WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

On The Go Technologies Group v. ONTHEGO Internet Solutions Inc.

Case No. D2006-1060

 

1. The Parties

The Complainant is On The Go Technologies Group, of Concord, Ontario, Canada, represented by Pallett Valo LLP, Canada.

The Respondent is ONTHEGO Internet Solutions Inc., Robert King, Silver Spring, Maryland, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <onthego.com> is registered with Network Solutions, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 21, 2006. On August 22, 2006, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On August 23, Network Solutions, LLC transmitted by email 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 formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for 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 September 20, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October 17, 2006. The Response was filed with the Center on October 16, 2006.

The Center appointed The Honourable Neil Anthony Brown QC as the sole panelist in this matter on October 31, 2006. 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 is the business name of On the Go Healthcare, Inc. a company incorporated pursuant to the laws of the United States of America. Its registered office is in Delaware and it has a related company, On the Go Technologies Inc., incorporated pursuant to the laws of the province of Ontario, Canada. The American parent company was incorporated on July 21, 2000. The Complainant is a computer hardware and software reseller and engages in other activities in related fields such as multimedia and data management.

The Complainant is the owner of a registered Canadian trademark, registered number TMA567146 for ON THE GO in the form of a design and the full Mark Descriptive Reference of which is ON THE GO & DESIGN. The trademark was applied for on August 14, 2000 and registered on September 10, 2002.

The Respondent is a company with its office in Maryland in the United States of America. It engages in website design, dial-up and wireless Internet access and the provision of marketing services through the Internet.

It registered the disputed domain name on July 16, 1995.

 

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the contentious domain name <onthego.com> should no longer be registered with the Respondent but that it should be transferred to the Complainant.

The Complainant contends that this should be done because, within the meaning of paragraph 4 of the Policy, the domain name is identical to the Complainant’s registered trademark and confusingly similar to its common law trademark, that the Respondent has no rights or legitimate interests in the domain name and that the domain name has been registered and subsequently used in bad faith. The Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the domain name to the Complainant.

Identical or confusingly similar

In support of its case on the first of these three elements, the Complainant first relies on the registered Canadian ON THE GO & DESIGN trademark to which reference has already been made. However, it also claims that it has a common law or unregistered trademark in the mark ON THE GO TECHNOLOGIES GROUP because that name has become distinctively identified with the Complainant. It then says that it is self-evident that the domain name <onthego.com> is identical to the registered trademark and confusingly similar to the common law trademark.

Rights or legitimate interests

The Complainant then contends, to establish the second element, that the Respondent has no rights or interests in the domain name, that there is no evidence that the Respondent can bring itself within any of the provisions of paragraph 4(c) of the Policy, i.e. that there is no evidence that the Respondent, before notice of the dispute, used the domain name for offering goods and services in a business, no evidence that its name is “On the Go” and no evidence that the Respondent is making any legitimate non-commercial or fair use of the domain name. The Complainant also says that the domain name first resolved to a “page not found” error message and then to a “non-descript webpage”, that Internet searches for “On the Go Internet Solutions Inc.” do not lead to any relevant entities and that the Respondent is using an ineffective telephone number and other devices to conceal its true identity.

Accordingly, the Complainant claims that it has made out a prima facie case against the Respondent on this issue and that the Respondent is unable to rebut it.

Bad faith

Thirdly, the Complainant contends that the domain name was registered and is being used in bad faith.

It contends that the facts bring the case within the principles established in the well known decision Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, for the domain name had been inactive for nearly 10 years since its registration, the current website to which the domain name resolves is not a real or working website, but one designed to give the false impression that the Respondent is making legitimate use of the domain name and the Respondent has tried to conceal its true identity.

Moreover, it is claimed that the bad faith of the Respondent is also demonstrated by the fact that it registered the domain name to prevent the Complainant from reflecting its registered and unregistered trademarks in a corresponding domain name and that the case thus also comes within paragraph 4(b)(ii) of the Policy.

B. Respondent

Identical or confusingly similar

The Respondent contends, first, that the domain name is not identical to the Complainant’s registered trademark, as the mark is for ON THE GO & DESIGN and the domain name, apart from the gTLD suffix, uses only the expression “onthego”, so they cannot be identical. Nor can they be confusingly similar, because the disparity just referred to is so substantial that no reasonable observer would confuse the two.

In any event, the Respondent contends, in registering its domain name it has used the generic expression “onthego.com” that is popularly understood as referring to any number of different goods and services and could not be confused with those of the Complainant. This is particularly so when ON THE GO & DESIGN was registered by the Complainant as a trademark for a “Small plastic case for carrying personal items”, which is completely unrelated to any product or service being offered by the Respondent by means of the domain name.

In any event, on the evidence, the Complainant is identified not with ON THE GO, but with OTG Technologies, OTG Enterprise, OTG Healthcare and OTG Research.

Moreover, the Complainant applied for its Canadian trademark five years after the domain name was registered and it registered its business name in the USA, “On the Go Technologies Group”, ten years after the domain name was registered.

The Respondent also says that it is itself and not the Complainant that has common law rights to a trademark in the expression “on the go” for it, the Respondent, has used the expression in its business and has been known by that name in business since 1993.

Right or legitimate interests

The Respondent says that it does have a right and legitimate interest in the domain name because it has been using it in its business since 1994. It then adduces a series of exhibits showing, it contends, its use of the expression “on the go” and the disputed domain name in the active pursuit and conduct of its business.

Bad faith

The Respondent denies that it registered the domain name to prevent the Complainant’s trademark being reflected in a corresponding domain name, to disrupt the Complainant’s business or to mislead consumers as to any association between the trademark and the Respondent’s website. Thus, the Respondent denies being caught by any of the provisions of paragraph 4(b) of the Policy.

It also denies being a “cyber squatter” or of “warehousing” domain names and says that some of the domain names it has registered and to which the Complainant has drawn attention are actually in current use and that legitimate use is therefore being made of them.

It also denies any attempt to conceal its identity.

The Respondent finally says that the Complainant’s own conduct is such that it is really harassing the Respondent to give up a domain name it has legitimately registered and used and that the Panel should therefore make a finding of Reverse Domain Name Hijacking against the Complainant.

 

6. Discussion and Findings

Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

In doing so, the onus is on the Complainant to make out its case and both the Policy and many UDRP decisions have made it clear that a Complainant must show that all three elements of the Policy have been made out before any order can be made to cancel or transfer the domain name.

The Panel therefore turns to discuss the various issues that arise for decision on the evidence.

For the Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities, that:

A. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

B. The Respondent has no rights or legitimate interests in respect of the domain name; and

C. The domain name has been registered and is being used in bad faith.

The Panel will deal with each of these requirements in turn.

A. Identical or Confusingly Similar

The Complainant’s case is that the disputed domain name is identical to its Canadian Trademark registered number TMA567146 for ON THE GO & DESIGN, registered with the Canadian Intellectual Property Office on September 10, 2002.

The Respondent has replied that the Complaint should be dismissed because the Complainant applied to have registered as a trademark and succeeded in doing so, not ON THE GO, but ON THE GO & DESIGN and that when a comparison is made between the domain name and the latter description, the actual description of the trademark, it is plain that the two are not identical.

Making a comparison between a domain name and a pictorial or figurative trademark can sometimes be very difficult. The present case is one such case and it is not a clear one, for the official description of the trademark on the Canadian register is ON THE GO & DESIGN and the Complainant has not claimed that it has a trademark in ON THE GO simpliciter.

Making the comparison is also difficult because opinions differ as to whether the comparison should be between the domain name and either the words that are used in the trademark or the entire graphic representation including the words as they are presented in the trademark. That issue was considered recently in Deutsche Post AG v. NJDomains, WIPO Case No. D2006-0001, where the panel had to compare the domain name <post.com> with a trademark consisting of the word “post” together with a dominating representation of a post horn. The panel concluded: “The better view, however, is to look at the overall impression or idea created respectively by the mark and the domain name, the approach that was taken recently in Yell Ltd. v. Ultimate Search, WIPO Case No. D2005-0091”.

Applying that test, the overall impression or idea created by the trademark in the present case is that it is a trademark for the words ON THE GO, for they are the only words used in the trademark, albeit that the words are not presented in the normal script but are presented in the form of a design. That being so, the appropriate comparison in this case is between the words themselves and the domain name. When that comparison is made, it is seen that the two are identical.

The other issue that arises in the present case is that the trademark was registered long after the domain name was registered.

Nevertheless, the Complainant has shown that it has a trademark at the time the Complaint was lodged and that fact is sufficient to establish its standing for the purposes of paragraph 4(a)(i) of the Policy. Although the domain name was registered on July 16, 1995, and the trademark was not registered until September 10, 2002, it has been held in many UDRP decisions that it is not necessary for the trademark to have been registered before the domain name, although that fact may, of course, become relevant when it is considered whether a respondent could have registered a domain name in bad faith at a time when no trademark in the same or a similar name had been registered. See, on this issue, the discussion and cases referred to in the useful WIPO Overview of WIPO Panel Views on Selected UDRP Questions1, where it is said:

“1.4 Does the complainant have UDRP-relevant trademark rights in a mark that was registered, or in which the complainant acquired unregistered rights, after the disputed domain name was registered?”

Consensus view: Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity. The UDRP makes no specific reference to the date of which the owner of the trade or service mark acquired rights. However it can be difficult to prove that the domain name was registered in bad faith, as it is difficult to show that the domain name was registered with a future trademark in mind.

Relevant decisions:

Digital Vision, Ltd.. v. Advanced Chemill Systems, WIPO Case No. D2001-0827, Denied; AB Svenska Spel v. Andrey Zacharov, WIPO Case No. D2003-0527, Transfer; Iogen Corporation v. IOGEN, WIPO Case No. D2003-0544, Denied; MADRID 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598 among others, Transfer.

The Complainant in this use therefore has a “right” in the registered trademark for the purposes of paragraph 4(a)(i) of the Policy and, as the domain name uses the only words that appear in the trademark, although in the form of a design, the domain name can be said to be identical to the trademark.

The Complainant also claims that it has an unregistered or common law trademark in the words “On The Go Technologies Group” and that the domain name is confusingly similar to it.

It is not necessary to decide if this is so however, because of the Panel’s finding with respect to the registered trademark. The Panel therefore fins that the Complainant has succeeded in establishing the first of the three criteria that it must make out.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii), the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the domain name.

But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

“(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

Thus, if the Respondent proves any of these elements or indeed anything else that shows it has a right or interest in the domain name, the Complainant will have failed to discharge its onus and the complaint will fail.

Although it does not put it in these specific terms, it is clear that the Respondent relies in substance on paragraph 4(c)(i) of the Policy. It says, in effect, that before it received any notice of the dispute, it was using the domain name in connection with a bona fide offering of goods or services, as it was using the domain name in its business.

It actually goes further than that and says it has been using the domain name in its business since July 16, 1995, when it was registered and that it has also been actively using the related business designations, ON THE GO, ON THE GO Internet Solutions Inc., ON THE GO Information Network and various ON THE GO logos in its business since 1994.

In support of these propositions, the Respondent has annexed to the Response a large number of exhibits consisting of business records, advertisements, invoices and other documents. Together, they make a strong case and the Panel has no hesitation in concluding that they put the case squarely within the provisions of paragraph 4(c)(i) of the Policy and also that in a general sense they show that the Respondent has a right or legitimate interest in the domain name.

All in all, there are about 32 such pieces of evidence. The Panel will not of course refer to all of them, but will refer to some of them to show the areas they cover and will make some comments on their probative value.

In general they consist of sales flyers, copies of advertisements, notes relating to the promotion of the Respondent’s website “www.onthego.com”, packaging labels for delivery of “onthego.com” Internet software and tools, advertisements used as handbills at trade shows, documents relating to services offered through the domain name <onthego.com>, records of dealings with the media to promote “onthego.com” and its services, an Internet access service agreement offered by On The Go Internet Solutions, Inc. and photocopies of photographs showing representatives of the Respondent working at trade shows. The services and products offered by the Respondent by means of these communications and by using the domain name, are clearly being offered at advertised prices and in a bona fide manner in the course of trade and commerce.

Some of the exhibits that deserve particular mention are as follows.

Annex C to the Response is a copy of an article from The Washington Post newspaper in 1996.This is an article about Mr. Robert King on behalf of the Respondent and his work in developing a website for businesses so that they can solicit business on-line. The article says that “On the Go” is the designer, Web wizard and marketer for these businesses, which are seen as notional tenants of their space in an Internet mall. The article provides the web address “www.onthego.com” and invites customers as an experiment to order a pizza on-line from Little Caesar, apparently one of the Respondent’s early clients.

Annex O to the Response is a photocopy of a sales flyer for “www.prestopages.com”, a service created for “onthego.com” which offers home pages. The Panel notes that it is a service offered with the contact address “www.onthego.com” and that the advertisement declares that the presentation is copyrighted from 1996, which is certainly well prior to any notice that could have been given to the Respondent of the dispute, given that the Complainant’s parent company was not incorporated until July 21, 2000, and the trademark was not applied for until August 14, 2000.

Annex R to the Response is a copy of an advertisement for a special holiday Internet access offer through “onthego.com” which expired on December 24, 1996, and which is clearly using the domain name for a bona fide offering of services.

Annex U to the Response is a copy of a cheque payable to On The Go Internet Solutions dated June 27, 1996.

Annex 3 to the Response which is a confirmation of a newspaper advertisement placed for ON THE GO on October 29, 1996.

Annex 15 to the Response contains evidence that Panels frequently regret not being provided in cases such as this, but which is provided in the present case, namely photographs of representatives of the Respondent actually working in premises promoting the goods and services of the Respondent.

Annex 20 to the Response consists of copies of web pages and directories that refer to the website “www.onthego.com”.

The exhibits do not present a perfect picture, as most of the exhibits relate to earlier years, around 1996 and 1997. The Panel also notes that the domain name is not in active use at the present, except for what the Complainant calls “a non-descript webpage”’

On the other hand, the Respondent has said in the Response that it “...would like to make clear to the Panel that prior to receiving notice from the Complainant of the dispute the Respondent was actively using the domain name <onthego.com> and can be supported by the evidence supplied in this Response”. The Respondent has certified that this is complete and accurate and must be taken to know what it means. The Panel is therefore acting on the faith of that statement being both complete and accurate.

Moreover, paragraph 4(c)(i) of the Policy does not require the Respondent to show evidence of a continuous and uninterrupted use of the domain name since the day it was registered, but rather that it used the domain name for a bona fide offering of goods and services at some time before it received notice of the dispute.

The evidence is that the Complainant’s solicitors sent a letter of demand to the Respondent on June 7, 2006, which elicited a reply from the Respondent. It must therefore be taken that the existence of the dispute was brought to the Respondent’s notice by that letter.

The sole question for the Panel must therefore be if there is evidence that satisfies the Panel on the balance of probabilities that, at some time prior to that date, the Respondent used the domain name for the above purpose. The Panel concludes that there is a great deal of evidence that it did, even if the Respondent’s activities have not been as vigorous in recent years as they were in 1996 and 1997.

The Panel therefore concludes that the Respondent has shown by its evidence that it used the domain name legitimately in business, that it traded under that name and advertised under it for business and that it also offered its services and products for sale under that name and by inviting the public to communicate with it through the website to which the domain name resolved and by using email addresses at that address. Thus, the Respondent has brought itself within the provisions of paragraph 4(c)(i) of the Policy.

The evidence also shows that this is one of the infrequent cases where the Respondent has actually been known by the domain name. That is so because, although the Respondent has used its full corporate name where necessary, as for example in its Internet service agreement, it has actively promoted itself in the public domain not by that formal name but by the name “on the go”. Thus, for example, its advertisements use the name “on the go” and Annex T to the Response, the draft of a radio advertisement, although referring to the company name, uses expressions like “ON THE GO offers…” and “ …call ON THE GO at …”. When used in advertisements, the words and logo ON THE GO have also been habitually accompanied by the endorsement “TM”, thus further cementing the notion that ON THE GO is being presented to the world at large as the trade name of the Respondent.

The Respondent has thus also brought itself within the provisions of paragraph 4(c)(ii) of the Policy.

By both of these criteria, the Respondent has shown that it has rights and legitimate interests in the domain name.

C. Registered and Used in Bad Faith

As the Panel has found that the Respondent has a right or legitimate interest in the domain name and as the Complaint must therefore fail, it is not necessary to say anything about the third requirement of bad faith.

Reverse Domain Name Hijacking

The Panel’s view is that, on balance, this is not an appropriate case for making a finding of reverse domain name hijacking. It might be said that the Complainant should have known that the fact that the domain name was registered many years before the trademark and even prior to the Complainant’s parent company being incorporated, would make it difficult to prove that the Respondent had no rights or legitimate interests in the domain name and even more difficult to prove that the registration and use of the domain name were actuated by bad faith.

That is true, but such difficulties do not necessarily mean that the Complainant brought the Complaint in bad faith. The facts on which the Respondent has been successful were not known until the Response was delivered and, even then, the Complainant was probably entitled to proceed and see what a panelist made of the Respondent’s evidence. In all the circumstances, therefore, the Panel does not believe that this is an appropriate case to make a finding of Reverse Domain Name Hijacking.

 

7. Decision

For all the foregoing reasons, the Complaint is denied.


The Honourable Neil Anthony Brown QC
Sole Panelist

Dated: November 14, 2006


1 “http://www.wipo.int/amc/en/domains/search/overview/index.html”