WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Wexford Group International v. Wxford Group, Inc./ James Weatherford
Case No. D2007-1680
1. The Parties
Complainant is The Wexford Group International, Vienna, Virginia, United States of America, represented by the law firm Reed Smith LLP, United States of America.
Respondent is Wxford Group, Inc./ James Weatherford, Valrico, Florida, United States of America; represented by Capitol Patent & Trademark Law Firm PLLC, United States of America.
2. The Domain Name and Registrar
The disputed domain name <wxfordgroup.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 15, 2007. On November 15, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue, and eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
In response to notifications by the Center that the Complaint was administratively deficient, Complainant submitted amendments to the Complaint on November 27, 2007 and December 5, 2007. The Center verified that the Complaint together with the amendments to 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 December 11, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 31, 2007. The Response was filed with the Center on December 29, 2007.
The Center appointed Richard G. Lyon as the sole panelist in this matter on January 17, 2008. The Panel finds that it was properly constituted and has jurisdiction over this proceeding. The Panel has submitted his 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
Complainant provides consulting services in the field of national security in the United States of America. Since 1997 it has done so under the name The Wexford Group International. Complainant holds two service marks that include the words THE WEXFORD GROUP INTERNATIONAL registered with the United States Patent and Trademark Office (USPTO). Complainant applied for these marks in 2005 and registration occurred in April 2007.
Respondent was established as a Delaware (United States of America) corporation in 2007 by James Weatherford. Respondent registered the disputed domain name in February 2007. At this address Respondent offers “threat management” (security) services such as protection teams for personnel and vehicles, asset protection, travel and escort security, premises security, and crisis management. On September 4, 2007, Respondent applied in the USPTO for a service mark for the term Wxford Group, Inc. This application is currently pending.
5. Parties’ Contentions
Complainant contends as follows:
Complainant has enforceable rights in its two service marks that include the words WEXFORD GROUP by reason of their registration with the USPTO and Complainant’s continuous use of them in commerce for more than a decade. The disputed domain name differs from the operative portion of Complainant’s mark only by deletion of the “e” in Wexford and is thus confusingly similar to and likely to cause confusion with Complainant’s marks.
Complainant’s rights in its federally registered marks entitle it to exclude anyone from use in the United States of America of confusingly similar marks for competing goods or services. Complainant has never authorized Respondent to use its marks.
According to Complainant, Respondent’s services are “nearly identical to the services offered by Complainant” and are being made without authorization. The intentional similarity between the disputed domain name and Complainant’s marks is evidence of use and registration in bad faith. Moreover bad faith “should be presumed . . . by virtue of the affirmative duty of Respondent to conduct trademark clearance activities before adopting” the disputed domain name. Had Respondent undertaken such a search, it would have come across Complainant’s marks. Complainant’s use is commercial and not legitimate under the Policy “and may likely serve to tarnish” Complainant’s marks.
Respondent contends as follows:
The disputed domain name is not identical to Complainant’s trademarks and was selected to reflect Respondent’s corporate name. Respondent selected the name as a play on the name of its principal, James Weatherford. (See next paragraph).
Mr. Weatherford selected “Wxford Group” because Wx in an acronym often used for “weather” in the military and aviation industries. If using that acronym “Weatherford” becomes “Wxford.” Respondent submits a number of dictionary or dictionary and trade manual references that use this abbreviation in a number of contexts such as sigwx = significant weather; wx = weather; and various weather radio channels are designated beginning with the call letters WX. Respondent also provides a declaration from Mr. Weatherford in which he states on penalty of perjury that he has occasionally used Wxford as an abbreviation for his surname for twenty years, including two email addresses in which the addressee is jlwxford. Because of this Mr. Weatherford and Respondent come within paragraph 4(c)(ii) of the Policy in that Mr. Weatherford as an individual “has[s] been commonly known” by the term Wxford. He also comes within paragraph 4(c)(i) by virtue of his using his corporate name for a bona fide offering of goods or services.
All use of the disputed domain name has been in good faith because of the legitimate interests in respect to the disputed domain name, as set forth in the preceding paragraph. Respondent has never owned another domain name, has never sought to sell the disputed domain name to Complainant or anyone else, and Complainant has made no showing that Respondent selected the disputed domain name to trade off the good will of Complainant’s marks or otherwise improperly to compete.
Respondent further asserts that his legitimate interest in the use of the domain name is obvious enough so that the Complaint “is a clear attempt at reverse domain name hijacking.”
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel’s analysis of whether the disputed domain name is confusingly similar to Complainant’s marks is limited to its comparison of the appearance, spelling, sound, and other objective characteristics of the domain name and mark, without regard to the content of the site.1 Under this standard Complainant has succeeded in establishing confusing similarity. While this is clearly not a typosquatting case, ordinarily deletion of a single letter does not obviate confusing similarity between the mark and domain name.
B. Rights or Legitimate Interests; Registered and Used in Bad Faith
Analysis under the other two criteria of the Policy, paragraphs 4(a)(ii) and 4(a)(iii), is not so objective and not so easy to resolve. On one hand, Complainant had been in business, offering services somewhat similar to Respondent’s, for many years prior to Respondent’s commencement of operations last year. Though Complainant advances no charge of typosquatting the effect is the same as if Respondent had intentionally dropped a letter from the dominant feature of Complainant’s mark in order to divert Internet users who inadvertently dropped the same letter in a browser search – diversion of customers or possible customers. There is concededly an overlap in the parties’ target audiences for their respective services, a factor that weighs in Complainant’s favor.
But Respondent has asserted and supported with evidence an explanation that is credible on its face for selecting Wxford Group that, should the Panel accept its evidence, would bring Respondent within two express safe harbors of the Policy. Respondent’s evidence is not on its face obviously contrived or pretextual. The content of Respondent’s website has none of the earmarks of cybersquatting; there is no apparent imitation and Respondent uses that site for a genuine business that is not dependent on the domain name. Complainant does not allege otherwise. There has been no attempt to put the disputed domain name up for sale, to the mark owner or anyone else. Respondent or Mr. Weatherford has never been a party to a Policy proceeding. Respondent registered the disputed domain name several months prior to Complainant’s trademark registration (though not to its applications for registration).
The Panel will not “presume” illegitimate use or bad faith based solely on the similarity of the parties’ respective business names. Such a “presumption” (“inference” would be a more accurate word) might be appropriate in a clearly intentioned typosquatting case, but not here. Cybersquatting, the practice the Policy was implemented to combat, requires a showing or inference that a respondent selected the disputed domain name to take advantage of another’s mark, and the Policy and the Rules require that this be proven. Without more evidence than is normally available in the expedited, non-confrontational procedures under the Policy and Rules the Panel is incapable of determining whether Respondent intentionally set up shop to trade off Complainant’s marks.
This proceeding bears a close resemblance to eCrush.com, Inc. v. Cox, Davis & Simpsom, LLC, Mr. Ken Cox, Mr. Brian Simpson, Mr. Ron Davis, WIPO Case No. D2004-0552, in which the Panel noted:
“Neither Complainant’s ‘constructive notice’ theory nor Respondents’ failure to conduct a trademark search creates an absolute and inflexible rule establishing illegitimacy or bad faith. . . . [T]his is not a case in which Complainant’s version is the only credible conclusion. Respondents are not frequent cybersquatters, have not provided false contact information, have not warehoused the Disputed Domain Name, have not tried to sell the Disputed Domain Name to the mark owner, and have appeared in this proceeding with evidence of what is at least a reasonable explanation.
Complainant bears the burden of proof on each element of the Policy. In a close case, the panel should lean toward the Respondents’ view of things. [Citations omitted.] On the record in this proceeding the Panel finds that Complainant has not met its evidentiary burden under paragraph 4(a) of the Policy.”
The Panel makes a similar finding, for similar reasons, in this matter. 2 As in the eCrush.com case, Complainant is not without a remedy or a forum to pursue its charge that Respondent appropriated its good name. It may oppose Respondent’s pending application in the USPTO on this basis. Also Respondent is identifiable and subject to court proceedings for trademark infringement in the United States of America. Either such forum is preferable to a Policy proceeding in a case such as this, as resolution of crucial questions depends on development of evidence and cross-examination. Nothing in the Panel’s decision binds either party before the USPTO or in litigation, where the substantive legal standards may differ as well.
For all the foregoing reasons, the Complaint is denied.
Richard G. Lyon
Dated: January 23, 2008
1 Sharman License Holdings, Ltd. v. Greggg Smitherman, WIPO Case No. D2004-0375; see also, WIPO Overview, ¶1.2 and cases cited.
2 This certainly was not a frivolous Complaint, however, and the Panel finds no basis for a finding of Reverse Domain Name Hijacking.