WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Investone Retirement Specialists, Inc. v. Motohisa Ohno
Case No. D2005-0643
1. The Parties
The Complainant is Investone Retirement Specialists, Inc., Gaithersburg, Maryland, United States of America and is represented by McDonnell Boehnen Hulbert and Berghoff LLP, Chicago, Illinois, United States of America.
The Respondent is Motoshisa Ohno, Tokyo, Japan.
2. The Domain Name and Registrar
The disputed domain name is <investone.com> (“the Domain Name”) and is registered with Enom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration Mediation Center (the “Center”) on June 21, 2005. On June 21, 2005, the Center transmitted by email to Enom Inc. a request for registrar verification in connection with the Domain Name. On June 21, 2005, Enom Inc. provided to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the following requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for the Uniform Domain Name Dispute Resolution Policy (the “Rules”) and the WIPO Supplemental Rules for the Uniform Domain Name Dispute Resolution Policy (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 on July 7, 2005. In accordance with the Rules, paragraph 5(a), the due date for a Response was July 27, 2005. The Response was filed with the Center on July 4, 2005.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on July 19, 2005. The Panel finds that it was properly constituted. 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.
4. Factual Background
The Complainant was incorporated under the laws of the State of Maryland, United States of America on February 21, 2003 as Investone of America Inc. It provides its financial planning services with a focus on retirement issues such as life insurance, long term care planning annuities and estate planning. In the spring and the summer of 2003, the Complainant began advertising its INVESTONE services by distributing materials at eight workshops in Maryland and Virginia. As of July 21, 2004, the Complainant managed over $100 million (USD) in assets and was using its INVESTONE tradename and trademark in connection in the management of those assets. On April 15, 2004, the Complainant changed its name from “Investone of America Inc.” to “Investone Retirement Specialists Inc.”(Annex 3 to the Complaint.).
The Respondent is an individual residing in Tokyo, Japan. On August 23, 2003, the Respondent registered the Domain Name. The name had been previously registered by a third party and had expired. Respondent placed the Domain Name up for auction via the “www.afternic.com” website. In total, Respondent has over 900 domain names listed at auction, including the impugned Domain Name.
In November, 2003, the Complainant filed a trademark application for the word mark INVESTONE in the United States Patent Trademark Office. On May 31, 2005, the INVESTONE mark was registered.
In March 2005, Complainant’s representative made a series of bids to purchase the Domain Name. Eventually, on June 8, 2005, the Complainant contacted the Respondent in respect of the auction and offered to purchase the Domain Name for $500. Over the course of the following weeks, negotiations continued between the Complainant and the Respondent. These negotiations included the reduction of the reserve price and placement of follow-up bids by the Complainant in various amounts, up to and eventually exceeding $2,000. The sale of the domain name was never completed as the Complainant chose to commence these proceedings.
5. Parties’ Contentions
The Complainant contends that:
(a) the domain name INVESTONE.COM is identical to its trademark INVESTONE and that in addition to its registered rights, the Complainant has prior common law rights;
(b) the Respondent has no right or legitimate interest in respect of the Domain Name in that the domain name has been parked for the sole purpose of offering it for sale and obtaining revenue by redirecting customers to the competitors of the Complainant; and
(c) the Domain Name has been registered and is being used in bad faith in that it is very likely, given the registration of the Domain Name only months after the Complainant started using its trademark, that the Respondent registered the Domain Name based on online corporate registration information; that the Respondent registered the Domain Name primarily for the purpose of selling it to the Complainant for an excessive amount; that the Respondent has engaged in a pattern of registering domain names to prevent the rightful owner from reflecting its mark in the corresponding domain name; that the Respondent’s domain name has included links to the Complainant’s competitors and thereby has created a likelihood of confusion between the Complainant’s mark and the Complainant’s competitors’ websites; and the Complainant relies on other indicia of bad faith including the Respondent’s pattern of bad faith registrations and domain name auctioning.
The Respondent does not deny the allegation that the Domain Name is identical to the Complainant’s INVESTONE trademark. The Respondent however positively states that he had no chance to “see/hear/know” of the Complainant’s business prior to registration of the Domain Name. The Respondent contends that the trademark INVESTONE is simply the combination of two generic terms “invest” and “one”, citing various other websites and unrelated businesses who use “investone” and other descriptive names followed by the word “one” including “www.mortgageone.com”, “www.financialone.com”, “www.computerone.com” and “www.gameone.com”.
With respect to bad faith, the Respondent contends he was not aware of the Complainant, that the auctioning of domain names is not always indicative of bad faith; that the Complainant willingly participated in the auction of the Domain Name; and that the Respondent’s registered domain names (although numerous) were chosen in a manner so as to avoid the infringement of anyone’s trademark rights.
The Respondent admits that during the process of parking the website at “www.domainspa.com” there were links to investment websites other than those of the Complainant.
The Respondent also contends that the Complainant is attempting to reverse hijack its domain name.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration. The subject matter scope of the administrative proceedings by which such disputes may be resolved is carefully circumscribed, reflecting a cautious approach to a form of dispute resolution that was designed to address a rapidly evolving technological environment. (Educational Testing Service v. TOEFL, WIPO Case No. D2000-0044). This case raises the issue of whether the act of speculating in domain names, in these particular circumstances, is an abusive practice which can be remedied under the Policy.
There are three essential conditions which must be established in order for a Complaint to succeed, under paragraph 4(a) of the Policy:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which Complainants have rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
(A) Identical or Confusingly Similar
Through its trade-mark registration, the Complainant has met the burden of showing that it has rights in the INVESTONE trademark. The Respondent admits that the Domain Name is identical with the Complainant’s INVESTONE trademark. Thus, the complainant has satisfied the first of the three elements necessary to sustain a complaint.
(B) No Rights or Legitimate Interest
In this proceeding, the Complainant is required to make out a prima facie case that the Respondent has no rights or legitimate interest in the Domain Name. Here, the Complainant has shown that at the time of the filing of the Complaint, the Respondent was not known as INVESTONE and was not making use of the Domain Name commercially or otherwise, except for the act of putting it up for auction. In addition, it is clear that there was no license granted in favour of the Respondent by the Complainant or any other party with respect to the INVESTONE trademark. The Respondent has not offered any evidence that would demonstrate his rights or legitimate interest to the Domain Name pursuant to paragraph 4(c)(i),(ii), or (iii) under the Policy.
Accordingly, the Panel finds that the Respondent has failed to answer the Complainant’s prima facie case, and that the Complainant has therefore satisfied the second element in this proceeding.
(C) Registered and Used in Bad Faith
Subparagraph 4(b) of the Policy states that any of the following circumstances in particular but without limitation shall be considered evidence that the registration or use of the domain name is in bad faith.
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.
(i) Registered Primarily for Selling to Complainant
The Respondent admitted that his auction of the Domain Name was directed at the highest bid regardless of who might place it. However, the act of auctioning a domain name on a publicly available website to any willing purchaser does not always constitute a bad faith offer to sell the domain name. As noted in Educational Testing Service v. TOEFL, WIPO Case No. D2000-0044, “if the drafters of paragraph 4(b)(i) the Policy had intended to broadly cover offers to any and all potential purchasers as evidence of bad faith, it would have been a simple matter to refer to all offers to sell the domain name, and not offers to specific parties or classes of parties.” It is clear that relief is predicated on the fact that the Respondent must be targeting the Complainant, directly or indirectly. The Policy does not contain any per se prohibition against trafficking in domain names. The mere fact that a Respondent may own a large number of domain names for purposes of resale does not constitute an abusive practice. The particular circumstances must be examined for each name in question, to determine whether the registration and use of the name run afoul of the bad faith provisions.
On the basis of the evidence filed, the Panel finds that the reputation of the Complainant (at the material time) was very limited, extending only to individuals who attended its eight seminars in Maryland and Virginia in the first half of 2003. The Panel is also prepared to accept that the Respondent did not know of the Complainant, given that the means by which the Complainant’s name had become known were so limited in terms of media, advertising and geography. The Complainant’s reliance on its local seminars and corporate name registration is ultimately weak and unconvincing. Given that the Respondent resides in Japan, the Panel believes he was more likely to know of other users of INVESTONE, which co-exist prominently in other jurisdictions such as Australia and other parts of Asia. Even on the register of the USPTO, there is a co-existing registration for INVEST ONE investment software, which predated the Complainant’s registration by more than 14 years, and which has a very significant commercial internet presence and profile, far exceeding that of the Complainant. In all the circumstances, the Panel finds that the Respondent did not acquire the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant.
(ii) Registered in order to prevent the owner
The Complainant contends that the Respondent’s 900 domain names up for auction, including domain names specifically highlighted by the Complainant, establish a pattern of abusive bad faith conduct. The Panel is mindful that similar fact evidence-- in the nature of an alleged “pattern of conduct”-- must be viewed with a high degree of scrutiny. In the end, there is only one example to which the Complainant can point, which carries any evidentiary weight. The Respondent did register the domain name <peironeimports.com>, and was held to have done so in bad faith, (See: Pier 1 Imports, Inc. v. Motohisa Ohno, WIPO Case No. D2004-0623). In that proceeding, the indicia of misappropriation were clear. PIER ONE IMPORTS is a famous mark, and the combination of the three elements together in the domain name made it obvious that the Respondent had acted in bad faith. However, a single egregious example does not establish a pattern of conduct.
A review of the domain names registered and up for auction by the Respondent reveals a pattern of registering names comprised of attractive ordinary single words or multiple words combined in attractive ways. The Panel has reviewed the full list, and is not prepared to find a pattern of abusive registrations. The vast majority of the names are innocuous: “www.Jollity.com”; “www.Melancholic.com”; “www.BigHoliday.com”; “www.HeartRhythm.com”; “www.Saveloan.com”; “www.BadTie.com”; “www.WebResearch.com”; “www.LegalAudit.com”. Complainant has failed to bring forward convincing evidence that any of the 900 domain names at auction are identical to registered and/or recognizable trademarks. The eight examples cited by the Complainant fall short of the standard which ought to be applied to this sort of evidence, in that none of the cited domains are obvious abuses. Respondent has offered an explanation for each name, some more convincing than others, but all sufficient to raise a doubt as to whether there is an objectionable pattern of conduct made out in the evidence. The Panel would have required significant additional evidence to be satisfied on this point, particularly where the names in question are relatively obscure from a trademark perspective (e.g. Gehring.net; Winchmorehill.com.) The fact that the Respondent has a huge portfolio of such names, which he obviously intends not to use, but to sell, is not in itself probative of bad faith. Domain names may be registered simply because of their value as descriptive names. [Vertical Computer systems, Inc. v. Registrant of “pointmail.com”, WIPO Case No.: D2001-0006].
(iii) Registered to Create Confusion
The Respondent admits that he parked the Domain Name at “www.domainspa.com” where there was redirection to other investment websites. Complainant provided at Annex 9 to its Complaint a cache printout of the state of the “www.investone.com” website prior to being removed from “www.domainspa.com”. This cache page provides a list of what appears to be various links to various websites including investment links but also health and beauty links, gifts and vacation links. Although the Complainant states that there was redirection to websites of its competitors AmeriTrade and ScottTrade, it provides no evidence thereof.
Proof of bad faith under this heading requires that the Respondent intentionally attempted to attract business to his site by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the web site or related services. In all the circumstances, the Panel is not prepared to find that there was such an intentional course of conduct or that a likelihood of confusion has been created, although the Domain Name and Trademark are admittedly identical.
The Panel finds that the Complainant’s mark is relatively weak and non-distinctive at this point, being comprised of the generic terms “invest” and “one”. Respondent has correctly identified many third party users of “investone” (confirmed by the Panel’s own search) including use by Australia Pty Ltd, use by businesses in Japan and Brazil apparently in connection with financial services, and use by Sunguard Investments Ventures Inc. (“Sunguard”). Sunguard’s profile for its version of Investone products far exceeds the internet presence of the Complainant.
The Respondent’s general intent is to register attractive domain names that could be of interest to someone else, to the point where that person is willing to purchase the domain name from the Respondent, at a mutually agreeable price. In this Panel’s view a finding of bad faith under the Policy, in general, requires some evidence that the Respondent knowingly registered and used a domain name which was identical or similar to the Complainant’s mark. In other words, it will not be sufficient to demonstrate that the Respondent’s conduct was directed to a mark in the abstract; rather, there must be a nexus between the mark and the Complainant, which is known to the Respondent, before a finding of intentional misappropriation of the rights of that brand owner can be made. Where there are many users of a mark, none of whom is notably more prominent than another, the onus on the Complainant to demonstrate intentional targeting of its mark and business will be difficult to satisfy. Paragraph 4(b) of the policy focuses primarily on the Respondent’s intent or purpose in adopting a particular domain name. For example, when paragraph 4(b)(ii) refers to the trademark owner, it contemplates that the trademark owner must be the Complainant, and the bad faith must be specifically targeted against the Complainant.
Given the above considerations, the Panel is not prepared to find that the Respondent intentionally attempted to attract users by creating the required likelihood of confusion with the Complainant’s mark. The Panel makes this finding solely on the basis of the evidence available in this proceeding, and recognizes that the Complainant may have other remedies available under relevant national law, all of which is outside the jurisdiction of this Panel to determine.
7. Reverse Domain Hijacking
Respondent alleges that Complainant has engaged in reverse domain name hijacking. The Panel is not prepared to find that the Complaint was initiated in bad faith, or with any improper intention to harass the Respondent. Rather, the Panel takes the view that the Complainant was fully within its rights to commence this proceeding.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Complaint be denied. The Panel also denies Respondent’s request for a finding of reverse domain name hijacking.
Christopher J. Pibus
Date: August 2, 2005