WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Xsens Technologies B.V. v. International Names Ltd.

Case No. D2006-1280

1. The Parties

The Complainant is Xsens Technologies B.V., Netherlands, represented by an internal representative.

The Respondent is International Names Ltd., Bahamas.

2. The Domain Name and Registrar

The disputed domain name <moven.com> is registered with Capitoldomains, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 4, 2006. On October 6, 2006, the Center transmitted by email to Capitoldomains, LLC a request for registrar verification in connection with the domain name at issue. On October 9, 2006, Capitoldomains, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 the Respondent of the Complaint, and the proceedings commenced on October 27, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was November 16, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 20, 2006.

The Center appointed The Honourable Neil Anthony Brown QC as the sole panelist in this matter on November 29, 2006. 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.

4. Factual Background

The Complainant is a company incorporated under the laws of The Netherlands. It is a supplier of products for the measurement of motion, orientation and position, based upon miniature MEMS inertial sensor technology. One of its products is named Moven, which is a motion capture suit which records human movements so that the body movement may then be studied for animation, sports training, health studies and entertainment.

On May 15, 2006, the Complainant applied to the Office for Harmonisation in the Internal Market for the registration of a word trademark for MOVEN and the application was accepted.

The registrar’s verification response indicates that the current registrant of the domain name is International Names Ltd. The Complaint contains Whois print-outs suggesting that the domain name was previously registered in the name of Cambridge Capital Ltd. (in any event on June 14, 2005) and in the name of Domaincar (in any event on August 24, 2006). The record further contains print-outs of correspondence from June 2006 onwards concerning a possible sale of the domain name. It appears that most of these communications were with Domaincar, which the Complainant asserts was the original registrant of the domain name in 2001.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the contentious domain name <moven.com> should no longer be registered with the Respondent but that it should be transferred to the Complainant.

It contends that this should be done because, within the meaning of paragraph 4 of the Policy, the domain name is identical to the Complainant’s unregistered common law trademark MOVEN, that the Respondent has no rights or legitimate interests in the domain name and that the domain name has been registered and subsequently used in bad faith. The Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the domain name to the Complainant.

In support of its case on the first of these three elements, the Complainant relies on the unregistered common law MOVEN trademark which it claims to have acquired, because MOVEN is well known as the name of one of its products. The Complainant says that it is self-evident that the domain name <moven.com > is identical to the MOVEN mark because they consist of the same word.

The Complainant contends, to establish the second element, that the Respondent has no rights or interests in the domain name because the facts show that the Respondent or its predecessors registered the name solely with the intention of selling it to a party that had a legitimate interest in the name. Indeed, the Respondent has been negotiating with the Complainant to effect a sale of the domain name to the Complainant.

Finally, the Complainant contends that the domain name was registered and is being used in bad faith. It contends that this is so because the only interpretation that can be put on the known facts is that the Respondent registered the domain name, within the meaning of paragraph 4(b)(i) of the Policy, with the intention of selling or renting it to the Complainant or a competitor for a profit. This, by definition, the Complainant says, is evidence of bad faith registration and use.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15 of the Rules provides that the Panel is to 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.

In that regard, the Panel also notes that the fact that the Respondent has not made a submission does not avoid the necessity of examining the issues and of doing so in the light of the evidence. The onus remains on the Complainant to make out its case and past UDRP panels have said many times that despite the absence of a submission from a Respondent, a Complainant must nevertheless show that all three elements of the Policy have been made out before any order can be made to transfer a domain name.

It is thereby possible to draw inferences from the evidence that has been submitted and in some cases from silence. Indeed, paragraph 14 of the Rules incorporates both of those notions into the procedures of the Panel.

The Panel therefore turns to discuss the various issues that arise for decision on the facts as they are known.

For the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:

A. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

B. The Respondent has no rights or legitimate interests in respect of the domain name; and

C. The domain name has been registered and is being used in bad faith.

It is to be noted that paragraph 4 of the Policy provides that the Complainant must prove that each of the three elements is present. The Panel will therefore deal with each of these requirements in turn.

A. Identical or Confusingly Similar

The Panel finds that the domain name <moven.com> is identical to the asserted trademark MOVEN, which as a whole has been incorporated into the domain name, which further consists of the gTLD suffix ‘.com’. In that regard, it has been held many times that suffixes and minor spelling differences may not be used to negate a finding of identicality or confusing similarity that is otherwise present on the evidence.

The trademark relied on by the Complainant is a common law trademark. If proven, unregistered trademarks are sufficient to establish trademark rights for the purposes of a UDRP claim. The Overview of WIPO Panel Views on Selected UDRP Questions (‘the Overview’) expresses that principle as follows:

“1.7 What needs to be shown for the complainant to successfully assert common-law or unregistered trademark rights?

Consensus view: The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such “ secondary meaning” includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographic area does not limit complainant’s rights in a common law trademark. Unregistered rights can arise even when the complainant is based in a civil law jurisdiction.

Relevant decisions:

Uitgeverij Crux v. W. Frederic Isler D2000-0575, Transfer

Skattedirektoratet v. Eivind Nag D2000-1314, Transfer

Amsec Enterprises, L.C. v. Sharon McCall D2001-0083, Denied

Australian Trade Commission v. Matthew Reader D2002-0786, Transfer

Imperial College v. Christophe Dessimoz D2004-0322 among others, Transfer.”

It is not enough merely to assert a common law trademark. Rather, it must be proved. The Panel finds that the Complainant has made out a case in this regard, as it has shown by evidence adduced in the Complaint that ‘Moven’ is the name of one of its products, that it has been demonstrating it at tradeshows and suchlike, that it has had recognition in the press, and that customers have been using the name in their own publicity and associating it with the Complainant, which is further suggested by the fact that on May 15, 2006, the Complainant applied to register MOVEN as a European trademark with the Office for Harmonization in the Internal Market. The word is therefore a distinctive identifier associated with the Complainant and its product.

Accordingly, the domain name is identical to a trademark in which the Complainant has rights and it has therefore established the first of the three elements that it must make out.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii), the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the domain name.

But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.

Thus, if the Respondent proves any of these elements or indeed anything else that shows it has a right or interest in the domain name, the Complainant will have failed to discharge its onus and the complaint will fail.

The Panel’s task in deciding if a registrant has any rights or legitimate interests in a domain name is made more difficult when the registrant is in default and does not file a Response or any other form of submission. The Respondent in the present case was given notice that it had until November 16, 2006 to send in its Response, that it would be in default if it did not do so and that, by virtue of paragraph 14 of the Rules, the Panel might draw appropriate inferences from that default.

It is well established that, as it is put in the Overview, “…a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP”.

The Panel, after considering all of the evidence in the Complaint and the exhibits attached to it, finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the domain name. The Respondent has not made any attempt to rebut this prima facie case, and the Panel concludes that the Respondent has no such rights or legitimate interests in the domain name.

The fact that the Respondent chose the fanciful name at issue as its domain name calls for an explanation, which the Respondent could have given but has not. In the absence of such an explanation by the Respondent, the Panel will assume that ‘any evidence of the Respondent would not have been in [its] favour’: Pharmacia & Upjohn AB v. Dario H. Romero, WIPO Case No. D2000-1273.

The registrant and the two previous registrants, mentioned in paragraph 4 above, appear to be regularly engaged in registering large numbers of domain names and trying to sell them for a profit. The business of buying and selling domain names as such is not illegitimate for purposes of the UDRP in general. The question is whether the registration of and trade in this particular domain name constitutes a legitimate interest. In the circumstances of this case, and in the absence of a reasonable reply advanced by the Respondent, the Panel concludes that it does not.

C. Registered and Used in Bad Faith

The Complainant must prove on the balance of probabilities both that the domain name was registered in bad faith and that it is being used in bad faith: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Further guidance on how to implement this requirement is to be found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which shall be evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive. The four specified circumstances are:

(i) circumstances indicating that the respondent has registered or 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 the respondent’s 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, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website 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 the respondent’s website or location or of a product or service on the site or location.

The Complainant relies on paragraph 4(b)(i) and contends that the domain name was registered or acquired primarily for the purpose of reselling it to the Complainant or a competitor for a profit. Indeed, the evidence is that the domain name was first offered to the Complainant for $19,000 and more recently for $7,900 as well as other amounts.¹ Offering to sell a domain name for a sum in excess of its registration costs, which the Respondent has done, may “…support[s] an inference that Respondent registered the Domain Name in bad faith, with the primary purpose of selling it in violation of paragraph 4(b)(i) of the Policy”. Echelon Corporation. v. RN WebReg, a.k.a. Rarenames, LLC, WIPO Case No. D2003-0790. The question whether and in what circumstances such an offer by a domain name trader does indeed constitute bad faith has been addressed in Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304, where the panel concluded inter alia:

“…it appears that Respondent’s business practice includes the registration of domain names containing fanciful trademarks (e.g., SINTEF), trademarks created by the joinder of common or dictionary words (e.g., THE TEXAS LOTTERY), and or that have expired, see SystemSoft Corporation. v. RareNames, WebReg, Claim No. 474793, followed by efforts to resell those names. Although this Panel has held … that it is not bad faith to resell domain names that incorporate common dictionary terms if the respondent was unaware of complainant’s trademark rights at the time of registration, …respondents cannot rely on this precedent to shield their conduct by closing their eyes to whether domain names they are registering are identical or confusingly similar to trademarks. Where… a respondent registers large swaths of domain names for resale, often through automated programs that snap up domain names as they become available, with no attention whatsoever to whether they may be identical to trademarks, such practices may well support a finding that respondent is engaged in a pattern of conduct that deprives trademark owners of the ability to register domain names reflecting their marks.

On the record of this case, the Panel believes it a fair inference that the Respondent’s conduct falls into the latter category. The Respondent has been a respondent in a number of UDRP proceedings; in the majority of those cases, the domain names have been transferred. Moreover, the Domain Name in this case, <mobilcom>, is not a dictionary word, and even a cursory search on search engines like Yahoo! and Google would have shown that MOBILCOM is a trademark. The Panel thus concludes that the Respondent has registered this Domain Name to prevent Complainant from reflecting its mark in the corresponding .com Domain Name, and that the Respondent is engaged in a pattern of such conduct.”

The present Panel finds that the above observations essentially also apply to the present case and finds that the conduct of the Respondent as demonstrated by the Complainant’s submission constitutes bad faith registration and use within the meaning of paragraph 4(a) (iii) of the Policy.

7. Decision

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, <moven.com>, be transferred to the Complainant.

The Honourable Neil Anthony Brown QC
Sole Panelist

Dated: December 23, 2006

¹ also appears to indicate that one of the entities associated with this domain name registration may be the registrant of over one million domain names and that it is developing a reputation as a serial typosquatter, a status confirmed in a recent National Arbitration Forum case, Andreas Stihl AG & Co. KG v. Domaincar c/o Perthshire Marketing No, FA0604000682426, where the panelist said:

“Respondent has also engaged in a pattern of registering “typosquatting” domain names as shown by the thirteen other cases Respondent has been a party to (and has lost almost all of them). This is number fourteen. This pattern is further evidence of bad faith and suggests Respondent’s business model is to purchase and re-sell typosquatting domain names. The Panel finds Policy ¶4(a)(iii) satisfied.”