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Arbitration and Mediation Center
Echelon Corporation v. RN WebReg, a.k.a. Rarenames, LLC
Case No. D2003-0790
1. The Parties
The Complainant is Echelon Corporation, Los Angeles, California of United States
of America, represented by Blakely, Sokoloff, Taylor & Zafman, LLP, United
States of America.
The Respondent is RN WebReg, a.k.a. Rarenames, LLC, Washington, District of
Columbia, of United States of America, represented by ESQwire.com Law Firm,
United States of America.
2. The Domain Name and Registrar
The disputed domain name <digitalhome.com> is registered with Direct
Information Pvt Ltd. dba Directi.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center")
on October 7, 2003. On October 8, 2003, the Center transmitted by email to Direct
Information Pvt Ltd. dba Directi.com a request for registrar verification in
connection with the domain name at issue. On October 9, 2003, Direct Information
Pvt Ltd. dba Directi.com transmitted by email to the Center its verification
response confirming that the Respondent is listed as the registrant and providing
the contact details for the administrative, billing, and technical contact.
In response to a notification by the Center that the Complaint was administratively
deficient, the Complainant filed an amendment to the Complaint on October 14,
2003. The Center verified that the Complaint together with the amendment to
the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute
Resolution Policy (the "Policy"), 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
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
14, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response
November 3, 2003. The Response was filed with the Center on November
The Center appointed Frederick M. Abbott, Sally M. Abel and David E. Sorkin
as panelists in this matter on November 17, 2003. 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.
By email of December 1, 2003, the Center notified the parties that based on
exceptional circumstances the due date for a decision by the Panel was extended
until December 8 and later December 15, 2003.
4. Factual Background
Complainant has registered the word trademark "DIGITAL HOME" on the
Principal Register of the U.S. Patent and Trademark Office (USPTO), registration
no. 2,184,412, dated August 25, 1998, in International Class (IC) 9, covering
"computer hardware and software in the nature of control devices for use
in residential building automation, and computer development programs, computer
hardware, communications, transceivers, routers, network management software,
and installation software for use in residential building automation",
claiming date of first use and first use in commerce of March 2, 1998.
Complainant has disclaimed exclusive rights to use "DIGITAL" apart
from the mark as shown. ( Complaint, para. 11 & Exhibit C)
Complainant has registered the "DIGITAL HOME" mark in a number of
countries outside the United States, namely Canada, China, Denmark, France,
Germany, Ireland, Korea, Norway, Spain, Switzerland and Taiwan. Complainant
has furnished evidence of such registrations. (Id., para. 11 & Exhibit
Complainant has used the "DIGITAL HOME" mark in commerce in the United
States and elsewhere to identify its computer hardware and software products
(id., para. 11 & Exhibit D).
Complainant was the registrant of the disputed domain name, <digitalhome.com>.
Complainant indicates that through an inadvertent error arising from the termination
of an earlier domain name dispute it failed to renew registration of the name,
allowing its registration by Respondent. (Id., at para. 11)
According to the Registrar’s verification response, Respondent is the current
registrant of the dispute domain name. A Network Solutions WHOIS database search
printout furnished by Complainant indicates that the current record of registration
was created on August 16, 2003, in the name of Respondent (Complaint, Exhibit
Respondent purchased the disputed domain name from the domain name auction
site Pool.com for US $3,701 in August 2003. Respondent has provided evidence
in the form of an invoice from Pool.com, dated August 19, 2003, in that amount.
Respondent has submitted an affidavit of Michelle Miller, Director of Business
Development for Respondent, dated November 3, 2003, stating in relevant part:
"We did not purchase the domain name digitalhome.com (the "Disputed
Domain") for the purpose of selling it to Complainant. We had no knowledge,
whatsoever, of Complainant when we registered the Disputed Domain."
Complainant transmitted a cease and desist and transfer demand to Respondent
via email, telefax and courier mail on September 3, 2003. In that demand, Complainant
offered to reimburse Respondent for its domain name registration fee. Negotiations
followed during which Respondent offered to sell the registration of the name
to Complainant for $20,000, with indications that a lower amount might be acceptable.
Complainant rejected Respondent’s offer. As of October 3, 2003, Respondent was
offering the disputed domain name for sale at the auction website "BuyDomains.com"
for the asking price of $20,000. (Complaint, para. 11 & Exhibit F; Response,
paras. II and III).
The Registration Agreement in effect between Respondent and Direct Information
Pvt Ltd. dba Directi.com subjects Respondent to dispute settlement under the
Policy. The Policy requires that domain name registrants submit to a mandatory
Administrative Proceeding conducted by an approved dispute resolution service
provider, of which the Center is one, regarding allegations of abusive domain
name registration and use (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant asserts that it has rights in the trademark "DIGITAL HOME"
based on use in commerce in the United States, registration in other countries,
and as evidenced by registration at the USPTO and trademark offices outside
the United States (see Factual Background, supra).
Complainant alleges that the disputed domain name, <digitalhome.com>,
is identical or confusingly similar to its mark.
Complainant argues that Respondent has no rights or legitimate interests in
the disputed domain name because Respondent has not made demonstrable preparations
to use it in connection with a bona fide offering of goods or services. Complaint
alleges that Respondent’s registration and use of the disputed domain name for
purposes of resale does not establish rights or legitimate interests in the
Complainant states that Respondent registered and used the disputed domain
name in bad faith because Respondent’s sole purpose in registering it was to
offer it for sale at a substantial price. Complainant also asserts that Respondent’s
offer of the domain name for sale on an auction website interferes with Complainant’s
business, and creates a likelihood of confusion as to Complainant’s sponsorship
or endorsement of the auction website.
Complainant asserts that Respondent has evidenced a pattern of registering
domain names incorporating the marks of third parties and offering them for
sale, as evidenced in Prisma Presse v. BuyDomains.com, WIPO
Case No. D2001-1073, decided October 22, 2001, wherein Respondent was
found to have abusively registered and used the domain name <geomagazine.com>
by offering it for sale.
Complainant requests the Panel to direct the Registrar to transfer the disputed
domain name to it.
Respondent contends that Complainant does not have trademark rights in the
term "DIGITAL HOME" because such term is generic or, at best, descriptive.
Respondent argues that the term "DIGITAL HOME" is often used on the
Internet and elsewhere in a commonly descriptive sense. Respondent contends
that generic and descriptive marks are unenforceable under the Policy even if
they are registered.
Respondent argues that because "DIGITAL HOME" is a generic or commonly
descriptive term, "Respondent, ipso facto, has rights and a legitimate
interest" in the name. Respondent contends that because Complainant does
not have exclusive rights in the term "DIGITAL HOME", mere ownership
of the registration establishes rights and legitimate interests in Respondent.
Respondent contends that the sale of a generic or commonly descriptive term
constitutes a bona fide offering of goods and services that establishes Respondent’s
legitimate interest in the disputed domain name.
Respondent argues that it did not register the disputed domain name for the
purpose of selling it to Complainant. Respondent states that for a finding of
bad faith to be made, there must be direct evidence that the name was solely
acquired for the purpose of profiting from Complainant’s trademark rights, either
because (a) the domain name was acquired specifically for sale to Complainant
or (b) the value of the name offered for sale derives exclusively from the fame
of the trademark. Respondent contends that because the disputed domain name
is generic or commonly descriptive, and it did not intend to sell the mark to
Complainant, it did not act in bad faith.
Respondent denies that it intended to interfere with Complainant’s business
or that it registered and used the disputed domain name to create Internet user
Respondent indicates that in the earlier proceeding referenced by Complainant
as evidence of a pattern of conduct, Respondent did not file a response and
the decision was made on the basis of unrebutted allegations.
Respondent argues that Complainant’s previous ownership of the disputed domain
name is not a factor for consideration under the Policy.
Respondent requests the Panel to reject Complainant’s contentions and its request
for transfer of the disputed domain name.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive
domain name registration and use. The Panel will confine itself to making determinations
necessary to resolve this Administrative Proceeding.
It is essential to dispute resolution proceedings that fundamental due process
requirements be met. Such requirements include that a respondent have notice
of proceedings that may substantially affect its rights. The Policy and the
Rules establish procedures intended to ensure that respondents are given adequate
notice of proceedings commenced against them, and a reasonable opportunity to
respond (see, e.g., Rules, paragraph 2(a)).
In this case, the Respondent has filed a timely Response. The Panel is satisfied
that the Respondent had adequate notice of the proceedings.
Paragraph 4(a) of the Policy sets forth three elements that must be established
by a complainant to merit a finding that a respondent has engaged in abusive
domain name registration and use, and to obtain relief. These elements are that:
(i) respondent’s domain name is identical or confusingly similar to a trademark
or service mark in which the complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain
(iii) respondent’s domain name has been registered and is being used in bad
Each of the aforesaid three elements must be proved by a complainant to warrant
A. Identical or Confusingly Similar
Complainant has submitted evidence of use of the term "DIGITAL HOME"
in commerce in the United States and registration of the term "DIGITAL
HOME" as a trademark on the Principal Register of the USPTO and on a number
of trademark registers outside the United States. In the United States, registration
on the Principal Register establishes a presumption that the mark is valid and
of the registrant’s exclusive right to use the mark in commerce. In countries
of the European Union which have implemented the First Trade Mark Directive,
including Denmark, France, Germany, Ireland and Spain where Complainant has
also registered the "DIGITAL HOME" mark, registration of a mark confers
rights on the holder.
Respondent has challenged the validity of Complainant’s rights in the "DIGITAL
HOME" mark on grounds that the term is commonly descriptive or generic,
and has supported its claim by submission of a Google search for the exact phrase
"digital home" which yielded 168,000 search results. A number of those
results indicate uses of the term in relation to residential automation. The
term also appears to be commonly used in the phrase "digital home recording".
The majority of the Panel does not consider the term "DIGITAL HOME"
to be generic in the trademark law sense of referring to a genus or class of
thing. Although a person might refer to a "well-wired" residence as
their "DIGITAL HOME", such usage would not appear sufficiently common
to establish the term as generic in that sense, nor has Respondent suggested
another sense in which the term might be understood to commonly refer to a genus
of thing (as in "bed" or "flower").
The Panel accepts that the term "DIGITAL HOME" may be used in a descriptive
sense, but that does not end its inquiry from a trademark law standpoint. A
person might describe their residence as a "DIGITAL HOME", or might
use the term in connection with other terms as in "DIGITAL HOME recording".
However, Complainant has not registered the term "DIGITAL HOME" in
connection with all possible uses of the term, or to cover all fields of commerce.
Complainant has obtained registration in the United States (and other countries)
for a line of computer hardware and software products as to which it has submitted
evidence to the USPTO of distinctiveness in its line of commerce. Respondent
has offered little evidence that the term "DIGITAL HOME" is used by
third persons in connection with the sale of computer hardware and software
products that are competitive with those of Complainant. The Panel does not
consider this evidence sufficient to rebut the presumption of Complainant’s
rights in the "DIGITAL HOME" mark based on U.S. federal registration.
Moreover, even if the Panel considered that the mark was commonly descriptive
and unenforceable in the United States, it would not be in a position to make
such a determination with respect to Complainant’s rights established by registration
in other national jurisdictions. Respondent has offered no challenge to the
rights asserted by Complainant based on its registrations outside the United
States. Absent any rebuttal, the Panel considers valid the trademarks established
by registration in European Union countries.
The Panel determines that Complainant has trademark rights in the term "DIGITAL
Since the disputed domain name adopts the term effectively without modification,
the Panel determines that the disputed domain name is identical to a trademark
in which Complainant has rights. Complainant has established the first element
for a finding of abusive domain name registration and use.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration is that the
respondent has no rights or legitimate interests in respect of the domain name
(Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which
a respondent may demonstrate rights or legitimate interests:
"Any of the following circumstances, in particular but without limitation,
if found by the Panel to be proved based on its evaluation of all evidence presented,
shall demonstrate your rights or legitimate interests to the domain name for
purposes of paragraph 4(a)(ii):
(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." (Policy, paragraph 4(c)).
Respondent contends that it has rights or legitimate interests in the disputed
domain name on two grounds. The first is that because the term "DIGITAL
HOME" is generic or commonly descriptive, mere registration of the disputed
domain name establishes rights or legitimate interests.
Regarding this contention, the majority of the Panel notes its earlier determination
that the term "DIGITAL HOME" is not generic, and is not commonly descriptive
in the sense that Complainant has established the term as distinctive in its
line of commerce.
This does not mean that a person might not establish rights or legitimate interests
in the disputed domain name based on use of the term "DIGITAL HOME"
in a fair descriptive sense. Paragraph 4(c)(iii) of the Policy contemplates
just such eventuality, and numerous panel determinations under the Policy have
allowed fair use in such contexts. However, the fact that a person might
establish fair use of a term does not mean that registration of the term standing
alone establishes such fair use. The Policy expressly contemplates that a person
may establish fair use by using the term, and Respondent has offered no evidence
of such "making use" (or preparations for making use), save as discussed
following. The majority of the Panel does not consider that the mere registration
of a term identical to a trademark that might be subject to fair use
establishes rights or legitimate interests in the disputed domain name.
Respondent’s second argument is that offering for sale a domain name incorporating
a generic or commonly descriptive term constitutes a bona fide offering of goods
or services establishing rights or legitimate interests. In the first place,
Respondent’s argument ignores the initial clause of paragraph 4(c)(i), which
indicates that such bona fide offer should occur prior to notice of a dispute.
Respondent has not demonstrated that it offered the disputed domain name for
sale prior to Complainant’s apparently prompt notification of its objection
to Respondent’s registration of it. But leaving aside this technical point,
the Panel majority again notes that Respondent has offered for sale a domain
name that is identical to a trademark in which Complainant has rights. This
undercuts Respondent’s theory. The offering for sale of a domain name incorporating
Complainant’s trademark is not a bona fide offering of goods or services.
The purchase and sale of generic or commonly descriptive terms does not contravene
the Policy. Such purchases and sales are undertaken frequently and represent
a substantial business on the Internet. Where, as here, the alleged generic
or commonly descriptive term is a trademark registered in numerous countries
and the domain name derives its value substantially from the trademark, the
purchase and sale does not enjoy the legitimacy argued by Respondent.
The Panel finds that Complainant has established that Respondent has no rights
or legitimate interests in the disputed domain name, and has therefore established
the second element necessary for a finding of abusive domain name registration
C. Registered and Used in Bad Faith
The Policy indicates that certain circumstances may, "in particular but
without limitation", be evidence of bad faith (Policy, paragraph 4(b)).
Among these are (1) circumstances indicating that the domain name has been registered
or acquired by a respondent "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 [respondent’s] documented out-of-pocket
costs directly related to the domain name" (Id., paragraph 4(b)(i));
(2) that a respondent has 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 [the respondent has] engaged in a pattern of such
conduct" (id., paragraph 4(b)(ii)), and (3) that a respondent "by
using the domain name, … [has] intentionally attempted to attract, for commercial
gain, Internet users to [its] 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 [respondent’s] web site or location of a product
or service on [its] web site or location" (id., paragraph 4(b)(iv)).
Respondent concedes that it registered the disputed domain name for the purpose
of reselling it. It paid $3701 to purchase the domain name from an auction website.
Respondent does not dispute Complainant’s assertion that when contacted in
respect to transfer of the name it offered to sell it to Complainant for $20,000.
It has posted the domain name for sale on the BuyDomains.com auction website
at an offering price of $20,000.
Respondent contends that its registration with the intent to offer the domain
name for sale, and subsequent offering for sale, does not constitute bad faith
within the meaning of paragraph 4(b)(i) of the Policy because it neither intended
to sell the domain name to Complainant or its competitor, nor did it seek to
take advantage of the value of a well known mark. In Respondent’s view, it is
the fortunate beneficiary of the coming available for purchase of a generic
or commonly descriptive term of which it is seeking to take legitimate profitable
advantage. To support its theory, Respondent largely relies on the decision
in Ultrafem Inc. v. Warren R. Royal, NAF No. FAO106000097682, decided
August 2, 2001.
There are numerous decisions under the Policy holding that offering for sale
a domain name incorporating a trademark on a public auction website may constitute
evidence of bad faith registration and use, including one such decision in a
proceeding which involved an affiliated entity of Respondent as respondent,
Prisma Presse v. BuyDomains.com, WIPO
Case No. D2001-1073, decided October 22, 2001. In Prisma Presse,
the trademark "GEO" and "GEO MAGAZINE D’exception" was registered
in France, used on magazines in France and other countries outside the United
States, and was largely unknown in the United States. Respondent was and is
based in the United States. An affiliated entity of Respondent was determined
to have engaged in abusive domain name registration and use based, inter
alia, on its offering it for sale on a public auction website.
An important factor distinguishes the decisions in Ultrafem Inc. v. Warren
R. Royal and Prisma Presse v. BuyDomains.com. In the former, the
respondent was found to have a legitimate interest in the disputed domain name
based on preparation to use it in connection with a bona fide offering of goods
or services. A downturn in the Internet economy prevented its business plans
from reaching fruition. In that context, the fact of offering the domain name
incorporating a generic term used as a trademark (<instead.com>) for sale
on an auction site was determined not to constitute bad faith. In Prisma
Presse, by way of contrast, there was no response and no determination that
the respondent had rights or legitimate interests in the disputed domain name
(<geomagazine.com>). Respondent seeks to discount Prima Presse
by referring to its failure to file a response, adding "The panel specifically
stated that respondent ‘might have rebutted’ the findings with respect to legitimate
interest. It is respectfully submitted that the evidence here substantially
rebuts Complainant’s evidence" (Response).
In the present proceeding, the only evidence of rights or legitimate interests
submitted by Respondent is its contention that the disputed domain name is generic
or commonly descriptive, and that buying and selling generic or commonly descriptive
domain names is a legitimate business.
The Panel majority reiterates that buying and selling domain names incorporating
generic and commonly descriptive terms is a legitimate enterprise that does
not contravene the Policy. The problem in the instant proceeding is that the
disputed domain name is identical to a trademark registered in twelve countries.
There is a substantial value in the domain name based on Complainant’s establishment
and use of the "DIGITAL HOME" trademark.
Respondent seeks to rebut the inference of value based on the trademark by
assertion that it "had no knowledge, whatsoever, of Complainant when we
registered the Disputed Domain". Respondent offered a substantial sum of
money ($3701) for the disputed domain name at the auction website ("www.Pool.com").
Pool.com monitors expiring and deleted domain name registrations. It attempts,
at the point of expiration or deletion, to register names in which users of
its site have indicated an interest. It conducts an auction of the name when
multiple users of its service have indicated interest in the same domain name.
When the registration for the disputed domain name in this proceeding expired,
Respondent was presented by Pool.com with the option to bid on it, and Respondent
elected to make a substantial monetary offer.
Respondent is based in Washington, D.C., USA. The mark is listed on the Principal
Register of the USPTO. A readily searchable database of registrations on the
Principal Register is freely accessible on the Internet. Respondent is a sophisticated
trader in Internet domain names. The Panel majority infers that Respondent would
have acted with ordinary care to determine what third party interests there
might be such as may affect the resale value of the disputed domain name. The
Panel majority is not prepared to accept as a defense to bad faith registration
in the circumstances of this case that Respondent had no knowledge of Complainant’s
mark. The Panel majority considers that in these circumstances it is appropriate
to draw an inference that Respondent had knowledge of Complainant’s mark.
Respondent has sought a substantial sum of money for a domain name that is
identical to a trademark in which Complainant has demonstrated rights. There
are potential alternative purchasers to Complainant that might be able to demonstrate
rights or legitimate interests in the disputed domain name by making use of
it in a manner acceptable under paragraph 4(c) of the Policy. Yet the fact remains
that Respondent is not itself seeking to or making legitimate use of disputed
domain name. Respondent concedes that its business model does not contemplate
making use of domain names other than to buy and sell them. In this case, it
has bought and is seeking to sell a domain name identical to trademark in which
Complainant has demonstrated rights.
The Panel considers that in these circumstances, the registration and offering
for sale of the disputed domain name on a public auction website for a price
substantially in excess of its out-of-pocket expenses in connection with the
name constitutes bad faith registration and use of the domain name within the
meaning of paragraph 4(a)(iii) and 4(b) of the Policy.
Complainant has established the third element necessary for a finding of abusive
domain name registration and use. The Panel will therefore direct the Registrar
to transfer the disputed domain name to Complainant.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy
and 15 of the Rules, the Panel orders that the domain name, <digitalhome.com>,
be transferred to the Complainant
Frederick M. Abbott
David E. Sorkin
Dated: December 15, 2003
I dissent. Complainant has established only one of the three factors
of the applicable test.
A. Identical or Confusingly Similar
I join in the conclusion that Complainant has satisfied the first factor of
the test, that the domain name is identical or confusingly similar to Complainant's
trademark, but I cannot join in that part of my esteemed colleagues reasoning
that "digital home" necessarily is not a generic term. In the first 10
of approximately 168,000 hits, the Google search results provided by Respondent
contain references to "the digital home industry", the "Digital Home Working
Group", and "Digital Home Magazine", with no obvious references to Complainant's
DIGITAL HOME products. A court might well find "digital home" to be generic
when used in connection with home networking and automation technology.
However, whether or not a court might ultimately hold that the term "digital
home" is a generic one, is beyond the scope of our inquiry in this matter.
Complainant has established that it has trademark registrations sufficient to
invoke the Policy, and that the domain name is identical to that registered
mark. Complainant need do no more as to the first factor of the test.
B. Rights or Legitimate Interests
I agree with my colleagues that "the purchase and sale of generic or commonly
descriptive terms does not contravene the Policy." For this reason, I
cannot agree that Complainant has carried its burden of proving that Respondent
has no rights or legitimate interests in the domain.
Complainant alleges that registration and use of a domain for the purpose of
resale does not establish rights or legitimate interests in a domain.
My colleagues essentially disagree with Complainant, as noted above, but then
conclude that the mere existence of Complainant's trademark prevents Respondent's
efforts to sell the domain, in the ordinary course of Respondent's domain sales
business, from being "a bona fide offering of goods or services" for purposes
of the Policy. This circular reasoning essentially undermines this element
of the test.
If all a complainant need show to eliminate the "bona fide offering of goods
and services" defense is that Complainant has trademark rights in a word or
phrase identical to the domain, then there is little or no need for the second
element of the test. Instead, this portion of the test could be modified
to ask only if the respondent is actively making a "fair use" of the domain
or it is the respondent's nickname. While such amendment may occur at
some future date, that is not the test today.
In fact, as quoted by the majority, above, the Policy specifically provides
that the examples as to how a respondent might prove its rights or legitimate
interests in the domain are simply that: examples. The Policy states:
"Any of the following circumstances, in particular but without limitation, if
found by the Panel to be proved based on its evaluation of all the evidence
presented, shall demonstrate your rights or legitimate interests ..." (Policy,
paragraph 4(c); emphasis added).
Respondent attests that it had no knowledge of Complainant or of Complainant's
DIGITAL HOME trademark when it acquired the domain name at auction. Respondent
submits Google web search results identifying "about 168,000" results for "digital
home"; my own repetition of that exercise revealed "about 410,000" results using
the Google search engine. I did not identify any references to Complainant or
to its use of DIGITAL HOME in my brief perusal of the first few pages of those
results. Many of the results that do appear in the search underscore the
fact that the phrase "digital home" signifies to many the networking of computers
and other electronics in the home ("the digital home experience", "building
the digital home", "driving the digital home"). If the mark in question
was HOME ELECTRONICS and the challenged domain <homeelectronics.com>,
would the majority still find Respondent has no rights or legitimate interests
in the domain?
In my view, the Respondent's explanation of its selection of the domain satisfies
paragraph 4(c) of the Policy.
C. Registered and Used in Bad Faith
For the reasons set forth above, I cannot concur in my colleagues' conclusion
that Complainant has established bad faith registration and use. Respondent
claims to have had no prior knowledge of Complainant or its trademark; "digital
home" is widely used as a descriptor in the home electronics networking and
home automation industries.
The majority points to Respondent's sophistication in the domain name industry
as proof of bad faith. With all due respect, Respondent's sophistication
may, in fact, cut the other way. A sophisticated player in the domain
name industry should know that a business model based on cyberpiracy is unlikely
to be a successful one, and is unlikely to pay a premium for a domain likely
to be immediately and successfully challenged in a UDRP proceeding such as this.
A sophisticated player in the technology world would know that "digital home"
is widely used throughout the home electronics and automation industries, and
a web search, such as the one Respondent conducted for this proceeding, would
bear that out.
In finding bad faith my colleagues essentially have imported into the Policy
the constructive notice provision of U.S. trademark law, at least as to domain
holders who register domains for the purpose of resale. While imposing
the constructive notice burden on the adopter of a trademark is appropriate,
extending it to apply to adopters of domain names, such as in the matter before
us, far exceeds the scope of the Policy. I cannot agree that where a respondent
obtains the domain for purposes of resale, the only relevant inquiry under the
Policy is whether the complainant has established trademark rights. This
is the result of the majority's decision, from which I respectfully dissent.
Sally M. Abel
Dated: December 15, 2003