WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Microsystems Technology, Inc. d/b/a ANYDOC v. Matthew Lamb
Case No. D2012-2193
1. The Parties
The Complainant is Microsystems Technology, Inc. d/b/a ANYDOC of Tampa, Florida, United States of America, represented by Smith & Hopen, P.A., United States of America.
The Respondent is Matthew Lamb of Wynnewood, Pennsylvania, United States of America, represented by Montgomery McCracken Walker & Rhoads LLP, United States of America.
2. The Domain Name and Registrar
The disputed domain name <anydoc.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2012. On November 7, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 7, 2012, 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 for the Domain Name.
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 November 12, 2012. On December 5, 2012, the Center extended the Response due date until December 7, 2012, in response to a request from the Respondent on December 3, 2012. The Response was filed with the Center December 7, 2012.
The Complainant submitted a Supplemental Filing on December 17, 2012, and the Respondent filed a Reply on December 31, 2012.
The Center appointed W. Scott Blackmer, Douglas M. Isenberg and Gordon Arnold as panelists in this matter on January 23, 2013. 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.
4. Factual Background
The Complainant is a Florida business corporation that offers automated document and data solutions. The Complainant does business under the name “AnyDoc”, and the Complaint states that the Complainant’s software products have been branded with the ANYDOC mark since March 24, 2003, when the product line was rebranded. The Complainant’s product names, as advertised on its website at “www.anydocsoftware.com”, typically include the ANYDOC mark with other descriptive terms, such as “OCR for ANYDOC”, “ANYDOC Invoice”, and “ANYDOC Claim”. The Complainant has offices in Florida, the United Kingdom, Switzerland, and Germany, and it also sells its software products globally through its website.
The Complainant holds United States Trademark Registration No. 2805085 (registered January 13, 2004) for the standard-character mark ANYDOC. This is also the basis for an International Registration of the mark under the Madrid System in several other countries.
According to the Registrar’s WhoIs database, the Domain Name was created on October 12, 2001. It does not currently resolve to an active website. The Panel notes that archived screenshots found through the Internet Archive Wayback Machine at “www.archive.org” show that in the period 2002 – 2006 the Domain Name resolved to a website for an English company offering print and online customer communications services, variously styled as “AMIC Solutions Limited”, “dsiAMIC”, “AnyDoc”, or “dsiAnyDoc”. The latest of these screenshots is dated May 1, 2006. Subsequent screenshots in 2006 show that the Domain Name resolved to an error message, “No web site is configured at this address”, and then, by December 2006, to a pay-per-click (“PPC”) advertising landing page. A single archived screenshot for the Domain Name in February 2011 also shows a PPC advertising landing page with “sponsored listings” for a variety of goods and services. The links prominently featured in the main body of the page are for document scanning and document management products, at least some of which appear to compete with those offered by the Complainant.
The Response recounts that the Respondent began registering domain names in 2003, “with the idea of accumulating enough domains to permit him to create an Internet media conglomerate.” The Respondent says that he and a partner formed a California corporation for this business and focused initially on developing a website for ememorials or end-of-life memory preservation. The Respondent’s “larger business plan” was to develop topical informational websites. According to the Response, the Respondent purchased the Domain Name in November 2006 (the Response attaches a receipt for the purchase from Snapnames), and this is consistent with the Internet Archive screenshots showing that the Domain Name was no longer used for the English commercial website by that time.
The Respondent states that the Domain Name was to be used for a website helping Internet users locate medical doctors in a region or specialty. This would compete with online services offered by others, such as those found at “www.docasap.com”, where “doc” is used, as in the Domain Name, to refer to doctors, not documents. (English language dictionaries show that “doc” has long been used to signify “doctor”.) The Respondent registered other domain names that also would have been used for a planned “Medical Services Network”, including <usdentistfinder.com> and <orthodontistlocator.com>. The Respondent says that his new company engaged software developers but then ran out of funds to develop any websites. The Respondent’s corporation was dissolved in 2007. The Respondent maintains the various domain name registrations “in the hope of reviving the business plan” and denies ever listing them for sale.
The parties agree that in 2010 the Complainant’s Manager of Information Services contacted the Respondent about purchasing the Domain Name. The Respondent denies any prior awareness of the Complainant. The Respondent replied that he was not interested in selling the Domain Name, but the Complainant asserts that they subsequently discussed a purchase price. However, no agreement was reached. It is undisputed that the communications in 2010 did not mention the Complainant’s trademark claims.
In October 2012, counsel for the Complainant inquired about purchasing the Domain Name through the Registrar’s Domain Buyer service. The Respondent initially declined, but the parties subsequently exchanged emails about a proposed purchase of the Domain Name for USD 6,500. The parties disagree on whether an agreement was reached and then rescinded, but it is clear that the Respondent ultimately declined to sell the Domain Name for that price. This UDRP proceeding followed.
5. Parties’ Contentions
The Complainant asserts that the Domain Name is identical to its registered ANYDOC mark and that the Respondent has failed to demonstrate rights or legitimate interests in the Domain Name.
The Complainant argues that the Respondent should be deemed to have had constructive notice or knowledge of the mark and was “willfully blind” in registering an identical Domain Name. The Complainant cites the “passive holding” doctrine to argue that bad faith should be found even though the Respondent has never used the Domain Name for a website, listed it for sale or lease, or approached the Complainant about selling it. The Complainant infers that the Respondent nevertheless selected the Domain Name in order to sell it to the Complainant for an excessive price, to disrupt the Complainant’s business, and/or to mislead Internet users for commercial gain. The Complainant observes that the Respondent holds more than 300 domain names and argues that some of them (<youtubedownloaders.com>, <photoshopbuddy.org>, <twuttons.com>, and <dizzard.com>) appear to incorporate a well-known trademark or represent a misspelling of a trademark, suggesting that the Respondent has a pattern of registering domain names in bad faith to exploit famous marks.
The Respondent argues that the Complainant does not, in practice, use ANYDOC alone as a trademark but only longer names such as “ANYDOC SOFTWARE”, citing “trademark mutilation” cases in the United States. The Respondent suggests that the Domain Name has a generic signification and is not likely to cause confusion with the mark.
The Respondent describes a business plan to use the Domain Name in connection with an informational website about medical doctors, which was never developed because of a lack of funds. The Respondent categorically denies any intent when registering the Domain Name to sell it to the Respondent. In fact, the Respondent denies awareness of the Complainant or its mark until 2010, when the Complainant first approached the Respondent about purchasing the Domain Name.
The Respondent asks for a finding of Reverse Domain Name Hijacking, concluding that this Complaint was brought in bad faith simply because the Complainant was unwilling to pay more to purchase the Domain Name. The Respondent also observes that the Domain Name was first registered in 2001 (albeit by an unrelated party), before the Complainant’s brand was in use.
6. Discussion and Findings
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.”
A. Supplemental Filings
The Policy contemplates prompt, efficient resolution of domain name disputes on a narrow range of issues and with only two limited remedies, transfer or cancellation of a domain name. Accordingly, the Rules and Supplemental Rules provide only for a complaint and response, within strict time and word limits. There is no explicit provision for additional filings except for further statements or documents provided in response to a request from the Panel (Rules, paragraph 12). Paragraph 10 of the Rules directs the Panel to conduct the proceeding “with due expedition” and empowers the Panel to “determine the admissibility, relevance, materiality and weight of the evidence.”
Panels are consequently reluctant to countenance delay through additional rounds of pleading and typically accept supplemental filings only to consider new evidence or provide a fair opportunity to respond to new arguments. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.2, and cases cited therein. With very limited exceptions, these “exceptional circumstances” involve matters that arise after the initial pleading was filed and which could not reasonably have been anticipated at that time. See, e.g., Digital Ceramic Systems Limited v. Baltea SRL, WIPO Case No. D2012-1198 (“the supplemental filings should address relevant issues which were not known by the filing party at the time that it filed its documents”); Mani Brothers, LLC v. Lincoln Gasking, WIPO Case No. D2008-0097 (“[p]anels that have allowed additional pleadings generally do so only when the response includes a matter that the complainant could not reasonably have anticipated when the complaint was filed”).
The Complainant’s Supplemental Filing addresses certain facts raised in the Response concerning the timing of the Respondent’s acquisition of the Domain Name, the Respondent’s asserted business plans, and the 2010 discussions about purchasing the Domain Name. These are relevant factual issues, and not all of this information would have been in the Complainant’s possession prior to filing the Complaint. The Complainant’s Supplemental Filing also responds to the Respondent’s arguments concerning trademark use, trademark mutilation, and Reverse Domain Name Hijacking. Not all of these arguments could reasonably have been anticipated in the original Complaint. The Respondent’s Reply then addresses the Complainant’s assertions on each of these points.
The Panel will consider the factual submissions and arguments in both of the parties’ Supplemental Filings on the points mentioned above. Otherwise, to the extent that the Supplemental Filings consist simply of reargumentation of issues discussed in the Complaint and Response, they will not be considered as part of the record in this proceeding.
B. Identical or Confusingly Similar
It is undisputed that the Complainant holds United States and international trademark registrations for ANYDOC. The Domain Name is identical, disregarding the “.com” suffix that is a non-distinctive portion of the Domain Name and immaterial for Policy purposes.
The Respondent argues that the Complainant does not actually use the mark in this form, but that is not relevant for the first element of a UDRP complaint, which is essentially a standing requirement. See WIPO Overview 2.0, paragraph 1.2. The Complainant holds a current registration for an identical mark and, therefore, clearly has standing to challenge the Domain Name. Substantive objections to the continued registration of the mark are outside the scope of this UDRP proceeding. In any event, it appears from the record that the mark as registered appears on the Complainant’s website and product packaging, with the appropriate registration symbol immediately following the mark itself.
The Panel concludes that the first element of the Complaint has been established.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
“(i) before any notice to it of the dispute, the respondent’s 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; or
(ii) that the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative proposition, requiring information that is primarily, if not exclusively, within the knowledge of the Respondent. Thus, the consensus view among UDRP panels is that paragraph 4(c) of the Policy shifts the burden to the Respondent to come forward with evidence of a right or legitimate interest in the Domain Name, once the Complainant has made a prima facie showing. See WIPO Overview 2.0, paragraph 2.1 (and cases cited therein). The Complainant has done so in this proceeding, by pointing out that the Domain Name is identical to the Complainant’s trademark, which was registered and in use in 2006 when the Respondent acquired the Domain Name.
It is undisputed that the Respondent allowed the Domain Name for a time resolve to a PPC advertising landing page. This could be considered a use in connection with the bona fide offering of goods and services under certain conditions, such as presenting advertising relevant to the generic rather than trademark value of the Domain Name. See, e.g., Philip Morris USA Inc. v. Prophet Partners Inc., WIPO Case No. D2007-1614 (and cases cited therein). However, the Respondent does not claim any deliberate effort to establish such a topical advertising portal. The Respondent explains that the landing page was linked automatically by the Registrar to the inactive Domain Name and denies receiving any revenues from this activity. Thus, the temporary use of the Domain Name for PPC advertising does not reflect the Respondent’s rights or legitimate interests in the Domain Name.
The Respondent has described business plans to use the Domain Name for an informational website for which the Domain Name would be relevant as a generic reference to locating “any” doctor. The Respondent has admittedly never developed such a website, however, and the record is slim when it comes to evidence of “demonstrable preparations” for such use. Perhaps the only concrete evidence is that the Respondent also registered two other domain names that would be relevant for those seeking to locate other medical professionals, dentists or orthodontists, respectively. In the Panel’s view, this is not sufficient to meet the Respondent’s burden of showing “demonstrable” preparations to use the Domain Name for the legitimate purpose described in the Response. This evidence is relevant, however, to the consideration of bad faith registration and use of the Domain Name in the following section.
The Panel concludes that the second element of the Complaint has been established.
D. Registered and Used in Bad Faith
The Policy’s non-exhaustive list of instances of bad faith in paragraph 4(b) includes the following cited by the Complainant:
“(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; 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 web site or location.”
The relevant date for determining bad faith for Policy purposes is not when the Domain Name was first created for another registrant in 2001, as urged by the Respondent, but the date when the Respondent acquired the Domain Name registration in 2006. See WIPO Overview 2.0, paragraph 3.7.
The Respondent denies being aware of the Complainant or its brand in 2006, and the Response includes the mandatory signed certification of completeness and accuracy. The Respondent’s denial is plausible. The Complainant’s mark is based on two common words, which have generic as well as trademark signification. The Complaint refers to the “fame” of the mark, but the evidence in the record relates to industry recognition and website awards rather than to advertising in mass media, stories in popular print and broadcasting outlets, or sales in retail chain stores. The Complainant’s branded products are specialized kinds of business software, not consumer items. There is no evidence that the Respondent was ever involved in the purchase or sales of such business software, and the stated business plan for the Domain Name concerned a consumer information website about medical professionals, an entirely unrelated business. (The Respondent’s registration of other domain names appropriate for similar consumer information websites also supports the Respondent’s account, even though those websites were not developed.) There was no reported contact between the parties until more than three years after the Domain Name was registered. Thus, the Panel finds that there was no particular reason that the Respondent should have been aware of the Complainant’s brand in 2006.
The Complainant cites UDRP decisions finding bad faith on the basis of “constructive notice” of a registered mark (particularly if both parties are located in the United States, where the constructive notice principle has been applied in trademark law), constructive knowledge (the domain name registrant “knew or should have known” about the mark), or “willful blindness”. As explained in WIPO Overview 2.0, paragraph 3.4, most panels have declined to find bad faith solely on the basis of constructive notice or similar grounds, and this Panel similarly concludes that the Policy requires more to establish bad faith than the existence of a registered trademark. Moreover, this proceeding does not involve a factual pattern similar to those that typically ground a finding of bad faith on the theories of constructive notice, constructive knowledge, or willful blindness, such as a record of cybersquatting, irresponsible bulk registrations, famous brand names, highly distinctive marks, or other indications that a denial of awareness of the mark is improbable or inexcusable. Id., paragraph 3.4. The few examples cited by the Complainant of questionable domain name registrations by the Respondent are inconclusive, and there is no indication in the record that a court or UDRP panel has determined that the Respondent is a cybersquatter or engaged in automated bulk registrations. The mark at issue is not demonstrably “famous,” the Domain Name at issue consists of dictionary words, and the Respondent plausibly selected it for a relevant potential use. In the Panel’s view, the facts of this case do not warrant an inference of bad faith on the basis of constructive notice, constructive knowledge, or willful blindness.
The Panel is also inclined to credit the Respondent’s denial of any intention, when he registered the Domain Name, to sell the Domain Name to the Complainant or a competitor. The Respondent denies awareness of the Complainant or its mark at that time and offers plausible reasons for registering the Domain Name for its generic rather than trademark value. It is undisputed that the Respondent held the Domain Name for years without listing it for sale or approaching the Complainant or a competitor. It was the Complainant that approached the Respondent about purchasing the Domain Name in 2010 and 2012. Hence, the Panel is not persuaded that the Respondent acquired the Domain Name “primarily” to sell or lease it to the Complainant.
Nor is it likely, in the Panel’s opinion, that the Respondent acquired the Domain Name primarily to disrupt the Complainant’s business, a conclusion in some UDRP cases involving respondents that are competitors, disgruntled former employees, or protestors. The Respondent plausibly denies knowing about the Complainant and, so far as the record reveals, never engaged in a business competing with the Complainant. The Complainant uses a different domain name for its online business and had done so for several years preceding the Respondent’s acquisition of the Domain Name. The Respondent has held the Domain Name for six years without setting up a competing website. Thus, there is no evident disruptive effect, and the Panel does not find that the Respondent acquired the Domain Name primarily to disrupt the Complainant’s business.
The Complainant also cites Policy, paragraph 4(b)(iv), in arguing that the Respondent acquired the Domain Name in the hope of misleading Internet users for commercial gain. Again, the Respondent says he was unaware of the Complainant at that time and offers credible reasons for obtaining the Domain Name based on its generic value. The record does not establish that the Complainant’s mark was so well-known and valuable that the Respondent is simply not to be believed.
Moreover, in all these years the Respondent has not actually made use of the Domain Name for commercial gain, but the Complainant’s answer to that is to cite the “passive holding” doctrine. This refers to the approach under which bad faith in both registration and use may be inferred when a domain name is identical or confusingly similar to a distinctive and well-known mark, even though the domain name has not yet been used for a website or offered for sale. As summarized in WIPO Overview 2.0, paragraph 3.2, when the domain name has simply been registered and held,
“[t]he panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity.”
These examples do not describe the facts in the current proceeding. The Panel notes as well that bad faith findings based on “passive holding” tend to involve highly distinctive and well-known marks such as TELSTRA, where the panels often remark that it is difficult to imagine a reason for choosing the disputed domain name other than in reference to the well-known mark. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. 2000-0003. By contrast, the Respondent here selected a Domain Name consisting of generic words, for a plausible generic purpose.
In sum, the Panel concludes that the Complainant has not met its burden of persuasion in this contested UDRP proceeding on the third element of the Complaint, bad faith.
E. Reverse Domain Name Hijacking
The Respondent asks the Panel to rule that the Complaint represents 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 Complaint, while ultimately unsuccessful, makes plausible arguments under the Policy, with reference to UDRP decisions concerning, for example, the respondent’s “constructive knowledge” of a mark that was registered at the time the respondent obtained the disputed domain name. The Panel determined that the Complainant did not prevail in meeting its burden of establishing the Respondent’s bad faith in the registration and use of the Domain Name. But the Panel does not conclude on this record that the Complaint was brought in bad faith or primarily to harass the Respondent.
The Panel declines, therefore, to make a finding of Reverse Domain Name Hijacking.
For the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Douglas M. Isenberg
Date: February 7, 2013