WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CEAT Limited, CEAT Mahal, v. Vertical Axis Inc. / Whois Privacy Services Pty Ltd
Case No. D2011-1981
1. The Parties
The Complainant is CEAT Limited, CEAT Mahal, Mumbai, India, represented by Anand & Anand, India.
The Respondent is Vertical Axis Inc., Domain Administrator, Christ Church, Barbados and Whois Privacy Services Pty Ltd, Domain Hostmaster, Fortitude Valley Barbados, of Barbados, represented by ESQwire.com Law Firm, United States of America.
2. The Domain Name and Registrar
The disputed domain name <ceat.com> is registered with Fabulous.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 11, 2011. On November 11, 2011, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the disputed domain name. On November 14, 2011, Fabulous.com transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 17, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 18, 2011. 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” or “UDRP”), 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 November 21, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 11, 2011. The Response was filed with the Center on December 9, 2011. On December 16, 2011, the Complainant filed a supplemental reply.
The Center appointed Flip Jan Claude Petillion, David H. Bernstein, and the Hon. Neil Brown QC as panelists in this matter on January 26, 2012. 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.
4. Factual Background
The Complainant, CEAT Limited, is a tire manufacturer based in India. The Complainant is the holder of a number of trademarks consisting of, or including “CEAT” in various countries throughout the world, which it uses in relation to its tire business. These trademarks include the following word marks:
- CEAT, registered in class 12 with the Trade Marks Registry of India under number 204251 on August 17, 1961, and duly renewed;
- CEAT, registered in class 12 with the United States Patent and Trademark Office under number 741997 on December 11, 1962 and duly renewed; and
- CEAT, registered for tires with the Canadian Intellectual Property Office under number TMA228220 on June 2, 1978, and duly renewed.
The WhoIs records available at the time the Complaint was filed indicated that the registrant was Whois Privacy Services Pty Ltd and that the disputed domain name <ceat.com> was registered on January 24, 2001 with Fabulous.com. On November 14, 2011, the Registrar lifted the privacy shield and informed the Center that Vertical Axis Inc is the beneficial owner of the disputed domain name.
Respondent, Vertical Axis, Inc. is a company registered in Christ Church, Barbados. The Respondent uses the disputed domain name in connection with a pay-per-click (“PPC”) parking page, showing sponsored links and a general offer to sell the domain name.
5. Parties’ Contentions
The Complainant considers the disputed domain name to be identical or confusingly similar to the trademarks and service marks in which it claims to have rights. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the disputed domain name. According to the Complainant, the Respondent has not used the disputed domain name since its registration. Finally, the Complainant considers that the disputed domain name was registered and is being used in bad faith.
On December 16, 2011, the Complainant filed a supplemental reply. In its discretion, the Panel has decided not to consider this submission because it did not express any new arguments that could not have been addressed in the Complaint.
The Respondent argues that it registered the disputed domain name because it consists of four letters, making it a valuable domain name. The Respondent explains that it regularly registers domain names consisting of 2, 3 or 4 letters. The Respondent contends that there are many uses of the “CEAT” acronym that do not refer to the Complainant and that it had a legitimate right to register short domain names and provide PPC links that others may think is related to the acronym CEAT. Finally, the Respondent argues that it did not register or use the disputed domain name in bad faith because it was not familiar with the Complainant’s mark at the time it registered the domain name.
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 in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer a domain name. As the proceedings are administrative, the standard of proof is the balance of probabilities.
Thus for the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
1. The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
2. The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
3. The disputed domain name has been registered and is being used in bad faith.
The Panel will deal with each of these requirements in turn.
A. Identical or Confusingly Similar
To prove this element the Complainant must first establish that there is a trademark or service mark in which it has rights. The Complainant has clearly established that there is a trademark in which the Complainant has rights. The mark has been registered, including in Respondent’s home country, for more than thirty years.
The Panel considers the CEAT trademark to be identical to the disputed domain name. 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) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the domain name.
The consensus among UDRP panelists is that a complainant need only make a prima facie showing that the respondent has no rights or legitimate interests in the domain name in order to place the burden of rebuttal on the respondent. See Champion Innovations, Ltd. v. Udo Dussling (45FHH), WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270. As discussed below, the Complainant has adduced evidence sufficient to support a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name, and the Respondent has failed to come forward with credible evidence to rebut that showing.
The Panel notes that the Respondent has not been commonly known by the disputed domain name and that the Respondent has not acquired trademark or service mark rights in the distinctive part of the domain name (“CEAT”). The Respondent’s use and registration of the disputed domain name was not authorized by the Complainant, and there are no indications of any connection between the Complainant and the Respondent.
More to the point, although it is a close issue on the facts of this case, a majority of the Panel concludes that the Respondent is not "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." Policy, paragraph 4(c)(iii). First, the Respondent obviously is making “commercial gain” by virtue of the PPC links on the page. That “commercial gain” appears to be based on the misleading diversion of some consumers, to the extent they navigate to the “www.ceat.com” website because they believe it associated with the Complainant. And, the Respondent’s use of the domain name to resolve to a PPC parking page, containing sponsored links, cannot be considered “fair” on the facts of this case. Registering a domain name for such pages might be fair, and hence legitimate, if the name were being used for its generic or descriptive value and if the sponsored links on the page were related to that generic or descriptive value. See, e.g., Landmark Group v. DigiMedia.com, L.P., NAF Claim No. 285459 (legitimate interest “[if] the domain names have been registered because of their attraction as dictionary words, and not because of their value as trademarks”); National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424 (“A number of Panels have concluded that a respondent has a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of the complainant. . . . It is clear, however, that the respondent must be using the domain name not in the trademark sense but in the descriptive sense, to communicate some aspect of the services offered.”); Havanna S.A. v. Brendan Hight, Mdnh Inc, WIPO Case No. D2010-1652 (“Prior decisions under the UDRP show there may well be a legitimate interest if the domain name is a generic word or a geographic indicator, provided it is not used to trade on the trademark owner’s goodwill.”). However, as this Respondent and its counsel know from past cases, it is not legitimate to register a domain name and use it for a PPC parking page where the domain name is a trademark and has no dictionary or descriptive meaning, and where the sponsored links have no relationship to any alleged descriptive meaning of the domain name. See Ustream.TV, Inc. v. Vertical Axis, Inc., WIPO Case No. D2008-0598 (“The Respondent is correct that registering a domain name for its descriptive value may constitute a legitimate interest for the purposes of paragraph 4(c) of the Policy. However, this proposition is true only so long as the domain name has not been registered because of its value as a trademark, and only if it is being used solely in connection with its descriptive meaning. . . . It is by now well established that PPC parking pages built around a trademark (as contrasted with PPC pages built around a dictionary word and used only in connection with the generic or merely descriptive meaning of the word) do not constitute a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy, nor do they constitute a legitimate non-commercial or fair use pursuant to paragraph 4(c)(iii).”) (citing mVisible Technologies, Inc v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; Mobile Communication Service Inc v. WebReg, RN, WIPO Case No. D2005-1304; Gerber Products Co. v. LaPorte Holdings, WIPO Case No. D2005-1277; Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415; Champangne Lanson v. Development Services/MailPlanet.com, WIPO Case No. D2006-0006; and The Knot, Inc. v. In Knot we Trust Ltd, WIPO Case No. D2006-0340).
The panel’s decision in Compart AG v. Compart.com Vertical Axis, Inc., WIPO Case No. D2009-0462, a case involving the same Respondent, is instructive. In that case, as in this one, the complainant challenged use of a domain name that resolved to a PPC parking page and submitted in support pages showing PPC links related to the complainant’s products. The panel (comprised of panelist Bernstein as well as David E. Sorkin and Ian Lowe) rejected that evidence as being unreliable, but nevertheless found that there was no legitimate interest in a domain name used for a PPC parking page where the links were unrelated to the dictionary or descriptive meaning of the domain name:
“Regardless of whether ‘compart’ is a common or more obscure English language word, the issue remains of whether the Respondent's use of this word for a PPC parking page can be said to be a legitimate use. The Complainant alleges that the use is not legitimate because the Respondent is using the Domain Name to promote software that is directly in competition with the Complainant's own products, which is not a legitimate interest. In the Complaint, the Complainant provided an excerpt, purportedly from the website to which the Domain Name resolves, that suggested that the Domain Name was being used to deliver PPC advertisements for other software products. As the Respondent demonstrated, however, the home page of the Respondent's website did not include any advertisements related to software; rather, the home page including primarily advertisements for automobile parts, and it also included a search engine that allows the user to search for advertisements related to other goods and services. The reason that these software advertisements were generated was because the Complainant entered the word ‘software’ into the search engine included on the home page, which subsequently resulted in a new page with software advertisements. The Panel thus rejects the Complainant's argument that the webpage was promoting advertisements in competition with the Complainant's software products. . . .
“That does not mean, though, that the Respondent has successfully shown rights or legitimate interests in the Domain Name. It remains the case that the Respondent's website, which included advertisements related mostly to automobile parts, is not a legitimate use because the Respondent is not using the Domain Name in any way that is related to its generic meaning. It is using the Domain Name for a PPC parking page where many of the links are to websites selling car parts. A declaration of Kamante Forde-Millar, a manager of the Respondent, states that this is because the automated technology used by the domain name parking service “HitFarm.com” is drawing on the contextual meaning of the “part” component of the Domain Name to generate what it considers to be relevant advertising.
The Respondent is not known by the name COMPART and has not been authorised by the Complainant to use the name. In the Panel's view, the mere fact that a word identical to the Domain Name exists as a defined dictionary term does not give rise to any rights or legitimate interests in the name on the part of a respondent who uses it in ways like this that are not tied to the generic meaning of that word. Accordingly, the Panel finds that the Respondent has no rights or legitimate interest in respect of the Domain Name.”
There is no dictionary meaning for the term “ceat.” The value of the disputed domain name to the Respondent is, therefore, its value as a trademark referring to Complainant and to the several other organizations identified by the Respondent who also use the letters “CEAT” as their marks. As Respondent itself points out and as a search of Acronym Finder reveals, all of the top references provided for the acronym“CEAT” refer to a specific trade association or trademark, i.e. the College of Engineering and Technology, the Code Enforcement Association of Texas, and the Center for Excellence for Airport Technology. It is of no consequence that “CEAT” is a short domain name or that the Respondent is in the business of registering short domain names. Simply because an acronym or domain name is short (such as IBM or NFL or GAP or NAF or SONY or AMEX or INTA or WIPO) does not mean that respondents have an automatic right to register such domain names and use them for PPC parking pages. Additionally, the sponsored links on the page are not being used to advertise goods or services that have any generic or descriptive meaning related to the domain name. There is thus no clear link between the disputed domain name and the content of the parking page. By generating automated links that are not related to the dictionary or descriptive meaning of the domain name, a majority of the Panel concludes that the Respondent is taking advantage of the Complainant’s trademark, since Internet users looking for the Complainant may land on a PPC parking page which has no link whatsoever with the descriptive meaning of the work or acronym CEAT.2
C. Registered and Used in Bad Faith
The Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith. See e.g. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052.
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith registration and use are the use of a domain name to intentionally attempt to attract, for commercial gain, Internet users to a 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 the web site or location or of a product or service on the web site or location and the registration or acquisition of 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 your documented out-of-pocket costs directly related to the domain name.
In the instant case, the Respondent is a known domain name speculator, using automated processes for domain name registration. According to the majority of the Panel, a domain name registrant cannot be willfully blind to whether the disputed domain name may violate trademark rights. After all, paragraph 2 of the UDRP provides that it is the registrant’s responsibility to determine whether its domain name registration infringes or violates someone else's rights. The registration of multiple domain names with no appropriate mechanism for ascertaining whether these may be identical or confusingly similar to trademarks, may support a finding of bad faith. See e.g., Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304 (finding that where a respondent registers large swaths of domain names for resale, often through automated programs that snap up domain names as they become available, with no attention whatsoever to whether they may be identical to trademarks, such practices may well support a finding that respondent is engaged in a pattern of conduct that deprives trademark owners of the ability to register domain names reflecting their marks.); HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062 (finding that Registering a domain name that is identical to the distinctive trademark of another and using the domain name to generate revenue by directing Internet users to the websites of the trademark owner’s competitors, without exploring in a meaningful way the possibility of third-party rights, is inconsistent with the good faith requirement). For these reasons, the Panel finds that the Respondent registered the domain name in bad faith.3
According to the Panel, there are further indications of bad faith registration and use. When registering the disputed domain name, Respondent was hiding its identity behind a privacy service with no apparent reason for doing so given that Respondent is not a private individual who wants to protect its identity.
Furthermore, Respondent’s website includes at the top a general offer to sell the domain name. Even if the Respondent did not have in mind the Complainant to whom to sell the domain name, the Respondent’s general offer to sell the domain name shows that the Respondent knew or should have known that someone with rights in the “Ceat” name would have an interest in the domain name. See Wrenchead.com, Inc. v. Hammersla, WIPO Case No. D2000-1222 (finding that offering the domain name for sale at an auction site is evidence of bad faith registration and use). Thus, the general offer to sell the domain name constitutes bad faith use.
Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the disputed domain name was registered and is being used in bad faith.4
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, <ceat.com> be transferred to the Complainant.
David H. Bernstein
Flip Jan Claude Petillion
Dated: February 20, 2012
Summary of dissenting opinion
I respectfully disagree with the majority opinion in this matter and I would dismiss the Complaint.
In essence, what has happened in this case is that some 10 years ago and in fact on January 24, 2001, the Respondent, a company domiciled in Canada, registered as a domain name a 4-letter series of letters that can be described as an acronym. The acronym “ceat” is clearly well established, as the un-contradicted evidence is that it is in wide use as an acronym and as an abbreviation: according to the evidence, a Google search has shown over 12 and a half million third party results, which show that the word or grouping of letters is subject to wide use unconnected to the Complainant, although many other uses, of course, relate to the Complainant. Nor does the acronym seem to be a rare or remote one: the website of Acronym Finder5 has 8 verified meanings for the acronym “ceat”, none on which is the Complainant and the website Acronym Attic6 shows that there are 16 unverified meanings and that on a descending 3 star to 1 star rating, the Complainant’s name has a 1 star rating at number 11. None of this is meant to denigrate the Complainant or to diminish its standing, but it shows that the acronym has a reasonably wide use unconnected with the Complainant and therefore must have value as a word with at least some value unconnected with and independent of the Complainant’s trademark.
Moreover, such combinations of letters have become part of the regular use of the English language and its alphabet and are popular and increasingly in demand, as short letter domain names become difficult to obtain and as many companies and businesses adopt acronyms and abbreviations as their names.
The Respondent is not alone in saying that “ceat” (or CEAT) is an acronym, as the Complainant itself makes the same submission and in particular makes the submission that it is an acronym made up from the Italian words Cavi Electri Affino Torino (Electrical Cables and Allied Products Turin), the original name of the company. So it is common ground between the parties that the word at issue is an acronym. The difference between the parties is that the Complainant’s position is that it may use the acronym as a trademark, as it has, but that the Respondent may not use the acronym as a domain name and nor, presumably, may anyone else. The Respondent’s position is that the Complainant may use the acronym as a trademark, the Respondent may use it as a domain name and the two can function in harmony so long as it, the Respondent, does not abuse the Complainant’s trademark rights or act in a misleading or deceptive way. In essence, I support the Respondent’s position on that dispute as it is consistent with the Policy and not contrary to any provision of it. Moreover, the Complainant has produced no evidence to suggest that the Respondent’s conduct is in any way in breach of the Policy or of an inappropriate nature.
In the 10 years or so since the domain name was registered, it has never been used to target the Complainant, copy its website, pretend it is an official domain name of the Complainant or advertise any of the products of the Complainant or similar products. Rather, it has been used on a pay-per-click web site to promote legitimate commercial and personal services which are now a regular part of daily life. In particular, until the Complaint was filed, the Complainant had never alleged that the Respondent has engaged in an inappropriate conduct in the use of the domain name.
When the Complaint was filed the Complainant alleged that the Respondent had used the domain name to divert Internet users to websites that offer goods competing with those of the Complainant. It will be seen from footnote 1 to the majority opinion just what the panel thought of that submission and the dubious evidence offered in support of it. The result is that there is no evidence that the Respondent has used the domain name to promote goods or services in competition with the Complainant or in an inappropriate way.
That being so, the only basis for the Complainant’s complaint is that it has a trademark for CEAT and that this should be a valid ground for prising the domain name from the Respondent 10 years after it registered it and after 10 years of legitimate use. The Complainant is an Indian tyre manufacturer with trademarks for CEAT in India and overseas and it says in effect that the Respondent had, not actual, but constructive knowledge of its trademark and hence must have had that in mind when it registered the domain name. From that, according to the Complainant, flow the consequences that the Respondent has no right or legitimate interest in the domain name and that it was registered and used in bad faith.
The basis for the assertion that the Respondent must have known of the Complainant’s trademark is said to be the fame of the Complainant and its “stellar reputation”. The evidence is that the Complainant is a large, respected and successful Indian company. But the evidence is not that it is or was on January 24, 2001 7 so well known internationally that the Respondent must reasonably have known of its existence. For instance, the Complainant says that in 2009 it was awarded the Readers Digest Trusted Brand Gold Award, which is true, but a moment’s research shows that this award was a domestic Indian award and solely for the tyre industry in India, not an international award and there is little reason why the Respondent or anyone else outside India would have known of it.8 The other awards won by the Complainant and relied on by the Complainant were also substantially local Indian awards and in any event were for the years 2006-2008 and hence of little probative value on the issues at stake in this case. Nor is there evidence of an overseas presence outside India such that the Respondent knew or should have known of the Complainant or its trademark. Indeed, the evidence 9 shows that Pirelli & C.S.p.A assigned worldwide rights in the trademark CEAT to the Complainant as recently as October 6, 2010. In general, the reality that emerges from the evidence is that the Complainant is now a successful and highly regarded Indian company, but not one of such international standing that there is any reason to suppose that the Respondent knew of it or should have known of it when it registered the domain name or at any other time prior to the filing of the Complaint. There is simply no evidence to that effect although such evidence, if it exists, could have been produced by the Complainant.
That being so, it is hard to see why the Respondent did not have a right to register the domain name or how its doing so and using it for legitimate purposes like advertising general goods and services amounts to bad faith.
The majority say, first, that the acronym has no dictionary meaning and that accordingly the legitimacy that might come from using the name for its generic or descriptive value cannot apply. The decision cited in support, Ustream.TV, Inc. v. Vertical Axis, Inc, WIPO Case No. D2008-0598, does not support that proposition. Moreover, there are many decisions, referred to below, that hold the opposite, namely that an acronym, subject to safeguards, may give rise to a legitimate interest. An acronym has its own meaning and a unique value because of its short length, unusual combination of letters and sounds and because it can be used for general identification or branding as is universally practised in the commercial world today. It is therefore appropriate that such an acronym should give rise to a legitimate interest in a domain name provided there is no evidence or inference or even suspicion of abuse by the registrant of the trademark owner’s rights. To hold that such a valuable word cannot be used as a domain name simply because “the domain name is a trademark and has no descriptive meaning” is not supported by the Policy and is a very severe restriction on the right to register a domain name that is not contemplated by ICANN in its policies or practices. ICANN has made it perfectly clear by paragraph 2 of the Policy that the obligation on registrants is not to register a domain name that “violates another party’s trademark rights”; it is not a prohibition on registration that “the domain name is a trademark and has no descriptive meaning”. That is simply a rewriting of the Policy that is entirely unsupported. Clearly, registering a word that both parties say is an acronym and using it for purposes unconnected with the Complainant or its activities does not violate the Complainant’s trademark rights or the Policy.
The same analysis applies to bad faith. The majority say the Respondent has been “willfully blind” to whether the domain name violates the Complainant’s trademark rights. I respectfully disagree with that conclusion, which is not supported by any evidence at all. The Declaration of the Respondent’s Manager of Syndication & Sales, which explains it business model and the reason why it bought the domain name, would appear to suggest the opposite and the fact that the Respondent was alert to the commercial value of generic, descriptive and short letter domain names. Indeed, its is not willful blindness to buy a domain name that is an acronym and a 4-letter word that may be of value to a commercial party other than the Complainant who wants a short easy-to-remember word, a catchy word to describe a new company or product or an organization or business the acronym of which spells out the word “ceat”. No-one who has been through the soul-destroying process of trying to find a short, phonetic domain name with the right letters could possibly disagree with that view.
That is so with respect to the requirement that the Respondent has no right or legitimate interest in the domain name and also with respect to the requirement that the Respondent registered and used the domain name in bad faith.
More detailed findings of dissenting opinion
Rights or legitimate interests
The Respondent’s argument was that it had a right or legitimate interest in the domain name because the domain name is an acronym and/or a 4 –letter combination and, as such, the Complainant could not have exclusive rights to it as against the Respondent or anyone else. That would seem to be so as a matter of common sense and it is supported by previous UDRP decisions dating from the very beginning of the UDRP. Thus, as early as the year 2000 it was decided in Tenenhaus Philippe v. Telepathy, Inc, NAF Claim No. 94355 that the Complainant trademark owner did not have exclusive rights to the acronym DAF, as many other parties also used it. Likewise in 2000 in Kis v. Anything.com Ltd, WIPO Case No. D2000-0770 the legitimate interest in short –letter domain names seems to have been confirmed by that panel’s statement that :
“The Domain Name at issue here is a three-letter second-level domain within the popular ".com" top-level domain. All or nearly all of the three-letter names have long been taken; respondent itself holds a number of other short domain names (as reflected in Network Solutions' Whois database), including "an.com", "hw.com", "vz.com", "xv.com", "yz.com", "zw.com, "aex.com", "fii.com", "ldn.com", "lna.com", "mhi.com", "nnc.com", "otl.com", "tbj.com", "tca.com", "ukt.com", "vaz.com", "vdj.com", "wla.com", and probably many more. Respondent appears to have selected the Domain Name "kis.com" because of its length (if not because it represents an acronym for the Korean Information Site), rather than because it corresponds to Complainant's trademark -- indeed, it seems unlikely that Respondent was even aware of Complainant's trademark when it selected the domain name.”
In the year 2002, in Trans Continental Records, Inc v. Compana LLC, WIPO Case No. D2002-0105 a further panel again held that the Complainant had not established the lack of a right or legitimate interest in the acronym in the domain name <LFO.com>, although the Complainant had a trademark for LFO.
More recently, in 2008, it was held in BioDelivery Sciences International, Inc. v. HLK Enterprises, Inc. c/o Domain Admin, NAF Claim No. 1175189 that there was a legitimate interest in the domain name <bdsi.com> for the reason that:
“However, based on the fact that the disputed domain name and Complainant’s mark contain only four letters that could stand for many things unrelated to Complainant’s business, the Panel finds that Respondent’s use of the disputed domain name as a portal website is a showing of rights or legitimate interests under Policy paragraph 4(a)(ii). See Louis Vuitton Malletier S.A. v. Manifest Info. Servs., NAF Claim No. 796276 (concluding that the <lv.com> domain name consisted of two letters that could stand for many things and that therefore the respondent could establish rights or legitimate interests in the disputed domain name despite the complainant having rights in the LV mark).” (Emphasis added).
To the same effect was Banca Monte dei Paschi di Siena S.p.A v. Charles Kirkpatrick, WIPO Case No. D2008-0260 where the panel highlighted the significance of short –letter expressions that have meanings other than those claimed by the Complainant by noting:
“The Respondent was at the time of registration, of the view that no one company could claim exclusive rights in MPS because it stood for so many things. From its own searches of the term “MPS”, the Panel finds the Respondent’s view reasonable…”
Specifically with respect to acronyms the panel said: “The Panel acknowledges that MPS appears to be an extremely common 3-letter combination which can relate to a number of third parties other than the Complainant. MPS is also an acronym for a substantial number of things, including systems, societies, and syndromes.”
Thus, if authority were needed for it, these cases show that UDRP panels have consistently endorsed the thrust of the Respondent’s argument and this panelist is not aware of any decisions inconsistent with that point of view.
The majority claims that such a principle cannot apply “where the domain name is a trademark and has no dictionary meaning…” and that such an exclusion applies in the present case because “(t) here is no dictionary meaning for the term “CEAT””. It is clear from previous decisions that the first part of that statement is, with respect, not correct, as an acronym may give rise to a right or legitimate interest even if it is a trademark. Nor is it a requirement of the Policy or any relevant law that an acronym must have a dictionary meaning; many, if not most, acronyms would have no dictionary meaning, some have many meanings, some have whatever meaning the user gives to them and others have value simply because they are short , catchy and easy to remember.
Nor does the decision cited by the majority, Ustream.TV, Inc. v. Vertical Axis, Inc, WIPO Case No. D2008-0598, show that the acronym cannot be legitimate as a domain name if it “has no dictionary meaning.”. The point of that case was that the Respondent was apparently using the domain name to promote products within the Complainant’s line of business, the very opposite of what happened in the present case.
Clearly, however, the right to register such acronyms cannot be unlimited. Knowing of a complainant’s trademark, registering a domain name to copy the trademark or using it to trade off it or to target the trademark owner or act inappropriately towards it must put the registrant in a different position and put at risk its claim to have a right or legitimate interest in the domain name. But in the absence of such factors, the registrant has as much right as anyone else to use expressions such as acronyms, generic, dictionary words or other domain names made up from a small number of letters.
Accordingly, the principle is clear enough and it remains to be seen if there is anything in the evidence to suggest some inappropriate conduct by the Respondent that might negate its right or interest in the domain name. The entirety of the evidence is that in the 10 years or so during which the Respondent has held the domain name, it has not advertised any of the Complainant’s goods or services or used the domain name in any way to harm the Complainant or its business.
The only criticism of its conduct relied on by the majority is that it’s advertising links “are not related to the Complainant’s business (emphasis added).” Had such links related to the Complainant’s business, or to its competitors, a case could have been made out for the Respondent acting deceptively, but as the links are nothing more than promotions for general goods and services which are not misleading or contrary to the Policy or any relevant law, the Complainant cannot be harmed in any way by their presence and, indeed, has not complained in these proceedings that it has been so harmed.
For these reasons and on the evidence before the panel, the Respondent had the right to register the domain name and has a legitimate interest in it. It is a recognised acronym, as much a part of the use of the English language as a dictionary word and it has not been used in any way to target or harm the Complainant.
Registered and used in bad faith
The majority is correct is putting it that a registrant cannot be “willfully blind to whether the disputed domain name may violate trademark rights” if it is advancing that obligation as a guide or an aid in assessing the evidence. The primary obligation on a registrant is set out in paragraph 2 of the Policy and that obligation is to determine if its registration violates another party’s trademark rights. Thus the primary function of the Panel is to see if a registrant took reasonable steps to live up to that requirement. It should also be remembered that the Complainant’s case was that the Respondent had “constructive notice” of its trademark, that the Respondent was using a privacy shield and that the Respondent was not using the domain name for a legitimate offering of goods and services but had offered it for sale.
The first of those alleged requirements is generally not accepted and it should not be accepted in the present case, as actual notice of the existence of a trademark is more usually looked for: see the nine decisions cited as “decisions that have refused to recognize constructive notice for the purpose of paragraph 4(a)(iii) of the UDRP” in Lindsey, International Domain Name Law – ICANN and the and the UDRP, p.384.
As has already been explained, there is no evidence that the Respondent had actual knowledge of the Complainant or its trademark and there is no evidence and no reason to suggest that the Respondent should be fixed with that knowledge. Had the name been Dunlop or Pirelli, that fact could fix the Respondent with actual knowledge as it could be assumed that it actually knew of such a famous brand. But the Complainant in 2001, so far as we know, had minimal overseas exposure and if there is evidence of a substantial overseas presence it could have been produced.
It is also generally accepted that the use of a privacy shield can hardly be sufficient by itself in proving something as significant as bad faith. In the present case, the name and address of a well known Registrar was provided, there is no suggestion of deception or the provision of false information and the privacy shield did not stand in the way of the present proceeding.
Nor is a general offer to sell contrary to the Policy as it is outside the specific requirements of paragraph 4(b)(i) of the Policy, which requires proof of an intention to sell to “the complainant who is the owner of the trademark or service mark or to a competitor of that complainant.” Clearly this requirement was carefully crafted as it would impose an excessive and unreasonable restraint of trade to prohibit all sales of a general nature. It is true that the requirements of paragraph 4(b) are non-exclusory, but it should be a matter of concern to suggest that where a requirement is not proven, the Policy simply be redrawn to put a more onerous burden on one side or the other. Normally, other and additional elements showing bad faith should be established, rather than a general offer to sell and in the present case there are none
Moreover, it is untrue to say that the domain name has been used improperly, as there is no evidence to suggest that Internet users are, as the Complainant put it, “diverted to third party websites, offering goods competing with those of the Complainant.”
Finally, there is an air of unreality about the submission that the Respondent was actuated by bad faith. The evidence on the record is that the Complainant has 17 domain names using the word “ceat”. We do not know, but it seems to have been largely satisfied with its Indian domain names, perhaps because it was predominantly operating in India. More importantly, it is impossible to believe that when it registered them, for example <ceat.in> on February 10, 2005, <ceattyres.com> on September 28, 2006 > or <ceattires> on April 21, 2005, it did not notice that the Respondent had registered <ceat.com>, as long ago as in 2001. Despite this, it apparently made no protest and did not make the present claim of bad faith until the end of 2011. The history of this matter would therefore suggest that the Complainant has not, in the past, ever believed that the Respondent acted in bad faith or made any claim to that effect, which considerably weakens its claim on this head of the Policy.
The Complainant therefore also fails, in this Panels view, in making out its case that the domain name was registered and used in bad faith.
In my opinion it is not necessary to deal with the issue of laches or delay, as the Complaint should be denied on more substantial grounds, but the unexplained delay on the part of the Complainant in bringing these proceedings must cast doubt over its case and make it impossible in my view, when so much of the evidence is equivocal, to find bad faith registration and, in particular, bad faith use. How can it be bad faith use when the party complaining about it does not volunteer what was going on during the ten years of the alleged bad faith and why, if it was so bad, it did not complain about it earlier? So the delay is an aid in reaching the conclusion on element 3.
Hon N A Brown QC
Dated: February 20, 2012
1 The dissent cites several cases to support the contrary notion that an acronym, which has no descriptive or generic meaning, can give rise to a legitimate interest. Not only is that position inconsistent with the consensus view as reported in the WIPO Decision Overview 2.0, but also, the cases cited are either not on point or directly contradict that view. In Banco Monte dei Paschi di Siena S.p.A. v. Kirkpatrick, WIPO Case No. D2008-0260, for instance, the panel did not make a determination on whether the respondent had a legitimate interest in the disputed domain name, rather the dispute turned on an absence of bad faith. In three of the other cases cited by the dissent, there was a clear link between the generic or descriptive meaning of the acronym used in the disputed domain name and the content of the website, which is simply not the case here. See Kis v. Anything.com Ltd., WIPO Case No. D2000-0770 (respondent used acronym “KIS” in domain name for page entitled “Korean Information Site” featuring links to websites with information about Korea and Asia); Louis Vuitton Malletier S.A. v. Manifest Information Services, c/o Manifest Hostmaster, NAF Claim No. 796276 (respondent used acronym “LV” in domain name to host a web portal for Las Vegas businesses); Trans Continental Records, Inc. v. Compana LLC, WIPO Case No. D2002-0105 (respondent registered <LFO.com> with intent to use as part of a vanity e-mail address business). The majority prefers to follow the consensus view, as expressed in the WIPO Decision Overview, that, “where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP. . . By contrast, where such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion.” WIPO Decision Overview 2.0, paragraph 2.6.
2 The Complainant suggested that the PPC parking page contained advertisements for competitive tire manufacturers. However, from the materials submitted to the Panel, the Panel could not tell how those printouts were generated. The Panel did not itself see any tire advertising on the home page, nor did the printouts submitted by the Complainant appear to show tire advertising on the home page. Because the Panel could not tell whether those PPC links were generated based on a search on the PPC page for “tyres” or “tires,” the Panel has decided to disregard that evidence because it is not sufficiently reliable. See Compart AG v. Compart.com / Vertical Axis, Inc., WIPO Case No. D2009-0462.
3 The dissent suggests that the Respondent could not have determined whether its domain name registration infringed on the Complainant’s rights because the Complainant was based in India and its product had not yet achieved global fame and recognition. The dissent, however, ignores the fact that the Complainant had a valid trademark registration for CEAT in Canada – Respondent’s domicile – at the time the domain name was registered (and indeed for decades before), clearly suggesting some presence by the Complainant in Canada. Whether a complainant’s mark is famous or not is irrelevant to the inquiry required by paragraph 2 of the Policy. What matters for purposes of paragraph 2, is that the respondent must engage in at least some check to see whether its domain name will infringe on a trademark. Had the Respondent undertaken the minimal effort of searching the Canadian trademark database before registering a domain name including the acronym “CEAT,” the Complainant’s rights in that mark would have become immediately evident to the Respondent. Its failure to undertake this minimal effort suggests bad faith.
4 The Respondent argues that the Complaint should be denied because the Complainant has allowed the Domain Name to be used unchallenged for over ten years. The consensus view is that the doctrine of laches as such does not generally apply under the URDP. See WIPO Decision Overview 2.0, paragraph 4.10 (“Panels have recognized that the doctrine or defense of laches as such does not generally apply under the UDRP, and that delay (by reference to the time of the relevant registration of the disputed domain name) in bringing a complaint does not of itself prevent a complainant from filing under the UDRP, or from being able to succeed under the UDRP, where a complainant can establish a case on the merits under the requisite three elements. Panels have noted that the remedies under the UDRP are injunctive rather than compensatory in nature, and that a principal concern is to avoid ongoing or future confusion as to the source of communications, goods, or services.”). See also Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011 (considering, but rejecting, the suggestion of The New York Times Company v. Name Administration Inc. (BVI), NAF Claim No. 1349045, that laches should apply in UDRP proceedings).
7 The date when the domain name was registered.
9 Complaint, page 12, paragraph 14.m.