Echelon Corporation v. RN WebReg, a.k.a. Rarenames, LLC

WIPO

Arbitration and Mediation Center

ADMINISTRATIVE PANEL

DECISION

Echelon Corporation v. RN WebReg, a.k.a. Rarenames, LLC

Case No. D2003-0790

1. The Parties

The Complainant is Echelon Corporation, Los Angeles, California of United States

of America, represented by Blakely, Sokoloff, Taylor & Zafman, LLP, United

States of America.

The Respondent is RN WebReg, a.k.a. Rarenames, LLC, Washington, District of

Columbia, of United States of America, represented by ESQwire.com Law Firm,

United States of America.

2. The Domain Name and Registrar

The disputed domain name <digitalhome.com> is registered with Direct

Information Pvt Ltd. dba Directi.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center")

on October 7, 2003. On October 8, 2003, the Center transmitted by email to Direct

Information Pvt Ltd. dba Directi.com a request for registrar verification in

connection with the domain name at issue. On October 9, 2003, Direct Information

Pvt Ltd. dba Directi.com transmitted by email to the Center its verification

response confirming that the Respondent is listed as the registrant and providing

the contact details for the administrative, billing, and technical contact.

In response to a notification by the Center that the Complaint was administratively

deficient, the Complainant filed an amendment to the Complaint on October 14,

2003. The Center verified that the Complaint together with the amendment to

the 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 the Respondent of the Complaint, and the proceedings commenced October

14, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response

November 3, 2003. The Response was filed with the Center on November

3, 2003.

The Center appointed Frederick M. Abbott, Sally M. Abel and David E. Sorkin

as panelists in this matter on November 17, 2003. The Panel finds that it was

properly constituted. Each member of the Panel has submitted the Statement of

Acceptance and Declaration of Impartiality and Independence, as required by

the Center to ensure compliance with the Rules, paragraph 7.

By email of December 1, 2003, the Center notified the parties that based on

exceptional circumstances the due date for a decision by the Panel was extended

until December 8 and later December 15, 2003.

4. Factual Background

Complainant has registered the word trademark "DIGITAL HOME" on the

Principal Register of the U.S. Patent and Trademark Office (USPTO), registration

no. 2,184,412, dated August 25, 1998, in International Class (IC) 9, covering

"computer hardware and software in the nature of control devices for use

in residential building automation, and computer development programs, computer

hardware, communications, transceivers, routers, network management software,

and installation software for use in residential building automation",

claiming date of first use and first use in commerce of March 2, 1998.

Complainant has disclaimed exclusive rights to use "DIGITAL" apart

from the mark as shown. ( Complaint, para. 11 & Exhibit C)

Complainant has registered the "DIGITAL HOME" mark in a number of

countries outside the United States, namely Canada, China, Denmark, France,

Germany, Ireland, Korea, Norway, Spain, Switzerland and Taiwan. Complainant

has furnished evidence of such registrations. (Id., para. 11 & Exhibit

C)

Complainant has used the "DIGITAL HOME" mark in commerce in the United

States and elsewhere to identify its computer hardware and software products

(id., para. 11 & Exhibit D).

Complainant was the registrant of the disputed domain name, <digitalhome.com>.

Complainant indicates that through an inadvertent error arising from the termination

of an earlier domain name dispute it failed to renew registration of the name,

allowing its registration by Respondent. (Id., at para. 11)

According to the Registrar’s verification response, Respondent is the current

registrant of the dispute domain name. A Network Solutions WHOIS database search

printout furnished by Complainant indicates that the current record of registration

was created on August 16, 2003, in the name of Respondent (Complaint, Exhibit

A).

Respondent purchased the disputed domain name from the domain name auction

site Pool.com for US $3,701 in August 2003. Respondent has provided evidence

in the form of an invoice from Pool.com, dated August 19, 2003, in that amount.

Respondent has submitted an affidavit of Michelle Miller, Director of Business

Development for Respondent, dated November 3, 2003, stating in relevant part:

"We did not purchase the domain name digitalhome.com (the "Disputed

Domain") for the purpose of selling it to Complainant. We had no knowledge,

whatsoever, of Complainant when we registered the Disputed Domain."

Complainant transmitted a cease and desist and transfer demand to Respondent

via email, telefax and courier mail on September 3, 2003. In that demand, Complainant

offered to reimburse Respondent for its domain name registration fee. Negotiations

followed during which Respondent offered to sell the registration of the name

to Complainant for $20,000, with indications that a lower amount might be acceptable.

Complainant rejected Respondent’s offer. As of October 3, 2003, Respondent was

offering the disputed domain name for sale at the auction website "BuyDomains.com"

for the asking price of $20,000. (Complaint, para. 11 & Exhibit F; Response,

paras. II and III).

The Registration Agreement in effect between Respondent and Direct Information

Pvt Ltd. dba Directi.com subjects Respondent to dispute settlement under the

Policy. The Policy requires that domain name registrants submit to a mandatory

Administrative Proceeding conducted by an approved dispute resolution service

provider, of which the Center is one, regarding allegations of abusive domain

name registration and use (Policy, paragraph 4(a)).

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has rights in the trademark "DIGITAL HOME"

based on use in commerce in the United States, registration in other countries,

and as evidenced by registration at the USPTO and trademark offices outside

the United States (see Factual Background, supra).

Complainant alleges that the disputed domain name, <digitalhome.com>,

is identical or confusingly similar to its mark.

Complainant argues that Respondent has no rights or legitimate interests in

the disputed domain name because Respondent has not made demonstrable preparations

to use it in connection with a bona fide offering of goods or services. Complaint

alleges that Respondent’s registration and use of the disputed domain name for

purposes of resale does not establish rights or legitimate interests in the

name.

Complainant states that Respondent registered and used the disputed domain

name in bad faith because Respondent’s sole purpose in registering it was to

offer it for sale at a substantial price. Complainant also asserts that Respondent’s

offer of the domain name for sale on an auction website interferes with Complainant’s

business, and creates a likelihood of confusion as to Complainant’s sponsorship

or endorsement of the auction website.

Complainant asserts that Respondent has evidenced a pattern of registering

domain names incorporating the marks of third parties and offering them for

sale, as evidenced in Prisma Presse v. BuyDomains.com, WIPO

Case No. D2001-1073, decided October 22, 2001, wherein Respondent was

found to have abusively registered and used the domain name <geomagazine.com>

by offering it for sale.

Complainant requests the Panel to direct the Registrar to transfer the disputed

domain name to it.

B. Respondent

Respondent contends that Complainant does not have trademark rights in the

term "DIGITAL HOME" because such term is generic or, at best, descriptive.

Respondent argues that the term "DIGITAL HOME" is often used on the

Internet and elsewhere in a commonly descriptive sense. Respondent contends

that generic and descriptive marks are unenforceable under the Policy even if

they are registered.

Respondent argues that because "DIGITAL HOME" is a generic or commonly

descriptive term, "Respondent, ipso facto, has rights and a legitimate

interest" in the name. Respondent contends that because Complainant does

not have exclusive rights in the term "DIGITAL HOME", mere ownership

of the registration establishes rights and legitimate interests in Respondent.

Respondent contends that the sale of a generic or commonly descriptive term

constitutes a bona fide offering of goods and services that establishes Respondent’s

legitimate interest in the disputed domain name.

Respondent argues that it did not register the disputed domain name for the

purpose of selling it to Complainant. Respondent states that for a finding of

bad faith to be made, there must be direct evidence that the name was solely

acquired for the purpose of profiting from Complainant’s trademark rights, either

because (a) the domain name was acquired specifically for sale to Complainant

or (b) the value of the name offered for sale derives exclusively from the fame

of the trademark. Respondent contends that because the disputed domain name

is generic or commonly descriptive, and it did not intend to sell the mark to

Complainant, it did not act in bad faith.

Respondent denies that it intended to interfere with Complainant’s business

or that it registered and used the disputed domain name to create Internet user

confusion.

Respondent indicates that in the earlier proceeding referenced by Complainant

as evidence of a pattern of conduct, Respondent did not file a response and

the decision was made on the basis of unrebutted allegations.

Respondent argues that Complainant’s previous ownership of the disputed domain

name is not a factor for consideration under the Policy.

Respondent requests the Panel to reject Complainant’s contentions and its request

for transfer of the disputed domain name.

6. Discussion and Findings

The Policy is addressed to resolving disputes concerning allegations of abusive

domain name registration and use. The Panel will confine itself to making determinations

necessary to resolve this Administrative Proceeding.

It is essential to dispute resolution proceedings that fundamental due process

requirements be met. Such requirements include that a respondent have notice

of proceedings that may substantially affect its rights. The Policy and the

Rules establish procedures intended to ensure that respondents are given adequate

notice of proceedings commenced against them, and a reasonable opportunity to

respond (see, e.g., Rules, paragraph 2(a)).

In this case, the Respondent has filed a timely Response. The Panel is satisfied

that the Respondent had adequate notice of the proceedings.

Paragraph 4(a) of the Policy sets forth three elements that must be established

by a complainant to merit a finding that a respondent has engaged in abusive

domain name registration and use, and to obtain relief. These elements are that:

(i) respondent’s domain name is identical or confusingly similar to a trademark

or service mark in which the complainant has rights; and

(ii) respondent has no rights or legitimate interests in respect of the domain

name; and

(iii) respondent’s domain name has been registered and is being used in bad

faith.

Each of the aforesaid three elements must be proved by a complainant to warrant

relief.

A. Identical or Confusingly Similar

Complainant has submitted evidence of use of the term "DIGITAL HOME"

in commerce in the United States and registration of the term "DIGITAL

HOME" as a trademark on the Principal Register of the USPTO and on a number

of trademark registers outside the United States. In the United States, registration

on the Principal Register establishes a presumption that the mark is valid and

of the registrant’s exclusive right to use the mark in commerce. In countries

of the European Union which have implemented the First Trade Mark Directive,

including Denmark, France, Germany, Ireland and Spain where Complainant has

also registered the "DIGITAL HOME" mark, registration of a mark confers

rights on the holder.

Respondent has challenged the validity of Complainant’s rights in the "DIGITAL

HOME" mark on grounds that the term is commonly descriptive or generic,

and has supported its claim by submission of a Google search for the exact phrase

"digital home" which yielded 168,000 search results. A number of those

results indicate uses of the term in relation to residential automation. The

term also appears to be commonly used in the phrase "digital home recording".

The majority of the Panel does not consider the term "DIGITAL HOME"

to be generic in the trademark law sense of referring to a genus or class of

thing. Although a person might refer to a "well-wired" residence as

their "DIGITAL HOME", such usage would not appear sufficiently common

to establish the term as generic in that sense, nor has Respondent suggested

another sense in which the term might be understood to commonly refer to a genus

of thing (as in "bed" or "flower").

The Panel accepts that the term "DIGITAL HOME" may be used in a descriptive

sense, but that does not end its inquiry from a trademark law standpoint. A

person might describe their residence as a "DIGITAL HOME", or might

use the term in connection with other terms as in "DIGITAL HOME recording".

However, Complainant has not registered the term "DIGITAL HOME" in

connection with all possible uses of the term, or to cover all fields of commerce.

Complainant has obtained registration in the United States (and other countries)

for a line of computer hardware and software products as to which it has submitted

evidence to the USPTO of distinctiveness in its line of commerce. Respondent

has offered little evidence that the term "DIGITAL HOME" is used by

third persons in connection with the sale of computer hardware and software

products that are competitive with those of Complainant. The Panel does not

consider this evidence sufficient to rebut the presumption of Complainant’s

rights in the "DIGITAL HOME" mark based on U.S. federal registration.

Moreover, even if the Panel considered that the mark was commonly descriptive

and unenforceable in the United States, it would not be in a position to make

such a determination with respect to Complainant’s rights established by registration

in other national jurisdictions. Respondent has offered no challenge to the

rights asserted by Complainant based on its registrations outside the United

States. Absent any rebuttal, the Panel considers valid the trademarks established

by registration in European Union countries.

The Panel determines that Complainant has trademark rights in the term "DIGITAL

HOME".

Since the disputed domain name adopts the term effectively without modification,

the Panel determines that the disputed domain name is identical to a trademark

in which Complainant has rights. Complainant has established the first element

for a finding of abusive domain name registration and use.

B. Rights or Legitimate Interests

The second element of a claim of abusive domain name registration is that the

respondent has no rights or legitimate interests in respect of the domain name

(Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which

a respondent may demonstrate rights or legitimate interests:

"Any of the following circumstances, in particular but without limitation,

if found by the Panel to be proved based on its evaluation of all evidence presented,

shall demonstrate your rights or legitimate interests to the domain name for

purposes of paragraph 4(a)(ii):

(i) 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; or

(ii) 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; or

(iii) 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 at issue." (Policy, paragraph 4(c)).

Respondent contends that it has rights or legitimate interests in the disputed

domain name on two grounds. The first is that because the term "DIGITAL

HOME" is generic or commonly descriptive, mere registration of the disputed

domain name establishes rights or legitimate interests.

Regarding this contention, the majority of the Panel notes its earlier determination

that the term "DIGITAL HOME" is not generic, and is not commonly descriptive

in the sense that Complainant has established the term as distinctive in its

line of commerce.

This does not mean that a person might not establish rights or legitimate interests

in the disputed domain name based on use of the term "DIGITAL HOME"

in a fair descriptive sense. Paragraph 4(c)(iii) of the Policy contemplates

just such eventuality, and numerous panel determinations under the Policy have

allowed fair use in such contexts. However, the fact that a person might

establish fair use of a term does not mean that registration of the term standing

alone establishes such fair use. The Policy expressly contemplates that a person

may establish fair use by using the term, and Respondent has offered no evidence

of such "making use" (or preparations for making use), save as discussed

following. The majority of the Panel does not consider that the mere registration

of a term identical to a trademark that might be subject to fair use

establishes rights or legitimate interests in the disputed domain name.

Respondent’s second argument is that offering for sale a domain name incorporating

a generic or commonly descriptive term constitutes a bona fide offering of goods

or services establishing rights or legitimate interests. In the first place,

Respondent’s argument ignores the initial clause of paragraph 4(c)(i), which

indicates that such bona fide offer should occur prior to notice of a dispute.

Respondent has not demonstrated that it offered the disputed domain name for

sale prior to Complainant’s apparently prompt notification of its objection

to Respondent’s registration of it. But leaving aside this technical point,

the Panel majority again notes that Respondent has offered for sale a domain

name that is identical to a trademark in which Complainant has rights. This

undercuts Respondent’s theory. The offering for sale of a domain name incorporating

Complainant’s trademark is not a bona fide offering of goods or services.

The purchase and sale of generic or commonly descriptive terms does not contravene

the Policy. Such purchases and sales are undertaken frequently and represent

a substantial business on the Internet. Where, as here, the alleged generic

or commonly descriptive term is a trademark registered in numerous countries

and the domain name derives its value substantially from the trademark, the

purchase and sale does not enjoy the legitimacy argued by Respondent.

The Panel finds that Complainant has established that Respondent has no rights

or legitimate interests in the disputed domain name, and has therefore established

the second element necessary for a finding of abusive domain name registration

and use.

C. Registered and Used in Bad Faith

The Policy indicates that certain circumstances may, "in particular but

without limitation", be evidence of bad faith (Policy, paragraph 4(b)).

Among these are (1) circumstances indicating that the domain name has been registered

or acquired by a respondent "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 [respondent’s] documented out-of-pocket

costs directly related to the domain name" (Id., paragraph 4(b)(i));

(2) that a respondent has 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 [the respondent has] engaged in a pattern of such

conduct" (id., paragraph 4(b)(ii)), and (3) that a respondent "by

using the domain name, … [has] intentionally attempted to attract, for commercial

gain, Internet users to [its] 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 [respondent’s] web site or location of a product

or service on [its] web site or location" (id., paragraph 4(b)(iv)).

Respondent concedes that it registered the disputed domain name for the purpose

of reselling it. It paid $3701 to purchase the domain name from an auction website.

Respondent does not dispute Complainant’s assertion that when contacted in

respect to transfer of the name it offered to sell it to Complainant for $20,000.

It has posted the domain name for sale on the BuyDomains.com auction website

at an offering price of $20,000.

Respondent contends that its registration with the intent to offer the domain

name for sale, and subsequent offering for sale, does not constitute bad faith

within the meaning of paragraph 4(b)(i) of the Policy because it neither intended

to sell the domain name to Complainant or its competitor, nor did it seek to

take advantage of the value of a well known mark. In Respondent’s view, it is

the fortunate beneficiary of the coming available for purchase of a generic

or commonly descriptive term of which it is seeking to take legitimate profitable

advantage. To support its theory, Respondent largely relies on the decision

in Ultrafem Inc. v. Warren R. Royal, NAF No. FAO106000097682, decided

August 2, 2001.

There are numerous decisions under the Policy holding that offering for sale

a domain name incorporating a trademark on a public auction website may constitute

evidence of bad faith registration and use, including one such decision in a

proceeding which involved an affiliated entity of Respondent as respondent,

Prisma Presse v. BuyDomains.com, WIPO

Case No. D2001-1073, decided October 22, 2001. In Prisma Presse,

the trademark "GEO" and "GEO MAGAZINE D’exception" was registered

in France, used on magazines in France and other countries outside the United

States, and was largely unknown in the United States. Respondent was and is

based in the United States. An affiliated entity of Respondent was determined

to have engaged in abusive domain name registration and use based, inter

alia, on its offering it for sale on a public auction website.

An important factor distinguishes the decisions in Ultrafem Inc. v. Warren

R. Royal and Prisma Presse v. BuyDomains.com. In the former, the

respondent was found to have a legitimate interest in the disputed domain name

based on preparation to use it in connection with a bona fide offering of goods

or services. A downturn in the Internet economy prevented its business plans

from reaching fruition. In that context, the fact of offering the domain name

incorporating a generic term used as a trademark (<instead.com>) for sale

on an auction site was determined not to constitute bad faith. In Prisma

Presse, by way of contrast, there was no response and no determination that

the respondent had rights or legitimate interests in the disputed domain name

(<geomagazine.com>). Respondent seeks to discount Prima Presse

by referring to its failure to file a response, adding "The panel specifically

stated that respondent ‘might have rebutted’ the findings with respect to legitimate

interest. It is respectfully submitted that the evidence here substantially

rebuts Complainant’s evidence" (Response).

In the present proceeding, the only evidence of rights or legitimate interests

submitted by Respondent is its contention that the disputed domain name is generic

or commonly descriptive, and that buying and selling generic or commonly descriptive

domain names is a legitimate business.

The Panel majority reiterates that buying and selling domain names incorporating

generic and commonly descriptive terms is a legitimate enterprise that does

not contravene the Policy. The problem in the instant proceeding is that the

disputed domain name is identical to a trademark registered in twelve countries.

There is a substantial value in the domain name based on Complainant’s establishment

and use of the "DIGITAL HOME" trademark.

Respondent seeks to rebut the inference of value based on the trademark by

assertion that it "had no knowledge, whatsoever, of Complainant when we

registered the Disputed Domain". Respondent offered a substantial sum of

money ($3701) for the disputed domain name at the auction website ("www.Pool.com").

Pool.com monitors expiring and deleted domain name registrations. It attempts,

at the point of expiration or deletion, to register names in which users of

its site have indicated an interest. It conducts an auction of the name when

multiple users of its service have indicated interest in the same domain name.

When the registration for the disputed domain name in this proceeding expired,

Respondent was presented by Pool.com with the option to bid on it, and Respondent

elected to make a substantial monetary offer.

Respondent is based in Washington, D.C., USA. The mark is listed on the Principal

Register of the USPTO. A readily searchable database of registrations on the

Principal Register is freely accessible on the Internet. Respondent is a sophisticated

trader in Internet domain names. The Panel majority infers that Respondent would

have acted with ordinary care to determine what third party interests there

might be such as may affect the resale value of the disputed domain name. The

Panel majority is not prepared to accept as a defense to bad faith registration

in the circumstances of this case that Respondent had no knowledge of Complainant’s

mark. The Panel majority considers that in these circumstances it is appropriate

to draw an inference that Respondent had knowledge of Complainant’s mark.

Respondent has sought a substantial sum of money for a domain name that is

identical to a trademark in which Complainant has demonstrated rights. There

are potential alternative purchasers to Complainant that might be able to demonstrate

rights or legitimate interests in the disputed domain name by making use of

it in a manner acceptable under paragraph 4(c) of the Policy. Yet the fact remains

that Respondent is not itself seeking to or making legitimate use of disputed

domain name. Respondent concedes that its business model does not contemplate

making use of domain names other than to buy and sell them. In this case, it

has bought and is seeking to sell a domain name identical to trademark in which

Complainant has demonstrated rights.

The Panel considers that in these circumstances, the registration and offering

for sale of the disputed domain name on a public auction website for a price

substantially in excess of its out-of-pocket expenses in connection with the

name constitutes bad faith registration and use of the domain name within the

meaning of paragraph 4(a)(iii) and 4(b) of the Policy.

Complainant has established the third element necessary for a finding of abusive

domain name registration and use. The Panel will therefore direct the Registrar

to transfer the disputed domain name to Complainant.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy

and 15 of the Rules, the Panel orders that the domain name, <digitalhome.com>,

be transferred to the Complainant

Frederick M. Abbott

Presiding Panelist

David E. Sorkin

Panelist

Dated: December 15, 2003

DISSENT:

I dissent. Complainant has established only one of the three factors

of the applicable test.

A. Identical or Confusingly Similar

I join in the conclusion that Complainant has satisfied the first factor of

the test, that the domain name is identical or confusingly similar to Complainant's

trademark, but I cannot join in that part of my esteemed colleagues reasoning

that "digital home" necessarily is not a generic term. In the first 10

of approximately 168,000 hits, the Google search results provided by Respondent

contain references to "the digital home industry", the "Digital Home Working

Group", and "Digital Home Magazine", with no obvious references to Complainant's

DIGITAL HOME products. A court might well find "digital home" to be generic

when used in connection with home networking and automation technology.

However, whether or not a court might ultimately hold that the term "digital

home" is a generic one, is beyond the scope of our inquiry in this matter.

Complainant has established that it has trademark registrations sufficient to

invoke the Policy, and that the domain name is identical to that registered

mark. Complainant need do no more as to the first factor of the test.

B. Rights or Legitimate Interests

I agree with my colleagues that "the purchase and sale of generic or commonly

descriptive terms does not contravene the Policy." For this reason, I

cannot agree that Complainant has carried its burden of proving that Respondent

has no rights or legitimate interests in the domain.

Complainant alleges that registration and use of a domain for the purpose of

resale does not establish rights or legitimate interests in a domain.

My colleagues essentially disagree with Complainant, as noted above, but then

conclude that the mere existence of Complainant's trademark prevents Respondent's

efforts to sell the domain, in the ordinary course of Respondent's domain sales

business, from being "a bona fide offering of goods or services" for purposes

of the Policy. This circular reasoning essentially undermines this element

of the test.

If all a complainant need show to eliminate the "bona fide offering of goods

and services" defense is that Complainant has trademark rights in a word or

phrase identical to the domain, then there is little or no need for the second

element of the test. Instead, this portion of the test could be modified

to ask only if the respondent is actively making a "fair use" of the domain

or it is the respondent's nickname. While such amendment may occur at

some future date, that is not the test today.

In fact, as quoted by the majority, above, the Policy specifically provides

that the examples as to how a respondent might prove its rights or legitimate

interests in the domain are simply that: examples. The Policy states:

"Any of the following circumstances, in particular but without limitation, if

found by the Panel to be proved based on its evaluation of all the evidence

presented, shall demonstrate your rights or legitimate interests ..." (Policy,

paragraph 4(c); emphasis added).

Respondent attests that it had no knowledge of Complainant or of Complainant's

DIGITAL HOME trademark when it acquired the domain name at auction. Respondent

submits Google web search results identifying "about 168,000" results for "digital

home"; my own repetition of that exercise revealed "about 410,000" results using

the Google search engine. I did not identify any references to Complainant or

to its use of DIGITAL HOME in my brief perusal of the first few pages of those

results. Many of the results that do appear in the search underscore the

fact that the phrase "digital home" signifies to many the networking of computers

and other electronics in the home ("the digital home experience", "building

the digital home", "driving the digital home"). If the mark in question

was HOME ELECTRONICS and the challenged domain <homeelectronics.com>,

would the majority still find Respondent has no rights or legitimate interests

in the domain?

In my view, the Respondent's explanation of its selection of the domain satisfies

paragraph 4(c) of the Policy.

C. Registered and Used in Bad Faith

For the reasons set forth above, I cannot concur in my colleagues' conclusion

that Complainant has established bad faith registration and use. Respondent

claims to have had no prior knowledge of Complainant or its trademark; "digital

home" is widely used as a descriptor in the home electronics networking and

home automation industries.

The majority points to Respondent's sophistication in the domain name industry

as proof of bad faith. With all due respect, Respondent's sophistication

may, in fact, cut the other way. A sophisticated player in the domain

name industry should know that a business model based on cyberpiracy is unlikely

to be a successful one, and is unlikely to pay a premium for a domain likely

to be immediately and successfully challenged in a UDRP proceeding such as this.

A sophisticated player in the technology world would know that "digital home"

is widely used throughout the home electronics and automation industries, and

a web search, such as the one Respondent conducted for this proceeding, would

bear that out.

In finding bad faith my colleagues essentially have imported into the Policy

the constructive notice provision of U.S. trademark law, at least as to domain

holders who register domains for the purpose of resale. While imposing

the constructive notice burden on the adopter of a trademark is appropriate,

extending it to apply to adopters of domain names, such as in the matter before

us, far exceeds the scope of the Policy. I cannot agree that where a respondent

obtains the domain for purposes of resale, the only relevant inquiry under the

Policy is whether the complainant has established trademark rights. This

is the result of the majority's decision, from which I respectfully dissent.

Sally M. Abel

Dissenting Panelist

Dated: December 15, 2003

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