DECISION
RMT, Inc. v. Domain Finance Ltd.
Claim Number: FA0408000313843
PARTIES
Complainant
is RMT, Inc. (“Complainant”), represented by Nathan D. Jamison of
Quarles & Brady LLP, 411 East Wisconsin Avenue, Milwaukee, WI
53202. Respondent is Domain Finance Ltd. (“Respondent”),
represented by Ari Goldberger of ESQwire.com Law Firm, 35 Cameo
Drive, Cherry Hill, NJ 08003.
REGISTRAR AND
DISPUTED DOMAIN NAME
The
domain name at issue is <rmt.com>, registered with Bulkregister,
LLC.
PANEL
The
undersigned certify that they have acted independently and impartially and to
the best of their knowledge have no known conflict in serving as Panelist in
this proceeding.
Judge
Carolyn Marks Johnson, Professor David Sorkin and Houston Putnam Lowry (Chartered
Arbitrator and chair) as Panelist.
PROCEDURAL
HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on August 16, 2004; the Forum received a hard copy of the
Complaint on August 18, 2004.
On
August 20, 2004, Bulkregister, LLC. confirmed by e-mail to the Forum that the
domain name <rmt.com> is registered with Bulkregister, LLC. and
that the Respondent is the current registrant of the name. Bulkregister,
LLC. has verified that Respondent is bound by the Bulkregister, LLC.
registration agreement and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute
Resolution Policy (the “Policy”).
On
August 23, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of September
13, 2004 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts, and to postmaster@rmt.com by e-mail.
A
timely Response was received and determined to be complete on September 27,
2004.
A
timely Additional Submission was received from Complainant on October 1, 2004.
On
October 11, 2004, pursuant to Complainant’s request to have the dispute decided
by a three-member Panel, the Forum appointed Judge Carol Marks Johnson,
Professor David Sorkin and Houston Putnam Lowry (Chartered Arbitrator and
chair) as Panelists.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’
CONTENTIONS
A.
Complainant
[a.]
Similarity of Domain Names to Remain Trademark: ICANN Rule 3(b)(ix)(1); ICANN
Policy ¶4(a)(i).
The
domain name at issue is <rmt.com>. This is identical to the
name of the Complainant and Complainant’s trademarks, with the exception of the
added “.com” suffix. Numerous cases under the policy have found such use
of a Complainant’s trademark to be confusingly similar according to Policy
¶4(a)(i). See Maple Leaf Sports & Entertainment Ltd. v. Toronto
Maple Leafs!, D2000-1510 (WIPO Jan. 24, 2001); WestJet Air Center, Inc.
v. West Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001).
[b.]
Respondent’s Lack of Rights in the Domain Names: ICANN Rule 3(b)(ix)(2); ICANN
Policy ¶4(a)(ii).
Complainant
RMT, Inc. is an environmental engineering and consulting firm that provides
services throughout the world. It has been doing business as RMT since at
least 1977 and has been the owner of U.S. Trademark Registrations for “RMT”
since 1987. The RMT name and mark are famous in the oil and gas
industry. RMT, Inc. is a subsidiary of Alliant Energy Corporation.
Respondent
operates a web site at the <rmt.com> domain name that is entitled
“RMT Oil & Gas.” That is the only reference to “RMT” anywhere on the
page, however. Instead, the page contains international, national and regional
news related to the energy industry. A graphic in the upper right corner
of the <rmt.com> home page states that it is affiliated with the
“World News Network.” Clicking on this link takes Internet users to the
home page of the “World News Network,” located at <wn.com>.
Complainant’s
RMT mark is not generic or descriptive nor is it a geographic term. The
only connection between the term “RMT” and the oil and gas industry is due
solely to Complainant’s use of the mark in connection with the oil and gas
industry. This is distinguishable from the situation in Kur- und
Verkehrsverein St. Moritz v. Domain Finance Ltd., D2004-0158 (WIPO June 14,
2004), where the complaint was dismissed because the domain name at issue,
<stmoritz.com>, was a geographic term.
Furthermore,
the Respondent is not “commonly known” by the <rmt.com> domain
name, pursuant to Policy ¶4(c)(ii). See Tercent Inc. v. Yi, FA
139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and
its failure to imply that Respondent is commonly known by the disputed domain
name, is a factor in determining that Policy ¶4(c)(ii) does not apply); Gallup
Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001)
(finding that Respondent does not have rights in a domain name when Respondent
is not known by the mark); see also RMO, Inc. v. Burbridge, FA 96949
(Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶4(c)(ii) "to require
a showing that one has been commonly known by the domain name prior to
registration of the domain name to prevail").
The
website currently located at <rmt.com> is operated by, and
contains much the same content as, the World News Network. For example,
the left-hand side of the home page of <rmt.com> contains a list
of “WN Channels.” And the right-hand side contains a clickable map that
offers “World News by Continent.” Additionally, the copyright notice at
the bottom of the <rmt.com> home page indicates that the copyright
is owned by “barges.com.” There is absolutely no evidence that the Respondent
is known as or does business as “RMT.”
[c.]
Respondent’s Bad Faith Registration and Use of Domain Names: ICANN Rule
3(b)(ix)(3); ICANN Policy ¶4(a)(iii).
Respondent
has engaged in bad faith with respect to the <rmt.com> domain
name. Respondent purchased the <rmt.com> name for the
purpose of directing Internet users to the “World News Network” family of sites
by creating a likelihood of confusion with the Complainant’s mark.
Complainant inquired about purchasing the <rmt.com> domain name in April
2003. In a response email sent to Complainant on April 10, 2003,
Respondent offered to sell the <rmt.com> domain name to
Complainant for $75,000 and claimed that the current owner of the domain name
was developing a “Russian Marine Times” news site for the domain. No such
site was ever developed by Respondent, however.
Complainant
again inquired about purchasing the <rmt.com> domain name from
Respondent in March 2004. Before this inquiry, Internet users who entered
<rmt.com> into a web browser were redirected to the World News
Network home page at <wn.com>. After receiving Complainant’s
inquiry about purchasing the <rmt.com> name, the Respondent created a new
website with the title “RMT Oil & Gas” that contained essentially the same
content as the World News Network page at <wn.com>. Respondent also
responded to Complainant’s inquiry by offering to sell the <rmt.com>
domain name for $40,000.
Respondent’s
actions demonstrate a continuous bad faith intent to profit from the RMT name
and mark by diverting customers looking for RMT, Inc.’s site to Respondent’s
web site that is effectively a portal to its World News Network sites, by
creating a likelihood of confusion with the RMT name as to the source,
sponsorship, affiliation or endorsement of Respondent’s web site. This
act falls within Section 4(b) of the Policy. There can be no question
that Respondent has violated the Policy by registering and using this domain
name, incorporating RMT, Inc.’s famous name, with no rights to use the domain
name, and with a bad faith intent to profit from such domain name at the
expense of RMT, Inc.
B.
Respondent
The Disputed Domain is composed solely of the
common 3-letter combination RMT. RMT is a very common abbreviation used
by thousands of third parties for many different word combinations. An
advanced search on the Google.com search engine for “RMT” excluding
“environmental,” “environment,” and “engineering,” to eliminate pages
referencing Complainant, yielded over 200,000 web pages containing the common
3-letter combination. These include: RMT.org.uk (Britain’s largest
specialist transport union); Reliable Multicast Transport
(rmt); RMT Aviation; RMT.com.pk (Reliability, Motivation, Trust);
religioustolerance.org/rmt.htm (Repressed Memories and Recovered
Memories Therapy); rmt.org (Rockville Musical Theatre).
Respondent registered rmt.com simply because it
was an available 3-letter domain name that it believed no party had exclusive
rights to. Respondent owns many Internet domain
names, but Respondent is no cybersquatter. Respondent has registered
thousands of domain names, which are predominantly generic, common words, or
city names, and they have all been registered for development in connection
with one or more sites which are a part of Respondent’s WorldNews, Inc. network
of web sites located at <http://worldnews.com>. Respondent’s generic
domain names include: broadcasting.com, oil.com, gas.com, helicopters.com,
cranes.com, cocoa.com, cartoons.com, filmreview.com, textiles.com,
sailboats.com, pollution.com, population.com, and students.com.
WorldNews.com
includes over 3,000 different sites that receive approximately 12 million
visitor sessions per month. Respondent invites the Panel to review
Respondent’s WorldNews.com network. The site speaks for itself.
From aesthetics to coverage, it’s quite simply one of the best news content web
sites on the Internet. WorldNews.com’s excellence has been recognized by many
organizations. Forbes.com states that WorldNews.com:
provides
quick access to the latest news from around the world, from Baghdad to Tokyo.
One-click gets you to headlines from any region of interest. Choose New Delhi
from the menu and up comes articles from Hindustan Times and the Khaleej
Times. Need to know what's happening in Asia? A click brings you breaking
news about the country's economy. Site also provides video broadcasts and savvy
editorials.
Entrepreneur
Magazine has called WorldNews.com “a necessary bookmark…. If it happened
somewhere on this planet, you’ll find the details here.” Respondent is
obviously a serious web site operator that has invested tremendous capital and
resources in web site development, and is not a cybersquatter.
Respondent did not register the Disputed Domain to sell to Complainant or to
any other party. Respondent did not register the Disputed Domain to
disrupt Complainant’s business. Respondent did not register the Disputed
Domain to prevent Complainant from reflecting its trademark in a domain
name. Respondent is not using the Disputed Domain to derive commercial
benefit by confusing users seeking Complainant’s web site. It is true, as
alleged in the Complaint that Respondent indicated it would sell the Disputed
Domain to Complainant for $75,000. However, it is undisputed this was in
response to Complainant’s unsolicited inquiry to purchase the Domain
Name. As alleged in the Complaint, “Complainant inquired about
purchasing the <rmt.com> domain name…” (emphasis added).
Respondent, otherwise, never offered to sell the domain name to Complainant or
to any party.
As Complainant
alleges, Respondent had intended to develop a web site for RMT.com called
Russian Marine Times. The site has not yet been developed.
Respondent instead chose to use RMT.com for a news site related to the offshore
oil and gas drilling and exploration industry. Rmt is short for “remote,”
which describes the remote nature of offshore drilling, an industry in which
Respondent’s principal shareholder is heavily involved. The main
shareholder in Domain Finance Ltd. is also the main shareholder in Intership
Ltd., a company that provides offshore construction, supply, accommodation and
crane vessel services to the oil and gas offshore industry. The
barges.com web site, linked at the top of RMT.com describes the Intership
business. Respondent also operates web sites at Oil.com, Gas.com,
Offshoreconstruction.com, and Floatinghotels.com. It is because Respondent is heavily
involved in the remote offshore oil and gas exploration industry that it chose
to associate RMT.com with this business. It is not true, as Complainant
suggests, that Respondent made RMT.com an oil and gas news site because of
Complainant’s affiliation with Alliant Energy Corporation. Respondent had
no knowledge that Complainant is a subsidiary of Alliant Energy Corporation,
and Complainant had never heard of Alliant Energy Corporation at all.
Moreover, from a review of the Alliant Energy web site at
<http://alliantenergy.com>, it is clear that Alliant Energy’s business
has nothing to do with the international offshore oil and gas exploration news
covered on the RMT.com site. To the contrary, Alliant Energy is an energy
utility. Accordingly, there is no connection between the RMT.com web site
and Complainant’s business as Complainant suggests. The Panel is
encouraged to review Respondent’s web sites, including
<http://barges.com>, <oil.com>, and <gas.com> which clearly
demonstrate that Respondent’s purpose for having an oil and gas news web site
at RMT.com is to promote its own businesses.
Bases
for Respondent to Retain Registration and Use of Disputed Name
Under the Policy, to prevail on its claim to obtain the rights to the Disputed
Domain, Complainant must demonstrate three things:
that the disputed domain
name is identical or confusingly similar to its trademark;
that respondent has no
rights or legitimate interest in the domain name; and
the domain name was
registered and is being used in bad faith.
(Policy,
¶¶4(a)(i)-(iii).) Complainant bears the burden of proof as to each
element of its claim. (Policy ¶4(a).)
A.
Complainant’s Trademark is Identical to the Disputed Domain
Respondent does not dispute this element of the
Policy. However, because Complainant has not proven the other elements of
the Policy, it is not necessary for the Panel to evaluate this element of the
Policy.
B.
Respondent Has Rights And A Legitimate Interest In The Domain Name
The second element Complainant must prove is that Respondent
has no rights or legitimate interest in the name. The Complaint fails
here. Paragraph 4(c) of the Policy lists three circumstances that can
demonstrate a registrant’s rights or legitimate interest in the disputed domain
name:
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;
you (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;
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.
(Policy ¶4(c)(i) - (iii).)
“RMT” is simply a 3-letter combination to which Complainant
does not have exclusive rights. From RMT Aviation to the Rockville
Musical Theatre, there are literally hundreds, if not thousands, of entities
and individuals all over the world that use the common 3-letter combination RMT
as abbreviations for their names. A search on the Internet search engine
Google.com search engine for “RMT” -- excluding “environment,” “environmental”
and “engineering” to eliminate pages referencing Complainant -- yielded over
200,000 web pages containing the common 3-letter combination. This
substantial third-party use is evidence that Complainant does not have
exclusive rights to the term RMT and, thus, supports Respondent’s legitimate
interest in the Disputed Domain. Energy Source Inc. v. Your Energy Source,
Case No. 96364 (NAF Feb. 19, 2001)(“energy source” “not exclusively associated
with Complainant’s business”).
Complainant alleges that Respondent does not
have a legitimate interest because it is not known as RMT. However, a
domain owner does not have to be known by a domain name to establish a
legitimate interest. It is well-established that, like common words,
anyone is entitled to register a 3-letter combination and the respondents’
legitimate interest is established per se at the point of registration,
since no other party can claim exclusive rights to a simple letter-combination
domain name. Tenenhaus v. Telepathy, Inc., Case No. 94355 (NAF May
17, 2000) (complainant not entitled to “exclusive use of the domain name DAF”); Trans Continental Records, Inc. v. Compana LLC,
No. D2002-0105 (WIPO April 30, 2002)(“use of [LFO.com] . . . even for sale, is
a legitimate business.”); Kis v. Anything.com Ltd., No
D2000-0770 (WIPO Nov. 20, 2000)(registration of 2 and 3-letter domain names
found to be legitimate.) As the Panel noted in Kis v.
Anything.com,
The Domain Name at issue here is a three-letter
second-level domain within the popular ".com" top-level domain. All
or nearly all of the three-letter names have long been taken; respondent itself
holds a number of other short domain names (as reflected in Network Solutions' Whois
database), including "an.com", "hw.com",
"vz.com", "xv.com", "yz.com", "zw.com,
"aex.com", "fii.com", "ldn.com",
"lna.com", "mhi.com", "nnc.com",
"otl.com", "tbj.com", "tca.com",
"ukt.com", "vaz.com", "vdj.com",
"wla.com", and probably many more. Respondent appears to have
selected the Domain Name "kis.com" because of its length . . . ,
rather than because it corresponds to Complainant's trademark -- indeed, it
seems unlikely that Respondent was even aware of Complainant's trademark when it
selected the domain name.
Under appropriate circumstances the offering for
sale of a domain name can itself constitute a bona fide offering of goods or
services for purposes of paragraph 4(c)(i) of the Policy. . . .
Under these circumstances, the Administrative
Panel finds that Respondent has a legitimate interest in the Domain Name.
Moreover,
Respondent uses the Disputed Domain for an offshore oil and gas exploration
news site as part of its Worldnews.com network of web sites. The term RMT
is short for “remote,” which describes the remote nature of offshore drilling.
Such use establishes Respondent’s legitimate interest. One UDRP panel
made the following finding of fact about this Respondent: “Respondent and its
"affiliated" company Serenade Limited has developed and is exploiting
an informational network composed of various websites.” Kur- und
Verkehrsverein St. Moritz v. StMoritz.com, Case No. D2000-0617 (WIPO Aug.
17, 2000). Respondent operates 3,000 different
news sites, which are visited by 12 million visitors per month. The
excellence of Respondent’s Worldnews.com network has been recognized by Entrepreneur
and Forbes magazines. As noted, Respondent operates web sites at
<oil.com>, <gas.com>, and <barges.com> which is why it
elected to point the Disputed Domain to an oil and gas exploration web site.
Accordingly,
because Respondent has a legitimate interest in the Disputed Domain, the
Complaint should be denied.
Complainant
Has Not Demonstrated That The Domain Name Was Registered and Is Being Used
In Bad Faith
The third element that Complainant must show is Respondent’s bad faith
registration and use. The Complaint fails on this count as well.
The Policy identifies four circumstances that may constitute evidence of bad
faith registration and use:
(i)
circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs
directly related to the domain name; or
(ii)
you have 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 you have engaged in a pattern of such conduct; or
(iii)
you have registered the domain name primarily for the purpose of disrupting the
business of a competitor; or
(iv) by
using the domain name, you have intentionally attempted to attract, for
commercial gain, Internet users to your web site 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 your web site or location or of a
product or service on your web site or location.
(Policy ¶¶4(b)(i) - (iv).)
There is absolutely no evidence that
Respondent registered the Disputed Domain to sell to Complainant. Nor is
there any evidence that Respondent had even heard of Complainant or its
purported trademark when it registered the Disputed Domain. Absent
evidence such knowledge of Complainant’s trademark when Respondent registered
the Disputed Domain, it is impossible for Respondent to have registered the
Disputed Domain in bad faith. Accordingly, the Complaint must be
dismissed for this reason alone.
It is further well-established
that absent direct proof that a common term domain name was registered or
acquired solely for the purpose of profiting from Complainant’s trademark
rights, there can be no finding of bad faith registration and use. Ultrafem,
Inc. v. Warren Royal, supra. There, the 3-member panel, in
ruling in favor of the owner of the common term domain name Instead.com held:
A bad faith showing would require the
Complainant to prove that the Respondent registered instead.com specifically
to sell to the Complainant, or that the value of "instead" as a
domain derived exclusively from the fame of its trademark. Neither
has been proven in this case. In the absence of an intent to capitalize
on the Complainant’s trademark interest, the Complainant cannot assert an exclusive
right over a domain name that is a common, generic term. (emphasis
added).
Here,
the undeniable fact is that “RMT” is an extremely common 3-letter combination,
appearing on over 200,000 third-party web pages unrelated to Complainant.
This extensive worldwide third party use is overwhelming evidence that
Complainant does not enjoy exclusive use of the Disputed Domain, thus it cannot
be concluded that Respondent selected the Disputed Domain with Complainant in
mind. It did not. There can be no bad faith registration
where there is no evidence that a respondent had knowledge of a Complainant or
its mark. Kis v. Anything.com Ltd., supra. (“the
Administrative Panel finds that there are no indications that Respondent knew
of Complainant or its trademark when registering the Domain Name.”). As
set forth in the legitimate interest section, Respondent certainly has used the
Disputed Domain in connection with the bona fide offering of services through
it WorldNews.com network of web sites – a use expressly acknowledged as
constituting a legitimate interest by another UDRP panel. This is
obviously not bad faith use.
There is no
evidence Respondent had knowledge of Complainant or its mark when it registered
the Disputed Domain. As recently held in the 3-member decision in The
Landmark Group v. DigiMedia.com, L.P., No. 285459 (NAF Aug. 6, 2004), “Respondent cannot be found to have engaged in bad faith
registration of Complainant’s mark if it had never heard of Complainant’s mark
at the time of the registration.” See also DK Bellevue,
Inc. v. Landers, D2003-0780 (WIPO Nov. 24, 2003) (no bad faith registration
if respondent had not heard of complainant’s mark at time of registration); Intermap Techns. Corp. v. Salvage Elec. Inc., FA
203130 (NAF Dec. 12, 2003); Experimental Aircraft Ass’n (EAA) v.
EAA.COM, FA 206309 (NAF Dec. 16, 2003).
Accordingly, bad faith registration cannot be established.
Complainant attempts to establish bad
faith based on the reply by Respondent’s unsolicited inquiry to purchase the
Disputed Domain. It is undisputed, however, as alleged in the Complaint,
that “Complainant inquired about purchasing” the Disputed Domain. There
is no evidence that Respondent sought to sell the Disputed Domain to
Complainant. Respondent’s reply to this inquiry is not evidence
that Respondent registered the Disputed Domain with the intent to sell
it to Complainant. There is not even any evidence that Respondent had
knowledge of Complainant when it registered the Disputed Domain.
Respondent stating a price to sell the Disputed Domain in response to
Complainant’s purchase inquiry does not constitute bad faith under the
Policy. As the Panel held in Pocatello Idaho Auditorium District v.
CES Marketing Group, Inc., Case No 103186 (NAF Feb. 21, 2002):
There
are numerous ICANN decisions which have recognized that the owner of a domain
name has a legal right to sell a domain name when asked if he or she will
transfer or sell it. Panels have noted that "there is nothing
inherently wrongful in the offer or sale of domain names, without more, such as
to justify a finding of bad faith under the Policy." N.C.P. Marketing
Group v. Entredomains, D2000-0387 (WIPO July 5, 2000).
See Also General Machine Prods Co.
v. Prime Domains, supra. (Complainant “solicited the offer to sell .
. . . These facts do not indicate any bad faith.”); Piper.com The New Piper
Aircraft, Inc. v. Piper.com, No.FA94367 (NAF May 2, 2000)
(Complainant made unsolicited offer to purchase).
Accordingly, Respondent’s reply to Complainant’s inquiry to purchase the
Disputed Domain does not establish bad faith.
Respondent further alleges bad faith based on the fact that Respondent has
associated the Disputed Domain with an oil and gas news web site, because
Complainant is an affiliate of Alliant Energy Corporation. However, there
is no evidence that Respondent was aware of this connection. It had no
such knowledge. It never heard of Alliant Energy Corporation and had no
knowledge that Complainant had any connection to the oil and/or gas
industry. The only reason that Respondent has associated the domain name
with oil and gas is because its principal shareholder operates companies that
provide services to the offshore oil and gas drilling industry and operates
news web sites in connection with its <oil.com>, <gas.com>,
<barges.com> and other offshore oil and gas industry web sites.
Respondent is involved in environmental engineering consulting, and the
affiliated company, Alliant Energy Corporation, is an energy utility. Had
Respondent truly had a bad faith intent, it would have associated the domain
name with environmental engineering. Neither the businesses of Complainant or
Alliant are related to Respondent’s business. There simply is no evidence
of bad faith registration or use. Respondent registered the Disputed
Domain for the simple reason that it was an available 3-letter combination to
which no party had exclusive rights. That does not constitute bad faith
registration of a domain name, which is required to be proven by a Complainant
seeking transfer of a domain name under the UDRP.
Accordingly,
for all the above reasons, Complainant has failed to meet its burden of proving
bad faith registration and use and, the Complaint must, therefore, be
dismissed.
C.
Complainant’s Additional Submission
A.
Respondent
has Presented no Actual Evidence of Legitimate Use of the <rmt.com>
Domain Name.
Complainant’s “RMT” marks are well known
in the oil and gas industry. Complainant has consulted in the oil and gas
industry since 1984 in the United States, as well as internationally in such
places as Venezuela, Algeria, India, Tunisia, Mozambique, and elsewhere.
Its clients include BP Amoco, Exxon Mobil, Shell Oil, Sunoco, and Conoco.
As the attached “SOQ” (statement of qualifications) and printouts from
RMT’s internet website <http://www.rmtinc.com/oil.htm> show,
Complainant’s “RMT” mark is internationally famous in the oil and gas industry.
Domain Finance’s only present use of the
disputed domain name is to wrongfully capitalize on RMT’s mark and reputation
in the oil & gas industry solely to direct traffic to their news site, or
to attempt to sell its domain registration. Prior to May 2004, Respondent
was not using the disputed domain except to redirect traffic to its
<wn.com> domain and was presumably waiting for a buyer of the
domain. This is not engaging in a bona fide offering of goods or services
pursuant to Policy ¶4(c)(i), nor a legitimate noncommercial or fair use
pursuant to Policy ¶4(c)(iii). See J. Paul Getty Trust v.
Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding
rights or legitimate interests do not exist when one has made no use of the
websites that are located at the domain names at issue, other than to sell the
domain names for profit); see also Wal-Mart Stores, Inc. v. Stork,
D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to
sell the domain name suggests it has no legitimate use). Domain Finance, Ltd.,
had not previously used the <rmt.com> domain -- it merely used the
domain to redirect traffic to its <wn.com> site. It was only after
RMT expressed an interest in purchasing the domain in an e-mail to Domain
Finance, Ltd., did the respondent concoct a bogus “RMT Oil & Gas” site,
which merely regurgitates <wn.com> content. There is no other
reference to “RMT” other than at the top of the site. In sum, there is no
evidence that respondent or any of its services were ever known by the <rmt.com>
domain name and thus Respondent does not have any rights in the disputed domain
name. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum
Jan. 23, 2001).
In an attempt to manufacture a legitimate
use, Respondent first argues that it was developing a web site called “Russian
Marine Times” for the <rmt.com> domain name. Yet, a Google®
search of “Russian Marine Times” shows zero hits. Respondent first
made this claim on April 10, 2003, yet there is no evidence that Respondent has
ever done anything toward developing this alleged site in the eighteen months
since it first made this claim other than registering a domain name confusingly
similar to Complainant’s registered marks. Respondent just made up the
name “Russian Marine Times” in a self-serving attempt to avoid a finding of bad
faith because it has the initial letters “RMT.” The Panel should see
through these transparent shenanigans by the Respondent.
Then, Respondent changes its tune and
argues that the three-letter phrase “RMT” is a commonly used abbreviation for
“remote.” Yet Respondent does not provide any evidentiary support
for this argument. This is because it is simply not true. Google®
searches show that the acronym “RMT” is not used in the oil & gas or
offshore drilling industry for the abbreviation of “remote.”
Complainant’s consultants, who are familiar with the oil and gas industry, do not
routinely use that acronym in their work, nor are they familiar with the term
as being routinely used by their oil and gas industry clients. The <rmt.com>
domain has nothing to do with Respondent’s business except that Respondent has
put a bogus title on a news webpage capitalizing on the RMT name, which is
well-known in the oil & gas industry.
In the end, Respondent has produced no
evidence of legitimate use of the <rmt.com> domain name other than
unsupported assertions and contradictory, self-serving statements. It
follows that Complainant has established Respondent’s lack of rights in the
domain name under Policy ¶4(a)(ii).
B.
Respondent
Registered the <rmt.com> Domain Name in Bad Faith
Respondent is making no actual use, and
has never made any actual use, of the <rmt.com> domain name other
than to wrongfully direct traffic to its site by capitalizing on Complainant’s
mark, and to offer it for sale to the highest bidder. Respondent offered
the domain name to Complainant for an outrageous amount starting at $75,000 and
again for $40,000. Respondent makes much of the fact that RMT had
inquired about the purchase of the domain. However, the offer to sell can
be in the form of a counteroffer. See Magnum Piering, Inc. v. The
Mudjackers, D2000-1525 (WIPO January 29, 2001) (“Cybersquatters often wait
until a trademark owner comes calling; they should not be able to avoid the
Policy by being the second to speak.”)
Complainant’s attempts to sell the domain
name to Complainant for an exorbitant price is evidence of bad faith.
Domain Finance stated in their offer that the price was to “cover costs”
associated with the creation of a website for the non-existent “Russian Marine
Times.” Curiously, those same “costs” were $35,000 lower a year later
when Domain Finance again offered the domain for sale to RMT, Inc. for
$40,000. Notably, even after eighteen months of allegedly working on a
website and incurring costs of “$75,000,” there is no website. Taken
together, these facts show ample evidence of bad faith. See Mondich v.
Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the Respondent’s
failure to develop its website in a two year period raises the inference of
registration in bad faith).
The fact that Domain Finance, Ltd.,
claims to have no knowledge of RMT’s mark is not evidence that it lacked bad
faith. Registration of an infringing domain name despite actual knowledge
is evidence of bad faith registration pursuant to Policy ¶4(a)(iii). See
Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002)
(holding that “there is a legal presumption of bad faith, when Respondent
reasonably should have been aware of Complainant’s trademarks, actually or
constructively”); see also Entrepreneur Media, Inc. v. Smith, 279
F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that “[w]here an alleged
infringer chooses a mark he knows to be similar to another, one can infer an
intent to confuse”). RMT’s mark has been in use in the oil and gas
industry since 1984 and has been registered with the USPTO since 1988. If
Respondent, were truly operating in the oil and gas industry, it would have
recognized the RMT mark. Under these circumstances, Respondent, should
have at least constructive notice of RMT’s marks.
Finally, Respondent cites several cases
purporting to hold that the use of a three letter acronym is allowable under
any circumstances. None of these cases, however, are applicable to the
facts of this case. In Tenenhaus v. Telepathy, Inc., FA 94355
(Nat. Arb. Forum May 17, 2000) (cited by Respondent), the Forum specifically
found that the current use of the domain <daf.com> did not conflict with
or interfere with that complainant’s business. Here, Respondent’s use of
the <rmt.com> domain clearly does conflict and interfere with RMT,
Inc.’s business because it is wrongfully exploiting RMT’s mark in the oil &
gas industry.
In Trans Continental Records, Inc. v.
Compana LLC, D2002-0105 (WIPO Apr. 30, 2002), concerning the
<lfo.com> domain, the LFO trademark was not registered, which was a
significant factor in determining there was no bad faith. In the present
case, “RMT” is a registered mark of RMT, Inc.
In Kis v. Anything.com Ltd.,
D2000-0770 (WIPO Nov. 20, 2000), the panel found that KIS was an abbreviation
of Korean Information Site, which the panel found to “perfectly describe
the nature and objective of [respondent’s] site.” (emphasis added). Here,
Domain Finance, Ltd., argues that the letters “RMT” describe its site as being
a well-known acronym in the oil and gas industry. But as shown above,
there is absolutely no support for the Respondent’s argument that “RMT”
describes anything about its site or that it is a well-known acronym for
“remote” or anything else that is connected with Respondent.
Respondent registered a domain name
identical to a well-known mark in the oil and gas industry, waited for the
owner of the mark to inquire about purchasing it, and then attempted to sell it
for an exorbitant amount. Respondent then concocted various theories out
of thin air in an after-the-fact attempt to manufacture a legitimate use of the
domain name. It follows that Respondent registered and used the <rmt.com>
domain name in bad faith under Policy ¶4(a)(iii).
D.
Respondent’s Additional Submission
Even
though Respondent’s additional submission was not made in a timely fashion, the
Panel accepts it as though it was made timely. The delay in submitting it
was reasonable under the circumstances and caused no prejudice to Complainant.
While Complainant has attacked the legitimacy of Respondent’s use of the
Disputed Domain and claims its registration and use have been bad faith, these
allegations are not borne out by the undisputed facts.
Respondent Operates Legitimate Web Sites:
It is Not a Cybersquatter
Respondent operates a recognized sophisticated global network of news web sites
under its WorldNews.com umbrella of sites. There is no evidence that
Respondent engages in abusive domain name registration to profit from the sale
of domain names or to confuse users based on third-party trademark
rights. The Panel can review the WorldNews.com web site and its various
topical web sites to quickly recognize this irrefutable fact. The
decision in Kur-und Verkehrsverein St. Moritz v. Domain Finance Ltd.,
D2004-0158 (WIPO June 14, 2004) – a 3-member panel decision which not only
ruled in Respondent’s favor but found that the Complainant had engaged in
Reverse Domain Name Hijacking – is compelling for recognition of the legitimacy
of Respondent’s operation.
- Respondent Registers Common Words
and Descriptive Terms to Which No Party Can Claim Exclusive Rights: Simple
3-letter Combinations Like RMT.COM Fall into this Category.
As
set forth in the Response, and which can be validated by a review of the
<http://worldnews.com> web site, Respondent registers domain names
because they are generic words in common use (oil.com, gas.com, phones.com,
cartoons.com, broadcasting.com) and descriptive terms for its news sites
(worldnews.com, wnscience.com, basketballdaily.com). As noted in
the Response, it is well-established that anyone is entitled to register such
domain names for any purpose. Like common words and descriptive terms,
simple 3-letter combinations, to which no party can claim exclusive rights, are
also fair game for anyone to register. Respondent registered RMT.com to use in
connection with WorldNews.com. Accordingly, Respondent has rights and a
legitimate interest in the Disputed Domain.
- There is No Evidence the Disputed
Domain Was Registered With Complainant in Mind and, thus, Bad Faith
Registration Cannot be Established
All
of Respondent’s allegations of bad faith concern actions taken by Respondent after
the Disputed Domain was registered. As noted in the Response, Respondent
has no knowledge of Complainant or its mark when it registered the Disputed
Domain, nor of its purported connection to oil and gas exploration.
Respondent registered the Disputed Domain on May 19, 1997 – more than 7
years before the initiation of this dispute. Complainant admits in
the Complaint that its first contact with Respondent was in April 2003, when it
“inquired about purchasing” the domain name. Complainant has proffered no
evidence that Respondent had knowledge of its mark when it registered
the Disputed Domain and/or that the Respondent registered the Disputed Domain
with Complainant’s mark in mind. Accordingly, bad faith registration
cannot be proven. Village Resorts Ltd. v. Steven Lieberman; (proof of bad faith requires “evidence of bad faith at the
time of initial registration”); Futureworld Consultancy Pty Ltd. v. Online
Advice, No. D2003-0297 (WIPO July 18, 2003)(“there is no evidence to show
that the disputed domain was registered with the Complainant in mind…”).
Complainant’s argument that “constructive knowledge” of its mark is enough to
establish bad faith is inapplicable in the case of a common 3-letter
term. The only UDRP case cited by Complainant to support this argument, Digi
Int’l v. DDI Sys, did not involve a common word or simple 3-letter
combination. To the contrary, the Disputed Domain was
<digidis.com>. Where the mark is a common term, specific evidence
of bad faith is required because it cannot be concluded that Complainant was a
target of the registration. Canned Foods, Inc. v Ult. Search Inc.,
No. FA 96320 (NAF Feb. 13, 2001) (“There are dozens of other enterprises that
use the term "Grocery Outlet," therefore one cannot conclude that Complainant
must necessarily be the special target); Lumena
s-ka zo.o. v. Express Ventures LTD, No.94375 (NAF May 11, 2000).
Accordingly, because Respondent registered the Disputed Domain without
knowledge of Complainant or its mark, and because there is no evidence that
Respondent registered the Disputed Domain with such knowledge, bad faith
registration cannot be proven and the Complaint must, therefore, be denied.
FINDINGS
The Panel makes the following findings:
the domain name registered by the
Respondent is identical or confusingly similar to a trademark or service mark
in which the Complainant has rights;
the Respondent has rights or legitimate
interests in respect of the domain name; and
the domain name has been registered and
is being used in bad faith.
DISCUSSION
Paragraph
15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the
“Rules”) instructs this Panel to “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 requires that the Complainant must prove each of the
following three elements to obtain an order that a domain name should be
cancelled or transferred:
the domain name registered by the
Respondent is identical or confusingly similar to a trademark or service mark
in which the Complainant has rights;
the Respondent has no rights or
legitimate interests in respect of the domain name; and
the domain name has been registered and
is being used in bad faith.
Identical and/or Confusingly
Similar
Complainant
established rights in the RMT mark by registering it with the United States
Patent and Trademark Office (Reg. No. 1,490,637 issued May 31, 1988 and Reg.
No. 1,490,638 issued May 31, 1988). See Men’s Wearhouse, Inc.
v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark
law, registered marks hold a presumption that they are inherently distinctive
and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v.
Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions
have held that registration of a mark is prima facie evidence of
validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden of refuting this assumption).
The <rmt.com>
domain name registered by Respondent is identical to Complainant’s RMT mark
because the domain name fully incorporates the mark, adding only the generic
top-level domain (gTLD). The Panel may find that the addition of a gTLD
to Complainant’s identical mark is irrelevant and insufficient to negate the confusing
similarity of the domain name. See Rollerblade, Inc. v. McCrady,
D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name
such as “.net” or “.com” does not affect the domain name for the purpose of
determining whether it is identical or confusingly similar); see also Victoria's
Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that the
<bodybyvictoria.com> domain name is identical to Complainant’s BODY BY
VICTORIA mark). Thus, the Panel may conclude that the disputed domain
name is identical to Complainant’s RMT mark pursuant to Policy ¶4(a)(i). See
Shirmax Retail Ltd. v. CES Mktg Group Inc., AF-0104 (eResolution Mar. 20,
2000) (refusing to interpret Policy ¶4(a)(i) in the conjunctive rather than
disjunctive sense in holding that “mere identicality of a domain name with a
registered trademark is sufficient to meet the first element [of the Policy],
even if there is no likelihood of confusion whatsoever”).
Rights or Legitimate Interests
Respondent is
not commonly known by the <rmt.com> domain name. While
Complainant and Respondent are both in the similar channels of commerce
(relating to the oil and gas business), it is possible Respondent may not have
heard of Complainant’s mark.
Since
Complainant has registered its trademark, Respondent has at least constructive
notice of the mark (even if Respondent does not have actual notice).
While it is true trademarks are accorded different levels of enforcement
depending on whether they are fanciful, misapplied or merely descriptive, these
issues are not considered in the UDRP. We do not re-examine the United
States Patent and Trademark Office’s decision to register a trademark, Opus
Northwest Construction Corporation v. Opus Realty and Eldon Chan,
FA0408000318960 and MGW Group, Inc. v. Gourmet Cookie Bouquets.com,
FA0405000273996. There is no dispute RMT is Complainant’s registered
trademark.
The only
question remaining is whether or not Respondent has any rights to the domain
name (having satisfied ourselves Complainant has rights in a three letter
trademark).
Respondent has
used the domain name since May 18, 1997 without hearing from Complainant.
While Respondent’s web site links to sister web sites (ie: wn.com), it does not
simply forward the viewer. The services provided seem to be bona fide
services. Therefore, ¶4(a)(i) is satisfied because Respondent was using the
domain name or a name corresponding to the domain name in connection with a
bona fide offering of goods or services before any notice to Respondent of the
dispute. While Respondent might well be infringing upon Complainant’s
trademark, such a determination is beyond the scope of the UDRP.
Registration and Use in Bad
Faith
It was not
necessary to consider this issue in light of the Panel’s decision on previous
issue.
DECISION
Having
failed to establish all three elements required under the ICANN Policy, the
Panel concludes that relief shall be DENIED.
Houston Putnam Lowry, Chartered
Arbitrator and Chair Panelist
Judge Carolyn Marks Johnson,
Professor David Sorkin
Dated: November 3, 2004
Energy Source Inc. v. Your Energy Source, Case No. 96364 (NAF Feb. 19, 2001)
http://www.arb-forum.com/domains/decisions/96364.htm
http://www.arb-forum.com/domains/decisions/94355.htm
http://arbiter.wipo.int/domains/decisions/html/2002/d2002-0105.html
http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0770.html
http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0617.html
http://www.arb-forum.com/domains/decisions/285459.htm
http://arbiter.wipo.int/domains/decisions/html/2003/d2003-0780.html
http://www.arb-forum.com/domains/decisions/203130.htm
http://www.arb-forum.com/domains/decisions/206309.htm
http://www.arb-forum.com/domains/decisions/94367.htm
http://www.arb-forum.com/domains/decisions/94367.htm
http://arbiter.wipo.int/domains/decisions/html/2001/d2001-0814.html
http://arbiter.wipo.int/domains/decisions/html/2003/d2003-0297.html
http://www.arbforum.com/domains/decisions/96320.htm.
http://www.arb-forum.com/domains/decisions/94375.htm