The Complainant is Isoterm AS of Norway, represented by Codex Advokat Oslo AS of Norway.
The Respondents are BusinessService Ltd of St Petersburg, Russian Federation (the “First Respondent”) and FirmaOnline Ltd of St Petersburg, Russian Federation (the “Second Respondent”).
The disputed domain name <isoterm.com> is registered with DomReg Ltd d/b/a LIBRIS.COM of St Peterburg, Russian Federation.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2009. On October 15, 2009 the Complainant communicated the Complaint to the First Respondent (Annex No. 11 to the Complaint) and to the Registrar (Annex No. 12 to the Complaint). On October 16, 2009, the Center transmitted by email to DomReg Ltd d/b/a LIBRIS.COM a request for Registrar verification in connection with the disputed domain name. On October 27, 2009, DomReg Ltd d/b/a LIBRIS.COM transmitted by email to the Center its verification response listing the Second Respondent as the registrant of the disputed domain name and indicating that the language of the registration agreement was Russian.
The Center communicated with the Parties on November 11, 2009, concerning the language of the proceedings. On the same date the Center communicated with the Parties on the issue of the deficiencies of the Complaint, in particular that FirmaOnline was not specified as a respondent in the Complaint.
The Complainant filed an amended Complaint addressing the deficiencies in the original Complaint on November 16, 2009. In the amended Complaint the Complainant also requested for the language of the proceedings to be English.
On November 18, 2009, the Second Respondent submitted that in its view the Complaint was still deficient asserting that it was the proper Respondent and not the First Respondent; hence the First Respondent should be excluded from the Complaint. The Center responded on November 19, 2009, outlining that question of substantive assessment of the merits of the claim and/or evidence including defining a proper respondent was the role of the Administrative Panel.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on November 19, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was December 9, 2009.
The Second Respondent filed a Response with the Center on December 8, 2009, and the First Respondent filed a Response with the Center on December 9, 2009, both denying the fact that the First Respondent was the proper Respondent. The First Respondent also denied any previous communication with the Complainant.
The Center appointed Irina V. Savelieva as the sole panelist in this matter on January 13, 2010.
On January 21, 2010, the Complainant filed a supplemental filing concerning its previous communication with the First Respondent which the latter denied in its earlier Response.
On February 9, 2010, the Panel issued Administrative Panel Order No. 1 requesting the Registrar's disclosure of further information surrounding the factual circumstances of the transfer of the disputed domain name from the First Respondent to the Second Respondent. The Registrar replied on February 12, 2010.
The Panel then issued Administrative Panel Order No. 2 on February 19, 2010, requesting any further comments from the Complainant and the Respondents in light of the information provided by the Registrar. The submissions were due on February 26, 2010.
The First Respondent filed a reply on February 25, 2010 and the Second Respondent filed a reply on February 26, 2010.
The Complainant filed a reply with the Center on February 26, 2010.
The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Complainant is a Norwegian limited company headquartered in Norway and was founded in 1971. It is in business of producing frost-proof pipes with a range for water, sewage and industrial purposes. The Complainant markets and sells these products in several countries, including Sweden, Denmark, United Kingdom of Great Britain and Northern Ireland, Germany and Spain.
The Complainant has registration for trademark ISOTERM for services in class 11 and class 17 in Norway under registration number 126917, registered on October 16, 1986 and in Denmark under registration number 1997 00781, registered on May 19, 1997.
The Complainant is also the owner of the domain name <isoterm.no>, first registered on 1999.
The disputed domain name was registered by the First Respondent on February 2, 2001 and was transferred to the Second Respondent sometime in September/October, 2009.
As both Respondents have filed their Responses to the Complaint in English and have not objected to English being the Language of Proceedings the Panel finds that English is the appropriate language for these proceedings.
Both Respondents are submitting that only the Second Respondent should be the proper Respondent in these proceedings. The Panel has seen evidence from the Complainant that the First Respondent and the Registrar were notified of the Complaint on October 15, 2009. The Panel further finds based on available evidence that sometime between October 19, 2009 and October 28, 2009 the disputed domain name was recorded transferred from the First Respondent to the Second Respondent, this being confirmed by WhoIs historic data (printouts from Domain Tools) demonstrating that on October 19, 2009, the holder of the disputed domain name was the First Respondent and on October 28, 2009 the holder of the disputed domain name was the Second Respondent. The Complainant submits that this presents a clear case of “cyberflying”, a practise where the disputed domain name is transferred to a different party or registrar or the registrant information altered in any way once a respondent is aware of proceedings being brought against it under the UDRP. As the Complaint was filed with the Center on October 15, 2009, the actual change of WhoIs records occurred after that date, i.e., after the First Respondent as well as the Registrar became aware of the proceedings.
The Respondents submit that the agreement to transfer the disputed domain name from the First Respondent to the Second Respondent was concluded on September 25, 2009. They further claim that WhoIs records were not amended accordingly and on October 8, 2009, the first Respondent demanded the Second Respondent to amend the WhoIs records. According to the Respondents on October 9, 2009, the Second Respondent requested the Registrar via email to amend the WhoIs record. The Registrar replied on October 26, 2009, stating that they were unable to deal with the request, as the registrant must carry this out himself and providing the Second Respondent with necessary link for updating the WhoIs records.
On the face of the submitted evidence (inter alia printouts from DomainTools), the Panel finds that it has not been provided with convincing evidence that the disputed domain name would have been transferred to the Second Respondent before these proceedings were initiated and prior to the First Respondent being notified of the proceedings. The Panel finds that the Complainant submitted sufficient evidence that at the time the Complaint was filed on October 15, 2009, the First Respondent was the registered holder of the disputed domain name.
Furthermore, the Panel takes the view that in accordance with the Rules when filing a Complaint, the Complainant identifies the Respondent by the official WhoIs registration data. The Panel finds that the Complainant has provided sufficient evidence that at the time of the filing of the Complaint, the First Respondent was the entity identified in the official WhoIs data.
In this regard, the Panel would like to refer to the following cases:
- Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489:
“Under the Policy, which forms part of the registration agreement, a registrant may not transfer a domain name to another holder [par. 8(a)] or another registrar [paragraph 8(b)] during a pending proceeding under the Policy or for 15 days after its conclusion.”
“A complaint is initiated by the trademark owner sending a properly constituted complaint to any Provider approved by ICANN – Rule 3(a). A copy must already have been sent to the respondent by the complainant – Rule 3(xii). The date of commencement of the proceedings is the date on which the Provider completes its responsibilities in connection with forwarding a copy of the complaint to the respondent. Rule 4(c).”
- British Broadcasting Corporation v. Data Art Corporation / Stoneybrook , WIPO Case No. D2000-0683:
“To interpret section 8(a) of the Policy in such a way as to permit transfer of registration after notice of the complaint to the respondent but before official commencement of the proceedings by way of notification from the provider would not do justice to complainants who have initiated complaints in accordance with the Policy and the Rules. Moreover such an interpretation would appear to permit, if not encourage the phenomenon of cyberflying where a registrant of a domain name, when named as a respondent in a domain name dispute case, systematically transfers the domain name to a different registrant to disrupt the proceeding.”
The above-mentioned cases tend to confirm that after UDRP proceedings have been initiated a transfer of a domain name to another party would appear to constitute cyberflight. A transfer of registration occurs upon change of WhoIs data. The Complainant cannot be expected to be aware of any such change in the registration if such change to WhoIs data has not been recorded.
For the above reasons and based on the publicly available WhoIs data at the time of filing of the Complaint, as well as other evidence submitted in this regard, the Panel finds that both the First and Second Respondents are proper Respondents in these proceedings and will proceed with a decision accordingly.
C. Supplemental Filing
On January 21, 2010, the Complainant filed a Supplemental Filing concerning previous attempts to contact the First Respondent on May 27 and 29, 2009, regarding the disputed domain name. Paragraph 10 and 12 of the Rules grant the Panel sole discretion of assessing admissibility of supplemental filings. The Panel finds that as both Respondents rely on the fact that the Complainant had not communicated with the First Respondent about the disputed domain name, this presents important evidence that should be considered by the Panel. Accordingly, the Panel finds the Supplemental Filing as admissible in these proceedings.
The Panel shall also take consideration of any further submissions, documents and other evidence filed by the Complainant, the First and Second Respondents and the Registrar following the two Administrative Orders of the Panel.
(a) The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights:
- The domain name is identical to the trademarks registered by the Complainant. The Complainant has registered the trademark ISOTERM both in Norway and Denmark.
- In Norway the trademark ISOTERM was registered on October 16, 1984 (Registration No. 126917) and in Denmark the trademark ISOTERM was registered on May 19, 1997 (Registration No. 1997 00781).
(b) The Respondent has no rights or legitimate interests in the disputed domain name:
- The First Respondent has already lost several UDRP domain name disputes where the disputed domain names were identical or confusingly similar to trademarks held by trademark owners.
- As of May 27, 2009, the First Respondent was the holder of a total number of over 800 domain names. The First Respondent thereby shows a pattern of registering domain names corresponding to trademarks owned by others without having any rights or legitimate interests in the domain names.
- The disputed domain name was offered for sale for an opening bid of USD 7220 and there is no other use of the domain name, apart from offering it for sale on the website.
- The Complainant's counsel attempted contacting the First Respondent via telephone and email but received no response.
- The trademark ISOTERM is a distinctive word created by the Complainant and therefore the Respondent cannot claim any rights based on arguments that the disputed domain name is a generic word.
- The Second Respondent has not provided any details of any legitimate interests in the disputed domain name. The website set up for the disputed domain name <isoterm.com> is blank. The Second Respondent has no legitimate interests in the disputed domain name and is merely an arrangement from the First Respondent to avoid proceedings.
(c) The First Respondent registered and is using the disputed domain name in bad faith:
- <isoterm.com> was registered on February 2, 2001. The trademarks owned by the Complainant were both registered prior to the registration of the disputed domain name. The Complainant has been in business since 1971 and has been exporting its products to several countries under the ISOTERM trademark, including Sweden, Denmark, United Kingdom of Great Britain and Northern Ireland, Germany and Spain.
- The disputed domain name <isoterm.com> is identical to the ISOTERM trademark owned by the Complainant.
- The Respondent registered the disputed domain name solely for the purpose of selling it for a profit to potential buyers. The fact that the disputed domain name is for sale with an opening bid of USD 7220 is clear evidence of bad faith.
- Since the Complainant has used the trademark ISOTERM for a long time, it is clear that the Respondents had knowledge of the existence of the Complainant's pre-existing trademark rights.
- The disputed domain name is used in bad faith due to it being offered for sale for a substantial amount of money. The offering of the disputed domain name for sale at an auction site is further evidence of bad faith.
- The First Respondent has not responded to the Complainant when the Complainant's counsel enquired as to the legitimate interests in the disputed domain name. No indication of any legitimate interests has been shown by the Respondents.
- The First Respondent has demonstrated a pattern of registering domain names corresponding to trademarks owned by others without having any rights or legitimate interests in them. The Respondent is continuing bad faith activities on a large scale as the Respondent is the owner of over 800 domain names.
- The circumstance of changing registration details from the First Respondent to the Second Respondent before the disputed domain name was locked by the Registrar is further indication of bad faith.
- The disputed domain name was publicly offered for sale on November 16, 2009, and the Complainant submits this is evidence of bad faith on part of the Second Respondent.
The First Respondent does not agree with being part to the proceedings as it does not consider itself to be the proper Respondent, and as such does not agree to be bound by the decision rendered by the Center.
(a) The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights:
- The First Respondent submits that the Complainant never contacted the First Respondent.
- The disputed domain name represents a descriptive dictionary word and common practice does not pay attention to endings or suffixes in order to find that the domain names are identical or confusingly similar.
(b) The Respondent registered and is using the domain name in bad faith:
- The First Respondent submits that en masse registration of domain names that consist of generic, common or descriptive terms if supported by proven legitimate interest and rights and absence of bad faith is recognised both by UDRP panels and Russian Arbitration Courts as a legitimate practice.
- The disputed domain name <isoterm.com> was transferred to the Second Respondent for consideration which is not more than the First Respondent's out of pocket expenses associated with the disputed domain name.
- If a party has a legitimate interest in selling descriptive domain names, then the offer to sell such domain name even after the enquiry by a complainant does not make such interest illegitimate.
- The First Respondent acted within the framework of fair trade practice by offering the disputed domain name for sale on its website to an unlimited number of people, thus foregoing the significant profit it could have gained by addressing the offer to sell directly to the Complainant or other owners of the ISOTERM trademark.
- The First Respondent is currently under financial difficulties, which has resulted in it selling off a large number of domain names to compensate their losses but not to gain any profit.
(c) Further, the First Respondent is asking for a finding of reverse domain hijacking for the following reasons:
- The Complainant never approached the First Respondent to settle the dispute amicably. Only after the disputed domain name was sold the Complainant decided to exploit the situation with the delay in the change of WhoIs data. This indicates that the proceedings were brought in bad faith.
- The Complainant is trying to create a likelihood of conspiracy by bringing the Complaint against both Respondents and this constitutes abuse of procedure and further evidence at the attempted reverse hijacking.
The Second Respondent argues that the disputed domain name was properly transferred from the First Respondent to the Second Respondent for USD 200.00 under Domain Name Rights Transfer Agreement dated September 25, 2009, and there was merely a delay of transferring the domain name by the Registrar. The Second Respondent further presents the following arguments:
(a) The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights:
- The disputed domain name is based on complicated generic terms and is an aggregate of two generic words “isolation” and “termal” (“thermal”) and is associated with “isothermal production” (‘izotermicheskaya produktsiya” in Russian).
(b) Right or legitimate interests:
- The Second Respondent has adopted and is now successfully carrying out its business plan on a business project called ISOTERM.
- The Complainant has not even tried to find out what legitimate interests and rights the Second Respondent could have with regard to the disputed domain name.
- The Complainant is suspiciously reluctant to speak about the motifs that stopped it from registering the disputed domain name prior to February 2, 2001.
(c) The Respondent registered and is using the disputed domain name in bad faith:
- The Second Respondent complied with the requirements of the minimal check of the domain name in Google, which gave no indication that the disputed domain name was similar to a registered trademark.
- The Complainant has not presented any proof of its trademark being famous or even well-known,
(d) Further, the Second Respondent is asking for a finding of reverse domain hijacking for the following reasons:
- The Complainant has not undertaken any significant effort to settle the dispute amicably and even did not send a formal notification.
- The Complainant is trying to besmear the business reputation of the Second Respondent by giving fabricated and unsubstantiated accusations in terms of its affiliation with BusinessService Ltd and involvement in the so called “cyberflying” practice.
- The name “isotherm” is common and generic and the Respondent is legitimately using the disputed domain name.
The Complainant must prove the elements required by the Policy. In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Pursuant to paragraph 15(a) of the Rules the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The Complainant has registered the trademark ISOTERM in Norway and Denmark. The Complainant submits that the disputed domain name <isoterm.com> is confusingly similar to the trademark ISOTERM as the domain name incorporates the whole of the trademark, this being a registered trademark.
The Respondents submit that the trademark ISOTERM is a combination of two generic terms and also question whether trademark registration should have been permitted to such a term.
The Panel has no jurisdiction to decide the validity of trademark registrations and cannot accept the arguments of the Respondents on that basis. The Panel refers to Hola S. A. v. Idealab, WIPO Case No. D2002-0089:
“It is not for the Panel to decide whether registration of the marks should or should not have been granted. The holding of a registered mark is sufficient for the purposes of the Policy. Any claim that the registration should not have been granted or should be revoked falls to be decided by the Courts of the relevant country.”
However the Panel does have the ability to decide whether ISOTERM constitutes a generic word. The Panel finds that ISOTERM is not a generic word in either English or Russian. The Panel further notes that ISOTERM constitutes a distinctive mark that has been an established trade name and trademark of the Complainant in Europe for the past 40 years.
In fact a Google search for “isoterm” brings up the Complainant's website on <isoterm.no> domain name. While the Respondents argued that there is evidence that “isotherm” is a combination of generic terms1, the Panel finds that the disputed domain name <isoterm.com> is identical to the Complainant's registered trademark ISOTERM.
The Panel refers to a number of past WIPO UDRP decisions, which confirm that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (Toyota France and Toyota Motor Corporation v. Computer-Brain, WIPO Case No. D2002-0002 and Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd, WIPO Case No. D2000-0802).
The Panel finds that the Complainant has satisfied its burden of proof under paragraph 4(a)(i) of the Policy.
The Complainant contends that the Respondents have no rights or legitimate interests in the disputed domain name.
According to paragraph 4(c) of the Policy the following circumstances, if proved, demonstrate a respondent's rights or legitimate interests in a 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; or
(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; or
(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 at issue.
A respondent may elect to show rights and legitimate interests, non-exhaustively, by producing proof under paragraphs 4(c)(i)-(iii) of the Policy.
Firstly, there is no evidence that before any notice of the dispute to the Respondents, the First Respondent was using the disputed domain name for a legitimate offer of goods and services. The First Respondent did not use the domain name in connection with a bona fide offering of goods and services, for example, according to the standards set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
According to the documents submitted by the Complainant the disputed domain name <isoterm.com> linked, at the time of filing of the Complaint to a website offering the disputed domain name for sale with a starting bid of USD 7220. The website itself did not provide a legitimate offering of any goods or services.
The Panel finds no evidence that the First Respondent was using or is using the disputed domain name for a legitimate offering of goods and services.
Secondly, as to paragraph 4(c)(ii) of the Policy there is no evidence that the First Respondent has been commonly known by the disputed domain name.
The Panel recalls that the First Respondent registered the disputed domain name on February 2, 2001. The Complainant asserts that the trademark ISOTERM has been registered in Norway in 1986 and in Denmark in 1997. The Complainant also exports its products under the trademark ISOTERM to other European countries.
In the circumstances of this case, the Panel finds it more likely than not that the First Respondent knew about the Complainant's trademark at the time of registration of the disputed domain name. A simple Google search would have alerted the First Respondent of the existence of the Complainant and its trademark.
It is this Panel's view that the First Respondent most likely registered the disputed domain name with awareness of the Complainant's products and trademarks as well as goodwill associated with them.
As a separate observation, the Panel notes that the First Respondent's submission that it was never contacted by the Complainant does not appear to be correct as the Complainant presented copies of its emails dated May 27 and 29, 2009, communicated to the First Respondent in relation to the disputed domain name.
Thus, the Panel finds that the First Respondent's use of the disputed domain name does not fulfill any of the possible defenses enumerated under paragraph 4(c) the Policy.
This Panel's view is that the same applies to the Second Respondent.
The Panel finds no evidence that the Second Respondent has been commonly known by the disputed domain name.
The Panel notes that the Complainant made an attempt to contact the Second Respondent without success and the website which had been set up for the disputed domain name was blank at some point (Annex 17 to the amended Complaint).
The website subsequently set up by the Second Respondent under the disputed domain name is used merely for placing names and logos of predominantly Russian companies and providing links to these companies' websites. In the Panel's view such use does not correspond to the requirements of paragraph 4(c) of the Policy. The Second Respondent further provided no evidence that it has rights to use third party logos and trade names that are currently featured on its website. Further the Second Respondent provided no evidence that such use of the third parties logos featured on its website represents legitimate offering of services.
The Panel finds that the Second Respondent's use of the disputed domain name does not constitute a bona fide offering of services under paragraph 4(c) the Policy.
This conclusion of the Panel is also based on the findings that the First Respondent appears to be involved in a pattern of conduct whereby it registers domain names associated with trademarks of third parties on a large scale.
The Panel further notes that the record includes inter alia proof of a public listing of the disputed domain name to be for sale. In view of the apparent cyberflight in this matter and the fact that the disputed domain name was for sale, lead the Panel to a conclusion that the Second Respondent has no rights or legitimate interests to the disputed domain name.
The Panel finds unconvincing the Respondents' arguments about legitimate transfer of the disputed domain name from the First Respondent to the Second Respondent prior to the commencement of current administrative proceedings and the alleged failure of the Registrar to register the transfer in time.
In its conclusion of the Respondents' involvement in cyberflying the Panel relies on CompuCredit Corporation, CompuCredit Intellectual Property Holdings Corporation III v. Domain Capital and Aspire Prints, WIPO Case No. D2007-0407 where the administrative panel dealt with similar situation and came to the conclusion that “the principal manifestation of cyberflight in general has been when a registrant, in an effort to avoid judicial or UDRP proceedings, transfers a domain name after a complaint has been made against it.” In the above UDRP case the administrative panel also found that this suggests bad faith on the part of the second respondent.
Accordingly, the Panel finds the Complainant has carried out its burden of proof to show that neither of the Respondents have rights or legitimate interests in the disputed domain name.
Paragraph 4(b) of the Policy provides that the following circumstances are deemed to be evidence that a respondent has registered and is using a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has 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 the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has 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 the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of its website or location or of a product or service on its website or location.
The Complainant contends that the Respondents have violated the bad faith provision of the Policy because the disputed domain name was registered and used for a website that was offering the disputed domain name for sale.
The Panel finds that in view of the overall circumstances of this case there is sufficient evidence of bad faith on part of the Respondents.
The First Respondent clearly engages in a pattern of conduct of registering domain names that incorporate trademarks that belong to third parties. As per evidence submitted by the Complainant, the First Respondent is or was the registered owner of more than 800 domain names.
The First Respondent has also been a Respondent in previous UDRP proceedings, which all resulted in transfers of the disputed domain names to the complainants. See, for example, Laboratoire Biosthétique Kosmetik GmbH & Co. KG and MCE S.A.S. v. BusinessService Ltd., WIPO Case No. D2007-1836; INDUSTRIAL MARTI DE RELOJERIA, S.L. v. BusinessService Ltd., WIPO Case No. D2008-1549; Imperial Chemical Industries Plc, Desowag GmbH v. BusinessService Limited, WIPO Case No. D2007-0998 and BrandStrategy, Inc. v. BusinessService Ltd., WIPO Case No. D2007-0749. The Panel finds that the First Respondent engages in a pattern of conduct that clearly indicates bad faith and previous decisions made against the First Respondent serve as evidence of that fact.
The Panel also draws inference of bad faith from the act of cyberflight committed by the Respondents. The Panel finds it likely that the First Respondent has engaged with the Second Respondent in an elaborate attempt at cyberflight due to previously being unsuccessful at domain name disputes and in order to evade these proceedings.
The Panel finds that the Complainant presented evidence that the First Respondent was and is in violation of the provisions of paragraphs 4(b)(i)-(ii) of the Policy.
The Panel further holds that both Respondents have registered and were/are using the disputed domain name in bad faith. This Panel finds that the Respondents have not conducted any legitimate business activity using the disputed domain name. Based on the record, the Panel finds on balance that the Respondents must have known the Complainant's products and should have been aware of the trademarks of the Complainant. These findings, together with the finding that the Respondents have no rights or legitimate interests in the domain name, lead the Panel to the conclusion that the disputed domain name was registered and is being used by the Respondents in bad faith.
Therefore, the Panel finds that the Complainant has established that the Respondents registered and used the disputed domain name in bad faith.
Both Respondents have asked the Panel to make a finding of reverse domain name hijacking by the Complainant. On this matter the Panel refers to case Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, supra which states:
“Rule 1 defines reverse domain name hijacking as ‘using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.' See also Rule 15(e). To prevail on such a claim, a Respondent must show that the Complainant knew of the Respondent's unassailable right or legitimate interest in the Disputed Domain Name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith. See, e.g., Sydney Opera House Trust v. Trilynx Pty. Ltd. ( WIPO Case No. D2000-1224) and Goldline International, Inc. v. Gold Line ( WIPO Case No. D2000-1151).”
Due to the Panel's findings above, the request for a finding of reverse domain name hijacking is denied.
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 <isoterm.com> be transferred to the Complainant.
Irina V. Savelieva
Sole Panelist
Dated: April 19, 2010
1 This issue is more commonly addressed under the second and third elements of the Policy. The Panel notes here that the Second Respondent's allegations that the word “isoterm” is an aggregate of two generic words is not accepted by this Panel as it refers to the word “termal” which does not exist in English language. Other arguments of the Second Respondent are based on the examples of the use of this word in the Russian language.