WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Navista S.A. v. Virtual Point Inc. dba CrossPath, It Manager
Case No. D2012-1157
1. The Parties
The Complainant is Navista S.A. of Perpignan, France, represented by GPI Patentes y Marcas, Spain.
The Respondent is Virtual Point Inc. dba CrossPath, It Manager of California, United States of America, represented by Rodenbaugh Law, United States of America (the “US” or “United States”).
2. The Domain Name and Registrar
The disputed domain name <navista.com> is registered with Dynadot, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 6, 2012. On June 7, 2012, the Center transmitted by email to Dynadot, LLC a request for registrar verification in connection with the disputed domain name. On June 12, 2012, Dynadot, 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 on June 14, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 4, 2012. On June 7, 2012, the Center was copied to an email communication from the Respondent to the Complainant containing notification that the Respondent had filed a proceeding in the United States District Court for the Central District of California (the “District Court”) for a declaratory judgment of non-infringement with respect to the Respondent’s registration and use of the disputed domain name at issue. On June 11, 2012, the Respondent sent an email communication to the Center, which was forwarded in due course to the Panel with the Case File, entitled Notice of Filing Civil Lawsuit & Request for Dismissal or Stay.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on July 10, 2012. 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 July 12, 2012, the Panel, through the Center, issued Procedural Order No. 1, notifying the Parties that the Panel was likely to proceed to a Decision on the merits, and allowing the Respondent a further seven days to submit a Response in the standard format.
On July 13, 2012, the Respondent sent an email to the Center protesting the Procedural Order No. 1, asking that the Panel reconsider, and asking for a three-member Panel. The Panel declines to reconsider the Procedural Order No. 1.
On July 16, 2012 the Complainant informed the Center and the Respondent that it had not been served with the District Court proceeding. The Respondent replied the same day referring to “the Texas Complaint” but in a presumed reference to this case, saying that service takes time and that the Complainant had been informed of the District Court proceeding by email. On July 17, 2012, the Complainant reiterated that [the proceeding] had not been served.
The Response was sent to the Center on July 20, 2012 and forwarded to the Panel. A correction received by the Panel on July 24, 2012, after the conclusion of the Panel’s deliberations, was noted.
4. Factual Background
The Complainant says little about its business but the general areas covered by the Complainant’s trademark classes include the recording and processing of data, management of computer files, electronic mail services, competitions and publishing, design and development of computer hardware and software, and a number of associated activities. It would appear that the Complainant has traded under the trademark NAVISTA since at least as early as 2000. Currently the Complainant holds 96 domain names incorporating the trademark NAVISTA alone or in combination.
The Complainant holds the following trademarks:
Registered at the Office for Harmonization in the Internal Market (OHIM):
NAVISTA, registration No. 4023628, registered November 10, 2005, classes 35, 38, 42;
NAVISTA, registration No. 4383501, registered September 1, 2006, classes 9, 38, 42;
Registered at the Institut National de la Propriété Industrielle, France (INPI):
NAVISTA, registration No. 3032301, deposited or registered May 30, 2000, published July 13, 2000, classes 9, 35, 38, 41, 42.
The Respondent states that it is a company involved in the development of websites, such as “www.UDRPsearch.com” and “www.SonicGames.com”. As such a company, the Respondent owns and develops domain names in the normal course of its business. Because of the Respondent’s interests in automotive navigation technology, it chose the disputed domain name and also other uncontested domain names with a navigational connotation.
The disputed domain name was registered on June 19, 1998.
5. Parties’ Contentions
The Complainant has produced evidence of its ownership of the trademarks listed above in the form of copies of OHIM registration documents and a copy of the INPI registration document. An additional typed document in evidence corresponds to an English translation of the INPI online registration, which omits class 42.
The Complainant contends that the disputed domain name is confusingly similar to the trademark NAVISTA in which it holds rights.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent does not possess a similar registered trademark, and no corresponding business had been operated by the Respondent since registration of the disputed domain name. Until recently the only content displayed on the corresponding website comprised links to other businesses. Historic content cannot now be viewed because access to the relevant records archived on the Wayback Machine (“www.archive.org”) has been blocked.
The Complainant further contends that the disputed domain name has been registered and is being used in bad faith.
The Complainant says that the Respondent, although passively, has intended to sell the disputed domain name at a price that exceeds the documented costs of registration. There were negotiations in which the Complainant variously offered USD 1,500.00 and later USD 3,000.00, and the Respondent asked for variously USD 25,000.00 and USD 18,000.00.
The Complainant says it is clear that by the Respondent’s provision of links to other businesses, many having nothing to do with the Complainant, the Respondent has tried to benefit commercially and to attract visitors by confusion with the Complainant and its trademark.
The Complainant also says that in effect the disputed domain name is not in genuine use for the offering of any goods or services, and cites previous decisions under the Policy to the effect that non-use may, having regard to other associated circumstances, fall within the concept of use under the Policy. The Respondent’s non-use of the disputed domain name should constitute both a lack of legitimate interests and bad faith.
The Complainant has cited a number of previous decisions under the Policy that the Panel is invited to consider as possible precedent.
The Complainant requests the transfer to itself of the disputed domain name.
The Respondent denies the Complaint.
The Respondent states that it has filed a lawsuit in the District Court to halt any transfer ordered by the Panel and to recover certain compensation from the Complainant, and contends that the proceeding under the Policy should be terminated or suspended as pointless.
In the event that the Panel decides to proceed to a decision on the merits, the dispute should be decided by a three-member Panel.
In respect of identity between the disputed domain name and the Complainant’s trademark, it is contended that the Respondent’s rights are antecedent and superior.
The Respondent further contends that it has rights and legitimate interests in the disputed domain name through its own goodwill and usage and that the Complainant has not substantiated otherwise. The word “Navista” incorporated into the disputed domain name is relevant to the Respondent’s interests in automotive navigation. The Respondent, a California corporation, was unaware of the Complainant, a European company.
The Respondent says the name “Navista” is not exclusive to the Complainant. Records are produced comprising copies of Trademark Electronic Search System (TESS) entries at the United States Patent and Trademark Office (USPTO) principal register for trademarks incorporating “Navista” belonging to Navista, Inc. Corporation Virginia, in the sphere of public affairs, filed April 25, 2000, published January 15, 2002, registered April 9, 2002 and May 14, 2002.
The Respondent lists 13 domain names incorporating “Navista” that it contends have no relationship to the Complainant. Screen captures are produced of some of the associated websites including “www.navista.co.in”, which offers electronic menus for restaurants; “www.navista.com.tr” which hosts Navista Marine Services; and “www.navista.co.uk” which offers bar code scanners. A list of 36 domain names is supplied, arranged alphabetically from <avista.com> and <aavista.net> to <zavista.com>, in a contention that any resemblance between the disputed domain name and the Complainant’s name is coincidental.
The Respondent further contends that the disputed domain name was registered in good faith and there is no evidence it was registered and is being used in bad faith. In particular, registration occurred more than two years before the Complainant’s use of its trademark; the Respondent as a United States entity had no knowledge of the Complainant or its business in Europe; and the Respondent’s registration and use of the disputed domain name has not been to disrupt the Complainant’s business.
The Respondent contends that it has not used the disputed domain name in connection with goods or services in the sphere of the Complainant’s trademark. The Respondent did not register the disputed domain name with the intent to sell it to the Complainant, did not initiate contact, and has not attempted to disrupt the Complainant’s business by confusion. Any links offered by the Respondent’s website were not in the same business sectors as the Complainant’s business. The offering of links is not, in and of itself, illegitimate.
The Respondent contends that the Complainant should be found to have engaged in Reverse Domain Name Hijacking (RDNH). The extensive reasons may be summarised briefly. It is claimed that the Complainant wants to take the Respondent’s valuable property and that the perceived strength of the Respondent’s case was explained to the Complainant. The first contact from the Complainant did not reveal the true name of the Complainant, and may have been sent under a deceptive name. A tentative agreement for sale of the disputed domain name at a certain price was repudiated by the Complainant. The Complainant intended to harass, annoy and intimidate the Respondent into surrendering the disputed domain name.
The Respondent has cited a number of previous decisions under the Policy that the Panel is invited to consider as possible precedent.
6. Discussion and Findings
A. Procedural matters
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
i. Respondent’s application for dismissal or stay
Initially, the Respondent replied to the Complaint by submitting to the Center, inter alia, a “Notice of civil action and request for dismissal without prejudice or in the alternative, stay of administrative proceedings” (the “Notice”). The Respondent attached copies of documents filed with the District Court, bearing the stamp of the Clerk of the Court, dated June 6, 2012. In the Notice the Respondent describes its Court filing as “a civil action against Complainant in the United States District Court, Central District of California, for a declaratory judgment of non-infringement with respect to Respondent’s registration and use of the domain name at issue in this case.” Thus the Respondent’s intention is that the District Court shall rule on what the Respondent refers to as the “same issues brought in Complainant’s Complaint” and further says that “a ruling by that court will take precedence over any ruling by this Panel”.
The Policy protects the rights of the parties to engage in alternative court action, stating at paragraph 4(k):
“Availability of Court Proceedings. The mandatory administrative proceeding requirements set forth in Paragraph 4 shall not prevent either you or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded. If an Administrative Panel decides that your domain name registration should be canceled or transferred, we will wait ten (10) business days (as observed in the location of our principal office) after we are informed by the applicable Provider of the Administrative Panel’s decision before implementing that decision. We will then implement the decision unless we have received from you during that ten (10) business day period official documentation (such as a copy of a complaint, file-stamped by the clerk of the court) that you have commenced a lawsuit against the complainant in a jurisdiction to which the complainant has submitted under Paragraph 3(b)(xiii) of the Rules of Procedure. (In general, that jurisdiction is either the location of our principal office or of your address as shown in our Whois database. See Paragraphs 1 and 3(b)(xiii) of the Rules of Procedure for details.) If we receive such documentation within the ten (10) business day period, we will not implement the Administrative Panel’s decision, and we will take no further action, until we receive (i) evidence satisfactory to us of a resolution between the parties; (ii) evidence satisfactory to us that your lawsuit has been dismissed or withdrawn; or (iii) a copy of an order from such court dismissing your lawsuit or ordering that you do not have the right to continue to use your domain name.”
The Panel’s discretion in the event that either party engages in court action is specified in paragraph 18(a) of the Rules:
“Effect of Court Proceedings
(a) In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.”
The Respondent in its Notice, under the heading “The Instant Proceeding Should Be Dismissed”, has argued that the Panel in this case should exercise its discretion to terminate the proceeding; or in the first alternative, should stay the proceeding for the pendency of the action in the District Court; or at least, should grant further time for the filing of a Response.
In arguing for a termination of the proceeding, the Respondent invites the Panel to draw precedent from, inter alia, the decision in DNA (HOUSEMARKS) LIMITED V. TUCOWS.COM CO., WIPO Case No. D2009-0367 (DNA), in which the respondent instituted court action and the final decision of the respected panelist was:
“The Panel hereby orders, pursuant to paragraph 18(a) of the Rules, that this proceeding be terminated. This termination shall be without prejudice to Complainant’s filing a new complaint under the Policy at any time following termination of the pending Declaratory Judgment Action in Canada, but with prejudice if filed before that lawsuit is terminated.”
The Respondent seeks to remind this Panel of certain of the many valuable and well reasoned points of argument made by the respected panelist in DNA in support of not proceeding to a decision in that particular case. These included, among many others, the inadvisability of a panel producing a decision on the papers alone that might be taken as presuming to give advice to a court that may hear the case in more detail, with the benefit of evidence presented and contested in open court. The panelist in DNA also took into consideration the relevant respondent’s clean hands in apparently not having tried to game the system, for instance by creating intentional delay.
DNA may to some extent be distinguished on its facts, not least of which were that the relevant disputed domain name <dunlop.com> comprised the famous trademark DUNLOP that is also not uncommonly a family name; that the relevant trademark would presumably have been much older than the Internet; and that the Respondent’s indicated defence was in a different category from the present case.
With the greatest respect to the respected panelist in DNA, the Panel in the present case can see balancing arguments that may support proceeding to a Decision. A proceeding under the UDRP is not, and is different from, the envisaged proceeding in the District Court. A proceeding under the UDRP is intended in both letter and spirit to provide the Parties with a swift and timely decision according to a tight schedule and a limited series of pleadings. Significantly, the equivalent of the statute applicable under the UDRP is the Policy itself, read in the context of chiefly the Rules, the Supplemental Rules, and the contract between the registrant and the registrar. The decision-making process, whilst aiming for consistency, is essentially fact-specific and is not strictly precedential.
By contrast the proceeding in the District Court will be based on applicable United States and Californian law, procedure and precedent. Thus, it may be noted that the Respondent’s pleadings before the District Court include matters of trademark infringement, unfair competition under the California Business & Professions Code, and the (USA) Anticybersquatting Consumer Protection Act. The UDRP is concerned with abusive registration, legitimate use, bad faith, and specific criteria surrounding the possible confusion of a disputed domain name with a trademark.
According to circumstances, UDRP panels have decided to terminate, suspend or proceed with a decision. The balance, in the face of a respondent’s court action, was discussed in BD Real Hoteles, SA de C.V. v. Media Insights aka Media Insight, WIPO Case No. D2009-0958, in which the respected panelist said “The Panel’s view is that the Policy generally obliges a Panel to make a decision on a complaint”.
The present Panel takes the view that the Complainant has made a valid Complaint under the UDRP and, absent circumstances to the contrary, is entitled to a decision on the merits of its Complaint without delay. The Panel entertains no notion of what may be done with the Decision after the Panel is functus officio and does not address its Decision to the attention of any other forum. The Panel is also concerned that as a general principle, and without any aspersion as to the motivation of either Party in this case, diversions that may create inordinate delay, and thereby negate the best intentions of the UDRP, should be avoided unless the circumstances are exceptional. Partly for this reason the Panel does not consider a significant stay of the proceeding to be a viable option.
The Request for Dismissal or Stay is denied. The Panel will proceed to a Decision.
ii. Respondent’s Request for a Three-Member Panel
The Panel is satisfied that the Center correctly applied the Rules and associated deadline dates as outlined above in section 3, Procedural History. On June 14, 2012, the Center formally notified the Complaint to the Respondent, setting July 4, 2012 as the last date for receipt of a Response, and said: “This is also the last date by which you should make any required payments to us if you choose to designate a three-member Administrative Panel (...)”. No such election was made in time. The Case File was communicated to the Panel on July 10, 2012 and deliberation began on July 11, 2012. The Response at that stage was composed of a copy of the Respondent’s filing to the District Court. On July 12, 2012, in Procedural Order No. 1, the Panel indicated to the Parties the likelihood of proceeding to a Decision and, in the interest of fairness, offered the Respondent the option to put its Response into the conventional format under the Policy. It was not until July 13, 2012, in reply to the duly appointed Panel’s Procedural Order No. 1, that the Respondent first asked for a three-member Panel. In this Panel’s assessment, having been duly appointed and having exceptionally granted the Respondent an additional period to make submissions, nothing in the Rules (paragraphs 5 and 6) or the Policy provides for either party mandating during the course of the deliberations a switch from a sole Panelist to a three-member Panel (Facebook, Inc. v. Amjad Abbas, WIPO Case No. DME2010-0005).
B. Identical or Confusingly Similar
The Panel finds that the disputed domain name <navista.com> is identical to the trademark NAVISTA in which the Complainant presently has rights as required under paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The onus is upon the Complainant to prove in the terms of paragraph 4(a)(ii) of the Policy that the Respondent is without rights or legitimate interests in the disputed domain name. The Complainant has asserted a prima facie case to that effect.
Paragraph 4(c) of the Policy provides that the Respondent may seek to rebut the Complainant’s prima facie case according to the following provisions, which are without limitation:
(i) before any notice to you of the dispute, your [the Respondent’s] use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the disputed domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
A decision as to whether the Respondent has established rights or legitimate interests in the disputed domain name may to some degree depend upon whether there has been registration or use in bad faith, because bona fide use cannot reasonably flow from registration or use in bad faith. In the circumstances of this dispute the Panel will proceed directly to a discussion of bad faith under paragraph 4(a)(iii) of the Policy.
D. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that:
“(iii) your [the Respondent’s] domain name has been registered and is being used in bad faith.”
The wording of paragraph 4(a)(iii) of the Policy has been the subject of some discussion since the implementation of the UDRP. The interpretation of that clause is pivotal to the present case. As widely interpreted, the meaning is conjunctive and requires independently that the disputed domain name has been registered in bad faith, and also has been observed being used in bad faith.
The registration of a disputed domain name is an instantaneous event, and the circumstances of that registration, in so far as they may be accessible to enquiry, may determine whether registration happened in good faith or bad faith. By contrast, use is ongoing and changeable.
Paragraph 4(b) of the Policy, which is subservient to paragraph 4(a)(iii) of the Policy, list four illustrative alternative circumstances, without limitation, that “shall be evidence of the registration and use of a domain name by a Respondent in bad faith”, as follows:
“(i) circumstances indicating that you [the Respondent] 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; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your website or location.”
The first three illustrative circumstances, clauses (i) to (iii) above, refer predominantly to the act and purpose of registration. The fourth, clause (iv), commencing “by using the domain name...”, refers exclusively to use and not to registration.
In any event, it has been recognized that the requirement to prove both registration and use is conjunctive, and that in order for a complainant to be able to succeed registration in bad faith must be proven independently.
The disputed domain name was registered in the name of the Respondent on June 19, 1998, prior to the implementation of the UDRP in 1999, by which the Respondent is nevertheless bound by reference. The Complainant has produced copies of three trademark registrations held in its name for NAVISTA, the earliest being the INPI registration having a date of deposition or registration of May 30, 2000, which was published on July 13, 2000. Thus the earliest date for which the Complainant has asserted prior existence of its trademark, whether registered or otherwise, is nearly two years after the Respondent registered the disputed domain name. Logically, a complainant is unlikely to be able to prove that a domain name was registered with the intention to conflict in bad faith with a complainant’s trademark that did not exist at that time. In the event that the disputed domain name might hypothetically have conflicted with a similar trademark held by an entity unrelated to the Complainant, that is not a matter before the Panel.
The matter does not necessarily end there, however, as there might be circumstances in which a domain name could be registered in bad faith in order intentionally to exploit some informed anticipation that a similar trademark would be registered in the future. There is no evidence or suggestion in this case that the Respondent may have anticipated the Complainant’s trademark plans, for example through inside knowledge, a predictable new company name, or the expectation of a future product.
On occasions the character of use of a domain name may in itself provide a retrospective source of evidence of a registrant’s intentions at the time of registration, on the balance of probabilities, particularly where the usage has been immediate, material, and in self-evidently bad or good faith. Irrespective of the use of the presently disputed domain name over the years since its registration, there is no evidence pointing to any original intention to target the Complainant, especially given the gap of nearly two years between the registration dates of the disputed domain name and the Complainant’s trademark respectively.
An extension of the concept of a retrospective deduction of a registrant’s intentions, to achieve a retroactive construction, was expressed in City Views Limited v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE, WIPO Case No. D2009-0643 (often referred to after the relevant domain name, <mummygold.com>). The respected panelist in Mummygold proposed that in his view, “bad faith registration can occur 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...”; and later, “If a party uses the domain name in the future so as to call into question the party’s compliance with the party’s representations and warranties, there may be retroactive bad faith registration”. This was a reference to paragraph 2 of the Policy, which reads:
“Your Representations. By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that (a) the statements that you made in your Registration Agreement are complete and accurate; (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights.”
Mummygold was factually different from the present dispute, for example the relevant domain name was registered before the trademark was registered but after a similar trademark had been in use, and there were other considerations. Nevertheless, a principle of a domain name registration being deemed retroactively (as distinct from retrospectively) to have been in bad faith, contrary to the original fact, could create unintended consequences for an innocent holder of a domain name. A complainant whose trademark is infringed by an otherwise legitimate business already has other remedies, outside of the UDRP.
The Complainant lists 78 domain names in its ownership comprising the trademark NAVISTA standing alone followed by a top or second level directory, such as <navista.asia> and <navista.za.com>, together with 18 domain names incorporating a combined form of the trademark such as <navistabox.com> and <navista-services.fr>, a total of 96 domain names. As the Complainant itself says, “It is abundantly clear that NAVISTA S.A. has attempted to maintain a policy of protecting its registered trademark, not only by registering its trademarks, but also by processing the greatest possible number of domains in as many countries as possible; for that reason, it is reasonable to think that the domain NAVISTA.COM is also claimed by NAVISTA S.A.”
The Complainant’s determined pursuit of a comprehensive Internet presence since at least as early as 2007 is illustrated by the registration dates of its domain names, some of which date back to 2007 including <navista.ch>, <navista.name>, <navista.mobi>, <navista.us>, <navista-ns1.com> and <navista-ns2.com>. The Respondent has countered with a list of 13 “Navista” domain names, four of them illustrated with website screen captures, that it says have no connection to the Complainant. In other words, the trademark or name “Navista” is somewhat less than exclusive. Understandably from the Complainant’s point of view, it desires the disputed domain name, <navista.com>. It may reasonably be presumed that the Complainant, by 2007, was knowledgeable about the Internet, would have checked at an early stage for the availability of <navista.com>, and should have been aware at least 5 years ago that it had been taken 9 years previously.
More than 12 years have elapsed since the Complainant’s deposition or registration of its trademark on May 30, 2000. The disputed domain name was taken 14 years ago on a basis of first come, first served, and the Complainant has not come close to proving that the Respondent could have nurtured bad faith towards the Complainant at that time. There can be no principle that the creation of a trademark thereupon creates rights in the pre-existing equivalent domain name. A finding against the Complainant under paragraph 4(a)(iii) of the Policy is inevitable.
No statute of limitations, or doctrine of laches, is incorporated explicitly into the Policy. Paragraph 15(a) of the Rules, however, empowers the Panel to decide the 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”. As the respected panelist in a previous case said, “The longer the time a disputed domain name has been registered, the more difficult it is for a complainant to prove bad faith registration.” (AVN Media Network, Inc. v. Hossam Shaltout, WIPO Case No. D2007-1011). Had the present decision been less transparent, the Complainant would not have been helped by the delay in lodging the Complaint.
On occasion a panel may opt to continue a discussion past the point of inevitability in order to provide additional reasons for the decision. The Parties in this case have projected a litigious stance, with the Complainant referring repeatedly to this “lawsuit” and the Respondent having filed papers in the District Court. Accordingly, in case this dispute may move to another forum, the Panel will refrain from discussion of issues surrounding bad faith use or the legitimacy of any Respondent interest in the disputed domain name.
E. Reverse Domain Name Hijacking
The Respondent has argued at length for a finding of attempted reverse domain name hijacking (RDNH) against the Complainant. According to paragraph 1 of the Rules:
“Reverse Domain Name Hijacking means 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 states in part:
“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.”
Findings of RDNH carry no additional sanction.
A number of cases under the UDRP seem to fall into the category whereby a corporation belatedly realises it should have registered a certain domain name long ago, and sets upon a mission that it may view as “retrieving” it. A finding against the Complainant does not equate with RDNH; considerably more is required. Absent any grave inequality of arms such as might have converted the Complainant’s good try into harassment, and again out of reluctance to move beyond the issue pivotal to this Decision for the reason given above, the Panel declines to find Reverse Domain Name Hijacking.
For all the foregoing reasons, the Complaint is denied.
Dr. Clive N.A. Trotman
Dated: July 24, 2012