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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Carbon Footprint Ltd v. Adrian Fuller

Case No. D2007-0642

 

1. The Parties

Complainant is Carbon Footprint Ltd, Hampshire, United Kingdom of Great Britain and Northern Ireland, represented by Telivo Ltd., United Kingdom of Great Britain and Northern Ireland.

Respondent is Adrian Fuller, Sydney, New South Wales, Australia, represented by Alan Arnott, Australia.

2. The Domain Name and Registrar

The disputed domain name <carbonfootprint.org> is registered with pair Networks, Inc. d/b/a pairNIC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2007. On May 1, 2007, the Center transmitted by email to pair Networks, Inc. d/b/a pairNIC a request for registrar verification in connection with the domain name at issue, and pair Networks, Inc. d/b/a pairNIC transmitted by email to the Center its verification response confirming that 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”), 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 Respondent of the Complaint, and the proceedings commenced May 9, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 29, 2007. The Response was filed with the Center May 28, 2007.

Complainant requested a single-member Panel. Exercising his right under paragraph 5(b)(iv) of the Rules, Respondent requested a three-member panel. The Center appointed Nick J. Gardner, Richard G. Lyon, and Mark Partridge as panelists in this matter on June 28, 2007. The Panel finds that it was properly constituted and has jurisdiction over this proceeding. Each member of the Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

After reviewing the Complaint and Response, on July 5, 2007, the Panel issued Procedural Order No. 1, requesting additional sworn testimony from Respondent. Respondent submitted a supplemental declaration on July 12, 2007.¹

 

4. Factual Background

The term “carbon footprint” means, according to Wikipedia, “a measure of the amount of carbon dioxide . . . emitted through the combustion of fossil fuels; in the case of an organization, business or enterprise, as part of their everyday operations; in the case of an individual or household, as part of their daily lives; or a product or commodity in reaching market. In materials, [it] is essentially a measure of embodied energy, the result of life cycle analysis.” This phrase is relatively new to the English language but has become quite popular as a result of increased concern with pollution and global warming.

Complainant Carbon Footprint Ltd. is a company based in the United Kingdom engaged in environmental management. In addition to providing business services related to environmental responsibility and promotion of its clients as environmentally responsible, at its principal website Complainant offers a free service to consumers called Carbon Footprint, a calculator that enables a user to ascertain the approximate amount of carbon fuels consumed by an everyday activity such as heating, air conditioning, automobile use, or airplane flight. Complainant has applied for trademark registration of carbon footprint in the European Community, which application is now pending.

Complainant’s predecessor company first registered <carbonfootprint.com>, <carbonfootprint.org>, <carbonfootprint.net>, and <carbonfootprint.co.uk> in January 2005, and renewed most of these registrations as recently as November 2006. All of these resolved to Complainant’s principal website at “www.carbonfootprint.com”. At some point, however, Complainant failed to renew <carbonfootprint.org>. Complainant provides no details of exactly why not, but it appears that this occurred as a result of a mistake of some kind rather than a deliberate decision not to renew. Complainant does not allege that Respondent was involved in Complainant’s losing the disputed domain name.

In March 2007, SnapNames.com acquired the disputed domain name. SnapNames is an Internet-based company that regularly acquires lapsed domain names comprised of common words or phrases and makes them available for sale to interested parties by means of online auctions. Respondent was the high bidder for the disputed domain name in such an auction and acquired it on March 19, 2007. The amount paid for it has not been disclosed.

Respondent is an individual residing in New South Wales, Australia. He has been involved in various Internet businesses for at least the past five years, and regularly consults and advises his clients on various matters, including search engine optimization and marketing. In the past year he has registered about 200 Internet domain names in the course of providing these services. Since sometime in 2006, he has been advising Macquarie Energy, an Australian company involved in exploration and assessment to determine the value of petroleum, coal bed methane, natural gas reserves in areas under license or permit to it. According to sworn declarations from Respondent and a director of Macquarie, Macquarie has for some time been seeking an Internet domain name that included a “generic” carbon-related term in order to promote its business interests, and Macquarie engaged Respondent to find a suitable domain name for this purpose.

Prior to bidding online for the disputed domain name Respondent checked the United States of America and Australian trademark offices and found no registered mark incorporating the phrase “carbon footprint”. He did not undertake a search on the Internet to determine if the term was used for a domain name or, if so, by whom and for what purpose. In his supplemental declaration Respondent asserts that he never heard of Complainant prior to registering the disputed domain name.

While a director of Macquarie attests that Macquarie “has commenced preparations for use of the domain name” for its business purposes, Respondent submits no evidence that it has in fact done so, for the disputed domain name or any other domain name. Since Respondent registered the disputed domain name it has resolved to a website said to be “under construction.” At this website are links to various businesses, a few of them carbon-related but most merely commercial services regularly linked on pay-per-click sites (e.g., “homes for sale,” “apartments,” “dating services,” “airline tickets”).

Shortly after losing the disputed domain name, Complainant’s representative contacted Respondent by email. According to several email exchanges between Complainant’s representative and Respondent, Complainant advised Respondent of the error that resulted in loss of the disputed domain name and requested Respondent to transfer the disputed domain name back to Complainant. Respondent replied by offering to sell the disputed domain name to Complainant for USD 75,000. Complainant stated that this price was far in excess of Respondent’s cost of registration, and advised Respondent that Complainant was prepared to proceed with a proceeding under the Policy to recover the disputed domain name. Complainant offered Respondent USD 500, said to be an estimate of Respondent’s cost of registration. During these email communication, Respondent requested Complainant’s representative to supply “full trademark details” of Complainant’s rights in the phrase “carbon footprint” and in the disputed domain name. Respondent’s final reply to Complainant’s representative included a statement that “I also worked for a client that has legitimate rights to the domain and I obtained it on their behalf. . . . carbonfootprint.org is not for sale.”

 

5. Parties’ Contentions

A. Complainant.

Rights Identical to a Mark in Which Complainant Has Rights.

Complainant contends that it has common law rights in the phrase “carbon footprint” by virtue of its continuous use of it since 2005 to sell and promote its services. Its pending trademark application is evidence of this.

Respondent Has No Rights or Legitimate Interest in the Disputed Domain Name.

Complainant further contends that Respondent has no connection or affiliation with Complainant and Complainant has not licensed or otherwise consented to Respondent’s use of the disputed name in any manner. By registering a domain name that includes Complainant’s trademarks, Respondent is knowingly infringing Complainant’s rights. Respondent has not used or made demonstrable preparations to use the disputed domain name in connection with any bona fide offering of goods or services. Respondent has never been commonly known by the disputed domain name. Its use of a domain name that incorporates Complainant’s trademark is neither non-commercial nor “fair use.”

Respondent Registered and Is Using the Disputed Domain Name in Bad Faith.

Complainant accuses Respondent of “domain tasting.”² Respondent registered and is using the disputed domain name in bad faith. Respondent’s use of the disputed domain name for pay-per-click advertising includes advertising of Complainant’s competitors. Respondent’s use of the disputed domain name indicates a “false representation that Respondent is associated with or connected with Complainant,” generating a likelihood of confusion in Internet users including Complainant’s customers. Respondent “has many other parked domains which are being used to profiteer from [pay-per-click] advertising on the back of other companies’ brands.”

B. Respondent.

Complainant has no enforceable trademark rights in the phrase “carbon footprint”.

Respondent contends that “carbon footprint” is a generic or descriptive term in the energy industry and is frequently used by many companies, governments, and individuals. Complainant has no registered mark incorporating this phrase, and has failed to show that this phrase has become a distinctive identifier associated with Complainant or its goods and services. Complainant has provided no supporting evidence of such “secondary meaning.”

Respondent has rights or legitimate interest in the disputed domain name.

Respondent further contends that, as a “business associate” of Macquarie, it has every right to a generic term in the energy industry; at least so long as it is not treading upon another’s trademark rights it may use the phrase “carbon footprint” for its energy business. Complainant and Respondent (or Macquarie) are not competitors.

Complainant Has Not Established Registration or Use in Bad Faith.

Respondent denies actual or constructive knowledge of Complainant prior to his registration of the disputed domain name. Respondent registered the disputed domain name prior to registration of Complainant’s trademark. Respondent has never before been subject to any Policy proceeding. Registering a generic domain name for his client is not evidence of bad faith.

Reverse Domain Name Hijacking.

Respondent further submits that in this proceeding and in its earlier “threatening” correspondence with Respondent, Complainant has misrepresented that it has a trademark, falsely stated that it included all relevant email correspondence between the parties, and falsely asserted that it has won many proceedings under the Policy. Because Respondent’s registration of the disputed domain name preceded Complainant’s registration of its mark, Complainant should have known its Complaint was groundless. Complainant has taken no action against other companies, some of them in the United Kingdom, whose names use the phrase “carbon footprint”.

 

6. Discussion and Findings

The Complainant must prove the elements set out 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 Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect to the Domain Name; and

(iii) Respondent’s domain name has been registered and is being used in bad faith.

Complainant bears the burden of proof on each of these elements. These requirements are conjunctive; Complainant’s failure to satisfy any of the clauses of paragraph 4(a) results in a denial of the Complaint. Because the Panel finds that Complainant has failed to establish that Respondent registered the disputed domain name in bad faith, it is thus unnecessary to address any other Policy element.

Before discussing the particular facts presented here, the Panel notes several prevailing views in Policy proceedings. First, the business of buying and selling domain names is not in and of itself unlawful or illegitimate under the Policy. Mariah Media Inc. v. First Place® Internet Inc., WIPO Case No. D2006-1275; Proteccion S.A. v. Telepathy, Inc., WIPO Case No. D2006-0868. Similarly it is not in and of itself evidence of bad faith to make use of software or services that identify, reserve, and register domain names that have become available by reason of non-renewal, transfer, or legitimate sale by their owners. Tim Golding and Timco Foods, Inc., v. Michael Campbell/The DotCom Factory, Inc., WIPO Case No. D2007-0103. It is common knowledge that domain names consisting of common words and phrases are highly prized, and it is not necessarily bad faith to seek and acquire such names, even for resale.

What may make any of the foregoing activities illegitimate under paragraph 4(a)(ii) or evidence bad faith under paragraph 4(a)(iii) is a respondent’s targeting and taking advantage of the mark of another. Panels have recognized that ordinarily this requires that the respondent have some knowledge of the complainant and its mark. This knowledge may be proven by evidence of actual knowledge, in some circumstances constructive knowledge as a matter of law, or imputed from the proof before the panel. When a respondent regularly buys and sells domain names, in some circumstances panels have required respondent to demonstrate that it undertook reasonable precautions to avoid registering domain names that incorporate trademarks of others. This is so even in respect to “generic” or “descriptive” marks or common words or phrases. Indeed Respondent in this proceeding appears to have taken some steps in this regard as he states that he did examine databases maintained by the United States of America and Australian trademark offices prior to bidding for the disputed domain name.

In previous cases in which a panel ordered transfer of a domain name based upon a trafficker’s duty to undertake a reasonable investigation and found bad faith, either the domain name at issue was distinctive (and not a common word or phrase)³ or the respondent had been found frequently to have ignored others’ trademark rights, as evidenced by losing domain names in previous Policy proceedings.⁴ Where neither of these circumstances obtained, the panel adhered to the ordinary rule that actual knowledge is required and denied the complaint.⁵ To our knowledge, no panel has ever placed a duty upon a person or entity that regularly buys and sells domain names to investigate prior ownership or to search similar domain names in the absence of knowledge or imputed knowledge of the Complainant’s mark. In the circumstances of this proceeding we similarly decline to do so.

Respondent categorically denies, on oath, any actual knowledge of Complainant or its mark, and presents a plausible set of circumstances, corroborated on oath by his client, that he merely sought a “generic” energy-related domain name for his client’s business purposes. Nothing suggests that prior to using the SnapNames auction Respondent intentionally turned a blind eye to the trademark rights of Complainant. Respondent and his client reside and do business in Australia; Complainant is based in the United Kingdom. Contrary to its assertions, Complainant does not appear to be especially well-known around the world, and indeed has only been in business for two or three years. The critical phrase in the disputed domain name is common in the energy business and common on the Internet. A simple Google search reveals use of the phrase” carbon footprint” by many, for many different purposes, and frequent use by others for the “carbon calculator” that Complainant provides. SnapNames’ auctions do not reveal prior owners of the domain names for sale. Respondent claims on oath to have made a limited search of two trademark offices’ records.

The Policy sets out four non-exclusive sets of circumstances that, if found by the Panel on competent evidence, shall be evidence of registration or use in bad faith:

(i) circumstances indicating that you [Respondent] have registered or 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 of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.

Complainant asserts that Respondent’s conduct falls within each of these four paragraphs: Clause (i) by offering to sell the disputed domain name to Complainant immediately after being contacted for an amount vastly in excess of Respondent’s cost of registration; Clause (ii) on the basis of the assertion quoted at the end of Section 5-A above; Clause (iii) by use of the disputed domain name to promote Complainant’s competitors; and Clause (iv) by its selection of Complainant’s mark for the erstwhile domain name of its client Macquarie. Each assertion fails on analysis.

If Respondent in fact had no knowledge of Complainant, its business, or its marks prior to registering the disputed domain name of course he could not have registered the disputed domain name “primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant.” His offer to sell upon learning of the Complainant and its interest in the disputed domain name might support a finding of use in bad faith, but not registration.⁶

Complainant’s charge that Respondent “engaged in a pattern” of cybersquatting intentionally to prevent mark owners from using their marks in domain names lacks evidence to support it. Complainant submits no proof of the conduct it charges,⁷ and Respondent asserts, on oath, that he has never before been the subject of a proceeding under the Policy, a fact confirmed by the Panel’s review of reported cases. There is no established “pattern” of cybersquatting.

There is similarly no evidence that Respondent registered the disputed domain name “primarily for the purpose of disrupting the business of a competitor” or intentionally to take advantage of goodwill attached to Respondent’s mark. Again, without knowledge of Complainant or its business these criteria cannot be met.

The facts presented to the Panel including in particular Respondent’s sworn testimony and supplementary testimony and the sworn testimony of his client, prima facie establish that the Respondent had no knowledge of Complainant. The domain name in question is commonplace in Respondent’s industry, and the Complainant has failed to establish that it was so associated with Complainant as to allow the Panel to infer that the Respondent must have known of the Complainant’s interest. Without that inference bad faith in registration cannot be shown.

A panel in a Policy proceeding lacks the ability to test the parties’ credibility by means of direct testimony or cross-examination. A different record and different result might occur in court proceedings in the United Kingdom or Australia. On the record as the Panel has it, however, Complainant has failed to carry its burden of proof to establish that Respondent registered the disputed domain name in bad faith.

Respondent’s request for a finding of reverse domain name hijacking must be denied. This was not a baseless Complaint, and there is nothing in Complainant’s conduct, prior to filing the Complaint or in the Complaint itself, even to suggest bad faith on the Complainant’s part in commencing this proceeding. See Rules, paragraph 15(e).

 

7. Decision

For all the foregoing reasons, the Complaint is denied.

Dated: July 26, 2007

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¹ As the Panel requested additional evidence on issues already presented by the pleadings and a subject addressed by Complainant in its Complaint, the Panel determined that there was no need to allow Complainant to make a submission in reply to Respondent’s supplemental declaration.

² See “Cybersquatting Remains on the Rise with further Risk to Trademarks from New Registration Practices,” WIPO Press Release (March 12, 2007), at http://www.wipo.int/pressroom/en/articles/2007/article_0014.html, for a description of domain tasting.

³ E.g., Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964 (wcmh.com); Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304 (mobilcom.com); Imperial Chemical Industries PLC v. RareNames, WIPO Case No. D2006-0124 (icidulux.com).

⁴ Ibid; see also Centron GmbH v. Michele Dinoia, WIPO Case No. D2006-0915 (Respondent described as “recidivist cybersquatter”)

⁵ E.g., Michael Gersdorff Blendstrup Kristensen v. Name Administration Inc. (BVI), WIPO Case No. D2006-1546 (superfuzz.com); Janet E. Sidewater v. Worldwide Media Inc., WIPO Case No. D2006-1281 (featherinyourcap.com).

⁶ Use and registration must each be proven. See, e.g., PAA Laboratories GmbH v. Printing Arts America, WIPO Case No. D2004-0338.

⁷ There is no proof even of Respondent’s ownership of the specific domain names cited by Complainant.