1. Parties and Contested Domain Name
The Complainant is IPF Online Ltd., a company located at 33, D'Silva Road, Mylapore, Chennai, Tamil Nadu, India 600004. Complaint's
representative for these proceedings is Raj Vasant Pandit. The Respondent is Applying thought.com, located at 6C, Sukhi Apts., 17
Rhenjus Street, Longford Town, Bangalore, Karnataka, India 560025. Respondent's representative for these proceedings is Rakesh Sud.
The contested Domain Name is industrialproductsfinder.com and is registered with Tucows.com, Inc., an ICANN-accredited registrar.
2. Procedural History
The electronic version of the Complaint form was filed on-line through eResolution's Website on April 23, 2000. The hardcopy of the
Complaint Form was received on May 2, 2000. Payment was received on May 3, 2000.
Upon receiving all the required information, eResolution's clerk proceeded to:
- Confirm the identity of the Registrar for the contested Domain Name;
- Verify the Registrar's Whois Database and confirm all the required contact information for Respondent;
- Verify if the contested Domain Name resolved to an active Web page;
- Verify if the Complaint was administratively compliant.
The inquiry led the Clerk of eResolution to the following conclusions: the Registrar is Tucows.com, the Whois database contains all
the required contact information but the contested Domain Name resolves to an inactive Web page and the Complaint is administratively
compliant.
On May 12, 2000, the Clerk's office notified the Complainant, the Respondent, the concerned Registrar, and ICANN of the commencement
of the administrative proceeding.
With regard to confirming information about registration of the contested domain name, a first email was sent to the Registrar by
eResolution Clerk's Office to obtain a copy of the Registration Agreement on May 12, 2000. The delay was due to a difficulty obtaining
a response from the Registrar as to whom, within their organization, should be contacted. After numerous failed attempts and a phone
call to Tucows.com, the requested information was received June 6, 2000.
The Clerk then proceeded on May 16 to send a copy of the Complaint Form and the required Cover Sheet (but not the extensive annexes
which were not then available in digital form) to the respondent by email in accordance with paragraph 2(a)(ii) of the ICANN's Rules
for Uniform Domain Name Dispute Resolution Policy. The Respondent acknowledged awareness of the proceeding in email exchanges with
the Clerk's Office and in one email stated that it needed "a hard copy of the complaint including annexures." On May 18 the Clerk's
Office sent hard copies of the Cover Sheet, the Complaint and the Annexes by postal airmail. Thereafter the Clerk's Office completed
conversion of the hard copy annexes into digital form. As of the date of this decision no receipt of that mailing has been received
and under ICANN Rule 2(f)(ii) the effective date for communications sent by postal service is the date marked on the receipt.
On June 9, 2000, the Clerk's Office contacted me, and requested that I act as panelist in this case.
On June 12, 2000, I accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On June 12, 2000, the Clerk's Office forwarded a user name and a password to me allowing me to access the Complaint Form, the Response
Form, and the evidence through eResolution's Automated Docket Management System.
On June 12, 2000, the parties were notified that I had been appointed.
On June 16, 2000, copies of the annexes in digital form were sent to the Respondent at the email address listed in the WHOIS database.
Although that email was apparently undeliverable, under ICANN Rule 2(f)(iii) June 16 becomes the date on which the annexes were
communicated to the Respondent. In an additional effort to obtain actual service, a further email delivery of the Complaint, Cover
Sheet and annexes was made to an email address that the Respondent had used in the prior email exchanges.
Finally, in an effort to assure a fully-informed adversarial process, hard copies of the Cover Sheet, Complaint and all annexes were
sent by United Parcel Service to the Respondent on June 16. The UPS website reported that the package was delivered and signed for
on June 21, 2000. The record established that the Respondent received the Complaint, Cover Sheet and all annexes.
The Respondent submitted a response on July 5, 2000. Although it is essentially a rhetorical polemic that is not particularly usefull
and does not respond to the issues in a helpful manner, it has nonetheless been fully considered and given what little weight it
deserves.
3. Factual Background
According to the allegations of the Complaint, which have essentially been verified by the Respondent, the Complainant is affiliated
with a monthly subscription publication, Industrial Products Finder that has been widely circulated in India continuously since October
1972. It has a small circulation outside India and carries editorial material from "all over the world." The Complainant maintains
a website, http://www.industrialproductsfind.com which has been operated continuously under that name since sometime after the domain
name was registered with Network Solutions, Inc (or its predecessor) ("NSI") on 29 September 1998.
Because of the 26-character limitation for domain names that was in effect prior to this year, the domain name for the website was
registered as industrialproductfind.com rather than industrialproductsfinder.com. On February 23, 2000, Complainant was advised
by NSI that beginning February 26, 2000, domain names in excess of 26 characters would be available. Complainant promptly applied
for the domain name industrialproductsfinder.com. That application process led to the discovery that the contested domain name had
been registered by the Respondent with TUCOWS on February 23, 2000.
Although the Respondent has registered the domain name industrialproductsfinder.com, the URL http://www.industrialproductsfinder.com
does not resolve to an active website. A search of the WHOIS database reveals that the Complaint has registered the domain names
industrialproductsfinder.org and industrialproductsfinder.net with NIS on February 27, 2000.
4. Parties' Contentions
The Complainant contends that it has a protectible trademark in the phrase "industrial products finder," that the Respondent is using
the domain name industrialproductsfinder.com in a confusingly similar manner, that the Respondent has no legitimate right to use
the contested domain name, and that the Respondent registered and is using the domain name in bad faith.
As noted above, the Respondent has filed a polemic narrative in which it contends that this proceeding violates "natural human rights"
because of some initial clerical confusion over the accurate domain name. The Respondent further essentially defends the right of
domain name pirates to ply their trade and "compete" with established businesses by being the first to register a particular domain
name. The response contains other utterly irrelevant observations. For purposes of this decision, there is no dispute over any
relevant fact.
5. Discussion and Findings
The applicable provisions of the ICANN Uniform Domain Name Disputes Resolution Policy ("UDRP") require a Complaintant to allege and
prove four separate elements:
i) the contested 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 disputed domain name has been registered and is being used in bad faith.
The ICANN policy is founded on a requirement that the Complainant have a legally protectable "trademark or servicemark" and absent
proof of such a protectable intellectual property interest, the Complainant cannot secure relief under the UDRP. The requisite protection
may be established either by proof of a registered mark or by proving rights to a common law protection.
Does the Complainant have a legally protectable mark?
The Complainant claims it has a protectable trademark on the basis of registrations with the Government of India "since 1972." However,
the supporting documents presented by the Complainant are not "trademark" registration documents under India's Trade & Merchandise
Marks Act 1958, Trade & Merchandise Marks Rules 1959, or any other India law or regulation respecting trademarks. (India does not
recognize "service marks.") The supporting documents consist entirely of documents relating to registration of the periodical with
the Office of the Registrar of Newspapers for India, the Indian Posts and Telegraphs Department and the Indian Newspaper Society.
These documents, each of which is fully credited as valid and effective within its appropriate legal sphere, do not in any way establish
the existence of a registered trademark as distinguished from periodical mailing privileges. Given the existence of Indian laws
and regulations for the registration of trademarks, the obligation of the Complainant to establish its case by evidence and the absence
of any evidence of a registered mark, I conclude that the Complainant has not established that it has a legally protectable registered
trademark.
However, the Complainant has established that it has consistently used the phrase "industrial products finder" as the name of a established,
widely circulated periodical published and distributed throughout India since 1972. That evidence is sufficient to establish, prima
facie, a common law trademark in the phrase "industrial products finder" since India does recognize the existence of common law trademark
rights. While those rights, in a common law judicial context, might not protect Complainant against use of the phrase merely as
a domain name in a "virtual" context that is not necessarily similar to a hard copy periodical, the UDRP principles apply once trademark
or servicemark rights have been established and under those principles the Complainant is not required to show that the Respondent's
use of the domain name would be held to be unlawful in a common law cause of action.
Is the contested domain name identical or confusingly similar to the tradename?
The contested domain name is identical, at least for purposes of the UDRP, to the common law trademark. Differences in capitalization,
formatting or spacing are irrelevant in the case of domain name identity. Given the fact that many, if not most, individuals who
browse the Web today will use the established tradename of a concern in their first effort to reach that concern's webpage, this
domain name is identical to the trademark, notwithstanding the Complainant's established prior use of a slightly different domain
name for its current website.
Does the Respondent have any rights or legitimate interests in respect of the domain name?
The sole allegations of "illegitimacy" in the record are Complainant's statements that "the name is registered to us by the Government
of India and in use by us as a monthly magazine since 1972" and that "none other than us has any rights to the name in India." Those
allegations present a difficult issue for decision. The allegation of registration and continuous use by the Complainant, while
it is sufficient to establish Complainant's rights, is totally insufficient to establish the absence of any rights in the Respondent.
The otherwise unsupported allegation that "none other" have rights in the name is exceedingly thin. It is admittedly difficult
to prove a negative, as envisioned by the UDRP, but a Complainant can at a minimum allege that the Respondent is not a subsidiary
or affiliate and has not been licensed to use the trademark. When the Complaint makes no factual allegations and instead states
only the ultimate legal conclusion that the respondent has no rights, it is difficult to infer that the conclusion is correct.
The Respondent's submission on this issue does not provide any relevant information.
Because this Complaint can be resolved without having to decide this issue. I decline to decide whether a bare bones statement that
"none other" have rights is sufficient.
Was the disputed domain name registered AND is it being used in bad faith?
The Complaint's allegation of bad faith is sparse indeed: "any use by another party of our name is party [sic] in bad faith" and
the registration of the domain name by respondent on February 23, 2000 is a "clear act of bad faith." These conclusory allegations
are simply insufficient to establish the bad faith that a complainant must show under the UDRP. Paragraph 4(b) of the UDRP sets
out several illustrative examples of bad faith. While that list is not exhaustive, it includes as one example the following:
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 [respondent's] documented out-of-pocket costs directly
related to the domain name (emphasis added)
Because of the unambiguous language in the highlighted clause, that example establishes that if a respondent has registered or acquired
a domain name for purposes of transferring it to a known owner of a trademark at a cost not in excess of the respondent's documented
out-of-pocket costs directly related to the domain name, such an acquisition or use is not in bad faith for purposes of the UDRP.
Whatever might be the case under other legal regimes, such as the United States Anticybersquatting Consumer Protection Act, 15 U.S.
Code § 1125(d), registration for purposes of selling the name to the owner of a trademark is not an unfair registration or use under
the UDRP, if a transfer of the name for no more than documented out-of-pocket costs is available.
The Complaint states that the Respondent has a website at http://www.applyingthought.com. Treating that reference as an effective
incorporation of the contents of the website into the Complaint itself, I visited the website and found that the Respondent offers
website hosting services, among other services. It is reasonable to infer that one possible purpose of the Respondent's registration
was to contact the Complainant and offer to host the Complainant's website, while also offering to transfer the domain name for out-of-pocket
costs even if the website itself were not transferred from the current host. (Of course, if the Respondent attempted to condition
transfer of the domain name on transferring the hosting of Complainant's existing website, that would plainly be a demand for consideration
in excess of out-of-pocket costs and thus grounds for a finding of bad faith). However, based on reasonable inferences from the
Respondent's filing, it appears equally likely that the Respondent registered the domain name in anticipation of extracting an illegitimate
payment in excess of out-of-pocket costs from the Complainant or tying transfer of the name to the Complainant to a transfer of hosting
services for the Complainant's established website. But there is no evidence in this record that any such improper demand for payment
has been made. Indeed there is no indication that the Complainant contacted the Respondent to seek a transfer of the name before
filing the Complaint. Were the Complainant to offer to pay the Respondent its out-of-pocket costs, and the Respondent then refuse
to voluntarily transfer the name, the Complainant would have a new basis for filing a second UDRP complaint on which the panel might
well conclude that the disputed domain name had been registered and was now being used in bad faith. But on the present record and
in the absence of any allegation or evidence that the Respondent has established a website using the domain name or communicated
any intention to sell, rent or transfer the name for an improper consideration, the record fails to sustain a reasonable inference
that the Respondent has acquired and is using the domain name in bad faith. (In this connection, the fact that a nslookup check
of the domain industrialproductsfinder.com produces a response is sufficient to establish the "use" element of the UDRP. It is not
necessary that the domain name is being used as part of a website address.)
6. Conclusions
The Complainant has established, for purposes of the UDRP, a common law trademark in the phrase "industrial products finder" and
the domain name industrialproductsfinder.com is identical to that trademark. It is unnecessary to decide whether the Respondent
has any legitimate rights to use the trademark because the Complainant has failed to establish, on the present record, that the Respondent's
use of the trademark in its domain name constitutes an unfair use within the meaning of the UDRP.
For the foregoing reasons the relief sought by the Complainant, transfer of the domain name to the Complainant, should not be granted.
Dated: July 7, 2000
Washington, DC USA
7. Signature
(s) Kenneth C. Bass, III
Presiding Panelist
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