WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Inspection Network USA, LLC v. Dynamo.com LLC, Spam Protected
Case No. D2008-0937
1. The Parties
The Complainant is Inspection Network USA, LLC, North Hampton, New Hampshire, United States of America, represented by Kristina M. Grasso, United States of America.
The Respondent is Dynamo.com LLC, New York, New York, United States of America.
2. The Domain Name and Registrar
The disputed Domain Name <omnispect.com> is registered with eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 19, 2008. On June 20, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 20, 2008, the Registrar transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details. 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 July 1, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 21, 2008. The Response was filed with the Center on July 19, 2008.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on July 30, 2008. 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 a New Hampshire limited liability company that offers home inspection services in southeastern New Hampshire, southern Maine, and “North Shore” Massachusetts. The Complainant maintains a website at “www.omnispect.net”.
The Complainant holds OMNISPECT as a registered service mark in the United States of America, Registration No. 3173640, registered November 21, 2006, showing first use in commerce on June 1, 2005.
The Respondent is a New York limited liability company that operates a website at “www.dynamo.com”. The Respondent characterizes itself as a “branding company” that designs “mind-catching new names” and logos for companies and products, often including a preliminary trademark search and an appropriate domain name. The Respondent makes a practice of registering domain names that it considers potentially useful in this business.
The Respondent registered the Domain Name on June 15, 2001. The Domain Name redirects to a “free parking” website with an advertising search engine feature.
Beginning in May 2007, the Complainant attempted to purchase the Domain Name from the Respondent. The Complainant ultimately offered US $2000, and the Respondent requested US $185,000. The parties did not reach an agreement, and this proceeding followed.
5. Parties' Contentions
The Complainant argues that the Domain Name is identical to its registered OMNISPECT mark and that the Respondent has no rights or legitimate interests in the Domain Name.
The Complainant contends that the Domain Name was registered and used in bad faith because the Respondent is “solely engaged in the business of selling domain names,” probably conducts “appraisals” of the domain names it plans to sell, and must recognize that it cannot sell the Domain Name to anyone but the Complainant without engaging in contributory trademark infringement. Nevertheless, the Respondent demanded from the Complainant a price far in excess of the Respondent's out-of-pocket costs related to the Domain Name.
The Respondent contends that it is engaged in a legitimate branding business and points out that it registered the Domain Name long before the Complainant began to use the OMNISPECT mark.
The Respondent argues that the Complaint represents an attempt at reverse domain name hijacking.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of a disputed domain name, the Complainant must demonstrate each of the following:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Domain Name is identical to the Complainant's registered OMNISPECT service mark for purposes of the Policy, paragraph 4(a).
B. Rights or Legitimate Interests
The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which a respondent could demonstrate rights or legitimate interests in a contested domain name, including:
(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.
The Respondent contends that it registered the Domain Name in order to sell it, eventually to a client in connection with the Respondent's “branding” services. There is evidence that this is consistent with the Respondent's advertised commercial offerings.
However, because of the Panel's findings on the element of bad faith below, it is unnecessary to examine further whether the Respondent made demonstrable preparations to use the Domain Name “in connection with a bona fide offering of goods or services”.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy obliges the Complainant to establish that “the Domain Name has been registered and is being used in bad faith”. Thus, it expressly concerns the Respondent's probable intentions at the time of registration as well as subsequently.
Even without direct evidence of original intent, a respondent's motivations at the time of registration can often be inferred from the respondent's later conduct. Thus, paragraph 4(b), which provides a non-exhaustive list of circumstances that indicate bad faith, includes the following:
(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.
The Complainant in this proceeding infers bad faith from the Respondent's counteroffer to sell the Domain Name for a price in excess of its out-of-pocket costs, at a time when “it stands to reason” that the Respondent must have been aware that the Domain Name could not be sold to any other party without engaging in “contributory trademark infringement”.
This conduct cannot of itself establish the Respondent's bad faith at the time of the registration of the Domain Name. The Respondent registered the Domain Name almost exactly four years before the Complainant even claims its first use of the OMNISPECT mark and some five and a half years before the mark was registered. There is no evidence that the Complainant itself had the mark in contemplation in June 2001, much less that the Respondent had advance knowledge of the mark before it was used in commerce. The Respondent could not in the circumstances have registered the Domain Name in bad-faith contemplation of a mark that the Complainant had not even conceived at that time. See, e.g., Dori Media International GmbH v. Sikreto LLC, WIPO Case No. D2007-1525, and cases cited therein.
The Panel finds that the third element of the Complaint has not been established.
D. Reverse Domain Name Hijacking
The Respondent asserts that the Complaint constitutes an attempt at reverse domain name hijacking. This is defined in the Definitions section of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
Paragraph 15(e) of the Rules provides as follows:
If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
The Rules do not provide for monetary remedies or specific relief in such a case.
The Panel finds no evidence that the Complaint was brought “primarily to harass the domain-name holder” and insufficient evidence to conclude that the Complaint was brought in bad faith. It is more likely that the Complaint reflects a fundamental misunderstanding of the Policy, paragraph 4(a)(iii), by counsel representing a relatively small company.
Accordingly, the Panel denies the request for a finding of reverse domain name hijacking.
For all the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Dated: August 17, 2008