WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Align Technology, Inc v. Web Reg/ Rarenames/ Aligntechnology.Com
Case No. D2008-0103
1. The Parties
Complainant is Align Technology, Inc, Santa Clara, California, United States of America, represented by Melbourne IT CBS Ltd., United Kingdom of Great Britain and Northern Ireland.
Respondent is Web Reg/ Rarenames/ Aligntechnology.Com, Washington, DC, of United States of America, represented by Erik S. Zilinek, United States of America.
2. The Domain Name and Registrar
The disputed domain name <aligntechnology.com> is registered with Registration Technologies.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 24, 2008. On January 24, 2008, the Center transmitted by email to Registration Technologies a request for registrar verification in connection with the domain name at issue. After several reminders, on February 8, 2008, Registration Technologies transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on February 13, 2008. The Center verified that the Complaint together with the amendment 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 Respondent of the Complaint, and the proceedings commenced on February 14, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 5, 2008. The Response was filed with the Center on March 6, 2008.
The Center appointed Richard G. Lyon as the sole panelist in this matter on March 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.
On March 17, 2008, Complainant filed a supplemental pleading with the Center. Respondent replied with a supplemental filing of its own on March 19, 2008. Following its customary practice the Center referred the proposed supplemental filings to the Panel. These filings and the Panel’s determination on their admissibility are discussed in Section 6 below.
4. Factual Background
Complainant makes and sells medical devices used in orthodontics. Its principal website is “www.aligntech.com”; at this website, but nowhere in the Complaint, it is indicated that in its last fiscal year Complainant had annual sales in excess of US$250 million. Complainant holds a trademark and a service mark for ALIGN. Both were applied for in April 2004 in the United States Patent & Trademark Office (USPTO), based upon a first use in commerce of September 1999. The service mark was registered on the principal register of the USPTO in December 2006, the trademark in July 2007. Complainant has registered marks or pending applications in trademark offices in 23 other countries. Three of these marks were registered in 2002 or 2003 in Mexico; all the other registered marks (as opposed to pending applications) were registered in 2006 or 2007.
Respondent is in the business of buying and selling domain names that become available for registration through expiration and deletion. Its stated policy is to register and maintain only domain names that incorporate “common words or phrases, descriptive terms, and/or words as to which it considers no single party has exclusive rights.” Respondent registered the disputed domain name in July 2004, following expiration of a prior registration. At some point Respondent used the disputed domain name as an advertising site, with hyperlinks to medical and dental product providers, some of which were competitors of Complainant.
Complainant sent Respondent a cease-and-desist letter in May 2007. While Complainant asserts that this inquiry was never answered, included with the Response is an email reply (captioned “All Rights Reserved – Without Prejudice – for Settlement Purposes Only”) in which Respondent acknowledged ownership of the disputed domain name but denied any infringement. In this reply Respondent noted its “willing[ness] to discuss an amicable resolution that takes into account [Respondent’s] investments in this domain name.” Complainant responded by stating “we are not interest [sic] in purchasing” the disputed domain name.
Later in 2007 Complainant’s authorized representative in this proceeding (who is apparently employed by an accredited ICANN registrar with which Respondent regularly does business) and Respondent engaged in email correspondence concerning certain of Respondent’s activities and the possibility of acquiring the disputed domain name. It is not clear whether this authorized representative identified herself as acting on Complainant’s behalf, though nothing in the email chain annexed to the Response indicates that she did. In October 2007 Respondent offered the domain name for sale to this representative for US$8,500; the last email submitted by Respondent is a response that “I will let my client know and I will get you back with their response.”
5. Parties’ Contentions
Complainant contends as follows:
Complainant has rights in ALIGN by virtue of its registration of that word as a trademark in the USPTO and consistent use of the mark since 1999. The disputed domain name is identical to the Complainant’s name and confusingly similar to other marks it owns because the domain name’s dominant feature is the word “align”.
Respondent has not been commonly known by the disputed domain name and has never been authorized by Complainant to use Complainant’s mark. Respondent registered the disputed domain name in July 2004 “when the trade name “Align Technology . . . [was] already well known in the healthcare market.” By using the disputed domain name for links to Complainant’s competitors and offering the disputed domain name for sale, Respondent is not making a legitimate use of the disputed domain name.
These same facts also establish that Respondent registered and is using the disputed domain name in bad faith. Furthermore Respondent’s alleged non-response to the cease-and-desist letter, and offering the domain name for sale subsequently to its receipt of that letter (and thus with knowledge of Complainant and its claimed rights in the mark) also establishes bad faith. Respondent has used “false whois information” in registering the disputed name in a name other than its own.
Respondent contends as follows:
Respondent acknowledges that the disputed domain name is identical to Complainant’s company name, but denies that the company name may serve as a trademark (“source indicator”) because it is “comprised of common words.” Complainant has not shown any recognition of that name in 2004, when Respondent registered the disputed domain name. Any rights of Complainant in ALIGN, standing alone, “are junior to those of Respondent” because registration of the disputed domain name occurred three years before Complainant’s mark was registered with the USPTO.
Respondent claims rights and legitimate interests in the disputed domain name because it is “no more than a common, descriptive phrase” that any person may register as its domain name. The phrase is not exclusively associated with Complainant’s business and appears in many business uses and Internet uses unrelated to Complainant. Buying and selling domain names is not per se illegitimate, even when domain names are sold for amounts substantially in excess of a party’s cost of registration. In short, “Respondent acquired the disputed domain name when it became available to anyone and now offers it for sale to the general public in the ordinary course of [its] business.”
Complainant has failed to establish that Respondent registered or has used the disputed domain name in bad faith. Again, the buying and selling domain names is not in and of itself indicative of bad faith. Respondent’s use of the disputed domain name for generation of “click through” advertising revenues is also not automatically evidence of bad faith; here, that use merely underscores the descriptive or generic character of Complainant’s common name and mark. Respondent did not acquire the disputed domain name for sale specifically to the Complainant or even with Complainant in mind. Its placing the domain name for sale is part of its customary business and therefore not bad faith.
6. Discussion and Findings
Because the requirements of paragraph 4(a) of the Policy are conjunctive, a Complainant’s failure to establish any of them results in the denial of the Complaint. Complainant in this proceeding has failed to show that Respondent registered the disputed domain name in bad faith, and the Panel chooses not to address any of the other Policy elements.
To establish registration in bad faith, Complainant, which bears the burden of proof under each Policy element, must ordinarily show that the registration was undertaken with knowledge of Complainant and its mark, Janet E. Sidewater v. Worldwide Media Inc., WIPO Case No. D2006-1281, and that Respondent “targeted” Complainant. Gold Medal Travel Group plc v. Damir Kruzicevic, WIPO Case No. D2007-1902. Given the nature of Policy proceedings, with no discovery and no confrontation, this may occasionally be proven inferentially. Net2phone Inc v. Delta Three Inc., WIPO Case No. D2007-0644 fn. 8-12. When as here the registrant of the disputed domain name regularly buys and sells large numbers of domain names for advertising or resale, such knowledge may also be inferred from proof of willful blindness. Sprunk-Jansen A/S v. Chesterton Holdings, WIPO Case No. D2006-1080; Mobile Communication Service Inc. v. Webreg, RN, WIPO Case No. D2005-1304; Eurial Poitouraine v. Compana LLC, WIPO Case No. D2004-0270. Some panels have applied special rules for traffickers in domain names, as Respondent is well aware. E.g., Mobile Communication Service Inc. v. WebReg, RN, supra. Contrary to Respondent’s argument, not everyone has an automatic right to register domain names incorporating common words or combinations of common words,1 and it is consistent with the Policy and its rationale of combating cybersquatting to require high volume buyers and registrants of domain names to demonstrate reasonable efforts to avoid invading third parties’ rights in trademarks and service marks to overcome an inference of bad faith registration.
Three circumstances suggest that Respondent may have known of Complainant and its mark when it acquired the disputed domain name. First, while align and technology may be everyday words, their combination is not particularly common. Second, that combination is not in any way suggestive of medicine or dentistry, Complainant’s business, yet Respondent after registering the disputed domain name put it to use for advertising products and providers in those fields.2 Third, unlike some domain name aggregators Respondent has not informed the Panel of any steps it regularly takes, or took with respect to the disputed domain name, to avoid stepping on third party rights.3 Respondent’s unilateral judgment that a particular word or phrase is one in “no single party has exclusive rights” carries no weight or authority as to what is or is not proper under the Policy.
Altogether this is thin stuff, and findings adverse to Respondent from it would be based substantially upon conjecture. The Policy requires proof, and the proof Complainant has offered in the Complaint is not sufficient. Respondent registered the disputed domain name in July 2004. So far as the evidence submitted with the Complaint shows, the only support for the assertion that Complainant and its company name were “well known in the health care market” at that time is (a) proof that Complainant was incorporated under this name in 1997, (b) Complainant’s asserted first use of ALIGN in commerce in the United States of America in 1999 in its USPTO application, and (c) three trademark registrations in Mexico for ALIGN in 2003. Evidence to support Complainant’s counsel’s confident but conclusionary assertion, if it exists, is readily available to Complainant: advertisements from 2004, sales records, statistics showing an identification of Complainant with its own website, compare Brook Bollea a/k/a Brook Hogan v. Robert McGowan, WIPO Case No. D2004-0383; Pierce Brosnan v. Network Operations Center, WIPO Case No. D2003-0519; Classmates Online, Inc. v. John Zuccarini, individually and dba RaveClub Berlin, WIPO Case No. D2002-0635.
Some publicly available information does suggest that Complainant achieved some public recognition prior to 2004. For example, an examination of the database maintained by the United States Securities & Exchange Commission indicates that Complainant first registered securities for public sale in 2000. The annual reports there filed indicate that Complainant had substantial sales in 2004 and prior years. Providing adequate proof is the duty of Complainant, not the Panel, however, and the Panel is not prepared or equipped to make Complainant’s case for it.
In its proposed supplemental filing Complainant submits a number of unsubstantiated statements4 of facts that illustrate some recognition of the phrase align technology with Complainant and its products. Nowhere in that filing, however, is any basis for the Panel’s allowing an additional pleading that is not authorized by the Policy or the Rules. Even if accompanied with proper evidence there is no indication that these additional facts were unknown or unknowable to Complainant when the Complaint was filed, or could not at that time have been deemed relevant. The Response contains no factual material or argument that Complainant should not reasonably have anticipated.
Pleadings beyond the Complaint and Response are the rare exception, not a right. Some panels, interpreting paragraph 12 of the Rules5 literally, prohibit them altogether unless expressly requested by the panel. WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview”), paragraph 4.2, minority view. With rare exceptions, the panels that do consider a party’s request to make an additional filing grant leave to do so, and consider the material incorporated in it in deciding the proceeding, only in exceptional circumstances. See Gigglesworld Corporation v. Mrs. Jello, WIPO Case No. D2007-1189 (order denying proposed supplemental filing quoted in fn. 1). There is nothing exceptional in this proceeding, so Complainant’s request to submit a Reply is denied. The Panel will not consider either party’s supplemental filing in rendering its decision.
This approach is not merely a rote application of rigid regulations. Additional pleadings are antithetical to the streamlined and expedited procedure contemplated in the Policy. Furthermore, as in Esquire Innovations, Inc. v. Iscrub.com c/o Whois Identity Shield; and Vertical Axis, Inc, Domain Adminstrator, WIPO Case No. D2007-0856, “a supplemental filing now would be prejudicial to Respondent. Respondent elected to defend the present matter at considerable expense, likely devoting substantial time and effort on its own part and by outside counsel, in reliance upon the apparent weakness of Complainant’s position” (dissenting opinion). Especially is that so when Respondent holds a large portfolio of domain names and has faced more than a few Policy proceedings. Would the outcome of this proceeding be different if the Panel were to consider the material in Complainant’s supplemental filing? There is no way to tell. As noted in footnote 3, the proposed reply is short on proof. Had the proffered material been part of the Complaint, the Response might have been different, there might have been no Response at all, or Respondent might have consented to transfer.6 Like any other party accused of cybersquatting Respondent is entitled to assume that the Panel will adhere to the Policy, the Rules, and Policy precedent and allow additional materials only when appropriate. Even if the additional material were clearly outcome-determinative (not the case here) the Panel’s decision denying the additional pleading would be the same absent a valid reason for not including its contents in the Complaint.
Complainant is free to re-file its Complaint in a new Policy proceeding, though it will have to clear the hurdle of establishing facts that meet the admissibility criteria for refiling here. WIPO Overview, paragraph 4.4, and cases there cited; The Knot, Inc. v. Ali Aziz, WIPO Case No. D2008-0033. It may also pursue its claims in court, where this opinion has no res judicata or collateral estoppel effect.
There is simply not enough evidence in the record before the Panel to conclude that Respondent was aware of or willfully blind to Complainant or its asserted trademark when the disputed domain name was registered in 2004. Accordingly Complainant has not established that Respondent registered the disputed domain name in bad faith.
The Complaint is denied.
Richard G. Lyon
Dated: March 31, 2008
1 Many famous trademarks consist entirely of common words, for example My Space, Classmates, United Airlines, Bank of America. When the common phrase becomes specially identified with a particular provider of goods or services or when someone with knowledge of another’s use of a common phrase for source of goods or services poaches that word or phrase, the mark owner may well have recourse under both trademark law and the Policy.
2 The Panel is unable to ascertain when this conduct began, as the Wayback Machine at “www.archive.org” is unavailable because access has been blocked by Respondent. Respondent’s claim that these advertisements are merely “semantically related” to the so-called common phrase raises, not lowers, the likelihood that Respondent targeted Complainant.
3 See, e.g., Gigglesworld Corporation v. Mrs. Jello, WIPO Case No. D2007-1189.
4 As this Panel has stated on many prior occasions, statements of counsel as to factual matters easily verifiable with documentary evidence or of which counsel has no personal knowledge are not evidence and carry little or no weight in a Policy proceeding. By and large the Complainant’s proposed supplemental filing consists of such statements: sales figures, renown among dentists, training programs, advertising expenditures.
5 “In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties.” (Emphasis supplied)
6 Respondent has taken this last approach on occasion. See, e.g., Sanofi-aventis and Sanofi-Aventis Deutschland GmbH v. RareNames, WebReg, WIPO Case No. D2007-1676.