WIPO Arbitration and Mediation Center

The Complainant is Teranet Land Information Services Inc, a company incorporated in Ontario, Canada whose address is 1 Adelaide Street East, Suite 1405, Toronto, Ontario M5C 2V9, Canada. The Complainant’s authorised representative is Cassels Brock & Blackwell LLP of 40 King Street West, Suite 2100, Toronto, Ontario M5C 3C2, Canada. The Respondent is Verio Inc of 8005 South Chester Street, Suite 200, Inglewood, Colorado, 80112 USA and is represented by Messrs Oppedahl & Larson LLP, PO Box 5088, Dillon, CO 80435-5088, USA.

The domain name in dispute is "teranet.com". The registrar of the domain name is Internet Domain Names Worldwide which is a division of Melbourne IT Limited.

3. Procedural History

The complaint was submitted to the WIPO Arbitration and Mediation Centre on 25  August 25, 2000, by hard copy and on 7 September 7, 2000, in electronic form. An acknowledgement of receipt of the complaint was sent to the Complainant on 6  September 6, 2000. Verification was given by the Registrar on 7 September 7, 2000.

Notification of the complaint and commencement of the administrative proceeding took place on 21 September 21, 2000. A Response was received by the WIPO Arbitration and Mediation Centre by email on 7 October 7, 2000, and by hard copy on 9 October 9, 2000. A request for a panellistpanellist nomination was made by the Complainant on 30 October 30 , 2000, with a reply to the request on 2 November 2, 2000. An administrative panel consisting of Clive Duncan Thorne (Presiding Panellist), Jacques A Leger and Milton L Mueller was appointed on 27 December 27, 2000.

The Complainant is the owner of the trade mark "Teranet" which is registered in Canada and the United States. It is also included as a component of a number of additional registered marks in Canada and the United States and a number of pending applications.

In particular the Complainant is the owner of Canadian trade mark registration number TMA 404302 for the mark "Teranet" registered on 30 October 30, 1992, and Canadian registration TMA 404303 for the mark "Teranet" plus design registered on 30  October 30,  1992. The marks are registered in Canada for use in association with goods including land related information databases and systems and information products including reports, charts and maps generated by these databases and services including business providing land information and registration data, providing consulting services, digital mapping and other services as set out in the Complaint.

The Respondent Verio Inc is a publicly traded company on the Nasdaq stock exchange in the United States and provides internet services including domain name registration and web hosting services and ecommerce services to customers world wide.

It is material that on 8 August 8, 1998, a US corporation called TerraNet Inc was acquired by Verio Inc. It appears that this acquisition included the assets of TerraNet Inc and that a number of domain names were acquired as part of the assets of TerraNet Inc including the disputed domain name "teranet.com". Details of this are set out in the declaration of MrMr. J R Oldroyd whose affidavit is annexed to the Response. Mr . Oldroyd gives evidence to the fact that TerraNet Inc purchased the domain name in dispute in 1996, from a prior registrant in order that TerraNet Inc might use the domain name to direct emails which were not being received as a result of the misspelling of the domain name with only one letter "r" in the name "TerraNet". TerraNet according to MrMr.  Oldroyd’s evidence also owned the domain name "terranet.com".

The current position is summarised in MrMr. Oldroyd’s affidavit at paragraph 4 which states:-

"The handling of email directed to addresses at "teranet.com" was not changed following the acquisition of TerraNet Inc by Verio Inc although the MX records of the teranet.com domain name was recently changed to a Verio server rather than the TerraNet server. Thus the MX records continue to act to redirect email which is misaddressed to the correct email recipient based on their "terranet.com" address".

No evidence has been filed in reply to MrMr. Oldroyd’s evidence by the Complainant.

In order to succeed in its request for an order to transfer the domain name the Complainant has to prove that each of the three elements set out in paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy are present. It is incumbent on the Complainant to show:-

(i) The Respondent’s domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interest in respect of the domain name; and

(iii) The Respondent’s domain name has been registered and is being used in bad faith.

The Panel proceeds to deal with each of these in turn.

(i) The Respondent’s domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.

The domain name in dispute is identical to the Complainants Canadian and United States trade mark "teranet". The Panel is satisfied on this issue having reviewed the evidence of the trade mark registrations annexed as Annex C to the complaint. However, the mere similarity or exact identity of a Domain Name with a trade mark cannot per se be a determining factor as trade mark rights may be vested in the same country for identical trade marks if the goods or services are of a different nature (with the exception for notorious or well known marks). Thus it is trite law that this criteria has to be examined in light of the surrounding circumstances of each case.

The domain name consists additionally of the top level domain name indicator ".com". The panel accepts that this does not affect the issue.

(ii) The Respondent has no right or legitimate interest in respect of the domain name.

The Complainant argues that the Respondent does not appear to have used or to be using the domain name registration "teranet.com" nor does it appear to using the trade mark TERANET. It asserts that there is no evidence that the mark TERANET is not being used on the web site at "teranet.com". It does however accept the Respondent is using the domain name registration to redirect visitors to its main sites at "verio.com" and "verio.net". At paragraph 8 of the Complaint the Complainant refers to a telephone conversation on 7 April 7, 2000, with Mr. Paul Niedermeyer of the Respondent in which Mr. Niedermeyer apparently indicated to the Complainant that the Respondent had purchased TerraNet Inc in 1998. The Complainant accepts that although TerraNet Inc may have had a particular legitimate interest in the domain name but that the Respondent has no longer such legitimate interest.

The Respondent denies that it has no rights or legitimate interest in respect of the domain name. It refers to the fact that although there is no separate web site being maintained at "www.teranet.com" the domain name has been used since its acquisition by TerraNet Inc and continues to be used by Verio for the redirection of misaddressed to customers with email addresses in the ""terranet.com" domain and asserts that this is a legitimate and good faith use of the domain name.

However, the Panel is of the view that the use of a web site merely for the purpose of redirecting visitors to a different site does not per se create an absence of legitimate interest. In fact, it was decided in Shirmax Retail Ltd/Détaillants Shirmax Ltée v. CES Marketing Group Inc., AF-0104 that:

"" […] use on the web merely for the purpose of redirecting visitors to a different site constitutes a legitimate fair use, as long as this use is not misleading to consumers and does not tarnish a trademark.""

In the case at hand, redirection is not misleading to consumers, since the parties are involved in two distinct business undertakings, in two different fields of activity. Furthermore, such redirection leads to verio.com, which is the Respondent'’s main page: hence it cannot per se tarnish the Complainant'’s trademark in any way failing or in the absence of proof to the contrary.

The burden of proof is upon the Complainant to prove that the Respondent has no rights or legitimate interest in respect of the domain name. Given the admission of the Complainant and the explanation by the Respondent that the domain name is used for the purposes of redirection and to avoid lost email and which is supported by the evidence of MrMr. Oldroyd the Panel finds that the Complainant has failed to discharge its burden of proof in respect of this paragraph of the Policy.

(iii) The domain name has been registered as being used in bad faith.

Since the Panel has found for the Respondent in relation to paragraph 4(a)(ii) of the Policy it is unnecessary for the Panel to consider the issue of bad faith. However in the event that the Panel were wrong in its findings in relation to paragraph 4(a)(ii) and given the emphasis placed by the Respondent on the issue of bad faith the Panel considers that it is right to address this issue.

The Panel is mindful of the fact that in a number of jurisdiction, good faith is deemed to exist in the absence of proof to the contrary.

In the case at hand, the Complainant relies upon the telephone conversation of 7 April 7, 2000, with MrMr. Paul Niedermeyer as evidence of bad faith supported by the following facts:-

(a) That the Respondent had obtained in excess of 1,000 domain name registrations. The Complainant takes this as indicating that the Respondent acquired the domain name primarily for the purpose of selling, renting or otherwise transferring domain name registrations or to prevent owners of trade marks from reflecting those trade marks and domain registrations, and

(b) That the Respondent would have considered an offer to purchase the registration for some amount "in the range of or in excess of US$1 million". According to the Complainant MrMr.  Niedermeyer indicated that among the numerous domain name registrations that have been owned by the Respondent were domain names that have been sold for high six figure numbers.

The Respondent has annexed an affidavit sworn by MrMr. Paul Niedermeyer which refers to the telephone conversation of 7 April 7, 2000, in which he states (in summary):-

(i) I also specifically stated that Verio Inc is not in the business of warehousing or selling domain names.

(ii) Because Verio had a US trade mark registration for the mark "TERRANET" it made it very unlikely that the Respondent would entertain an offer that was less than US$ 1 million.

(iii) The Respondent had sold one domain name for a price in high six figures.

(iv) There is no policy on the part of the Respondent of holding a domain name for a certain period of time because the Respondent "is not in the business of warehousing or selling domain names".

Given that the burden of proof of establishing bad faith falls squarely upon the Complainant, the Panel onsiders is of the view that in light of the affidavit of MrMr. Niedermeyer and the lack of any contrary primary evidence from the Complainant that the Complainant has failed to discharge its burden of proof in respect of this paragraph of the Policy.

(iv) Conclusion

It follows that the Complainant has failed to succeed in proving each of the three elements set out in paragraph 4(a) of the Policy. Accordingly the Panel declines to issue a decision that registration of the domain name "teranet.com" be transferred to the Complainant.

It follows that the Complainant has failed to succeed in proving each of the three elements set out in paragraph 4(a) of the Policy. Accordingly the Panel declines to issue a decision that registration of the domain name "teranet.com" be transferred to the Complainant.

6. Respondents request for a finding of bad faith by the Complainant

The Respondent has asked for a declaration by the Panel that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. The Respondent argues that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

The panel has considered the Respondent’s submissions on this point and the evidence of the Complainant’s rights. Two members (the Presiding Panellist and MrMr. Leger do not accept accept that they support evidence of bad faith on the part of the Complainant in filing its Complaint. MrMr. Muller in a dissenting opinion annexed to this decision sets out a contrary view. Accordingly, by majority, the Respondent’s request for a declaration of bad faith by the Complainant is refused.

The Panel finds for the Respondent and declines to order that the domain name "teranet.com" be transferred from the Respondent to the Complainant and does not find that the Complaint has been brought in bad faith by the Complainant.

Clive Duncan Thorne
Presiding Panellist

Jacques A. Léger, Q.C.
Panelist

Dated: January 25 , 20010

While I concur with the decision in this case I differ with its treatment of the reverse domain name hijacking counter-claim.

The ICANN Uniform Dispute Resolution Policy (UDRP) makes challenges to domain name assignments relatively easy and inexpensive. It is, therefore, absolutely essential for panelists to ensure that it be carefully restricted to cases of abusive, bad faith registration. In particular, we must not allow it to be used by complainants to seek control of names that happened to be registered by someone else first. The mere possession of a trademark, in and of itself, does not give a party a colorable claim to a domain name under the UDRP.

A claim of reverse domain name hijacking also must meet a burden of proof: there must be evidence that the complaint was brought in bad faith. The persuasive evidence of complainant bad faith I find is the difference in the two reports of the 7 April 7, 2000, telephone conversation with Verio’'s Paul Niedermeyer. If we accept Niedermeyer’'s account of that conversation, as the decision does, it is difficult to see how the complaint could honestly contain the assertions it does. It is evident that the Complainant chose to ignore salient and rather obvious facts about the way Internet Service Providers such as Verio use, acquire and resell domain names. All I see in this complaint is an attempt to lower the price of acquiring the domain name by substituting adjudication for market transactions. That is an abuse of the UDRP and should be recognized as such.

Milton L Mueller
Panelist

Dated: January 25, 2001