The Complainant is Saudi Arabian Oil Co., Saudi Arabia, represented by Fish & Richardson P.C., United States of America.
The Respondent is Orizon Multimedia Inc., United States of America.
The disputed domain name <orizon.com> (the “Disputed Domain Name”) is registered with Wild West Domains, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2020. On August 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 4, 2020, the Registrar transmitted by email to the Center its verification response confirming that the 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” 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 August 5, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 25, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 26, 2020.
The Center appointed Nick J. Gardner as the sole panelist in this matter on September 4, 2020. 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, based in Saudi Arabia, is a major oil company.
The Complainant owns various registered trademarks for the word “orizon”, the earliest of which is Saudi Arabia Registration No. 1441013360, issued April 4, 2020, in Class 1 for “chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry...”. These trademarks are referred to in this decision as the “ORIZON trademark”. None of the ORIZON trademarks were applied for or registered before 2020. There is no evidence of any use of the term ORIZON by the Complainant before 2020.
The Disputed Domain Name was created on March 10, 1997. The filed evidence establishes that the named Respondent (Orizon Multimedia Inc.) was dissolved on May 3, 2010. The evidence also establishes that a Mr. Anastasius “Stace” Papadopoulos – who was the Respondent’s registered agent according to information as recorded with the State of Washington and who appears in the Respondent’s contact details – passed away in May 2019.
The Disputed Domain Name does not presently resolve to any active website (but see below as to historical events).
The Complainant says that the Domain Name is identical to the ORIZON trademark.
It then says that the Respondent has no rights or legitimate interests in the term “orizon”. It puts its case as follows: “Based on the surrounding facts, Saudi Aramco can demonstrate that Respondent has no rights or legitimate interest in the domain for purposes of Paragraph 4(c) of the Policy as (i) Respondent is not commonly known by the domain name, and (ii) Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. A complainant need only show prima facie evidence of a lack of rights or legitimate interests in order to shift the burden of proof to the respondent. Intocast AG v. Daeyoon, D2000-1467; Cellular One Grp. v. COI Cellular One, Inc., D2000-1521.”
The Complainant says that the Respondent’s registration and use is in bad faith. It relies upon nonuse by the Respondent and puts its case as follows: “Although Paragraph 4(b) of the Policy enumerates four circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, those circumstances are non-[exclusive], and several other indicators of bad faith have been established in previous panel decisions. For example, keeping a domain name unused and inactive can be a form of bad faith. See Deutsche Kreditbank AG v. DKB Data Services (USA), Inc., D2009-1084 (finding bad faith where respondent had been dissolved as a business and held domain name for over seven years without any evidence of use; Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003 (‘[T]he concept of a domain name being used in bad faith is not limited to positive action; inaction is within the concept. That is, to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith’); Accor and Soluxury HMC v. Choice Products International Pty Ltd, D2012-0166; Consumentenbond v. Fundacion Private, D2013-2144.
Here, Respondent has been dissolved for over a decade without any evidence of use. It does not seem conceivable that the Respondent has legitimate plans to use the disputed domain name in the future when the name has been dormant for such an extended period of time and is registered to an entity that has not existed for over 10 years. See Annex 2. Accordingly, the domain name was registered and is being used in bad faith. Saudi Aramco has therefore satisfied the third element of its Complaint under Policy Paragraph 4(a)(iii)”.
No Response has been filed.
Preliminary Matter
The Panel notes that no communication has been received from the Respondent. However, given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar, then the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).
Substantive Matters
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel in respect of the Disputed Domain Name that:
(i) the Disputed Domain Name is identical with or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and,
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The Complainant has established that it owns the ORIZON trademark. The Panel holds that the Disputed Domain Name is identical to the ORIZON trademark. It is well established that the specific Top-Level Domain (in this case “.com”) does not generally affect the domain name for the purpose of determining whether it is identical or confusingly similar – see for example Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
It does not matter for the purposes of this element that the Disputed Domain Name was registered before the ORIZON trademark existed – the Panel agrees with the consensus approach as explained in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) section 1.1.3:
“1.1.3 While the UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired its rights, such rights must be in existence at the time the complaint is filed.:
Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity under the UDRP. The UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired rights. However, in such circumstances it may be difficult to prove that the domain name was registered in bad faith under the third element of the UDRP”.
Accordingly, the Complainant has established the first element of paragraph 4(a) of the Policy. See below as to the third element.
Paragraph 4(c) of the Policy non-exhaustively lists three circumstances that demonstrate a right or legitimate interest 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 organisation) 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.
In the present case, the Disputed Domain Name was created in 1997. The Complainant has not sought to adduce any evidence as to whether the Disputed Domain Name has been used in the past. Clearly the fact that it was registered by what was at the time a genuine corporation named Orizon Multimedia Inc. raises the possibility that the registration was likely to be bona fide and within (i) and/or (ii) above.
Adopting the approach described at section 4.8 of WIPO Overview 3.0, the Panel has carried out limited research of its own by examining historical date for any website linked to the Disputed Domain Name by accessing the well-known “Internet Archive” site at “www.archive.org”. That site contains a significant number of entries for such a website. The earliest entry is dated January 11, 1998. This contains substantive content promoting a business operated by the Respondent. It includes the following passage:
“In 1996, Orizon Multimedia was formed in Vancouver, Washington, USA to develop and market a new multimedia training system utilizing state-of-the-art hardware and software so that our customers can create, administer and deliver their own multimedia training applications. Overall, our company can be characterized as a manufacturer of high performance turnkey Computer-Based-Training (CBT) systems.
Background
For many years companies have used classrooms and OJT (On the Job Training) to train their employees. In 1987, the Hudson Institute of Indianapolis, Indiana published “WORKFORCE 2000”, the result of a research funded by the Department on Labor. Workforce 2000 alerted the Federal Government of the severe labor shortages projected for the 21st Century. The alert filtered down to industry that promptly started revamping their training with conventional as well as technology-based programs. Companies with limited resources started partnering with local schools to prepare the next generation workforce. Others with more resources started experimenting with in-house production of technology-based courses. This essentially gave birth to industrial CBT which at the beginning was thought to be the ideal training solution that everyone needed.
These early adopters of CBT soon discovered that in order to produce a quality course it took an inordinate amount of time because it required highly specialized skills, including instructional design and computer programming. The decision to utilize the new relatively expensive technology-based training or to stay with the old ineffective methods has become the common dilemma of the Training industry.
Realizing this need, a lot of independent multimedia publishing companies started to flood the market with scores of CBT courses to the dismay of training professionals who were suddenly faced with a lot of choices on training material in various formats. Furthermore, these courses were limited to topics of general interest e.g. forklift safety, time management, etc., that is these course were unable for the most part to address the specific training needs of a company. This is precisely the opportunity that the founding of Orizon Multimedia was based on.
Our Solution
Within two years, we have completed the original design and development of the MTS-2000 -- a novel and proprietary turnkey solution for industrial grade CBT authoring, administration and deployment that can reduce computer based training costs to a fraction of the current norm. This was accomplished by testing and selecting the best commercial hardware and software available on the market then integrate them into a reliable industrial-strength system. We then added our own software that allows people to author, administer and study courses without even opening a Manual. Furthermore, we are constantly evaluating new technologies so we can periodically offer sensible upgrades that will maintain our customers’ investment up to date and guard against obsolescence.
In a nutshell, we carry the burden of the system’s design, fabrication and maintenance so that our customer can focus on creating brilliant training courses that truly engage the student. The MTS-2000 addresses the Training industry’s dilemma directly.
The MTS-2000 is a complete solution and therefore positions itself as a high end product. Customers that are using Computer Based Training already, can increase their productivity as well as increase the effectiveness of their training courses. The power, ease of use, effectiveness, high Return On Investment and low Cost Of Ownership of the MTS-2000 makes it an easy choice for many industrial training departments.
Please check out our next page that describes our products in more detail”.
It seems clear to the Panel that this shows bona fide use of the Disputed Domain Name by the Respondent in 1998 to link to a website operated by the Respondent promoting its business.
If those circumstances remained to this day (see in this regard WIPO Overview section 2.11), the Panel would hold that the Respondent had established a legitimate interest in the Disputed Domain Name were it not for the fact that the Respondent no longer exists. It seems difficult to conclude that an entity that no longer exists can nevertheless have a legitimate interest – however in view of the Panel’s findings below in relation to bad faith the Panel does not need to resolve this issue.
The difficulty that the Complainant faces in this case is that the Disputed Domain Name was registered in 1997 but the Complainant did not register the term ORIZON as a trademark until 2020. No case is advanced by the Complainant that it had any earlier (e.g., unregistered) rights in the term “ORIZON”. Under paragraph 4(a)(iii) of the Policy, the Complainant must establish both that the disputed domain name was registered in bad faith and that it has been used in bad faith (the so-called “conjunctive requirement”).
The Panel therefore concludes, on the available evidence, that the Respondent registered the Disputed Domain Name some 23 years prior to the Complainant’s first registration of its trademarks in question.
In these circumstances, even if the Disputed Domain Name’s current non-use as relied upon by the Complainant amounts to use in bad faith (which the Panel doubts), there can be no finding that the Disputed Domain Name was registered in bad faith. The Respondent was named Orizon Multimedia Inc. and the evidence from archive.org (see above) clearly shows the registration was in connection with a bona fide business and was used by the Respondent to link to its own legitimate website. The Respondent cannot have been aware of the Complainant’s trademark when it chose its name and registered the Disputed Domain Name as the trademark did not exist at that date.
The Panel therefore finds that the Complainant has failed to establish that the Disputed Domain Name was registered in bad faith.
In reaching this conclusion, the Panel has considered carefully the case of Deutsche Kreditbank AG v. DKB Data Services (USA), Inc., WIPO Case No. D2009-1084 (the “<dkb.com> case”) relied upon by the Complainant. That case concerned the domain name <dkb.com> and the panel in that case accepted the complainant’s evidence that the respondent had been dissolved in 2003. The reasoning of the panel in that case is relatively brief but it would in any event appear from the decision that: (1) there was no evidence before the panel of any use of the domain name in question at any time; and (2) the Complainant’s trademark for the term “dkb” had been registered since 1995 and hence predated the registration of the domain name by seven years (the domain name was registered in 2002); (3) the basis for finding registration and use in bad faith was the passive holding of the domain name, following the well known approach in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The present case is rather different in that: (1) there is evidence of use of the Disputed Domain Name for what was clearly a bona fide website relating to the Respondent’s own business; (2) the Complainant’s trademark did not exist when the Disputed Domain Name was registered by the Respondent (whereas it did in the <dkb.com> case).
The Panel does not accept the Complainant’s further arguments based on non-use and passive holding given that the Disputed Domain Name has in fact been used (see above).
The Panel would also observe it is important to bear in mind the relatively narrow confines of the Policy, which is designed chiefly to address clear cases of cybersquatting. See, e.g., Libra v. NA Global Link, WIPO Case No. D2000-0186. The Complainant would likely have known (assuming it inquired at the time) when it decided to adopt ORIZON as a trademark in 2020 that the Disputed Domain Name was registered in the name of the Respondent and may have found out then that the Respondent no longer existed. That may well be inconvenient for the Complainant but the Policy is not the appropriate mechanism to use to deal with the legal consequences of the Respondent’s dissolution so far as the on-going registration of the Disputed Domain Name is concerned.
Accordingly, the Panel declines to find that the Disputed Domain Name has been registered and is being used in bad faith. The third condition of paragraph 4(a) of the Policy has not been fulfilled.
Paragraph 15(e) of the Policy provides that if after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding; such a finding can in appropriate cases be made by a panel of its own motion.
In the present case, the Panel considers that whether such a finding is appropriate is finely balanced. The status of the Respondent is unusual and the Complaint may have misunderstood the holding of a domain name by a defunct organization as being evidence of lack of rights in such. In addition, the Respondent no longer exists, so it has not been in any way prejudiced by this Complaint. Overall, the Panel considers the Complainant should have probably appreciated its Complaint could not succeed – given the requirement for a showing of bad faith registration. However, on balance, the Panel does not consider it necessary to make a finding of Reverse Domain Name Hijacking.
For the foregoing reasons, the Complaint is denied.
Nick J. Gardner
Sole Panelist
Date: September 15, 2020