DECISION

Question Mark Computing Ltd. v. Russell Travis a/k/a Domainnamelab

Claim Number: FA0208000123919

PARTIES

Complainant is Question Mark Computing Ltd., London, UNITED KINGDOM (“Complainant”).  Respondent is Russell Travis a/k/a Domainnamelab, Bakersfield, CA, USA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <questionmark.us>, registered with Enom, Inc.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as sole Panelist in this proceeding.

G. Gervaise Davis III, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 28, 2002; the Forum received a hard copy of the Complaint on September 4, 2002.

On September 3, 2002, Enom, Inc. confirmed by e-mail to the Forum that the domain name <questionmark.us> is registered with Enom, Inc. and that the Respondent is the current registrant of the name.  Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with usTLD Dispute Resolution Policy (“usTLD Policy”), approved by the U.S. Department of Commerce (“DOC”) on February 21, 2002, the Rules for the usTLD Dispute Resolution Policy (“usTLD Rules”) as adopted by the DOC, and the National Arbitration Forum’s Supplemental Rules (“Supplemental Rules”). These usTLD Policies can be found in .PDF format on the Internet at http://neustar.us/policies/docs/usdrp.pdf.

On September 11, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 1, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@questionmark.us by e-mail.

A timely Response was received and determined to be complete on September 26, 2002.

It was subsequently discovered that due to a minor clerical error, the Notification of the Complaint actually sent to Respondent erroneously referred to the UDRP rules, even though this Complaint was actually filed under the usTLD Policy that is the procedure applicable to the .us TLD.  The usTLD Policy and the usTLD procedural Rules are, for all practical purposes identical to the UDRP, but in order not to prejudice the Respondent or the Complainant, a second Notification was given with the proper references, which Notification gave the Respondent additional time to respond.  Subsequently, on October 22, 2002, the Respondent replied that he was satisfied with the Notifications received and elected not to file any further formal Response; in his e-mail he waived any defects in the Notification and appointment of the Panelist selected earlier.  All of Respondent’s e-mails to the Forum were considered by the Panel in reaching this decision.

On October 15, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed G. Gervaise Davis III, Esq., as the sole Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant makes the following claims, which the Panel sets forth here largely verbatim since they are concise and to the point, unlike many other Complaints:

[a.]            Question Mark refers to the legal name of Complainant’s companies.  Question Mark Corporation & Question Mark Computing Limited.  Questionmark is used when referring to one of the companies, the group of companies or its products.  Our principal domain name is registered as <questionmark.com>.  Complainant also registered <questionmark.co.uk>, <questionmark.info>, and <questionmark.biz>.  

[b.]            Respondent has no rights or legitimate interests in respect of the domain name(s) because:

           

(i.) The domain name is identical or confusingly similar to both our company names and trademark.  The mark QUESTION MARK has been registered by Question Mark Computing Limited since 16th February 1989 in U.S.A. in class 009. 

(ii.) Respondent’s business name bears no connection or relevance to the name questionmark, nor are they offering any goods or services branded under that name.

(iii.)            The Respondent’s organization is called domainnamelab and its domain name is called <domainnamelab.com>, and to Complainant’s knowledge the Respondent as an individual, business, or other organization has never been commonly known by the domain name <questionmark.us>. It can be construed that the domain name <questionmark.us> has been registered or used in bad faith by the Respondent because their organization is in the business of buying domain names to sell later.

[c.]            The Respondent’s domain name has been registered or used in bad faith because:

(i.) The Respondent is in the business of buying domain names to sell.  It appears that they have bought the domain name <questionmark.us> for this purpose.  This is in direct conflict with our trademark QUESTION MARK.

           

(ii.) The fact that the Respondent has registered the domain name <questionmark.us> has prevented Question Mark Computing Limited as the legal owner of the trademark QUESTION MARK from registering the mark in the corresponding domain name of <questionmark.us>.

(iii.) Even though it may not have been the intention of the Respondent to have registered the domain name primarily for the purpose of disrupting the business of a competitor; such a situation could occur.

(iv.) Complainant cannot say for sure, but there is nothing to stop the Respondent using the domain name <questionmark.us> to intentionally attempt to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location.  If this situation were to occur there would be massive damage to the integrity of Complainant’s business, and consequently the business would suffer badly.

B. Respondent

Respondent chose not to file a formal Response, but in letters to the Resolution provider stated, among other things, that:

My "specialty" (as confirmed by the listing in DomainNameLab.com) is the creation of non-generic domain names, mostly because there's where the fun is, but also because generic names are generally not trademarkable, therefore, not defensible.  My understanding is that, for example, one cannot tie up the word "trademark" so tight that no one else has access to it.  Furthermore, I have not listed QuestionMark.us for sale at DomainNameLab, and have no intention of doing so.  . . . .  On the other hand, I am most impressed with the procedures that ICANN has come up with to protect those with legitimate claims from those who would harass, or otherwise defraud the holder of a similar internet address.

The essence of his defense is that he feels he is legally entitled to register and use for his own purposes any domain name that is generic or descriptive and that this name is one that appealed to him for such possible personal use in the future.  The Panel notes that although his website www.domainnamelab.com does list some 700 domain names for sale, the domain name at issue is not listed as available and when attempting to reach it on the Internet, no response occurs, so it is apparently not in use at this time 

FINDINGS

(1) the domain name <questionmark.us> is identical and potentially confusingly similar to Complainant’s registered trademark;

(2) the evidence on whether Respondent has a right or legitimate interest in the domain name at issue is inconclusive; and

(3) Complainant has failed to demonstrate evidence that the domain was registered and used in bad faith, although it might be able to do so in the future, depending on later use.

DISCUSSION

Paragraph 15(a) of the Rules for usTLD (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the usTLD Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered or is being used in bad faith.

Identical and/or Confusingly Similar

There is no question that the domain name <questionmark.us> is identical to the registered trademark of Complainant, other than the extension “.us” which is not relevant to the issues here as numerous prior UDRP and other domain name system policy cases have held.  Respondent does not contest this conclusion, merely contending that it is generic and the name of a punctuation mark, which it is, as well as Complainant’s registered trademark.

Rights or Legitimate Interests

In light of the conclusions of the Panel under the next section, any conclusion on this point is not of particular importance; however, for completeness, the Panel concludes that at this point in time Respondent has not shown any particular right or legitimate interest in this domain name in the normal domain name dispute sense, nor has Complainant shown that Respondent could not establish such rights.

A peculiar element of this case turns on the fact that, in principle, the word “questionmark” is merely the name of a form of punctuation in the English and several other languages and as such might be said to be generic or descriptive.  If so, it is largely unprotectable unless used for a similar product or service that would confuse the public.  On the other hand, a search of the US PTO database and a search on several popular Internet search engines would indicate that Complainant’s use of this term as a trademark is nearly unique and that most of the hits turned up in the Internet search relate solely to products or services of Complainant to the level that the mark is almost one that a trademark court would consider a famous or unique mark for goods or services.

At this point, the Panel simply concludes that Respondent could, perhaps, demonstrate a right or legitimate interest in the domain name, but has not at this point done so. Similarly, however, Complainant has not convinced the Panel that Respondent could not and does not have such a right.  Certainly, there are uses of the word that Complainant’s trademark registration could not prohibit, such as the personal use that Respondent suggests it might have for him.  Since there is no use of it at this time, however, the Panel feels that evidence on this issue is inconclusive and will leave it at that.

Registration or Use in Bad Faith

Based upon the sparse evidence and mere supposition relied upon and submitted by Complainant, the Panel cannot conscientiously conclude that the domain name <questionmark.us> was registered in bad faith by Respondent.  The supposition that the name was registered for sale is not sufficient to support this conclusion and, in fact, Respondent’s informal response simply says it was registered with several possible uses in mind and because he collects generic domain names.  This is not bad faith.

Nor can it be said that Respondent is using it in bad faith, in that it is not being offered for sale to anyone, and in fact is not in use. Merely warehousing domain names, or collecting them, as Respondent claims he does, is not bad faith use, unless there is a showing of doing so to prevent the trademark owner from using the name or a pattern of collecting trademarked domain names and offering them for sale.  See General Electric Co. v. Kasinga, D2000-0389, (WIPO July 14, 2000) and General Electric Co. v. FORDDIRECT.COM, Inc., D2000-0394 WIPO June 22, 2000) (“The ‘warehousing’ of domain names corresponding to the marks of third parties does not constitute bad faith solely because it prevents those third parties from registering the names.”)  Cf. SBC Communications Inc. v. Eworldwideweb, Inc., D2002-0608 (WIPO Oct. 7, 2002) (asserting “[t]here is no bad faith in registering, or offering to sell, a domain name consisting of a common English term, if used in a descriptive, generic, or other non-trademark sense.”)  There is simply no evidence presented by Complainant on which the Panel could find bad faith use at this time.

However, in recognition that subsequent use might support both bad faith registration and later bad faith use, this Panel wishes to make clear that this decision is not a finding or conclusion that Respondent did, in fact, register the name in good faith or is using it in good faith.  This is only a conclusion that, as of this moment in time, there is no evidence either way.  The burden is on the Complainant to prove its case, which it might be able to do in the future, but did not do so at this time.

DECISION

For the reasons set forth in the Discussion section, the Panel orders that the Complaint be dismissed without prejudice to filing a future claim along the same lines, but for now that the domain name at issue NOT be transferred to Complainant.

G. Gervaise Davis III, Esq., Panelist
Dated: November 11, 2002

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