Vertical Axis after a nice string of wins, just lost a UDRP on the domain name tytan.com

The three member panel voted 2-1 in favor of the trademark holder but the honorable Neil Brown in well reasoned dissent made the argument of why the case should have went for the domain holder.

Here are the relevant facts and findings by the panel:

“Since at least 1997, Complainant has produced and marketed foam and sealant products used in the construction of buildings and houses.  B

“Beginning in 1997, Complainant has obtained trademark registrations for its TYTAN mark in various European countries (e.g., Poland Patent Office Registration No. 130539; issued Aug. 6, 1997) and with the USPTO (Registration No. 3,519,158; issued Oct. 21, 2008).

“Respondent is the registered owner of the disputed domain name, tytan.com, with a registration date of November 4, 2001.

“Respondent registered the disputed domain name as part of its registration of multiple domain names. Respondent uses the disputed domain name to collect pay-per-click fees connected with third party links placed on Respondent’s website that is located at that name.

“Prior UDRP rulings have found legitimacy within revenue generation schemes that stem from collecting domain names that reflect descriptive terms, so long as the associated website offerings are consistent with the meanings of those terms. ”

“In the case, Media General Communications, Inc. v. Rarenames, WebReg, D2006-0964 (WIPO September 23, 2006), the learned panelist devised a five-pronged test for establishing rights and legitimate interests in those circumstances, thusly:

– the respondent regularly engages in the business of registering and reselling domain names, and/or using them to display advertising links;

– the respondent makes good-faith efforts to avoid registering and using domain names that are identical or confusingly similar to marks held by others;

– the domain name in question is a “dictionary word” or a generic or descriptive phrase;

– the domain name is not identical or confusingly similar to a famous or distinctive trademark; and

– there is no evidence that the respondent had actual knowledge of the complainant’s mark.

“When applied to the instant case, the Panel concludes that clearly the third and fourth conditions are unmet.  “Tytan” is not a “dictionary word;” and TYTAN is a distinctive trademark.”

“Notwithstanding the proclamations of Respondent to the contrary, “tytan” is not a descriptive or common word in the English language. ”

“Moreover, it is not a common misspelling of the word “titan,” except among people who do not spell well.  ”

Although aware that “tweets” and “texts” are swiftly eroding the practice of precise spelling in the English language, the Panel believes that some standards still remain – at least until the younger generation gains complete control.  “Tytan” is not an acceptable spelling of “titan;” no more than “tirant” is an acceptable spelling of “tyrant.”

As the Panel finds that the disputed domain name, <tytan.com>, is not a common or descriptive word, the Panel also finds that, in line with countless prior UDRP decisions, Respondent’s use of that name – identical to Complainant’s distinctive TYTAN trademark – for a website containing third party linkages to gain pay-per-click revenue does not constitute a bona fide offering of goods and services per Policy ”

“Complainant has selected paragraph 4(b)(i) above, upon which to base its claim of bad faith, by contending that Respondent offered to sell the disputed domain name for USD$40,000, which exceeds any reasonable costs it might have incurred directly related to the name.  ”

“However, the Panel finds flaws in this contention from the fact that Respondent’s demand for payment was not only in response to an inquiry initiated by Complainant, but came more than ten years after the disputed domain name was registered by Respondent. ”

“Based on this record, it is difficult for the Panel to infer that Respondent intended primarily to sell that name to Complainant, or one of its competitors, at the time of registration.  ”

“Although Complainant had registered its mark in a few Eastern European countries before said registration by Respondent, Complainant admits that its business did not begin to flourish in the United States, Respondent’s domicile, until 2001 (the USPTO registration submitted by Complainant to the Panel cites September 1, 2001 as the commencement of commerce), preceding Respondent’s actions by mere months at best. ”

“Simply put, the Complaint has failed to provide to the Panel enough evidence to rebut Respondent’s contention that it was not even aware of Complainant prior to registration of the disputed domain name. ”

“However, the Policy does not intend that the circumstances enumerated in paragraph 4(b) be the only circumstances upon which to base bad faith registration and use.  ”

“Respondent claims that it acquired the disputed domain name – after its previous owner allowed the registration to expire – primarily for use vis-a-vis its generic meaning.  :”

“As reasoned in the section above, the Panel finds no generic meaning for “tytan,” as opposed to “titan.”

“However, even if conceding that “tytan” is equivalent to “titan,” the Panel does not view the web page shown in the Response (located at tytan.com) as offering goods, services or links that are associated with the meaning of that term.  Instead, the page seems to offer a general and random selection of links that do not relate to any descriptive term, other than possibly “miscellaneous.”

“Indeed, the Panel’s view of said page is that it is dominated by the topmost heading which suggests that the disputed domain name is for sale.”

” The Panel thus concludes that Respondent’s primary intent from the beginning was to sell the name, most likely in the hope that one of the entities that had a vested interest in the distinctive mark, TYTAN, would pay a premium price.  Moreover, Respondent’s continued use of that name was to derive as much commercial gain from confused Internet users searching for goods or services under that mark, until such an invested buyer emerged.  The Panel finds such activity to constitute bad faith registration and use of the disputed domain name.”

“Respondent makes much of the doctrine of laches as a bar to the Complaint.  ”

“The Panel agrees that certainly the delay from the time of disputed domain name registration to the filing of the Complaint, more than ten years, does not enhance Complainant’s contentions.  However, the major diminution in Complainant’s case caused by the delay centers on determining Respondent’s intentions at the time Respondent registered the disputed domain name, which topic is dealt with by the Panel above.  That conceded, even a case Respondent cites, C Brewer, supra, notes that “It has been long-established that the doctrine of laches has no bearing on domain name proceedings filed under the Policy.”

The Complainant in these proceedings is Selena USA Inc. Selena USA Inc. is a company incorporated in Indiana, USA, where the company operates. It was incorporated on September 10, 2007[1]. The disputed domain name was registered by the Respondent on November 4, 2001.

The honorable Neil Brown filed a dissenting opinion:

“As Selena USA, Inc is the Complainant, it is obliged under the terms of the UDRP to produce evidence to the effect that it has rights in a trademark or service mark.”

“The Complainant submitted evidence showing that it, Selena USA, Inc., owns a trademark registered with USPTO for TYTAN, applied for on September 12, 2007, a few days after the company was incorporated and registered on October 21, 2008, both dates being significant as they were well after the domain name had been registered.”

“The Policy requires only that a complainant show that it “has” trademark rights, not that it “had” them, which has often been said to be a low threshold. It is clear from the above evidence that the Complainant “has” a trademark, namely the US trademark, albeit one that was registered after the domain name was registered and by a company that itself came into existence some years after the domain name was registered, which of course must have consequences when other elements of the Policy come to be considered.”

“The United States trademark is the only trademark registered in the name of the Complainant. However, it relies on 3 other trademarks registered before the domain name and 3 others registered after the domain name. It submits that all of these trademarks are trademarks of Selena Group Inc. To that end the Complainant appended several trademark certificates to the Complaint.”

“The first problem with that evidence is that the certificates do not show that Selena Group, Inc was or is the owner of any trademarks at all. The various European trademarks relied on, although none of the certificates has been translated into English, appear to have been registered not in the name of Selena Group. Inc., but in the name of other European companies.”

“It is true that those companies carry the word Selena as part of their corporate name. But there is no evidence of whether they are related to Selena Group Inc in any way. There is also no evidence as to their relationship with the Complainant itself, whether the Complainant is a licensee of those companies or whether by some other means they have conferred any rights in the trademarks in question on the Complainant to enable the Complainant to say that it has rights in those marks.”

“The real problem with the evidence is that there is no explanation in the Complaint or the supplementary submission of the Complainant as to what association Selena Group Inc has with the Complainant and whether that association means the Complainant has rights in a trademark.”

“Nor is there any explanation of whether the European companies are subsidiaries or associated companies of the Complainant or each other.”

“Fortunately, the days are long since passed when such shortcomings would determine by themselves the outcome of legal proceedings and if there were evidence of such an association between the various companies and with the Complainant, a panel could properly  conclude that there was evidence that the Complainant itself had rights in the trademarks relied on.”

“It should be added that the Complainant does not claim that it has any common law or unregistered trademark rights.”

“Accordingly, the Complainant has rights in a mark, namely the United States mark, but it has not been shown that it has rights in any of the European marks.”

“The case should therefore proceed to the remaining two elements of the Policy but on the basis that the only trademark in which the Complainant has rights is the United States trademark.”

“The issue on this element comes down to whether the nature of the disputed domain name is such that it gives rise to a right or legitimate interest because it is the misspelling of an ordinary word.”

“The majority has correctly expressed the view that, to make out its case, there is an obligation on the Respondent to show that the word “tytan” in the domain name <tytan.com> is a “’dictionary word’ . . . (or) a generic or descriptive phrase . . .”. The majority has come to the conclusion that the word is none of those and that as a consequence the Respondent cannot show that it has the right or legitimate interest in the domain name that comes from using such a word in a domain name. The reason given for that conclusion is that it is not an “acceptable” spelling of the word “titan”.

“The view of this panelist is that to use “acceptable” spelling as a reason for deciding whether a word is “generic” or “descriptive”, or not, is unhelpful and will not enable problems of this sort to be resolved in the future. ”

“The test of acceptable spelling relied on by the majority immediately raises the question of how is it to be decided whether the spelling of a word in any given case is acceptable? ”

“In view of the fact that spelling is notorious for changing with the passage of time, it also raises the question: acceptable as at what time? ”

“Moreover, such a potentially variable test is a very insecure basis on which to expect parties to make future decisions on domain name matters, especially when there is a better test that would cause no such problems.  That test is simply to ask whether, despite the misspelling, the word sought to be invoked by the domain name is clear, or, to adopt the similar test in Dial-A-Mattress Operating Corp. v Ultimate Search, D2001-0764 (WIPO Sept. 26, 2001) (analyzing the exchange of “matress” for “mattress”) whether is it “likely and obvious . . .” that the word is a misspelling of another word.”

“Applying that test to the present case, some would say there is no need to state the obvious that the word “tytan” is a misspelling of the word “titan”, because it sounds the same, looks largely the same, is spelled virtually the same and is no better or worse than some of the other ways people apparently spell “titanic”and presumably “titan”. An objective bystander might well ask: if “tytan” is not a misspelling of “titan”, then what is it?”

“It must surely be clear that the spelling of the domain name invokes the common, dictionary, generic or descriptive word “titan.” That view is reinforced by the fact that, as the Respondent points out, a Google search (confirmed by this panelist’s Yahoo! search) shows that there are many third party uses of the word in its spelling as in the domain name.”

“The evidence is also to the effect that part of the Respondent’s business is to register domain names that are misspellings of generic words. What is equally clear is that such a spelling is not accidental, but deliberate and designed to invoke the notion of a titan as an object of strength and power as in the Titans being mythological figures or “giants of incredible strength and stamina” and to attract internet users who are looking for goods and services that come within that genre, no matter how it is spelled. It seems therefore that the Respondent has done little more than adopt the misspelling or altered spelling of a common, generic or descriptive word and as such should be free to use the word, provided it is done so properly and not in some underhand way to target or do damage to a trademark owner.”

The question then is whether the Respondent has used the domain name in a generic or descriptive sense. ”

“The Respondent claims that it has done so. ”

“The majority of the Panel say that it has not, because it is used for links to third party websites.”

“There are, however, many UDRP decisions, cited by the Respondent, to the effect that such a use of a domain name may be legitimate provided that the links carried are themselves generic .

:In the present case the Respondent   has used the website to which the domain name resolves to promote a very broad range of goods and services of a general nature and in common usage.”

“The Respondent has not used the website to promote the Complainant’s products or those in competition with them or to target the Complainant or its goods.”

“Accordingly, the Respondent has been using the domain name in a generic or general sense and not in any sense of trying to trade off the Complainant’s trademark or present itself as the Complainant. ”

“Accordingly, this is a case of a generalized word being used to promote a general range of goods and services to the complete exclusion of the Complainant and its own goods and services. As such it gives rise to a right or legitimate interest in the disputed domain name”

“The dissenting panelist also disagrees, with respect, on the finding of the majority on bad faith.

“The disputed domain name was registered on November 4, 2001 and clearly the intention of the Respondent must be assessed as at that time. ”

“At that time, the Complainant had not been incorporated and its United States trademark, the only trademark in the name of the Complainant, had not been registered or even applied for. ”

“As has also been noted above, the Complainant did not allege that it or any associated company had established common law trademark rights in the name.”

“It is therefore difficult to see how the Respondent could have been motivated by bad faith towards the Complainant or its trademark at the time of registration of the domain name when neither the company or its trademark existed. Even if the European trademarks and the dates when they were registered are taken into account, it is hard to conceive how or why the Respondent would have registered the domain name when, at that time, trademarks had been registered in Poland, the Czech Republic and Romania, but not in the United States or elsewhere where they may have come to the notice of the Respondent. ”

“In the face of the Respondent’s denials , its evidence that it had not heard of the Complainant, did not register the domain name because of the TYTAN trademark and that its business is built on the practice of registering generic words, including misspellings, the Respondent’s explanation of why it registered the domain name is at least plausible.”

“Moreover, it seems extremely unlikely that the Respondent registered the domain name because it knew of the Complainant or that the Complainant had achieved any sort of prominence in the United States by the time the domain name was registered on November 4, 2001. The Complainant’s evidence is that “TYTAN has been visible on a large scale in the U.S. since 2002 ”

“A finding of bad faith is a serious finding and there should at least be cogent evidence that the Respondent probably had such a motivation, which on the evidence in the present case seems unlikely. ”

“The dissenting panelist does not accept the argument of the majority that the fact that the domain name is now for sale shows that this was the Respondent’s primary intent at the time the domain name was registered. ”

“It certainly does not show that the Respondent intended to sell the domain name to the Complainant or a competitor. ”

“That is the requirement of paragraph 4(b)(i) of the Policy and there is no evidence that that element has been made out. ”

“Indeed, it is extremely unlikely that it was or could have been the intention of the Respondent when the domain name was registered. The fact that it is for sale is entirely consistent with registering a domain name, developing it into a commercially valuable asset and then selling it, a business practice that is legitimate and long recognised as such. ”

Accordingly, it cannot be said that the domain name was registered and used in bad faith.