Complainant and Respondent have used "trademark" on occasion in a sense generic to both of those mark forms in places where key issues exist in this cause. Upon complete study of the issue, I accept that generic usage as appropriate in disputed issues in this proceeding.

 

5. Factual Background

For good reason, this ICANN process is designed to be a fast track inexpensive process. Necessary elements of that desirable process are an absence of discovery, depositions, cross examination, live hearings. When as occurs here as to several issues, including such as dates of use and "intent" of a party, dates of acts by the adverse party, a party critically needs certain evidence available only by discovery forbidden by the ICANN fast track process parameters, this process may not produce as confidently sound results as the more expensive court processes that afford those features forbidden here. That is one of the reasons that this process is not a final process, but one where a disappointed party may take the issue to court.

The key dates in this case, are:

November 1, l998

November 1, l998, appears for our purposes here to have been the date of Complainantís first use of a service mark comprising a design apparently of a curved road in combination with the word "autogiant". See the "first use" recitation in the subsequent Principal Register service mark registration, number 2,542,767 dated February 26, 2002, whose dates are not controverted.

October 1998

Complainant within roughly a month of its claimed first use as a service mark, registered the domain name <autogiant.com>, of course without any accompanying design.

What does that prove?

Domain name registrations may be obtained without any use of the name, so that domain name registration may connote but surely does not prove any ongoing use of the name, or other use of "autogiant" with or without the registered mark's accompanying design.

There is no evidence of use of the Registered mark (the composite of the design of the curved road and "autogiant"), in the form of samples of the advertising or labels, the cost of promotions under it, business done under it, nor any survey about the fame of it. There is a conclusionary, self-serving-bias-influenced, allegation of Complainant to the effect that the "trademark" was used; in this process that allegation was not cross-examined or otherwise explained or rebutted. Its indefiniteness leaves some important things, total obscure. Since both Complainant and Respondent refer to both the word "autogiant" as the trademark, and the service mark registration refers to the composite as the service mark, what has been proved by an allegation about use of "the trademark"?

Certified government records suggest that Complainant filed an application to register "autogiant" standing alone as a mark, got it rejected, apparently acquiesced in that ruling, abandoned that application, filed another application for the composite design and word which issued into the service mark registration of record in this case. See U.S. Trademark Application SN 75685549, abandoned December l, 2000. But Respondent did not assert this prior application to register and did not assert this estoppel concept, so I base no conclusion on that. Reference is made only for purposes of showing confusion in the record in the record before me.

Query: Does such a rejection, and acquiescence and abandonment of the application to register the word alone as a service mark, suggest the possibility of an estoppel against Complainant's assertion that the word alone had acquired sufficient public recognition whereby to acquire secondary meaning and be a common law trade/service mark?

--One in which Complainant had an interest as required by the Rule? Well, perhaps not if Complainant had offered solid proofs of the use of the word alone, the nature of the brand-connection between word and service, the quantity and nature of the promotions of that word and of services for which that word was a brand name, the quantity of sales made pursuant to those promotions, etc. This sort of evidence would have been costly, might have shown public recognition of the word as a common law service mark. But no such evidence or argument has been presented.

Could it be because Complainant was not really relying upon common law trademark rights in the word alone? The answer to that seems without much uncertainty, to be yes.

Trade/Service mark registrations in the U.S. which are not "intent to use registrations" require that the mark has been (past tense) used in commerce. Reliance is upon very thin proof if the reliance is upon the certification of Service Mark registration to prove years of ongoing use in commerce. Solid probative evidence would have included evidence of the dollar value spent on the promotions of Autogiant brand services via composite mark, dates of promotions, samples of the mark illustrating how they were used and brand-connected to the services, indications of the growth and amount of the business done under the mark.

But Respondent (having no discovery before his Response) did not contest the continuous use "of the mark" and there is no showing that such uses were not continued right on until today.

I find that for purposes of this UDRP case the use by Complainant was continuous right up to today, but that:

(a) that is no evidence responsible enough to carry a burden of proof, as to whether a common law mark came into existence, so on this point I find against Complainant, the party with the burden of proof; and

(b) there is no evidence that the use of either "autogiant" alone or in the composite form with the design was of sufficient quantity and promotion so as to be widely known or famous, from which an inference might be drawn that Respondent knew of Complainant's use or claims from the notoriety of that use.

December 1999

In December 1999, about 14 months later, Respondent registered the domain name <autogiant.net>.

For the purposes of trademark/service mark law in domain name disputes, the difference between the "net" and "com" suffixes are held to be irrelevant; two expressions differing only by the "com" vs. "net" have been held to be identical within the meaning of the UDRP Policy and Rules. Respondent has conceded this point, so it is a non-issue. "Identical" is determined without respect to ".com" vs ".net".

But from what has been said above, it is clear that the composite design-and-word mark as registered, was registered after Respondent's domain name registration, which precludes building a bad faith at registration time upon that, and the common law "trademark" is clearly not proven by a preponderance of the evidence (I distinguish mere conclusionary allegations) to have ever come into existence nor to have been known to Respondent. This precludes building a bad faith at registration time upon that.

February 13, 2001

On February 13, 2001, Complainant filed his application to register his composite service mark of record here, in the U. S. Patent and Trademark Office; the registration issued February 26, 2002, limited to use in the fields of automobile pricing, research and information, etc. The mark registered is a composite of a design of a curved road and "autogiant".

The service mark registration's constructive notice feature speaks as of the registration issue date long after Respondent's domain registration, and of course does not influence the credibility of Respondent's evidence about lack of knowledge "of either of Complainant or Complainant's trademark", insofar as they refer to "at the time of" registration of Respondent's domain name.

But Respondent's argument is with respect to Complainant's "trade" mark applicable to products, goods, tangibles. A fair reading of Respondent's submission does not reveal it as very powerfully negating knowledge of Complainant's service mark registration, applicable to services recited in the registration. Indeed, when you accept that the use of "trademark" there meant "service mark" in the denial of knowledge, there is effective evidence of Respondent's lack of knowledge of Complainant's service mark registration.

In light of such as both parties using "trademark" to be generic to "service mark", I am construing Respondent's denial of knowledge of Complainant's "trade mark" to speak generically to its "service mark" unless the context makes the other meaning clear. Thus, for our purposes here, Respondent's denial of knowledge of Complainant's "trademark" is found to be a denial of knowledge of Complainant's registered service mark as well as any common law trademark that might be found.

These inquiries are relevant to "good faith" determinations which I must address here, and they are difficult to resolve confidently with no discovery and live cross examination. Thus, though Respondent's brief pointedly asserts no knowledge of registered trade marks, as though the same rule did not apply to common law trade/service marks, I find that common law marks are equally well recognized by the generic language of the rule, the public policy of the rule, and case law of these proceedings.

 

6. Parties further contentions; discussion and findings

Respondent presented by affidavit of its president, Jerry Stevens, an affidavit alleging as his personal knowledge,

1. I registered autogiant.net because it incorporates the descriptive term

"auto giant," which refers to a large automaker.

2. I use autogiant.net for a web site that offers links to auto-related products

and services, such as new and use car sales, car insurance, financing,

and leasing.

3. I had no knowledge of Complainant or its trademark when I registered the domain name.

4. I did not register the domain name to sell to Complainant, to disrupt its business, to prevent it from registering a domain name incorporating its mark, or to confuse" [it appears that the last line of my copy of the page continued this sentence, but was not photocopied; so I do not have that line to include here. However, given what was there, those last few words would appear not to be vital to the case.]

Respondent also asserts as defense that the Complainant's mark is descriptive, saying that is the reason Respondent chose "autogiant", saying the Google data base reveals 139,000 hits on "auto giant", and saying "there can be no bad faith finding in connection with a domain name containing nothing more than a common description term that described a large automaker."

He also asserts, I think correctly, "The ICANN Policy is very narrow in scope; it covers only clear cases of "cybersquatting" and "cyberpiracy", not every dispute that might arise over a domain name. See, e.g., Second Staff Report on Implementation Documents of the Uniform Domain Name Dispute Resolution Policy (October 24, 1999)" and a score of supporting cases cited by Respondent.

Further, says Respondent: Even if Respondent's sole purpose in registering the Disputed Domain were to sell it, the sale of descriptive word domain names also supports a legitimate interest, provided the intent is not to sell it to the trademark holder capitalizing on the value of the trademark ["or obstructing or diluting the value of the mark", could be added here as correct law]. Respondent also asserts that Complainant should have known it had no case and is guilty of reverse domain name hi-jacking.

Respondentís other allegations and arguments I can include satisfactorily in discussing the rebuttal to Complainant's presentation, item by item. This flows naturally since Complainant has the Burden of Proof.

The Respondent affiant was talking about his own actions about which he was not in the Complainant's unavoidable role without discovery, of merely hoping and speculating about another person's actions and intent. This evidence I am bound by unless rebutted by evidence of similar probative nature as distinct from interest-biased hopes and speculations of Complainant's counsel about activities of others he never met.

*      *      *

Turning now to Complainant's allegations which I quote verbatim, Complainant alleges, on most dispute points without supporting evidence:

"(1) Complainant is the owner of U. S. Trademark Registration 2,542,767, registered February 26, 2002, for the mark AUTOGIANT® and design. The trademark is registered and used in connection with providing an on-line computer database in the fields of automobile pricing, research and information, and on-line ordering services featuring automobiles. A true and correct copy of the registration certificate is provided as Annex 3 to this Complaint."

First note the use of "the trademark" is clearly a reference to the composite mark of the service mark registration rather than any other mark, like that of the domain name registration years earlier. In the paragraphs thereafter, nothing appears to suggest that references to "the trademark" have been changed to be references to the word "autogiant", alone.

Respondent urges that the mark is descriptive of big car companies, and that is the reason Respondent chose that domain name, because he was going to use his domain for auto statistics, prices, etc. I construe that not as an attack upon the registration as invalid by reason of descriptiveness of the services recited in the service mark registration. Also if it were a direct attack on that ground I would refuse it on the ground that "autogiant" is simply not descriptive of the services which Complainant offers, or more importantly, of the services which the service mark registration explicitly covers.

I can speculate as to what kind of business Complainant is really in--could it be that he is a car selling entity selling cars on the internet from the inventory of many different dealers so that he has a giant of an auto inventory to sell from? But from what the record shows of Respondent's business with the domain name, I do not know why "autogiant" was the kind of choice he would have selected if not prompted by awareness of Complainant and its domain name or mark. Nevertheless, that is not really proof that effectively rebuts Respondentís true evidence--an affidavit by a man who swore to his own beliefs whereby he truly did have personal knowledge.

Respondent appears almost to concede the recitations in this Complainant's paragraph (1) insofar as need be to establish the required fact of UDRP ß 4(a) (1) above, requiring Complainant to have "rights" in a mark upon which its Complaint is based. The registration admittedly issued to Complainant; the registration is presumed valid until proved invalid; there is no meaningful evidence attacking the validity of the registration.

But I do not find here or elsewhere a claim that the registered mark in which Complainant has rights is other than the composite design-and-"autogiant."

" (2) Complainant has used the mark AUTOGIANT since at least November l998, and registered the domain name <autogiant.com> in October l998."

I note that here we find Complainant explicitly reciting that "the mark" in which it has rights, is "Autogiant", even though it surely can not contend that it has a registration unencumbered by the curved road design in the registration. I am left uninformed as to what is real about what was used where, to what extent, and in what manner, to what fame, in support of what quantity of sales, in what sort of brand relationship to the services of the service mark registration, by which Complainant acquired what rights.

There is no evidence as to whether the uses include, and if so how much the uses include, classic service mark-style use conveying clear association of the word AUTOGIANT as the brand of the services recited in the registration (it is not at all uncommon that businesses do not fulfill that requirement), or whether it was only the use of "Autogiant" as a domain name with no direct tie of the word AUTOGIANT to the recited services as a brand name of the service--as service mark law requires. There is no evidence even as to whether the ongoing use of "AUTOGIANT was de minimis rather than substantial use, or was associated with the services of the service mark registration, or perhaps was a descriptive use intending to refer to General Motors as an auto giant.

I have trouble deciding just exactly whether the Complainant has carried its burden of proof upon with evidence rather than conclusionary allegations, even though the recitation here is not directly challenged.

Premises considered, this recitation does not help me decide that there was bad faith in Respondent's activities.

"(3) Respondentís domain name, <autogiant.net>, is identical to the registered trademark of the Complaint, AUTOGIANT. As a result, the Respondentís domain name is confusingly similar to the Complainantís trademark."

In context of advocating the "identity" of ∂4(a)(1) Complainant again herecharacterizes its mark as a trademark composed of the single word "autogiant" though its registration is limited to the composit with the curved road design. Simply not so. The identity in question is identity of the domain name to the composite design and word, and identity is simply not there. What to do?

Since Respondent conceded "identity", that eliminates the need to address either "identity" or the alternative in 4(a)(1), "confusing similarity," in arriving at our result.

As aforesaid, it is well established by the precedents in this area that at least when the material preceding a ".com" or ".net" is identical to the mark, the difference is deemed immaterial to decisions under the ICANN Policy and Rules which bind us here.

"(4) Respondent has never used the name AUTOGIANT or <autogiant.net> in commerce or for any other legitimate purpose."

Respondent has denied this under oath, whereas Complainant is asserting a hope or speculation about activities of another party, without supporting evidence. Ties in litigation swearing matches go against the party with the burden of proof, but this is no tie. I find that Respondent did and does what he said. But that doesn't end the inquiry.

I take that paragraph (4) allegation to be properly translatable into: Respondent's links to other sites is not a "legitimate" use within the meaning of the ICANN Policy and Rules, because it so transparently is rather a sham--a simple little thing to do to cover a complete sham of registering domain names and marks used by others for the purpose of extorting money from the earlier user and proprietor of the disputed word. And anyone who would conduct such a transparent sham is one who would fudge in the application of "legitimacy" to the activity. In the alternative, when no quantity or value of the activity is shown, there is no proof of its not being de miminis and hence not determinative.

I conclude that quite possibly the reason Complainant did not carry its burden of proof on this point is the limitation against discovery and cross examination in the ICANN fast track process. This is a most unsatisfying reason for a dispute adjudicator wanting to do justice, to find the Complainant did not make its case.

I can see clearly a quite reasonable or at least possible speculation theme, wherein Respondent did precisely what he says he did not do, was using his linking activity as a sham; but from Complainant that is self-interested speculation unsupported by evidence of either Respondent's intent or the fact of the action.

Though other panels in other cases on differently presented facts have concluded in a manner some would call inconsistent with my finding here, I conclude that I must find against the pleaded speculative self-interest or hope unsupported by any real evidence.

In connection with this conclusion, is the passing observation that: the legitimacy of Complainant's activity with its domain name may not be materially differentiated by the evidence, from the similar type of Respondent's activity which the Complainant would have me find to be not legitimate. But I have no evidence to support that as a finding.

Let us look then at further allegations of Complainant to determine whether this whole is plugged.

(5) Respondent has never traded as, done business as, or been licensed as Autogiant or Autogiant.Net.

Excepting the conclusion already reached that Respondent correctly stated that he had a linking activity, I can consider this allegation as true, but that still does not make the case for Respondent's bad faith in doing his links to auto-related entities' websites if he didn't know he was copying Complainant improperly from the beginning.

(6) Respondent is not commonly known under the name Autogiant

This is a proper allegation which I can accept, arguendo. But standing alone or considered in conjunction with what Complainant has proved by evidence or Respondent has admitted, that still doesn't make a case for bad faith registration by Respondent, one of the several key features Complainant must win with evidence.

(7) Respondent has no trademark or other intellectual property rights to the name Autogiant or the domain name <autogiant.net>.

This of course may be a perfectly proper allegation in negation of some relevant positions a Complainant expects a Respondent to assume. However, as of the time of Respondent's domain name registration, Respondent had the right of any other citizen to register and use any term it then in good faith could think up, in any non-illegal way. "Autogiant" has connotations to Respondent's business activity as we now know it. That word was a not altogether unnatural thought. He could well have selected it in good faith, which under Policy paragraph 4(a)(3) copper rivets his right to register. The fact if any of bad faith use later pursuant to the fast-track process here, bad faith by virtue of not having his own intellectual property rights, thereby becomes immaterial.

(8) Respondent is not using, nor are there any demonstrable preparations to use the domain name <autogiant.net> in connection with a bona fide offering of goods or services.

Is not the making available on the net data like the prices of cars by model, a bona fide service? What evidence do I have that Respondent's offering of that service is not bona fide? I have no specimen of a data display that is patently spurious, made up stuff that I could judge to be not bona fide. The alleged non-bona fide data and links by Respondent are available for Complainant to peruse and select samples of for my examination, for my determination that a raw sham is what is being done. This one is not a case of can't-get-the-evidence-by-reason-of-no-discovery in this process. If there were sham data bases, that could have been shown to me but it was not.

The words "bona fide" go with the words "legitimate". That paragraph (8) is a reasonable self-interest-serving speculation, a hope under all the circumstances, but there is no hard evidence (e.g., an affidavit supported by chapter and verse of how Complainant's affiant came by the personal knowledge he alleges as fact), as to the lack of bona fides. For example, did Respondent learn of Complainant's domain name through a search of his own, or through rejection of an application for the dot com domain name version, before he registered? Sworn to in an affidavit by somebody who can show personal knowledge as a hard fact, that would be persuasive evidence I do not have before me.

(9) Respondent has no rights or legitimate interest in the name AUTOGIANT or the domain name <autogiant.net>

UDRP paragraph 4(a) has sections (2) and (3) set forth on page 3 above, one couched in the word "legitimate" interests, the other in terms of "bad faith". Complainant must prove each of those requirements with evidence, as distinguished from hope and speculative allegation. While I have been shown the nature and the possibility of a transparent scam which Complainant has speculated to be fact, there is no evidence of the fact beyond expressions of hope unsupported by evidence.

And the Rule's section (3) requires bad faith in registration as well as use. Given the evidence before me, I find no preponderance of the evidence (as distinguished from allegation of hope and speculation of a factual conclusion about which Complainant has no hard evidence) of bad faith in the registration, no adequate proof that Respondent in fact derived the idea for the name from Complainant.

If Complainant has been wronged, its remedy, rather than here, is in a court where it has access to discovery to make its point by stronger evidence than a hope and a self-serving speculative allegation.

(10) Respondent has forwarded visitors to the Respondent's web site to third party website maintained by competitors of the Complainant in an attempt to create a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the third party web sites.

(11) Respondent has placed links on the registered site to third party web sites maintained by competitors of the Complainant in an attempt to create a likelihood of confusion with the Complainant's mark as to the course, sponsorship, affiliation or endorsement of the third party web sites.

In these ICANN proceedings, the very proper and benign focus on cost/time savings properly brings parties and panelists alike sometimes to crowd the line of preponderance of the "evidence", i.e. to rely on speculations, conclusionary allegations and beliefs as though it were evidence; but the tribunal is not authorized to abandon all requirement for evidence that is more substantive than an allegation of self-serving conclusionary speculation or hope with no evidence presented for review. Evidence of an "attempt" as here unavoidably involves "intent" which cannot be proven by the conclusionary self-serving allegation alone.

But the "attempt" point does not end the inquiry. Is there evidence, affidavits of a misled customer, or even hearsay evidence like re-told oral statements of a complaining customer, that Respondent--now to paraphrase the allegation (10)ó

Respondent has forwarded visitors to the Respondent's web site to third party website maintained by competitors of the Complainant [in a transaction which] create[s] a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the third party web sites.

If that could be proven by evidence, that evidence might possibly be developed into a winning case of trade name (business name) unfair competition, or a case of service mark infringement, or what ever. There may in fact be malicious bad faith in a Respondent's knowingly setting up and advertising the site and the systems for such references, which would prove bad faith use of the domain name. But to prove that by a preponderance of the evidence requires evidence, something like a sworn personal knowledge of a real-world example with names of the competitors, dates, who the reference was to, the nature of the interests of the visitors, what the visitors inherently knew or speculated might be true, why were they confused. In the present arrangement of things, that discovery is not afforded by the ICANN low cost/time procedure; another forum is needed.

Further, that would still not necessarily, standing alone, make out bad faith in the registration of the domain name, though the discovery effort might turn up evidence of that too.

(12) The Respondent has offered the domain name for sale at an amount in excess of $1,000.00, considerably more than the Respondent's out-of-pocket costs directly related to the domain name. A true and correct copy of a printout of the Respondent's contract web page, which notes that "Minimum sale price for any domain: $1000 USD" is provided as Annex 4 to this Complaint.

It is well established that knowingly to register a domain name duplicative of a well known trade/service mark, and then turn around and offer the domain name to the mark's proprietor for a big buck mark up over costs, is essentially conclusive evidence of bad faith in the registration and use of the domain name registration. But that is not what Complainant has alleged here.

Complainant's allegation is generic to a legitimate entrepreneur's published offer for sale to all comers (not specifically addressed to the registrant), by an entrepreneur who, for all that appears from Respondent's personal-knowledge affidavit evidence as distinguished from Complainant's hope and speculation, did not know of Complainant's mark or domain name at the time of either the offer for sale or domain name registration and for long thereafter.

If this was the only domain name he registered and listed, the image projected might be different from the likelihood that there were many names in which the entrepreneur did the same thing, perhaps all of them duplicative of prior unregistered marks, or none of them duplicative of any prior mark or domain name of any kind. But evidence on those various possibilities is not before me, and the burden of proof is upon the Complainant. Sorry about that, but of course we all know that.

(13) Respondent registered and uses the domain name intentionally to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion as to source, sponsorship, affiliation or endorsement of Respondent's web site or location or of a product or service on Respondent's web site or location.

That is a very interesting recitation of a possible FRCP (Federal Rules of Civil Procedure) Request for Admission, or of a court Complaint's notice-giving conclusionary allegation, but again it is not supported by evidence before me. Further, "intentionally" is the kind of proof that requires evidence out of the mouth, notes or letters of the subject person, or circumstantial evidence of a context where the innocent conclusion is clearly not as likely as the guilty one. Here, if I take the Respondent's conclusionary allegations as of the same force and effect as the Complainant's, I find a swearing match where by the Rules of dispute resolution, the Complainant has the burden of proof.

(14) For the foregoing reasons, the domain name should be considered as having been registered and used in bad faith, in violation of the Policy.

The Complainant will surely react to this decision with a feeling of being put upon, because the Respondent's presentation appears to be presented almost equally in equal conclusionary speculation denials. Some differences include:

(a) that Complainant has the burden of proof; in a pure swearing match the tie

goes to the Respondent;

(b) that coming from the Respondent and in the parts most relevant being about the Respondent's own intentions and activities,

(c) with the key parts being by an affidavit constituting evidence in this proceeding,

(d) whereby the critical parts of Respondent's presentation falls into the category of evidence admissible in the ICANN administrative proceedings even if perhaps not highly persuasive on every point,

(e) where mere self-serving hopes and conclusionary allegations of Complainant about the motivations and activities of Respondent in at least many instances do not qualify as evidence.

Reverse hijacking

Respondent has asserted that

"Respondent respectfully submits that this is a case of Reverse Domain Name Hijacking and, pursuant to Paragraph 15(e) of the Rules, this Panel should declare in its decision that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

It is undisputed that Respondent registered the Disputed Domain BEFORE Complainant even applied for its trademark. Thus it is impossible to prove bad faith registration. The filing of a complaint under such circumstances has been held to be in bad faith."

I take a different view. As developed elsewhere trademark and service mark rights are readily developed in this country under the common law without a registration. The suggestions are that Complainant had been using its mark in commerce for over a year before Respondent's domain name registration, and had an actively used registration of the <autogiant.com> domain name for over a year, both before Respondent registered his domain name. There is no showing that Complainant had reason to believe Respondent was not aware of Complainant's domain name a year or so before Respondent's registration. Indeed the logical speculation is an emotional sort of thought, "Of course he (the guy who offended Complainant) had at the very least done a Google search and knew all about our domain name when he registered. Indeed the likelihood that Respondent would have chosen "AUTOGIANT" from among the millions of choices for its domain name, without prior knowledge of such as Complainant's domain name in a similar market segment, is preposterous".

So the case as seen from Complainant's point of view without discovery, includes pre-discovery speculations that we must all indulge when considering whether to file a law suit or claim, which speculations are not always either accurately correct or instinctively complimentary to a then-stranger who has offended us. But these serve as a reasonable justification for Complainant's having initiated this proceeding.

 

7. Decision

I find

- that I do not have to reach the issues in UDRP Policy, para 4(a) (1)

(" The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;") because Respondent admitted "identity";

- that Complainant did not carry its burden of proof derived from UDRP Policy, para 4(a)(2) that Respondent has no rights or legitimate interests in respect of the domain name;

- that Complainant did not carry its burden of proof derived from UDRP Policy, para 4(a) (3) that the domain name was registered and is being used in bad faith.

Wherefore:

Complainant's Complaint is dismissed.

Respondent's request for a declaration that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding, is denied.

 


 

Tom Arnold
Sole Panelist

Dated: August 20, 2002