WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

American Franchise Marketing Limited v. Host Master, Qualcomm Inc.

Case No. D2016-1327

1. The Parties

The Complainant is American Franchise Marketing Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Morton & Associates, United States of America (“United States”).

The Respondent is Host Master, Qualcomm Inc. of San Diego, California, United States, represented by Arent Fox LLP, United States.

2. The Domain Name and Registrar

The disputed domain name, <imod.com>, is registered with MarkMonitor Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2016. On June 30, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 1, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 4, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 24, 2016. The Response was filed with the Center on July 22, 2016.

The Center appointed Luca Barbero as the sole panelist in this matter on August 3, 2016. 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 the owner of European Union Trademark Registration No. 005126561 for the standard character mark IMOD, filed on June 9, 2006 and registered on July 17, 2009, for “clothing, footwear, and headgear” in class 25.

The disputed domain name, <imod.com>, was registered on April 1, 2002, and is currently pointed to an internal page of the Respondent’s website “www.qualcomm.com”.

5. Parties’ Contentions

A. Complainant

The Complainant claims that its trademark IMOD has been prominently and continuously used in global commerce since its registration and that the disputed domain name was transferred to the Respondent from a previous owner on or about October 19, 2010, one year after the registration of the Complainant’s trademark.

The Complainant contends that the disputed domain name is identical to the Complainant’s trademark IMOD in spelling, sound and overall commercial impression.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name, asserting that:

- The Respondent is not using the disputed domain name in connection with the bona fide offering of goods and/or services, since, when attempting to access the website at the disputed domain name, the user is redirected to the Respondent’s primary website;

- There is no evidence that the Respondent, presently or at any point in time, has used the disputed domain name under any legitimate noncommercial basis or fair use basis;

- There is not a filament of proof that the Respondent, either in an individual or corporate capacity, has ever been known by the name IMOD, or any similar variation of the term;

- The Respondent is not a licensee, nor in any way authorized to use the trademark IMOD, or any variation of it. In addition, the Complainant has no affiliation with the Respondent; and

- The disputed domain name is currently non-operational and evidence is lacking that the Respondent intends to use it in connection with any goods and/or services.

With reference to the bad faith requirement, the Complainant states that when assessing bad faith registrations one normally needs only trace the registration back to the most recent transfer of the disputed domain name and concludes that the Respondent has transferred and continues to use the disputed domain name in bad faith. Specifically, the Complainant alleges that the Respondent registered and used the disputed domain name in bad faith for the following reasons:

- Upon information and belief, the Respondent had prior knowledge of the Complainant’s trademark and its accumulated goodwill due to the extensive advertising and commercial use of the trademark across the global marketplace;

- The Respondent illegitimately sought to capitalize on the goodwill of the Complainant’s trademark, acquired through years of continuous and systematic commercial use, by purchasing a domain name that was identical to the Complainant’s trademark;

- The disputed domain name provides no substantive content as it simply redirects the user to another website, and there is no bona fide intent to use the disputed domain name in connection with goods and services; and

- Given the fact that the Respondent has not used the disputed domain name and has shown no intention to use the disputed domain name in the near future, there is no conceivable basis, other than bad faith, for the Respondent to register a domain name that is identical to the Complainant’s trademark.

The Complainant concludes that the Respondent intended to either (i) sell the disputed domain name to the Complainant or its competitors; (ii) disrupt the Complainant’s business by confusing potential consumers; and/or (iii) default the Complainant.

B. Respondent

The Respondent does not contest the Complainant’s ownership of the trademark on which the Complainant relies or that the disputed domain name contains the term IMOD.

However, the Complainant informs the Panel that, since well before the Respondent received any notice of this dispute, and before the Complainant filed to register the trademark IMOD, the Respondent had been using the term “IMOD” fairly and in good faith as an acronym for “Interferometric Modulator”, a display panel technology.

The Respondent explains that it was a strategic investor in Iridigm Display Corporation, which developed the IMOD display technology, as early as 2002. Attached to the Response is an article published on a Thomson Reuters’s online website (“www.westlaw.com”) on June 25, 2002, entitled “Iridigm Display Corporation Finalizes Funding Round”.

The Respondent further states that it announced its acquisition of Iridigm Display Corporation, including all rights in the IMOD technology, on September 9, 2004, as highlighted in the press release “Qualcomm to Acquire Display Technology Innovator Iridigm,” dated September 9, 2004, submitted as an annex to the Response.

The Respondent also points out that, since that acquisition, the Respondent and its related companies have continued to use the acronym “IMOD”, and that the Respondent’s subsidiary, Qualcomm Mems Technologies, Inc., filed a United States trademark application (Serial No. 78/854,257) for IMOD on April 5, 2006, covering “electronic display panels that generate color using optical interference; microelectromechanical component of electronic display panels that form pixels and subpixels for generating color using optical interference”. However, the Respondent ultimately concluded that its use of “IMOD” as an acronym did not warrant trademark registration, and it allowed its application to abandon after publication on December 15, 2006.

A screenshot submitted by the Respondent of the web page “www.qualcomm.com/products/mirasol”, to which the disputed domain name is redirected, shows that the “IMOD” acronym is displayed and access is provided to a detailed whitepaper entitled “IMOD Tech Overview”, dated June 2009.

Therefore, it is highlighted that the Respondent and its predecessor-in-interest began using the IMOD acronym in connection with a bona fide offering of products over 14 years ago, since long before the Complainant filed its trademark application for IMOD in 2006. The Respondent also states that it continues to use IMOD fairly and in good faith today, including on the website to which the disputed domain name redirects.

The Respondent further asserts that, even if the Complainant could claim senior trademark rights, those rights would be limited to clothing, footwear, and headgear, which would not prohibit the Respondent from using IMOD with its wholly unrelated display panel technology.

As to the Complainant’s allegations on the Respondent’s bad faith, the Respondent submits that it has no interest or desire to sell, rent, or otherwise transfer the disputed domain name to the Complainant; the disputed domain name was not registered in order to prevent the Complainant from reflecting the mark in a corresponding disputed domain name; the Respondent and the Complainant are not competitors; the Respondent has no interest in diverting consumers from the Complainant or otherwise disrupting its business; and the Respondent did not acquire the disputed domain name to benefit commercially from any likelihood of confusion with the Complainant.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall 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 directs that the Complainant must prove each of the following:

(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has provided evidence of ownership of a European Union trademark registration for IMOD, filed on June 9, 2006 and registered on July 17, 2009, for “clothing, footwear, and headgear” in class 25.

As stated in paragraph 1.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), ownership of a trademark generally satisfies the threshold requirement of having trademark rights, the location of the trademark, its date of registration, and the goods and/or services for which it is registered being irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP.

The Panel notes that the disputed domain name incorporates the trademark IMOD in its entirety with the mere addition of the generic Top-Level Domain (“gTLD”) suffix “.com”, which can be disregarded, being a technical requirement of registration.

Therefore, the Panel finds that the Complainant has proven that the disputed domain name is identical to the trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

With respect to this requirement, the Complainant is required to make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name and, once such prima facie case is made, the burden of production shifts to the Respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393; Accor v. Eren Atesmen, WIPO Case No. D2009-0701; and WIPO Overview 2.0, paragraph 2.1.

In the case at hand, the Complainant states that the Respondent was not authorized to use the Complainant’s trademark, has not been commonly known by the name “IMOD” and has not been using the disputed domain name in connection with a bona fide offering of goods or services or in connection with a legitimate noncommercial or fair use.

The Respondent has rebutted the Complainant’s contentions stating that, before the filing of the Complainant’s trademark, the Respondent had been using the term “IMOD” in good faith as an acronym for “Interferometric Modulator”, a display panel technology. The Respondent has provided evidence that it was an investor in Iridigm Display Corporation, which developed the IMOD display technology in 2002, and that the Respondent acquired said company, including all rights in the IMOD technology, in 2004. According to the records, the Respondent’s subsidiary, Qualcomm Mems Technologies, Inc., filed a United States trademark application for IMOD in 2006 for electronic display panels, although the application was abandoned after publication since, as stated in the Response, the Respondent “ultimately concluded that its use of IMOD as an acronym did not warrant trademark registration”.

The Panel also notes that, according to the screenshots submitted by the Respondent, the website to which the disputed domain name redirects displays information on the IMOD display panel technology.

In view of the above, the Panel finds that the Respondent has proved that the Respondent and its predecessor-in-interest began using the IMOD acronym in connection with a bona fide offering of products since long before the Complainant’s European Union trademark was filed in 2006 and that the Respondent is continuing to use the term “IMOD” and the disputed domain name fairly and in good faith.

Therefore, the Panel concludes that the Respondent has rights and legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

In light of the findings with respect to Rights or Legitimate Interests, the Panel does not need to address the issue of registration and use of the disputed domain name in bad faith. However, the Panel notes that there is no evidence on record that the Respondent registered and/or used the disputed domain name with the intention to target the Complainant and its trademark.

7. Decision

For the foregoing reasons, the Complaint is denied.

Luca Barbero
Sole Panelist
Date: August 30, 2016