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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Mansueto Ventures, LLC v. Jonathan Witte

Case No. D2006-1479

 

1. The Parties

The Complainant is Mansueto Ventures, LLC, c/o Mr. Paul Maiorana, of New York, New York, United States of America, represented by Sullivan & Worcester LLP, United States of America.

The Respondent is Jonathan Witte, of Tokyo, Japan.

 

2. The Domain Name and Registrar

The disputed domain name <inc.mobi> is registered with Go Daddy Software.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2006. On November 21, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On November 21, 2006, Go Daddy Software 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. The Center verified that 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 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 on November 29, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December 19, 2006. The Response was filed with the Center on December 7, 2006.

The Center appointed The Honourable Sir Ian Barker as the sole panelist in this matter on January 8, 2007. 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.

On December 22, 2006, the Complainant sought leave of the Panel (once appointed) to file a reply to the Respondent’s Response. It also filed the proposed Reply. On January 6, 2007, the Respondent filed submissions in rejoinder to the Complainant’s Reply. On January 12, 2007, the Panel decided to receive these submissions in the exercise of its discretion. The principal reason for this decision was that the Respondent had sought a declaration of Reverse Domain Name Hijacking against the Complainant and in that the Complainant was entitled to reply to that allegation. In the circumstances of this case, such a counterclaim could not reasonably have been foreseeable by the Complainant.

 

4. Factual Background

The Complainant and its predecessor in interest have since 1979 used the trademark INC. as a title of a magazine in the United States of America. This magazine is currently issued monthly with a paid circulation of 700,000. Some 3,000 copies of the magazine circulate outside the United States of America. The magazine provides information and services to help business owners and entrepreneurs start and develop their business. Since 1982, the Complainant has annually published the INC. 500 list of 500 fastest-growing private companies.

The Complainant owns several United States registered trademarks, including registrations for INC., INC, INC.COM, THE INC.500, and FRANCHISE INC. The first of these trademarks was registered in 1982. The mark INC. has been registered in a number of other countries, including the People’s Republic of China, but not Japan where the Respondent is a resident. The Complainant offers its products and services through the Internet and owns several domain names, including <inc.com> and <inc.net>. The “www.inc.com” website receives 600,000 unique monthly visitors, of whom 2,000 reside in Japan.

The Respondent registered the disputed domain name on September 26, 2006. On the same day, the Respondent placed on the “www.e-bay.com” auction site an offer to sell the disputed domain name for a minimum bid of USD 550,000. The auction ended on October 8, 2006 with no bids being received. More recently, the Respondent’s website as at November 17, 2006, displayed a parked home page promoting a site called “www.sedo.com” with the statement that “The disputed name ...inc.mobi may be for sale by its owner! Please visit “www.sedo.com” to make an offer.”

The Complainant gave the Respondent no rights in respect of its registered mark. In the offer to sell on e-bay, the Respondent stated that “inc” is “an easy 3-letter domain name”. The Respondent is resident in Japan but is a citizen of United States of America. He describes himself as a mobile website developer and mobile content development manager. He works for a company called Amu Inc, which is a content-providing company with eleven mobile websites, seven of which are currently on the official menu of the three mobile carriers in Japan.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

The disputed domain name is identical with the Complainant’s registered mark INC.

The Respondent has no rights or interests in the disputed domain name and has not demonstrated any circumstances that fall within any of the exceptions in paragraph 4(c) of the Policy.

The Respondent has registered or acquired the disputed domain name primarily for the purpose of selling it, as is evidenced by the Respondent’s attempt immediately after acquiring it, to sell it by auction on the Internet for USD550,000 a sum far in excess of the actual costs incurred in registering and maintaining the disputed domain name.

The demand of such an exorbitant price is evidence of bad faith. See DaimlerChrysler AG v. 3(v) Networks a/k/a Com & Networks, WIPO Case No. D2006-0450, which was an offer for sale to the trademark owner. However, in the context of offers for sale to the general public, the panel in Educational Testing Services v. TOEFL, WIPO Case No. D2000-0044, concluded that in the totality of the circumstances of the case where the offer to sell was on a publicly-accessible website, bad faith existed. In that case, the amount for which the disputed domain name was a mere USD 8,000.

Bad faith can be inferred from the passive holding of domain names.

Because of the worldwide standing and use of the Complainant’s mark, the Respondent should be deemed to have actual knowledge of the Complainant’s rights when the Respondent registered the disputed domain name.

The Complainant further asserts that it wished to take advantage of the “sunrise” registration period for .mobi domain names in order to protect its mark. However, through what is said to have been an administrative error, there was a failure to register the disputed domain name during the sunrise period.

B. Respondent

The Respondent’s Response is rather diffuse and difficult to follow. Basically, the Respondent has submitted at length that “inc” is a generic word and not entitled to protection. The Respondent relies on the case of Deutsche Post AG v. NJDomains, WIPO Case No. D2006-0001. The Respondent seems to make some point of whether the mark INC has or has not a full stop after it.

The Respondent contends that:

The Respondent has no recollection of the disputed domain name being redirected to “www.mixi.mobi” site, as alleged by the Complainant. The Respondent cannot prove that it was redirected or not.

The Respondent has resided in Japan for eight years and recalls seeing INC. magazine in the past, more than eight years ago. The Respondent knew it as INC. Magazine.

The Respondent has read many company profiles with the letters Inc attached to company names.

The Complainant has shown no interests in the disputed domain name for developing a mobile website. The Respondent registered the disputed domain name in order for diverse companies with the .mobi extension to gain recognition of the mobile Internet. The Respondent registered the disputed domain name in good faith and his development constitutes good faith. The Respondent’s business is mobile website development.

With regard to the Respondent’s posting of a fee of USD 550,000 as the price of the disputed domain name at auction, he posted this sum in confidence that nobody would purchase it. He stated another reason for naming such a high price was to increase the importance of .mobi. Offering to sell a domain name for more than the value of the registration fee is normal business practice.

The Respondent’s intention is to promote the disputed domain name and .mobi to the general public, recording the number of hits and keeping the disputed domain name available while he develops other .mobi websites. The Respondent is not a competitor of the Complainant and has not intentionally attempted to attract Internet users to the website for commercial gain.

The Respondent mentions other domain names using the letters “inc”, mainly with country suffixes. These are not owned by the Complainant. He distinguishes the TOEFL case on the basis that the Complainant’s mark in that case was known worldwide and that it was an abbreviation of initials, not a generic name.

The Respondent seeks a declaration of reverse domain name hijacking on the basis that INC is a generic name and that the Complainant’s magazine is not known in Japan or available to purchase there.

The Complainant has never contacted him directly.

There are several other companies with the INC trademark.

The Respondent states that he did not acquire the disputed domain name in bad faith and that he does not use it for profit.

C. Additional Submission – Complainant

The Complainant further states the following:

The USPTO will not register generic names as trademarks.

INC was not included in the Premium Name list produced by the global registry for .mobi domain names.

Suffixes such as .com or .mobi are to be ignored when comparing trademarks and domain names.

The Respondent’s assertion that the Complainant has no interests in developing a mobile website is not correct. To show the contrary, the Complainant exhibited an advertisement for mobile content. Its own .mobi websites are planned to enhance and complement its print and Internet presence. The material exhibited by the Respondent as to development of a website post-dates the submission of the Complaint, with one minor exception.

As to the Respondent’s explanations:

(a) that he posted a fee of USD 500,000 in confidence that no one would purchase at that price; and

(b) that he offered the disputed domain name for sale “to research the importance of .mobi to the general public.

The Respondent’s two statements are contradictory. If the Respondent set a high price knowing that it would not attract purchasers, then the listing could not reveal the true value of the name.

Unlike the situation in Barlow Lyde & Gilbert v. The Business Law Group, WIPO Case No. D2005-0493, where the respondent had used the initials BLG as an acronym for a long time before the complaint was filed, here, there is no evidence that the Respondent has used the initials INC at any time prior to registration of the disputed domain name.

The Complainant also made submissions in the claim for Reverse Domain Name Hijacking, referring to Proto Software, Inc. v Vertical Axis, Inc/PROTO.COM, WIPO Case No. D2006-0905.

D. Additional Submissions - Respondent

The Respondent further states the following:

The Respondent argues that INC is generic. Because of the Panel’s view that the Respondent cannot question the validity of the grant of a trademark, these arguments are not repeated.

The Respondent uses INC as part of the corporate name of his employer, Amu Inc.

The Complainant owns trademarks in the United States of America for a magazine, not for a mobile website company.

There is no trademark for INC registered in Japan. It is not a worldwide mark. The Respondent is not covered by US law in his business. He has not broken any laws.

If the Complainant wished to develop a mobile website, it would have registered the disputed domain name during the ‘Trademark Land Rush’ period.

The Complainant is harassing him by filing its supplementary submission.

6. Discussion and Findings

The Complainant must prove each of the three elements in paragraph 4(a) of the Policy:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no right or legitimate interest in respect of the disputed domain name; and

(iii) the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The disputed domain name is identical to the Complainant’s registered mark INC. Just as numerous WIPO UDRP decisions make it clear that generic top-level domains such as .com can be ignored for the purpose of comparing a trademark with a domain name, the top-level domain .mobi, can similarly be ignored.

The .mobi gTLD was ignored by the Panelist in Screwfix Direct Ltd v. Ajay Kaler, WIPO Case No. D2006-1309, where the disputed domain name was <screwfix.mobi>. The present Panel sees no reason for disregarding this precedent and treats .mobi in the same way as panels have treated .com, .net, and other generic top-level domains over the years.

Although the Complainant, for whatever reason, did not avail itself of the limited opportunity to apply for a .mobi sunrise name, it is not disentitled for that reason from applying under the Policy for relief if it can prove that all three elements of paragraph 4(a) of the Policy have been fulfilled.

The Respondent’s main contention, expressed in several different ways, was that the letters “inc” were generic and did not give any particular rights to the Complainant. Whilst it is true that these letters often indicate an incorporated body in numerous jurisdictions, the Respondent’s submissions miss the point entirely.

Under the Policy, all a complainant has to do is to demonstrate rights in a trademark somewhere. See, for one of many examples, Uniroyal Engineered Products Inc v. Nauga Network Services WIPO Case No. D2000-0503. Usually, this means rights in a registered trademark but it can also include a common law trademark.

In this case, the Complainant owns a trademark registered in the United States of America and in other countries. It is not for the Panel or for the Respondent to second-guess the decision of the United States Patent Trademark Office to grant a registered trademark in this case. The Panel cannot upset the trademark registration just because a respondent claims the trademarked letters are said to represent a generic term. The Deutsche Post case referred by the Respondent involved a special and unusual fact situation including legitimate use by the Respondent of the disputed domain name long prior to the dispute.

The Complainant has, accordingly, satisfied the first limb of paragraph 4(c) of the Policy.

The Panel regards as irrelevant:

(a) whether the Complainant’s registered mark has a full stop after it or not. One registered mark does, another does not; and

(b) the fact that the Complainant did not avail itself of the “sunrise“ procedure for .mobi names. That failure provides no obstacle to the Complainant from exercising its rights under the UDRP.

B. Rights or Legitimate Interests

The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name since it gave him none. However, under paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in the disputed domain name in certain named circumstances.

The Panel is unable to find that any of these circumstances is proved in the present case. The Respondent acquired the disputed domain name only in September 2006. The Respondent is not known by the disputed domain name. There is no convincing evidence to show that the Respondent was making a legitimate non-commercial or fair use of the disputed domain name without intent for commercial gain misleadingly to divert customers or to tarnish the Complainant’s trademark. Merely acquiring a domain name does not confer any rights or legitimate interests.

The Respondent may well be running a legitimate business of developing mobile websites but that fact does not assist him. The Respondent has not shown that he is running a business with the same name as the disputed domain name and that he ran that business before he received notice of the Complaint.

Accordingly, the Panel finds that the second element under paragraph 4(a) of the Policy has been proved.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists certain circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b)(i) provides:

“Circumstances indicating that you (the Respondent) have registered, 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 for a valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name”.

In the present case, there is evidence of the Respondent attempting to sell the disputed domain name for the astronomically exorbitant sum of USD 550,000. There is evidence that the disputed domain name still remains for sale, even though the first attempt at sale came to naught.

The Respondent’s excuse of saying that he merely made placed the disputed domain name on the market at an exorbitant price in the expectation that nobody would take up the offer is hard to accept. The Respondent must accept the reasonably foreseeable consequences of his action. The objective inference from this behaviour is that the Respondent was attempting to sell the disputed domain name at a huge profit. The Complainant’s comment about the inconsistency of the Respondent’s two explanations for the USD 550,000 offer to sell is appropriate.

It is true that the Respondent may not have been a competitor of the Complainant but bad faith is not confined to the instances named in the Policy. The TOEFL case is instructive.

The Respondent, on his own admission, is involved in the mobile phone industry and its extension into the Internet in a technologically-sophisticated country such as Japan. The only concern of the Panel is whether the knowledge and fame of the Complainant’s mark extended to the Respondent when he registered the disputed domain name, since the mark is not registered in Japan where the Respondent has been residing for the past 8 years. In other words, was there bad faith registration?

In the whole of the circumstances i.e. the USD 550,000 offer, the Respondent being an American citizen, his acquaintance with the Complainant’s magazine and his close involvement with the mobile phone industry and its potential for extension into the Internet, the Panel is able to infer that there was bad faith registration and continuing bad faith use.

The Complainant has, accordingly, satisfied the third element under paragraph 4(a) of the Policy.

 

7. Decision

The Complainant has established all three limbs of Paragraph 4(a) of the Policy and is entitled to an order that the disputed domain name be transferred to it.

The Respondent has not offered any evidence to support a finding of Reverse Domain Name Hijacking.

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Hon. Sir Ian Barker
Sole Panelist

Dated: January 19, 2007