The Complainant is Skyhook Wireless Inc. of Boston, Massachusetts, United States of America, represented internally.
The Respondent is John L Productions, c/o Johnny Williams, of Pike Road, Alabama, United States of America, represented by Ivan Hoffman, United States of America.
The disputed Domain Name <skyhook.com> is registered with Network Solutions, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 8, 2010. On March 9, 2010, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed Domain Name. On March 9, 2010, 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. The Center verified that 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 March 11, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response March 31, 2010. The Response was filed with the Center March 17, 2010.
The Center appointed W. Scott Blackmer, Michelle Brownlee and Lynda M. Braun as panelists in this matter on April 9, 2010. The Panel finds that it was properly constituted. Each member of 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.
The Complainant is a Delaware corporation based in Boston, Massachusetts. Founded in 2003, the Complainant offers location services and related software for wireless devices, based on their detected proximity to mapped WiFi “hotspots”, and in some cases relying as well on GPS satellite positioning and cellular tower triangulation. The Complainant operates a website at “www.skyhookwireless.com”.
The Complainant states that it began using a SKYHOOK mark commercially in June 2005, although the record includes no evidence of the Complainant's use of the term “skyhook” alone. The Complainant applied for trademark registration in the United States in May 2008 and ultimately obtained United States Trademark Registration No. 3549708 on December 23, 2008 for SKYHOOK WIRELESS as a standard character mark, disclaiming the exclusive right to use “wireless” except as part of the mark as shown.
The Complaint attaches a substantial list of print and broadcast media stories since 2004 ostensibly mentioning “Skyhook Wireless”. As the company name or mark seldom appears in the title of the stories, the Panel can verify these mentions only with respect to a handful of articles attached to the Complaint. Those before May 2006 (when the Respondent acquired the disputed Domain Name) are the most relevant. A Boston Globe story in May 2005 described the Complainant's software and business in these terms: “Skyhook has been around for a long time without announcing a pilot test, or a first paying customer, or a big fund-raising round.” The company was also mentioned in 2005 or early 2006 in an online wireless industry publication, CNET News, InformationWeek, and the Technology section of the New York Times.
The disputed Domain Name was created on March 7, 2003 and registered to the Respondent on May 1, 2006. According to the Declaration of John L Williams, Mr. Williams is “the owner of the business known as John L Productions”, the “umbrella name for a series of businesses”. In the Panel's view, there is no evidence in the record that the Respondent is a legal entity, and the Panel will treat it as a trade name or alter ego for Mr. Williams.
Mr. Williams states that he purchased the disputed Domain Name in 2006 from a domain name broker for use in connection with Mr. Williams' business, which commenced in June 2002, of selling two-way satellite communications to political campaigns and reporters covering those campaigns. The Respondent provides photographs and a copy of the vehicle registration for a vehicle used in Mr. Williams' business with a satellite dish installed on the roof. The vehicle displays a “Skyhook.com” sign in the rear window and a personalized license plate that reads “SKYHOOK”. The Response attaches 2008 invoices to presidential and senatorial candidates (including John McCain and John Edwards) for campaign bus services including “SkyHook Satellite Internet” service.
The Respondent denies knowledge of the Complainant or its SKYHOOK WIRELESS mark at the time the Respondent acquired and began using the disputed Domain Name in connection with Mr. Williams' business.
The disputed Domain Name redirects Internet users to the Respondent's website at “www.campaignbustour.com”, where the Respondent, listed as “a Johnny Williams Company”, advertises election campaign bus tour services for political candidates. The home page at “www.campaignbustour.com” mentions several redirecting domain names, including <politicsrus.com>, <campaignbus.com>, and <johnnysbussales.com>, as well as the disputed Domain Name.
It is undisputed that the parties have communicated about the Complainant's proposed purchase of the disputed Domain Name on several occasions. One of the Complainant's principals, identifying the Complainant as “a startup company called Skyhook Wireless”, first expressed interest in purchasing or leasing the disputed Domain Name in 2007. In a January 2010 email attached to the Complaint, the Respondent offered to sell the disputed Domain Name to the Complainant for USD $100,000. The communications in the record do not refer to trademark rights or the Policy until March 2010, shortly before the Complaint was filed.
The Complainant argues that the disputed Domain Name is identical or confusingly similar to its asserted SKYHOOK mark. The Complainant argues that the Respondent has no rights or legitimate interests in the disputed Domain Name and does not use it to identify a business, product, service, or website. This, combined with the Respondent's willingness to discuss selling the disputed Domain Name, suggests to the Complainant that the Respondent “never intended to use the domain in connection with a bona fide offer of goods or services.”
The Complainant argues that the registration and use of the disputed Domain Name reflect bad faith because the Complainant's SKYHOOK mark was already “established” when the Respondent acquired the disputed Domain Name. According to the Complainant, the Respondent's “minimal” use of the disputed Domain Name indicates that “the Respondent registered the domain for the exclusive purpose of then selling the domain name at a significant profit.”
The Respondent challenges the alleged “confusing similarity” between the disputed Domain Name and the Complainant's mark and contends that the Respondent had a legitimate interest in using the disputed Domain Name for a bona fide business before the dispute arose. The Respondent denies prior awareness of the Complainant or its mark and points out that the disputed Domain Name was in commercial use before the Complainant approached the Respondent about purchasing the disputed Domain Name. The Respondent denies any bad faith in the registration and use of the disputed Domain Name.
The Respondent asks the Panel to make a finding of Reverse Domain Name Hijacking, arguing that the Complainant must have been aware that the Complaint lacks merit.
Paragraph 4(a) of the Policy provides that in order to divest a Respondent of a disputed domain name, a 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.
Under paragraph 15(a) of the Rules,
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
The Complainant claims a common-law SKYHOOK mark, but the record does not include sufficient evidence to establish that the word “skyhook” alone has acquired a distinctive secondary meaning associated with the Complainant.
It is undisputed, however, that the Complainant holds a registered trademark for SKYHOOK WIRELESS. The disputed Domain Name is not identical with this mark, but the Panel finds that it is confusingly similar for purposes of paragraph 4(a)(i) of the Policy. The test of confusing similarity under the first UDRP element is an objective comparison between the disputed Domain Name and the Complainant's trademark, in appearance, sound, meaning, and overall impression to at least a part of the Internet public. See, e.g., Hertz System, Inc. v. Jeff Park, WIPO Case No. D2007-1120 (and cases cited therein); Referral Experts LLC v. Integrated Medical Solutions Corporation, WIPO Case No. D2007-0231.
Since “skyhook” is the distinctive portion of the Complainant's trademark (which expressly disclaims exclusivity for the term “wireless”), the Panel readily finds that the disputed Domain Name meets this objective test of confusing similarity. For purposes of this element of the Complaint, it is not relevant that there are other, third-party uses of the term “skyhook”, which can be found, with multiple meanings, in an English dictionary, as well as in a variety of commercial uses. Similarly, the contents of the Respondent's website associated with the disputed Domain Name are not material. The issue is solely whether the disputed Domain Name itself is confusingly similar to the Complainant's mark. The Panel finds that it is, thus establishing the first element of the Complaint.
The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances establishing a Respondent's rights or legitimate interests in a domain name, including the following:
“(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”.
It is undisputed that the Respondent acquired the disputed Domain Name in 2006 and used it thereafter, as described in the Williams Declaration, to direct traffic to a website operated by the Respondent. The website advertises the Respondent's business of providing election campaign tour bus services including “SkyHook” satellite communications and Internet access. The “SkyHook” name appears on the Respondent's website, signage, and vehicle license plate, as well as on 2008 invoices to political campaigns that used the Respondent's service, before the Complainant raised trademark or UDRP claims with the Respondent.
The Complainant argues that this commercial use of the disputed Domain Name is minimal and does not represent a legitimate interest. The Panel finds the evidence cited above sufficient to establish that the disputed Domain Name was used in connection with a bona fide offering of goods or services before notice of the dispute.
The Complainant also argues, in effect, that the Respondent's “minimal” business use of the disputed Domain Name is a sham, and therefore illegitimate, and infers that the real reason for registering the disputed Domain Name was to sell it to the Complainant. But the Williams Declaration denies that the Respondent was even aware of the Complainant in 2006, when the Respondent acquired the disputed Domain Name, and the Panel finds this assertion plausible. The Complainant did not apply for trademark registration until 2008. There is insufficient evidence in the record (largely consisting of a list of media references) to establish that the Complainant widely advertised and sold products or services under the SKYHOOK WIRELESS mark in 2006. The media mentions of the company furnished with the Complaint are in technical publications, the information technology section of a general publication, and a Boston-area newspaper article. It is likely, as the Respondent asserts, that these did not reach the attention of the Respondent in Alabama, operating a business in the field of election campaign services. These circumstances undercut the Complainant's inference that the Respondent registered the disputed Domain Name primarily to sell it to the Complainant. Moreover, the Respondent did not approach the Complainant to sell the disputed Domain Name, and the fact that the Respondent later considered the Complainant's request to purchase the disputed Domain Name does not establish that this was the Respondent's motivation for acquiring the disputed Domain Name in 2006.
The Panel finds, on the available record, that the Respondent has demonstrated a legitimate commercial interest in the disputed Domain Name before the dispute arose. Therefore, the Complainant has failed to establish the second element of the Complaint.
Given its finding on the second element of the Complaint, it is unnecessary for the Panel to discuss further the Complainant's assertions of bad faith in the registration and use of the disputed Domain Name.
The Respondent suggests 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. The Complaint is not well founded, but it does not include, for example, fabrications or manifestly unsustainable positions. The Complaint relies, rather, on inferences concerning the reputation of the Complainant's mark and the Respondent's motivations that that Panel does not, on balance, accept.
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
Lynda M. Braun
Dated: April 23, 2010