WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Major Wire Industries Limited v. DigitalOne AG
Case No. D2015-0284
1. The Parties
Complainant is Major Wire Industries Limited of Candiac, Quebec, Canada, represented by Legault Joly Thiffault LLP, Canada.
Respondent is DigitalOne AG of Zug, Switzerland, represented by Dr. Meyer-Dulheuer & Partners LLP, Germany.
2. The Domain Name and Registrar
The disputed domain name <major.com> (the “Domain Name”) is registered with CSL Computer Service Langenbach GmbH dba Joker.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 21, 2015. On February 23, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 24, 2015, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amended Complaint on February 26, 2015.
The Center verified that the Complaint together with the amended 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 March 2, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 22, 2015. The Response was filed with the Center on March 21, 2015. On March 25, 2015 the Center acknowledged receipt of an Additional Submission from Complainant, noting that it would be at the Panel’s discretion whether or not to consider it.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on March 27, 2015. 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 was founded in Montreal, Quebec in 1884 and named after its founder, E.J. Major. Complainant has used “Major Wire” and “Major” as corporate and business names in the course of trade for over 130 years, and celebrated 125 years of existence in 2009. Since its founding, Complainant has manufactured screen media for the aggregate, mining and industrial industries. Since 1990 Complainant has been jointly owned by Jean Leblond, President and CEO of Complainant, and Haver & Boecker, a German-based company. Complainant has wire manufacturing facilities, wire finishing facilities as well as authorized dealers throughout North America and China. Haver & Boecker has facilities in Brazil, Chile, Peru, Germany, South Africa and Australia.
Complainant is the owner of (i) a Canadian registered trademark No. TMA762671, registered on March 25, 2010, and (ii) a United States of America (“United States”) registered trademark No. 4037216, registered on October 11, 2011. Both of these trademarks are for the mark MAJOR with design.
Complainant’s trademarks are registered to cover, among other things, goods and services including:
(i) “Wire generally made of metal or metal alloy or plastic or composites namely straight wire, corrugated wire, shaped wire used in the manufacture of mesh screens, screen cloths, sieves and filters for sifting, filtering and sieving the rock, sable, gravel, minerals, and for use in the manufacture of various industrial products; woven metal wire screens of straight wire, pre-crimped metal wire, metal section, namely, screen panels made of metal, and wires made primarily metal alloys and composites composed primarily of metals”; and
(ii) “Operation of a business offering production, manufacture and distribution services of the following wares: screening woven with straight wires, corrugated wires, shaped wires, generally made of metal or metal alloy or plastic or composites, namely grilles, screening, sieves, filters; screening woven with straight wires,
corrugated wires, shaped wires, generally made of metal or metal alloy or plastic or composites used in the manufacture of other industrial products.”
Complainant has been using and promoting its goods and services online through its website located at “www.majorwire.cc” since 2000. From February 2014 to February 2015, Complainant’s website received 23,056 visits.
The Domain Name was registered on June 2, 1995. Complainant has submitted evidence to show that Respondent became registrant of the Domain Name in September 2010.
5. Parties’ Contentions
(i) Identical or confusingly similar
Complainant states that it is a leading manufacturer of screen media throughout North America and many parts of the world, with sales totaling USD 27 million in 2013 and USD 30 million in 2014. Approximately 70 percent of all sales in 2014 were made outside of Canada, with a total of 60 percent made in the United States. Complainant indicates that it is not only very active in the United States, but has also worked on numerous projects in Europe, including in Switzerland. In recent years, Complainant has worked on a project in Germany with Haver & Boecker and on a project in Ireland with Power Screen International.
Complainant states that it has spent time, money and effort in promoting and selling its goods and services in association with its MAJOR trademark, and has submitted samples of advertisements in various publications, including the magazines “Aggregates & Mining Today” and “Pit & Quarry” from November 1999 to June 2012. These magazines have a distribution of around 20,000 copies per month. Since 2000, Complainant has spent around USD 10 million in marketing and publicity.
Complainant states that Respondent presents itself as a Swiss Internet business solutions company specializing in dedicated servers, with a datacenter located in the United States.
Complainant contends that, in accordance with the Policy, when a complainant owns a registered trademark anywhere in the world, it satisfies the threshold requirement of having trademark rights. Further, Complainant states that the Domain Name is identical to Complainant’s trademark. When registered trademarks contain a logo, only the portion of the trademark that is capable of being incorporated in a domain name should be considered for this purpose, namely, the mark MAJOR. The overall impression created by the Domain Name is that it is identical and/or confusingly similar to Complainant’s MAJOR trademark, corporate and trade names. Complainant submits that paragraph 4(a)(i) of the Policy has been satisfied.
(ii) Right or legitimate interest
Complainant argues that Respondent has no rights or legitimate interests in the Domain Name. Complainant never granted Respondent any rights or authorization to use the MAJOR trademark for any purpose, including registering a domain name. Complainant has been using the MAJOR trademark as a trademark and business name since at least as early as 1981. Complainant has also been using “Major Wire Industries” as its corporate name since its founding in 1884. Complainant states that through its longstanding and extensive use, Complainant has acquired significant goodwill and reputation in the MAJOR trademark and corporate name.
The Domain Name has been transferred several times since its original creation date in 1995, and was allegedly acquired by Respondent on September 22, 2010. Complainant’s use and registration of the MAJOR trademark clearly predates the registration of the Domain Name.
Complainant contends that UDRP panels have consistently determined that when a domain name is transferred, the date of the transfer is the date at which the legitimate interest of a respondent should be assessed. The consensus view is to treat the transfer of a domain name to a third-party as a new registration (the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 3.7 states that “the transfer of a domain name to a third party does amount to a new registration.”)
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name for the following
a. The use of the MAJOR trademark predates the date of transfer of the Domain Name to Respondent, as well as the original registration of the Domain Name.
b. The Domain Name is not associated with an active website. When typing “www.major.com” as a URL, only a blank page appears. There is no bona fide offering of goods or services by Respondent associated with the Domain Name and no indication that Respondent intends to make such a bona fide offer.
c. In addition, a review of Respondent’s website located at “www.digitalone.com” reveals that Respondent does not use “major” as a trademark, trade name or otherwise to make a bona fide offer of goods or services.
d. Complainant states this is not a case where Respondent can have a legitimate interest in a domain name because the Domain Name is descriptive. Even if the word “major” is found in a dictionary, it cannot be said that this word is generic because, unless associated to another word, “major” does not describe anything. A word with an ordinary dictionary meaning can be used as a trademark. The situation here is different than in other cases where respondents were found to potentially have a legitimate interest in generic words. Alone, the word “major” cannot be said to be generic and Respondent cannot validly claim to have a legitimate interest in this Domain Name.
Complainant states that numerous UDRP cases have held that ownership of a registered trademark is sufficient to negate any potential legitimate interest a respondent could have. Complainant submits that it has discharged its prima facie burden of proving that Respondent has no rights or legitimate interests in the Domain Name.
(iii) Registered and used in bad faith
Complainant states that Respondent has registered and used the Domain Name in bad faith. Complainant is a well-known leader in manufactured screen media for the aggregate, mining and industrial sectors since its founding in 1884. The MAJOR trademark has been widely and consistently used in Canada since 1981 and in the United States, Mexico, Brazil, Australia, Germany and Peru since 1985, as evidenced by Complainant’s list of international distributors. Complainant’s use and registration of the MAJOR trademark predates the date at which Respondent acquired the Domain Name.
Respondent has no rights or legitimate interests in the Domain Name. As evidenced copies from the WayBackMachine, the Domain Name has not led to any active website for as long as Respondent has owned it. Respondent has not used or developed the Domain Name either for a bona fide offering of goods or services or for a legitimate noncommercial purpose. It has been established in previous UDRP cases that failure to use a Domain Name can be an indication that the Domain Name was registered without a bona fide intent to make good faith use
On November 26, 2014, the law firm representing Complainant contacted Respondent to inquire if the Domain Name was for sale, but no reply was received. A representative of Complainant then successfully contacted a representative of Respondent to inquire about acquiring the Domain Name. Respondent, through its representative, Sergei Arsentiev, then offered to sell the Domain Name for USD 115,000. Complainant states that Respondent did not provide a breakdown of this fee or any explanations as to why the requested amount was so high. Complainant has estimated that the out-of-pocket costs directly related to the Domain Name are USD 30 per year, meaning that since registration, Respondent would only have spent USD 150 for the Domain Name. Complainant contends that an offer to sell a domain name in excess of the documented out-of-pocket costs directly related to the domain name is not only evidence of, but conclusively establishes that the domain name has been registered and is being used in bad faith. The only exception to this is where a respondent can show that it has rights to or legitimate interests in the domain name at issue.
The fact that Complainant first approached Respondent to seek the transfer of the Domain Name does not preclude the panel from concluding that Respondent has registered and used the Domain Name in bad faith. Respondent owns approximately 60 domain names which, for the most part, seem to have nothing to do with the business of Respondent. Respondent owns domain names including:
- <no-nissan.org> (contains the famous NISSAN trademark)
- <trkistra.tv> (arguably a misspelling of orkistra, a software)
- <titarenko.com> (Alexey Titarenko is a famous Russian photographer)
- <orlovo.com> (the name of a village in the municipality of Haskovo)
- <openistria.com> (the inversed name of a golf competition: Istra Open)
- <openistria.org> (see above)
- <istra.life>, <istra.guru>, <istra.land>, <istra.estate> (the name of the official tourist association of Istria)
- <marketing-empressarial> (the name of a Spanish company)
- <hentai.cn> (the name of a type of pornographic videos and video games)
Complainant argues that given the large number of domain names owned by Respondent appearing to be irrelevant to its business, that some of these domain names appear to refer to third party companies, and the excessive amount requested by Respondent to transfer the Domain Name to Complainant, Respondent has acquired and is using the Domain Name primarily for the purpose of selling it to Complainant (or one of its competitors) for valuable consideration in excess of the documented out-of-pocket expenses directly related to the Domain Name, in violation of section 4(b)(i) of the Policy, and has engaged in a pattern of preventing owners of trademarks from reflecting their mark in a corresponding domain name, in violation of section 4(b)(ii) of the Policy.
(i) Identical or confusingly similar
Respondent contends that, contrary to Complainant’s submissions, the trademark and the Domain Name are not identical or confusingly similar. Respondent emphasizes that Complainant is owner of figurative trademarks for the term MAJOR in Canada and the United States. Respondent contends that Complainant’s device mark consists of the word “major” and several figurative elements (a square woven screen design appearing to the left of the wording) that form distinctive parts of the mark and therefore have to considered in comparing the Domain Name and the mark.
Moreover, Respondent emphasizes that Complainant has disclaimed use of the word “major”, as shown in the copies of both the Canadian and United States trademark registrations. Respondent relies on WIPO Overview 2.0, to argue that where a trademark includes a word or textual component that has been entirely disclaimed (indicating that the complainant has no exclusive rights in such word or text), or a word plus design element in which the design element is found to be the sole source of distinctiveness, such registration may be insufficient to enable the complainant to establish relevant rights for standing purposes under the UDRP. Therefore, if Complainant has disclaimed trademark rights in the term “major” in its Canadian and United States registrations, it should not claim to have trademark rights in that term. In addition, Respondent asserts that it is significant that Complainant did not draw attention to this issue in the Complaint, and did not provide any reasons why it should be considered to have trademark rights in respect of a term that it has disclaimed.
Respondent contends that even if Complainant was founded in 1884 and may have been very active in commerce in Canada and in the United States throughout the years, it has not gained any lawful rights by using the term “major”. Respondent argues that Complainant failed to submit evidence to show that it has used the MAJOR trademark, as compared to using its company name “Major Wire Industries”, before it obtained its Canadian and United States registered trademarks for MAJOR in 2010 and 2011. Complainant has only submitted copies of its website at “www.majorwire.cc” and extracts from the WhoIs database and WayBackMachine regarding the domain name <majorwire.cc>. However, to demonstrate use of the MAJOR trademark and any common law rights, Complainant should have submitted additional evidence, for example, in the form of product pictures, advertisements, sales figures, etc., but failed to do so.
Respondent also argues that, as acknowledged in the Complaint, the word “major” is a widely known and widely used generic term. The word refers to, among other things, a military rank, a class of chord, interval, key or scale in music, and a common surname or the name of different places, especially in Canada and the United States. Thus, where a trademark consists of words and/or designs that cannot be registered because of their generic meaning, a disclaimer in the registration makes clear to others that they may use the disclaimed term without facing legal objections. Complainant did not show on which grounds the disclaimer in the trademark registrations should be considered inapplicable in this case. Therefore, in view of the disclaimer and the lack of proof of any other lawful rights, Respondent contends that Complainant has no rights to a trademark potentially identical or confusingly similar to the Domain Name.
(ii) Rights or legitimate interests
Respondent states that it has rights and legitimate interests in the Domain Name. The Domain Name was purchased by True Records Inc. in March 2006. Sergei Arsentiev, a director and shareholder of True Records Inc., is also a shareholder who owns 95 percent of Respondent. He founded True Records Inc. for the acquisition of domain names. Respondent was established by Asentiev in 2007 for performing online services of all kinds in the area of digital distribution of audio and video material. As Asentiev was already in the possession of the Domain Name, he made it available to Respondent. The WhoIs records show only that the registrant organization changed to the name of Respondent in 2010; however, the administrative and technical contacts for the Domain Name have not changed since 2006. Thus, contrary to the submission in the Complaint, there was no transfer of the Domain Name to trigger a new date of registration. Hence, the Domain Name was registered before Complainant’s registration of the MAJOR trademark.
(iii) Registered and used in bad faith
Respondent contends that it did not register and use the Domain Name in bad faith, and that Complainant failed to submit any evidence indicating circumstances where Respondent only registered and used the Domain Name for selling it to Complainant. According to Respondent, the Domain Name was first registered in 1995 and then bought by Respondent in 2006 for its own business purposes. Complainant made the first contact to Respondent in order to purchase the Domain Name. However, because Respondent is the legitimate holder of the Domain Name, Respondent has discretion whether to sell it or not.
Respondent argues that it has not used the Domain Name in bad faith merely because it offered to sell it to Complainant for a price of USD 115,000. The Domain Name was acquired by True Records Inc. in 2006 for a price of EUR 48,000. In view of the enhancement in value of the Internet between 2006 and 2015, and given that Respondent did not show any interest in selling the Domain Name before the offer of Complainant was received in November 2014, Respondent assessed the value of the Domain Name and made its offer on this basis.
Respondent contends that Complainant did not submit any evidence that Respondent registered the Domain Name in order to prevent Complainant, as the owner of the MAJOR trademark, from reflecting the mark in a corresponding domain name. Respondent is a company selling digital business solutions and is not a competitor of Complainant. Complainant did not submit any evidence that Respondent had registered and used the Domain Name for disrupting the business of competitor. Complainant has also presented no evidence that Respondent used the Domain Name to attract for commercial gain Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark. While Respondent may hold a wide number of domain names, there is no evidence that Respondent holds them only for the purpose of selling them or disrupting the business of competitors. In particular, Respondent is not known to be named in other UDRP cases. In sum, Respondent did not register and use the Domain Name in bad faith.
(iv) Reverse Domain Name Hijacking.
Respondent requests a finding of Reverse Domain Name Hijacking (“RDNH”) again Complainant. Respondent states that Complainant recognizes in the Complaint that the Domain Name was first registered in 1995, 15 years prior to Complainant’s filling of a trademark application for the mark MAJOR (and 20 years prior to the Complaint). Respondent acquired the Domain Name in 2006, four years prior to Complainant’s filling of the trademark application for MAJOR. Moreover, Complainant had to disclaim any exclusive use of the word “major” in its Canadian and United States trademark registrations, but did not draw attention to this issue in the Complaint. Even if Complainant was not aware that disclaiming rights to the textual element of a trademark could impact its rights under the UDRP, Complainant’s legal advisor should have evaluated the consequences arising from this issue. Respondent argues that Complainant has used this case in an effort to acquire the Domain Name in a manner that is cheaper than paying Respondent to purchase the Domain Name. Thus, the Complaint was brought in bad faith.
C. Complainant’s Additional Submission
In response to Respondent’s request for a finding of RDNH, Complainant makes the following points. Complainant states that it was clear in the Complaint that it was relying not only on its trademark registrations but also on its common law rights and acquired distinctiveness for the mark MAJOR established through longstanding and extensive use. Complainant did not hide that the exclusive use of the word “major” was disclaimed in the Canadian and United States trademark registrations. On the contrary, Complainant provided a certified copy of the Canadian trademark registration, as well as a translation of the information appearing in French only, to make sure that all information was available to Respondent and the Panel. Similarly, Complainant provided a copy of its United States trademark registration.
Furthermore, as compared to the cases cited by Respondent (J2 Global Communications, Inc. v. Ideas Plus, Inc., WIPO Case No. D2005-0792, and Ideation Unlimited, Inc. v. Dan Myers, WIPO Case No. D2008-1441), where Google searches produced many descriptive results and none of the first ten results referred to the complainant in those matters, the situation is different here, since a Google search of the word “major” shows Complainant’s website in the first five results, hence showing that the MAJOR mark is distinctive of Complainant’s services.
Complainant states that the Policy affords protection not only to those having rights in registered trademarks but also to those having common law rights in their marks as well as in business and corporate names. Even though Complainant has disclaimed the right to exclusive use of the word “major” in its registered marks, Complainant has never waived its common law rights in the term. Several panels have found that a complainant could disclaim a trademark right in a term and yet still establish trademark rights in this term by providing evidence of common law rights. Through the evidence already submitted, Complainant has established that it holds common law rights in the trademark MAJOR, having used MAJOR WIRE and MAJOR as trademarks, as a business name and as the distinctive part of its corporate name, in the normal course of trade for over 130 years. Through this extensive and longstanding use, the word “major” has become distinctive of the services offered by Complainant. Further, Complainant has submitted evidence of use of the trademark, business and corporate names long before 2010, and, for that matter, long before 2006. Complainant refers the Panel to the evidence submitted in this case, which it has reviewed in detail. In addition, Complainant submits with its Additional Submission evidence of the sales made by Complainant in association with services rendered under the MAJOR mark, business and corporate name, for the years 1996 to 2010. The word “major” is also the distinctive element of its corporate name and has been for over 130 years. Complainant did not need to provide evidence that the word “major” is placed on its products, as Respondent contends.
Regarding rights or legitimate interests, Complainant rejects Respondent’s claim that there was no transfer of the Domain Name in 2010 because it was bought by True Records Inc. in March 2006, supposedly a company with ties to Respondent through an individual named Sergei Arsentiev. Complainant emphasizes that the WhoIs database shows that the name of registrant was changed, and Respondent has produced no evidence and no supporting documents showing that Sergei Arsentiev is a shareholder of Respondent. Even if that were the case (which is not admitted but denied), Respondent is a different legal entity than True Records Inc. and the fact that both companies might have a shareholder in common is not relevant to the present matter. Moreover, on May 4, 2006, the WhoIs database indicated that the registrant for the Domain Name was “IKS-Media OOO”, not True Records Inc. Complainant submits that a transfer is established when there is a change of registrant; the administrative and technical contacts are irrelevant to the ownership of a Domain Name. As such, Complainant submits that Respondent became the registered owner of the Domain Name only in 2010 and that this date is the relevant date for the present proceedings. Nevertheless, Complainant has proven its rights in the mark MAJOR well before 2006.
Regarding registration and use in bad faith, Complainant has nothing to add on this point and refers the Panel to the arguments submitted in the Complaint.
6. Discussion and Findings
In order to succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith.
A. Identical or Confusingly Similar
The Panel must first determine whether the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights. The Panel finds that the Domain Name is identical to Complainant’s MAJOR trademark, while disregarding the Domain Name’s “.com” top-level suffix for purposes of the comparison. However, a key issue in this case is whether Complainant’s trademark rights are cognizable under the Policy. Respondent has objected that, for purposes of the Policy, Complainant does not have rights in a trademark because Complainant, as to its two registered design marks, has disclaimed the right to the exclusive use of the word “major”, apart from the design marks as shown on the trademark registers with their design elements.
WIPO Overview 2.0, paragraph 1.1, provides that “[i]f the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.” However, paragraph 1.1 also sets out an exception to this general approach, stating that
“Where a trademark includes a word or textual component which has been entirely disclaimed (indicating the complainant has no exclusive rights in such word or text) within the relevant registration, or of a word plus design element in which the design element is found to be the sole source of distinctiveness, such registration alone may be insufficient to enable the complainant to establish relevant rights for standing purposes under the UDRP, absent a showing of acquired distinctiveness through use of the relevant mark. In practice, the latter would typically entail establishing a case for common law or unregistered rights in the mark.
Moreover, paragraph 1.11 of WIPO Overview 2.0 further elaborates on this exception, stating in relevant part that
“Where the entire textual component of a complainant’s relevant trademark has been disclaimed, or the only protectable component of such mark is comprised of design elements which generally cannot be represented in the alpha-numeric string of a domain name, then (absent a showing of acquired distinctiveness through use of the relevant mark) the complainant may lack any relevant rights under the UDRP on the basis of such mark, rendering moot any assessment of the disputed domain name’s identity or confusing similarity with it.”
While paragraphs 1.1 and 1.11 set out an exception (in the case of disclaimers) to the general approach that ownership of a trademark satisfies the threshold requirement of having trademark rights, both paragraphs also recognize that this exception applies only in cases where there has been no “showing of acquired distinctiveness through use of the relevant mark.”
Although due to the descriptive nature of Complainant’s MAJOR mark, there might be a greater onus on Complainant to present evidence of secondary meaning or distinctiveness (see WIPO Overview 2.0, paragraph 1.7), the Panel nonetheless finds that Complainant has satisfied this standard. Complainant has provided evidence of continuous and longstanding use of its MAJOR mark within the relevant industry. This use of the mark with the associated products and activities of Complainant has been substantial and widespread, as reflected in the evidence submitted by Complainant. There is no doubt that the mark has acquired secondary meaning in the markets where Complainant operates. Moreover, the term “major” is not descriptive of the products or services offered by Complainant, which fortifies the distinctiveness of Complainant’s mark in relation to its particular goods and services (e.g., just as “apple” is not descriptive of computers, iPhones or the related information technology services offered by Apple Corporation, which helps to make the APPLE mark highly distinctive). Thus, Complainant has demonstrated common law rights in its MAJOR trademark, despite the disclaimers in its registered marks.
Accordingly, the Panel concludes that the Domain Name is identical to Complainant’s MAJOR trademark.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the Domain Name. A complainant is normally required to make out a prima facie case that a respondent lacks rights or legitimate interests in a domain name. Once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests.
In this case, Complainant has established a prima facie case. Complainant has shown that a review of Respondent’s website located at “www.digitalone.com” shows that Respondent is not known by the name “major” and does not use “major” as a trademark or trade name. The Domain Name has not been associated with an active website, and there is no bona fide offering of goods or services by Respondent associated with the Domain Name and no indication that Respondent intends to make such a bona fide offering. Complainant has been using the MAJOR trademark since at least as early as 1981, and this use predates the date of transfer of the Domain Name to Respondent (whether we assume that date to be in 2006 or 2010), as well as the date of the original registration of the Domain Name in 1995. The evidence demonstrates that Complainant has no relationship with Respondent and has not authorized Respondent to use Complainant’s MAJOR mark.
In response to these points, Respondent has submitted information only about whether Respondent should be considered to have obtained possession of the Domain Name in 2006 or 2010. As indicated above, both dates are after Complainant commenced using its MAJOR trademark and developing reputation and goodwill in that mark. In the face of Complainant’s prima facie showing concerning lack of any rights or legitimate interests, Respondent provided no information or evidence to demonstrate that it has any right or legitimate interest in the Domain Name. The Panel can guess that Respondent might have acquired the Domain Name so as to hold it and eventually re-sell if for a profit, given that the word “major” is a common dictionary word in the English language; however, it is not the Panel’s role to speculate on Respondent’s reasons for obtaining the Domain Name (or the numerous other domain names held by Respondent). In any event, Respondent has provided no basis for the Panel to find any rights or legitimate interests in the Domain Name.
In view of all of the facts and circumstances in this case, the Panel determines that Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Finally, the Panel must consider whether Complainant has demonstrated that the Domain Name was registered and is used in bad faith.
In this case, as discussed above, Complainant has demonstrated that its trademark, MAJOR, had acquired reputation and good will in the industry and markets where Complainant operates. However, despite Complainant’s argument to the contrary, the word “major” is also commonly used in the English language as a noun and an adjective (e.g., “John Smith held the rank of major in the army” or “that was the major point of my argument”). Thus, with absolutely no evidence presented to the Panel that Respondent targeted Complainant and its MAJOR mark when it acquired the Domain Name, or that Respondent was otherwise aware of Complainant and its mark up until the time when Complainant contacted Respondent seeking to purchase the Domain Name, the Panel finds that Respondent was reasonably entitled to acquire the Domain Name containing the ordinary English word “major” on a “first come first served” basis.
Moreover, there is no showing that Complainant’s mark had achieved a level of reputation and distinctiveness (e.g., as compared to the APPLE mark) such that Respondent incidentally located in a different country from Complainant (to the extent that may be relevant in today’s globally-connected, online-searchable world), should be deemed to have had constructive notice of Complainant’s mark. This is particularly pertinent in this case, where each of Complainant’s design marks disclaimed exclusive use of the word “major”. Thus, when Complainant approached Respondent to purchase the Domain Name, which to that point had been held inactive by Respondent, Respondent’s response seeking to sell the Domain Name to Complainant does not demonstrate that Respondent had registered or used the Domain Name in bad faith.
In view of all of the above circumstances, the Panel determines, on the balance of the probabilities, that Complainant has failed to demonstrate that the Domain name was registered and is being used in bad faith.
D. Reverse Domain Name Hijacking
The Panel determines that it is appropriate to deny Respondent’s request for a finding of RDNH in this case, in view of the Panel’s decision above, in view also of the rigorously contested issues as between the parties, and, in particular, in view of the lack of transparency in the ownership structures allegedly existing between Respondent and entities previously holding the Domain Name.
For the foregoing reasons, the Complaint is denied.
Christopher S. Gibson
Date: May 2, 2015