The Complainant is Zerospam Security Inc. of Montreal, Quebec, Canada, internally represented.
The Respondent is Internet Retail Billing, Inc. of Henderson, Nevada, United States of America, internally represented.
The disputed domain name <zerospam.com> is registered with eNom, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 24, 2009. On September 25, 2009, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the disputed domain name. On September 25, 2009, eNom, Inc. 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 a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 29, 2009. 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” or “UDRP”), 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 30, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 20, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 22, 2009.
The Center appointed Andrew Frederick Christie as the sole panelist in this matter on October 30, 2009. 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.
On November 7, 2009, the Respondent communicated with the Center stating “I just returned from a 6-week Europe trip and completely missed the whole case. It seems that I missed the legal deadline, however, I will submit a response …”. An initial online response was submitted by way of a Supplemental Filing on November 9, 2009 and a revised response was submitted by way of an Amended Supplemental Filing on November 12, 2009. In response to both of these Supplemental Filings, the Center informed the Respondent that the Panel would be informed of the filings and that it would be in the sole discretion of the Panel to determine whether to consider and/or admit the filings. The Panel considered these filings, and decided to admit the Amended Supplementary Filing into the record as if it was a formal Response filed by the Respondent within the specified time. To ensure fairness to the Complainant in light of this decision, the Panel notified the parties of its decision to admit the Amended Supplemental Filing, and invited to the Complainant to make brief observations on the assertions of the Respondent contained therein. The Complainant submitted its observations on November 25, 2009. The Respondent submitted an unsolicited response to the Complainant's observations on December 1, 2009.
The Complainant is a privately held operating corporation, formerly known as “Ressources Informatiques Migration Inc.”, incorporated in Montreal, Quebec, Canada on December 1, 1985. It operates a managed email security service that filters incoming emails for businesses. It has operated under its current name since 2003. It owns United States of America trademark registration number 3677498 for ZEROSPAM in international class 42 in respect of “Computer services, namely, electronic mail protection and security services”. The application for this trademark was filed on May 16, 2008, was published for opposition on October 28, 2008 and was registered on September 1, 2009.
The Respondent originally registered the disputed domain name on May 22, 2002, and appears to have maintained that registration continuously since that time. From at least June 1, 2003 through to at least July 25, 2004, the domain name resolved to a domain name parking page containing automatically-generated links to websites advertising anti-spam solutions.
The Complainant contends that the disputed domain name is identical to its United States of America registered trademark ZEROSPAM.
The Complainant contends that the disputed domain name has never been used by the Respondent for a bona fide offering of goods or services. The Respondent has never been commonly known by or associated with the “Zerospam” name. The Respondent's use of the disputed domain name is not related in any way to its corporation name or of its business, products or services.
The Complainant contends that the Respondent is using the disputed domain name to mislead Internet users. The domain name is used to resolve to a parking page that generates pay-per-click advertising based on the commercial investment in the brand by the Complainant. Lack of any proprietary content or legitimate business activity on the website confirms that the domain name was registered or acquired primarily for the purpose of Internet traffic generation through confusion with the Complainant's trademark. The current Administrative contact for the disputed domain name is associated with 902 domain names, and the Respondent owns 503 domain names. This suggests that the individuals behind the Respondent are engaged in large scale cybersquatting activities gaining profits from pay-per-click advertisements on parking pages. The Respondent has taken steps to conceal its identity, including providing defective contact information, invalid phone and fax numbers, and a UPS store outlet as its business address. The Respondent's concealment of its true identity and contact information is a clear sign of bad faith.
The Respondent does not dispute that the disputed domain name is identical to the Complainant's trademark.
The Respondent contends that it has rights and legitimate interests in the disputed domain name because it is a descriptive, generic term, and the Respondent has a right to profit from the generic value of the term (or choose to not profit from it at all, as was the case with the unpaid Enom, Inc. parking page).
The Respondent contends that the Complainant cannot establish that the domain name was registered and is being used in bad faith. The disputed domain name was registered well over seven years before the Complainant's trademark registration was granted, almost six years before the Complainant's application for trademark registration, and almost a year before the Complainant's alleged first use of its trademark. In these circumstances, the Respondent could not have had actual or constructive knowledge of the Complainant's trademark at the time of registration of the disputed domain name. Thus, the Complainant cannot show that the domain name registration was in bad faith.
The disputed domain name <zerospam.com> is identical to the Complainant's trademark ZEROSPAM, once the domain name's TLD identifier is ignored.
The disputed domain name (ignoring the TLD identifieer) consists solely of two descriptive words: “zero” and “spam”. The conjunction of these two terms produces a compound term “zerospam”, which is descriptive of a situation in which spam (i.e. an unsolicited communication, especially by email) is not present. The only use to which the domain name has been put is to resolve to a parking page containing links to other websites advertising goods or services. At various times, those links have been to products or services concerning spam control.
Previous panels deciding disputes under the Policy have considered whether using the disputed domain name to resolve to parking pages with pay-per-click links can constitute a use of the domain such as to give rise to the Respondent having rights or legitimate interests in the domain name – see, e.g., Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964 (“Media General”), and Trade Me Limited v. Vertical Axis Inc., WIPO Case No. D2009-0093 (“Trade Me”). In the Trade Me case, the panel stated, “where a respondent registers a domain name consisting of a ‘dictionary' term because the respondent has a good faith belief that the domain name's value derives from its generic or descriptive qualities rather than its specific trademark value, the use of the domain name consistent with such good faith belief may establish a legitimate interest. See Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304. See also Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964 (domain name must have been registered because of, and any use consistent with, its attraction as a dictionary word or descriptive term, and not because of its value as a trademark).”
In the Media General case, the panel recognised that “reselling domain names or using them for advertising links can in certain circumstances represent legitimate interests for purposes of paragraph 4(c) of the Policy, but not in all instances”. In the panel's view, such practices are most likely to be deemed legitimate under the Policy when: (i) the respondent regularly engages in the business of registering and reselling domain names and/or using them to display advertising links; (ii) the respondent makes good faith efforts to avoid registering and using domain names that are identical or confusingly similar to marks held by others; (iii) the domain name in question is a “dictionary word” or a generic or descriptive phrase; (iv) the domain name is not identical or confusingly similar to a famous or distinctive trademark; and (v) there is no evidence that the respondent had actual knowledge of the complainant's mark. This Panel agrees with that reasoning.
Application of the above principles to this case supports a finding that the Complainant has failed to show that the Respondent lacks a right or legitimate interest in the disputed domain name. The first factor listed above is consistent with this conclusion, and the third, fourth and fifth factors listed above strongly support this conclusion. The evidence of the Respondent's numerous other domain name registrations indicates that the Respondent regularly engages in the business of registering domain names for the purpose of reselling and/or using them for revenue generation. The disputed domain name is a descriptive phrase, formed by the conjunction of two descriptive words. The Complainant's trademark is not famous and, because it consists of a descriptive phrase, it is not particularly distinctive. Finally, given that the disputed domain name was registered more than seven years before the registration, and approximately one year before the first demonstrated use in commerce, of the Complainant's trademark, the Respondent could not have had actual knowledge of the Complainant's trademark until a significant time after registration and initial use of the domain name. (For this reason, in this particular case, the second factor listed above is neutral with respect to whether the Respondent has a legitimate right or interest in the disputed domain name – although there is no evidence that the Respondent makes efforts to avoid registering domain names that conflict with trademarks, in this instance any such efforts would have been fruitless as the Complainant's trademark was not in existence at the time the Respondent registered the disputed domain name.)
One fact that has given this Panel pause for thought in the present case is that the Respondent does not appear to be using the disputed domain name for a purpose obviously connected to the descriptive meaning of the term “zero spam”. Rather, the domain name currently appears to be used to resolve to a highly generic link farm featuring the names of several celebrities. The Panel is also conscious that several panels (including the distinguished three-member panel in the Trade Me case, supra) have found that the mere use of a domain name to resolve to pay-per-click links constitutes something less than a bona fide offering of goods and services for the purpose of the Policy. Against this must be weighed the fact that the Respondent is not currently using the domain name in a manner which implies knowledge of the Complainant's trademark, or which conveys an intention to target or generate revenue from confusion with that trademark in particular.
Overall, it appears to this Panel to be more likely than not that the Respondent registered the disputed domain name due to its descriptive quality, and not its trademark quality. The descriptive quality of the disputed domain name is that it is a phrase that succinctly and clearly describes a situation in which spam is not present. The trademark quality of the disputed domain name only arose some substantial time after the Respondent registered and began using the domain name, upon the Complainant's later adoption and use of this descriptive phrase as its trademark. Thus, this Panel is inclined to the view that the Complainant has failed to show that the Respondent lacks a right or legitimate interest in the disputed domain name. However, it has not been necessary to reach a concluded view on this issue because of this Panel's finding on the issue of bad faith, discussed below.
The Respondent registered the disputed domain name well over seven years before the Complainant's trademark registration was granted, almost six years before the Complainant's application for trademark registration was lodged, and almost a year before the Complainant's alleged first use of its trademark. In the absence of evidence suggesting that the Respondent was aware of the Complainant's impending adoption of “zerospam” as its trademark, the fact that the Respondent registered the domain name before the Complainant's trademark rights arose precludes a finding that the Respondent has engaged in conduct of the type specified by paragraphs 4(b)(i), (ii) and (iii) of the Policy to be evidence of bad faith registration and use of the domain name. That is to say, because there is no evidence that the Respondent was aware of the Complainant's impending trademark rights at the time the Respondent registered the domain name, the Complainant cannot establish that the Respondent registered the domain name with bad faith intent.
This finding does not, however, resolve the dispute. In three recent decisions under the Policy – City Views Limited v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE, WIPO Case No. D2009-0643, Phillip Securities Pte Ltd v. Yue Hoong Leong, ADNDRC Decision DE-0900226, and Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, WIPO Case No. D2009-0786 (together, “Octogen trio of cases”) – a distinguished panelist expressed the view that, based on a close reading of the decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, “bad faith registration can be deemed to have occurred even without regard to the state of mind of the registrant at the time of registration, if the domain name is subsequently used to trade on the goodwill of the mark holder”.
After reviewing the reasoning in the Octogen trio of cases, the panel in Ville de Paris v. Jeff Walter, WIPO Case No. D2009-1278 (“Ville de Paris”) came to a similar view. In particular, the panel in Ville de Paris concluded: “The Policy itself expressly recognizes that, where the disputed domain name is identical or confusingly similar to the complainant's trademark and the respondent has no rights or legitimate interests in the domain name, in certain circumstances bad faith use of a domain name alone is sufficient to entitle the complainant to a remedy.” In the Ville de Paris case, the panel found that the circumstances of the respondent's use of the disputed domain name were such as to give rise to a remedy under the Policy, despite the fact that the domain name may not originally have been registered by the respondent in bad faith. The particular circumstances that gave rise to this outcome were that the respondent, upon becoming aware of the complainant's trademark, intentionally altered its proposed use of the domain name to a use that caused confusion with, and disruption to, the complainant's activities, and demanded from the complainant an option to acquire the complainant's domain names as a condition of the respondent ceasing its confusing and disruptive use of the disputed domain name. These were found by the panel to be “actions by which the Respondent sought to use its registration of the disputed domain name to derive a benefit from the Complainant's trademark”. Accordingly, these were bad faith actions that justified a finding in favour of the complainant with respect to the requirements of paragraph 4(a)(iii) of the Policy.
The record in this case does not disclose any evidence of actions by the Respondent that would justify a finding in favour of the Complainant with respect to the requirements of paragraph 4(a)(iii) of the Policy. In particular, there is no evidence before the Panel that the Respondent has, at any time after registering the disputed domain name in 2002, held the domain name registration in bad faith. There is, for example, no evidence that the Respondent intentionally altered its use of the disputed domain name so as to cause confusion with, or disruption, to the Complainant's activities, or in any other way intentionally used the disputed domain name to derive a benefit from the Complainant's trademark. Thus, the record in this case is insufficient to establish that the Complainant has discharged its burden of showing that the requirements of paragraph 4(a)(iii) of the Policy are satisfied. The Complaint therefore fails.
This Panel does not consider that the record in this case discloses facts that would warrant a finding of attempted reverse domain name hijacking by the Complainant.
For all the foregoing reasons, the Complaint is denied.
Andrew F. Christie
Dated: December 18, 2009