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and Mediation Center
ADMINISTRATIVE PANEL DECISION
TLR v. United Engineering Services LLC
Case No. D2007-0148
1. The Parties
Complainant is TLR, Davis, California, United States of America, represented by Lewis & Hand, LLP, Brooklyn, New York, United States of America.
Respondent is United Engineering Services LLC, Bloomfield Hills, Michigan,
United States of America, represented by John Berryhill, Media, Pennsylvania,
United States of America.
2. The Domain Names and Registrar
The disputed domain names <engineer.biz> and <engineer.info> are
registered with 123 Registration, Inc. dba 123registration.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 2, 2007. An Amended Complaint was filed with the Center on February 7, 2007. On February 6, 2007, the Center transmitted by email to 123 Registration, Inc. dba 123registration.com a request for registrar verification in connection with the domain names at issue. On February 6, 2007, 123 Registration, Inc. dba 123registration.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant for both names and providing the contact details for the administrative and technical contacts. The Center verified that the Amended 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 Respondent of the Complaint and the Amended Complaint, and the proceedings commenced on February 15, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March 7, 2007. At the request of Respondent and with the consent of Complainant, the Center granted an extension to file the Response until March 10, 2007. The Response was filed with the Center on March 10, 2007.
The Center appointed Richard G. Lyon as the sole panelist
in this matter on March 26, 2007. The Panel finds that it was properly constituted
and has jurisdiction over this proceeding. The Panel has submitted his 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 parties present markedly different descriptions of the factual background underpinning this case. In this section the Panel includes only factual assertions that are undisputed or that the Panel has been able to verify with access to publicly-available information.1 Other factual assertions are discussed in Parties’ Contentions or Discussion and Findings.
Complainant operates a job listing and job search service for engineers and their employers at a domain name it owns, <engineer.net>. Complainant has no registered trademark for “engineer” or “engineer.net.”
Respondent registered the disputed domain name <engineer.biz> in March 2002, and acquired the disputed domain name <engineer.info> in August 2002, from a third party in a commercial transaction. Respondent has operated an active website at one or the other of these domain names since shortly after registering the disputed domain names in 2002. Since at least 20042 Respondent’s website has contained commercial links on many subjects that relate to engineering and engineers. Today an Internet user who entered “www.engineer.biz” is automatically diverted to “www.engineer.info”, and placed first among the commercial links is “careers - job listings,” which when clicked takes the user to a listing of available engineering positions.
At some indeterminate point of time after Respondent acquired the disputed domain names it placed an advertisement at Complainant’s job site. This advertisement was subsequently withdrawn.
In January 2006, Complainant sent Respondent a cease-and-desist
letter, complaining of various tortious and unlawful activities, including trademark
infringement and “screen scraping,” the later of which Complainant
asserted was unlawful under the Computer Fraud and Abuse Act, 18 U.S.C. §1030(a)(2).
5. Parties’ Contentions
Complainant contends as follows:
Rights in a Mark
Complainant contends that it has common law rights in the phrase ENGINEER.NET by reason of its continuous use of this name in commerce for various activities since 1996. Complainant takes great pains to defend the validity of its mark, arguing that it is “suggestive” rather than “descriptive” and providing several examples of renown of its mark that Complainant believes give it “secondary meaning.” Complainant also cites authority3 for the propositions that continuous operation of a business at a website can suffice to create common law trademark rights in the domain name used for that business and that Respondent’s “exact copying” of the mark is evidence of secondary meaning. The disputed domain names differ from Complainant’s ENGINEER.NET mark only by reason of different top level domain identifiers, a distinction that is not sufficient to obviate confusing similarity to Complainant’s mark.
Respondent Lacks Rights or Legitimate Interests
Complainant contends that Respondent has never been known by the disputed domain names, and any business that it operates under either disputed domain name that competes directly with Complainant’s business is not bona fide under the Policy. Respondent’s registration of the disputed domain names occurred after Complainant’s trademark rights accrued, for directly competitive activity that Complainant characterizes as “passing off,” and are thus not legitimate.
Complainant recites many activities of Respondent that Complainant characterizes as unlawful and tortious as evidence of bad faith. Among these are screen scraping, advertising on Complainant’s website for Respondent’s competitive site, copying code from Complainant’s site for use on Respondent’s sites in 2006, “employ[ing] search engine optimization techniques to maximize [Respondent’s] parasitic misappropriation of Complainant’s goodwill and to maximize marketplace confusion,” and changing its registration information immediately following Complainant’s cease and desist letter, characterizing this last activity as “cyber flight.”
Respondent contends as follows:
Rights in a Mark
Respondent denies that Complainant has enforceable trademark rights, or a right to invoke the Policy, in either ENGINEER or ENGINEER.NET. “Engineer” is a common word and descriptive term, and thus is not subject to trademark protection. Complainant has not demonstrated a secondary meaning and has in fact at various times used its own domain name (one of its stated bases for trademark rights) merely as an Internet address and not for an active business. Respondent supplies pages from the wayback machine that demonstrate Complainant’s use of “www.engineer.net” for purposes unrelated to engineering services, as a mirror site for an unrelated business operated by a third party, and at one time to note that “This domain is for sale. Serious offers only.” 4
Rights or Legitimate Interests
Because the word “engineer” is common and descriptive, Respondent has a right to use that word in the disputed domain names and to operate its business there. Respondent has run a legitimate business from one of the disputed domain names for many years prior to Complainant’s cease-and-desist letter. Respondent has not used the disputed domain names for any illegal activity, has not copied anything from Complainant’s website, and has used the disputed domain names for a legitimate business for many years.
Respondent categorically denies Complainant’s
charges of illegal or tortious activity, acknowledging only that at various
times it has offered links to employment and job-related services for engineers,
thereby competing with Complainant. Respondent offers evidence that its job-related
database comes from a third party with which Respondent has a common and enforceable
contract. Respondent changed its registration information in 2007 not to complicate
a Policy proceeding or to shelter assets (the “cyberflight” alleged
by Complainant), but for the simple reason that it moved. Changing the contact
information following a change of address is required by its registration agreements
and completely routine. Any similarity between scripts used on the parties’
respective websites is the result of both parties’ including content that
is generated by common computer programs.
6. Discussion and Findings
Rights in a Mark; Identical or Confusingly Similar
For Complainant to establish this element of the Policy,
it must submit evidence of common law rights as of the date it filed its Complaint,
which date is determinative under the Policy. “WIPO
Overview of WIPO Panel Views on Selected UDRP Questions,” (“Overview”),
paragraph1.4; Janet E. Sidewater v. Worldwide Media Inc., WIPO
Case No. D2006-1281; Valve Corporation v. ValveNET, Inc., ValveNET, Inc.,
Charles Morrin, WIPO Case No. D2005-0038.
Among other indications, Complainant’s principal has submitted sworn testimony
with supporting documentation that its website at “www.engineer.net”received
an average of 70,000 visits per month during 2006 and early 2007.
Both parties devote most of their argument to the
issue of whether Complainant has established common law trademark rights under
United States law. While certainly relevant to paragraph 4(a)(i) of the Policy,
this issue is not necessarily determinative.5
A person may well be able to meet the standard of paragraph 4(a)(i) of the Policy
even if his/her evidence is less than what might be required to bring an action
for trademark infringement. For purposes of paragraph 4(a)(i), this showing
can be made (and has been made in this case) even though the mark be “suggestive”
(as Complainant argues) or “descriptive” (as Respondent argues).
See, e.g. Memorydealers.com, Inc. v. Dave Talebi, WIPO
Case No. D2004-0409; James Good o/a Pornreports.com v. Mark Anderson,
WIPO Case No. D2004-0391.
For the purpose of its further findings, the Panel will assume that Complainant has shown use of its mark in commerce and that an identifiable public associates its mark with the services that it provides, providing a basis for common law rights.
As Complainant contends, a different TLD does not eliminate any confusion with Complainant’s mark’s operative word “engineer.”
Rights or Legitimate Interest; Registered and Used in Bad Faith
As the panel stated in American Appraisal Associates Inc. v. R Hagar, Kinja
LLC, WIPO Case No. D2006-1556 (footnote
“The fact that Complainant’s marks use everyday words and describe the Complainant’s services, however, does bear on the Panel’s evaluations under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy. Just as a generic or descriptive mark may limit its owner’s right to exclude others under trademark law, that fact makes it more difficult for a complainant to establish a prima facie case under paragraph 4(a)(ii) that respondent lacks rights or legitimate interests in the disputed domain name and makes it easier for a respondent to rebut such a prima facie case if it is made. Of particular relevance to this proceeding, it makes it more difficult for Complainant to establish that Respondent selected the disputed domain name with Complainant’s mark in mind and not simply to describe Respondent’s own business.”
As in American Appraisal, Complainant has offered no direct evidence that Respondent selected the disputed domain name with knowledge of Complainant’s mark or its business. Such direct proof, of course, is often impossible to provide in a UDRP proceeding in which no discovery is available to obtain evidence of matters exclusively within the knowledge of the other party. Panels may infer a respondent’s knowledge of a mark from the status of the mark or from the evidence of respondent’s conduct, such as holding the domain name out for sale or using the disputed domain name to compete directly with complainant. In this proceeding, Complainant asks the Panel to do so on the basis of a single advertisement placed with Complainant eight months after Respondent registered the first of the disputed domain names. According to Complainant, this was done initially for a non-competitive website that was later changed to a site that competed directly with Complainant. According to Complainant, Respondent reverted to non-competitive use after Complainant’s notice; according to Respondent, it let the one-time advertisement expire because of lack of response.
This is simply too skimpy a basis for the Panel to infer either that at the time of registration Respondent was aware of Complainant’s business and website or that Respondent registered the disputed domain name intentionally to ride free on whatever goodwill Complainant’s mark had accrued in 2002. Respondent has submitted credible evidence that Complainant’s use of its website “www.engineer.net” at the time of the advertisement in question was far more limited than it is today or than Complainant avers it was at that time. On the record in this proceeding, Complainant has failed to establish that Respondent registered the disputed domain names in bad faith. As bad faith in both registration and use is required under paragraph (4)(a)(iii) of the Policy, the Complaint must be denied for this reason. As Respondent has used the disputed domain names for a legitimate business for several years prior to Complainant’s cease-and-desist letter, Respondent has demonstrated that it comes within the safe harbors of paragraph 4(c)(i) and 4(c)(ii) of the Policy.
This proceeding well illustrates why the Policy should
be used solely to redress clear abuses. Both sides have presented much evidence
and much argument about technical aspects of coding, copying, linking, and other
practices regularly used in creating and promoting websites. Both presentations
have significant evidentiary gaps. In saying this the Panel intends no criticism
or ulterior motive of either party; such gaps are inevitable when each side
makes a detailed evidentiary presentation. In a proceeding limited by its charter
in principle to a single submission by each party, with no live testimony and
no cross-examination, there is simply no way for a panel fully to evaluate such
a complex fact pattern. How, for example, is a panel to resolve whether similarity
in code results from intentional copying (as Complainant alleges) or innocently
from both parties’ use of similar computer language for similar subjects
(as Respondent alleges)? To the extent such questions are relevant – in
this Panel’s experience, they do not go to the heart of most UDRP cases
– they are more suited to litigation in the national courts. The Policy
was intended to curb intentional cybersquatting, and the present proceeding
is not such a case.
For all the foregoing reasons, the Complaint is denied.
Richard G. Lyon
Dated: April 9, 2007
1 The Panel's independent research has been limited to the use of the "wayback machine" at www.archive.org and examination of websites maintained at the two disputed domain names and at Complainant's website.
2 This information was obtained from a wayback machine.
3 Complainant cites ProQuest Information and Learning Company v. Domain Administrator, NAF Case No. FA 784206 (2006) (involving the mark Explorescience); Alexey Mezenin v. John Baselmans, NAF Case No. FA 664060 (2006) (Musicsonglyrics); Transgo, Inc. v. AJAC Transmission Parts Corp., 768 F.2d 1001, 1016 (9th Cir. 1985) (Shift Kit); Laureyssens v. Idea Group, Inc., 964 F.2d 131 (2d Cir. 1992) (Happy Cube); and Harlequin Enter. v. Gulf & Western Corp., 644 F.2d 946, 950 (2d Cir. 1981) (Harlequin Presents). As to Complainant's second proposition above, the Panel notes that if adopted literally it would read any requirement of market recognition ("secondary meaning") out of paragraph 4(a)(i) of the Policy and, for that matter, trademark law as well. Complainant's argument is misleadingly oversimplified, its citations are taken out of context, and the cases involve marks not nearly as generic as engineer.
4 Respondent's evidence does not pinpoint the date of each of these examples, and the Panel was unable independently to verify those dates because when he consulted the wayback machine he was advised that access to the archive had been blocked by the domain name owner.
5 Of course, if a complainant does meet the higher trademark law standard it plainly has rights to invoke the Policy.