By Zak Muscovitch.

The domain name, DJBLACKNMILD.COM was ordered transferred to cigarette company, John Middleton Co. by an NAF Panel in a decision dated, January 7, 2015.

The Respondent, was “j alvarez” from Alabama, USA. What caught my attention here, is the oddity of someone purportedly cybersquatting on a cigarette brand by supposedly adding “DJ” to it.

The Complaint was undefended and the Panelist noted that the Complainant had registered trademark rights for BLACK & MILD, including USPTO registration number 1,177,552, registered November 10, 1981.

The Complainant thereby met the identical/confusingly similar part of the three-part UDRP test, since the domain name merely added “DJ” to the Complainant’s mark.

Secondly, the Complainant also succeeded under the ‘Legitimate Interest’ part of the test, since there was no evidence that the Respondent was ‘known as DJBLACKNMILD’ and the domain name was merely used for general advertising links.

Thirdly, the Complainant succeeded under ‘bad faith registration and use’ of the domain name, due to its ‘non-use’.

 But again, why would somebody add “DJ” to a cigarette brand? Well, I Google searched “DJBLACKNMILD”, and I found that there is a Louisiana based DJ called, “DJ BLACK N MILD”. He even has his own Facebook page apparently.

So, it could be that this “j alvarez” was cybersquatting, but not on the John Middleton Co. cigarette brand, but rather, on the DJ.


By Zak Muscovitch.

I took a look at NAF decisions so far, for this month of September, 2013, and have made some interesting, but not surprising, observations. When a Respondent defaults by failing to file a Response, the NAF nearly always appoints one of a very select group of panelists. That means that there is group of very experienced NAF panelists, nearly always gets the usually easy and lucrative cases.

NAF has 134 panelists on its roster, but has apparently focused its “active” roster to only a select few. With very few exceptions, it is these select panelists which get nearly every default case. So, if you are a complainant, you could nearly “count on” one of the following panelists hearing your case.

Sandra Franklin is the NAF’s “go to” panelist these days, according to the September statistics. She decided a total of about 9 cases that were released so far in September. Terry F. Peppard (8 cases), John J. Upchurch (7 cases), and Paul M. DeCicco (6 cases) came in a very close second and third place, respectively.

After that however, the group’s cases got a lot thinner, with James A. Carmody (4 cases), Carolyn Marks Johnson (4 cases), Debrett G. Lyons (4 cases), Tyrus Atkinson, Jr. (3 cases), Karl V. Fink (3 cases), David A. Einhorn 2 cases), Bruce Myerson (2 cases), Charles McCotter, Jr. (2 cases), Neil Anthony Brown (2 cases), and Darryl C. Wilson, Houston Putnam Lowry, and Bruce Myerson (each with 1 single case).

Accordingly, out of the 134 Panelists, it certainly appears that (at least currently based upon September, 2013 stats alone), about a dozen UDRP panelists do the lion’s share of work for the NAF.

There is a good argument for using a handful of the most “experienced” panelists to decide cases, as ostensibly the most experienced panelists are the most “able” and “reliable”. On the other hand, one cannot but wonder why having a roster of 134 panelists is then necessary at all, considering that most of these panelists are not usually selected at all, except when a case is defended and panelists are nominated by the parties.

Interestingly, two recent default decisions that have attracted some criticism recently, namely the uniprotein.com case and the gongshow.com case, were of course decided by two of the above-mentioned select panelists, i.e. Terry F. Peppard and Carolyn Marks Johnson, respectively. Nat Cohen wrote an interesting piece, about the uniprotein.com case, and Michael Berkins covered the gongshow.com case on TheDomains.com.

Under the UDRP, when a domain name registrant fails to defend the proceeding by filing a Response, the panelists are not supposed to give the complainant an automatic “win” or “default judgment”, as is the case in many court proceedings. Nevertheless, when a party does not defend, certainly a panel is entitled to make adverse inferences and to rely upon only one side of the story.

“Default cases” are the most common type of UDRP case, and the panelists who hear these cases serve a very important function. I am always impressed by panelists who write thoughtful and comprehensive decisions in default cases, as it shows that they take their work seriously, and that they have avoided the obvious temptation to disregard a party since they have shown disinterest in the proceeding by failing to respond.

Below is a simple chart of the default case distribution so far this month of September, 2013.

Panelist
# of Cases
Domains
Sandra Franklin
9
jjshousebridal.com
diners.com.co
christrianmingle.com
advanceautpparts.com etc.
lululemonaustralia.com etc.
bhomedepot.com
abcliquor.com
foxsports1.tv etc.
accuridewheels.net
Terry F. Peppard
8
disneyxd.biz
littlesteviewonder.com
homeedepot.com
bedbathandbeypnd.com
musiciansfreind.com
homedpot.com
epsonclinic.com
uniprotein.com
John J. Upchurch
7
freshlooksites.com
regions-banking.com
redbuttegardens.com
aimstrongceiling.com
mbbank.net
benefifocus.com
homedepiot.com etc.
Paul M. DeCicco
6
skypeplus.org
socialyahoo.com
enterprise.tv
agrainger.com
adbanceautoparts.com etc.
alienware-store.com
Carolyn Marks Johnson
4
marlborosucksballs.com
winkellychevrolet.com
gongshow.com
freeetaxusa.com
James A. Carmody
4
twcsportnet.com
disneyapps.com
chanluujewelry.org
boeingtotalaccess.com
Debrett G. Lyons 
4
statefarmcenter.com
newport-cigarette.com
jomedepot.com>
chanluustoreonline.com etc.
David A. Einhorn
2
newportcigarettecoupons.com
universalnutrition.net
Bruce E. Meyerson
2
newportcigarette.com2
marlborovape.com
Charles K. McCotter, Jr.
2
bestchanluu.com
osandroid.com
Neil Anthony Brown QC
2
bedbatheandbeyond.com
shopswwe.com etc.
Hon. Karl V. Fink
3
redbuttegardens.org
golfsgalaxy.com
fuddruckkers.com
Darryl C. Wilson
1
alaksaairlines.com etc.
Houston Putnam Lowry
1
skype2ip.org
Bruce Myerson
1
jbrandtr.net


By Zak Muscovitch.

As a trademark owner you have a great opportunity to take advantage of ICANN’s lackadaisical domain name dispute resolution system. Trademark owners are currently free to select one of four ICANN-accredited UDRP domain name dispute resolution providers and each of these arbitration services has their own brand of justice. Selecting your brand of justice can give you the edge that you need to win a UDRP proceeding.

UDRP dispute resolution providers such as the NAF and WIPO have adopted their own “supplementary rules” and these  supplementary rule sets can really affect how cases are run in some important ways. The authority for UDRP dispute resolution providers to enact their own supplementary rules can be found in ICANN’s own principal rule set:

“Supplemental Rules means the rules adopted by the Provider administering a proceeding to supplement these Rules. Supplemental Rules shall not be inconsistent with the Policy or these Rules and shall cover such topics as fees, word and page limits and guidelines, file size and format modalities, the means for communicating with the Provider and the Panel, and the form of cover sheets.”

Although the above-cited ICANN provision apparently restricts the scope of any supplementary rules, since ICANN hasn’t enacted any standards for UDRP dispute resolution providers, each has been largely free to create their own rule sets. Accordingly, knowing which UDRP provider offers trademark owners an edge in terms of their respective supplementary rules, can be an important consideration when attempting to use the UDRP to recover a domain name from a cybersquatter, or at least someone who has a domain name that you want for yourself.
Below are some of the supplementary rule provisions that trademark owners can take advantage of in order to get a leg up in legal proceedings:

1. NAF Often Gives Respondents Up to 10% More Time to Respond

Normally a UDRP Response must be filed within 20 days of the commencement of the proceeding. But under NAF’s Supplementary Rules, if the due date falls on a Saturday, Sunday, or US federal holiday, then the Respondent will get an automatic extension of time to until the next regular day. This means that by selecting the NAF, you may be unwittingly providing a domain name owner Respondent with an extra 2 days or more, which is a 10% bonus for the Respondent. With such a tight timeline for a Response in the first place, an extra 10% time bonus is a lot, and therefore selecting WIPO over NAF is a good idea if you want to deprive the Respondent of this additional time to respond.
On the other hand, there is nothing quite as surprising to a US-based respondent, as when he tries to file his Response with WIPO on the due date, only to find out that since WIPO is in Geneva, Switzerland, the due date has already passed due to Geneva being 6 – 9 hours ahead. Accordingly, don’t write off WIPO just because NAF gives Respondent’s a couple extra days on occasion, since the time difference in Geneva can sometimes catch a domain name owner flat-footed.

2. WIPO Rules Don’t Let You File an Additional Submission

When it comes to ensuring that the Panel gets to read every last argument and document that you would like to submit, NAF has WIPO beat. The NAF has a supplementary rule that allows a trademark owner to submit not just one filing, but two. Even though the UDRP is supposed to consist of only a Complaint and a Response unless the Panel makes an Order that a party provide further material, NAF has come up with an excellent rule for Complainants since they openly invite “Additional Submissions” for the low cost of $400. This allows you to read the Response and then file a rebuttal that includes everything that you may have forgotten to include in your initial Complaint, and also allows you to respond to all the arguments and documents submitted by the Respondent. 
Don’t be surprised however if you get a Panel that doesn’t agree to consider your Additional Submission, as some Panelists feel that even though the NAF has enacted these supplemental rules, that the Panel doesn’t have to, and should not, consider any such additional submissions except in exceptional circumstances. In fact, NAF provides a short warning regarding this, as it tells you on its website that it is really up to the Panel to decide whether to consider your additional submission, even if you have already paid the $400.00. Accordingly, a clever trademark owner will bring its complaint to the NAF so that it at least has a shot of getting in a second submission. $400 is a small price to pay to get this amazing second submission opportunity, especially since nobody knows when ICANN will close this loophole.
On the other hand, some WIPO Panels will let you file an additional submission for little or no reason at all, even without special rules like NAF. Accordingly, by taking a chance and submitting an additional submission to WIPO, you can get lucky and have it admitted since ICANN has not come out against these unwritten practices.

3. NAF Makes it Easier for Respondents to Put Up a Fight

When shopping for the best domain name dispute resolution forum to use, it pays to shop around. Although NAF offers a better deal than WIPO  at $1,300 compared to WIPO’s $1,500, for filing a UDRP Complaint, if the Respondent decides to fight back with demanding a three-person panel, WIPO gives Complainants the financial edge. WIPO charges $2,000 to a Respondent for the privilege of demanding a three-person Panel, which is $700 more than NAF charges. Accordingly, by selecting WIPO for your Complaint, you can put the financial pressure on a Respondent since he or she will have to cough up an additional $700.

Sure, it will cost you $2,000 as well if you are a Complainant and the Respondent has demanded the three-person Panel, but as a trademark owner who has decided when to bring such a legal proceeding at a time of your own choosing, you will have greater resources and planning behind you, whereas the domain name owner will be usually have a much tougher time coming up with the money on short notice.

On the other hand, as a Complainant, NAF’s fee structure is at least static at $1,300, since at WIPO you get charged an additional $500 (to your original $1500) in the event that a Respondent decides to require a three-member Panel.


By Zak Muscovitch.

Chinese domain name registrants are taking a strong second place after the United States, in being named as respondents in WIPO domain name disputes.

Since 2000, Chinese complainants have only brought a handful of UDRP Complaints to WIPO, with about an average of only 7 per year or so. On the other hand, Chinese domain name registrants are being increasingly named as respondents in WIPO UDRP proceedings.

Although Chinese complainants have only filed 98 WIPO complaints since 2000 (only .38% of all WIPO UDRP complainants), Chinese respondents have been named in a whopping 2,258 WIPO cases, and make up nearly 9% of all WIPO respondents. 

Although Chinese respondents were only named 43 times in 2000, that number has gradually increased all the way to 501 in 2012. Although United States respondents hold a strong first place with nearly 35% of all WIPO cases being made against them, if the numbers continue their trajectory, we will see increased involvement of Chinese domain name registrants in UDRP’s. 

ADNDRC to Become Larger UDRP Player?

What is interesting, is that for some reason, complainants, even when based outside of Asia, are using the ADNDRC particularly where the registrant is located in Asia. Even though such proceedings are often in English, it is apparent that intellectual property counsel are often choosing the ADNDRC to deal with Asian-based cybersquatters, even though they may also use WIPO, NAF, or even the CAC in  many such circumstances. 

Although the Asian-based ADNDRC (Asian Domain Name Dispute Resolution Centre) with offices in Beijing  Hong Kong, Seoul, and Kuala Lumpur, was accredited by ICANN in 2001 as a UDRP dispute resolution provider (shortly after Geneva-based WIPO, Minnesota-based NAF, and the now defunct Canadian-based eResolution), it has not, to-date enjoyed a particularly high profile amongst either North American or European complainants or respondents. 


Nevertheless, according to data from published ADNDRC decisions, it appears to have adjudicated  over 1100 domain name disputes amongst its four offices. In 2012 alone, it adjudicated about 186 domain name disputes. 

From reviewing the domicile of the listed complaints, it appears that although complainants are from all over the world, a disproportionate number are Asian. Furthermore, the vast majority of named respondents in these cases are from Asia and from mainland China, in particular.

Remarkably, some of the world’s major brands are using the ADNDRC for their domain name disputes. Major corporations such as 3M, Apple, Zippo, Seiko Epson, Otis Elevator, Bose, and Siemens, to name but a few, have all used the ADNDRC as complainants. In addition, a wide range of large and small Asian and Chinese companies have used the ADNDRC as well, including such major brands as ZTE, Changi Airport Group, Shangri La Hotels, and Cathay Pacific. 

One possible explanation is that the head offices of many non-Asian multinational companies are referring cases involving Asian cybersquatters to IP counsel in Asia, to deal with. Another more likely explanation, is that where a domain name was registered with a Chinese registrar and the language of the registration agreement is Chinese, for example, pursuant to Rule 11 of the UDRP Supplemental Rules, the UDRP proceeding must be brought in the language of the registration agreement.

From the foregoing, it appears that UDRP domain name disputes will increasingly relate to, and involve Asian, and particularly Chinese-based parties. We can therefore expect the ADNDRC to become increasingly prominent in UDRP case adjudication. When the International Trademark Association has their annual meeting in Hong Kong in 2014, we can also expect to see a more prominent role taken by the ADNDRC as a result.

With the application for ICANN accreditation by Middle Eastern-based domain name dispute provider, The Arab Center for Dispute Resolution (ACDR), if approved, we will perhaps also see an increase in Middle Eastern based complainants as well, although probably not to an extent comparable with the ADNDRC in the short term. 

Since the language of the domain name registration agreement appears to play a significant role in the reason why complaints are brought to the ADNDRC, and since Asian registrars are more common than Middle Eastern ones, the volume of domain name disputes sent to the ACDR once approved by ICANN, would probably not not be comparable to the other regional dispute resolution provider, at least not until greater registrar penetration is achieved throughout arab speaking countries. For example, the only ICANN accredited registrars in the Middle East are in Jordan (1) and the UAE (1). In comparison, there are 32 in China. 

It will be interesting to watch to see if the UDRP continues to greater involve Asian-based parties, and even Middle Eastern-based parties in the future.




By Zak Muscovitch

It boggles the mind that a sophisticated brand owner, represented by sophisticated intellectual property counsel, would make a “rookie” mistake in a domain name dispute, but it happens with surprising regularity.

A trademark owner has two options in a domain name dispute; 
1) The trademark owner can ask the Panel to “transfer” the disputed domain name to the trademark owner; OR
2) The trademark owner can ask the Panel to “cancel” the disputed domain name.
Both options cost the same amount (usually US $1300-$1500) for a single-member UDRP Panel at NAF or WIPO, plus legal fees that usually range upwards of US $2,500 – $5,000. Accordingly, a trademark owner Complainant can incur costs of thousands of dollars in bringing a UDRP domain name dispute, and if fortunate, this will be money well spent, because the Panel will declare the Complainant the “winner”.
But there are “winners”, and then there are real winners. A complainant that requests the UDRP Panel to transfer a disputed domain name is the real winner, because the UDRP costs and fees will have resulted in the trademark owner becoming the owner and registrant of the domain name that was previously held by a cybersquatter. 
The other kind of “winner” however, is really a big loser. By asking the Panel to “cancel” a disputed domain name, you might as well flush your UDRP costs and fees down the toilet. The reason is that “cancellation” merely results in the disputed domain name being taken away from the cybersquatter, and promptly made available again, for anyone at all who would like to register it. In other words, it goes right back into general circulation! And who will register it this time around for 10 bucks? The same cybersquatter who just “lost” the UDRP proceeding? Or perhaps a new cybersquatter? 

So, why would any trademark owner and its domain name lawyer, ever choose to request a cancellation rather than a transfer? Who knows, but it happens. Look at the recent case of  Sanofi v. Domains By Proxy, LLC / domain admin (WIPO D2013-0368). The Complainant was Sanofi of Paris, France, represented by Selarl Marchais & Associés, France. The Domain Name, SANIFI.COM consists of the SANOFI Mark with the letter “o” replaced by the letter “i”. But instead of requesting the transfer, the Complainant requested the cancellation of the domain name. After spending likely thousands of dollars on a domain name dispute, this Complainant may find out the hard way, that it made a mistake by not requesting the transfer, as this domain name will likely be picked up right away, this time by a different cybersquatter, or even the very same one, all for the mere cost of the registration fee of about $10. 


Written by Zak Muscovitch

When a three-member Panel is selected by either the Complainant or the Respondent in UDRP proceeding at WIPO or the National Arbitration Forum (NAF), for example, each party gets to nominate one of the members to the Panel, and each party also gets to provide some input into the selection of the third member of the Panel, who will also act as the Chair of the Panel.

The most important consideration in nominating a panelist is to ensure that your nominees do not include someone who is known for having issued errant or totally unsupportable decision. What this means, in other words, is that if a particular panelist previously ordered the transfer of a domain name, or dismissed a case, when there was no logical or rational explanation for having done so, then you should make every effort to exclude this person from the selection process, as otherwise, rationality predictability will be out the window, at least insofar as that person’s input is concerned.

Nevertheless, even having such a person on the Panel may not be the end of the world, since there are two other members who tend to ameliorate and moderate such a person’s views. That is the beauty of a three-person Panel.

The second most important consideration is to match the subject matter with the Panelist. In cases that involve complex trademark law, one may prefer to nominate a panelist with extensive trademark knowledge. Conversely, if the case involves intricate UDRP Policy issues, perhaps someone who has written scholarly articles on the subject is most appropriate.

The third most important aspect is to nominate panelists who have a track record of making good decisions. This does not mean however, that they tend to side with one side over the other. Most panelists will receive cases which are mainly obvious cybersquatting cases, so if they side with the complainant in these cases, it is no indication at all that they will not give a respondent a fair hearing. Conversely, panelists who have ruled in favour of a respondent domain name registrant on many occasions are likewise not necessarily bad panelists, as they may have been selected by registrants who paid for the three-member panel, and did so because they had a very strong defense, thereby making it unsurprising that the respondent succeeded in such cases.

The main objective is of course to get a fair hearing, and by and large, the panelists are very experienced and fair, at both WIPO and NAF, which are the dispute resolution providers which hear the majority of domain name dispute cases. Retaining a domain name dispute attorney who is experienced in the panel selection process, can be a good idea as it will enable you to better evaluate your nominees to the Panel.


Written by Zak Muscovitch

Nothing is more frustrating for a trademark owner than paying expensive domain name dispute arbitration fees to a domain name dispute resolution provider such as NAF or WIPO, and paying an expensive lawyer to file a complaint for you on top of it, only to later learn that it was all a giant waste of time and money. Unfortunately  this happens all to often to unwary brand owners.

Domain name attorneys are lawyers who practice exclusively or primarily in domain name dispute law, and regularly appear before various online arbitration service providers such as the National Arbitration Forum (NAF), the World Intellectual Property Organization (WIPO), the Czech Arbitration Court Centrer for Internet Disputes (ADR.eu), (and the Asian Domain Name Dispute Resolution Centre (ADNDRC) , in connection with a Uniform Domain Name Dispute Resolution (UDRP) or similar dispute resolution regimes.

Hiring a domain name attorney who is experienced in the intricacies of such procedures and is also up-to-date on case law developments, is crucial for avoiding mistakes and avoiding throwing away money. Experienced domain name dispute lawyers are often different from general litigators and intellectual property lawyers, as they work within the niche of domain name disputes. Accordingly, hiring a generalist, even if it is an excellent and reputable lawyer, can be a mistake if it turns out what you really needed was an expert in domain name disputes. With short time periods, often arcane rules and procedures, and unique policy aspects, an expert domain name attorney can guide you in the right direction from the start, and will often counsel you to not wade into a dispute that you cannot win.


Perhaps the greatest domain name dispute related skill that I am able to offer my clients, is to properly counsel them on their chances for winning a domain name dispute.

After having helped thousands of clients with domain name dispute issues since 1999, I have developed a pretty good nose for gauging the chances of winning or losing a domain name dispute. Once in while a “curve-ball” is thrown, and once in a while the case falls within a small “grey area”, but for the most part, I feel comfortable telling a client, in advance, whether they will win or lose a case.

I am able to do this because I am very familiar with cases that have come before and have already been decided, and have a good feel for what facts are insurmountable and will nearly inevitably lead to the decision that will be made.

For example, when I am contacted by a brand or trade-mark owner, I research the domain name that they are targeting, and determine whether they have “no chance”, absent a careless UDRP panelist, because simply, the targeted domain name was registered prior to the brand even being a twinkle in the eye of the trademark owner. It is the domain name attorneys who do not do this important service for their clients, that end up getting “Reverse Domain Name Hijacking” decisions made against them.

Similarly, when a domain name owner contacts me about a pending domain name dispute notice that he or she received notice of, I research the trademark rights belonging to the complainant, and am usually able to tell the client right away, whether this is a “winnable” case, or whether there is “no hope”. If for example, a domain name owner registered a domain name years after a famous brand was registered as a trademark, and was using the domain name in an infringing manner, and admits to being aware (or was obviously aware) of the pre-existing trademark, then there is no hope of winning the case, absent an errant decision.

There are some cases that fall into a grey area, but I am usually able to also give the client good advice on these cases too. Not every “potentially” winnable case deserves to be defended. One must take into account the costs, the importance or value of the domain name in dispute, and the risk of having a decision go against you.

Accordingly, when a client comes to me with a domain name dispute, I will simply not accept the case unless it is a winnable case, and if it is in the client’s best interest to defend. I hope that this also helps my clients because Panelists will realize that I do not bring frivolous complaints or responses.

So, if I take your case, it means that you have an excellent chance of winning your domain name dispute.

Zak Muscovitch


GOOGLE just lost a dispute over the domain name, Oogle.com. This is the third time that I assisted a client in fending off a UDRP from Google The other cases were over Groovle.com and Goggle.com. Thank you to the Panelists for their time and decision and in particular to their well reasoned explanation of “beneficial ownership” which adds a lot of clarity to UDRP law.. The text of the case is below:

national arbitration forum

 

DECISION

Google Inc. v. Blue Arctic LLC
Claim Number: FA1206001447355

 

PARTIES

Complainant is Google Inc. (“Complainant”), of Mountain View, California, USA, represented by Anne H. Peck, Gavin L. Charlston and Morgan A. Champion of Cooley LLP, Palo Alto, California, USA.  Respondent is Blue Arctic LLC (“Respondent”), of Kissimmee, Florida, represented by Zak Muscovitch of The Muscovitch Law Firm, of Toronto, Ontario, Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <oogle.com>, registered with Moniker.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Douglas M. Isenberg (chair), Reinhard Schanda and Professor David E. Sorkin as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 5, 2012; the National Arbitration Forum received payment on June 6, 2012.
On June 8, 2012, Moniker confirmed by e-mail to the National Arbitration Forum that the <oogle.com> domain name is registered with Moniker and that Respondent is the current registrant of the name.  Moniker has verified that Respondent is bound by the Moniker registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 12, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 2, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@oogle.com.  Also on June 12, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
On July 2, 2012, Respondent submitted a Response.
On July 9, 2012, Complainant submitted an additional statement.  On July 10, 2012, Respondent submitted an objection to Complainant’s additional statement and, “in the alternative,” an “Additional Response of the Respondent.”  The Panel determines that these additional documents were timely submitted pursuant to the National Arbitration Forum’s Supplemental Rule 7 and, accordingly, the Panel accepts them.
On July 12, 2012, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Douglas M. Isenberg as the Chair of the three-member Panel along with Reinhard Schanda and Professor David E. Sorkin as Panelists.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant
In its Complaint, Complainant contends, in relevant part, as follows:
·         Complainant’s search engine “has become one of the largest, most highly recognized, and widely used Internet search services in the world.”
·         “The GOOGLE name was created in 1997 by Stanford Ph.D. candidates Larry Page and Sergey Brin,” and Complainant’s “services have been publicly available under the GOOGLE mark since 1997.”
·         “As reflected in [Complainant’s] trademark registrations and affirmed by [Complainant’s] officers in filings made to the U.S. Patent & Trademark Office under penalty of perjury, [Complainant] has used the GOOGLE mark in U.S. commerce in connection with its services since September 1997 and in connection with other products and services since early 1999.”
·         The Disputed Domain Name was “originally registered on February 7, 1999” and “transferred to the current registrant in late 2004.”
·         The Disputed Domain Name “resolves to a variety of adult websites” and “has previously been used to host websites that blatantly copy the Google logo, recreate the overall look and feel of the Google website, and create confusion as to whether the website is sponsored by, endorsed by, or affiliated with Google.”
·         The Disputed Domain Name is currently being offered for sale “on a common domain name auction site” for $300,000.
·         The Disputed Domain Name is confusingly similar to the GOOGLE trademark because it “merely delete[s]” one letter from a famous mark and “appears intended to capitalize on frequent user misspellings or typographical errors.”
·         Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia,  “the GOOGLE Mark is so well known throughout the world that it is difficult to conceive of any purported rights or legitimate interests Respondent may claim in the Domain Name”; “Respondent is not commonly known as the Domain Name or any name containing Complainant’s GOOGLE Mark” because “there is no indication it is known by that name”; “Complainant has not authorized or licensed Respondent to use any of its trademarks in any way”; the Disputed Domain Name “currently resolves to a website offering sexual services and displaying pornographic and profane content”; the Disputed Domain Name is “an example of typosquatting”; and because “the Domain Name has historically resolved to websites mimicking the look and feel of Google’s home page . . . Respondent is now and has historically been capitalizing on the near identity between the Domain Name and Google’s famous trademark to generate revenue from consumers who are seeking Google’s services and arrive at Respondent’s website by mistake.”
·         Respondent registered and is using the Disputed Domain Name in bad faith because, inter alia, “[t]he fame and unique qualities of the GOOGLE Mark, which was adopted and registered by Complainant years prior to the registration of the Domain Name by Respondent, make it extremely unlikely that Respondent registered the Domain Name without independent knowledge of Google”; “even constructive knowledge of a famous mark like GOOGLE is sufficient to establish registration in bad faith”; “[p]rior use and registration of the Domain Name by a third party is irrelevant for purposes of evaluating Respondent’s bad faith”; “Respondent’s current use of the Domain Name to divert Google’s users to a fee-based sexual networking site that contains pornographic and vulgar content establishes Respondent’s bad faith”; “Respondent’s recent use of the Domain Name to obtain users’ personal information through scam survey sites is evidence of phishing and represents bad faith” (internal punctuation omitted); “it is impossible to conceive of any potential legitimate use of the Domain Name”; “[w]here a domain name is so obviously connected with such a well-known name and products, its very use by someone with no connection with the products suggests opportunistic bad faith” (internal punctuation omitted); “Respondent’s use of Complainant’s famous trademark in the Domain Name, combined with the offer to sell the domain for hundreds of thousands of dollars, amounts to bad faith use of the Domain Name”; and ““registration and use of a domain name that differs from Complainant’s mark by only the deletion of one letter indicates ‘typosquatting’, which is evidence of bad faith registration and use” (internal punctuation omitted).
B. Respondent
In its Response, Respondent contends, in relevant part, as follows:
·         A declaration provided by Christopher Neuman states that he is “the sole member and manager of” Respondent and that he “personally registered” the Disputed Domain Name on or about February 7, 1999, when, at the age of 13, he “carried on business under a fictional unregistered business name, namely Fusion3k Designs, and accordingly registered the Domain Name under Fusion3k Designs.”
·         In the declaration, Neuman states that he has “been the continuous and uninterrupted beneficial owner of the Domain Name since I originally created it on February 7, 1999,” and that the “only reason why I ever changed the nominal registrant details was to reflect my current business name, which evoled from Fusion3k Designs to Blue Arctic (another unregistered business name) to most recently Blue Arctic LLC, a registered company.”
·         The declaration further states: “My reason for registering the Domain Name was because in or about 1998 or 1999, I had become acquainted through the online world of software programming and website design, with another young programmer named Justin Tunney, who went under the online moniker of ‘Oogle’ or ‘Criminal Oogle’.”
·         The declaration further states: “Through my friendship with Oogle, I learned that Oogle had a personal website associated with the domain name, [<oogle.net>], which Oogle had selected due to Oogle’s online moniker of ‘Oogle’.  I noticed that Oogle had not registered [<oogle.com>] and proceeded to register the Domain Name with the intention of collaborating on a website with Oogle.”
·         The declaration further states: “At no time prior to my registration of the Domain Name did I ever for even a second consider that [<oogle.com>] was an attractive domain name due to the existence of [<google.com>] or the Complainant’s trademarks.”
·         The declaration further states that Neuman previously used the Disputed Domain Name in connection with an “online shopping website” and later intended to use it as “a forum for programmers.” 
·         The declaration further states: “In 2010 there were a few weeks where the Domain Name displayed a certain logo which was created and uploaded by a friend of mine, David Shiffman.  This logo resembled the Google logo but it had originally had a playful tag line of, ‘Due to the economy the G has been laid off’.  At the time we thought it was a funny and innocent usage, however upon reflection, I had it taken down after only a matter of weeks.”
·         The declaration further states: “The Domain Name was also temporarily used in connection with adult matchmaking services, but I thought that this was lawful and permissible.”
·         The name “Oogle” “has been used by numerous parties and business for many years, in connection with all manner of goods and services that have absolutely nothing to do with the Complainant.”  In support thereof, Respondent cites the following U.S. trademark registrations: Nos. 820,267; 1,329,546; 1,392,389; 2,496,755; 3,889,157; and 2,883,240.
·         “Harvard University has published a study which shows that over 15% of Americans use the term ‘Oogle’ as a word to describe gawking at someone, and 4.5% of Americans use the term ‘ogle’ and ‘oogle’ interchangeably.”
·         With respect to paragraph 4(a)(i) of the Policy: “The Respondent acknowledges that the Complainant has several registered trademarks for GOOGLE in connection with its widely known search engine and related services” and “[t]he Respondent further acknowledges that the Domain Name is sufficiently ‘confusingly similar’ to the Complainant’s current trademark rights for the purposes of meeting this part of the three-part test under the UDRP, based upon the Complainant’s date of first use of its registered trademarks.”
·         With respect to paragraph 4(a)(ii) of the Policy: “Years before any notice of this dispute, the Domain Name was used in connection with a bona fide offering of goods and services, namely the shopping website from 2000-2002 . . . and the programming related website from 2002-2003.”
·         With respect to paragraph 4(a)(iii) of the Policy: The Disputed Domain Name could not have been registered in bad faith because “the evidence shows that there can be no doubt that the genuine reason for registering the Domain Name in the first place, had nothing to do with the Complainant, who was barely known at that time in 1999”; changes in the name of the registrant of the Disputed Domain Name since 1999 are irrelevant and do not constitute a new registration because “Christopher Neuman has had uninterrupted and continuous beneficial ownership of the Domain Name from its original creation to-date.”
C. Additional Submissions
In its additional submission, Complainant contends, in relevant part, as follows:
·         “[O]ther than the testimony of Mr. Christopher Neuman, self-identified as the ‘sole member and manager’ of Respondent, Respondent provides no documentary evidence setting forth the ownership of the Domain Name prior to December 13, 2002, or the transfer of ownership from Fusion3k Designs, the owner of the Domain Name as of that date, to Respondent.”
·         “[T]he uncontroverted evidence establishes that Respondent has, since coming into possession of the Domain Name in late 2004, repeatedly and willfully used the Domain Name to take advantage of Google’s users and to trade off the goodwill in and extensive investment Google has devoted to the protection of the famous GOOGLE Mark.”
·         “[W]hile Respondent goes to great efforts to cast itself in a positive light, its knowing and willful abuse and deception of Google’s users over the course of many years, for its own financial gain, demonstrates a pattern of behavior that undermines its claims of good faith and makes clear its wrongful intent and motivation in registering and using the Domain Name.”
·         Complainant sent a demand letter to Respondent in September 2009; initially, Respondent offered to sell the Disputed Domain Name for $600,000 and, later, Respondent stopped used the Disputed Domain Name.  Then, in March 2010, Neuman contacted Complainant and indicated that he was “very interested in setting up a parking page for [<oogle.com>],” which would “give Google full access to the contents displayed on [<oogle.com>].”
·         “[T]he GOOGLE Mark had become very well known and recognized far prior to February 1999,” so “Respondent’s attempt to deny bad faith on this basis is therefore without merit.”
·         “Mr. Neuman avers that, even as a thirteen-year-old child, he was a ‘programmer and website designer’ and participated in ‘online chats and forum postings’ relating to ‘software programming and website design.’ . . . An individual with such experiences was likely to be highly aware of all available internet search engine options in 1999, and in particular, the well-regarded and highly publicized Google search engine.”
In its additional submission, Respondent contends, in relevant part, as follows:
·         “[T]he earliest available historical Whois information from 2002… clearly shows that Christopher Neuman was the administrator of the Domain Name, with identical address as the registrant, which was an unregistered business name that Christopher adopted at the age of 13.”
·         “[T]here is no reasonable basis for creating the fiction that the name was registered ‘like new’ by a stranger” in 2004.
·         A letter from Respondent’s attorneys dated September 21, 2009, in response to the demand letter sent by Complainant, states: “Our client registered [<oogle.com>] in February 1999 based on the nickname of one of our client’s friends, a programmer who went by the name ‘oogle’ on various message boards in the 1990’s . . . . In registering the domain name [<oogle.com>], our client was not in any way referring to Google, Inc.”
·         “[T]here is nothing inherently wrongful in offering to sell a domain name for in excess of out of pocket expenses, when the domain name was registered in good faith to begin with, i.e. was not registered because someone else‘s trademark rights.”

FINDINGS

The record does not support a finding that the Disputed Domain Name has been registered and is being used in bad faith.  As a result, and for the reasons set forth below, the Panel makes no findings with respect to whether the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights or whether Respondent has rights or legitimate interests in respect of the Disputed Domain Name.

DISCUSSION

Paragraph 15(a) of 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 Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2)  Respondent has no rights or legitimate interests in respect of the domain name; and
(3)  the domain name has been registered and is being used in bad faith.
Where a complainant does not prove one or more of these elements, the panel is compelled to issue a decision denying the complaint, regardless of the complainant’s ability to prove the other element(s) required by the Policy.  Accordingly, under such circumstances, any discussion by the panel with respect to such other element(s) would be unnecessary in reaching a decision to deny the complaint. See, e.g., Admerex Limited v. Metyor Inc., D2005-1246 (WIPO June 7, 2012) (“[s]ince the Complainant must prove all three elements of the Policy, and since the Complainant fails under the third element . . . it is not necessary to make a finding under the second element of the Policy”); Micro Electronics, Inc. v. MicroCenter, D2005-1289 (WIPO Jan. 31, 2006) (finding that, where the complainant failed to prove the second element of the Policy, “there is no need for the Panel to address the third element of the Policy”).  Therefore, given that the Panel in the instant case finds, as discussed below, that the Complainant has failed to prove the third element of the Policy – that is, paragraph 4(a)(iii) – with respect to the Disputed Domain Name, the Panel makes no findings with respect to the first or second elements of the Policy.

Identical and/or Confusingly Similar

Given that, for the reasons set forth above, it is unnecessary for the Panel to make a finding with respect to the first element of the Policy, paragraph 4(a)(i), the Panel refrains from doing so.

Rights or Legitimate Interests

Given that, for the reasons set forth above, it is unnecessary for the Panel to make a finding with respect to the second element of the Policy, paragraph 4(a)(ii), the Panel refrains from doing so.

Registration and Use in Bad Faith

The Panel initially addresses the issue raised by Respondent that it has been the “beneficial owner”[1] of the Disputed Domain Name since it was created on February 7, 1999, even though the current registrant is identified as Blue Arctic LLC and the original registrant appears to have been Fusion3k Designs.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), para. 3.7, states:
Panels have tended to the view that formal changes in registration data are not necessarily deemed to constitute a new registration where evidence clearly establishes an unbroken chain of underlying ownership by a single entity or within a genuine conglomerate, and it is clear that any change in WhoIs registrant data is not being made to conceal an underlying owner’s identity for the purpose of frustrating assessment of liability in relation to registration or use of the domain name.
This consensus view has been adopted in at least a few decisions that have referred to the concept of a “beneficial owner” of a domain name, including Intellogy Solutions, LLC v. Schmidt, D2009-1244 (WIPO Dec. 24, 2009).  In that case, the panel found that a “transfer did not effect any material change in the beneficial ownership of the domain name” given the relationship that one individual had to both registrants, including serving as a sole proprietor “doing business as” one registrant and as CEO of another registrant.
The beneficial owner concept also arose in Justin.tv, Inc. v. Amador Holdings Corp, FA 1436777 (Nat. Arb. Forum May 17, 2012).  There, the panel said:
When assessing bad faith registration, one normally need only trace the registration date back to the most recent transfer of the domain name . . . [but] [t]he strictness of the rule may be relaxed where a respondent can demonstrate that there has been no change in beneficial ownership between initial date of registration and last transfer. 
Although the panel in Justin.tv refused to accept that the current registrant of the disputed domain name had been the beneficial owner since its creation, this refusal was based in part on the presence of “various registrants” through the years, the “repeated use of privacy services” and [s]kepticism at th[e] [Respondent’s] explanation . . . invited by the copycat nature of the Respondent’s website.”
Similarly, in Int’l Truck Intellectual Prop. Co., LLC v. B, D2011-0599 (WIPO June 7, 2011), “the Respondent allege[d] that it has always been the underlying owner of the disputed domain name.”  But, the panel refused to accept this because “the evidence of record does not clearly establish an unbroken chain of underlying ownership” and “[t]here is in fact scant evidence in the record regarding the original registrant’s actual or intended use of this disputed domain name.”
Despite these mixed outcomes, the WIPO Overview 2.0 and the decisions cited above seem consistent on the following: With adequate explanation and in the absence of efforts to conceal a domain name registrant’s identity, the current registrant of a domain name may be considered to have been the beneficial owner of the domain name since its creation date, despite changes in the WHOIS record.  This Panel adopts this view, although it cautions that the rule should be applied only in narrow circumstances where the explanation is not unbelievable and is supported by appropriate evidence.
In light of the above, this Panel finds that the Respondent in this proceeding, Blue Arctic LLC, has been the beneficial owner of the Disputed Domain Name since it was created on February 7, 1999.
Accordingly, the Panel must determine whether the Disputed Domain Name “has been registered” in bad faith when registration occurred on February 7, 1999, despite the Respondent’s subsequent activities. See, e.g., RapidShare AG v. Ilya, D2010-1105 (WIPO Aug. 17, 2010) (“[T]he Complainants have failed to show that there was registration in bad faith”).
It is unclear whether, on February 7, 1999, Complainant had rights in the GOOGLE trademark.  For example, although the Complaint states that “Google has used the GOOGLE mark in U.S. commerce in connection with its services since September 1997,” Complainant apparently did not own any trademark registrations for the mark on February 7, 1999, and Complainant had received only limited media attention by that time.
In any event, regardless of whether Complainant had obtained any common law trademark rights as of February 7, 1999, Respondent has provided a declaration clearly stating that it (as beneficial owner of the Disputed Domain through registration by Mr. Neuman) registered the Disputed Domain Name not “due to the existence of Google.com or the Complainant’s trademarks” but instead due to his relationship with a “young programmer named Justin Tunney, who went under the online moniker of ‘Oogle’ or ‘Criminal Oogle’.”
Despite the Panel’s extreme suspicions about this explanation, the Policy and the Rules do not provide the Panel with any authority to ascertain the Respondent’s credibility given the limitations on filings, the absence of discovery and the procedural efficiencies that are a part of (although admittedly occasionally detrimental to) this process.  See, e.g., Jumblatt v. SlantMedia, D2012-1011 (WIPO June 28, 2012) (“The Panel takes into account that the Policy was designed to deal with a certain limited category of abusive registration of domain names, but not as a means of litigating all disputes involving domain names”); Thump Records, Inc. v. WebPros, FA 446911 (Nat. Arb. Forum May 11, 2005) (referring to “[t]he limited scope of the Policy”); and Shedrick v. Princeton, FA 236575 (Nat. Arb. Forum ) (referring to “the very narrow scope of the UDRP procedure”).
In light of these concerns, this Panel notes that “[i]t may be that Complainant could develop evidence of bad faith and lack of legitimate interest in a legal proceeding that would allow more evidentiary development.  The Policy, however, was not designed to transfer domain names in every case that a trademark owner might ultimately win.”  Trans Continental Records, Inc. v. Compana LLC, D2002-0105 (WIPO Apr. 30, 2002).
In any event, on the record before it, the Panel finds that Complainant has not prevailed in showing that the Disputed Domain Name “has been registered” in bad faith.

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <oogle.com> domain name REMAIN WITH Respondent.
Douglas M. Isenberg (chair), Reinhard Schanda and Professor David E. Sorkin, Panelists
Dated: July 25, 2012


[1] The concept of “beneficial owner” in this proceeding (where the registrant identified in the Whois database has changed prior to the filing of the complaint) is distinct from the concept of “beneficial owner” in cases in which a complaint was filed against a privacy or proxy service (and the identity of the registrant changed after the filing of the complaint).  See, e.g., Baylor Univ. v. Domains by Proxy, Inc., FA. 1145651 (Nat. Arb. Forum Apr. 11, 2008).

NATIONAL ARBITRATION FORUM

DECISION

Electronic Arts Inc. v. Abstract Holdings International LTD / Sherene Blackett
Claim Number: FA1111001415905

PARTIES
Complainant is Electronic Arts Inc. (“Complainant”), represented by Eugene M. Pak of Wendel, Rosen, Black & Dean, LLP, California, USA. Respondent is Abstract Holdings International LTD / Sherene Blackett (“Respondent”), represented by Zak Muscovitch of The Muscovitch Law Firm, Canada.

REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is , registered with Moniker Online Services, Inc.

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

Ms. Diane Thilly Cabell, Sir Ian Barker, and R. Glen Ayers served as Panelists.

PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 16, 2011; the National Arbitration Forum received payment on November 16, 2011.

On November 17, 2011, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On November 18, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 8, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@ssx.com. Also on November 18, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

A timely Response was received and determined to be complete on December 9, 2011.

A timely Additional Submission was submitted by Complainant and determined to be compliant on December 13, 2011.

Respondent submitted an Additional Submission, which was determined to be compliant on December 19, 2011.

On December 19, 2011, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Ms. Diane Thilly Cabell, Sir Ian Barker, and R. Glen Ayers as Panelists.

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

PARTIES’ CONTENTIONS
A. Complainant
Complainant, Electronic Arts, Inc. (“EA”), asserts that it holds a registered Trademark, “SSX,” which was registered with the USPTO on October 4, 2005, and had previously been registered in other countries including France and Germany and has been subsequently registered as a European Community Trademark. The mark has been in use since 2000; it is used in connection with a computer game known as SSX.

EA asserts that the mark is well known and extensively used. It asserts that the Respondent’s domain name, , is obviously identical to the registered mark.

Complainant also states that Respondent has no rights or legitimate interests in the domain name. Respondent apparently acquired the domain name eleven years after first use and six years after the USPTO registration. EA states that Respondent is trading off of the good will generated by EA’s mark; that Respondent is not known by the name “SSX;” and that Respondent hold no license from EA.

As to bad faith, EA asserts registration and use in “bad faith.” EA has shown that Respondent’s home page offers this name for sale. EA also asserts that Respondent has used the domain name to attract Internet users for Respondent’s gain.

EA asserts that the very registration of an domain name identical to a mark is bad faith; that the registration is a clear attempt to “steal” the good will created by EA. EA shows that links from the domain name lead to sites that relate to computer gaming.

B. Respondent

Respondent begins by denying any bad faith registration. Respondent first registered this domain name in connection with the acquisition of a number of “generic three-letter acronyms.” While Respondent admits that there may have been some “arguable ‘bad faith use”, it asserts that this was “temporary and inadvertent” and lasted for a little over a month. (Respondent actually purchased the domain name; the name has been owed by a number of different entities.)

The domain name was allegedly registered on March 2, 2000, which is earlier than the first use of the mark. Therefore, Respondent argues, the registration could not have been in bad faith. Respondent acquired the name along with many others in October of 2011. Respondent does not appear to have renewed the registration of the name since its acquisition.

Respondent admits that it did not search the portfolio of names for potential conflicts with trademark registrations. However, the name had been registered for many years; no one had objected. It then parked the name with a parking company; thereafter, advertisements were automatically generated by Google.

Respondent had no intent to compete with or utilize EA’s mark. It did not run any add with intent to utilize the EA mark’s “good will.” It did offer to sell the mark, but the offer was not directed to EA.

Respondent continues to recite facts supporting its good faith (or lack of bad faith) and facts supporting the lack of any diligence by EA to protect its mark.

Respondent then proceeds to address each of the elements of the UDRP. As to “confusing similarity,” Respondent recites a long list of companies and entities that have registered the mark “SSX” in connection with products other than computer games, including registration with the USPTO. Another list of companies which use “SSX” without registration or in business follows the first list.

Respondent asserts that it does have a legitimate interest in the name SSX, because of the name’s generic nature. A better right may lie with EA, the mark holder; but a legitimate right to use can and does lie with others.

Respondent denies bad faith registration; it asserts that it was never aware of the EA mark or that it intended to do anything to interfere with EA’s business. Respondent believes that its business model is legitimate and not evidence of bad faith. The mere fact that the domain name is for sale is not relevant here; that is what Respondent does.

Respondent returns to a primary theme of its defense: The name has been registered for 12 years, but – until this filing – EA took no steps to assert the primacy of its mark.

Respondent concludes by suggesting that this proceeding be dismissed because the proceeding really relates to the issue of “”better’ or ‘superior’ rights ….”

C. Additional Submissions

Both parties submitted Additional Submissions.

COMPLAINANT’S ADDITIONAL SUBMISSION

Complainant EA timely filed an Additional Submission. Although Respondent objected to consideration of the Additional Submission, as discussed below, the Panel has determined to consider EA’s second pleading. The Panel believes that this submission would not be acceptable under the WIPO rules; however, the more liberal interpretations rules of the NAF panels allow consideration of “twelve single-spaced pages in small font, of additional written submission, together with a two-page affidavit, and several more pages of exhibits.” Quoting paragraph 2 of the Respondent’s Objection to Complainant’s “Additional Statement”….

In the Additional Submission, Complaint restates its prior allegations. In so doing, it repleads much of its case. It continues to insist that bad faith is shown by the “click through” revenues Respondent allegedly received. Complainant does admit that many marks are duplicated – e.g., DELTA is a mark held by an airline and by a faucet manufacturer. However, stress is placed upon the different businesses of the two mark holders.

The issue of “click through” revenue occupies several pages of the Additional Submission.

Complainant again asserts registration and use in bad faith. EA asserts that Respondent knew or should have known of its rights and asserts constructive notice. This is particularly true, says EA, when the business of Respondent is the bulk acquisition of names.

The EA second submission spends much effort on the issue of failure to police its mark, asserting, interestingly, that the prior holder of the name may have also engaged in bad faith exploitation of the good will of the EA mark.

RESONDENT’S ADDITIONAL SUBMISSION

As indicated above, Respondent’s Objection to Complainant’s “Additional Statement”… is primarily an objection to the reply brief filed by EA. While this Panel has determined to allow the Additional Submission, the Panel agrees with Respondent that the pleading would not be allowed under the WIPO rules.

The Panel would take this opportunity to request parties to limit Additional Submissions in both length and scope. Complainant’s Additional Submission is essentially a new action. While considered in this proceeding, these Panelists will, in the future, look very critically upon similar pleadings.

Respondent does go on to reply to the EA submission. It asserts that there is still no evidence that it attempted to target and exploit the “good will” associated with the EA mark. Respondent asserts that its “inadvertent” use of the domain name to link to computer gaming sites allows the Panel “to infer” that the registration was in “bad faith” as far as EA’s mark is concerned rather than a part of a business plan involving acquisition of three-letter generic “acronyms” for resale.

Respondent goes on to attempt to rebut other allegations made in EA’s additional submission. Of particular interest is the EA allegation that the SSX domain name was identified in the sales document as being sold for $5,000 of the alleged total sales price for all names of $200,000. From this, EA infers that the domain name was of particular interest to or value to Respondent. Respondent points out that all of the names were valued at $5,000 apiece in the Purchase Agreement.

FINDINGS
Respondent does not dispute that the mark SSX and the domain name are identical. However, “SSX” has been trademarked by a number of different entities. It is also used as an acronym for a number of entities and businesses.

EA has made a prima facie case under UDRP Policy ¶ 4(a)(i), and Respondent has not disputed this issue.

While Respondent has shown that the domain name, , was registered before the initial use of the SSX mark, prior registration is not relevant to any inquiry under Policy ¶ 4(a)(i).

As to rights in the name, EA has presented only a partial prima facie showing, under Policy ¶ 4(a)(ii). Respondent is neither commonly known by the name “SSX” nor is it a licensee of EA. Respondent has shown that it purchased the domain name without knowledge of any interest of EA. The registration of the domain name predated the first use of the mark, SSX, by EA. EA had taken no steps to police the use of its mark, as a domain name, for at least a decade.

Respondent has also shown that its business model involves the purchase and sale of domain names like — domain names containing letters which are generic acronyms. EA has presented no evidence that Respondent knew of the existence of its trademark rights – or of the trade mark rights of any of the other holders of the mark SSX.

Therefore, even if EA has established a bona fide claim under Policy ¶ 4(a)(ii), Respondent has rebutted the prima facie case by showing that it acquired rights in the name by the purchase of the pre-existing domain name.

EA has not established a prima facie case of bad faith. The EA allegations of bad faith in part are based upon the lack of due diligence conducted by retailers of domain names like Respondent. EA would seem to require that entities like Respondent conduct an international search for relatively obscure trademarks in order to determine whether a name is a registered mark. The Panel is not willing to go so far, as discussed below.

Still, and particularly in this case, the Respondent is treading on thin ice. A fair reading of its pleadings reveals that Respondent made absolutely no attempt to examine its purchases for domain names which were also trademarks. Again, here, at least one “generic” string of three letters has been trademarked and is perhaps a common law mark of a number of business and other entities in a number of lines of business all around the world. Given the ease of searches using the common tools of the Internet, how much is it to ask of a retailer like Respondent to do a little extra work?

The facts here, however, show no bad faith under Policy ¶ 4(a)(iii), which refers to both registration and use in bad faith. First, although Respondent argues that the registration cannot have been in bad faith, for the registration pre-dated the first use and the issuance of the trademark, this is simply incorrect. Purchase in bulk of domain names is generally considered a new registration for purpose the UDRP.

However, there is no evidence of bad faith registration by Respondent; and, as noted above, because the inference of bad faith registration from lack of diligence is simply not enough, in this case.

The next issue, use in bad faith, is also shown. Respondent has attempted to rebut the allegations concerning use to generate “click through” income, and has shown that such use was inadvertent. The Panel also finds that this “inadvertent” use is still in bad faith. Respondent has taken little or no responsibility to police its own operations. It did not investigate the existence of competing interests in the form of marks, which it could have easily done. Had it done so, it could easily have avoided any use in bad faith. Respondent’s failure to take any responsibility for the registration and then use is not what the Panel would expect of a domain name merchant of this size and sophistication.

There is not sufficient evidence, in these facts, of the registration and use of the name in bad faith that is not rebutted by Respondent’s submissions.

DISCUSSION
Paragraph 15(a) of 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 Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant, Electronic Arts Inc., has rights in its SSX mark under Policy ¶ 4(a)(i). Complainant provides a table of its trademark registrations for its SSX mark with the United States Patent and Trademark Office (“USPTO”), the European Union’s Office for Harmonization of the Internal Market (“OHIM”), and many others. Complainant also provided copies of its trademark registrations. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).

Complainant offered its USPTO trademark registration that lists Complainant’s first-use date as October 17, 2000.

Respondent’s domain name is identical to Complainant’s SSX mark. The only difference between the disputed domain name and Complainant’s SSX mark is the addition of the generic top-level domain (“gTLD”) “.com.” The addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. Clearly, the domain name is identical to Complainant’s SSX mark for the purposes of Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also SCOLA v. Wick, FA 1115109 (Nat. Arb. Forum Feb. 1, 2008) (concluding that “the domain name at issue is identical to [the] complainant’s SCOLA mark, as the only alteration to the mark is the addition of the generic top-level domain “.com.”).

Registration of the domain name predates Complainant’s rights in the mark. This is not relevant under Policy ¶ 4(a)(i). This portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).

The domain name is comprised of a common and generic term. Respondent asserts that such a generic term cannot be found to be identical to Complainant’s mark. The Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i); this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).

Rights or Legitimate Interests

Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).

Respondent is in the business of buying and selling generic domain names. Respondent purchased the domain name on October 5, 2011 as a part of a portfolio of generic domain names. Respondent paid $200,000 for the portfolio and provided a copy of the agreement as proof. The buying and selling of generic domain names is a bona fide offering of goods under Policy ¶ 4(c)(i).

Respondent has established rights in the domain name pursuant to Policy ¶ 4(c)(i). See Franklin Mint Fed. Credit Union v. GNO, Inc., FA 860527 (Nat. Arb. Forum Mar. 9, 2007) (concluding that the respondent had rights or legitimate interests in the domain name because it was a generic domain name reseller who owned numerous four-letter domain names); see also Fifty Plus Media Corp. v. Digital Income, Inc., FA 94924 (Nat. Arb. Forum July 17, 2000) (finding that the complainant failed to prove that the respondent had no rights in the domain name and had registered and used the domain name in bad faith where the respondent is an Internet business which deals in selling or leasing descriptive/generic domain names). The disputed domain name was parked with Google, and Google provided the hyperlinks found on the resolving website. Respondent has shown that it did not intend to host competing hyperlinks and that it was not responsible for the content of the resolving website. Respondent has shown that the competing hyperlinks were quickly removed. Respondent was responsible, even under these facts, for the competing hyperlinks, for it made no attempt to police the use of its domain name, not having investigated competing rights upon acquisition. Compare Spiliadis v. Androulidakis, FA 1072907 (Nat. Arb. Forum Oct. 17, 2007) (accepting the respondent’s explanation that it did not know until receiving a cease and desist letter from the complainant that its registrar “had posted unauthorized third party links on the website and that when it discovered this fact it was ‘shocked,’ demanded that they be removed and when they were not removed, [the] respondent changed its registrar.”).

The domain name, , is comprised of common or generic letters. Complainant clearly does not have an exclusive monopoly on the term. The number of other persons or entities holding identical if non-competing marks and the number of other users with rights in the name are clear evidence of the limited ownership claims of the Complainant. Respondent has established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Nat. Arb. Forum Jan. 5, 2004) (finding that the respondent was using the domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes); see also Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Nat. Arb. Forum July 23, 2004) (“Complainant’s rights in the QWEST mark are limited to its application to the telecommunications industry,” where a variety of other businesses used the mark in unrelated fields). See also Telephone and Data Systems, Inc. v. Protected Domain Services, WIPO Case No. D2011-0435 (May 10, 2011) (“Respondent has set forth a potentially legitimate interest …, and … Complainant has been unable to prove that such interest is illegitimate. …”).

Registration and Use in Bad Faith

Finding that Respondent has an unrebutted “potential” interest in the domain name, it is not necessary to discuss bad faith, but the Panel chooses to do so. In a case like this one, where there is no attempt to “target” Complainant’s interest in Complainant’s mark to capitalize on the good will associated with a three-letter mark, widely used by others, the subsequent use for “click-through” revenue is not enough. See Dinah, S.L. v. WebQuest.com Inc., WIPO Case No. D2005-0573 (August 25, 2005), andTelephone and Data Systems, Inc. v. Protected Domain Services, WIPO Case No. D2011-0435 (May 10, 2011), both of which are directly on point.

Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).

Certainly, and despite its protestations to the contrary, Respondent did register the domain name; the transfer of ownership in bulk constitutes a registration for purposes of the UDRP. See Ticketmaster Corp. v. Global Access, D2007-1921 (WIPO Feb. 2, 2008) (The relevant intent of the acquiring party is to be assessed as of the date of the acquisition of the portfolio or batch of names.)

Respondent has rights or legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii); Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).

Respondent has not registered or used the domain name in bad faith; the Panel finds that Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant’s business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).

Respondent never offered to sell the domain name to Complainant. Respondent never targeted Complainant as a potential purchaser of the domain name. The offer to sell was automatically generated on the resolving website. Respondent would certainly have sold the name to Complainant, as Respondent would have sold to any person interested in purchasing the name, but it did not intend to sell the disputed domain name to Complainant. These facts do not show that Respondent registered or used the domain name in bad faith under Policy ¶ 4(b)(i). See Mark Warner 2001 v. Larson, FA 95746 (Nat. Arb. Forum Nov. 15, 2000) (finding that considering or offering to sell a domain name is insufficient to amount to bad faith under the Policy; the domain name must be registered primarily for the purpose of selling it to the owner of a trademark for an amount in excess of out-of-pocket expenses); see also JCM Germany GmbH v. McClatchey Jr., D2004-0538 (WIPO Sept. 17, 2004) (holding that the respondent did not violate Policy ¶ 4(b)(i) by attempting to sell the disputed domain name for profit because the respondent did not register the domain name with the intent to sell it to the complainant or one of its competitors. Moreover, Respondent, as a generic domain name reseller, did not register or use the disputed domain name in bad faith under Policy ¶ 4(b)(i); see also John Fairfax Publ’n Pty Ltd v. Domain Names 4U, D2000-1403 (WIPO Dec. 13, 2000) (finding legitimate interests and no bad faith registration where the respondent is a seller of generic domain names); see also Lumena s-ka zo.o. v. Express Ventures LTD, FA 94375 (Nat. Arb. Forum May 11, 2000) (finding no bad faith where the domain name involves a generic term, and there is no direct evidence that the respondent registered the domain name with the intent of capitalizing on the complainant’s trademark interest).

Respondent has shown that it is a generic domain name buyer and seller. Respondent purchased the disputed domain name as part of a portfolio of generic domain names. This is a legitimate use of the disputed domain name, and does not show that Respondent registered or used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Schering AG v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000) (finding that the respondent did not register or use the domain name in bad faith where the respondent registered the domain name in connection with a fair business interest and no likelihood of confusion was created); see also Mule Lighting, Inc. v. CPA, FA 95558 (Nat. Arb. Forum Oct. 17, 2000) (finding no bad faith where the respondent has an active website that has been in use for two years and where there was no intent to cause confusion with the complainant’s website and business). Moreover, Respondent contends that it parked the domain name with Google and that Google is responsible for the competing hyperlinks. Respondent alleges that the resolving website was only supposed to contain generic hyperlinks and not competing hyperlinks. The Panel finds that Respondent is not responsible for the content of the resolving website and, therefore, could not have registered the domain name in bad faith under Policy ¶ 4(a)(iii). See Tomsten Inc. v. Registrant [7281], FA 925448 (Nat. Arb. Forum Apr. 20, 2007) (finding the respondent’s parking of domain name to advertise goods and services chosen from “the broadest generic meaning of the word ‘archivers’ rather than choosing goods and services offered by [the] complainant” thus the panel was unable to draw the conclusion that the respondent had shown any intention of diverting Internet traffic from the complainant to the firms promoted by the advertisements and links).

The domain name is comprised entirely of a common term that has many meanings apart from use in Complainant’s SSX mark, including registration as a mark by other businesses and use of the term as a business name or acronym. Respondent is free to register a domain name consisting of common terms; this domain name contains such common terms. Respondent did not register or use the domain name in bad faith under Policy ¶ 4(a)(iii). See Zero Int’l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) (“Common words and descriptive terms are legitimately subject to registration as domain names on a ‘first-come, first-served’ basis.”); see also Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum July 9, 2004) (holding that the respondent’s registration and use of the domain name was not in bad faith because the complainant’s TARGET mark is a generic term); see also Miller Brewing Co. v. Hong, FA 192732 (Nat. Arb. Forum Dec. 8, 2003) (finding that because the respondent was using the domain name, a generic phrase, in connection with a search engine, the respondent did not register and was not using the disputed domain name in bad faith).

DECISION
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the domain name REMAIN WITH Respondent.

R. Glen Ayers, Chair
Ms. Diane Thilly Cabell
Sir Ian Barker

Dated: January 4, 2012