DECISION

Dong A/S v. NetIdentity

Claim Number: FA0404000250240

PARTIES

Complainant is Dong A/S (“Complainant”), represented by Per Haakon Schmidt, of Plesner Svane Gronborg, Amerika Plads 37, DK-2100 Copenhagen, Denmark.  Respondent is NetIdentity (“Respondent”), represented by Eric Boustani, of Terra Law LLP, 60 South Market, Suite 200, San Jose, CA 95113.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <dong.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.

PANEL

The undersigned Daniel B. Banks, Jr., panelist, certifies that he and the other panelists, namely Honorable Louis E. Condon and Mark Van Buren Partridge, have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 1, 2004; the Forum received a hard copy of the Complaint on April 5, 2004.

On April 5, 2004, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the Forum that the domain name <dong.com> is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that the Respondent is the current registrant of the name.  Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 April 13, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 3, 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@dong.com by e-mail.

A timely Response was received and determined to be complete on May 3, 2004.

Complainant filed an additional submission which was received in a timely manner on May 5, 2004.  Respondent filed an additional submission which was received in a timely manner on May 17, 2004.  Both additional submissions were considered in reaching the decision in this case.

On May 20, 2004, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Honorable Louis E. Condon, Mark Van Buren Partridge and Daniel B. Banks, Jr. as Panelists.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant:

The Complaint is based on Complainant’s alleged common law rights in the trademark DONG, the registered company name Dong A/S, as well as registered trademark rights.  Complainant was incorporated in 1972 under the name Dansk Olie og Naturgas A/S.  It now performs a wide range of energy-related services for clients in more than 20 countries throughout the world.  Not long after incorporation, Complainant became known as the abbreviation of its name DONG.  On February 2, 1995, Complainant amended its by-laws adding the secondary name DONG A/S, which was recorded in the

Danish Commercial and Companies Register on May 31, 1995.  Complainant has a European Community Trademark registration dated July 23, 2001.  Complainant submits newspaper clippings showing third party use of DONG in relation to Complainant for each year since 1984 documenting activities in 11 countries.  Complainant asserts trademark rights in DONG as well as registered commercial name rights which predate Respondent’s registration of the disputed domain name.  The disputed domain name <dong.com> is identical to Complainant’s trademark rights.  After trying to register its commercial name “dong” under the .com domain, Complainant found that Respondent had registered the domain name and requested transfer.  Respondent refused.

Respondent has no rights or legitimate interests in respect of the domain name.  Respondent does not own trademark rights in DONG and uses the name in connection with a vanity e-mail service.  Respondent owns over 15,000 popular surname-based domain names and allows anyone to use them for e-mail and website addresses.  In the autumn of 2000, ICANN, in an effort to unclog the .com domain name space, selected 7 new gTLDs, one of which was .name.  Since then, an unlimited number of individuals can get a “vanity e-mail” and web pages under the ICANN sanctioned .name.  Any legitimacy of amassing a vast collection of domain names and renting these out to individuals in a non-ICANN-sanctioned manner as “vanity e-mails” with blatant disregard for the rights of trademark owners or anyone else expired with the introduction of .name.  Accordingly, Respondent has no rights or legitimate interest in the disputed domain name. 

Complainant asserts that the disputed domain name was registered and is being used in bad faith under Policy ¶ 4(a)(iii) and ICANN Rule 3(b)(ix)(3).  Pursuant to Policy ¶ 4(b)(i) “the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:…(i) circumstances indication 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…”  Complainant states that Respondent is simply holding and renting vast collections of domain names which is not a legitimate undertaking.   In light of this, Respondent’s continued maintenance of the registration, in the face of Complainant’s trademark rights, is registration and use in bad faith. 

Complainant is aware that in the past, prior to .name going live in June 2002, several UDRP panels had found that Respondent’s vanity e-mail business to be a “legitimate interest” in certain domain names which were both surnames and trademarks.  In this regard Complainant would point out that UDRP practice is not static, and evolves much like any other area of jurisprudence.   Complainant seeks to have the domain name transferred. 

B. Respondent:

Respondent is a profitable Internet business with 90,000 customers across more than 150 countries generating more than $2.5 million in annual sales.  These customers receive a variety of Internet services from Respondent in exchange for an annual fee.  As a part of its operations, Respondent uses common surnames (such as “Dong”) as domain names in order to supply personalized e-mail and web addresses to its individual customers.  The whole concept of Respondent’s business, dubbed “NetIdentity,” is that of “shared domains.”  This allows more than one person to use the same family or affiliation domain name, instead of permitting one self-interested company to lock the name up for its own use.  Respondent is using the disputed domain name in a non-trademark sense to offer its e-mail and website related services giving Respondent has a legitimate interest in the domain name under Paragraph 4(c)(i) of the UDRP.  Dong is a common surname and according to the U.S. Cenus data, there are more than 250,000 people in the United States alone with that last name.  It is also a Vietnamese monetary unit, a slang American word and a geographical location.  A Google search demonstrates that there are millions of examples of third-party uses of the word with no connection to Complainant.  When Respondent registered <dong.com> in October 1996, it did not know, nor had any reason to know, of the existence of Complainant’s acronym.  Respondent’s registration was based on nothing more than the statistical ranking of “dong” as a common surname.  The first time Respondent ever heard about Complainant was in March 2003 when Respondent received a letter from Complainant.  More than seven years elapsed from Respondent’s placement of <dong.com> into use and Complainant’s first objection.  The name was not registered in bad faith.  Complainant has registered and is using numerous domain names including <dong.dk>, <dong.info> and <dong.biz>.  The <dong.bk> domain name has been used by the Complainant since 1998.

Respondent concedes that the word “dong” is a currently registered European Community Trademark.  However, to satisfy the requirements of Policy ¶ 4(a)(i), the complaining party must have trademark or service mark rights before the domain name in dispute was registered.  There is no evidence of trademark usage prior to October 23, 1996.  Complainant’s evidence is of trade name use, not trademark use.  Complainant’s evidence is insufficient to support its claim to have possessed trademark rights prior to Respondent’s October 1996 registration of <dong.com>.

Respondent has a legitimate interest in the disputed domain name and, since 1996, has been using the domain name in a non-trademark sense to offer its e-mail and website related services.  The United States Court of Appeals for the Ninth Circuit has specifically ruled that Respondent’s vanity e-mail business is a legitimate use of domain names and was not being used in a trademark sense. 

Complainant acknowledges that it is “aware” of Respondent’s nine prior successful UDRP panel adjudications but begs this Panel to reverse the line of precedent because of the advent of the .name TLD which it contends retroactively converts Respondent’s legitimate business into an illegitimate one.  No legal authority exists for this position. 

Complainant’s most glaring problem is showing that Respondent registered and is using the disputed domain name in bad faith.  This issue has been successfully defended by Respondent from trademark owners nine successive times.  Complainant cannot prove that Respondent registered the domain name intending to sell, rent or otherwise transfer the name to Complainant.  At the time of registration, Respondent did not know of the existence of the Complainant and at that time, Complainant, a business owned by the Danish government, had no contact with the United States or Canada and no registered trademark anywhere in the world. 

Respondent requests the Panel to find attempted reverse domain name hijacking on the part of the Complainant on the grounds that Complainant was notified of the case authority against it by Respondent’s counsel and then Complainant waited one year to file this case without ever contacting Respondent for additional facts or discussion. 

C. Additional Submissions:

In Complainant’s additional submission, it maintains that it’s registered trading rights in the name DONG predates the registration of the domain name at issue and that the Respondent’s argument concerning a trade name/trademark schism are not relevant in the instant case.  The concept of “trademark” in             UDRP Section 4(a) is interpreted rather broadly and includes “common law” trademark rights, even for Complainant in non-common law countries.

Complainant further disputes that Respondent’s “vanity e-mail service” is a legitimate interest and argues there is a distinction between the instant case and the Ninth Circuit case (Avery Dennison) cited by Respondent.  Specifically, Complainant asserts that because that case involved two domain names under the top-level domain .net, rather than the .com TLD at issue, there is a distinction.  In Avery Dennison, a trademark owner, who already had .com presence for the majority of its trademarks zealously attacked a third party’s use of the trademarks under the .net TLD.  And, .net is decidedly for “networks”, for which use as a “vanity e-mail” is more understandable.  Complainant argues that the other 8 precedents cited by Respondent have by no means blindly followed the lead of Avery Dennison and found that “vanity e-mail” per se was a legitimate interest.  On the contrary, at least one prior panel voiced concerns over the Respondent’s business. 

Complainant asserts that Respondent’s registration and use of <dong.com> in contravention of the principle of Avery Dennison concerning .net is bad faith.  Also, Respondent’s registration and in particular renewal of the domain name in October 2003, after being placed on notice of Complainant’s rights is bad faith. 

On the issue of Reverse Domain Name Hijacking, Complainant says that Avery Dennison is not directly applicable in this case due to the emphasis on .net in that case.  Further, the fact that Complainant is the only one using DONG as a trademark indicates that Complainant’s cause is just.  Finally, the advent of .name warrants a review of vanity e-mail as a legitimate interest.

Respondent’s additional submission argues that trade names are not trademarks and that Complainant’s argument in its additional submission is not relevant to the instant facts.  Respondent agrees that a common law trademark may create sufficient rights to support an actionable claim under the UDRP however, Complainant’s evidence of usage prior to registration (all by third parties) does not demonstrate trademark use, but is merely trade name usage.  Thus Complainant does not have sufficient trademark rights in DONG because trade names are not within the scope of the UDRP.

Respondent’s business is not a sham.  It has spent over $800,000 in advertising and branding and offers customer support 24 hours a day, 7 days a week to its more than 90,000 customers in 150 different countries.  Complainant contends that since dong.com uses the “.com” TLD its use of the domain name is illegitimate.  According to this logic, the .com TLD should be reserved exclusively for trademark holders.  Complainant cites no direct authority for this proposition because none exists.  The domain name to dignify the surname DONG in its vanity e-mail service is legitimate.  Eight successive UDRP panels have previously concluded Respondent’s other surname based domain names are used legitimately.  Nothing in this case is distinguishable from that precedent. 

With respect to bad faith, Complainant focuses on the 2003 renewal of the domain name registration, contending that because Respondent was on notice of Complainant’s objection, the renewal was in bad faith.  This is immaterial because the good faith use of dong.com in 2003 was the same as it was in 1996.  Numerous cases have held specifically that the bad faith determination is to be viewed at the time of the initial registration. 

FINDINGS

1 –      The disputed domain name is identical to a trademark or service mark in which the Complainant now has rights.

2 –      The Respondent has rights or legitimate interests in respect of the domain name.

3 –      The domain name was not registered in bad faith.

DISCUSSION

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.

Identical and/or Confusingly Similar

           

Respondent concedes that Complainant owns a European Community registration for the

            DONG trademark.  However, there seems to be some question as to whether Complainant actually had any enforceable trademark rights in DONG at the time the domain name was registered.  In light of the panel’s finding that Respondent had rights and legitimate interests in the disputed domain name and that it was not registered in bad faith, the panel finds that it is not necessary to address this issue.

Rights or Legitimate Interests

Respondent has been providing e-mail and website related services to persons with the <dong.com> e-mail address for many years prior to objection or apparent knowledge of Complainant.  The evidence reveals that Respondent first registered this domain name in 1996.  Complainant concedes that several (Respondent says 9) UDRP panels have found  Respondent’s vanity e-mail business to be a “legitimate interest”.  Furthermore, a U.S. Court of Appeals has specifically ruled that Respondent’s vanity e-mail business is a legitimate use of domain names. Avery Dennison v. Sumpton, [1999] USCA9 436; 189 F.3d 868 (9th Cir. 1999).  The Panel finds that Respondent has been using the disputed domain name <dong.com> in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) and has a legitimate interest in the name pursuant to Policy ¶ 4(c)(iii). 

Registration and use in Bad Faith

The Panel finds that Respondent did not register the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because it is using the domain name in connection with a fair business interest.  Further, it has not attempted to trade on Complainant’s name, attempted to interfere with Complainant’s business, attempted to sell the domain name nor attempted to create a likelihood of confusion with Complainant’s DONG mark.  See Schering AG v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000) (finding that Respondent did not register or use the domain name <metagen.com> in bad faith where 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 Respondent has an active website that has been in use for two years and where there was no intent to cause confusion with Complainant’s website and business); see also DJF Assocs., Inc. v. AIB Communications, FA 95612 (Nat. Arb. Forum Nov. 1, 2000) (finding Respondent has shown that it has a legitimate interest in the domain name because Respondent selected the name in good faith for its website, and was offering services under the domain name prior to the initiation of the dispute).

Reverse Domain Name Hijacking:

The panel finds in favor of the Claimant on the claim of reverse domain name hijacking.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Daniel B. Banks, Jr., Panelist
Dated: June 2, 2004

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