WIPO Domain Name Decision: D2007-1369

Complainant is Michelman, Inc, of Cincinnati, Ohio, United States of America, represented by the law firm Thompson Hine LLP, of United States of America.

Respondent is Internet Design, of Germantown, Pennsylvania, United States of America, represented by ESQwire.com Law Firm, of United States of America.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 12, 2007. On September 17, 2007, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the domain name at issue. On September 19, 2007, Dotster, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced September 21, 2007. In accordance with the Rules, paragraph 5(a), the due date for the Response was October 11, 2007. Respondent requested an extension to file a Response to which Complainant raised no objection. The due date for the Response was extended to October 18, 2007. The Response was filed with the Center October 18, 2007.

Complainant requested a single-member Panel. Exercising its right under paragraph 5(b)(iv) of the Rules, Respondent requested a three-member panel. The Center appointed Dennis A. Foster, Richard G. Lyon, and David E. Sorkin as panelists in this matter on November 15, 2007. The Panel finds that it was properly constituted and has jurisdiction over this proceeding. Each member of the Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

Each party submitted a proposed supplemental filing to the Center. After review of the Complaint and Response the Panel determined that nothing in the original pleadings justified any further submissions. The Panel therefore decides this proceeding based upon the Complaint, the Response, and the evidence submitted by the parties with those pleadings.

Complainant makes value-added coatings, emulsions, dispersions, and powders used for commercial applications. On its principal website at “www.mychem.com” Complainant identifies its products as “surface modifiers or coding technology.” Complainant’s products are sold entirely to other manufacturers for use with many different products; Complainant does not appear to sell any products at retail.

Complainant has registered trademarks for MICHELMAN in Canada (issued in 2007), China (2003), the European Community (1999), France (1993), Germany (1999), Singapore (2007), the United Kingdom (1993), and the United States of America. Its United States trademark issued in 2003, based upon an application filed in 1995. The U.S. mark is registered in International Classes 1, 2, and 7; use in the first two classes is not permitted “for use or sale to the general public as consumer goods.”

Respondent registered the disputed domain name in 1997. From that date to the present, it has never used the disputed domain name for an active website. The Panel’s examination of this site yielded a blank page.

In July 2005, an officer of Complainant wrote to Respondent, pointing out Complainant’s name and trademark and requesting transfer of the disputed domain name. Respondent replied, stating that the disputed domain name was “not for sale” and that Respondent “had been unaware of [Complainant’s] company and its products since registration of the domain name in 1997.” Complainant sent another letter, inquiring of Respondent’s plans for the disputed domain name; Respondent did not reply to this inquiry. In September 2006 Complainant submitted an anonymous unsolicited offer to purchase the disputed domain name through a service operated by Network Solutions. A series of offers and counteroffers eventually ended with Complainant’s making a bid of $15,000 US and Respondent’s countering that its minimal acceptable price was $25,000 US.

Complainant has rights in its MICHELMAN mark by virtue of many national registrations and continuous use in commerce since 1959. The disputed domain name is identical to Complainant’s mark except for the addition of a top-level domain identifier, “.com”.

Respondent has no rights or legitimate interests in the disputed domain name. Neither Respondent nor its principal is known by that name or any variant of it. Complainant has not licensed Respondent to use its mark. Respondent has never made any use of the disputed domain name, legitimate or otherwise.

Because Respondent has no right to the MICHELMAN mark, its registration of the disputed domain name in 1997 was in bad faith as made after Complainant had established registered trademark rights in many countries and common law rights in the United States. The word “Michelman” has no meaning other than to identify Complainant and its products. Respondent’s nonuse of the disputed domain name brings this case within the “warehousing” doctrine of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and Strålfors AB v. P D F AB, WIPO Case No. D2000-0112. Respondent’s offer to sell the disputed domain name for an amount in excess of its costs of registration constitutes use in bad faith and may be used to infer registration in bad faith.

While not contesting Complainant’s trademark rights, Respondent points out that Complainant did not obtain a registered trademark in the United States until 2003, six years after Respondent registered the disputed domain name. There is no basis to infer that Respondent had any knowledge of Complainant’s mark at the time it registered the disputed domain name.

In a sworn statement submitted with the Response, Respondent’s principal avers that he registered the disputed domain name “for a website containing commentary concerning the issue of abortion rights,” which was “an exercise of free speech which establishes its legitimate interest.” Respondent selected the disputed domain name because “Michelman” is the surname of Kate Michelman, an outspoken proponent of abortion rights. Complainant’s offer to purchase the disputed domain name for $15,000 US constitutes “a tacit acknowledgement of Respondent’s legitimate interest.”

Respondent had and may be imputed no knowledge of Complainant or its marks at the time it registered the disputed domain name. Complainant is a company little known to the public; its mark is disclaimed for consumer products and it sells no consumer products. In a recent advertisement Complainant in fact stated “Who is Michelman? Frankly most people can’t answer this question because Michelman products are usually invisible to the consumer.” Respondent resides in the United States of America and has and may be imputed no knowledge of Respondent’s registered marks in any other countries. The Telstra doctrine does not apply for two reasons. Telstra was a default case; here Respondent has provided evidence of good faith registration and its intended use of the disputed domain name, so bad faith may not be inferred. Unlike the distinctive marks in the two cases cited by Complainant, “Michelman” is a common surname in the United States.

Respondent’s counteroffer does not provide evidence of bad faith. Because Complainant proceeded anonymously Respondent had no way of knowing it was dealing with a mark owner and in any event a reply to an unsolicited offer does not constitute bad faith, particularly where, as here, Respondent had not targeted Complainant or its mark when it registered the disputed domain name.

Respondent asserts that Complainant commenced this proceeding as an alternative (“Plan B”) to acquire the disputed domain name after being rebuffed in the anonymous auction process. Complainant never challenged Respondent’s earlier denial of knowledge of Complainant’s mark and never commenced any legal action until the present proceeding. Such conduct entitles Respondent to a finding of reverse domain name highjacking

The determination of whether a Complainant has rights in a mark sufficient to invoke the Policy under paragraph 4(a)(i) of the Policy is made at the date the Complaint is filed. See, e.g., Valve Corporation v. ValveNET, Inc., ValveNET, Inc., Charles Morrin, WIPO Case No. D2005-0038. At that date Complainant had registered marks in many countries around the world, thus meeting the first element of this Policy criterion. As the disputed domain name is identical to Complainant’s mark, paragraph 4(a)(i) is satisfied.

Because Complainant must prove a negative, prevailing practice in Policy disputes is to require Complainant to make out a prima facie case that Respondent lacks rights or legitimate interests. If that case be made, the burden of production shifts to Respondent to demonstrate a right or legitimate interest.

Complainant has made out its prima facie case by showing the existence of its registered trademark, its uncontested statement that it has not authorized Respondent to use that mark, and that Respondent is not individually or in its business known by the word “Michelman”. Respondent has not provided any basis to establish any right or legitimate interest. Its claim of “free speech” or a discussion forum on abortion issues is uncorroborated by any evidence. Even if Respondent’s claimed intended use could somehow be construed as being “in connection with a bona fide offering of good or services, the safe harbor in paragraph 4(c)(i) of the Policy requires “demonstrable preparations” for such use, not just good intentions. “Demonstrable preparations” must be proven; here Respondent has not even asserted that it made any preparations to use the disputed domain name in any manner. Similarly, the safe harbor in paragraph 4(c) (iii) requires a respondent to be making an actual legitimate non commercial or fair use of the domain name, not merely expressing such intent. In the ten years following Respondent’s registration of the disputed domain name it has made no use of it for an active website. Respondent’s self-serving and conclusionary statement in his affidavit, made ten years after the fact and for purposes of this proceeding, is of no moment and in fact irrelevant when not supported by any objective evidence. Paragraph 4(a)(ii) has been satisfied.

Respondent correctly argues that a counteroffer to an anonymous, unsolicited offer to purchase the disputed domain name does not establish bad faith. See, e.g., Gigglesworld Corporation v. Mrs Jello, WIPO Case No. D2007-1189. The issue for the Panel to decide, therefore, is whether the Telstra doctrine applies to the facts of this case.

Ten years’ nonuse without a demonstrable right or legitimate interest clearly amounts to use in bad faith consistent with the reasoning of Telstra. The other facts in this proceeding lead the Panel to infer bad faith in registration. “Michelman” is not a common or “dictionary” word and it is a relatively uncommon surname in the United States. Respondent has no connection of any kind to the word “Michelman”. Respondent does not contend that he acquired the disputed domain name because of its value as a common word or phrase; rather it claims to have registered it because of the popular pro-choice advocate of that name. On the evidence – more precisely, on the dearth of evidence, plus an apparently concocted excuse – the most reasonable inference from ten years on the shelfis that Respondent did in fact know of Complainant and its trademark rightsand registered the disputed domain name hoping to sell or exploit it in some manner in the future.¹

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <michelman.com> be transferred to the Complainant.


Richard G. Lyon Presiding Panelist
Dennis A. Foster Panelist	David E. Sorkin Panelist

Dated: November 26, 2007

¹ Even if Respondent did, as it claims, register the disputed domain name because of its identification with a public figure with whom Respondent has (so far as the record shows) no connection and no interest, absent some supporting evidence there is no basis to infer preparation for non-commercial use.

² As the Panel has ordered transfer of the disputed domain name, Respondent's request for a reverse domain name hijacking finding is denied.