WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Institute of Electrical and Electronics Engineers, Incorporated v. HNT Domain Holdings, Fred Ediho
Case No. D2010-1871
1. The Parties
Complainant is The Institute of Electrical and Electronics Engineers, Incorporated of Piscataway, New Jersey, United States of America, represented by Dorsey & Whitney, LLP, United States of America.
Respondent is HNT Domain Holdings, Fred Ediho of Baltimore, Maryland, United States of America.
2. The Domain Names and Registrar
The disputed domain names <ieee2030.com> and <ieee2030.org> (the “Domain Names”) are registered with Abacus America Inc. d/b/a Names4Ever.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 4, 2010. On November 4, 2010, the Center transmitted by email to Abacus America Inc. d/b/a Names4Ever a request for registrar verification in connection with the Domain Names. On November 5, 2010, Abacus America Inc. d/b/a Names4Ever transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on November 8, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 28, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 29, 2010.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on December 7, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant is the owner of the IEEE trademark (the “IEEE Mark”), registered as early as 1993 with the United States Patent and Trademark Office (the “USPTO”) and in various other jurisdictions around the world for goods and services covering technical standards; an electronic database of journals; conference proceedings, articles and other printed matter; and hosting and arranging conferences.
Complainant applied for two “IEEE2030” trademarks on October 21, 2010.
Complainant holds registrations for the domain names <ieee.org>, <ieee.com>, <ieee2030.net> and various other domain names incorporating its IEEE Mark. Complainant uses these domain names to host its IEEE websites.
5. Parties’ Contentions
Complainant has used the IEEE name since 1963. IEEE is the world’s largest technical society, with more than 375,000 members in 160 countries. IEEE develops global technical standards that are used in a broad range of industries, including power and energy, biomedical and healthcare, information technology, telecommunications, transportation, nanotechnology, information assurance and many more.
Complainant’s IEEE Mark is well-known and enjoys a worldwide reputation and renown among the computer engineering, biomedical technology, telecommunications, electric power, aerospace and consumer electronics sectors, including professionals in those industries who read journals and attend conferences on those topics. The IEEE Mark serves to identify a single source, namely, Complainant IEEE, and its products and services. Complainant has spent considerable sums of money, effort and time for the research and development of its products and services that are promoted, marketed and sold under the IEEE Mark. Complainant has also spent considerable time, effort and money extensively promoting its products and services under the IEEE Mark throughout the world.
The IEEE Mark is well-known to many members of the general public through, among other things, the many technological devices that embody standards developed by IEEE – e.g., the IEEE 802.11 series of wireless networking standards, commonly referred to as WI-FI; the IEEE 802.3 series of standards for the Ethernet family of frame-based computer networking technologies for local area networks (LANs); the IEEE 1284 standard for bidirectional parallel communications between computers and other devices, such as printers; and the IEEE 1394 standard for serial bus interfaces, commonly referred to as FireWire or iLink.
Among the standards currently under development by IEEE is the IEEE P2030 project. IEEE formally launched that project in March 2009 to develop the “Draft Guide for Smart Grid Interoperability of Energy Technology and Information Technology Operation with the Electric Power System (EPS), and End-Use Applications and Loads.” The IEEE P2030 working group is creating a knowledge base addressing terminology, characteristics, functional performance and evaluation criteria, and the application of engineering principles for smart grid interoperability of the electric power system with end-use applications and loads. The guide is intended to inform the creation and/or enhancement of interconnection standards. Upon completion and approval, the standard developed by the IEEE P2030 project will be known as the IEEE 2030 (or, in the alternative, IEEE2030) standard, although numerous members of the public already informally refer to the IEEE P2030 project as “IEEE 2030.” In addition to the IEEE P2030 project, IEEE also hosted the IEEE Energy 2030 Conference in November 2008 in Atlanta, Georgia.
As a result of Complainant’s long and prominent use of its IEEE Mark for and in connection with its products and services, the IEEE Mark has acquired worldwide recognition as identifying exclusively the products and services of Complainant, and the valuable goodwill symbolized by the IEEE Mark belongs exclusively to Complainant. The same is true with respect to IEEE 2030, which, through IEEE’s prominent use, has come to identify exclusively the standard being developed by IEEE and the conferences, work groups and other proceedings associated with that project.
(1) The Domain Names Are Identical or Confusingly Similar to the Trademark in Which Complainant Has Rights
Complainant contends the Domain Names are identical and confusingly similar to its IEEE 2030 trademark applications and the IEEE Mark, as the Domain Names incorporate both in their entireties. The Domain Names include the top-level domain names <.com> and <.org>, but neither suffix does anything substantive to distinguish the Domain Names from Complainants’ marks. Even if Complainant’s trademark rights are limited to IEEE and do not extend to “2030,” the Domain Names would nevertheless be confusingly similar to the IEEE Mark. Prior panels have held that the addition of a numeral to a domain name that otherwise only consists of a distinctive trademark does not dispel confusion between the domain name and the trademark at issue. Therefore, the Domain Names are identical and confusingly similar to Complainant’s marks.
(2) Respondent Has No Rights or Legitimate Interests in Respect of the Domain Names
Complainant contends that Respondent cannot demonstrate that it has any rights or legitimate interests in the Domain Names. Complainant’s registrations for the IEEE Mark and prominent use of IEEE 2030 evidence its exclusive rights in those marks with respect to the goods and services related to technology, generally, and power grid interoperability, specifically, and Complainant has not authorized Respondent to use IEEE 2030 or the IEEE Mark.
Respondent has not made use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services, nor could Respondent do so in light of the renown of Complainant’s IEEE Mark and IEEE 2030 project and Complainant’s exclusive rights in its marks. In addition, Respondent has not been commonly known as “IEEE” or “IEEE 2030.” Instead, Respondent is commonly known as HNT Solutions or Fred Ediho. In order for Respondent to show that it has rights or legitimate interests in the Domain Names based upon a claim that it is commonly known by the Domain Names, Respondent must provide adequate extrinsic proof that a corresponding group of consumers who are likely to access its website associates the IEEE Mark and IEEE with Respondent rather than with Complainant. Given the widespread renown enjoyed by Complainant’s IEEE Mark and IEEE 2030 worldwide and Complainant’s long and well established rights in the IEEE Mark, it is impossible for Respondent to meet that burden.
Moreover, Respondent is also not making a legitimate noncommercial or fair use of the Domain Names without intent for commercial gain to divert consumers misleadingly or to tarnish the trademark at issue. Instead, upon information and belief, Respondent currently uses the Domain Name <ieee2030.com> to resolve to a pay-per-click website from which it derives revenue based upon the number of times visitors click on links on the web pages associated with that website. Such use of the IEEE Mark and IEEE 2030 name is commercial and does not constitute fair use. Rather, such use infringes upon Complainant’s trademark rights, as discussed in further detail below, and is not a legitimate use of the Domain Names under the Policy. The other Domain Name, <ieee2030.org>, does not resolve to an active website. There is no evidence that Respondent is using or has made demonstrable preparations to use this Domain Name or a name corresponding to this Domain Name in connection with a bona fide offering of goods or services.
Respondent’s use of the Domain Names constitutes a breach of the Registration Agreement, as well as the Policy, under which Respondent warranted that, to the best of its knowledge and belief, neither the registration of the Domain Names nor the manner in which it intended to use the Domain Names would directly or indirectly infringe the legal rights of a third party. Respondent’s breach of that warranty divested it of any rights or interests in the Domain Names that it may have had. Given the exclusive rights owned by Complainant in the IEEE Mark and IEEE 2030, Respondent can have no rights or legitimate interests in the Domain Names.
(3) Respondent Registered the Domain Names in Bad Faith
Complainant argues that Respondent registered the Domain Names without any bona fide basis for such registrations in an attempt to capitalize unfairly on the goodwill of Complainant’s well-known IEEE Mark and free ride on the renown of its IEEE 2030 project. Prior panels have held that bad faith is found if it is unlikely that the registrant would have selected the domain name without knowing of the reputation of the trademark in question. Such a finding is particularly apt where complainant’s trademark is well-known, as is the case with the IEEE Mark. In the present proceeding, Complainant contends that Respondent had actual and constructive notice of IEEE’s rights in IEEE 2030 and the IEEE Mark before it registered the Domain Names. The site linked to <ieee2030.com> includes almost exclusively sponsored listings for products and services related to electricity and power grids – a proposed standard for understanding and defining smart grid interoperability of the electric power system – and is targeting its sponsored listings at those searching for information about Complainant’s IEEE 2030 products and services, demonstrating that Complainant is aware of IEEE and IEEE 2030. Furthermore, upon information and belief, Respondent is a full-service innovation technology and consulting company. The Complainant argues that it is inconceivable for an information technology consultant not to be familiar with IEEE, the world’s largest technical society and developer of many of the most well-known standards in the industry. As such, it is highly unlikely that Respondent selected the Domain Names without being aware of Complainant’s well-known IEEE Mark or Complainant’s rights in IEEE 2030. To proceed with registration in the face of such knowledge clearly demonstrates bad faith on the part of Respondent.
Not only has Respondent registered the Domain Names in bad faith, it is also using the Domain Names in bad faith. Upon information and belief, Respondent uses the <ieee2030.com> Domain Name to resolve to a pay-per-click website from which it derives substantial revenue through Internet advertising. Respondent has created online directories and each of the listings in Respondent’s directories is an advertiser-supported listing from which Respondent derives income based upon the number of times visitors to the sites click on the listing. Respondent’s chances for increased revenues rise in direct proportion to the amount of Internet traffic that Respondent attracts to its online directories. Complainant submits that such is the primary reason Respondent registered and uses the <ieee2030.com> Domain Name – to free ride on the goodwill associated with Complainant’s well-known IEEE Mark, IEEE 2030 and the Internet traffic intended for Complainant’s websites.
As for the <ieee2030.org> Domain Name, Respondent could not have registered that Domain Name without knowledge of Complainant’s rights in IEEE 2030 and the IEEE Mark, given the renown of those distinctive marks. No use of the <ieee2030.org> Domain Name by Respondents can constitute a bona fide business or commercial use. Complainant has never authorized Respondent to use IEEE 2030 or the IEEE Mark for any business purpose, and any use of the <ieee2030.org> Domain Name for such purpose would constitute infringing use. Many panels have held that use of a domain name to constitute bad faith even where a registrant merely passively holds the domain name, as Respondent is doing with the <ieee2030.org> Domain Name. Given the renown of IEEE 2030 and Complainant’s IEEE Mark, use of the <ieee2030.org> Domain Name in the manner discussed above is likely to confuse consumers into believing that Respondent and the businesses listed in its online directories are affiliated with or endorsed by Complainant, or that Respondent’s use of the Domain Name is authorized by Complainant.
In addition, Respondent’s use and registration of the Domain Names disrupt Complainant’s business by depriving it of the right to host websites at <ieee2030.com> and <ieee2030.org> to provide information about IEEE’s products and services – in particular, those related to the IEEE 2030 project. Such acts of Respondent constitute bad faith use and registration of the Domain Name, as illustrated by the examples set forth in paragraph 4(b) of the UDRP.
Complainant enjoys exclusive rights in IEEE 2030 and the IEEE Mark by virtue of its registrations for the mark and/or its long-term, widespread and prominent use of both. Complainant has never consented to Respondent’s registration of IEEE 2030 or the IEEE Mark as a domain name, nor has Complainant ever granted any of its proprietary rights to Respondent. Accordingly, Respondent’s use of the Domain Names suggests a false designation of origin or sponsorship for Respondent’s goods and services. Complainant submits that Respondent undoubtedly chose the Domain Names: (1) in an effort to free ride on the goodwill associated with the distinctive IEEE 2030 and IEEE Marks in which Complainant enjoys exclusive rights; and/or (2) for the purpose of creating the false impression that Respondent is an authorized agent, licensee or representative of Complainant, which Respondent is not. Therefore, Respondent has registered and is using the Domain Name in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, Complainant must prove each of the following:
(i) the Domain Name is identical or confusingly similar to Complainant’s mark; and
(ii) 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.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which for the purposes of paragraph 4(a)(iii) are evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) of the Policy sets out three illustrative circumstances, any one of which if proved by Respondent may be evidence of Respondent’s rights to or legitimate interests in the Domain Name for the purpose of paragraph 4(a)(ii) above. In this case, however, Respondent has not submitted a Response.
A. Identical or Confusingly Similar
Complainant is required under paragraph 4(a)(i) of the Policy to prove that the Domain Names are identical or confusingly similar to a trademark in which Complainant has rights. The Panel finds that Complainant has fully met its burden. The Domain Names are confusingly similar to Complainant’s well-known IEEE Mark because they incorporate the entirety of this mark, while adding reference to “2030,” which serves to identify the IEEE’s P2030 Project developing standards for smart grid interoperability for energy technology and the electric power system. The combination of “IEEE” with the “2030” designation also creates domain names that are virtually identical to Complainant’s IEEE2030 trademark application. As a result of all of the above, the Panel finds that the Domain Names are confusingly similar to Complainant’s IEEE Mark, and therefore the condition of paragraph 4(a)(i) is fulfilled.
B. Rights or Legitimate Interests
The Panel observes that Respondent is not affiliated or related to Complainant in any way, nor is Respondent generally known by the Domain Names or authorized by Complainant to use the IEEE Mark. See Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (respondent had no rights or legitimate interests to use domain name because respondent was not licensed or otherwise permitted to use complainant's trademark).
As noted above, the IEEE Mark is well-known and widely used by Complainant, whose rights in the mark predate Respondent’s registration of the Domain Names. In addition, the reference to “2030” reinforces the association with Complainant and its IEEE P2030 project. The Panel agrees that the Domain Names are so closely identical to the well-known trademark of Complainant that Respondent could not reasonably pretend it was intending to develop a legitimate activity. Instead, the <ieee2030.com> Domain Name links to a website containing pay-per-click advertising links. This use of the Domain Name, taking advantage of the goodwill and reputation in Complainant’s marks, does not represent a use in connection with a bona fide offering of goods and services. See Pfizer Inc v. Juan Gonzales, WIPO Case No. D2004-0589; Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809; National Collegiate Athletic Association and March Madness Athletic Association, L.L.C. v. Mark Halpern and Front & Center Entertainment, WIPO Case No. D2000-0700; Pfizer Inc. v. The Magic Islands, WIPO Case No. D2003-0870; Nikon, Inc. and Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774. In addition, the <ieee2030.org> Domain Name does not resolve to an active website, and there is no evidence that Respondent is using or has made demonstrable preparations to use this Domain Name or a name corresponding to this Domain Name in connection with a bona fide offering of goods or services.
In the light of the above analysis, Complainant has established prima facie evidence that none of the circumstances establishing rights or legitimate interests applies. As stressed by many UDRP decisions, in such a case the burden of coming forward shifts to Respondent to rebut the evidence (see among others Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683). However, because Respondent failed to submit an answer to the Complaint, and given that the allegations of the Complaint prima facie do not raise any substantial doubts, the Panel accepts as true the allegations set forth in the Complaint and holds that Respondent has no rights or legitimate interests in respect of the Domain Names.
For all these reasons, the Panel finds that Respondent has no rights or legitimate interests with respect to the Domain Names under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
As mentioned above, Complainant’s IEEE Mark is well-known, identifying technical standards used in a broad range of industries and Complainant’s related standard-setting products and services. The Panel thus agrees with Complainant that it is highly likely that Respondent registered the Domain Names in 2009 with knowledge of Complainant’s IEEE Mark and the IEEE P2030 project. Respondent appears to have intentionally registered the Domain Names, entirely incorporating Complainant’s IEEE Mark combined with the “2030” designation, to refer to Complainant’s P2030 grid interoperability project. There is no plausible reason for why Respondent would have otherwise registered the Domain Names with these distinctive features.
Moreover, when viewing Respondent’s <ieee2030.com> website, one can observe that it attracts Internet users by creating a likelihood of confusion with Complainant’s Mark. The Panel confirmed that this Domain Name resolves to a website containing pay-per-click advertising links. This is evidence of Respondent’s bad faith registration and use of the <ieee2030.com> Domain Name under paragraph 4(a)(iii) of the Policy for which, due to the lack of any response from Respondent, there is no attempt at any rebuttal. In the case Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397, the panel found as follows: “In the present case, the [p]anel finds that, since [c]omplainant's trademark is well-known throughout the world, it is very unlikely, if not nearly impossible, that, when [r]espondent registered the [d]omain [n]ame, it was not aware that it was infringing on [c]omplainant's trademark rights. The [p]anel therefore concludes that the [r]espondent has registered the [d]omain [n]ame in bad faith.” The same analysis applies here. See also Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Liu Xingdong, WIPO Case No. D2003-0408; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110; The Body Shop International plc v. A-Team/ Lasse Nygaard, WIPO Case No. DAS2003-0001; Bartercard Ltd & Bartercard International Pty Ltd . v. Ashton-Hall Computer Services., WIPO Case No. D2000-0177.
As for the <ieee2030.org> Domain Name, as noted above, it is extremely unlikely that Respondent could have registered it without knowledge of Complainant’s rights in the IEEE Mark. Moreover, it is difficult to imagine a use of the <ieee2030.org> Domain Name by Respondent that would constitute a bona fide business or commercial use. Given the renown of Complainant’s IEEE Mark, use of the <ieee2030.org> Domain Name is likely to confuse consumers into believing that Respondent is affiliated with or endorsed by Complainant, or that Respondent’s use of the Domain Name is authorized by Complainant. In addition, Respondent’s registration of the <ieee2030.org> Domain Name disrupts Complainant’s activities by depriving it of the opportunity to host a website at this Domain Name to provide information about IEEE’s products and services related to the IEEE P2030 project. In this particular case, in view of this analysis above, the failure of Respondent to reply, and the abusive use of the companion <ieee2030.com> Domain Name by Respondent, the Panel agrees with those decisions where panels have held that even passive holding of a domain name may constitute bad faith use. See, e.g., Bayer Aktiengesellschaft v. H. Monssen, WIPO Case No. D2003-0275; Pfizer Inc. v. Order Viagra Online, WIPO Case No. D2002-0366 (citing many panel decisions that found passive holding to constitute bad faith use).
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <ieee2030.com> and <ieee2030.org> be transferred to Complainant.
Christopher S. Gibson
Dated: December 31, 2010