WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wolfram Group LLC v. Andrew Roberts
Case No. D2015-1935
1. The Parties
The Complainant is Wolfram Group LLC of Champaign, Illinois, United States of America ("US"), represented by Noah K. Tilton, US.
The Respondent is Andrew Roberts of Cheshire, Washington, United Kingdom of Great Britain and Norther Ireland ("UK").
2. The Domain Name and Registrar
The disputed domain name <wolframventures.com> is registered with LCN.COM Ltd. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 28, 2015. On October 28, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 29, 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 proceeding commenced on November 11, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 1, 2015. On November 19, 2015, the Respondent submitted its request to extend the response due date for four days, of which the Center acknowledged receipt. The Response was filed with the Center on December 5, 2015.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on December 18, 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
The Complainant is a provider of computational knowledge and mathematical software with offices in Paris, Tokyo, Lima, Linkoping, Bangalore, Boston and Champaign (Illinois). It has been operating under the name "Wolfram" since 1987. Perhaps, its most well-known service to the general public is the "Wolfram Alpha" search engine.
Amongst other things, the Complainant has registered WOLFRAM as a trademark in both the United States of America and as a Community Trademark:
- United States Trademark No. 3,740,375 registered on January 19, 2010;
- Community Trademark No. 006413397 registered on September 15, 2009.
Both trademarks are registered in respect of a range of goods and services in International Classes 9, 41 and 42. The Community Trademark specification is as follows:
"9 Mathematical software; publishing software; software for data analysis, presentation, and graphics; computer software featuring symbolic programming language for numerical, symbolic, and graphical computation, equation solving, mathematic and scientific modelling, simulation, illustration, and for data analysis, presentation and graphics; computational software using music theory for creating musical compositions.
41 Education services in the field of science, mathematics, computer science, and philosophy; educational services, namely, developing, arranging, and conducting educational conferences and programs and providing courses of instruction in the field of mathematics and science; teaching and lecturing in the fields of mathematics and science; providing on-line computer databases in the fields of mathematics and science; multimedia publishing of books, journals and electronic publications.
42 Scientific research and development."
Amongst other things, the Complainant has a subsidiary based in the UK under the name Wolfram Research Europe Ltd which provides services under the name Wolfram Solutions. From its website, this service appears to make available the Complainant's computational knowledge and skills for the solution of clients' business problems.
The Respondent graduated as a chemist from the University of Manchester in the UK in 1999. In 2011 and 2012, he undertook a Master of Business Administration (MBA) at the Manchester Business School associated with the University of Manchester.
The Respondent registered the disputed domain name on November 13, 2012.
On November 14, 2012, the Respondent incorporated a company in the UK under the name Wolfram Ventures Ltd. This company was subsequently dissolved, apparently without ever trading.
On June 25, 2013, the Respondent incorporated a second company in the UK under the name Wolfram Consulting Ltd.
The Respondent was the sole director and shareholder of the "Ventures" company and is the sole director and shareholder of the "Consulting" company.
According to the Response, the Respondent has carried on a business of management consultancy, including providing consultancy services to venture capitalists and private equity, since completing his MBA. Although he had incorporated the companies mentioned above, the Response appears to state the Respondent was operating as a sole trader under the name Wolfram Consulting until the business began to be carried on through the "Consulting" company during the financial year ending June 30, 2014. Some limited evidence has been submitted confirming the Respondent's claims to carrying on business as Wolfram Consulting.
It appears that the disputed domain name has never resolved to an active website. It does, however, resolve to a "passive" parking page which, according to a letter from the Registrar includes advertisements placed there by the Registrar without any active involvement by the Respondent.
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant's trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks identified above. Although not strictly necessary in this context, the Panel would be willing to infer that the Complainant has common law rights in passing off through its subsidiary's use of "Wolfram Consulting".
The disputed domain name differs from the Complainant's registered trademarks simply by the addition of the word "ventures" and the generic Top-Level Domain (gTLD) ".com". The latter can be disregarded in the present context: as a functional aspect of the domain name system: Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046, Ticketmaster Corporation v. DiscoverNet Inc., WIPO Case No. D2001-0252.
The addition of the ordinary, descriptive word "ventures" to the word comprising the Complainant's trademark is not sufficient to avoid a finding of confusing similarity.
The Respondent disputes this, arguing that the Complainant and its subsidiary do not have a reputation in the venture capital business and "ventures" connotes risky or uncertain undertakings. The Respondent's arguments on this point, however, misunderstand the nature of this requirement under the Policy.
On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant's proved trademarks: See for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420. This is different to the question under trademark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant's trademarks and the requirement under the first limb of the Policy is satisfied.
B. Registered and Used in Bad Faith
In the circumstances of this case, the Panel moves next to consider the third requirement under the Policy.
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd., WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
The Complainant relies on its reputation in its trademark and what are said to be admissions made by the Respondent in communications before the Complaint was filed to show that the Respondent was well aware of the Complainant and its trademark when he registered the disputed domain name. The Complainant also relies on the dissolution of the "Ventures" company without trading and the use of the disputed domain name to resolve to a "parking" page which has "pay per click" advertisements. In addition, the Complainant relies on the Respondent's refusal to transfer the disputed domain name to the Complainant for a sum of USD500 or USD2,000. Instead, the Respondent suggested that GBP17,500 or even GBP200,000 would be required.
According to the Respondent, he registered the disputed domain name as one of four domain names for planned business ventures. The Respondent says that the disputed domain name and the "Ventures" company were registered as the vehicles for his planned business of providing consultancy services for venture capitalists and private equity. This was said to be a second line to his general consultancy business.
According to the Respondent he initially carried on his general management consultancy business as a sole trader under the name Wolfram Consulting. Although he incorporated the "Consulting" company in 2013, he says he did not start using it actively as his business vehicle until some point in the financial year ending June 30, 2014. He says he dissolved the "Ventures" company as it was not necessary for the scale of his operations and maintaining the company registration was incurring unnecessary costs such as accounting fees associated with annual reporting requirements and the like.
The Panel first notes that the Respondent registered the disputed domain name and both the "Ventures" company and the "Consulting" company long after the Complainant commenced operations under its name and also a number of years after the Complainant registered the trademarks referred to in section 4 above. In such circumstances, the facts of the registration of these company names or the Respondent's business operations under the name "Wolfram Consulting" so many years after the Complainant are not in themselves sufficient to confer rights or legitimate interests or to constitute good faith under the Policy.
The Respondent categorically denies that he was aware of the Complainant, its trademark or its services when he registered the disputed domain name and adopted "Wolfram Consulting" for his business.
The Respondent points out that "wolfram" is the Latin or former name for tungsten. In acknowledgement of this, tungsten is still identified by the letter "W" in the periodic table. The Respondent also points to a number of other companies and businesses which have been registered or operate under the name "Wolfram" and which are apparently not associated with the Complainant. In this context, the Respondent also refers to what he considers to be the very different fields of operation of his business and the businesses of the Complainant and its subsidiary.
As noted above, the Complainant says the Respondent's actions were done with knowledge of the Complainant and its business. It points in particular to a statement in an email from the Respondent in which the Respondent stated that he was:
"a small businessman who is also – like your founder – a scientist, attempting to make a few small changes to the world around us …." (emphasis supplied)
This does suggest awareness of the Complainant and its founder. The Respondent seeks to explain this on the basis that he found out something about the Complainant and its founder through research the Respondent undertook following receipt of the initial approach from the Complainant.
While having more than a few reservations about the explanation advanced by the Respondent, the Panel considers that it is ultimately not appropriate to go behind the Respondent's express denials of awareness of the Complainant or its trademark on the record in this case. These proceedings are proceedings on the papers without the benefit of cross-examination and the opportunity to observe and assess witnesses. The claimed derivation of the disputed domain name and the Respondent's "consulting" trading name are not implausible having regard to the Respondent's background in chemistry and the existence of a number of other companies and businesses which also apparently base themselves on "Wolfram". Whether that would remain the case after further forensic examination of the kind available in court proceedings is another matter. Accordingly, on the record in this case, the Complainant has not established that the disputed domain name was registered in bad faith. The Complaint therefore cannot succeed under the Policy.
In view of the potential for further litigation about these matters, the Panel considers it inappropriate to comment on whether the disputed domain name has been used in bad faith or the Respondent's claim to have rights or a legitimate interest in the disputed domain name.
C. Reverse domain name hijacking
The Respondent contends that the Complaint has been brought in bad faith and, accordingly, the Complainant should be sanctioned by a finding of reverse domain name hijacking.
Paragraph 15(e) of the Rules provides, in part:
"If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding."
Paragraph 1 of the Rules defines "Reverse Domain Name Hijacking" to be "using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name".
The Respondent argues that bad faith on the part of the Complainant should be inferred from alleged misrepresentation and omission of the evidence and says that this is really an abusive use of the Policy to secure the disputed domain name for the Complainant's admittedly planned business under the name Wolfram Ventures.
The Panel does not consider this an appropriate case for a finding of reverse domain name hijacking. The Respondent has successfully rebutted the allegation that the disputed domain name was registered in bad faith, but has done so on the basis of factors which are singularly applicable to the Respondent and having regard to the limited nature of these proceedings as proceedings on the papers.
For the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Date: December 29, 2015