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Nationwide Technology Recruitment Plc v. RareNames [2004] GENDND 1228 (7 September 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Nationwide Technology Recruitment Plc v. RareNames

Case No. D2004-0349

1. The Parties

The Complainant is Nationwide Technology Recruitment Plc, Maidenhead, United Kingdom of Great Britain and Northern Ireland, represented by Nigel Penn-Simkins, United Kingdom of Great Britain and Northern Ireland.

The Respondent is RareNames, Washington DC, United States of America, represented by ESQwire.com Law Firm, United States of America.

2. The Domain Name and Registrar

The disputed domain name <nationwide.biz> is registered with Registration Technologies, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by e-mail on May 12, 2004. On May 12, 2004, the Center transmitted by email to Registration Technologies, Inc. a request for registrar verification in connection with the domain name at issue. On June 3, 2004, Registration Technologies, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Complainant filed an amendment to the Complaint on May 19, 2004. The Center has verified that the Complaint satisfies the formal requirements of the Restrictions Dispute Resolution Policy adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001, (the “RDRP”), the Uniform Domain Name Dispute Resolution Policy (the “Policy” or the “UDRP”) and the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) as supplemented by the RDRP Supplemental Rules and the WIPO Supplemental Rules, which also apply to administrative proceedings under the RDRP (all the said Rules are together hereinafter referred to as the “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 on May 25, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was June 14, 2004. The Response was filed with the Center by e-mail on June 14, 2004.

The Center appointed Mary Padbury as the sole panelist in this matter on July 2, 2004. The Panel finds that it was properly constituted. 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. The Projected Decision Date was July 16, 2004. This date was extended in accordance with Paragraph 10(c) of the Rules to September 8, 2004.

4. Factual Background

The Complainant is registered as a public limited company in the United Kingdom of Great Britain and Northern Ireland with its principal place of business at Maidenhead. The Complainant was the registrant of the domain name in dispute. The name was allowed to lapse by reason of a clerical oversight and the absence on long term leave for personal reasons of the Complainant’s CEO who was the only domain contact. Prior to the lapse of the domain name, the Complainant was using it as the “foundation for the company’s corporate identity” and in support of “Nationwide” as the defacto brand and trading name of the organisation. Annex IV to the Complaint is a screen-print of the contact page from the Complainant’s website illustrating the use of the word “Nationwide” and the use of the domain name <nationwide.biz>. Such use is in relation to the Complainant’s recruitment related business.

The domain was registered by the Respondent and is advertised for sale on its website www.buydomains.com under the “Premium Names” section with a price listed as “Request Price”. Annex III to the Complaint is a screen-print of the database search.

5. Parties’ Contentions

A. Complainant

The Complainant contends:

(1) “Nationwide” is a defacto trademark of the Complainant.

(2) The Respondent does not intend to use the domain name in the ordinary course of trade or business but rather it has been registered solely for the purpose of the unsolicited offering for sale of the domain name for compensation.

(3) The Respondent has no interest or rights to the name “Nationwide” since it is not part of any name used by the Respondent.

(4) The Respondent registered the name in bad faith as evidenced by the fact that it has been put up for immediate sale.

(5) The domain name was registered primarily for the purpose of selling the domain name registration to the Complainant, or to a competitor of the Complainant, for valuable consideration in excess of the domain name registrant’s out-of-pocket costs directly related to the domain name, as evidenced by the other premium domain names on “www.buydomains.com” being frequently offered for several thousand dollars.

(6) Because the purpose of acquiring a domain name by the Respondent was solely to offer it for sale, no preparations to use it legitimately are evident.

B. Respondent

The Respondent contends:

(1) The Complainant does not have, and does not allege that it has, a registered or common law trademark for the term “Nationwide”. The Complainant must have trademark rights to prevail under the RDRP or the Policy. The Complainant has proffered no evidence that it has common law trademark rights to the term “Nationwide” or that its consumers in the UK, where it does business, or the US where the Respondent resides, associate the Complainant with the term “Nationwide”. There are numerous third party uses of the term on the Internet. Exhibit 1 to the Response is an advanced Google.com search for the term “Nationwide” excluding the word “Technology Recruitment” to eliminate references to the Complainant, which yielded over 7.9 million third party uses of the term “Nationwide”.

(2) The Respondent registered the domain name because the Complainant had failed to pay the domain name renewal fee causing it to be deleted and made available for anyone to register. The Complainant’s prior registration provides it with no rights under either the Policy or the RDRP. To the contrary, the fact that the domain name was deleted provides the Respondent with greater rights since the failure to renew constitutes an abandonment of the Complainant’s rights to the domain.

(3) The Respondent selected the domain name because it incorporates a common term to which no single party has exclusive rights. The Respondent had no knowledge of the Complainant or its mark and did not register the domain name to sell it to the Complainant, to disrupt its business, prevent it from acquiring a domain name incorporating its trademark or to confuse users. Exhibit 2 to the Response is a declaration of Michelle Miller to the effect that the Respondent had no knowledge of the Complainant when it registered the disputed domain. The declaration also states that the Respondent registers domain names that become available for registration through expiration and deletion and only registers domain names “which incorporate common words, descriptive terms and/or words and terms to which it believes no single party has exclusive rights.”

(4) The Respondent hosts the disputed domain name at “www.buydomains.com”, a legitimate business it operates which provides internet services, advertising and offers common and descriptive term domain names for sale to the general public. This business use of the domain name establishes the Respondent’s legitimate interest in the domain name under the UDRP and satisfies the requirement of bona fide business or commercial user under the RDRP. The Respondent’s business of reselling generic and descriptive domain names to the public is a bona fide offering of services under the UDRP and does not violate the RDRP.

(5) The Respondent relies upon use of the domain name in connection with paid advertising search results that appear on the Respondent’s web sites through its agreement with Overture.com. The Respondent refers to the decision in Williams, Babbitt & Weisman, Inc. v. Ultimate Search, No. 98813 (NAF October 8, 2001) where the respondent had registered numerous generic and descriptive terms to generate advertising revenue. The Panel noted that “Neither the current UDRP nor current ICANN registrar contracts preclude this type of domain use”. See also GLB Servicos Interativos S.A. v. Ultimate Search, WIPO Case No. D2002-0189 (May 29, 2002).

(6) The sale of domain names constitutes a bona fide offering of goods and services under the Policy where the Respondent is unaware of a party’s trademark rights. The Respondent refers to Micron Technology, Inc. v. Null Int’l Research Center, WIPO Case No. D2001-0608 (June 20, 2001). See also Allocation Network GmbH v. Steve Gregory, WIPO Case No. D2000-0016 (March 24, 2000).

(7) The fact that the disputed domain was offered for sale does not help the Complainant with its claim under the RDRP. So long as the disputed domain name was not registered “solely” for the purposes of “selling”, a bona fide business or commercial use can be established through other means. The Respondent relies upon provisional search services through its Seeq.com search engine and advertising links through the Overture.com affiliate program to establish bona fide business and commercial use under paragraph 4(b) since such use “facilitates the exchange of...information”.

(8) The Complainant has not demonstrated that the domain name was registered and is being used in bad faith. The Complainant must prove that a domain name was registered with a Complainant’s trademark in mind. Here, the Respondent had no knowledge of the existence of the Complainant or its alleged trademark when it registered the disputed domain name. The fact that there is substantial third party use of the term “Nationwide” also precludes an inference being drawn that the Respondent registered the disputed domain with the Complainant in mind.

(9) The mere offer for sale of a descriptive term domain name does not establish bad faith under the Policy but is proof of the Respondent’s legitimate interest. The Respondent registered the domain name because it had expired, was deleted and became available for anyone to register.

(10) The fact that the Complainant was the prior registrant of the disputed domain is irrelevant. This fact is not relevant under the Policy. The Respondent refers to Vernons Pools Ltd. v. Vertical Axis, Inc., WIPO Case No. D2003-0041 (March 12, 2003).

6. Discussion and Findings

It is necessary to consider the application of the Policy and the RDRP.

Paragraph 4(a) of the Policy requires the Complainant to make out three elements under the Policy.

A. Identical or Confusingly Similar

The Panel is not satisfied that the Complainant has established that it has a trademark or service mark in which it has rights capable of protection under Paragraph 4(a). There is no evidence that the disputed domain name is registered as a trademark. Further, there is no evidence that the name has acquired a secondary meaning such that it is associated exclusively with the Complainant at common law. Lastly, the domain name is descriptive in nature. Accordingly the Complainant does not have rights in a mark identical or confusingly similar to the disputed domain name.

B. Rights or Legitimate Interests and Using the Disputed Domain in Connection with a Bona Fide Business and Commercial Use

If the Panel finds any of the matters set out in paragraph 4(c) of the Policy to be proved, based on the evaluation of all the evidence, that is said to demonstrate the Respondent’s rights or legitimate interests in the domain name.

There is no evidence, before any notice to the Respondent of the dispute, of use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services in terms of Paragraph 4(c)(i) of the Policy.

There is no evidence that the Respondent is commonly known by the domain name even though it required no trademark or service mark rights in terms of Paragraph 4(c)(ii) of the Policy.

Lastly, there is no evidence that the Respondent is making a legitimate non- commercial use of the domain name without intent for commercial gain to misleadingly divert consumers or tarnish the trademark or service mark in issue in terms of Paragraph 4(c)(iii) of the Policy. Therefore, the Respondent lacks rights and legitimate interests to the domain name under the Policy.

C. Registered and Used in Bad Faith

If the Panel finds evidence of any of the matters set out in Paragraph 4(b) of the Policy, that shall be evidence of bad faith.

Registration of the domain name may be the purpose of selling it for valuable consideration in excess of the Respondent’s apparent out-of-pocket expenses in terms of Paragraph 4(b)(i). However, there is no evidence that the Respondent was aware of the Complainant or its trademark given the absence of trademark registration, use of a descriptive name and differences in place of operation.

Accordingly, the Complainant’s claim under the Policy fails.

D. Application of the RDRP

In addition, the Respondent is required to submit to a mandatory administrative proceeding under Paragraph 4(a) of the RDRP if a Complainant asserts that the domain name is not being or will not be used primarily for a bona fide business or commercial purpose. A complaint under the RDRP will not be considered valid if based exclusively on the alleged non-use of the domain name.

Paragraph 4(b) defines “Bona fide business or commercial use” to “mean the bona fide use or bona fide intent to use the domain name or any content software, materials, graphics or other information thereon, to permit Internet users to access one or more host computers through the DNS:

(i) to exchange goods, services, or property of any kind; or

(ii) in the ordinary course of trade or business; or

(iii) to facilitate the exchange of goods, services, information, or property of any kind or the ordinary course of trade or business.”

The Respondent contends that the use of the domain name in connection with paid advertising search results that appear on the Respondent’s website through its agreement with Overture.com constitutes such use.

However, Paragraph 4(c) of the RDRP states that registering a domain name solely for “selling, trading or leasing the domain name for compensation, or the unsolicited offering to sell, trade or lease the domain name for compensation” is not a bona fide business or commercial use. Here, the Respondent’s registration plainly falls within Paragraph 4(c).

7. Decision

The Complainant has not proven trademark rights in the name “Nationwide”. Therefore, for all the foregoing reasons, in accordance with RDRP, the Panel orders that the domain name <nationwide.biz> be cancelled.

Mary Padbury
Sole Panelist

Dated: September 7, 2004