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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ITT Manufacturing Enterprises, Inc., ITT Corporation v. Douglas Nicoll, Differential Pressure Instruments, Inc.
Case No. D2008-0936
1. The Parties
The Complainants are ITT Manufacturing Enterprises, Inc. of Wilmington, Delaware, United States of America, and ITT Corporation of White Plains, New York, United States of America, both represented by RatnerPrestia P.C., United States of America.
The Respondents are Douglas Nicoll and Differential Pressure Instruments, Inc., both of Norfolk, Virginia, United States of America, represented by Kaufman & Canoles, P.C., United States of America.
2. The Domain Names and Registrars
This proceeding concerns thirteen Domain Names, registered with two different Registrars.
The disputed Domain Names <ittbarton.com> and <itt-barton.com> are registered with Network Solutions, LLC.
The other disputed Domain Names,
are registered with Tucows, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the вАЬCenterвАЭ) on June 19, 2008. On June 20, 2008 and July 10, 2008, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Domain Names.
On June 20, 2008, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent Douglas Nicoll is listed as the registrant of the Domain Names <ittbarton.com> and <itt-barton.com> and providing the contact details.
On June 20, 2008 and July 10, Tucows, Inc. transmitted by email to the Center its verification response confirming that the Respondent Differential Pressure Instruments, Inc. (with some minor variations in punctuation, capitalization, and spelling) is listed as the registrant of each of the remaining Domain Names and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the вАЬPolicyвАЭ), the Rules for Uniform Domain Name Dispute Resolution Policy (the вАЬRulesвАЭ), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the вАЬSupplemental RulesвАЭ).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on July 17, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 6, 2008. A Response on behalf of both Respondents was filed with the Center on August 6, 2008. The Complainants and Respondents have also submitted supplemental filings, as discussed below.
The Center appointed W. Scott Blackmer, Roderick Thompson, and Diane Cabell as panelists in this matter on October 20, 2008. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant ITT Corporation (вАЬITTCвАЭ) is a Delaware corporation with shares publicly traded on the New York Stock Exchange. The Complainant ITT Manufacturing Enterprises, Inc. (вАЬITTMEIвАЭ) is a subsidiary, which is organized as a privately held Delaware corporation.
The group of companies controlled by the Complainant ITTC produces a wide range of goods and services. These include a variety of electrical controls, metering equipment, and differential pressure units to monitor and control the flow and level of fluids.
The ITT group operates in more than 100 countries and maintains several websites, including one at вАЬwww.itt.comвАЭ. The Complainant ITTC or its affiliates own more than 180 other domain names that incorporate the ITT mark. These include many comprised of the ITT mark and the name of a specific product group, business unit, or division name, such as <ittcannon.com> and <ittfluidtechnology.com>.
The Complaint asserts that the Complainants have used the ITT mark since the 1920s, originally as an abbreviation for International Telephone and Telegraph Corporation. The Complainant ITTMEI holds United States of America Trademark Registration No. 1169040 for the ITT mark in stylized letters, registered on September 15, 1981, in association with flow and level instrumentation, showing first use in commerce in 1965. The Complainant ITTMEI also holds a registered standard-character ITT mark, United States Trademark Registration No. 3108719, registered June 27, 2006, claiming first use in commerce (in some classes) as early as 1963, as well as CTM No. 001953827 (December 17, 2003) in the European Union. The Complaint states that the Complainants currently hold more than 700 registered trademarks and service marks incorporating the ITT mark, in more than 100 countries.
It is not disputed that the Complainant formerly operated a Barton Instrument business unit that produced instruments including flow switches, tank level indicators, and differential pressure sensors and transmitters. The Complainant sold this unit to Barton Instrument Systems LLC in 1998 under an Asset Purchase Agreement that allowed the new company to use the ITT mark on Barton products for a brief transition period. The Respondents infer that the Complainants gave up rights to the Domain Name <ittbarton.com> in connection with this transaction, but that has not been established.
The Respondent Nicoll is an individual who states that from 1997 to 2000 he was employed as a sales person for Instruments East Inc. In that capacity, he sold several kinds of industrial instruments, including new surplus вАЬITT BartonвАЭ instruments. According to the Respondents, these вАЬnew surplusвАЭ products are devices manufactured by the ComplainantвАЩs former Barton Instrument business unit, sold to the government of the United States of America, but never placed in service. The government sold off its surplus stock of such instruments to others who purchased them for resale. It appears from the record that the ITT mark is stamped on some or all of the ITT Barton devices.
The Respondent Nicoll started his own business selling such instruments in 2000, first under the name Bartonman Sales and then, from April 2002, under the name of the Respondent Differential Pressure Instruments, Inc. (вАЬDPIвАЭ). DPI performs testing and calibration on the products and sells them to customers through several channels, including a website associated with the Domain Name <ittbarton.com> (the вАЬRespondentsвАЩ websiteвАЭ). The Respondents state that they have used this website to sell new surplus ITT Barton instruments since August and September 2000.
The Respondent Nicoll registered the Domain Name <ittbarton.com> on June 27, 2000 and the Domain Name <itt-barton.com> on July 25, 2000, both in his own name. The remaining Domain Names were registered in the name of the Respondent DPI; the Domain Name <ittbarton-model227.com> was registered on December 26, 2003, and the others were registered on June 30, 2004. The Respondents indicate that the first two Domain Names refer generally to the ITT Barton products, while each of the other Domain Names adds a reference to a particular ITT Barton instrument model, in the format вАЬittbarton-modelxx.comвАЭ. For convenience, these eleven Domain Names will be termed the вАЬModelxxвАЭ Domain Names.
The RespondentsвАЩ website is headed as follows:
вАЬSales, Parts, Repairs, and Calibration
вАЬDifferential Pressure Instruments Inc.вАЭ
The home page of the RespondentsвАЩ website features photographs of instruments and includes the following description and disclaimer:
вАЬITT BARTON differential pressure instruments are used in a wide spectrum of industrial processes. We supply New Surplus instruments to meet our customer's requirements. Differential Pressure Instruments Inc. is not associated with the Manufacturer of these instruments. Our services include sales, calibrations, and repairs. Calibrations are performed on each instrument prior to shipment. Each instrument is delivered with calibration certificates traceable to N.I.S.T. Because of our extensive inventory of over 3000 units in stock, delivery is normally one to two weeks after receipt of order.вАЭ
The other pages on the RespondentsвАЩ website all appear to concern the sale of various categories of new surplus ITT Barton devices. The website also advertises repair services and manuals for the ITT Barton instruments, and it states that the Respondent DPI furnishes these instruments with a warranty equal to the manufacturerвАЩs original warranty.
A вАЬDirectory of LinksвАЭ on the RespondentsвАЩ website displays two links, one to the RespondentsвАЩ model-specific website associated with the Domain Name <ittbarton-model227.com> and another to <detroitpressureswitch.com>, which does not currently resolve to a website. The registrarвАЩs WHOIS directory shows that the Respondent Nicoll is also the registrant of the domain name <detroitpressureswitch.com>. A printout furnished with the Complaint shows that on June 2, 2008, the domain name <detroitpressureswitch.com> resolved to a website headed вАЬDPI, Inc.вАЭ and вАЬNew Surplus Detroit Switches InstockвАЭ, with contact information for the Respondent DPI. That website (the вАЬRespondentsвАЩ Detroit Switch websiteвАЭ) advertised Detroit Switch pressure, temperature, and differential switches and included a disclaimer of affiliation with вАЬDetroit Switch Inc., the Manufacturer of these instrumentsвАЭ. The Panel notes that a similar home page for the RespondentsвАЩ Detroit Switch website is found in the online archives available through the Internet ArchiveвАЩs Wayback Machine in January 2008, March 2005, and March 2004.
Thus, the Respondents have advertised both surplus ITT Barton and surplus Detroit Switch differential pressure instruments through separate websites. The RespondentsвАЩ website at вАЬwww.ittbarton.comвАЭ, to which the Domain Names resolve, still includes a link for the RespondentвАЩs Detroit Switch website, which was active from at least March 2004 through June 2008. The parties do not discuss the extent, if any, to which surplus Detroit Switch products sold by the Respondents compete with the ComplainantsвАЩ products.
All of the Domain Names currently resolve to the RespondentsвАЩ website at вАЬwww.ittbarton.comвАЭ. That has not always been the case. The Domain Name <ittbarton-model227.com> was associated for a time with a model-specific website maintained by the Respondents; this reverted to a parking website sometime in November 2007 when the relevant hosting agreement expired. Printouts furnished by the Complainant show that in June 2008, the Domain Name <itt-barton.com> resolved to a parking website with third-party advertising links, including one labeled вАЬDifferential PressureвАЭ that linked to the website of Orange Research, which produces competing differential pressure gauges, switches, and transmitters. The Domain Names <ittbarton-model318a.com>, <ittbarton-model227a.com>, <ittbarton-model227c.com>, and <ittbarton-model316a.com> similarly resolved in July 2007 to parking pages with third-party advertising links. Other Domain Names resolved for a time to websites headed simply вАЬFuture siteвАЭ or вАЬSite is under constructionвАЭ, or to no website at all.
The Respondents acknowledge that at the time the Complaint was filed, the <itt-barton.com> Domain Name and the eleven Modelxx Domain Names вАЬwere not being used by Respondents; they were вАШparkedвАЩ by their registrars.вАЭ The Respondents deny ever having entered into pay-per-click advertising agreements for the Domain Names or having profited in any way from advertising links that the Registrars posted on the pages to which the Domain Names formerly resolved.
The Complaint states that the Complainants first became aware of the RespondentsвАЩ website at вАЬwww.ittbarton.comвАЭ in September 2006. Correspondence between counsel followed, including the ComplainantsвАЩ demands that the Respondents cease and desist from using the ITT mark and transfer the Domain Names to the Complainants. Counsel for the Respondents claimed nominative use of the вАЬITT BartonвАЭ name for resale purposes. This proceeding followed.
The Respondents assert that the history between the parties is more extensive, however. The Response states that ITT companies have on several occasions from 2001 to 2008 communicated with the Respondent DPI or its predecessor Bartonman Sales about purchasing surplus ITT Barton products from the Respondents. The Response attaches copies of price quotes, emails, purchase orders, and shipping forms that document such communications and actual sales to ITT subsidiaries. An October 2002 fax order from Goulds Pumps, ITT Industries, for example, attaches a product description page from the RespondentsвАЩ website at вАЬwww.ittbarton.comвАЭ.
The parties do not agree on the extent to which they compete with one another. The Complainants contend that ITT continues to produce competing products of the same general type as the old ITT Barton product line sold by the Respondents. The Respondents counter that the ITT Barton line is вАЬunique and special purposeвАЭ and argue that none of the products listed in the relevant annex to the Complaint are of the same вАЬform, fit and function as any ITT Barton instruments which Respondents sellвАЭ.
5. PartiesвАЩ Contentions
The Complainants argue that the Domain Names are confusingly similar to the ITT mark, which they all incorporate in its entirety.
The Complainants contend that the Respondents have no rights or legitimate interests in using such Domain Names, and that they have registered and used the Domain Names in a bad-faith attempt to attract Internet users for commercial gain either to the RespondentsвАЩ website or to those of third-party advertisers. The Complainants cite continuing use of the Domain Names following cease-and-desist letters as additional evidence of bad faith.
The Respondents argue that there is little likelihood of confusion, because of the disclaimer and distinctive template on the RespondentsвАЩ website, and contend that the ComplainantвАЩs themselves gave up the Domain Name <ittbarton.com> when they sold the Barton Instrument business unit a decade ago.
The Respondents claim a resellerвАЩs legitimate interest in using Domain Names that refer to the products and related services they have been selling since 2000. The Respondents also argue that the Complainants implicitly accepted the RespondentsвАЩ use of the Domain Names, since ITT has done business with the Respondents since 2001 and the Complainants raised no objection to the Domain Names until September 2006 (and then allowed nearly two more years to elapse before commencing this UDRP proceeding).
The Respondents deny bad faith in the registration and use of the Domain Names, emphasizing that they use them to sell only genuine new surplus ITT Barton products.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of a disputed domain name, the Complainant must demonstrate each of the following:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules,
вАЬA Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.вАЭ
A. Supplemental Filings
The Complainants submitted a detailed Supplemental Filing responding to certain contentions advanced in the Response. The Respondents, in turn, submitted an Objection to the ComplainantsвАЩ Supplemental Filing, arguing that the same information and arguments were available to the Complainants when they filed the Complaint, as well as a point-by-point Reply to the Supplemental Filing.
The Policy is designed to provide an expeditious and economical administrative remedy in appropriate domain name disputes. There is no provision for discovery or hearings as there is in many judicial proceedings and in formal arbitration. Consequently, the time periods allowed for pleading and decision are short, and there are strict page limits for the pleadings. Neither the Rules nor the Supplemental Rules make provision for supplemental filings, except at the request of the Panel (see Rules, paragraph 12). Paragraph 10 of the Rules enjoins the Panel to conduct the proceeding вАЬwith due expeditionвАЭ. Therefore, UDRP panels are typically reluctant to countenance delay through additional rounds of pleading and normally accept supplemental filings only to consider material new evidence or provide a fair opportunity to respond to new arguments.
To the extent that the supplemental filings in this instance furnish new information, the Panel finds that it is not material to the decision. And to the extent that the parties offer further argumentation, it is untimely and unnecessary. The Panel is capable of parsing the UDRP reseller precedents, for example, without further briefing by the parties. Therefore, the partiesвАЩ supplemental filings will not be taken into account as part of the record of this proceeding.
B. Multiple Parties
The Complaint was brought in the names of two Complainants, ITTC and its subsidiary ITTMEI. ITTMEI holds the trademarks on which the Complaint is grounded and, according to the Complaint, licenses them for use by ITTC. It appears that both companies use the ITT mark online and in other media.
Neither the Policy nor the Rules expressly contemplates multiple complainants, and some panels have rejected complaints filed in the name of more than one complainant on the ground that they have not sufficiently identified their respective ownership rights and requested remedies. See, e.g., Ken Done, Ken Done & Associates Pty Limited, and Ken Done Down Under Pty Limited v. Ted Gibson, eResolution Case No. AF-0638. In other cases, panels have accepted complaints by multiple complainants based on agency, licensing, or affiliate relationships. See, e.g., Staples, Inc., Staples The Office Superstore, Inc., and Staples Contract and Commercial, Inc. v. SkyLabs Corporation and DL Enterprises,
WIPO Case No. D2004-0220.
A UDRP proceeding must be predicated on a trademark or service mark in which a complainant has rights pursuant to paragraph 4(a)(i) of the Policy. The record establishes that the Complainant ITTMEI is the owner of ITT marks. The record does not include proof of the Complainant ITTCвАЩs asserted licensing interests in those marks. It appears that ITTC is the ultimate parent of ITTMEI, however, and that ITTC does in fact use the ITT marks. Moreover, allowing both entities to appear as Complainants is unlikely to result in prejudice to the Respondents.
The Complaint also names two Respondents, Nicoll and DPI. Two of the Domain Names were registered in the name of the Respondent Nicoll, and the remaining eleven were later registered in the name of the Respondent DPI. The Respondent Nicoll is listed as the administrative contact for all thirteen Domain Names, and the same address in Norfolk, Virginia is given for both registrants. A single Response was submitted for both Respondents in this proceeding, and DPIвАЩs contact details were given as вАЬcare ofвАЭ Nicoll. The Response refers to DPI as NicollвАЩs вАЬown businessвАЭ. The Response also refers to the website at вАЬwww.ittbarton.comвАЭ, to which all of the Domain Names currently resolve, as the вАЬRespondentsвАЩ websiteвАЭ.
Thus, while the record does not further detail the relationship between Nicoll and DPI, it is clear that DPI is a business entity in which Nicoll is involved and that the Domain Names were registered and used to further the interests of that business. The Respondents have not objected to the inclusion, in a single UDRP proceeding, of Domain Names registered respectively by Nicoll and DPI. Because the facts and interests regarding all thirteen Domain Names are essentially similar, the Panel finds that the UDRP issues can be addressed efficiently in a single proceeding.
Accordingly, the Panel accepts the Complaint as submitted.
C. Identical or Confusingly Similar
The Complainant ITTMEI unquestionably holds registered ITT marks. These are included in their entirety in each of the Domain Names.
The addition of what appears to be another mark (BARTON) and specific model numbers does not negate the confusing similarity of the Domain Names to the ITT marks. To the contrary, these additions may enhance the likelihood of confusion, because the Complainants formerly used each of those terms to brand or label the same products.
The Panel finds, therefore, that the first element of the Complaint is established.
D. Rights or Legitimate Interests
The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which the Respondent could demonstrate rights or legitimate interests in the Domain Names:
вАЬ(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.вАЭ
The Respondents argue that the Complainants acquiesced in their use of the ITT mark in the Domain Names, but there is no evidence in the record that the Complainants ever consciously or expressly did so. The record shows that some ITT employees had dealings with the Respondents, but it does not show that the Respondents ever sought or obtained permission to use the mark from anyone with authority to give such permission. The Complainants informed the Respondents of their trademark infringement concerns in 2006. The Panel does not consider that the determination to bring a UDRP complaint only in 2008 establishes acquiescence or laches.1
More pertinently, the Respondents also rely on paragraph 4(c)(i), arguing that they have used the Domain Names in connection with a bona fide offering of goods and services, i.e., the sale of new surplus ITT Barton products and related testing, repair, and warranty services. It appears that the Complainant ITT previously sold these items to the United States Government, and there is no evidence of a distribution or authorized reseller agreement between the Complainants and the Respondents (which might be expected to include trademark licensing provisions). Thus, the Respondents could best be characterized as unauthorized resellers.
Several UDRP decisions address the question of whether a reseller of branded goods is making a bona fide offering of goods and services that should be viewed as conferring a вАЬlegitimate interestвАЭ in a domain name incorporating the mark. The early decisions were reviewed in Volvo Trademark Holding AB v. Auto Shivuk,
WIPO Case No. D2005-0447 (respondent used the complainantвАЩs VOLVO mark in the domain name <volvo-auto-body-parts-online.com>). The panel in that proceeding noted that some UDRP decisions treat unauthorized use of a mark in a domain name as generally illegitimate. Such a case is Volvo Trademark Holding AB v. Peter Lambe,
WIPO Case No. D2001-1292, which held that вАЬ[i]t is a well-known principle of trademark law that the manufacturer of вАШunoriginalвАЩ spare parts is entitled to a certain limited use of the trademark of the manufacturer of the original products in connection with the bona fide offering of these goods, but this principle does not entitle the said manufacturer to incorporate the trademark in his business name or in any other type of business identifier such as a domain nameвАЭ.
Other panels have more readily recognized a right to use a mark in accurately describing a respondentвАЩs business, even in a domain name (this is sometimes termed вАЬnominative useвАЭ or вАЬnominative fair useвАЭ, terms found in trademark jurisprudence in the United States of America2). An example is Daimler Chrysler A.G. v. Donald Drummonds,
WIPO Case No. D2001-0160 (with dissent), where the operator of a site marketing Mercedes automotive parts and accessories was deemed to have a legitimate interest in using the MERCEDES mark descriptively in its domain name (and with appropriate disclaimers in the text of the website).
However, as reported in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, section 2.3, (http://wipo.int/amc/en/domains/search/overview/index.html#23), the prevailing view is the one articulated in 2001 in Oki Data Americas, Inc. v. ASD, Inc.,
WIPO Case No. D2001-0903, where the resellerвАЩs domain name <okidataparts.com> incorporated the complainant manufacturerвАЩs OKIDATA trademark. The Panel in Oki Data concluded that the use of a manufacturerвАЩs trademark as a domain name by a dealer or reseller (an authorized dealer in that case) should be regarded as a вАЬbona fide offering of goods or servicesвАЭ within the meaning of paragraph 4(c)(iii) of the Policy if the following conditions are satisfied:
- the respondent must actually be offering the goods or services at issue;
- the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods);
- the site itself must accurately disclose the respondentвАЩs relationship with the trademark owner; and
- the respondent must not try to вАЬcorner the marketвАЭ in all relevant domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
Here, the Respondents unquestionably offer devices that were originally sold and labeled as ITT or ITT Barton products. The record indicates that they have done so since 2000, before the Domain Names were registered. The RespondentsвАЩ website accurately discloses in its heading the name of the company offering those products (DPI) and includes a home-page disclaimer of affiliation with the Complainants. The website also includes a more detailed explanation, on a page linked from the home page, of how the Respondents have purchased and stocked вАЬnew surplusвАЭ ITT Barton devices for resale. The Respondents have not attempted to вАЬcorner the marketвАЭ in relevant domain names. The Complainants have scores of domain names incorporating the ITT mark, as well as the domain name <itt.com>. Moreover, the Complainants themselves have not evinced an interest in perpetuating the вАЬITT BartonвАЭ name or product lines.
The more problematic of the Oki Data criteria, as applied to this proceeding, is the requirement that the Domain Names be used to sell only the trademarked goods. The RespondentsвАЩ website includes a link to the RespondentsвАЩ former Detroit Switch website, on which the Respondent DPI resold вАЬnew surplusвАЭ Detroit Switches. The link is not prominent, however; it is listed on a вАЬLink DirectoryвАЭ page within the RespondentsвАЩ website. Moreover, the Complainants have not demonstrated that Detroit Switches are products that compete with the ITT Barton devices or, indeed, with any products now sold by the Complainants. Thus, the Complainants have not established the risk of вАЬbait and switchвАЭ tactics. The RespondentsвАЩ use of the Domain Names for the RespondentsвАЩ website is consistent with their stated purpose of reselling ITT Barton devices and related testing and warranty services. The single link to the RespondentsвАЩ former Detroit Switch website is, in the PanelвАЩs view, insufficient to change the character of the RespondentsвАЩ website as one concerned overwhelmingly with surplus ITT Barton products. This reflects a legitimate resellerвАЩs interest under the Oki Data test. See Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent,
WIPO Case No. D2004-0481 (вАЬClearly designated links to websites, under which other brands or products are offered, cannot be considered as the offering of other brands or products under the Domain Names, provided they take up only a minor part of the site and the overall impression of that site remains that of a site offering corresponding goods.вАЭ)
The Complainants argue that the Oki Data rationale should not apply to an unauthorized reseller. The Panel concludes, however, that the issues of legitimate reseller interests in accurately describing a lawful business, on the one hand, and of potential abuses of trademark, on the other, are similar whether or not there is a contractual relationship between the parties. Therefore, the Panel follows the precedents of Volvo Trademark Holding AB v. Auto Shivuk and Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent, finding that the Oki Data criteria are appropriate here to assess the rights or legitimate interests of the unauthorized reseller for purposes of this element of the Policy.
The Domain Name <itt-barton.com> and at least some of the Modelxx Domain Names resolved at times to parking websites with nothing but third-party advertising links. The Respondents assert that the Registrar parked the inactive Domain Names in this fashion without agreement or payment to the Respondents. This assertion is plausible. There is no indication on the archived pages themselves that they were parked under the RegistrarвАЩs advertising revenue-sharing program, and it is a common practice for many registrars automatically to park idle domain names for their own benefit until the registrant makes other use of them.3 This use does not appear to have been part of a deliberate вАЬbait and switchвАЭ scheme, although at least one advertising link was associated with a competitor of the Complainants. Nevertheless, the Respondents allowed some of the Domain Names to be used by the Registrar in this manner for at least a year at a time, in connection with the offering of goods other than those associated with the ITT mark. This is not a legitimate reseller use of those Domain Names under the Oki Data test.
Accordingly, to the extent that certain of the Domain Names have been used in association with the RespondentsвАЩ website selling surplus ITT Barton products, the Panel finds that the Respondents have demonstrated a legitimate interest in the Domain Names; otherwise, they have not. In any event, the Complaint fails on the grounds of lack of bad faith, as discussed below.
E. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that indicate bad faith, including the following:
вАЬ(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 complainantвАЩs 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.вАЭ
The Complainants implicitly rely on this paragraph. As discussed above, however, the Panel finds that the Respondents have from the beginning possessed a legitimate interest in making nominative use of the ITT mark consistent with the Oki Data requirements; consequently, this use does not reflect bad faith. Nor is it bad faith to rely on this legitimate interest in declining to accede to the ComplainantsвАЩ demands to transfer the Domain Names.
In other circumstances, the Panel might well have found bad faith, based on paragraph 4(b), in the former use of some of the Domain Names to display third-party advertising links on parking websites. However, on the current record it cannot be concluded that this was a deliberate act on the part of the Respondents or that they were motivated, in both the registration and use of those Domain Names, by an intention to attract consumers for commercial gain in the form of pay-per-click advertising revenues. Rather, their stated reasons for registering additional domain names referring to вАЬITT BartonвАЭ are credible and consistent with their established business of reselling surplus ITT Barton devices.
The Panel concludes that the bad-faith element of the Complaint has not been established.
For all the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Dated: November 7, 2008
1 The parties are both located in the United States, where courts recognize the doctrine of laches, which can result in the dismissal of a complaint for undue delay in asserting legal claims. However, the Panel concludes that the equitable defense of laches does not properly apply to this Policy proceeding. The remedies under the Policy are injunctive rather than compensatory in nature, and the focus is on avoiding confusion in the future as to the source of communications, goods, or services. See, e.g., The E.W. Scripps Company v. Sinologic Industries,
WIPO Case No. D2003-0447 (the Policy does not contemplate a defense of laches, which is inimical to the PolicyвАЩs purposes). See also 5 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition (4th ed. 2005) ¬І31:10, p. 31-35 and cases cited therein, to the effect that in common law, the defense of laches bars the recovery of damages incurred before the filing of a lawsuit; this does not apply to injunctive relief in a trademark action that seeks to avoid future confusion in the marketplace.
2 See Playboy Enterprises, Inc. v. Welles, 279 F.3d 796 (U.S. App. 9th Cir. 2002) and cases cited therein.
3 See, e.g., the Wikipedia article on вАЬDomain ParkingвАЭ at www.wikipedia.org and a 2007 DomainHELP article on monetizing domain names at www.domainhelp.com/how_to_park_or_monetize_domain_names (вАЬMost domain registrars вАШparkвАЩ their customersвАЩ idle and unused domains and monetize them, often keeping the revenues for themselves.вАЭ).