WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
QNX Software Systems Ltd. v. Future Media Architects, Inc. and Thunayan K AL-Ghanim
Case No. D2003-0921
1. The Parties
The Complainant is QNX Software Systems Ltd., Ottawa, Ontario, of Canada.
The Respondents are Future Media Architects, Inc., Road Town, Tortola, British Virgin Islands, United Kingdom of Great Britain and Northern Ireland, and Thunayan K AL-Ghanim, AL Souk AL Dakhili, Kuwait, represented by Stevan Lieberman, Greenberg & Lieberman, United States of America.
2. The Domain Name and Registrar
The disputed domain name <qnx.info> is registered with TLDs, Inc. dba SRSplus.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 19, 2003. On November 21, 2003, the Center transmitted by email to TLDs, Inc. dba SRSplus a request for registrar verification in connection with the domain name at issue. On December 3, 2003, TLDs, Inc. dba SRSplus transmitted by email to the Center its verification response confirming that the Respondent Thunayan K AL-Ghanim is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.
The hard copies of the Complaint, required by the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), paragraph 3(b) and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), paragraph 3(c) were not delivered to the Center until January 21, 2004. Meantime, in response to a notification by the Center dated January 8, 2004, that the Complaint was administratively deficient in that and in another respect, the Complainant filed an amended Complaint by email on January 9, 2004, and in hard copy on January 22, 2004. The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules and the Supplemental Rules.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint and the proceedings commenced January 23, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was February 12, 2004. A Response had been filed with the Center on December 23, 2003, and on January 9, 2004, the Respondent indicated it wished that to be taken as its final Response.
On January 23, 2004, the Complainant filed an unsolicited Reply. Upon learning of this, the Respondent objected. That day the Center sought from the Respondent final confirmation that its Response of December 23, 2003, should be considered as the final Response. The Respondent said that, so long as the Reply was not allowed, its early Response would stand but that, if the Reply were admitted, the Respondent wished to see it before submitting its final Response. The Center sent the Reply to the Respondent that day and informed the parties on January 26, 2004, that it will be in the sole discretion of the Panel whether to admit the unsolicited Reply. The Respondent did not file any further response prior to the due date of February 12, 2004, and made no request to file any further submission thereafter.
The Center appointed Jacques A. Léger, David E. Sorkin and Alan L. Limbury as panelists in this matter on February 11, 2004. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The language of the proceeding was English.
Ruling on the unsolicited Reply
Rule 12 provides that the Panel may in its sole discretion request further statements or documents from either of the parties. Thus, no party has the right to insist upon the admissibility of additional evidence: SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092. It is appropriate to consider the circumstances of each case before deciding whether to admit unsolicited additional submissions: Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd., WIPO Case No. D2000-0802. The Panel considers that the Reply addresses and is confined to arguments by the Respondent that the Complainant could not reasonably have anticipated when filing its Complaint: see Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151. Accordingly the Panel admits the unsolicited Reply.
There is no right to file a Response to an unsolicited Reply admitted by the Panel. It is a matter for the Panel to decide in its discretion in each case whether fairness requires a Respondent to be afforded such an opportunity pursuant to Rule 10(b). Having regard to the content of the Reply, the Panel would not regard it as necessary in the interests of fairness to afford the Respondent such an opportunity in this case. However, in the unusual circumstances of this case the Respondent saw the Reply before the due date for the Response and thus has already had an opportunity to file a final Response addressing the Reply.
Complainant has named two separate parties as Respondents. Neither the Policy nor the Rules provide for the naming of multiple Respondents. Rather, the Rules require the Respondent in a proceeding under the Policy to be the registrant of the disputed domain name: Rule 1 - "Respondent means the holder of a domain-name registration against which a complaint is initiated." There is no provision for naming as additional respondents any third parties, such as administrative contacts or officers of the registrant. Accordingly other Panels have dismissed from the proceedings a party considered to have been named improperly as a Respondent. See, for example, Top Driver, Inc. v. Benefits Benefits, WIPO Case No. D2002-0972 and Regal Removals v. Gary Bradshaw, WIPO Case No. D2003-0832.
There is in this case, however, real doubt as to which of the Respondents is the registrant of the disputed domain name. As described in more detail below, the disputed domain name was registered on October 7, 2001, in the name of Mr. Thunayan K AL-Ghanim. He claims to have transferred it to Future Media Architects, Inc. in 2002, and there is some evidence to support this. Yet the Registrar certified to the Center in December 2003, that Mr. Thunayan K AL-Ghanim is the registrant. Under these circumstances, if the Panel were minded to dismiss one of Respondents from the proceeding, it is unable to determine which one it should be.
Mr. AL-Ghanim is the CEO of Future Media Architects, Inc. The Response has been presented on the basis that that company is the sole Respondent, yet it comprehensively addresses the position of Mr. AL-Ghanim and does not seek to distinguish between them nor to argue that the conduct of Mr. AL-Ghanim is of no relevance to the position of Future Media Architects, Inc. or vice versa. The Panel considers it appropriate in the unusual circumstances of this case to treat both Respondents as if they were one and the same.
4. Factual Background
Since 1982, Complainant has distributed and licensed computer software. Since 1985, it has become the registered proprietor in numerous jurisdictions of the trademark QNX, both as a design and as a word mark, in connection with computer operating system software and related goods and services. Before the disputed domain name was registered all the marks had been registered and extensively promoted and advertised, particularly through Complainantís website at "www.qnx.com".
In addition to the domain name qnx.com, Complainant is also the registrant of the domain names <qnx.org>, <qnx.biz>, <qnx.net>, <qnx.ca>, <qnx.de>, <qnx.dk>, <qnx.fr>, <qnx.pl>, <qnx.co.jp>, and <getqnx.com>.
The disputed domain name <qnx.info> was registered on October 7, 2001, in the name of Respondent Mr. Thunayan K AL-Ghanim and shortly thereafter the url "www.qnx.info" resolved to a page containing information about liquid.tv. In November 2001, Complainantís counsel protested at the registration of the disputed domain name and asked Mr. AL-Ghanim immediately to ensure that it resolve to a blank page and within a week to agree to transfer it to Complainant.
For a time the disputed domain name did resolve to a blank page but after January 2002, it resolved to a website entitled mp3.tv, which invites visitors to search for mp3 files through that site and states that it is committed to creating an online community for individuals with varied musical interests. The website also carries third party advertising and contains links to sponsorsí web sites. The disputed domain name appears in the browserís address bar.
The domain names <liquid.tv> and <mp3.tv> were registered in the name Thunayan K AL-Ghanim on January 31, 2001, and August 21, 2000 respectively.
Searches conducted by Complainant in September 2003, revealed the domain names <qnx.info>, <liquid.tv> and <mp3.tv> as being registered in the name FMA.com, a name of Respondent Future Media Architects, Inc. Mr. Thunayan K AL-Ghanim is the CEO of Future Media Architects, Inc., which changed its name in 2002, from Liquid TV.
As previously mentioned, in responding to the Center, the Registrar confirmed on December 3, 2003, that the disputed domain name <qnx.info> is registered in the name of Thunayan K AL-Ghanim.
Neither of the Respondents has a relationship with or is a licensee of Complainant.
5. Partiesí Contentions
The disputed domain name is identical to Complainantís QNX trademark.
Respondents have no rights or legitimate interest in the disputed domain name. Neither is known as QNX, nor are they making a bona fide offering goods or services in association with QNX. The registration is an attempt to trade off Complainantís reputation.
The disputed domain name has been registered and is being used in bad faith by Respondents. It is being used solely to attract Internauts, for commercial gain, by creating a likelihood of confusion with the QNX trademarks as to the source, sponsorship, affiliation or endorsement of Respondentsí site.
A finding of bad faith may be made where Respondent "knew or should have known" of Complainantís mark before registering the domain name. Given the extensive use of Complainantís trademarks and given that Respondents are involved in the computer field generally, it is reasonable to take the position that Respondents had actual and/or constructive notice of Complainantís rights.
Upon Complainantís protest in November 2001, Mr. AL-Ghanim agreed not only to resolve the disputed domain name to a blank page but to transfer it to Complainant.
There is no basis for transferring the disputed domain name to Complainant, which has no enforceable trademark rights in Kuwait or the British Virgin Islands. The existence of a foreign trademark does not put a domain registrant on notice where the registrant resides in a country other than where the trademark is registered.
The disputed domain name was acquired by Mr. AL-Ghanim, during a period in which he acquired 500 other .info domains, all of which were acquired to promote his "mp3.tv" website. Since then many of them have been re-positioned to promote his oxide.com website.
The disputed domain name was and is of value to Mr. AL-Ghanim because it incorporates a simple 3-letter combination. He has been collecting three letter domains to promote his companiesí websites. He was at the time of registration unaware of Complainant or its alleged mark.
Mr. AL-Ghanim agreed in November 2001, to resolve the disputed domain name to a blank page in order to obtain legal advice. He did not agree to transfer it to Complainant. Some time in 2002, he transferred it to Future Media Architects, Inc. and at the same time redirected it to that companyís primary project at the time, the OXIDE Internet search site.
There is no requirement under the Policy that the meaning of a disputed domain have any correlation to the substance of the web site it promotes. Respondent has a legitimate interest in the disputed domain name because of its use as a simple 3-letter combination for the purpose of promoting its Oxide Search web site.
Complainant has failed to show any of the four circumstances identified by the Policy as constituting bad faith. Respondent did not register the disputed domain name with intent to sell it to Complainant, to prevent Complainant from registering its trademark or to confuse consumers. Nor has Complainant proffered any evidence to support bad faith registration or use. There is not even any evidence that Respondent had knowledge of Complainant or its mark when it registered the disputed domain and Respondent, in Mr. AL-Ghanimís Declaration, denies having any such knowledge.
The common 3-letter term QNX is subject to substantial third party use unaffiliated with Complainant, as a Google search has shown. Thus the value of the domain name derives not exclusively from the "fame of the trademark" (Ultrafem, Inc. v. Warren R. Royal, NAF Case No. 97682) but from the fact that it is a 3-letter combination. Accordingly, no inference can be drawn that Respondent intended to attract consumers seeking Complainant, nor is it reasonable to conclude that users typing in this common 3-letter term are looking for Complainant.
There is nothing on the "mp3.tv" or "oxide" web sites to which users are directed that would create the impression that the site is affiliated with Complainant, so users would not be confused when they arrived there.
C: Complainantís Reply
Respondentís Google search in fact shows virtually no third party use of the disputed domain name unaffiliated with Complainant. Virtually all the references are to Complainant or its software product. The value of the disputed domain does derive exclusively from the fame of Complainantís QNX trademark and trade name. It is therefore reasonable to conclude that people seeking QNX will be seeking the Complainant or its products.
Contrary to Respondentís assertion that there is nothing on the mp3.tv or oxide web sites to which users are directed that would create the impression that the site is affiliated with Complainant, when users arrive at the "oxide.com" website and search on the site for qnx or qnx.info, the only reference that is returned is to an authorized distributor of Complainant, thereby suggesting some connection between Respondent and Complainant.
Respondent has not used the disputed domain name to promote its "mp3.tv" or "oxide.com" websites legitimately. There are no web pages revealed by common search engines that contain reference to the disputed domain name and to either "mp3.tv" or "oxide.com". The only way in which Respondent has promoted those websites is through the redirection of people seeking Complainant or its products.
6. Discussion and Findings
Paragraph 15(a) of the Rules requires the Panel to decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, these rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complainant bears the burden of showing:
- 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; and
- that the Respondent has no rights or legitimate interests in respect of the domain name; and
- that the domain name has been registered and is being used by the Respondent in bad faith.
A. Identical or Confusingly Similar
Although some of Complainantís trademark registrations are of the letters QNX in stylized form, others are of the letters alone as a word mark. Complainant has established that it has trademark rights in the word mark QNX. In accordance with long established practice under the Policy, the gTLD .info is to be disregarded when considering identity or confusing similarity. Clearly, the disputed domain name <qnx.info> is identical to Complainantís mark QNX.
Complainant has established this element of its case.
B. Rights or Legitimate Interests
Complainant has established that it has heavily promoted and advertised its QNX mark, particularly on the Internet, by means of which its software is extensively downloaded by Internauts. Although that mark is a combination of three letters, it does not appear to any of the members of the Panel to be a combination that has any inherent meaning. It is neither descriptive, suggestive nor generic. The Panel accepts Complainantís evidence in Reply (by way of sworn affidavit) that it is not the subject of substantial third party use, unaffiliated with Complainant. Accordingly, the Panel concludes that QNX is an arbitrary mark that is indeed distinctive of Complainantís software products.
Respondents are not associated with Complainant and were neither authorized to use Complainantís mark nor to register the disputed domain name.
These circumstances are sufficient to constitute a prima facie showing by Complainant of absence of rights or legitimate interest in the disputed domain name on the part of Respondents. The evidentiary burden therefore shifts to Respondents to show by concrete evidence that they do have rights or legitimate interests in that name: Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 and the cases there cited.
Paragraph 4(c) of the Policy sets out, without limitation, circumstances which, if proved, establish the registrantís rights or legitimate interests to the disputed domain name. The only such circumstance on which Respondents rely is specified in sub-paragraph 4(c)(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."
Even perfunctory preparations have been held to suffice for this purpose: Shirmax Retail Ltd. v. CES Marketing Group, Inc., eResolution Case No. AF-0104.
The Panel accepts that there is no requirement under the Policy that the meaning of a disputed domain have any correlation to the substance of the web site it promotes. However, where a mark is arbitrary, it would be unlikely that a respondent could develop a legitimate interest in using a domain name confusingly similar to Complainantís mark: Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151. A fortiori where the domain name is identical to an arbitrary mark.
Respondents argue that the use of the disputed domain name is legitimate because that name is a simple 3-letter combination, to which Complainant does not have exclusive rights around the world. This cannot be accepted in light of the Panelís finding that the domain name is identical to Complainantís arbitrary and distinctive mark, even though that mark is not registered in all countries of the world.
Respondent has offered no explanation as to how the particular combination QNX could possibly promote either its "mp3.tv" or "oxide.com" websites. There is nothing about that combination of letters which could lead a person wishing to reach Respondentsí websites to associate the combination with those sites. Since QNX is not a combination that has any inherent meaning, Respondentís assertion makes sense only in relation to people who have some reason to type in QNX. Complainant has shown that such people would comprise or at least include those who are seeking Complainant or its products. To that extent the promotion of Respondentsí websites involves use of Complainantís goodwill without its consent.
Respondents contend further that their use of the disputed domain name to promote the oxide.com web site demonstrates legitimacy. However, that use (and indeed use in connection with the "mp3.tv" website) cannot establish legitimacy under paragraph 4(c)(i) of the Policy because such use commenced after notice of the dispute and after formal notice of Complainantís rights in the QNX mark. Mr. AL-Ghanim, who registered the disputed domain name in his own name on October 7, 2001, received notice of this dispute when he received the protest letter from Complainantís counsel in late November 2001.
At that time the only evidence of use or demonstrable preparations to use the disputed domain name is that it resolved to a web page called liquid.tv. According to Complainant, this purported to be a "video communication tool". Mr. AL-Ghanim asserts the disputed domain name was acquired to promote his "mp3.tv" website and says: "In 2001, the primary company name was Liquid TV the primary focus of which was music. In 2002, the company name was changed to Future Media ArchitectsÖ"
The critical issue is therefore whether the use of the disputed domain name to resolve to the liquid.tv page in preparation for use to promote the "mp3.tv" website was Ďin connection with a bona fide offering of goods or servicesí. It has been held that use which intentionally trades on the fame of another cannot constitute a Ďbona fideí offering of goods or services: Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847. Accordingly the Panel must determine whether Mr. AL-Ghanim knew of Complainantís mark before he registered the disputed domain name. By majority, the Panel considers that he did, for the following reasons.
In his unsworn declaration Mr. AL-Ghanim says he acquired the disputed domain name in the same period of time as when he bought 500 other .info domains and that he had never heard of Complainant or its trademark when he acquired the disputed domain name. Respondents have not provided any evidence of these assertions. It is a surprising contention that Mr. AL-Ghanim registered a three-letter domain name without apparently knowing of any association which that combination of letters might have. Such an argument could not be accepted if those three letters were IBM or MTV, for example.
Accordingly, Respondents have not shown by concrete evidence that the disputed domain name was acquired pursuant to a strategy of registering numerous 3-letter domain names. This failure casts doubt on the assertion that Mr. AL-Ghanim was unaware of Complainant or its mark when he registered the disputed domain name.
In the absence of any evidence to support that unsworn assertion, and having regard to the arbitrary and distinctive nature of the QNX mark, to its extensive use via the Internet, available worldwide, including in Kuwait and the British Virgin Islands, to Complainantís registration of the .com, .net, .org and .biz versions of the domain name and to the absence of any apparent connection between the combination QNX and Respondentsí websites, the majority of the Panel concludes that, on balance, it is more likely than not that Mr. AL-Ghanim was aware of Complainant and its mark when he registered the disputed domain name and that he intended, when registering the disputed domain name, to trade on the reputation of Complainantís mark. In consequence, the majority is of the view that neither of the Respondents has a legitimate interest in the disputed domain name.
Complainant has established this element of its case.
The dissenting panelist, David Sorkin, joins in the Panel's conclusion on this issue, but does so solely on the basis that Respondents' use of the disputed domain name merely to redirect random web traffic to their site is insufficient to create rights or legitimate interests in the name, regardless of the timing of such use.
C. Registered and Used in Bad Faith
The four circumstances identified in paragraph 4(b) of the Policy as constituting evidence of both bad faith registration and bad faith use are illustrative, not exhaustive.
The Panel finds that Respondentsí use of the disputed domain name after formal notice of Complainantís rights, to attract Internauts to the "mp3.tv" and "oxide.com" websites, was bad faith use because it was done, for commercial gain, to attract people seeking Complainant or its products, by creating a likelihood of confusion with the QNX trademarks as to the source, sponsorship, affiliation or endorsement of Respondentsí sites. See paragraph 4(b)(iv) of the Policy.
Although use of the kind described in paragraph 4(b)(iv) of the Policy is to be taken as evidence of bad faith registration as well as evidence of bad faith use, this evidence is not necessarily conclusive: Passion Group Inc. v. Usearch, Inc., eResolution Case No. AF-0250, followed in Viz Communications, Inc., v. Redsun dba www.animerica.com and David Penava, WIPO Case No. D2000-0905. In this case Mr. AL-Ghanim was formally notified of Complainantís trademark rights after he had registered the disputed domain name. The subsequent bad faith use evident here does not therefore itself establish bad faith registration in this case.
The majority has concluded that, on balance, the disputed domain name was registered with knowledge of Complainantís mark and finds that, consequently, the disputed domain name was registered in bad faith. See SportSoft Golf, Inc. v. Hale Irwinís Golfersí Passport, NAF Case No. FA94956, in which a finding of bad faith was made where the respondent "knew or should have known" of the registration and use of the trademark prior to registering the domain name. Likewise Marriott International, Inc. v. John Marriot, NAF Case No. FA94737; Canada Inc. v. Sandro Ursino, eResolution Case No. AF-0211 and Centeon L.L.C./Aventis Behring L.L.C. v. Ebiotech.com, NAF Case No. FA95037.
The dissenting panelist, David Sorkin, is of the view that the disputed domain name was acquired for reasons entirely unrelated to Complainant and its mark, and therefore would find that Complainant has failed to prove bad faith registration.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <qnx.info> be transferred to Complainant.
Alan L. Limbury
Jacques A. Léger
David E. Sorkin
Dated: February 26, 2004