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Think Service, Inc. v. Juan Carlos aka Juan Carlos Linardi [2005] GENDND 1930 (18 November 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Think Service, Inc. v. Juan Carlos aka Juan Carlos Linardi

Case No. D2005-1033

1. The Parties

The Complainant is Think Service, Inc., Colorado Springs, Colorado, United States of America, represented by Sparks Willson Borges Brandt & Johnson, PC, United States of America.

The Respondent is Juan Carlos (aka Juan Carlos Linardi), Corrientes, Buenos Aires, Argentina.

2. The Domain Name and Registrar

The disputed domain name <hdi.com> (“the Domain Name”) is registered with iHoldings.com Inc. d/b/a DotRegistrar.com (“the Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2005. On October 4, 2005, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 4, 2005, the Registrar transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant of the Domain Name. The Center verified that 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 proceeding commenced on October 11, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was October 31, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 2, 2005.

The Center appointed Warwick Smith as the Sole Panelist in this matter on November 8, 2005. 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.

In the absence of any Response from the Respondent, the Panel has considered whether the Center has discharged its obligation to “employ reasonably available means calculated to achieve actual notice [of the complaint] to the Respondent” (Paragraph 2 of the Rules). The Panel is satisfied that the Center has discharged that responsibility. The hard copy of the Complaint was sent to the Respondent at the Buenos Aires address the Respondent has provided in the WHOIS report but the courier pack was returned with the advice “Incorrect address”. A copy of the Complaint which the Center emailed to the Respondent at his hotmail address was received by him. The Respondent has had actual notice of the Complaint.

4. Factual Background

The Complaint provides very little information about the Complainant and its activities. It appears to be a United States based corporation, carrying on business in the fields of customer support and technical support. Its email communications show that it operates a website at “www.ThinkHDI.com”, but the Complainant did not produce a copy of any web pages from that site. The email communications contain the words “HDI, Leading IT Service & Support” immediately below the sender’s name.

The Complainant has produced evidence that it is the registered proprietor of the word mark HDI in Mexico, in international class 41. The Mexican trademark certificate is in the Spanish language, and the Panel has not been provided with any translation. Nevertheless, the Panel is able to discern easily enough that the relevant application date was May 23, 2005. The certificate appears to refer to a claimed date of first use, of September 1, 2004.

According to the Complaint, the goods and services which are sold using the HDI mark include:

(i) Class 16 — “training manuals, books, white papers, work books, magazines, surveys and newsletters in the field of customer support and technical support”.

(ii) Class 35 — “the retail sale of customer support and technical support-related products; on-line sale of customer support and technical support-related products … promoting the interests of customer support and technical support providers … conducting business and practice research surveys in the field of customer support and technical support … providing information relating to employment and career counseling and placement, all in the field of customer support and technical support”.

(iii) Class 41 — “educational services … in the field of customer support and technical support; organization of seminars, forums, and conventions in the field of customer support and technical support … providing a website which provides on-line training in the field of customer support and technical support …”.

Apart from a note in one of the emails annexed to the Complaint, to the effect that the Complainant moved to its present Colorado Springs location on August 1, 2005, no more information has been provided about the Complainant or its activities. Specifically, no information has been provided which would suggest that the Respondent, apparently resident in Argentina, should have been aware of the Complainant or its HDI mark when he registered the Domain Name.

The Respondent and the Domain Name

The WHOIS information annexed to the Complaint shows that the Domain Name was first registered as long ago as April 12, 1994. The Complainant says that, until recently, the Domain Name was owned by a health care company that had a legitimate trademark interest in “HDI”. However, in August of 2005 the Complainant discovered that the Domain Name was no longer owned by the health care company, and was instead owned by the Respondent.

The WHOIS report produced by the Complainant notes that the record was last updated on July 17, 2005 – in the absence of any Response from the Respondent, or any other information to the contrary, the Panel concludes that the Domain Name was probably transferred to the Respondent on or about that date.

The Complainant produced at Annex 4 to the Complaint, a screen shot obtained by keying in “www.hdi.com”. The screen shot simply shows the familiar “the page cannot be displayed” wording.

Pre-commencement Communications between the Parties

The Complainant sent an email to the Respondent on August 10, 2005, enquiring if he was interested in selling the Domain Name. The email asked if the Respondent owned the Domain Name, or if he was a representative for someone else.

On August 13, 2005, the Complainant received a response from “Juan Carlos Linardi” (from the same hotmail address shown in the WHOIS report for the Domain Name), replying: “Yes, Best offer over $35,000”.

The Complainant emailed a response to the Respondent on August 15, 2005, referring to its applications for registration of the HDI mark (in some cases with related logos), which were said to be pending in “quite a few countries”. The Complainant noted that one of those applications would become a registration in the very near future, and advised that, as soon as that happened, it would bring a proceeding under the Policy to get ownership of the Domain Name from the Respondent. The Complainant went on to refer to the preponderance of successful claims made by complainants in proceedings filed under the Policy to date. In order to resolve the matter promptly, the Complainant offered, as its best and final offer, $10,000 for the transfer of the Domain Name.

On August 18, 2005, the Respondent replied:

“HDI is a generic three character word that can mean thousands of different things (only in google you could fin 897,000 entries).

$20,000 and it is yours.”

The Complainant’s Mr. Muns replied on August 18, 2005, saying that he would “sleep on it for a week or two”.

This administrative proceeding subsequently followed.

5. Parties’ Contentions

A. Complainant

1. The non-TLD portion of the Domain Name is identical to the Complainant’s registered HDI mark.

2. As at the date of the Complaint, there was no content at the site to which the Domain Name resolved which indicated that the Respondent was using the Domain Name for any bona fide offering of goods or services.

3. The Complainant knows of no evidence that the Respondent has been commonly known by the name “Hdi”.

4. The Complainant knows of no evidence that the Respondent is making a legitimate non-commercial or fair use of the Domain Name.

5. Since the Respondent is not using the Domain Name for a permitted purpose and is seeking payment far in excess of his out-of-pocket costs directly related to the Domain Name, the Respondent is acting in bad faith.

B. Respondent

The Respondent has not filed any response.

6. Discussion and Findings

General Principles under the Policy and the Rules

Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving:

(i) That the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) That the Domain Name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those 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, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the 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 respondent’s] website or location.

Paragraph 4(c) of the Policy sets out a number of circumstances, again without limitation, which may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, the disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:

(i) Before any notice to [the respondent] of the dispute, use by [the respondent] 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) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) Where [the respondent is] 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.

Paragraph 5(e) of the Rules provides that if the Respondent does not submit a response, in the absence of special circumstances, the Panel is to decide the dispute based upon the Complaint.

Paragraph 14(b) of the Rules provides that:

“(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under these Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.”

A. Identical or Confusingly Similar

The Complainant has proved this part of the Complaint. Although it failed to produce an English translation of the Mexico Trademark Certificate, it seems clear to the Panel that the Complainant is indeed the registered proprietor of the word mark HDI in Mexico, with effect from May 23, 2005. The Respondent has not challenged that claim.

That registered mark is identical to the Domain Name. When comparing the identity of a domain name and a trademark for the purposes of paragraph 4(a)(i) of the Policy, the generic “.com” is not taken into account.

B. Rights or Legitimate Interests

The Policy requires that a complainant must prove each of the elements in paragraph 4(a), and it might be thought that proving a negative (that the respondent does not enjoy some right or legitimate interest in the domain at issue) could pose particular difficulties for complainants. However the wording of paragraph 4(c) of the Policy appears to envisage a respondent taking steps to demonstrate its right or interest, and it is generally accepted that, once a complainant has proved that the at-issue domain name is identical or confusingly similar to its mark and that it has not authorized the respondent to use the domain name, the evidential onus shifts to the respondent to demonstrate that it has some right or legitimate interest (see for example Sony Kabushiki Kaisha v. Sony.net, WIPO Case No. D2000-1074). The Panel accepts that that is the correct approach.

In this case, the Complainant has evidently not authorized the Respondent to use its mark in the Domain Name, and the Respondent has not filed any Response. Furthermore, in the pre-commencement exchange of emails, where the Respondent had a clear opportunity to state any claim that he might have to a right or legitimate interest, he did not do so. The Respondent simply claimed that “hdi” is a generic three-character word that can mean thousands of different things.

With regard to that claim, “hdi” is not, as far as the Panel is aware, “generic”, or even a “word” (at least in the English language). It does not denote any general category of goods or services, or any other “genus”. The three letters “hdi” are only likely to be used in combination as an abbreviation for some longer expression.

A trademark consisting of a very short alphanumeric string (such as HDI) might not be very distinctive, as there are likely to be others using the same mark in other jurisdictions, or in respect of different goods or services. But that does not mean that everyone has a legitimate interest in respect of that expression (as might be the case with the bona fide use of a descriptive expression or other ordinary word one might find in a dictionary).

In the end, it was for the Respondent to state what his particular right or interest in the Domain Name is, and he has elected not to do so. In those circumstances, the Complainant has done enough to meet its burden of proof under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel is not satisfied that the Complainant has proved this part of the Complaint.

In support of its allegation of bad faith registration and use, the Complainant relies on the email exchange, in the course of which the Respondent indicated that he would take the “best offer over $35,000” for the domain name, and later (after he had been advised of the Complainant’s intention to commence a proceeding under the Policy as and when it obtained a registration for the HDI mark) said that he would take $20,000. The Complainant says:

“Since the Respondent is not using the domain name for a permitted purpose and is seeking payment far in excess of his out-of-pocket costs directly related to the domain name, the Respondent is acting in bad faith.”

The Complainant, then, appears to be relying on paragraph 4(b)(i) of the Policy.

But paragraph 4(b)(i) of the Policy requires proof that the Respondent had the requisite intention at the time he registered or acquired the domain name. It also requires that his intention must have been to sell, rent, or otherwise transfer the domain name, to the complainant or to a competitor of the complainant.

The Panel is prepared to infer that the Respondent probably did acquire the Domain Name for the primary purpose of on-selling it. The Respondent’s advice that he would take the “best offer over $35,000”, implies that others would or might be making offers for the Domain Name, and that it was therefore on the market for sale. He had only acquired the Domain Name a few weeks previously, and in the absence of any evidence to the contrary, that period is short enough for the Panel to conclude that he probably had the intention of on-selling at the time he acquired the Domain Name. The likelihood that he had that intention is reinforced by the absence of any suggestion in the Respondent’s emails that he had any plans to use the Domain Name in connection with some business or legitimate non-commercial activity.

The Panel is also prepared to accept, again in the absence of any submission or evidence to the contrary, that the Respondent intended to sell the Domain Name for a sum in the vicinity of his initial asking price, and that that asking price exceeded his out-of-pocket costs directly related to the Domain Name. (In the Panel’s view it is unlikely that he would have been prepared to drop his initial asking price by $15,000 if that had meant he would not have covered his costs relating to the Domain Name.).

But is there any evidence that, when he acquired the Domain Name, the Respondent’s intention was to sell it to the Complainant (or to one of its competitors)? In the Panel’s view, there is no such evidence, and that is fatal to the Complainant’s case.

In Emilio Pucci SRL v.Mailbank.com Inc., WIPO Case D2000-1786, the three –member panel was concerned with a dispute over the domain name <pucci.com>. The panel said:

“A non-exhaustive list of what may constitute bad faith is set out in paragraph 4(b) of the Policy. All the examples given involve an intent by the Respondent when registering the Domain Name to damage the Complainant or in some way ride on the back of the goodwill of the Complainant.

While the list of examples of bad faith in paragraph 4(b) is expressed to be non-exhaustive, the Panel regards it as crucial to the success of a Complaint under the Policy that at the time of registration the Respondent at the very least had the Complainant in mind.

Here there is no evidence that the Respondent had the Complainant in mind when registering the Domain Name…….”

In Builder’s Best Inc. v. Yoshiki Okada, WIPO Case No. D2004-0748, the panel dealt with a dispute concerning the domain name <nnn.com>. The evidence showed that there were many “NNN” trademarks, and that the Respondent knew that was the case when he registered the domain name. But there was no evidence that he knew that NNN was the Complainant’s mark. Indeed, there was no evidence that the Complainant’s mark was known or even used in the Respondent’s country of residence. The Respondent’s general intent was to register domain names that could be of interest to someone else.

The panel in the Builder’s Best case took the following view of the application of the Policy in those circumstances:

“In this Panel’s view, however, to warrant a finding of bad faith under the Policy, in general, there must be some evidence of knowledge that the Respondent knew the domain name was identical or similar to the Complainant’s mark, not just ‘someone’s mark’. Paragraph 4(b) of the policy focuses primarily on the Respondent’s intent or purpose. When paragraph 4(b)(ii) refers to the trade mark owner, it seems to require that that trade mark owner be the Complainant. That leads this Panel to the conclusion that bad faith must be specific to the Complainant. Moreover if a transfer is ordered, it benefits the Complainant and indirectly constitutes a finding against other potential claimants / trade mark owners, including those who in this case could perhaps have a valid claim against the Respondent in respect of the same mark.”

This panel agrees with the panelists in the Emilio Pucci and Builder’s Best cases, that the relevant bad faith must be specific to the Complainant, or at very least that the Respondent must have “had the Complainant in mind” when he registered the Domain Name. In the Panel’s view, the evidence does not take the Complainant that far. In fact there is no evidence that the Respondent was even aware of the Complainant or its HDI mark when he registered the Domain Name.

First, it was not the Respondent who approached the Complainant to sell the Domain Name – the first approach came from the Complainant.

Secondly, at the time the Domain Name was registered (apparently on July 17, 2005), it appears that the Complainant had no registered rights in the mark HDI – in his email to the Respondent dated August 15, 2005, the Complainant’s Mr. Muns noted: “Think Service has trademark registrations applications for ‘HDI’ and/or related logos pending in quite a few countries. One of these will become a registration in the very near future.”

Thirdly, there is no evidence that the Complainant’s various applications to register HDI as a trademark included an application to the appropriate authority in Argentina, being the Respondent’s apparent country of residence.

Fourthly, the Complainant has produced no evidence that it has ever conducted any trade under the HDI mark in Argentina (or in any other country with which the Respondent has some proven connection). Nor is there any evidence of it having carried out any advertising featuring that mark (whether in Argentina or anywhere else). The Spanish-language Mexican trademark certificate does appear to suggest that the Complainant’s first use of the mark may have been in September 2004, but there is no evidence of the extent of that use and whether it might have been sufficient to establish common law (unregistered) rights in the mark. The most that can be said on the evidence produced, is that, from no later than May 23, 2005, the Complainant enjoyed service mark rights in HDI, in Mexico.

Ignoring for the moment the August 2005 email exchange between the parties, there is nothing in the case file to suggest that a citizen of Argentina would probably have been aware of the Complainant or its ownership of an HDI mark.

It might perhaps be argued that, if the Respondent had been unaware of the Complainant and its HDI mark, he would have said so in response to the Complainant’s assertion of trademark rights in its email dated August 15, 2005. But in the Panel’s view it would be unsafe to draw that inference – the Respondent did reply to the email, arguing that the Domain Name consisted of a three-character word that could mean thousands of different things, and asserting that a Google search would produce no fewer than 897,000 hits on “HDI”. That response is not inconsistent with the Respondent never having heard of the Complainant. For the reasons mentioned below, the Respondent would almost certainly have expected that there would be numerous individuals or corporations who would have an interest in the Domain Name, and that most of them would be unknown to him. In those circumstances, the Panel is not prepared to regard his failure to state that he was unaware of the Complainant’s mark, as evidence that he was aware of it.

Finally, there is no evidence of the Domain Name being in any degree distinctive. With a few famous exceptions such as KFC, any word mark consisting of only three letters is likely to be weaker than marks consisting of longer words, or words coupled with distinctive logos. Where the last letter of the combination is “i”, and the first two letters are fairly commonly occurring ones like “h” and “d”, the mark is likely to be weaker still (“i”, being the first letter of two English language words which commonly occur as the last word in the names of corporations or firms — “Incorporated” and “Industries”). One can readily imagine that there would have been many individuals or corporations around the world (many of whom would not have had existing trademark or service mark rights), who would have been interested in acquiring such a domain name. That factor really makes it impossible for the Panel to conclude that the Respondent must have been aware of the Complainant’s mark, and acquired the Domain Name with the bad faith purpose of “extorting” money from the Complainant.

Of course a finding that the circumstances do not come within paragraph 4(b)(i) of the Policy is not necessarily the end of the matter. As noted by the panel in the Emilio Pucci case, the categories of bad faith registration and use set out in paragraph 4(b) of the Policy are only examples of bad faith registration and use, and administrative panels deciding cases under the Policy can and often do make findings of bad faith in circumstances which do not fall within any of the subparagraphs of paragraph 4(b). But in such cases there must still be evidence of some form of bad faith on the part of the respondent, and that bad faith must still be directed at the complainant in some way.

Conclusion

The Panel accepts that the Respondent acquired the Domain Name primarily for the purpose of selling it at a profit, but there is no evidence that his intention was to sell it to the Complainant or to a competitor of the Complainant. It is possible that the Respondent saw a much wider market for the sale of the Domain Name, and that he had no bad faith intention, let alone a bad faith animus directed specifically to the Complainant. In the latter regard, the Panel respectfully adopts the view of the panels in the Pucci and Builder’s Best cases referred to above, that the bad faith required by paragraph 4(a)(iii) of the Policy must be directed at, or be specific to, the Complainant (or at very least the Respondent must have had the Complainant in mind when he acquired the Domain Name). There is no proof of any of that, and the Complaint must fail accordingly.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Warwick Smith
Sole Panelist

Dated: November 18, 2005