WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dynamic Visual Technologies (Pty) Ltd v. Direct Privacy, Savvy Investments, LLC Privacy ID# 14448338
Case No. D2018-0738
1. The Parties
The Complainant is Dynamic Visual Technologies (Pty) Ltd of Johannesburg, South Africa, represented by Michalsons, South Africa.
The Respondent is Direct Privacy, Savvy Investments, LLC Privacy ID# 14448338 of Cheyenne, Wyoming, United States of America ("United States"), represented by Faia & Associates, LLC, United States.
2. The Domain Name and Registrar
The disputed domain name <dvt.com> is registered with DNC Holdings, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 3, 2018. On April 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 6, 2018, 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 April 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 8, 2018. On May 3, 2018, the Respondent requested an automatic four-day extension of the due date for the Response. On May 4, 2018, the Center notified the Parties that the new due date for Response was May 12, 2018. The Response was filed with the Center on May 11, 2018.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on May 22, 2018. 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 was incorporated in South Africa in 1999 and soon after, in November 1999, changed its name to its current corporate name. Since then, it has provided software development and testing services "internationally", but principally in South Africa and the United Kingdom of Great Britain and Northern Ireland ("United Kingdom" or "UK").
According to the Complaint, it immediately began trading under the abbreviated style "DVT" and has done so since then. In 2016, the Complainant incorporated what it calls a "sister" company in the United Kingdom under the name Dynamic Visual Technologies Limited. That company is said to have built on the existing popularity of the DVT mark "to further expand the Complainant's client base and visibility in the marketplace."
The Complainant has promoted its services from a website at <dvt.co.za> from its registration of that domain name in December 1999.
According to the Complaint, the Complainant had annual revenues of ZAR 250 million. The precise year this figure relates to is not entirely clear from the Complaint. At current exchange rates, however, that would be the equivalent of roughly USD 20 million.
The disputed domain name was first registered on May 31, 1995. It is not contentious between the parties, however, that the Respondent first acquired the disputed domain name in February 2017. Although it is not entirely clear from the Response, that acquisition appears to have been as the result of an arm's length transaction rather than a transfer between related parties.
According to the Complaint, the disputed domain name resolves to a website which displays pay-per-click ("PPC") advertising links. Most of those are to goods and services related to treatment of deep vein thrombosis. The Respondent characterises the website as one which provides information about deep vein thrombosis.
Currently, the disputed domain name resolves to a website with PPC links relating to deep vein thrombosis issues. At the top of the page, there is also a link titled "Inquire about this domain". Clicking on that link takes one to a form for the entry of contact details "to contact the owner of this domain".
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. Rights or Legitimate Interests
Noting that the Complainant claims rights in "DVT" as an unregistered trademark arising from its extensive use, it is appropriate in this case to start consideration with the second requirement under the Policy. The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant bears the onus of establishing this. Given the nature of the issue involving "proving a negative", however, the Complainant needs to advance a prima facie case before the burden of production will shift to the Respondent to justify its position. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 2.1.
There is no issue between the parties that the Respondent is not associated with, or authorised by, the Complainant to use the disputed domain name. Nor is the disputed domain name derived from the Respondent's name or otherwise a noncommercial or fair use.
The Complainant contends that the way the Respondent uses the disputed domain name for PPC links is not a good faith use under the Policy giving rise to rights or legitimate interests in the disputed domain name. The Respondent disputes this. First, it disputes that the Complainant has trademark rights in the three-letter acronym, "DVT". Secondly, in any event, it says it has rights or legitimate interests in the disputed domain name because:
a) the disputed domain name was registered in 1995 before the Complainant even existed; and
b) its use of PPC links relating to deep vein thrombosis issues is legitimate under the Policy.
Although the disputed domain name was first registered in 1995, it was not registered by the Respondent then. As noted above, the Respondent first acquired rights to the disputed domain name in February 2017. That does not appear to have been as part of the continuation of an existing business such as a transfer between related parties in conjunction with an internal re-organization. Rather, it appears to have been an arm's length transaction between independent parties. In any event, the Respondent has not claimed it was anything other than an arm's length transaction.
In support of its position, the Respondent cites a decision of the Ninth Circuit Court of Appeals in the United States, GoPets Ltd. v. Hise, et al., 657 F.3d 1024 (9th Cir. 2011). That was a decision under the Anticybersquatting Consumer Protection Act ("ACPA"). In Hise, the Ninth Circuit ruled that the "registration" of a domain name subject to the tests under ACPA was only the initial registration and not a subsequent re-registration by someone as successor in title to the first registrant.
The usual rule under the Policy, however, is that a registration in a new, independent person's name, albeit a re-registration of an existing domain name, is treated as a separate act and to be assessed as such. See WIPO Overview 3.0, section 3.2 (in the context of the third limb of the Policy).
The Panel notes that the circumstances in the Hise case, although not the basis of the Ninth Circuit's ruling, are consistent with the approach taken by Panels under the Policy. The original registration of the domain name in issue was by a Mr. Hise. The re-registration was as a result of his transfer of the domain name to a corporation controlled by him and his brother. That is arguably consistent with the type of transfer which would be treated as not involving a change in the underlying registrant under the Policy.
The Panel also notes that the Hise court recognised the Third Circuit Court of Appeals had reached a different conclusion in Schmidheiny v. Weber, 319 F.3d 581 (3rd Cir. 2003). The Schmidheiny case involved different legislation, but the Ninth Circuit considered its decision was based on a wrong premise.
In these circumstances, the Panel considers it is appropriate not to depart from the usual rule under the Policy as it has been interpreted by many Panels. The Policy operates in an international sphere between parties often in very different jurisdictions which have, or may have, different approaches or concerns.
Accordingly, the registration of the disputed domain name by the Respondent will be treated as a new registration. Therefore, for the purposes of the Policy, the Respondent is treated as having registered the disputed domain name after the Complainant came into existence.
Next, in relation to PPC advertising, WIPO Overview 3.0, section 2.9 records in part:
"… panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant's mark or otherwise mislead Internet users.
Panels have recognized that the use of a domain name to host a page comprising PPC links would be permissible – and therefore consistent with respondent rights or legitimate interests under the UDRP – where the domain name consists of an actual dictionary word(s) or phrase and is used to host PPC links genuinely related to the dictionary meaning of the word(s) or phrase comprising the domain name, and not to trade off the complainant's (or its competitor's) trademark."
Section 2.10 of the WIPO Overview 3.0 records similar sentiments in respect of domain names comprised of dictionary words and acronyms.
In this case, the PPC links on the Respondent's website are essentially advertising related to deep vein thrombosis. The Complainant accepts that "DVT" is an acronym for deep vein thrombosis. However, it contends that there must be a link between the Respondent and deep vein thrombosis for the PPC links to be legitimate under the Policy. By this, the Complainant appears to suggest that the Respondent must itself be providing goods or services (apart from PPC links) related to deep vein thrombosis.
The Complainant further contends uncontentiously that the disputed domain name must be registered solely for its attraction as "a generic or descriptive word" and not for its value as a trademark. The Complainant argues that is not satisfied here because, the Complainant argues, the Respondent registered the disputed domain name for its value as a short acronym. According to the Complainant that value is inextricably linked to the acronym's value as a trademark. The Complainant then argues that the Respondent knew or should have known of the acronym's value as a trademark when the Respondent registered the disputed domain name.
The Panel does not accept that the value of a short acronym as a domain name is necessarily linked to its value as a trademark. As other panels have recognised, short acronyms are inherently valuable in themselves precisely because they are (a) short and (b) can reflect a wide range of different uses. The Panel accepts, however, that the value a person places on an acronym as a domain name could well be affected by its significance as a trademark. The value of the acronym as a domain name could also be affected by how many different persons are interested in acquiring it.
The Complainant seeks to back up its argument that the Respondent knew or should have known about the acronym's value as a trademark because of the Complainant's long user in its particular field. In addition, the Complainant argues that the Respondent knew about that use "likely by watching for registrations of UK companies with sound financial backing and a desire to expand their markets." The Respondent's awareness of the trademark value of the disputed domain name is said to be further revealed by the offer to sell it for USD 100,000, "an exorbitant amount for a domain name to which the Respondent has no rights".
USD 100,000 is no doubt in excess of the standard cost for registering a domain name in the relevant gTLD. Whether it is "exorbitant", however, is not necessarily revealed by the quantum. As already noted, a three-letter acronym as a domain name has inherent value in and of itself. The manner in which the Complainant contends the Respondent did know, or should have known, about the Complainant's rights is not impossible. Nonetheless, it is with respect entirely speculative. So far as the evidence in this proceeding goes, the Respondent has used the disputed domain name only in connection with a natural association to the "DVT" acronym – deep vein thrombosis. The use, notwithstanding the Complainant's criticisms appears to be genuinely related to the meaning of the acronym and does not appear to trade off the Complainant's claimed trademark.
Accordingly, the Panel finds that the Complainant has not established that the Respondent does not have rights or legitimate interests in the disputed domain name under the Policy.
B. Identical or Confusingly Similar and Registered and Used in Bad Faith
In light of the Panel's finding under the second limb of the Policy, the Complaint must fail and no point would be served by considering the parties' contentions under the other requirements of the Policy.
For the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Date: June 6, 2018