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and Mediation Center
ADMINISTRATIVE PANEL DECISION
Rig Expert Ukraine Ltd. v. Rig Technologies
Case No. D2007-0379
1. The Parties
The Complainant is Rig Expert Ukraine Ltd., Kiev, Ukraine, and its officers Tkachenko, Victor Mykolayovich; Fedoseev, Mykola Petrovich; Nechitailov, Denis Mykolayovich; Litvinov, Sergei Ivanovich (together “the Complainant”); represented by Denis Mykolayovich Nechitailov, Ukraine.
The Respondent is Rig Technologies, Scottsdale, Arizona, United States of America; represented by Glenn W. Wetherell, Aberdeen, Maryland, United States of America.
2. The Domain Name and Registrar
The disputed domain name <rigexpert.com> is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 13, 2007. On March 15, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On March 15, 2007, 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 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 March 21, 2007. The Center verified that the Complaint together with the amendment to the Complaint (collectively, “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 March 28, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was April 17, 2007. The Response was filed with the Center on May 2, 2007.
The Center appointed James A. Barker as the sole panelist in this matter on May 15, 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.
4. Factual Background
The Complainant is the owner of the mark RIGEXPERT, registered in the Ukraine to an officer of the Complainant, Nechitailov, Denis Mykolayovich. The mark is registered in Class 9, relating to (among other things) electrical and computer equipment.
The Complainant put information relating to its mark on its website at “mixw.net” (‘MixW’ is a radio software marketed by the Complainant). The Complainant’s website advertises various radio equipment, and includes the heading “HAM Radio software from Ukraine!”, and a listing of advertisements and links for its related products.
The Complainant’s products include “RigExpert interfaces”, which function as computer peripheral devices to connect personal computers to radio communication equipment for amateur radio services. Those products are manufactured in the Ukraine by the Complainant or its associates.
The Complainant has used “RigExpert” in trade since 2003. Its mark was registered with a first filing date of March 29, 2006, and a ‘certification’ date of January 15, 2007.
The disputed domain name was registered in February, 2004.
The Complainant provided evidence of its registration as a limited liability company in the Ukraine, which occurred in 2006.
At the date of this decision, the disputed domain name reverts to a website relating to amateur radio products. The website prominently displays the statement “Official United States Interface Website for the United States of America and Worldwide”. It advertises products and support, including “the Navigator Digital Multi-Mode Interface” and the “IMD Meter”.
The Complaint identifies both “Rig Technologies” (as the named registrant of the disputed domain name) and “Glenn W. Wetherell”. There is no evidence that “Rig Technologies” has any legal personality separate to the individual (Glenn W. Wetherell) who represents it. Rather, the Respondent refers to himself (as an individual) being “known as the rig expert”. As such, for the purpose of this proceeding, the Panel has treated Glenn W. Wetherell as the respondent in fact, and references in the Complaint to Glenn W. Wetherell as references to the Respondent.
5. Parties’ Contentions
The following is summarized from the Complaint.
Identical or confusingly similar
The Complainant claims that the disputed domain name is identical to its registered mark “RigExpert”.
The Complainant provides evidence that its products have been the subject of trade magazine articles in the United States of America (the United States), as well as advertising in those magazines.
Rights or legitimate interests
The Complainant claims that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Respondent was previously using the disputed domain name in connection with the distribution of the Complainant’s RigExpert computer interfaces in the Unites States of America. Currently, the Respondent neither trades as “RigExpert interfaces”, nor represents the Complainant in the United States. The Complainant has not authorized the Respondent to use its mark, other than related to the goods traded under the mark.
The Complainant understands that the Respondent provides technical support and repairs for customers who purchased RigExpert interfaces from him, but this does not confer a legitimate interest on the Respondent. The Respondent’s website does not indicate any intention to trade goods or perform services relating to “RigExpert” products.
The Respondent is not known by the disputed domain name.
The Complainant states that the disputed domain name was transferred (at some point not identified) from another individual to the Respondent “for the purpose of fair use in commerce, particularly for selling ‘RigExpert interfaces’ in the USA”. (This statement does not make it clear whether it was the previous registrant of the disputed domain name that was making the claimed ‘fair use’, or whether this was the Respondent.)
The Complainant states that the Respondent was aware of the Complainant’s mark when the domain name registration was transferred, since the previous owner was also using the disputed domain name in connection with the trade of “RigExpert interfaces”. The Complainant provides evidence of the Respondent’s website, as at February 7, 2005, which included references to officers of the Complainant, as those responsible for the development of the “RigExpert interfaces”.
The Complainant claims that the disputed domain name is now used to intentionally attract Internet users, by creating confusion with the Complainant. The website to which the disputed domain name refers advertises products competing with the Complainant’s. The Complainant also claims that the Respondent’s website includes schematic diagrams, which infringe the Complainant’s copyright in those diagrams. The website also provides for free downloads of the Complainant’s software, which are well-known as originating from the Complainant.
The Complainant contacted the Respondent inquiring about the possibility of purchasing the disputed domain name. The Respondent responded that he would auction the disputed domain name, but that has not been carried through.
The following is summarized from the Response.
Identical or confusingly similar
By the Complainant’s own statement, it did not have a registered mark prior to January 15, 2007. The Respondent requests that all documents translated into English by the Complainant’s officers be stricken from the record, because of bias.
The Complainant’s evidence, that it was using its mark in trade in 2003, is not correct as that evidence “clearly lists the hardware being offered as the ‘MixW RigExpert’ and further requests the viewer to, ‘See also: MixW RigExpert docs’ for further information.
Rights or legitimate interests
The Respondent “has owned the disputed domain name since 2004, for the purpose of providing ‘expert’ support and products to the amateur radio community to interface computers to amateur radio transmitters also know (sic) as ‘rigs’”.
The Respondent has been commonly known as the “rig expert”, offering professional advice, consultation and technical support via email and telephone since December 2004 under the disputed domain name. “The name ‘rig’ in amateur radio jargon means a transmitter, receiver, transceiver combination or amateur radio station.”
“The Respondent came upon the domain name as a unique marketing tool that combined the Respondent’s expertise in the area of computer to amateur radio interfaces with the common reference (rig) to amateur radio equipment”.
The Respondent “had an agreement for the Complainant to manufacture a digital computer interface which the Respondent marketed worldwide under the moniker of ‘RigExpert SD’ ”. The Respondent does not represent nor has ever represented the Complainant or its founders, participants or associates.
The Respondent provides technical support for a wide range of devices designed to interface computers with ‘rigs’. The Respondent is associated with the “privately branded ‘RigExpert SD’ and the domain <rigexpert.com> throughout the amateur community”. The Complainant is attempting to hijack the Respondent’s goodwill.
The Respondent was not aware of the Complainant’s mark before it acquired the disputed domain name, since the Complainant only registered its mark in January 2007.
The Respondent placed the disputed domain name on auction in January 2007 for the sole purpose of establishing a fair market value for tax purposes and to place it as an asset on its books.
The disputed domain name has only become a domain name of value after more than two years of advertising and support by the Respondent. The Respondent claims that the Complainant has never advertised in any popular amateur radio magazine. However, the Respondent advertises continually in those magazines at a cost of $7,000 per year in the United States and Canada.
The Respondent requests a finding of reverse domain name hijacking against the Complainant.
6. Discussion and Findings
For the Complainant to succeed and have the disputed domain name transferred to it, paragraph 4(a) of the Policy provides that Complainant must prove that:
(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 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.
The Complainant must prove all of these elements. These elements are discussed in turn as follows.
A. Identical or Confusingly Similar
The first issue is whether the Complainant ‘has rights’ in a mark, for the purpose of paragraph 4(a)(i) of the Policy.
The Complainant provided evidence of having a Ukrainian-registered mark (filed in 2006) for the mark “RigExpert”. That mark was registered some years after the registration of the disputed domain name.
Nevertheless, paragraph 4(a)(i) of the Policy does not require that the Complainant’s mark is registered before the disputed domain name. (It does, however, make it more difficult for the Complainant to establish that the Respondent has no rights or legitimate interests in the disputed domain name, or that the Respondent relevantly acted in bad faith: see e.g. Deutsche Post AG v. NJDomains,
WIPO Case No. D2006-0001, and the cases cited in that one.)
Paragraph 4(a)(i) of the Policy requires only that the Complainant establishes that it “has rights” in a mark and that the disputed domain name is identical or confusingly similar to the mark.
In this case, there is no dispute that the Complainant “has rights” – being its registered rights in the trademark “RigExpert” in the Ukraine. It is well-established that the “.com” extension is to be disregarded for the purpose of comparison with the disputed domain name. Disregarding that extension, the disputed domain name is self-evidently identical to the Complainant’s registered mark.
For this reason, the Complainant has established that the domain name is identical to a mark in which it has rights, under paragraph 4(a)(i).
Although it is not necessary to make a finding of whether the Complainant has an unregistered mark for the purpose of paragraph 4(a)(i), such a finding is important to the two grounds that follow, relating to paragraph 4(a)(ii) and (iii). The Complainant does not make an explicit argument that it has unregistered rights in the trademark “RigExpert”. However, the Complainant provides some substantive information that would go towards such a finding.
The Complainant provides evidence that it has used the mark “RigExpert” in trade since 2003 – before the disputed domain name was registered by the Respondent.
To establish common law or unregistered rights in a mark it is necessary for a Complainant to establish, on the balance of probabilities, that the mark has become distinctively identified with it. Where the mark comprises generic or descriptive words, the Complainant must demonstrate that the mark has some ‘secondary meaning’. (That is, that the mark has acquired a meaning separate to the otherwise generic meaning of the terms, that is distinctively identified with the complainant.)
The combination of two generic terms can be a distinctive identifier, particularly where the combination is not a natural or obvious one – that is, where the two words would not commonly be associated with each other, or which require at least some imagination to combine. However, it is more difficult to establish such a combination as a distinctive identifier where the combined words are naturally or commonly associated, without proof of secondary meaning. See e.g. Rollerblade, Inc v. CBNO and Ray Redican Jr.,
WIPO Case No. D2000-0427; PetWarehouse v. Pets.Com, Inc.,
WIPO Case No. D2000-0105; High-Class Distributions S.r.l. .v. Onpne Entertainment Services,
WIPO Case No. D2000-0100; Tough Traveler, Ltd. v. Kelty Pack, Inc. Mike Scherer, and Inkling Pen Co.,
WIPO Case No. D2000-0783.
In this case, the Complainant’s mark is comprised of the combined generic terms “rig” and “expert”. The noun “rig” is defined in the Merriam-Webster on-line dictionary as, among other things, “tackle, machinery or equipment fitted for a specified purpose” and “a tractor-trailer combination”.
The question, in this case, is whether the terms are descriptive or generic. (If so, the Complainant must show that they have acquired secondary meaning to establish that the terms have become distinctively identified with the Complainant.)
The Panel finds that, on the facts of this case, the terms are not descriptive or generic. This is so for two reasons:
Firstly, a mark can be characterized as descriptive “if it forthwith conveys an immediate idea of the ingredients qualities or characteristics of the goods”. (See Cepheid Corporation v. Healthexpert LLC and John Johnson,
WIPO Case No. D2001-1272 which, like in this case, also involved a two word combination including the word “expert”: <genexpert.com>.) In this case, the disputed domain name does not immediately convey such an idea or meaning, having regard to the common dictionary definitions of the term “rig” (noted above). As such, the mark appears to be suggestive, rather than descriptive. (See e.g., the Cepheid Corporation case, for a discussion of the difference between a suggestive and descriptive mark.)
It might be argued that an idea or meaning is immediately conveyed, by the mark, to amateur radio users. In this connection, the Respondent argues that the term “rig” is common jargon in the amateur radio field - meaning a transmitter, receiver, transceiver combination. The implication of this argument is that the combination of the terms “rig” and “expert” are descriptive in that field. But the Respondent gives no evidence of the generic use of the term “rig” in this way. The Respondent’s own evidence (that it came across the term as a “unique marketing tool”) also suggests that its own perceived value in the term was because it was not generic. The Panel also notes that a general Google search for “rig” and “expert” shows the top results as relating largely to the Complainant and its products (excluding the Respondent’s own website) – which does not support the Respondent’s argument in this respect.
Secondly, the combination is used by the Complainant in a specialized and particular market: that is, the market for computer-radio software and hardware interfaces. This makes it more likely, in this Panel’s view, that the combination of terms could be a distinctive identifier of the Complainant and its products, in that market. It may be that a person outside the relevant market might see the combination “RigExpert” as merely descriptive of the generic (dictionary defined) terms it combines. However, prior panel decisions have recognized that a common law mark does not need to be distinctive to the world at large. It is enough if the mark is distinctive in a particular market. (See, e.g. Skype Limited v. Benjamin Decraene,
WIPO Case No. D2005-1112.)
For these reasons, the Panel finds that the Complainant’s mark is sufficiently distinctive in the relevant market, to be treated as a common law mark for the purpose of the Policy.
B. Rights or Legitimate Interests
On the facts of this case, the Respondent’s rights or legitimate interests in the disputed domain name might rest on one of the following grounds. These grounds respectively are relevant to the grounds set out in paragraph 4(c)(i) and (ii) of the Policy, by which evidence of a right or legitimate interest may be demonstrated.
The Respondent claims that it is commonly known “as an individual and business” by the disputed domain name. Paragraph 4(c)(ii) of the Policy provides that a Respondent may demonstrate rights or legitimate interests by establishing such a claim.
However the Respondent gives no evidence of this contention. There is nothing in the name of the Respondent (Glenn W. Wetherell) that suggests he is commonly known by that term. While the named registrant is “Rig Technologies”, this is not by itself evidence that the Respondent is “commonly known” by the term “Rig Expert”. While the Respondent points to a photo of appearing under a banner in 2005 (apparently a trade fair) titled “RigExpert.com” this does not establish that the Respondent is itself therefore commonly known by that term. At best, this evidence only suggests that the Respondent called itself “RigExpert.com”, on one occasion after registering the disputed domain name.
Bona fide offering
Paragraph 4(c)(i) of the Policy provides that a Respondent may demonstrate rights or legitimate interests by establishing that it used the domain name in connection with a bona fide offering of goods or services.
The Respondent argues that it has used the disputed domain name in connection with its business, in providing technical support and amateur radio products.
On one hand, the Respondent states that he “does not represent nor has ever represented the Complainant”. On the other hand, he states that that he had an agreement with the Complainant, for the Complainant to manufacture a product called “RigExpert SD”, to then be distributed by the Respondent. The Complainant however only states that the Respondent “was previously using <rigexpert.com> in relation to distributing goods, particularly, a series of RigExpert computer interfaces in the USA”.
It seems clear that the Respondent provided services and products relating to those of the Complainant (at least until recently) and provides services more generally in the amateur radio field. However, this role does not of itself establish that the Respondent has a right or legitimate interest in the disputed domain name. (See for example The Marigny Corporation v. Discount Coffee.com, Inc.,
WIPO Case No. D2001-0354. That case involved the respondent using a domain name to offer goods for sale similar to those offered by the complainant. In that case, the respondent was found to have no rights or legitimate interests in the domain name.)
The Complainant also states that it had not authorized the Respondent to use its mark “in a way other than related to goods traded under this mark”. Neither the Respondent nor the Complainant make it clear whether the Complainant licensed or acquiesced to the use of its mark by the Respondent in the disputed domain name. No evidence of such an agreement or arrangement (such as documentary evidence of the agreement) was provided by either the Complainant or Respondent.
As such, the Panel infers that the Respondent was not otherwise licensed or authorized to use the Complainant’s mark in a domain name. If it had such an authorization, the Respondent provided no evidence of it. It also seems more likely, simply by the fact that the Complaint was made, and the overall nature of the statements made by the Complainant, that the Complainant had not authorized the Respondent to use the “RigExpert” mark in a domain name.
For these reasons, the Complainant has established this second element of the Policy.
C. Registered and Used in Bad Faith
It is clear that the Respondent has used the disputed domain name, in connection with a website advertising goods and services relating to amateur radio equipment. The Respondent gives evidence of using the disputed domain name since March 26, 2004, by evidence from the ‘WayBackMachine’ Internet archive. That archive indicates that the website, to which the disputed domain name referred on that date, was headed with the statement “News Flash: K4SET is arranging US distribution for the MixW RigExpert”. At later dates, the website referred also to other websites for “RigExpert Dealer[s]”, and contained information about the Complainant’s products.
The Panel finds that the Respondent was very well familiar with the Complainant and its “RigExpert” mark. It is likely that the Respondent was similarly familiar when it registered the disputed domain name, taking into account the use to which the domain name was subsequently put, and the fact that the Respondent operates in the same specialized field as the Complainant. It also appears that, subsequent to registering the domain name, and using it in connection with advertising the Complainant’s products, the Respondent has advertised itself on that site as “Rig Technologies”.
For these reasons, the Panel finds that the dispute domain name was registered and used in bad faith.
This finding is made despite the Complainant’s statement that the disputed domain name “was used for the fair purpose for some time, currently it is being used in bad faith”. This statement appears to have been made on the basis of the Complainant’s belief that the Respondent acquired the disputed domain name in 2005 from its previous owner, who also used the disputed domain name in connection with the advertising of the Complainant’s products. That is, it appears that the Complainant is saying that the Respondent in this case acted in bad faith from the inception of his registration and use of the disputed domain name – even if a third party had previously used that domain name in a way the Complainant considered to be a “fair purpose”. It is not clear from the evidence whether the Complainant only became aware of that previous registration through these proceedings, and it is also unclear why the Complainant regarded that previous use as “fair”, but the Respondent’s use in this case as different. Regardless, application of the Policy requires an assessment of the Respondent’s conduct, rather than that of third parties.
(Both the Complainant and Respondent make additional claims in relation to bad faith, which are not dealt with further since they do not affect the Panel’s finding on this ground.)
D. Registered and Used in Bad Faith
The Respondent requests the Panel to make a finding of reverse domain name hijacking. For the reasons set out above, it is not necessary for the Panel to make a finding on this ground.
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, <rigexpert.com> be transferred to the Complainant.
James A. Barker
Dated: May 31, 2007