Esquire Innovations, Inc. v. Iscrub.com c/o Whois Identity Shield; and Vertical Axis, Inc, Domain Adminstrator
Case No. D2007-0856
1. The Parties
The Complainant is Esquire Innovations, Inc., Temecula, California, United States of America, represented by Welsh & Katz, Ltd, United States of America.
The Respondent is Iscrub.com,c/o Whois IDentity Shield, Vancouver, British Columbia, Canada; and Vertical Axis, Inc, Domain Adminstrator, Gyeonggi-do, Republic of Korea, represented by ESQwire.com Law Firm, United States of America.
2. The Domain Name and Registrar
The disputed domain name <iscrub.com> is registered with Nameview Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2007. On June 14, 2007, the Center transmitted by email to Nameview Inc. a request for registrar verification in connection with the domain name at issue. On June 14, 2007, Nameview Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification of change in registrant information by the Center, the Complainant filed an amendment to the Complaint on June 22, 2007. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental 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 June 26, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 16, 2007. The Response was filed with the Center July 16, 2007.
On July 21, 2007, the Complainant submitted a Supplemental Filing in reply to the Response with a request that it should be received and considered by the Panel.
On August 1, the Respondent submitted to the Center that, if the Panel elected to consider the Complainant’s Supplemental Filing, the Respondent should be given ample time to reply.
The Center appointed The Honourable Neil Anthony Brown QC, David H. Tatham and David E. Sorkin as panelists in this matter on August 16, 2007. 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.
On September 11, 2007, a majority of the Panel having elected to consider the Complainant’s Supplemental Filing for reasons set out below, the Panel issued Administrative Panel Procedural Order No.1, noting that it was prepared to consider the Supplemental Filing, granting the Respondent until September 18, 2007 to file a Reply to matters raised by the Complainant in its Supplemental Filing, directing that such Reply should be submitted to the Center by September 18, 2007 and extending the date for Decision to October 2, 2007.
In response to a request from the Respondent that those dates should be extended, the Panel on September 12, 2007 extended the date by which the Respondent’s Reply should be submitted to September 21, 2007 and the Decision date to October 5, 2007.
On September 21, 2007, the Respondent submitted a Supplemental Filing entitled “Reply to Complainant’s Additional Submission”.
4. Factual Background
The Complainant is a company incorporated in the United States of America and has been engaged in the process of document creation, formatting, re-purposing, comparing and the supply of metadata management software applications for the legal profession since 1999.
One of its products named Iscrub is designed to remove metadata from documents. Metadata is electronic text that has been removed from documents and other electronic records, but which has been left behind in the process of amending documents so that, unless removed by Iscrub or another process, it may still be detected.
The Complainant is the owner of Trademark Number 2,978,354 registered on July 26, 2005 with the United States Patent and Trademark Office for ISCRUB.
The Respondent registered the domain name <iscrub.com> on November 8, 2001.
5. Parties’ Contentions
A. Complainant
The Complainant alleges that the domain name <iscrub.com> should no longer be registered with the Respondent but that it should be transferred to the Complainant.
It contends that this should be done because, within the meaning of paragraph 4 of the Policy, the domain name is identical or confusingly similar to the Complainant’s registered trademark ISCRUB, that the Respondent has no rights or legitimate interests in the domain name and that it has been registered and subsequently used in bad faith. The Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the domain name to the Complainant.
In support of its case on the first of these three elements, the Complainant relies on the registered United States ISCRUB trademark to which reference has already been made (“the ISCRUB mark”) and says that the domain name is identical to the trademark because it incorporates the entirety of the trademark in the domain name and merely adds the generic top level domain suffix “.com”. In this regard the Complainant argues that the Policy does not require that trademark rights must have been acquired before the registration of the domain name.
The Complainant then contends, to establish the second element, that the Respondent has no rights or legitimate interests in the domain name because it has not been authorized to use the Complainant’s mark and it cannot bring itself within any of the provisions of paragraph 4(c) of the Policy or otherwise establish a right or legitimate interest in the domain name. Moreover, it is contended that the Respondent has linked the domain name to sites of the Complainant’s competitors and has not been making a bona fide offering of goods and services.
Finally, the Complainant contends that the domain name was registered and is being used in bad faith. It contends that this is so because the inference should be drawn from the known facts concerning the registration of the domain name that, first, the Respondent registered it primarily for the purpose of selling, renting or otherwise transferring it to the complainant or a competitor within the meaning of paragraph 4(b)(i) of the Policy or alternatively that by using the domain name the Respondent intended to create a likelihood of confusion between the products offered by the domain name and the products of the Complainant.
In support of these contentions the Complainant relies inter alia on the use by the Respondent of an Identity Shield on registration to conceal its identity and the fact that the Respondent is currently using the domain name to resolve to a “directory site” with a number of general interest links as well as links to competitors of the Complainant.
B. Respondent
The Respondent contends, first, that the Complainant does not have enforceable trademark rights under the Policy because its mark does not predate the disputed domain name and the alleged date of first use of the mark is four months after the domain name was registered.
The Respondent then contends that the domain name incorporates a common or generic word preceded by the letter “i” and that it is also a name used in connection with other products, both of which establish a right or legitimate interest.
Moreover, the Respondent contends, its right and legitimate interest is shown by the fact that it uses the domain name in connection with the bona fide provision of advertising services.
The Respondent then argues that the domain name was not registered or used in bad faith, first, because the domain name was registered well before the trademark, secondly, because the Respondent cannot be held responsible if the Complainant’s competitors place advertisements that respond to searches for the common term “metadata” and, thirdly, that no adverse inference should be drawn from the fact that the Respondent used a privacy service to protect its identity.
Finally, the Respondent argues that a finding of Reverse Domain Name Hijacking should be made against the Complainant. This is so, it contends, because the Complainant knew or should have known that it could not prove that the domain name was registered in bad faith, as its trademark was registered after the disputed domain name.
C. Supplemental Filing by the Complainant
A majority of the Panel has decided in the exercise of its discretion to have regard to a Supplementary Filing lodged by the Complainant and referred to above.
The reasons why it has so decided are as follows:
On July 27, 2007, the Complainant lodged a Supplemental Filing, quoting paragraphs 5(b)(iv) and (v) of the Rules as its authority for doing so, and stating, in a footnote: “Supplemental filings are typically accepted to consider new evidence or provide a fair opportunity to respond to new arguments and should not delay proceedings. Complainant provides new evidence and a response to new evidence and arguments presented by respondent. Further, no delay will be caused by this filing as it is filed concurrently with the Selection of Panelists within the allotted time period for such filing.”
This Supplemental Filing contained new evidence that the first commercial use of Complainant’s trademark ISCRUB predated the registration of the disputed domain name by the Respondent. The content and relevance of this evidence is discussed below, but as a preliminary issue the Panel must rule on whether or not to accept this Supplemental Filing, especially as a minority of the Panel is not prepared to admit it.
Rule 12 of the Rules unambiguously provides that it is only the Panel which may request further submissions: “In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties.” There is no provision in the Rules for a party to file an additional submission without leave of the Panel.
It was stated in Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270 (June 8, 2000) that “Although litigants and parties in arbitrations may have a right of reply under the rules of other forums, ICANN chose a different procedure for these proceedings that calls for only a Complaint and a Response. Among other things, this more truncated procedure allows for more rapid and cost effective resolution of domain name challenges. See CRS Technology Corp. v. CondeNet, Inc., FA093547 (NAF March 28, 2000). At the same time, ICANN provided the Panel with the flexibility to seek additional submissions if the Panel feels that it cannot rule on the record submitted”.
The principles which should be applied by the Panel in exercising its discretion under Rule 12, and which are based on providing an expeditious procedure for determining a certain type of dispute, have been considered in many cases under the Policy and Rules. See, for example, Harrods Ltd v. Brad Shaw,
WIPO Case No. D2004-0411 (July 29, 2004); The E.W. Scripps company v. Cynologic Industries,
WIPO Case No. D2003-0447 (July 1, 2003); Société des Hôtels Méridien v. ABC-Consulting,
WIPO Case No. D2004-0792 (November 23, 2004).
It was said, for example, in Deutsche Börse AG v. Ramon Campos Munoz,
WIPO Case No. D2005-0346, that: “As a rule, additional evidence or submissions should only be admitted in exceptional circumstances, such as when additional submissions are necessary to reply to the finding of newly discovered evidence not reasonably available to the submitting party at the time of its initial submission or to rebut arguments by the respondent that the complainant could not reasonably have anticipated. On the other hand, panels have repeatedly stated that further submissions are neither needed nor acceptable where the complainant has not contended that it has discovered evidence not reasonably available to it at the time of its complaint, nor does the response appear to have submitted arguments that the complainant could not reasonably have anticipated, and there being no other exceptional circumstances that would justify the submission of a further submission (The Toronto-Dominion Bank v. Boris Kerpacev,
WIPO Case No. D2000-1571 (June 17, 2001).
See also G.G. Properties Ltd v. AA Technologies, aka Gartner for Information Technology, Gartner Egypt and GGE.com,
WIPO Case No. D2005-0533 (May 29, 2007) in which it was said: “Previous panels have held that additional submissions are inappropriate, for the above mentioned reasons, except in limited circumstances, such as discovery of evidence or where new case decisions were not reasonably available at the time of the party’s initial submission (Tribeca Film Center, Inc. v. Lorenzo Brusasco-MacKenzie,
WIPO Case No. D2000-1772 (April 12, 2001) and Pacific Fence & Wire Co. v. Pacific Fence and Jim Paradise,
WIPO Case No. D2001-0237 (June 22, 2001)”.
See also Société des Bains de Mer et du Cercle des Etranger à Monaco v. Lucan Toh and Max Wright,
WIPO Case No. D2007-0249 (May 25, 2007) in which it was said: “Grounds justifying new submissions are above all the existence of new pertinent facts that did not arise until after the complaint was filed. For instance, if the respondent raises objections that could not have been anticipated when the complaint was filed, the panel can give the complainant a right to reply to the submission or may accept the complainant’s unsolicited additional submission (see Universal City Studios, Inc. v. G.A.B. Enterprises,
WIPO Case No. D2000-0416 (July 23, 2000); QNX Software Systems Ltd. v. Future Media Architects, Inc. and Thunayan K AL-Ghanim,
WIPO Case No. D2003-0921 (February 26, 2004); and Goldline International, Inc. v. Gold Line,
WIPO Case No. D2000-1151 (January 8, 2001).”
In this case, the Complainant’s Supplemental Filing was timely filed, as it was lodged only 7 days after the Response and, as the Complainant says, it has not delayed the proceedings as it was filed simultaneously with its nomination of Panelists. Therefore, on the strength of this, and in the light of the above Decisions, which give to a panel the flexibility to admit new evidence that was not previously available, a majority of the Panel in this case is prepared to take the Complainant’s Supplemental Filing into account.
Moreover, in the events that have happened, the Respondent has had and has availed itself of the opportunity to make a reply to the Supplemental Filing, so no injustice can be done to the Respondent by considering the additional evidence and submissions provided by the Complainant.
The reality is that the Complainant submitted material that was new and which raised issues about this case that are pivotal to its resolution and the Respondent has submitted its case in reply.
Indeed, the Panel cannot but be assisted by now having before it all of the material that each side wishes to submit.
The third member of the Panel, however, does not agree with the decision to admit the Complainant’s Supplementary Filing and his reasons are set out in the Dissent appearing below.
In its Supplemental Filing the Complainant first replies to the Declaration of a Manager of the Respondent to the effect that “(w) e did not have any knowledge of Respondent or its mark until Respondent took issue with the domain name registration”. The Respondent says that this cannot be so, for extracts from the Respondent’s website prior to that time, which are captured at “www.archive.org” and exhibited to the Supplemental Filing, carry the statement:
“The top METADATA resources on the net This domain is for sale.”
This statement shows, the Complainant contends, that the Respondent had knowledge of the Complainant’s metadata removal product and its ISCRUB trademark and that such knowledge is the only reason why the Respondent should include a reference to “METADATA” on its site.
Secondly, the Complainant states that although the first use in commerce of the ISCRUB mark is given in the records of the United States Patent and Trademark Office for the registration of the mark as March 2002, this was due to a clerical error by the Complainant’s former counsel and that the correct time for the first use in commerce was “at least as early as April 2001” thereby predating the registration of the domain name on November 8, 2001.
Thirdly, the Complainant maintains that now that the true identity of the Respondent has become apparent, it has been able to establish that the Respondent is a serial registrant of other parties’ trademarks as domain names. The Complainant then cites several UDRP decisions which it contends support this position.
Fourthly, the Complainant contends that the extracts from the Respondent’s website and referred to above, particularly the announcement “This domain is for sale”, show that, within the meaning of paragraph 4(b)(i) of the Policy, the Respondent registered the domain name primarily for the purpose of selling it.
Finally, the Complainant contends that recent changes to the material displayed on the website have no substantial relation to the Respondent’s claimed use of the domain name, which had been to provide links to “maintenance and dry cleaning services”. That being so, the Complainant says, diminishes the Respondent’s argument that its use of the domain name was bona fide and legitimate.
D. Respondent’s Reply to Complainant’s Supplemental Filing
The Respondent contends that even accepting the Complainant’s allegation that its alleged first use of the trademark was April 2001 rather than March 1, 2002, it did not file its trademark application until October 25, 2002. From this the Respondent argues that it did not register the domain name because it believed it to incorporate a trademark and it had no basis for having knowledge of the Complainant’s mark at the time.
The Respondent then takes issue with the Complainant’s allegation that there appears on its website the statement “the top METADATA resources on the net”. It maintains that this was “not a result of affirmative actions taken by Respondent” but was an “auto-generated “popular searches” link provided by a feed from Yahoo!”
The Respondent also maintains that it was not responsible for the similar appearance on the website of the words “METADATA, SCRUBTOP, AND MACOS X” which were also “auto-generated by Yahoo!”. From this the Respondent argues that “(i)t is well established that automated links created by third party software (here as a result of a feed from Yahoo.com) do not constitute bad faith on the part of the domain name owner”.
In any event, the Respondent contends, the words appearing on the website appeared four years after the registration of the domain name and thus cannot constitute evidence of bad faith at the time of the registration.
The Respondent also replies to the allegation of the Complainant that it has been party to UDRP decision where it has been found to have engaged in a pattern of bad faith registration of domain names. The Respondent contends that these decisions are irrelevant and that there is a larger number of UDRP decisions where the Respondent prevailed.
The Respondent next contends that the fact that the website carried the notice “This Domain For Sale” does not show that it was registered in bad faith, for it is “legitimate to offer domain names for sale where the Respondent did not register the domain name based on its trademark value. Here, Respondent registered the domain name because it contained the common word ‘scrub’, preceded by the common Internet prefix ‘i’”. Indeed, the Respondent says that offering the domain name for sale shows its legitimate interest.
The Respondent also argues that the more recent generic links appearing on the website do not negate the Respondent’s legitimate interest in the domain name, for once a legitimate interest has been established, “subsequent activity does not make the use illegitimate”.
Finally, the Respondent maintains its submission that the Complainant has engaged in Reverse Domain Hijacking, although it acknowledges that “the case for reverse domain name hijacking is not as crystal clear where a complainant has at least made some alleged trademark use of the mark prior to the domain registration date”.
6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The Panel therefore turns to discuss the various issues that arise for decision on the facts as they are known.
For the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:
A. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
B. The Respondent has no rights or legitimate interests in respect of the domain name; and
C. The domain name has been registered and is being used in bad faith.
It is to be noted that paragraph 4 of the Policy provides that the Complainant must prove that each of the three elements is present. The Panel will therefore deal with each of these requirements in turn.
A. Identical or Confusingly Similar
The Respondent has argued as a threshold issue that the Complainant does not have enforceable trademark rights under the Policy because its mark does not predate the disputed domain name and that as a consequence the Complaint should be summarily dismissed.
In this regard the Respondent has cited several decisions of UDRP panels in support of its proposition.
It is certainly true that opinions have been expressed to the effect that the registration of the relevant trademark must predate the registration of the disputed domain name. Indeed, one decision cited by the Respondent, Expert Computers Inc v. Name Delegation et al., No. 787937(NAF Oct 24, 2006), seems to admit of no exception to such a requirement. The decision in John Ode d/b/a/ODE and ODE-Optimum Digital Enterprises v. Intership Limited,
WIPO Case No. D2001-0074, however, raised what is generally regarded today as the essential issue on this matter, namely whether the requirement for the trademark to predate the registration of the domain name comes about because of paragraph 4(a)(iii) of the Policy, requiring proof of bad faith registration, rather than because of paragraph 4(a)(i) of the Policy, requiring proof of trademark rights.
“1.4 Does the complainant have UDRP-relevant trademark rights in a mark that was registered, or in which the complainant acquired unregistered rights, after the disputed domain name was registered?
Consensus view: Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity. The UDRP makes no specific reference to the date of which the owner of the trade or service mark acquired rights. However it can be difficult to prove that the domain name was registered in bad faith, as it is difficult to show that the domain name was registered with a future trademark in mind.
Madrid 2012, S.A. v. Scott Martin-MadridMan Websites
WIPO Case No. D2003-0598 among others, Transfer.”
As the Overview points out, paragraph 4 of the Policy does not require proof of any particular time at which the Complainant must have trademark or service mark rights. Indeed, contrary to the view expressed in Expert Computers Inc v. Name Delegation et al., the Policy requires only that the complainant “has” trademarks rights, i.e. “has” them at the time the decision is being made.
It is, however, equally clear and has long been recognized, that it is a different and much more difficult matter to establish that a respondent registered a domain name motivated by bad faith regarding a trademark that had not then been registered.
Accordingly, the Panel does not accept the Respondent’s threshold argument and will not summarily dismiss the Complaint.
The Panel finds that the domain name <iscrub.com> is identical to the asserted trademark ISCRUB, which as a whole has been incorporated into the domain name, which further consists of the gTLD suffix “.com”.
In that latter regard, it has been held many times that suffixes and minor spelling differences may not be used to negate a finding of identity or confusing similarity that is otherwise present on the evidence, as it is in this case.
Accordingly, the Complainant has made out the first of the three elements that it must establish.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii), the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the domain name.
But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.
Thus, if the Respondent proves any of these elements or indeed anything else that shows it has a right or interest in the domain name, the Complainant will have failed to discharge its onus and the Complaint will fail.
To establish its right and legitimate interest in the domain name the Respondent says, first, that the domain name is simply a generic or common word preceded by the letter “i” which “establishes the Respondent’s legitimate interest” and, secondly, that it is using this generic or common word in connection with the bona fide provision of advertising services, which is itself legitimate.
With respect to the Respondent’s first argument, it is undoubtedly true, as the WIPO Overview makes plain, that if the Respondent is using a truly generic word to describe its products and is not “intending to take advantage of complainant’s rights in that word”, this will give rise to a legitimate interest in the domain name.
The cases cited by the Respondent support this proposition and it was affirmed as recently as August 7, 2007 in Shoebuy.com Inc. v. USA-Host, David Feldman,WIPO Case No. D2007-0800. None of the cases cited by the Respondent, however, supports the application of the proposition to the present case, as the Respondent contends they do.
In the first case cited by the Respondent, Williams, Babbitt & Weisman, Inc., v. Ultimate Search No. 98813 (NAF Oct. 8, 2001), it is true that the three-person panel said, as the Respondent quotes from the decision, that “(n) either the current UDRP nor current ICANN registrar contracts preclude this type of domain name use”. But it is clear from the decision that by “this type of domain name use” the panel meant the use of a domain name where the complainant had neither a registered or common law trademark in the name and had no other plausible claim to the name, which was the case in those proceedings. In the present case, however, the Complainant does have a trademark and it is identical to the domain name, which puts the Complainant in an entirely different position.
The second case cited by the Respondent, Dial-A-Mattress Operating Corp. v. Ultimate Search,
WIPO Case No. D2001-0764 was a case where the Respondent had used the word ‘matress’ as its domain name, a word that the panel said was, citing America Online Inc. v. Media Dial Communications, WIPO Case No. D2001-0799, “common English”, albeit misspelt. Accordingly, the panel was able to say that: “… it seems the Complainant is attempting to prevent use of a variation of a common descriptive term.” In the present case, however, the word “iscrub” is not a common English word or a common descriptive term, but the sort of word referred to in the Shoebuy Case as an “inventive or coined word…”. The Complainant is attempting to prevent the use of this coined word in the domain name, because it claims that the word is the same as its trademark.
Likewise, in Etam, plc v.Alberta Hot Rods,
WIPO Case No. D2000-1654, the Respondent had simply chosen a ‘fairly short, non-fanciful name’, in that case the name of a woman and in GLB Serviços Interativos S.A. v. Ultimate Search Inc (aka Ult. Search Inc),
WIPO Case No. D2002-0189, the Respondent had chosen the name ‘paparazzo.com’ described by the panel as “… generic of a particular word which has well-known meaning in English, Italian and possibly other languages”.
Indeed, there are now many UDRP decisions to the same effect in addition to those cited by the Respondent, for when a truly generic word is chosen as a domain name, its use is legitimate unless some secondary meaning has become attached to it through usage or its trademark status.
That is not the situation in the present case, for the word at issue is clearly a fanciful word that has been coined and as such is not a word in common use. The present case is therefore not a case of using in a domain name a purely generic word over which the Complainant has no claim. It is equally not a case of a generic domain name being used to describe goods and services covered by that expression, for it has been used by the Respondent to sell a broad range of goods and services many of which have no connection with the word at all.
The Panel, therefore, does not accept the Respondent’s first argument that its domain name is protected as a generic or common word and that this “establishes the Respondent’s legitimate interest”.
The Respondent’s second argument is that its legitimate purpose is “bolstered by the fact that it uses the disputed domain name in connection with the bona fide provision of advertising services”.
It is clear that the domain name is being used for advertising services, for it resolves to a website that consists of a series of sponsored links that advertise goods and services. They are not only, as the Respondent claims, “advertising links for computer-related products and services ”. The links are in fact a wide range of links that are set out under the categories Dating, Cars, Entertainment, Education, Jobs, Finance, Internet, Electronics, Business, Travel and Legal. Each of those categories has a number of sub-categories and each of those sub-categories contains relevant sponsored links to various providers. There is also a search function that invites visitors to use it to search for offerings that have not yet been located. Thus, a search for “Adult” produces sponsored links of that genre. It is also a reasonable inference to draw that these links generate pay-per-click revenue for the Respondent.
It is clear, therefore, that the Respondent uses the domain name for sponsored advertising links and, as it is put in the Declaration of a Manager of the Respondent, dated July 16, 2007 and put in evidence, the first of two Declarations by a Manager of the Respondent submitted by the Respondent, “We have used” the domain name for posting such links.
It is equally clear that in an appropriate case the use of a domain name for such a purpose can be bona fide. The question, however, is whether on the facts of the present case, the use by the Respondent of the disputed domain name has been a bona fide one. More specifically, the question is whether the Respondent has satisfied the Panel on the evidence it has brought to the proceeding that it has used the domain name in connection with a bona fide offering of goods or services.
To answer this question requires a close examination of the evidence.
The Respondent argues that its use of the domain name has been bona fide because it did not have the Complainant in mind in using the domain name to host the sponsored links, but that it merely posted links “for computer-related products”. It is quite specific in this, as it submits: “The fact is that the Respondent did not have any knowledge of Complainant or its mark until Complainant took issue with the domain name registration.” (emphasis added).
The first Declaration of a Manager of the Respondent is the major piece of evidence of the Respondent, is declared to be true, under penalty of law for making false statement and it is to the same effect as the unsigned assertions in the Response. A Manager of the Respondent declares that “We did not have any knowledge of Complainant or its mark until Complainant took issue with the domain name registration”(emphasis added).
A Manager of the Respondent also declares in paragraph 5 of her first Declaration that:
“We have used the Disputed Domain to post links related to ‘maintenance’ and ‘cleaning supplies’ as well as generic links. The links are provided by pay-per-click service Hit.Farm.com which places Yahoo sponsored adds on pages it hosts for domain name owners. We have never placed links on the site that relate to Complainant, Complainant’s products or services, or Complainant’s competitors.”
That is the only evidence put by the Respondent to show a bona fide use of the domain name. If the Panel accepted this evidence it would go a long way to satisfying the Panel that the Respondent’s offering of goods and services had been bona fide, for it would show that the Respondent was not trying to trade–off the name of the Complainant’s trademarked product or make any other use of the Complainant’s name or product that was not bona fide.
However, the Panel does not accept the Respondent’s evidence and is not satisfied that it shows on the balance of probabilities that the Respondent’s offering of goods and services through the sponsored links was bona fide. That is so for the following reasons.
First, the basic problem about the Respondent’s argument and the supporting Declaration of a Manager of the Respondent is that they are substantially weakened by the evidence contained in the Complainant’s Supplemental Filing and that weakness has not been rectified by any material submitted by the Respondent in reply.
The Complainant has made a search via the Wayback Machine at “www.archive.org” of those previous pages of the Respondent’s website which are available for viewing. Three of those pages are for February 9, 10 and 12, 2005 and are in evidence in these proceedings as Exhibits F, G and H respectively to the Declaration of a Technical Support Technician in the office of the Complainant’s attorneys and who conducted the search. No earlier pages are apparently available for viewing by the Complainant or by the Panel.
Each of the three pages carries in a prominent position the words: “iscrub.com The top METADATA resources on the net This domain is for sale”.
Based on this material, the Complainant makes the submission that “There is no reason, other than knowledge of Complainant, its product and/or its trademark, why Respondent would have the term ‘metadata’ on their iscrub.com website”.
This evidence casts doubt on the declaration of a Manager of the Respondent, for she had declared that the Respondent had no knowledge of the Complainant’s mark “…until Complainant took issue with the domain name registration”, i.e. no knowledge at any time until then, a period that must by definition have commenced when the domain name was registered. That time clearly encompassed February 9, 10 and 12, 2005 when the website carried the endorsement referred to above. It is therefore clear that, contrary to its Manager’s evidence, the Respondent must have known of the Complainant’s mark at some time before the Complainant took issue with the domain name registration. That is so because the Respondent was at one time asserting on its own website that “iscrub” was the top Metadata resource available on the Internet. It is a reasonable inference that that statement means that “iscrub” is the best product for the removal of metadata and that the product is the one sold under that name, namely the Complainant’s product of that name. It is also a statement that the domain name reflecting the name of that product is for sale.
This evidence of the Complainant therefore casts grave doubt on whether it was true that the Respondent had no knowledge of the Complainant’s mark before the Complainant took issue with the domain name registration.
At the very least, the Panel does not accept the declaration as evidence that the Respondent had no knowledge of the trademark prior to that time.
Moreover, the probability from the evidence is that at least in 2005 the Respondent did have knowledge of the Complainant’s product, that it was called “iscrub” and that the Respondent had that name in mind when it made its offering of goods and services via the domain name.
That view is supported by the fact that the exhibits to the Declaration of a Technical Support Technician of the Complainant not only carry the announcement about “iscrub.com”, but they carry other information suggesting that the Respondent had the Complainant and its product very much in mind at this time.
That information consists of statements on the web pages referring under “Popular Searches” to “Metadata”, “Macos X”, “Software” and “Legal Technology” and the following statement under that list:
“We show you where to find the best METADATA, SCRUB TOP and MACOS X RESOURCES through our comprehensive search-friendly indexes. Simply click on what you need from the list above or conduct your search using the box below.” Such a search box then appears.
These references are not simply anodyne advertisements for “cleaning” or “cleaning supplies” as the Respondent contends; they are so akin to the essential nature of the Complainant’s product, its use as a form of software to “scrub” away metadata on documents and its role in legal technology, that the conclusion is more likely than not that the Respondent had the Complainant’s product exclusively in mind when it posted its information on the website. Moreover, it is virtually an open invitation to follow up links that will lead the user to the Complainant’s competitors.
Faced with this evidence from the Complainant that the Respondent did have the Complainant, its product and competitors in mind, at least in 2005, the Respondent had an opportunity to adduce further evidence to support its two propositions, first that it did not have any knowledge of the Complainant or its trademark until theComplainant took issue with the domain name registration and secondly that it had never placed links on the site that related to the Complainant, its products, services or competitors.
In response to that opportunity, the Respondent tendered a second Declaration by its Manager. That Declaration is singularly inadequate. It states merely that the presence of the word ‘METADATA’ on the website is due to the actions of Yahoo! and not the Respondent. More particularly, a Manager of the Respondent says that ‘METADATA’ was “the first auto-generated “popular searches “link provided by a feed from Yahoo!”
Yahoo! is also credited with responsibility for the presence of the “popular searches” links on the website, including “Metadata”, “Macos X”, “Software” and “Legal Technology” and the statement that “We show you where to find the best METADATA, SCRUB TOP and MACOS X RESOURCES through our comprehensive search-friendly indexes”.
The Panel does not accept that the Respondent can simply abrogate responsibility for anything on its website by shifting responsibility to Yahoo!. Nor, in the opinion of the Panel does the case cited by the Respondent, Mariah Media Inc v. First Place Internet Inc,
WIPO Case No. D2006-1275, support such a universal proposition. That case held that the Panel would not draw an inference of bad faith from the fact that limited advertising links, amongst hundreds, had picked up a reference to the Complainant’s product when the domain name was a generic, common or dictionary word. As the panel in that case said:
“The Panel agrees with the conclusion reached in Admiral Insurance Services Limited v. Mr. Adam Dicker,
WIPO Case No. D2005-0241: ‘the use of a generic domain name to provide information about the genus satisfies the requirements of paragraph 4(c)(i) of the Policy.’” (In Admiral Insurance Services, the domain name <elephant.com> was used as a genus search term to display Google Adsense advertising links, much as the Domain Name was used in the present case.)
As an early Policy panel concluded in Shirmax Retail Ltd. v. CES Marketing, Inc., AF-0104 (e-Resolution):
“Where the domain name and trademark in question are generic — and in particular where they comprise no more than a single, short, common word — the rights/interests inquiry is more likely to favor the domain name owner.”
In the present case, the word “iscrub” is not a generic, common or dictionary word. It is an invented word which the Complainant and its predecessor have used in commerce as the name of its product since 2001. Moreover, the evidence of a Manager of the Respondent itself shows, as she put it, that it was “(o)ur software” that added the word “METADATA”.
Moreover, the evidence of the Complainant suggested that the Respondent was not correct in asserting it had no knowledge of the Complainant until the complaint was made. The Respondent could have given evidence showing when it first started to promote “metadata” on its website and when it included popular links to “Metadata”, “Macos X”, “Software” and “Legal Technology”. That evidence can be only in the knowledge of the Respondent and the absence of evidence on this issue must weaken the credibility that the Panel gives to the Respondent’s case.
There is no other evidence advanced by the Respondent to show that its use of the domain name in connection with the provision of advertising services was bona fide.
These conclusions are strengthened in turn by the fact that the Complainant has also provided new evidence to the effect that due to a clerical error made by the Complainant’s previous counsel during the application for the ISCRUB trademark, the date of the first commercial use of the mark was given as March 2002, whereas in fact it was as early as April 2001, which was some months prior to the registration of the domain name on November 8, 2001.
That evidence is corroborated by Annexes C and D to the Supplementary Filing. Annex C is a press release by the Complainant’s predecessor in title, Atvantec, dated April 23, 2001 announcing in effect that iScrub Metadata Cleansing Solution would be launched at Legal Works 2001 Conference and Exhibition and describing in substance what the product did. The Complainant’s attorney in a signed statement has verified his submission to the effect that the press release was “distributed to hundreds of recipients including trade publications” and the Panel accepts that evidence.
Annex D consists of three invoices from Atvantec to three firms for the sale to them of one “Firm Wide License” apparently for “iScrub Document Metadata Cleansing Software”, one “iScrub Firm License” and one “iScrub Software Licenses” dated April 3, 2001, June 7, 2001 and April 6, 2001 respectively, all of which dates are prior to the date on which the domain name was registered.
This evidence is not overwhelming, but it shows that the product “iScrub” was in the market and being sold under that name some months prior to the date of the registration of the domain name.
Taking all of the evidence together, the Panel is left with the position that:
(a) the Respondent claims that it had no knowledge of the Complainant or the ISCRUB mark until the Complaint was made;
(b) the Respondent also claims that it has “never” placed links on its website site that relate to Complainant, Complainant’s products or services, or Complainant’s competitors;
(c) the Complainant’s evidence suggests that the Respondent did have knowledge of the ISCRUB mark and its use with metadata and associated computer functions at least on February 9, 10 and 12, 2005 and that the Respondent did have links on its website relating to the Complainant’s products and its competitors;
(d) the Complainant’s evidence also shows that on February 9,10 and 12, 2005, the Respondent was offering the domain name for sale, invoking the notion that it could be used to “find the best METADATA, SCRUB TOP and MACOS X resources…”; and
(e) the Respondent’s only reply is to say in effect that the contents of its website was determined by Yahoo! but otherwise to remain silent on when it first used its website to carry the links just referred to and what if any links it carried from the time the website was first established.
In other words, the evidence shows that on February 9, 10 and 12, 2005, the only dates on which there is evidence on this issue, the Respondent was not using the domain name in connection with a bona fide offering of goods and services, for at that time it was invoking the name and product of the Complainant and using them to promote the products of other suppliers and the sale of a domain name that was identical to the Complainant’s mark. It was open to the Respondent, by adducing evidence of which only the Respondent has knowledge, that it was using the domain name for such a bona fide offering at some time prior to February 9, 10 and 12, 2005, but this it has declined to do.
Accordingly, having regard to the totality of the evidence the Panel does not accept the Respondent’s case that, within the meaning of paragraph 4(c)(i) of the Policy, it has at anytime used the domain name in connection with a bona fide offering of goods or services.
Finally, the Respondent has not adduced any evidence or argued to the effect that it has been commonly known by the domain name, that it has been making a legitimate noncommercial or fair use of the domain name or that there is any other basis on which it can claim a right or legitimate interest in the domain name.
Accordingly, the Complainant has established that the Respondent does not have a right or legitimate interest in respect of the domain name and has thus made out the second of the three elements that it must establish.
C. Registered and Used in Bad Faith
The Complainant must prove on the balance of probabilities both that the domain name was registered in bad faith and that it is being used in bad faith: Telstra Corporation Limitedv. Nuclear Marshmallows,
WIPO Case No. D2000-0003.
Further guidance on how to implement this requirement is to be found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which shall be evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website 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 the respondent’s website or location or of a product or service on the site or location.
The Complainant relies on paragraph 4(b)(i) and (iv) of the Policy.
Paragraph 4(b)(i)
The Panel finds that within the meaning of paragraph 4(b)(i) of the Policy, the Respondent registered the domain name primarily for the purpose of selling it to the Complainant for the return specified in that sub-paragraph.
By way of introduction to this issue, the Complainant has argued that in a series of proceedings, the Respondent has emerged as a company that has registered other parties’ domain names in bad faith and that it has been criticized for its conduct in that regard by Panels.
On the other hand, as the Respondent contends in its Reply to the Complainant’s Supplemental Filing, the Respondent has been a party to other similar proceedings where it has been successful.
It is also true, as the Respondent argues, that each case must be decided on its merits having regard to its unique evidence and submissions and that is the approach that the Panel takes in this case.
Applying that test, the most cogent evidence in support of the Panel’s finding is that on the three pages of the website referred to in the Declaration of a Technical Support Technician of the Complainant and which are available for viewing, the Respondent announced to the world that the domain name was for sale. As has already been said in this decision, the Panel does not accept as persuasive the evidence and argument of the Respondent that it was not aware of the Complainant or its trademark until the Complainant took issue with the registration of the domain name. The evidence adduced by the Complainant leads to the conclusion that at least on February 9, 10, and 12, 2005, the Respondent was aware of the ISCRUB mark, the product to which that name related and its basic function.
The Panel is then in the position of having found that the Respondent must have been aware of the Complainant and its trademark at sometime prior to the dates of those web pages, but is unable to say when the Respondent would have first become aware of those facts and consequently when it would have first advertised the domain name for sale. The Respondent, however, was and must be taken still to be in a position where it and only it could have provided material on the contents of it website from the time the domain name was registered and prior to February 9, 10 and 12, 2005 from which the Panel would have been able to reach conclusions on the Respondent’s intentions during this earlier time and in particular at the time of the registration of the domain name. However, the Respondent has not made any such material available to the Panel, despite the fact that it was clearly made an issue when the Complainant tendered its new evidence in its Supplemental Filing.
The Panel therefore has before it only the evidence that the name of the product was in the public domain from April 2001, that it was actively promoted to its potential market under that name from that time, that it was actually sold into the market from April 2001, that the domain name was registered seven months later on November 8, 2001 and that the Respondent subsequently advertised it for sale. The Panel is not in a position to say when the domain name was first offered for sale, as evidence of this fact is solely within the knowledge of the Respondent and that evidence has not been provided to the Panel.
The Panel also notes and takes into account on this issue the fact that although the two Declarations of a Manager of the Respondent, the Response and the Reply to the Complainant’s Supplemental Filing all deny seriatim several allegations, none of those statements denies the specific allegation in the Complaint that the Respondent registered the domain name with the intention of selling it.
Finally, the Panel notes and takes into account on this issue that the Respondent hid its identity behind an Identity Shield and that that was part of its modus operandi.
Taking all of these matters into account, the Panel concludes on the balance of probabilities that the Respondent registered the domain name for the purpose of selling it to the Complainant or a competitor within the meaning of paragraph 4(b)(i) of the Policy.
Paragraph 4(b)(ii)
As the Panel has made a finding relating to bad faith in the registration of the domain name, it is not necessary to say whether there are other grounds on which it can also be said that the domain name was registered in bad faith.
The Panel will, however, deal with another such ground because of a matter that the Respondent has activated at several points in its submission and because the Panel believes that all of the Respondent’s submissions should be considered.
That point here is, as the Respondent puts it, that “it is well established that a Complainant cannot meet its burden of proving bad faith registration of a domain name that is registered prior to the date of an application or use of a trademark”.
That is generally true because, usually, it cannot be imputed to a party that it was actuated by bad motives toward the holder of a trademark before the trademark was registered or used.
Had it not been for the additional evidence of the Complainant showing the actual use made of the domain name by the Respondent and the Respondent’s limited evidence in reply, the result in this case may have been different. As the evidence stands, however, it is apparent that the trademark was used for several months prior to the registration of the domain name and in circumstances showing that the Complainant’s predecessor was actively promoting it in the market and selling its Iscrub product under that name and that the Respondent subsequently advertised the domain name for sale.
Again, it must be said that it was open to the Respondent to show what use was being made of the domain name from the time of its registration, but it has not done so.
The totality of the evidence and reasonable inferences that can be drawn from it are therefore such that the Panel makes a finding that the Respondent registered the domain name within the meaning of paragraph 4(b) (ii) of the Policy “…to prevent the owner of the trademark from reflecting the mark in a corresponding domain name (and where) the respondent has engaged in a pattern of such conduct; …”.
Paragraph 4(b)(iv)
In addition, the Panel finds that the facts of the case bring it squarely within paragraph 4(b)(iv) of the Policy for the purposes of using the domain name in bad faith.
The discussion of the facts in Section B of this decision should make it plain that the Panel’s opinion is that within the meaning of paragraph 4(b)(iv) the Respondent used the domain name to attract Internet users to the Respondent’s website and the other sites to which it was linked by creating confusion between, on the one hand, the affiliation of the goods and services promoted there and, on the other hand, the goods and services offered under the ISCRUB mark, namely the Complainant’s product marketed and sold under the name Iscrub. Clearly this was done for commercial gain.
The Panel therefore finds that the Respondent used the domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Panel therefore finds that the Complainant has made out the third of the
three elements it must establish.
7. Decision
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 <iscrub.com> be transferred to the Complainant.
The Honourable Neil Anthony Brown QC Presiding Panelist
David H. Tatham Panelist
David E. Sorkin Panelist (Dissenting)
Dated: October 5, 2007
DISSENTING OPINION
I respectfully dissent. While I agree with many of the majority’s findings, I do not believe that Complainant has met its burden of proof on the matter of bad faith registration, even if Complainant’s supplemental filing is to be considered. More importantly, however, I believe that the Panel should not consider the parties’ supplemental filings, and based upon the remaining information before the Panel, I would find that the Complaint was brought in bad faith and constitutes an abuse of this administrative proceeding.
The Complaint alleges that Respondent registered the disputed domain name in bad faith in 2001, intending to benefit from a trademark that did not even exist until Complainant adopted and began using it in 2002. In my view, the filing of such an obviously frivolous claim represents an abuse of the UDRP process and warrants a finding that the complaint was brought in bad faith, in an attempt at reverse domain name hijacking. See, e.g., Datalyst LLC v. Estes, NAF Case No. FA954109 (May 9, 2007); Proto Software, Inc. v. Vertical Axis, Inc.,WIPO Case No. D2006-0905 (Oct. 10, 2006); Mess Enterprises v. Scott Enterprises,WIPO Case No. D2004-0964 (January 25, 2005); carsales.com.au Ltd. v. Flanders,WIPO Case No. D2004-0047 (April 8, 2004); NetDeposit, Inc. v. NetDeposit.com,WIPO Case No. D2003-0365 (July 22, 2003).
The fact that Complainant later discovered that it had been mistaken about the age of its claimed common-law trademark rights does not alter this conclusion. Had Complainant not elected to abuse the UDRP process by filing a complaint that it knew or should have known to be frivolous, it would later have been in a position to file a nonfrivolous complaint (and indeed, were we to dismiss the present matter, Complainant would remain free to initiate a second UDRP proceeding or pursue a trademark claim in court).
The question remains whether the Panel ought to permit Complainant to supplement its Complaint with evidence that its mark dates back to 2001 rather than 2002. I do not believe that the Panel should permit this. Paragraph 12 of the Rules provides that “the Panel may request, in its sole discretion, further statements or documents from either of the Parties”. This discretion ought not be exercised lightly. The UDRP is intended to be a streamlined process (unlike formal litigation), and a panel normally should decide a case based solely upon the parties’ initial submissions. As the majority acknowledges, additional submissions should be considered only in exceptional circumstances, such as where they reflect newly discovered evidence not reasonably available to the submitting party at the time of its original submission or rebut arguments by the opposing party that the submitting party could not reasonably have anticipated.
I fail to see how the circumstances in this case warrant an exception to this rule. Complainant’s bare reference to “a clerical error made by Complainant’s previous counsel during application for the ‘ISCRUB’ trademark” does not excuse a critical misstatement regarding the pivotal fact in this proceeding, particularly a misstatement that rendered the Complaint frivolous. Furthermore, regardless of whether the misstatement was a purely innocent “clerical error”, a purposeful attempt at sandbagging, or something in between, permitting Complainant to correct it with a supplemental filing now would be prejudicial to Respondent. Respondent elected to defend the present matter at considerable expense, likely devoting substantial time and effort on its own part and by outside counsel, in reliance upon the apparent weakness of Complainant’s position. In addition, Respondent paid a substantial fee to the Center in order to have this matter heard before a three-member panel instead of a sole panelist, an expense which it might not have chosen to incur had the Complaint not been so obviously lacking in merit. (In retrospect, Respondent might have been much better off had it elected not to respond to the Complaint at all, hoping instead that a sole panelist would be sufficiently alert to notice that Respondent’s domain name registration predated the very existence of Complainant’s trademark, rather than raising this point in its Response and thereby alerting Complainant to the fatal deficiency in its case.)
In my view, the Panel should decline to exercise its discretion to accept Complainant’s supplemental filing, and as a result need not consider Respondent’s supplemental filing either. For the reasons set forth above, I would find that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding, and would dismiss the Complaint for failure to prove that the disputed domain name was registered and is being used in bad faith, as required by paragraph 4(a)(iii) of the Policy.
David E. Sorkin Panelist (Dissenting)
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