WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SDT International limited company v. Telepathy, Inc.
Case No. D2014-1870
1. The Parties
The Complainant is SDT International limited company of Brussels, Belgium, represented by Novagraaf Belgium NV/SA, Belgium.
The Respondent is Telepathy, Inc. of Washington DC, United States of America ("United States"), represented by Wiley Rein LLP, United States.
2. The Domain Name and Registrar
The disputed domain name, <sdt.com> (the "Domain Name"), 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 October 24, 2014. On October 24, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. The same day, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced October 28, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 17, 2014. The due date for Response was extended to November 24, 2014. The Respondent filed a request for Suspension or Termination on November 14, 2014, and a renewed request for Suspension or Termination on November 21, 2014.
The Center appointed Tony Willoughby, Geert Glas and Richard G. Lyon as panelists in this matter on December 31, 2014. The Panel finds that it was properly constituted. Each member of 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 company based in Belgium and engaged in the manufacture of ultrasonic detection and measurement technology. The Complainant's business commenced in Benelux in 1975 and has spread internationally over the ensuing 40 years.
The Complainant is the registered proprietor of a number of trade mark registrations for the mark SDT including Community Trade Mark registration no. 002908184 filed on October 25, 2002 (registered on March 1, 2005) SDT (word) for various goods and services in classes 7, 9 and 37 and United States Trade Mark registration no. 2949760 filed on November 1, 2002 (registered on May 10, 2005) SDT (typed drawing) for various goods in class 9.
The Complainant operates websites connected to its domain names <sdt.be> and <sdt.eu>, which it claims to have registered on February 7, 1995 and March 3, 2006 respectively.
The Respondent is a company incorporated in the United States and is engaged in the acquisition, sale and use of domain names. In its complaint before the United States District Court of Columbia (discussed below) it describes its business as follows:
"Telepathy often registers or acquires domain names, including apparently generic terms, common words, initialisms, acronyms, and short phrases, and uses the domain names to provide information to consumers on the Internet concerning the generic or plain- meaning connotation of the terms. Where the terms have no generic or plain meaning, the domain names are typically used to provide an Internet search function or general information. Telepathy owns over 10,000 such domain names."
The Respondent acquired the Domain Name in late 2006. It is used to redirect visitors to a commercial information website at "www.searchfusion.com".
On July 11, 2014, the Complainant sent an email to the Respondent in the following terms:
Your domain sdt.com received the following offer at SecuredOffers.com. Please respond to the offer within three business days.
Offer Price: $1000 Name: David Monticelli Address: Boulebard de l\'Humanité, 415 City: Brussels State: Belgium Zip: 1190 Phone: 0032 2 332 32 25 Email: email@example.com
Agreed to the following statement: yes By submitting this offer, I confirm that neither I, nor my organization, claims a legal right to the registration of the domain listed above. If I am inquiring on behalf of another entity, I confirm that this entity does not claim a legal right to the registration of the domain listed above and that I am authorized by such entity to make this representation."
The Respondent responded the same day as follows:
"Thanks for your interest in our sdt.com domain name. SecuredOffers forwarded your offer. As you know, choosing the right domain is a critical strategic decision. A company's domain name is its online brand and identity.
The three-letter dot-com domain that matches a company's initials is the ideal online identity. It provides an intuitive and powerful brand.
For the right company, with the right vision, the lifetime benefits of owning a three-letter dot-com domain are worth well into the six-figures. This valuation is confirmed by dozens of sales at this level.
sdt.com can be obtained for $185,000. It may also be available for license through a lease-to-own arrangement.
Please feel free to contact me if I can provide further information."
5. Parties' Contentions
The Complainant contends that the Domain Name is identical to the Complainant's SDT trade mark.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant has conducted trade mark searches and has been unable to identify any trade mark registrations for SDT in the name of the Respondent. The Complainant has not given the Respondent any permission to use its SDT trade mark. The Complainant asserts that none of the examples set out in paragraph 4(c) of the Policy of what shall demonstrate rights and legitimate interests is applicable. The Respondent is an experienced domainer, well aware of the terms of the Policy having been the respondent in several previous UDRP complaints. The Respondent registered the Domain Name speculatively intending to sell it to an owner of an SDT trade mark. By dint of DomainTools screenshots the Complainant contends that prior to 2006 the Respondent was using the Domain Name to generate Pay-Per-Click ("PPC") revenue, which is not a bona fide offering of goods or services. Since 2006 the Respondent has been using the Domain Name to connect to other websites putting interested domain name purchasers and sellers of domain names together. This again, in the view of the Complainant, is not a bona fide offering of goods or services. The Complainant observes that "SDT" is an invented name and not one that any trader would select, unless intending to take advantage of the goodwill attached to the Complainant's SDT trade mark. The Complainant contends that the Respondent is using the Domain Name to attract traffic to its website.
Finally, the Complainant contends that the Domain Name was registered and is being used in bad faith. The Complainant contends that when the Respondent registered the Domain Name in 2003 he was aware of the Complainant's trade mark. In support of the bad faith claim the Complainant refers to the previous WIPO UDRP cases in which the Respondent has been involved as a respondent. The Complainant produces evidence to show that back in 2003 the website connected to the Domain Name indicated that the Domain Name was for sale. The Complainant contends that this was the Respondent's purpose from the outset. The Complainant also relies upon the terms of the correspondence quoted in section 4 above, which shows that the Respondent is aware of the Complainant's interest in the SDT trade mark and appreciates the particular value that it holds for the Complainant.
As its Response the Respondent filed a document captioned "Respondent's Renewed Request For Termination Or Suspension Of Proceeding Based On Court Litigation", which includes as an exhibit the Respondent's complaint in the United States District Court for the District of Columbia, dated November 13, 2014, seeking relief under the United States Anticybersquatting Consumer Protection Act; primarily declaratory relief to the effect that the Respondent is a legitimate holder of the Domain Name, did not act in bad faith, and that the Complainant is guilty of Reverse Domain Name Hijacking. In its prayer for relief the Respondent requests a declaratory judgment, a mandatory injunction requiring withdrawal of the Complaint in this UDRP proceeding, an order directing the Registrar to lift any prohibition or suspension of the disputed domain name, and money damages of USD 100,000.
The Respondent does not wish the Panel to proceed to a decision, but to terminate or suspend this administrative proceeding pursuant to paragraph 4(k) of the Policy and paragraph 18 of the Rules. In support of its request the Respondent cites a number of previous cases under the Policy where in the face of concurrent court proceedings panels have ordered suspension or termination.
It is appropriate to mention that the Respondent also castigates the Complainant and its representative for numerous alleged errors and omissions in the Complaint. The Respondent reserves particular condemnation for the Complainant's representative whom it contends has been repeatedly censured in other cases for having fallen well short of his professional obligations in this regard.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The 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.
Moreover, in writing its decision, the Panel has to have regard to paragraph 15(e) of the Rules and in particular the following sentence namely:
"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."
Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as "using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name."
First, however, the Panel must decide whether or not to accede to the Respondent's request that this administrative proceeding be terminated or suspended, for if the Panel does accede to the request, it becomes unnecessary for the Panel to address the merits of the dispute.
The Respondent's Request for Termination or Suspension
By a majority the Panel has decided to terminate this administrative proceeding.
The court proceeding launched by the Respondent in the United States District Court for the district of Columbia seeking relief under the United States Anticybersquatting Consumer Protection Act is a legitimate action, not something dreamt up by the Respondent to frustrate this administrative proceeding. The issues at the heart of this proceeding, namely the parties' competing claims to the Domain Name and whether or not the Complainant is guilty of Reverse Domain Name Hijacking, are at the core of the court proceeding. Moreover, the court is in a far better position than the Panel to adjudicate those issues in that the court litigation will provide the parties with the opportunity for "the exchange of discovery, examination of witnesses, presentation of reply arguments, and examination and cross-examination of live witnesses, all of which are unavailable in a proceeding under the UDRP." Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187; see also Aussie Car Loans Pty Ltd v. Wilson Accountants Pty Ltd, WIPO Case No. D2008-1477.
The Panel sees no merit in suspending this administrative proceeding. Suspension could lead to extensive delays depending upon the course that the litigation takes. Instead, the Panel believes that it will be more appropriate to follow the course taken in a number of similar cases, namely to terminate without prejudice to the right for the Complainant to seek to refile the Complaint following termination of the District Court case or in the event that the Court decides in favour of the Complainant. (See e.g., Aussie Car Loans Pty Ltd v. Wilson Accountants Pty Ltd, WIPO Case No. D2008-1477; Galley, Inc. v. Pride Marketing & Procurement / Richard's Restaurant Supply, Inc., WIPO Case No. D2008-1285) The Panel does not direct that the Domain Name be transferred to the Complainant.
As the Panel majority believes that all matters should in the first instance be resolved in the District Court case, the Panel does not address the Respondent's request for a finding of abuse of this administrative proceeding.
For the foregoing reasons, this administrative proceeding is terminated pursuant to the Rules, Paragraph 18 (a), without prejudice to the right for the Complainant to seek to refile the Complaint in the event that the Court decides in favour of the Complainant, but does not direct that the Domain Name be transferred to the Complainant.
Richard G. Lyon
With the greatest respect for my co-panelists I dissent from their decision. On the papers before the Panel I would have dismissed the Complaint and found the Complainant guilty of Reverse Domain Name Hijacking. I would have come to this conclusion solely on the case put before us by the Complainant.
Is it appropriate that a respondent who has signed up to the Policy should be able to prevent a complainant who has filed a complaint in due form under the Policy obtaining the decision for which he has paid the appropriate fee?
The Complainant followed the form of the Policy in filing a complaint asserting, in line with paragraph 4(a) of the Policy, that the Domain Name is identical to a trade mark in which it has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith. At the same time it lodged the appropriate fee for a panel decision. Ordinarily, in my view, a complainant in such circumstances is entitled to a decision for which it has paid under a regime to which a respondent has contractually submitted.
While it is true that in circumstances where there are concurrent court proceedings, a panel has a discretion to terminate or suspend, in my view that discretion should only be exercised where for some reason there is a difficulty in the panel coming to a decision under the terms of the Policy, e.g., because there are conflicts of fact which cannot easily be resolved without the benefits of discovery, cross-examination etc. In my view the merits of the case are clear on the face of the Complaint.
In this case the Complaint is fundamentally defective in that there is no evidence of any substance to support the claim to bad faith registration and use. The Complainant's prime contention in this regard is that the Respondent registered the Domain Name in 2003, eight months after the Complainant's trade mark rights were applied for, with knowledge of the Complainant's trade mark rights and with the intention of selling the Domain Name to the Complainant.
First, the Respondent did not acquire the Domain Name until November 2006, so none of the pre-November 2006 screenshots showing PPC links at parking pages is relevant. Secondly, there is nothing about the Respondent's subsequent use of the Domain Name linking it in any way to the business of the Complainant. Thirdly, the only other evidence to which the Complainant points are (a) the previous cases under the Policy where the Respondent has been cited as a respondent; and (b) the terms of the correspondence quoted in section 4 above. According to the Complainant (a) is indicative of the Respondent's familiarity with proceedings under the Policy and (b) is indicative of the Respondent's knowledge of the Complainant's trade mark and its value. I have looked at the previous decisions cited by the Complainant. There are nine of them. All the complaints apart from one failed. In some of them the Respondent's business model was found to give rise to a bona fide business offering and in some of them there were findings of Reverse Domain Name Hijacking against the former complainants. The case that succeeded against the Respondent seems to have been a marginal one. The cited correspondence took place in 2014, apparently at the instigation of the Complainant and is of no assistance in determining the Respondent's motives in November 2006.
The Complainant, having cited the previous cases, must have been aware of the results favourable to the Respondent and should have disclosed those results to counter the obvious inference that the Respondent had a propensity for bad faith registration and use of domain names. The Complainant having searched DomainTools for screenshots showing use of the Domain Name, had ready access to the DomainTools Whois History research tool which makes it very clear that the Respondent only acquired the Domain Name after a date in October 2006. In my view these were material non-disclosures.
In my view, the Complaint was fundamentally defective, the certification at the end of the Complaint that to the best of the Complainant's knowledge the Complaint was complete and accurate was false and the Complaint should never have been filed. In my view this is a clear case of Reverse Domain Name Hijacking. Moreover, I regard paragraph 15(e) of the Rules as a mandatory provision. Having found that the Complaint was brought in bad faith Paragraph 15(e) requires the panel to so declare, irrespective of whether the Complaint is terminated or suspended.
In coming to these findings I am applying what I understand to be the Policy and the Rules, nothing else. Specifically, even if I could (which I most certainly cannot), I am not seeking to apply the provisions of the United States Anticybersquatting Consumer Protection Act, nor am I seeking to restrict or influence the court in any way. As the distinguished panelist said in Marker Völkl (International) GmbH v. Tucows.com Co, WIPO Case No. D2012-1461:
"With full respect for the jurisdiction of this and any other competent court, this Panel believes that a failure by the Panel to address the merits of the case before it, would serve to frustrate the intended effect of the Policy, to which the Respondent as domain name registrant has submitted on its part. Consequently, the Respondent's request to suspend or terminate this proceeding is denied. Naturally, it is for the Ontario Court to make its determination on the facts and issues before it under applicable law."
Date: January 13, 2015