Instrumentation Northwest, Inc. of Seattle, Washington, brought a UDRP on the three letter domain name INW.COM which is owned by Telepathy, Inc. of Washington, and who was  represented by ESQwire.com.

Here are the relevant facts and findings by the three member panel:

“Complainant is a supplier of water monitoring and sampling systems in the environmental field. Complainant has used the mark INW since 1986 in connection with its offerings.”

“Complainant registered the mark INW on the Principal Register of the United States Patent and Trademark Office in 1989 for electronic sensors, ground water sampling pumps, and ground water monitoring units.”

“Respondent registered the Domain Name in 2007. ”

“The Domain Name had been registered by another party in May 1997, and it apparently changed hands once before Respondent registered it, along with 70 other “three letter dot domains” Respondent registered that year.”

“Since 1998, Respondent has purchased more than 1,000 domain names comprised of three letters in the second-level domain.”

“In March 2011, Complainant offered to purchase the Domain Name for USD 2,100. Respondent’s alleged agent promptly responded with a counter-offer of USD 120,000.”

The Panel concludes that Respondent has a legitimate interest in the Domain Name under the Policy.

“Complainant did not cite any case authority under the Policy to support its claim that Respondent lacks rights or legitimate interests in respect of the Domain Name. ”

“The Panel unanimously finds that Complainant does not have exclusive rights to the letters INW. ”

“There are many third-party uses of that combination of letters. Accordingly, the first to register a domain name incorporating those letters has a legitimate interest in such domain name, provided that it is not registered or used in bad faith.”

“The Panel finds that Complainant has failed to establish on this record that the Domain Name was registered and is being used in bad faith.”

“This case does not present a clear instance of cybersquatting. ”

“There is absolutely no evidence that Respondent had Complainant or its mark in mind when registering the Domain Name.”

“Rather, on the record before it, the Panel agrees with Respondent that the registration of the three-letter Domain Name here was akin to registering a common word as a domain name.”

“In such an instance, a domain name holder generally acquires rights on a first-come, first-served basis.”

“The Panel does not believe that constructive knowledge of the mark may fairly be imputed to Respondent here particularly since the field in which Complainant operates is a rather narrow one.”

“This Panel does not believe that constructive knowledge, which is a very useful legal incident to trademark registration under U.S. trademark law for purposes of determining trademark infringement, applies across the board under the Policy for purposes of determining bad faith.”

“The Panel also holds that the mere fact of offering to sell this three-letter Domain Name for a steep price (USD 120,000) does not necessarily equate to bad faith under Policy paragraph 4(b)(i). ”

“This offer was made in response to an offer from Complainant. Moreover, for five years, Respondent never reached out to Complainant with an offer to sell the Domain Name. ”

“On this record, it is difficult to conclude that Respondent registered the Domain name “primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant” at a profit.”

“Rather, the Panel concludes that Respondent registered this three-letter Domain Name because of its inherent value, quite like registering a common word. In such a case, Respondent is free to sell it at a profit.”

“The Panel unanimously concludes that Respondent is not in bad faith here.”

“The Panel also declines to rule on Respondent’s laches defense here, since it is unnecessary to do so in view of the Panel’s other rulings. ”

“Having said that, a majority of the Panel would have been prepared to apply the laches defense here, given the fact that Complainant sat on its perceived rights for many years (indeed, 15 years if one goes back to the original registration of the Domain Name). ”

“Because laches requires not only an untoward delay but also prejudice to the party asserting the defense, the Panel majority would also have to conclude that Respondent suffered prejudice as a result of the delay. ”

“In the present case, a majority of the Panel would have found that Complainant’s delay did work prejudice on Respondent. ”

“Finally, the Panel declines to find reverse domain name highjacking on this record, although a finding of RDNH could arguably be supported here. ”

“Be that as it may, after carefully weighing all of the circumstances of the case, the Panel chooses to interpret this Complaint as misguided inasmuch as it was doomed from the start and should not have been brought. ”

“There is no hard evidence, though, that Complainant was ill motivated in lodging the Complaint.”

Robert A. Badgley

Presiding Panelist

Lynda M. Braun
Panelist

The Hon Neil Brown Q.C.
Panelist