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Generic Top Level Domain Name (gTLD) Decisions |
RMT, Inc. v. Domain Finance Ltd.
Claim Number: FA0408000313843
PARTIES
Complainant
is RMT, Inc. (“Complainant”),
represented by Nathan D. Jamison of Quarles & Brady LLP,
411 East Wisconsin Avenue, Milwaukee, WI 53202. Respondent is Domain Finance
Ltd. (“Respondent”), represented by Ari
Goldberger of ESQwire.com Law Firm, 35 Cameo Drive, Cherry Hill, NJ
08003.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <rmt.com>,
registered with Bulkregister, LLC.
PANEL
The
undersigned certify that they have acted independently and impartially and to
the best of their knowledge have no known conflict
in serving as Panelist in
this proceeding.
Judge
Carolyn Marks Johnson, Professor David Sorkin and Houston Putnam Lowry
(Chartered Arbitrator and chair) as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on August 16, 2004; the Forum received
a hard copy of the
Complaint on August 18, 2004.
On
August 20, 2004, Bulkregister, LLC. confirmed by e-mail to the Forum that the
domain name <rmt.com> is
registered with Bulkregister, LLC. and that the Respondent is the current
registrant of the name. Bulkregister,
LLC. has verified that Respondent is bound by the Bulkregister, LLC.
registration agreement and has thereby agreed to
resolve domain-name disputes
brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute
Resolution Policy (the
“Policy”).
On
August 23, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of September
13, 2004 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail,
post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts,
and to postmaster@rmt.com by e-mail.
A
timely Response was received and determined to be complete on September 27,
2004.
A
timely Additional Submission was received from Complainant on October 1, 2004.
On October 11, 2004, pursuant to Complainant’s request
to have the dispute decided by a three-member
Panel, the Forum appointed Judge
Carol Marks Johnson, Professor David Sorkin and Houston Putnam Lowry (Chartered
Arbitrator and chair) as Panelists.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
[a.] Similarity
of Domain Names to Remain Trademark: ICANN Rule 3(b)(ix)(1); ICANN Policy
¶4(a)(i).
The domain name at issue is <rmt.com>. This is identical to the name of the
Complainant and Complainant’s trademarks, with the exception of the added
“.com” suffix. Numerous cases under the
policy have found such use of a Complainant’s trademark to be confusingly
similar according to Policy ¶4(a)(i). See
Maple Leaf Sports & Entertainment Ltd. v. Toronto Maple Leafs!,
D2000-1510 (WIPO Jan. 24, 2001); WestJet Air Center, Inc. v. West Jets LLC,
FA 96882 (Nat. Arb. Forum Apr. 20, 2001).
[b.] Respondent’s
Lack of Rights in the Domain Names: ICANN Rule 3(b)(ix)(2); ICANN Policy
¶4(a)(ii).
Complainant RMT, Inc. is an
environmental engineering and consulting firm that provides services throughout
the world. It has been doing business
as RMT since at least 1977 and has been the owner of U.S. Trademark
Registrations for “RMT” since 1987. The
RMT name and mark are famous in the oil and gas industry. RMT, Inc. is a subsidiary of Alliant Energy
Corporation.
Respondent operates a web
site at the <rmt.com> domain name that is entitled “RMT Oil &
Gas.” That is the only reference to
“RMT” anywhere on the page, however.
Instead, the page contains international, national and regional news
related to the energy industry. A
graphic in the upper right corner of the <rmt.com> home page
states that it is affiliated with the “World News Network.” Clicking on this link takes Internet users
to the home page of the “World News Network,” located at <wn.com>.
Complainant’s RMT mark is not
generic or descriptive nor is it a geographic term. The only connection between the term “RMT” and the oil and gas
industry is due solely to Complainant’s use of the mark in connection
with the
oil and gas industry. This is
distinguishable from the situation in Kur- und Verkehrsverein St. Moritz v.
Domain Finance Ltd., D2004-0158 (WIPO June 14, 2004), where the complaint
was dismissed because the domain name at issue, <stmoritz.com>, was a
geographic term.
Furthermore, the Respondent is not
“commonly known” by the <rmt.com> domain name, pursuant to Policy
¶4(c)(ii). See Tercent Inc. v. Yi,
FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information,
and its failure to imply that Respondent is commonly
known by the disputed
domain name, is a factor in determining that Policy ¶4(c)(ii) does not apply); Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known
by the mark); see also
RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001)
(interpreting Policy ¶4(c)(ii) "to require a showing that one has been
commonly known
by the domain name prior to registration of the domain name to
prevail").
The website currently located at <rmt.com>
is operated by, and contains much the same content as, the World News
Network. For example, the left-hand
side of the home page of <rmt.com> contains a list of “WN
Channels.” And the right-hand side
contains a clickable map that offers “World News by Continent.” Additionally, the copyright notice at the
bottom of the <rmt.com> home page indicates that the copyright is
owned by “barges.com.” There is
absolutely no evidence that the Respondent is known as or does business as
“RMT.”
[c.] Respondent’s
Bad Faith Registration and Use of Domain Names: ICANN Rule 3(b)(ix)(3); ICANN
Policy ¶4(a)(iii).
Respondent has engaged in bad faith with respect to the <rmt.com>
domain name. Respondent purchased the
<rmt.com> name for the purpose of directing Internet users to the
“World News Network” family of sites by creating a likelihood of confusion
with
the Complainant’s mark. Complainant
inquired about purchasing the <rmt.com> domain name in April 2003. In a response email sent to Complainant on
April 10, 2003, Respondent offered to sell the <rmt.com> domain
name to Complainant for $75,000 and claimed that the current owner of the
domain name was developing a “Russian Marine
Times” news site for the
domain. No such site was ever developed
by Respondent, however.
Complainant again inquired about purchasing the <rmt.com>
domain name from Respondent in March 2004.
Before this inquiry, Internet users who entered <rmt.com>
into a web browser were redirected to the World News Network home page at
<wn.com>. After receiving
Complainant’s inquiry about purchasing the <rmt.com> name, the Respondent
created a new website with the title
“RMT Oil & Gas” that contained
essentially the same content as the World News Network page at <wn.com>. Respondent also responded to Complainant’s
inquiry by offering to sell the <rmt.com> domain name for $40,000.
Respondent’s actions demonstrate a continuous bad faith intent to
profit from the RMT name and mark by diverting customers looking
for RMT,
Inc.’s site to Respondent’s web site that is effectively a portal to its World
News Network sites, by creating a likelihood
of confusion with the RMT name as
to the source, sponsorship, affiliation or endorsement of Respondent’s web
site. This act falls within Section
4(b) of the Policy. There can be no
question that Respondent has violated the Policy by registering and using this
domain name, incorporating RMT, Inc.’s
famous name, with no rights to use the
domain name, and with a bad faith intent to profit from such domain name at the
expense of
RMT, Inc.
B.
Respondent
The Disputed Domain is
composed solely of the common 3-letter combination RMT. RMT is a very common abbreviation used by
thousands of third parties for many different word combinations. An advanced search on the Google.com search
engine for “RMT” excluding “environmental,” “environment,” and “engineering,”
to eliminate
pages referencing Complainant, yielded over 200,000 web pages
containing the common 3-letter combination.
These include: RMT.org.uk (Britain’s largest specialist transport
union); Reliable Multicast Transport (rmt); RMT Aviation;
RMT.com.pk (Reliability, Motivation, Trust);
religioustolerance.org/rmt.htm (Repressed Memories and Recovered
Memories Therapy); rmt.org (Rockville Musical Theatre).
Respondent registered
rmt.com simply because it was an available 3-letter domain name that it
believed no party had exclusive rights
to.
Respondent owns many Internet domain names,
but Respondent is no cybersquatter.
Respondent has registered thousands of domain names, which are
predominantly generic, common words, or city names, and they have all
been
registered for development in connection with one or more sites which are a
part of Respondent’s WorldNews, Inc. network of
web sites located at
<http://worldnews.com>. Respondent’s
generic domain names include: broadcasting.com, oil.com, gas.com,
helicopters.com, cranes.com, cocoa.com, cartoons.com, filmreview.com,
textiles.com, sailboats.com, pollution.com, population.com, and
students.com.
WorldNews.com
includes over 3,000 different sites that receive approximately 12 million
visitor sessions per month. Respondent
invites the Panel to review Respondent’s WorldNews.com network. The site speaks for itself. From aesthetics to coverage, it’s quite
simply one of the best news content web sites on the Internet. WorldNews.com’s
excellence
has been recognized by many organizations. Forbes.com states that WorldNews.com:
provides
quick access to the latest news from around the world, from Baghdad to Tokyo.
One-click gets you to headlines from any region
of interest. Choose New Delhi
from the menu and up comes articles from Hindustan Times and the Khaleej
Times. Need to know what's happening in Asia? A click brings you breaking
news about the country's economy. Site also provides video broadcasts
and savvy
editorials.
Entrepreneur
Magazine has called WorldNews.com “a necessary bookmark…. If it happened
somewhere on this planet, you’ll find the details
here.” Respondent is obviously a serious web site
operator that has invested tremendous capital and resources in web site
development, and
is not a cybersquatter.
Respondent did not register the Disputed Domain to sell to
Complainant or to any other party.
Respondent did not register the Disputed Domain to disrupt Complainant’s
business. Respondent did not register
the Disputed Domain to prevent Complainant from reflecting its trademark in a
domain name. Respondent is not using
the Disputed Domain to derive commercial benefit by confusing users seeking
Complainant’s web site. It is true, as
alleged in the Complaint that Respondent indicated it would sell the Disputed
Domain to Complainant for $75,000.
However, it is undisputed this was in response to Complainant’s unsolicited
inquiry to purchase the Domain Name.
As alleged in the Complaint, “Complainant inquired about purchasing
the <rmt.com> domain name…” (emphasis added). Respondent, otherwise, never offered to sell
the domain name to Complainant or to any party.
As Complainant
alleges, Respondent had intended to develop a web site for RMT.com called
Russian Marine Times. The site has not
yet been developed. Respondent instead
chose to use RMT.com for a news site related to the offshore oil and gas
drilling and exploration industry. Rmt
is short for “remote,” which describes the remote nature of offshore drilling,
an industry in which Respondent’s principal shareholder
is heavily
involved. The main shareholder in
Domain Finance Ltd. is also the main shareholder in Intership Ltd., a company
that provides offshore construction,
supply, accommodation and crane vessel
services to the oil and gas offshore industry.
The barges.com web site, linked at the top of RMT.com describes the
Intership business. Respondent also
operates web sites at Oil.com, Gas.com, Offshoreconstruction.com, and
Floatinghotels.com. It is because Respondent
is heavily involved in the remote
offshore oil and gas exploration industry that it chose to associate RMT.com
with this business. It is not true, as
Complainant suggests, that Respondent made RMT.com an oil and gas news site
because of Complainant’s affiliation
with Alliant Energy Corporation. Respondent had no knowledge that Complainant
is a subsidiary of Alliant Energy Corporation, and Complainant had never heard
of Alliant
Energy Corporation at all.
Moreover, from a review of the Alliant Energy web site at
<http://alliantenergy.com>, it is clear that Alliant Energy’s business
has nothing to do with the international offshore oil and gas exploration news
covered on the RMT.com site. To the contrary,
Alliant Energy is an energy utility.
Accordingly, there is no connection between the RMT.com web site and
Complainant’s business as Complainant suggests. The Panel is encouraged to review Respondent’s web sites,
including <http://barges.com>, <oil.com>, and <gas.com>
which
clearly demonstrate that Respondent’s purpose for having an oil and gas news
web site at RMT.com is to promote its own businesses.
Bases for Respondent to Retain
Registration and Use of Disputed Name
Under the Policy, to prevail on its
claim to obtain the rights to the Disputed Domain, Complainant must demonstrate
three things:
1.
that
the disputed domain name is identical or confusingly similar to its trademark;
2.
that
respondent has no rights or legitimate interest in the domain name; and
3.
the
domain name was registered and is being used in bad faith.
(Policy,
¶¶4(a)(i)-(iii).) Complainant bears the
burden of proof as to each element of its claim. (Policy ¶4(a).)
A. Complainant’s Trademark is Identical to
the Disputed Domain
Respondent does not dispute this element
of the Policy. However, because
Complainant has not proven the other elements of the Policy, it is not
necessary for the Panel to evaluate this element
of the Policy.
B. Respondent
Has Rights And A Legitimate Interest In The Domain Name
The second element Complainant must prove is
that Respondent has no rights or legitimate interest in the name. The Complaint
fails
here. Paragraph 4(c) of the
Policy lists three circumstances that can demonstrate a registrant’s rights or
legitimate interest in the disputed
domain name:
(i)
before
any notice to you of the dispute, your use of, or demonstrable preparations to
use, the domain name or a name corresponding
to the domain name in connection
with a bona fide offering of goods or services;
(ii)
you
(as an individual, business or other organization) have been commonly known by
the domain name, even if you have acquired no trademark
or service mark rights;
(iii)
You
are 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.
(Policy ¶4(c)(i) - (iii).)
“RMT” is simply a
3-letter combination to which Complainant does not have exclusive rights. From RMT Aviation to the Rockville
Musical Theatre, there are literally hundreds, if not thousands, of entities
and individuals all over the
world that use the common 3-letter combination RMT
as abbreviations for their names. A
search on the Internet search engine Google.com search engine for “RMT” --
excluding “environment,” “environmental” and “engineering”
to eliminate pages
referencing Complainant -- yielded over 200,000 web pages containing the common
3-letter combination. This substantial
third-party use is evidence that Complainant does not have exclusive rights to
the term RMT and, thus, supports Respondent’s
legitimate interest in the
Disputed Domain. Energy Source Inc.
v. Your Energy Source, Case No. 96364 (NAF Feb. 19, 2001)(“energy
source” “not exclusively associated with Complainant’s business”).[i]
Complainant alleges
that Respondent does not have a legitimate interest because it is not known as
RMT. However, a domain owner does not
have to be known by a domain name to establish a legitimate interest. It is well-established that, like common
words, anyone is entitled to register a 3-letter combination and the
respondents’ legitimate
interest is established per se at the point of
registration, since no other party can claim exclusive rights to a simple
letter-combination domain name. Tenenhaus v. Telepathy, Inc., Case No. 94355 (NAF May 17, 2000)
(complainant not entitled to “exclusive use of the domain name DAF”);[ii] Trans Continental Records, Inc. v.
Compana LLC, No. D2002-0105 (WIPO April 30, 2002)(“use of [LFO.com] . . .
even for sale, is a legitimate business.”);[iii]
Kis v. Anything.com Ltd., No D2000-0770 (WIPO Nov. 20,
2000)(registration of 2 and 3-letter domain names found to be legitimate.)[iv] As the Panel noted in Kis v. Anything.com,
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 . . . ,
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.
Under appropriate
circumstances the offering for sale of a domain name can itself constitute a
bona fide offering of goods or services
for purposes of paragraph 4(c)(i) of
the Policy. . . .
Under these
circumstances, the Administrative Panel finds that Respondent has a legitimate
interest in the Domain Name.
Moreover,
Respondent uses the Disputed Domain for an offshore oil and gas exploration
news site as part of its Worldnews.com network
of web sites. The term RMT is short for “remote,” which describes
the remote nature of offshore drilling. Such use establishes Respondent’s
legitimate
interest. One UDRP panel
made the following finding of fact about this Respondent: “Respondent and its
"affiliated" company Serenade
Limited has developed and is exploiting
an informational network composed of various websites.” Kur- und
Verkehrsverein St. Moritz v. StMoritz.com, Case No. D2000-0617 (WIPO Aug.
17, 2000).[v] Respondent operates 3,000 different news
sites, which are visited by 12 million visitors per month. The excellence of Respondent’s Worldnews.com
network has been recognized by Entrepreneur and Forbes
magazines. As noted, Respondent
operates web sites at <oil.com>, <gas.com>, and <barges.com>
which is why it elected to point
the Disputed Domain to an oil and gas
exploration web site.
Accordingly, because Respondent has a
legitimate interest in the Disputed Domain, the Complaint should be denied.
C.
Complainant
Has Not Demonstrated That The Domain Name Was Registered and Is Being Used
In Bad Faith
The
third element that Complainant must show is Respondent’s bad faith registration
and use. The Complaint fails on this
count as well. The Policy identifies
four circumstances that may constitute evidence of bad faith registration and
use:
(i)
circumstances indicating that you have registered or you have acquired the
domain name primarily for the purpose of selling, renting,
or otherwise
transferring the domain name registration to the complainant who is the owner
of the trademark or service mark or to
a competitor of that complainant, for
valuable consideration in excess of your documented out-of-pocket costs
directly related to
the domain name; or
(ii)
you have registered the domain name in order to prevent the owner of the
trademark or service mark from reflecting the mark in
a corresponding domain
name, provided that you have engaged in a pattern of such conduct; or
(iii)
you have registered the domain name primarily for the purpose of disrupting the
business of a competitor; or
(iv) by
using the domain name, you have intentionally attempted to attract, for
commercial gain, Internet users to your 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 your web site or location
or of a product or service on your web site or location.
(Policy ¶¶4(b)(i) - (iv).)
There is absolutely no evidence that
Respondent registered the Disputed Domain to sell to Complainant. Nor is there any evidence that Respondent
had even heard of Complainant or its purported trademark when it
registered the Disputed Domain. Absent
evidence such knowledge of Complainant’s trademark when Respondent registered
the Disputed Domain, it is impossible for Respondent
to have registered the
Disputed Domain in bad faith.
Accordingly, the Complaint must be dismissed for this reason alone.
It is further
well-established that absent direct proof that a common term domain name was
registered or acquired solely for the purpose
of profiting from Complainant’s
trademark rights, there can be no finding of bad faith registration and
use. Ultrafem, Inc. v. Warren Royal,
supra. There, the 3-member
panel, in ruling in favor of the owner of the common term domain name
Instead.com held:
A bad faith showing would require the
Complainant to prove that the Respondent registered instead.com specifically
to sell to the Complainant, or that the value of "instead" as a
domain derived exclusively from the fame of its trademark. Neither has been proven in this case. In the absence of an intent to capitalize on
the Complainant’s trademark interest, the Complainant cannot assert an
exclusive right
over a domain name that is a common, generic term. (emphasis added).
Here,
the undeniable fact is that “RMT” is an extremely common 3-letter combination,
appearing on over 200,000 third-party web pages
unrelated to Complainant. This extensive worldwide third party use is
overwhelming evidence that Complainant does not enjoy exclusive use of the Disputed
Domain,
thus it cannot be concluded that Respondent selected the Disputed
Domain with Complainant in mind. It
did not. There can be no bad faith
registration where there is no evidence that a respondent had knowledge of a
Complainant or its mark. Kis v.
Anything.com Ltd., supra.
(“the Administrative Panel finds that there are no indications that
Respondent knew of Complainant or its trademark when registering
the Domain
Name.”). As set forth in the legitimate
interest section, Respondent certainly has used the Disputed Domain in
connection with the bona fide
offering of services through it WorldNews.com
network of web sites – a use expressly acknowledged as constituting a
legitimate interest
by another UDRP panel.
This is obviously not bad faith use.
There is no
evidence Respondent had knowledge of Complainant or its mark when it registered
the Disputed Domain. As recently held
in the 3-member decision in The Landmark Group v. DigiMedia.com, L.P.,
No. 285459 (NAF Aug. 6, 2004),[vi]
“Respondent cannot be found to have engaged in bad faith registration of
Complainant’s mark if it had never heard of Complainant’s
mark at the time of
the registration.” See also
DK Bellevue, Inc. v. Landers,
D2003-0780 (WIPO Nov. 24, 2003) (no bad faith registration if respondent had
not heard of complainant’s mark at time of registration)[vii];
Intermap Techns.
Corp. v. Salvage Elec. Inc., FA 203130 (NAF
Dec. 12, 2003)[viii]; Experimental
Aircraft Ass’n (EAA) v. EAA.COM, FA 206309 (NAF Dec. 16, 2003).[ix] Accordingly, bad faith registration cannot
be established.
Complainant attempts to establish bad faith based on the
reply by Respondent’s unsolicited inquiry to purchase the Disputed Domain. It is undisputed, however, as alleged in the
Complaint, that “Complainant inquired about purchasing” the Disputed
Domain. There is no evidence that
Respondent sought to sell the Disputed Domain to Complainant. Respondent’s reply to this inquiry is not
evidence that Respondent registered the Disputed Domain with the intent
to sell it to Complainant. There is not
even any evidence that Respondent had knowledge of Complainant when it
registered the Disputed Domain.
Respondent stating a price to sell the Disputed Domain in response to
Complainant’s purchase inquiry does not constitute bad faith
under the
Policy. As the Panel held in Pocatello
Idaho Auditorium District v. CES Marketing Group, Inc., Case No 103186 (NAF
Feb. 21, 2002)[x]:
There are
numerous ICANN decisions which have recognized that the owner of a domain name
has a legal right to sell a domain name when
asked if he or she will transfer
or sell it. Panels have noted that
"there is nothing inherently wrongful in the offer or sale of domain
names, without more, such as to justify
a finding of bad faith under the
Policy." N.C.P. Marketing Group v. Entredomains, D2000-0387 (WIPO
July 5, 2000).
See Also General Machine Prods Co.
v. Prime Domains, supra. (Complainant “solicited the offer to sell .
. . . These facts do not indicate any bad faith.”); Piper.com The New Piper
Aircraft, Inc. v. Piper.com, No.FA94367
(NAF May 2, 2000) (Complainant made unsolicited offer to purchase).[xi] Accordingly, Respondent’s reply to
Complainant’s inquiry to purchase the Disputed Domain does not establish bad
faith.
Respondent
further alleges bad faith based on the fact that Respondent has associated the
Disputed Domain with an oil and gas news
web site, because Complainant is an
affiliate of Alliant Energy Corporation.
However, there is no evidence that Respondent was aware of this
connection. It had no such
knowledge. It never heard of Alliant
Energy Corporation and had no knowledge that Complainant had any connection to
the oil and/or gas industry. The only
reason that Respondent has associated the domain name with oil and gas is
because its principal shareholder operates companies
that provide services to
the offshore oil and gas drilling industry and operates news web sites in
connection with its <oil.com>,
<gas.com>, <barges.com> and
other offshore oil and gas industry web sites.
Respondent is involved in environmental engineering consulting, and the
affiliated company, Alliant Energy Corporation, is an energy
utility. Had Respondent truly had a bad faith intent,
it would have associated the domain name with environmental engineering.
Neither the
businesses of Complainant or Alliant are related to Respondent’s
business. There simply is no evidence
of bad faith registration or use.
Respondent registered the Disputed Domain for the simple reason that it
was an available 3-letter combination to which no party had
exclusive
rights. That does not constitute bad
faith registration of a domain name, which is required to be proven by a
Complainant seeking transfer
of a domain name under the UDRP.
Accordingly,
for all the above reasons, Complainant has failed to meet its burden of proving
bad faith registration and use and, the
Complaint must, therefore, be
dismissed.
C.
Complainant’s Additional Submission
A. Respondent has Presented no Actual
Evidence of Legitimate Use of the <rmt.com> Domain Name.
Complainant’s
“RMT” marks are well known in the oil and gas industry. Complainant has consulted in the oil and gas
industry since 1984 in the United States, as well as internationally in such
places as
Venezuela, Algeria, India, Tunisia, Mozambique, and elsewhere. Its clients include BP Amoco, Exxon Mobil,
Shell Oil, Sunoco, and Conoco. As the
attached “SOQ” (statement of
qualifications) and printouts from RMT’s internet website <http://www.rmtinc.com/oil.htm> show,
Complainant’s “RMT” mark is internationally famous in the oil and gas industry.
Domain
Finance’s only present use of the disputed domain name is to wrongfully
capitalize on RMT’s mark and reputation in the oil
& gas industry solely to
direct traffic to their news site, or to attempt to sell its domain
registration. Prior to May 2004,
Respondent was not using the disputed domain except to redirect traffic to its
<wn.com> domain and was presumably
waiting for a buyer of the domain. This is not engaging in a bona fide offering
of goods or services pursuant to Policy ¶4(c)(i), nor a legitimate
noncommercial or fair
use pursuant to Policy ¶4(c)(iii). See J. Paul Getty Trust v. Domain
4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights
or legitimate interests do not exist when one has made no use of the websites
that are located at the domain names at issue, other than to sell the domain
names for profit); see also Wal-Mart Stores, Inc. v. Stork,
D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to
sell the domain name suggests it has no legitimate use).
Domain Finance, Ltd.,
had not previously used the <rmt.com> domain -- it merely used the
domain to redirect traffic to its <wn.com> site. It was only after RMT expressed an interest
in purchasing the domain in an e-mail to Domain Finance, Ltd., did the
respondent concoct
a bogus “RMT Oil & Gas” site, which merely regurgitates
<wn.com> content. There is no
other reference to “RMT” other than at the top of the site. In sum, there is no evidence that respondent
or any of its services were ever known by the <rmt.com> domain
name and thus Respondent does not have any rights in the disputed domain name. See
Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23,
2001).
In an
attempt to manufacture a legitimate use, Respondent first argues that it was
developing a web site called “Russian Marine Times”
for the <rmt.com>
domain name. Yet, a Google® search of
“Russian Marine Times” shows zero hits.
Respondent first made this claim on April 10, 2003, yet there is no
evidence that Respondent has ever done anything toward developing
this alleged
site in the eighteen months since it first made this claim other than
registering a domain name confusingly similar
to Complainant’s registered
marks. Respondent just made up the name
“Russian Marine Times” in a self-serving attempt to avoid a finding of bad
faith because it has the
initial letters “RMT.” The Panel should see through these transparent shenanigans by the
Respondent.
Then,
Respondent changes its tune and argues that the three-letter phrase “RMT” is a
commonly used abbreviation for “remote.”
Yet Respondent does not provide any evidentiary support for this
argument. This is because it is simply
not true. Google® searches show that
the acronym “RMT” is not used in the oil & gas or offshore drilling
industry for the abbreviation of
“remote.”
Complainant’s consultants, who are familiar with the oil and gas
industry, do not routinely use that acronym in their work, nor are
they
familiar with the term as being routinely used by their oil and gas industry
clients. The <rmt.com>
domain has nothing to do with Respondent’s business except that Respondent has
put a bogus title on a news webpage capitalizing
on the RMT name, which is
well-known in the oil & gas industry.
In the
end, Respondent has produced no evidence of legitimate use of the <rmt.com>
domain name other than unsupported assertions and contradictory, self-serving
statements. It follows that Complainant
has established Respondent’s lack of rights in the domain name under Policy
¶4(a)(ii).
B. Respondent Registered the <rmt.com>
Domain Name in Bad Faith
Respondent
is making no actual use, and has never made any actual use, of the <rmt.com>
domain name other than to wrongfully direct traffic to its site by capitalizing
on Complainant’s mark, and to offer it for sale
to the highest bidder. Respondent offered the domain name to
Complainant for an outrageous amount starting at $75,000 and again for $40,000. Respondent makes much of the fact that RMT
had inquired about the purchase of the domain.
However, the offer to sell can be in the form of a counteroffer. See
Magnum Piering, Inc. v. The Mudjackers, D2000-1525 (WIPO January 29,
2001) (“Cybersquatters often wait until a trademark owner comes calling; they
should not be able to
avoid the Policy by being the second to speak.”)
Complainant’s
attempts to sell the domain name to Complainant for an exorbitant price is
evidence of bad faith. Domain Finance
stated in their offer that the price was to “cover costs” associated with the
creation of a website for the non-existent
“Russian Marine Times.” Curiously, those same “costs” were $35,000
lower a year later when Domain Finance again offered the domain for sale to
RMT, Inc. for
$40,000. Notably, even
after eighteen months of allegedly working on a website and incurring costs of
“$75,000,” there is no website. Taken
together, these facts show ample evidence of bad faith. See Mondich v. Brown, D2000-0004
(WIPO Feb. 16, 2000) (holding that the Respondent’s failure to develop its
website in a two year period raises the inference
of registration in bad
faith).
The fact
that Domain Finance, Ltd., claims to have no knowledge of RMT’s mark is not
evidence that it lacked bad faith.
Registration of an infringing domain name despite actual knowledge is
evidence of bad faith registration pursuant to Policy ¶4(a)(iii). See Digi Int’l v. DDI Sys., FA
124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal
presumption of bad faith, when Respondent reasonably should
have been aware of
Complainant’s trademarks, actually or constructively”); see also Entrepreneur
Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding
that “[w]here an alleged infringer chooses a mark he knows to be similar to another,
one
can infer an intent to confuse”).
RMT’s mark has been in use in the oil and gas industry since 1984 and
has been registered with the USPTO since 1988.
If Respondent, were truly operating in the oil and gas industry, it
would have recognized the RMT mark.
Under these circumstances, Respondent, should have at least constructive
notice of RMT’s marks.
Finally,
Respondent cites several cases purporting to hold that the use of a three
letter acronym is allowable under any circumstances. None of these cases, however, are applicable to the facts of this
case. In Tenenhaus v. Telepathy,
Inc., FA 94355 (Nat. Arb. Forum May 17, 2000) (cited by Respondent), the
Forum specifically found that the current use of the domain <daf.com>
did
not conflict with or interfere with that complainant’s business. Here, Respondent’s use of the <rmt.com>
domain clearly does conflict and interfere with RMT, Inc.’s business because it
is wrongfully exploiting RMT’s mark in the oil
& gas industry.
In Trans
Continental Records, Inc. v. Compana LLC, D2002-0105 (WIPO Apr. 30, 2002),
concerning the <lfo.com> domain, the LFO trademark was not registered,
which was a significant
factor in determining there was no bad faith. In the present case, “RMT” is a registered
mark of RMT, Inc.
In Kis
v. Anything.com Ltd., D2000-0770 (WIPO Nov. 20, 2000), the panel found that
KIS was an abbreviation of Korean Information Site, which the panel found
to “perfectly
describe the nature and objective of [respondent’s] site.” (emphasis
added). Here, Domain Finance, Ltd.,
argues that the letters “RMT” describe its site as being a well-known acronym
in the oil and gas industry. But as
shown above, there is absolutely no support for the Respondent’s argument that
“RMT” describes anything about its site or that
it is a well-known acronym for
“remote” or anything else that is connected with Respondent.
Respondent
registered a domain name identical to a well-known mark in the oil and gas
industry, waited for the owner of the mark to
inquire about purchasing it, and
then attempted to sell it for an exorbitant amount. Respondent then concocted various theories out of thin air in an
after-the-fact attempt to manufacture a legitimate use of the domain
name. It follows that Respondent registered and
used the <rmt.com> domain name in bad faith under Policy
¶4(a)(iii).
D.
Respondent’s Additional Submission
Even
though Respondent’s additional submission was not made in a timely fashion, the
Panel accepts it as though it was made timely.
The delay in submitting it was reasonable under the circumstances and
caused no prejudice to Complainant.
While
Complainant has attacked the legitimacy of Respondent’s use of the Disputed
Domain and claims its registration and use have
been bad faith, these
allegations are not borne out by the undisputed facts.
1. Respondent Operates Legitimate Web Sites:
It is Not a Cybersquatter
Respondent
operates a recognized sophisticated global network of news web sites under its
WorldNews.com umbrella of sites. There
is no evidence that Respondent engages in abusive domain name registration to
profit from the sale of domain names or to confuse
users based on third-party
trademark rights. The Panel can review
the WorldNews.com web site and its various topical web sites to quickly recognize
this irrefutable fact. The decision in Kur-und
Verkehrsverein St. Moritz v. Domain Finance Ltd., D2004-0158 (WIPO June 14,
2004) – a 3-member panel decision which not only ruled in Respondent’s favor
but found that the Complainant
had engaged in Reverse Domain Name Hijacking –
is compelling for recognition of the legitimacy of Respondent’s operation.
As
set forth in the Response, and which can be validated by a review of the
<http://worldnews.com> web site, Respondent registers
domain names
because they are generic words in common use (oil.com, gas.com, phones.com,
cartoons.com, broadcasting.com) and descriptive
terms for its news sites
(worldnews.com, wnscience.com, basketballdaily.com). As noted in the Response, it is well-established that anyone is
entitled to register such domain names for any purpose. Like common words and descriptive terms,
simple 3-letter combinations, to which no party can claim exclusive rights, are
also fair
game for anyone to register. Respondent registered RMT.com to use in
connection with WorldNews.com.
Accordingly, Respondent has rights and a legitimate interest in the
Disputed Domain.
All
of Respondent’s allegations of bad faith concern actions taken by Respondent after
the Disputed Domain was registered. As
noted in the Response, Respondent has no knowledge of Complainant or its mark
when it registered the Disputed Domain, nor of its
purported connection to oil
and gas exploration. Respondent
registered the Disputed Domain on May 19, 1997 – more than 7 years before
the initiation of this dispute.
Complainant admits in the Complaint that its first contact with
Respondent was in April 2003, when it “inquired about purchasing”
the domain
name. Complainant has proffered no
evidence that Respondent had knowledge of its mark when it registered
the Disputed Domain and/or that the Respondent registered the Disputed
Domain
with Complainant’s mark in mind.
Accordingly, bad faith registration cannot be proven. Village Resorts
Ltd. v. Steven Lieberman;[xii]
(proof of bad faith requires “evidence of bad
faith at the time of initial registration”); Futureworld Consultancy Pty
Ltd. v. Online Advice, No. D2003-0297 (WIPO July 18, 2003)(“there is no
evidence to show that the disputed domain was registered with the Complainant
in
mind…”).[xiii]
Complainant’s argument that
“constructive knowledge” of its mark is enough to establish bad faith is
inapplicable in the case of a
common 3-letter term. The only UDRP case cited by Complainant to support this argument,
Digi Int’l v. DDI Sys, did not involve a common word or simple 3-letter
combination. To the contrary, the Disputed Domain was <digidis.com>. Where the mark is a common term, specific
evidence of bad faith is required because it cannot be concluded that
Complainant was a
target of the registration.
Canned Foods, Inc. v Ult. Search Inc., No. FA 96320 (NAF Feb. 13,
2001) (“There are dozens of other enterprises that use the term "Grocery
Outlet," therefore
one cannot conclude that Complainant must necessarily
be the special target);[xiv]
Lumena s-ka zo.o. v. Express Ventures LTD, No.94375 (NAF May 11, 2000).[xv]
Accordingly, because Respondent
registered the Disputed Domain without knowledge of Complainant or its mark,
and because there is
no evidence that Respondent registered the Disputed Domain
with such knowledge, bad faith registration cannot be proven and the Complaint
must, therefore, be denied.
FINDINGS
The Panel makes the
following findings:
(1)
the domain
name registered by the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant
has rights;
(2)
the
Respondent has 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.
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 the Complainant must prove each of the
following three elements to obtain an order that
a domain name should be
cancelled or transferred:
(1)
the domain
name registered by the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant
has rights;
(2)
the
Respondent has no rights or legitimate interests in respect of the domain name;
and
(3)
the domain
name has been registered and is being used in bad faith.
The <rmt.com> domain name registered by Respondent is
identical to Complainant’s RMT mark because the domain name fully incorporates
the mark, adding
only the generic top-level domain (gTLD). The Panel may find that the addition of a
gTLD to Complainant’s identical mark is irrelevant and insufficient to negate
the confusing
similarity of the domain name.
See Rollerblade,
Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top
level of the domain name such as “.net” or “.com” does not affect the domain
name for the purpose of determining whether it is identical or confusingly
similar); see also Victoria's
Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that the
<bodybyvictoria.com> domain name is identical to Complainant’s BODY
BY
VICTORIA mark). Thus, the Panel may
conclude that the disputed domain name is identical to Complainant’s RMT mark
pursuant to Policy ¶4(a)(i). See
Shirmax Retail Ltd. v. CES Mktg Group Inc., AF-0104 (eResolution Mar. 20,
2000) (refusing to interpret Policy ¶4(a)(i) in the conjunctive rather than
disjunctive sense in holding
that “mere identicality of a domain name with a
registered trademark is sufficient to meet the first element [of the Policy],
even
if there is no likelihood of confusion whatsoever”).
Respondent is
not commonly known by the <rmt.com>
domain name. While Complainant and
Respondent are both in the similar channels of commerce (relating to the oil
and gas business), it is possible
Respondent may not have heard of
Complainant’s mark.
Since Complainant has registered its trademark, Respondent has at least
constructive notice of the mark (even if Respondent does not
have actual
notice). While it is true trademarks
are accorded different levels of enforcement depending on whether they are
fanciful, misapplied or merely
descriptive, these issues are not considered in
the UDRP. We do not re-examine the
United States Patent and Trademark Office’s decision to register a trademark, Opus
Northwest Construction Corporation v. Opus Realty and Eldon Chan,
FA0408000318960 and MGW Group, Inc. v. Gourmet Cookie
Bouquets.com, FA0405000273996. There is no
dispute RMT is Complainant’s registered trademark.
The only question remaining is whether or not Respondent has any rights
to the domain name (having satisfied ourselves Complainant
has rights in a
three letter trademark).
Respondent has used the domain name since May 18, 1997 without hearing
from Complainant. While Respondent’s
web site links to sister web sites (ie: wn.com), it does not simply forward the
viewer. The services provided seem to
be bona
fide services. Therefore, ¶4(a)(i)
is satisfied because Respondent was using the domain name or a name corresponding to the domain name in
connection with a bona fide offering of goods or services before any
notice to
Respondent of the dispute. While
Respondent might well be infringing upon Complainant’s trademark, such a
determination is beyond the scope of the UDRP.
It was not
necessary to consider this issue in light of the Panel’s decision on previous
issue.
DECISION
Having
failed to establish all three elements required under the ICANN Policy, the
Panel concludes that relief shall be DENIED.
Houston Putnam Lowry, Chartered
Arbitrator and Chair Panelist
Judge Carolyn Marks Johnson,
Professor David Sorkin
Dated: November 3, 2004
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