What makes the case interesting is that the domain appearently been inactive since 2004 until after this complaint was filed and that the domain name holder did not even file a response.
The Complainant was Webvisions Pte Ltd. of Singapore which hold multiple trademark in several countries and operates a business as a web host and provider of internet services.
The domain holder is a company by the same name as the domain, WebVision of Austin, Texas who didn’t even bother to respond to the complaint.
According to the Complaint, the Complainant “currently hosts websites in more than 40 countries.”
The Respondent is a small business in the Austin area of Texas in the United States of America (the “USA”) providing simple small business IT services.
“The Complainant has clearly established ownership of the registered trademarks”
“The disputed domain name differs from those trademarks by (1) the omission of the “s” at the end of the mark”.
“The omission of the “s” reduces what otherwise appears to be a plural term to the singular. That is not sufficient to dispel any likelihood of confusion and, indeed, many cases have found that the addition, omission or transposition of a single letter can be a common source of confusion.”
“Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s proved trademark rights and the Complainant has successfully established this requirement.”
“The disputed domain name is the same as the name of the registrant of the disputed domain name.”
“When the Complaint was filed, the Complainant contends that the disputed domain name did not resolve to an active website and had not done so since at least 2004. A search of the “wayback machine” at archive.org substantially confirms this claim.”
“At the time this decision was prepared, however, the disputed domain name did resolve to a website that appears to offer a range of IT services, but not on their face the web hosting or ISP services for which the Complainant has secured a trademark registration.”
“If this website accurately reflected the Respondent’s activities, it might well found a basis for inferring that the Respondent was conducting a legitimate business that did not conflict with the Complainant’s registered trademarks in the USA. ”
“”There are a number of reasons why the Panel is not prepared to draw that inference on the record in this dispute. First, the Respondent has not disputed the Complainant’s claim that the disputed domain name did not resolve to a website between at least 2004 and the filing of the Complaint. Secondly, the website exhibits a degree of sophistication and scale of business which appears quite at odds with the Respondent’s portrayal of himself in his emails requesting an extension of time, or assistance in making such a request, as a small business which was being unfairly taken advantage of by a much larger business. Thirdly, the website lists as contacts telephone numbers and email addresses which have been or are apparently inactive. For example, the Center’s email communication on November 4, 2010 referred to above, generatd an automated response that delivery failed even though it was sent promptly in reply to an email message apparently from that address. The website also appears to assert a provenance of “2006 Webvision”. The “Copyright” and “Legal” “links” are not active at all.””
“”In these circumstances, the Panel finds that the Respondent has not discharged the evidential burden required to rebut the prima facie case which the Complainant has established.””
“The Complainant contends that the Respondent’s long period of non-use of the disputed domain name is evidence that it was registered and is being used in bad faith”
“The Complainant contends that the Respondent’s “passive” holding of the disputed domain name misleads the Complainant’s customers into thinking its website is not operating and prevents the Complainant from registering the disputed domain name itself. Finally, the Complainant argues that the Respondent’s failure to respond to letters of demand from the Complainant’s lawyers is bad faith.”
“Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the domain name to take advantage of its significance as a trademark owned by (usually) the complainant.”
“On the record in this dispute, it is very difficult to draw that inference.”
“The first and perhaps main problem is the very narrow scope of the services covered by the Complainant’s trademark registrations.”
“The second problem is that the Complainant’s trademark in the USA was registered in November 2008, several years after the Respondent apparently registered the disputed domain name.”
“The Complainant’s US trademark registration does state that it was first used in commerce in 1999 or 2000, which would predate the registration of the disputed domain name by the Respondent.”
“Apart from stating that it provides services to its customers in the USA from a data center there, the Complaint does not provide any details about the scale, extent or duration of its operations there. As already noted, the Complaint does also state that it provides its services in some 40 countries.”
On its website at <webvisions.com> under the tab “Countries”, the Complainant lists “Australia”, “China”, “Hong Kong”, “India”, “Malaysia”, “Singapore” and “Others”. These pages do include claims to servicing over 20,000 businesses in 40 countries.
“It is also clear that in its field of operations the Complainant provides services to very significant companies including Johnson & Johnson, Proctor & Gamble, Volkswagen, General Motors, Motorola and Microsoft. Under “Other”, the opening paragraphs state:”
“Need Web Hosting in Asia?
Webvisions is a large-scale, ISO-certified webhosting company founded in 1996 servicing Asian and Asia-Pacific businesses or businesses from USA and Europe wanting to host in Asia. Webvisions is profitable on a net bottom line basis, perhaps unique in the context of Asian reseller hosting.”
“There has been a Webvision Corporation or Webvision Inc. operating at various times in the USA. While that entity is apparently now defunct and initially operated out of California, it does appear that it was based in Austin Texas for a period.”
“Taking all these factors into account, the Panel does not consider it appropriate to draw the inference on the record in this case that the Respondent registered the disputed domain name in bad faith and is using it in bad faith.”
“It cannot fairly be said that the Respondent has actively tried to conceal his identity in this case because his name is different to that given as the registrant. The individual apparently behind the business has been readily identified from the administrative and technical contacts provided to the Registrar. In the Nuclear Marshmallows case, supra, there was a statutory obligation on persons carrying on business under a name other than their own name to register it as a business name and there was evidence that the addresses given by the respondent were fictitious. There is no evidence in this dispute that registration of business or trading names is a requirement under the law of Texas. There is no evidence that the address given by the Respondent does not exist. Nor would the Panel be prepared to infer that the Respondent has provided false registration details from the Respondent’s failure to reply to letters of demand. It can fairly be said that the Respondent has not provided any evidence of actual or contemplated use of the disputed domain name before the dispute commenced. As already noted, however, the other factors referred to by the learned panelist in the Nuclear Marshmallows case, supra, are not nearly as compelling in this dispute.
Accordingly, the Panel finds that the Complainant has not discharged its burden on this part of the case.”
I took an interest in this case since the respondent was in Austin.
One thing to note is that the complainant and panel were incorrect to say this domain hasn’t been used since 2004. If you look at DomainTools you’ll see screenshots from recent years for the site.
It’s said that people rely so much on Wayback machine and assume if there’s nothing in there then the site wasn’t active.
Andrew
Thanks for the info.
For me quite a strange decision and honestly can’t understand why on the fact the panel presented they did not give the domain to the trademark holder.