WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Librarica, LLC v. Md. Rayhan Chowdhury, raynux.com
Case No. D2015-1383
1. The Parties
The Complainant is Librarica, LLC of Addison, Texas, United States of America ("USA"), represented by Ferguson, Braswell & Fraser, PC, USA.
The Respondent is Md. Rayhan Chowdhury, raynux.com of Dhaka, Bangladesh, self-represented.
2. The Domain Name and Registrar
The disputed domain name <librarika.com> is registered with Name.com LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 5, 2015. On August 6, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 7, 2015, 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.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 13, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 2, 2015. The Response was filed with the Center on September 2, 2015.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on September 9, 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
Background information about the Parties is taken from the Complaint and the Response.
The Complainant is a Texas, USA, limited liability company registered on January 18, 2005 under the name Librarica, LLC. It asserts trademark rights under Common Law in the word "Librarica" and operates an active website at "www.librarica.com".
The Complainant states its business to be the provision of high quality software applications that automate the management of computers and printers in public and academic libraries. Its software product CASSIE is indicated as being trademarked.
The Respondent is the sole proprietor of a business in Dhaka, Bangladesh named Raynux, and has produced a cloud Integrated Library System named "Librarika". This system is used by libraries around the world to catalogue books and study materials online. It also manages the check-out and check-in of library materials.
The disputed domain name was registered on April 28, 2013 in the names of Md. Rayhan Chowdhury as the registrant name and raynux.com as the registrant organisation.
5. Parties' Contentions
The Complainant's contentions include the following:
The Complainant asserts that it has Common Law rights in the trademark LIBRARICA in which it has accumulated substantial goodwill through continuous usage for over ten years in the USA and worldwide. The Complainant states that the company name Librarica LLC was filed for registration on January 18, 2005 at the Office of the Secretary of State of Texas, and has produced a copy of the application.
The Complainant contends that the disputed domain name was registered after the Complainant had acquired its Common Law trademark rights and that it is confusingly similar to the trademark LIBRARICA. The Complainant says that, compared with its trademark, the disputed domain name is phonetically identical, looks nearly identical with the exception of one letter, and also denotes the word "library". Internet users may believe they are viewing the Complainant's website when viewing the Respondent's website.
The Complainant further contends that the Respondent does not have rights or legitimate interests in the disputed domain name. Its use by the Respondent has not been authorised or permitted by the Complainant. The Respondent is not connected with the Complainant and has not been authorised to use the Complainant's trademark.
The Complainant says that the Respondent is not commonly known as "Librarika", and is not making a fair or noncommercial use of the disputed domain name because goods or services are offered for sale. The Respondent's use of the disputed domain name for an offering of goods or services is with intent to trade off of the Complainant's goodwill and therefore cannot be bona fide.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith. It contends that the disputed domain name was registered in order to attract Internet users by creating a likelihood of confusion with the Complainant's trademark for commercial gain. The Complainant argues the Respondent sells products similar to those of the Complainant.
The Complainant states and has produced a sworn affidavit to the effect that actual confusion between the words "Librarica" and "Librarika" has occurred at least once, on June 28, 2015, at the American Library Association Annual Conference.
The Complainant has cited certain previous decisions under the Policy that it considers should support its position.
The Complainant requests the transfer of the disputed domain name.
The Respondent denies the Complaint. The Respondent's contentions include the following:
The Respondent contends that the Complainant's claim to Common Law trademark rights is limited to the state of Texas, USA. The Respondent is located in Bangladesh, outside the jurisdiction of the USA, and was completely unaware of the Complainant's business at the time of registration of the disputed domain name.
The Respondent says that its product "Librarika" is an Integrated Library System deployed in the cloud. It allows libraries to catalogue books and study materials online and to manage their check-out and check-in. Its development began at Presidency University, Bangladesh in 2011 to replace old library systems with something better. It is offered free, or recently with charges for higher usage. Over 1,000 small and medium libraries use the service for free in schools, colleges, charities, private and government organizations and churches, including in the United Kingdom of Great Britain and Northern Ireland, Australia, New Zealand, the People's Republic of China, India, Malaysia, Bangladesh, Ukraine, Portugal, the Middle East, Africa, Indonesia, the Philippines and the Republic of Korea.
The Respondent contends that the name "Librarika" was derived independently of any knowledge of the Complainant. The word "Librarika" comes from the Bangla word for library with the addition of the Bangla consonant similar to ("kô"). Any phonetic similarity to the Complainant's trademark is coincidental and unintentional. It is conceded that the Complainant's trademark is also believed to be derived from the word "library".
The Respondent contends that the Complainant's main product is different from the Respondent's since it is a computer session and printing management system named CASSIE for libraries and other places. The Respondent does not offer any such product.
In respect of rights and legitimate interests in the disputed domain name, the Respondent contends that there has been no prior registration of a trademark related to "Librarika" in the geographical jurisdiction of the Respondent. The Respondent has used the name "Librarika" for two and a half years and considers that it has some protection as an unregistered trademark under the Trademarks Act (2009) of the People's Republic of Bangladesh.
The Respondent says its use of the disputed domain name is bona fide. The Respondent's service is in use in more than 1,000 small and medium libraries worldwide. It is a social contribution to the world and most libraries are within the free usage criteria. The Respondent has also contributed another social welfare service, related to blood donation (accessible at "www.i-blood.com").
The Respondent further contends that the disputed domain name has not been registered or used in bad faith. The Complainant does not significantly operate in the geographical areas where the Respondent has its clients (as listed above). In the two years prior to August 31, 2015, the Respondent's website received 23,190 organic sessions through search engines, of which only 14 sessions by 3 unique users came though the keyword "librarica".
6. Discussion and Findings
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 dispute-resolution provider, in compliance with the Rules, 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 required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
Since the disputed domain name is registered in the Respondent's personal name and also in the relevant company name, it will be appropriate, for consistency, to refer to both Parties in the impersonal.
A. Identical or Confusingly Similar
The Complainant contends that it has acquired rights under Common Law in the unregistered trademark LIBRARICA through continuous usage over a period of ten years and through reputation. Evidence has been produced of the Complainant's application for the registration of the company name Librarica LLC in the State of Texas on January 18, 2005. Solely for the purposes of this proceeding under the Policy, the Panel accepts that the Complainant has established sufficient rights in the unregistered trademark LIBRARICA.
The generic Top-Level Domain ("gTLD") designation of the disputed domain name (".com") may be disregarded in the determination of confusing similarity in this case. What remains of the disputed domain name <librarika.com> is "librarika", which differs by one letter from the Complainant's trademark and would probably be pronounced to sound the same. The Panel finds sufficient similarity between the disputed domain name and the Complainant's trademark to make a finding for the Complainant under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has stated a prima facie case to the effect that the Respondent has not been licensed or authorised in any way to use the Complainant's trademark and does not have rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides for the Respondent to refute the Complainant's prima facie case and to establish rights or legitimate interests in a disputed domain name by demonstrating:
"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the 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 domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue".
The above circumstances are illustrative and rights or legitimate interests may be established by the Respondent alternatively to the satisfaction of the Panel.
The Respondent has outlined, with supporting copies of documentary evidence, its provision of a significant online service operated through the disputed domain name and the website to which it resolves. This work began in 2011 at Presidency University, Bangladesh and set out to replace various existing library catalogue and book-logging systems with new software. This system is now under the proprietorship of Raynux, a business run by Md. Rayhan Chowdhury. The Panel finds the evidence convincing that the system has been successful, having been installed by more than 1,000 university, college, church and other small or medium libraries in 12 countries and in the Middle East and Africa. The Respondent has submitted a screen capture of part of its records, showing a long-page headed "Report - Active Libraries", which ends with "Page 1 of 11, showing 100 records out of 1049 total ..." Sampling the list with an arbitrary interval of 10, they include:
Learn Across Borders
Dalmatinsko Kulturno Drustvo
INESS - Institute of Economic and Social Studies
First Fret Music School
National Open University of Nigeria Library
Human Rights Commission of Malaysia (SUHAKAM)
The Law School Library (apparently in India)
Tweed Valley Adventist College
The Panel has no reason to doubt that these are genuine libraries. On the evidence, therefore, it does appear that the Respondent, in partial fulfilment of the terms of paragraph 4(c)(i) of the Policy, has demonstrated a convincing, genuine and substantial use of the disputed domain name in connection with an offering of goods or services. The decision as to whether or not that usage is bona fide requires more, however, because it cannot be a bona fide use if the disputed domain name was registered and is being used in bad faith. The question of bad faith will therefore be visited before returning to that of rights or legitimate interests.
C. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
"(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
(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 website or location or of a product or service on your website or location".
The Complaint focuses on paragraph 4(b)(iv) of the Policy. A finding of confusing similarity in the terms of paragraph 4(a)(i) of the Policy, under the reasonably low threshold customarily applied to that paragraph, does not translate into a finding for the Complainant in the terms of paragraph 4(b)(iv) of the Policy, without more. The Complainant is required to prove that the Respondent, with intent, has attempted to attract Internet users for commercial gain by means of likely confusion between the disputed domain name and the Complainant's trademark.
The Complainant argues that the Respondent, having selected a domain name that is phonetically identical but differing by one letter from the Complainant's trademark, began selling similar products to those of the Complainant.
The Complainant describes its own product as software that automates the management of computers and printers in libraries. Copies of promotional brochures, appended to the Complaint, describe the Complainant's product, known and apparently trademarked as CASSIE, under the headings "computer session control", "reservations and waiting lists", "print cost recovery" and "statistics reporting". Each heading has subheadings and points conveying that the system allows computers to be reserved, usage to be monitored, printing to be controlled, and costs to be calculated, among other things. In a paper appended by the Complainant, taken from the Library Journal, dated July 16, 2012 and titled "Why Waste-Reducing Print Management Software Is Essential for Libraries" (full URL not cited), the author of the paper refers to CASSIE as, for example, "the combined PC reservation and print management solution from Librarica". An article dated June 26, 2005 submitted from the blog "Library Technology NOW", referring to CASSIE (www.librarytechnologynow.blogspot.com/2005_06_01_archive.html), is headed "Public Access and Printing".
It is not in dispute that the Complainant's product is well regarded. The Complainant has submitted the "2015 Library Purchasing Survey" published online by "Strategic Library" with a table of "information technology/automation vendors" (URL not cited) that rated "Librarica" 4.67 stars out of 5 overall, being the highest of 25 vendors.
By contrast, the Respondent describes its product as a cloud-based Integrated Library System that provides for the cataloguing of books and study materials and for checking them in and out. Evidently each library is assigned a unique third-level URL in the form <username.librarika.com>. A Wikipedia online encyclopaedia entry titled "List of next-generation library catalogs" ("www.en.wikipedia.org/wiki/List_of_next-generation_library_catalogs", captured September 2, 2015), submitted by the Respondent, lists "Librarika" in an unranked table of comparisons, stating it to have been publicly released in 2013, to be free, not open-source, and using its proprietor's own index/search engine. The Panel recognises that Wikipedia may be subject to open editing and is not necessarily definitive.
It may be deduced from the foregoing that the Complainant's and the Respondent's products operate differently in different spheres of library management. That difference alone would not confer upon the Respondent any right to trade upon confusion with the Complainant's trademark, although the Respondent maintains there is no confusion between LIBRARICA and "Librarika".
The Complainant asserts that the Respondent has intended to trade off the Complainant's goodwill and must have known of the existence of the Complainant at the time of registration of the disputed domain name. The Respondent says it was completely unaware of the Complainant's business at that time.
The principle of constructive notice of a trademark is seldom invoked decisively under the Policy, unless, for example, a trademark of world-class stature has been blatantly appropriated. Apart from the Complainant's Internet presence, the only public record submitted by the Complainant as to its name, which for the purposes of this proceeding is accepted as being an unregistered trademark, is the company registration document filed in the State of Texas in 2005. The onus of proof rests with the Complainant. On the evidence produced, the Panel is not convinced that the Respondent, more probably than not, knew of the Complainant at the time of registration of the disputed domain name, or had any intention to create confusion between itself and the Complainant, or could have benefited from doing so. Notwithstanding that the Complainant and the Respondent both service the library community; each offers specialised niche software that should be readily distinguishable in its sophisticated market. Notably absent from the Respondent's website (as captured by the Complainant) is any sign of secondary monetisation, such as pay-per-click links or sponsored advertising.
The Respondent's own records reveal that of 23,190 sessions through search engines, 14 sessions by 3 unique users had included the keyword "Librarica". It is not suggested as to whether these users may have been users searching for "Librarica" as such, or were mis-spellings of "Librarika".
In asserting that confusion between the Complainant and the Respondent has actually occurred, the Complainant has produced an affidavit sworn by Mr. Clarke as an owner and representative of the Complainant. The affidavit bears some analysis and is therefore reproduced in part:
"I am aware of at least one specific instance in which a potential customer has confused "Librarica" with "Librarika". At the American Library Association Annual Conference in San Francisco, California, June 28, 2015, a potential customer approached me at Librarica, LLC's vendor booth with a list of library application providers. This potential customer stated that she had been sent by her superior to visit and gather information from several companies regarding their library catalog software. This potential customer had been searching the conference floor for Librarica, LLC's vendor booth, though her list had "Librarika" listed as the vendor. Fortunately, I was able to describe our product to this potential customer and clarify our company's proper name; however, it is entirely foreseeable that many other potential customers who purchase online do not have such opportunity and have inadvertently purchased from the wrong provider."
With due respect, the Panel is unable to attach to the affidavit the significance asserted by the Complainant. The Policy deals with complaints of abusive registration and use of a domain name confusingly similar to a trademark. It does not deal with trademark infringement or confusion between trademarks per se. The affidavit asserts an incident of confusion between trademarks or company names at a conference and makes no reference to domain names.
On a plain reading of the affidavit, the enquirer had indeed been instructed to look for "Librarika" (among others), as written on her list, and to enquire specifically about library catalogue software. Presumably the Respondent was not represented at the conference. Since the Complainant is not "Librarika" and its appended brochures make no obvious offering of library catalogue software, it is difficult to accept that the enquirer or her superior were confused as to who or what they were looking for. It is similarly difficult, given the different products of the Complainant and the Respondent, to see the logic behind the conjecture that potential customers have inadvertently purchased from the wrong provider or are likely to be so confused. The Complainant's claim in the affidavit to have been "able to describe our product to this potential customer and clarify our company's proper name" is notably silent about any ability to satisfy the enquirer's requirement for library catalogue software.
The Panel can find no convincing evidence that the experiences of the enquirer or her supervisor in connection with the conference derive from likely confusion between the disputed domain name and the Complainant's trademark.
Having regard to all the evidence, the Panel finds that the Complainant has failed to prove, on the balance of probabilities, that the disputed domain name was registered or is being used in bad faith in the terms of paragraph 4(a)(iii) of the Policy.
The matter of the Respondent's possible rights or legitimate interests in the disputed domain name (section 6B above) may now be concluded. In the absence of a finding of registration or use in bad faith, the Respondent's use of the disputed domain name in connection with an offering of goods or services before notice of the dispute is found by the Panel to be bona fide and on the evidence and on the balance of probabilities the Panel finds that the Complainant has failed to prove that the Respondent does not have rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy.
For the foregoing reasons, the Complaint is denied.
Dr. Clive N. A. Trotman
Date: September 16, 2015