QNX Software Systems Ltd. v. Future Media Architects, Inc; Thunayan K AL-Ghanim

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

QNX Software Systems Ltd. v. Future Media Architects, Inc. and Thunayan K AL-Ghanim

Case No. D2003-0921

1. The Parties

The Complainant is QNX Software Systems Ltd., Ottawa, Ontario, of Canada.

The Respondents are Future Media Architects, Inc., Road Town, Tortola, British Virgin Islands, United Kingdom of Great Britain and Northern Ireland, and Thunayan K AL-Ghanim, AL Souk AL Dakhili, Kuwait, represented by Stevan Lieberman, Greenberg & Lieberman, United States of America.

2. The Domain Name and Registrar

The disputed domain name <qnx.info> is registered with TLDs, Inc. dba SRSplus.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 19, 2003. On November 21, 2003, the Center transmitted by email to TLDs, Inc. dba SRSplus a request for registrar verification in connection with the domain name at issue. On December 3, 2003, TLDs, Inc. dba SRSplus transmitted by email to the Center its verification response confirming that the Respondent Thunayan K AL-Ghanim is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.

The hard copies of the Complaint, required by the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), paragraph 3(b) and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), paragraph 3(c) were not delivered to the Center until January 21, 2004. Meantime, in response to a notification by the Center dated January 8, 2004, that the Complaint was administratively deficient in that and in another respect, the Complainant filed an amended Complaint by email on January 9, 2004, and in hard copy on January 22, 2004. The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules and 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 January 23, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was February 12, 2004. A Response had been filed with the Center on December 23, 2003, and on January 9, 2004, the Respondent indicated it wished that to be taken as its final Response.

On January 23, 2004, the Complainant filed an unsolicited Reply. Upon learning of this, the Respondent objected. That day the Center sought from the Respondent final confirmation that its Response of December 23, 2003, should be considered as the final Response. The Respondent said that, so long as the Reply was not allowed, its early Response would stand but that, if the Reply were admitted, the Respondent wished to see it before submitting its final Response. The Center sent the Reply to the Respondent that day and informed the parties on January 26, 2004, that it will be in the sole discretion of the Panel whether to admit the unsolicited Reply. The Respondent did not file any further response prior to the due date of February 12, 2004, and made no request to file any further submission thereafter.

The Center appointed Jacques A. Léger, David E. Sorkin and Alan L. Limbury as panelists in this matter on February 11, 2004. 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.

The language of the proceeding was English.

Ruling on the unsolicited Reply

Rule 12 provides that the Panel may in its sole discretion request further

statements or documents from either of the parties. Thus, no party has the right

to insist upon the admissibility of additional evidence: SembCorp Industries

Limited v. Hu Huan Xin, WIPO Case No.

D2001-1092. It is appropriate to consider the circumstances of each case

before deciding whether to admit unsolicited additional submissions: Toyota

Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises

Ltd., WIPO Case No. D2000-0802. The

Panel considers that the Reply addresses and is confined to arguments by the

Respondent that the Complainant could not reasonably have anticipated when filing

its Complaint: see Goldline International, Inc. v. Gold Line, WIPO

Case No. D2000-1151. Accordingly the Panel admits the unsolicited Reply.

There is no right to file a Response to an unsolicited Reply admitted by the

Panel. It is a matter for the Panel to decide in its discretion in each case

whether fairness requires a Respondent to be afforded such an opportunity pursuant

to Rule 10(b). Having regard to the content of the Reply, the Panel would not

regard it as necessary in the interests of fairness to afford the Respondent

such an opportunity in this case. However, in the unusual circumstances of this

case the Respondent saw the Reply before the due date for the Response and thus

has already had an opportunity to file a final Response addressing the Reply.

Multiple Respondents

Complainant has named two separate parties as Respondents. Neither the Policy

nor the Rules provide for the naming of multiple Respondents. Rather, the Rules

require the Respondent in a proceeding under the Policy to be the registrant

of the disputed domain name: Rule 1 - "Respondent means the holder of a

domain-name registration against which a complaint is initiated." There

is no provision for naming as additional respondents any third parties, such

as administrative contacts or officers of the registrant. Accordingly other

Panels have dismissed from the proceedings a party considered to have been named

improperly as a Respondent. See, for example, Top Driver, Inc. v. Benefits

Benefits, WIPO Case No. D2002-0972

and Regal Removals v. Gary Bradshaw, WIPO Case

No. D2003-0832.

There is in this case, however, real doubt as to which of the Respondents is

the registrant of the disputed domain name. As described in more detail below,

the disputed domain name was registered on October 7, 2001, in the name of Mr.

Thunayan K AL-Ghanim. He claims to have transferred it to Future Media Architects,

Inc. in 2002, and there is some evidence to support this. Yet the Registrar

certified to the Center in December 2003, that Mr. Thunayan K AL-Ghanim is the

registrant. Under these circumstances, if the Panel were minded to dismiss one

of Respondents from the proceeding, it is unable to determine which one it should

be.

Mr. AL-Ghanim is the CEO of Future Media Architects, Inc. The Response has

been presented on the basis that that company is the sole Respondent, yet it

comprehensively addresses the position of Mr. AL-Ghanim and does not seek to

distinguish between them nor to argue that the conduct of Mr. AL-Ghanim is of

no relevance to the position of Future Media Architects, Inc. or vice versa.

The Panel considers it appropriate in the unusual circumstances of this case

to treat both Respondents as if they were one and the same.

4. Factual Background

Since 1982, Complainant has distributed and licensed computer software. Since

1985, it has become the registered proprietor in numerous jurisdictions of the

trademark QNX, both as a design and as a word mark, in connection with computer

operating system software and related goods and services. Before the disputed

domain name was registered all the marks had been registered and extensively

promoted and advertised, particularly through Complainant’s website at "www.qnx.com".

In addition to the domain name qnx.com, Complainant is also the registrant

of the domain names <qnx.org>, <qnx.biz>, <qnx.net>, <qnx.ca>,

<qnx.de>, <qnx.dk>, <qnx.fr>, <qnx.pl>, <qnx.co.jp>,

and <getqnx.com>.

The disputed domain name <qnx.info> was registered on October 7, 2001,

in the name of Respondent Mr. Thunayan K AL-Ghanim and shortly thereafter the

url "www.qnx.info" resolved to a page containing information about

liquid.tv. In November 2001, Complainant’s counsel protested at the registration

of the disputed domain name and asked Mr. AL-Ghanim immediately to ensure that

it resolve to a blank page and within a week to agree to transfer it to Complainant.

For a time the disputed domain name did resolve to a blank page but after January 2002,

it resolved to a website entitled mp3.tv, which invites visitors to search for

mp3 files through that site and states that it is committed to creating an online

community for individuals with varied musical interests. The website also carries

third party advertising and contains links to sponsors’ web sites. The disputed

domain name appears in the browser’s address bar.

The domain names <liquid.tv> and <mp3.tv> were registered in the

name Thunayan K AL-Ghanim on January 31, 2001,

and August 21, 2000 respectively.

Searches conducted by Complainant in September 2003, revealed the domain names

<qnx.info>, <liquid.tv> and <mp3.tv> as being registered in

the name FMA.com, a name of Respondent Future Media Architects, Inc. Mr. Thunayan

K AL-Ghanim is the CEO of Future Media Architects, Inc., which changed its name

in 2002, from Liquid TV.

As previously mentioned, in responding to the Center, the Registrar confirmed

on December 3, 2003, that the disputed domain name <qnx.info> is registered

in the name of Thunayan K AL-Ghanim.

Neither of the Respondents has a relationship with or is a licensee of Complainant.

5. Parties’ Contentions

A. Complainant

The disputed domain name is identical to Complainant’s QNX trademark.

Respondents have no rights or legitimate interest in the disputed domain name.

Neither is known as QNX, nor are they making a bona fide offering goods or services

in association with QNX. The registration is an attempt to trade off Complainant’s

reputation.

The disputed domain name has been registered and is being used in bad faith

by Respondents. It is being used solely to attract Internauts, for commercial

gain, by creating a likelihood of confusion with the QNX trademarks as to the

source, sponsorship, affiliation or endorsement of Respondents’ site.

A finding of bad faith may be made where Respondent "knew or should have

known" of Complainant’s mark before registering the domain name. Given

the extensive use of Complainant’s trademarks and given that Respondents are

involved in the computer field generally, it is reasonable to take the position

that Respondents had actual and/or constructive notice of Complainant’s rights.

Upon Complainant’s protest in November 2001, Mr. AL-Ghanim agreed not only

to resolve the disputed domain name to a blank page but to transfer it to Complainant.

B. Respondent

There is no basis for transferring the disputed domain name to Complainant,

which has no enforceable trademark rights in Kuwait or the British Virgin Islands.

The existence of a foreign trademark does not put a domain registrant on notice

where the registrant resides in a country other than where the trademark is

registered.

The disputed domain name was acquired by Mr. AL-Ghanim, during a period in

which he acquired 500 other .info domains, all of which were acquired to promote

his "mp3.tv" website. Since then many of them have been re-positioned

to promote his oxide.com website.

The disputed domain name was and is of value to Mr. AL-Ghanim because it incorporates

a simple 3-letter combination. He has been collecting three letter domains to

promote his companies’ websites. He was at the time of registration unaware

of Complainant or its alleged mark.

Mr. AL-Ghanim agreed in November 2001, to resolve the disputed domain name

to a blank page in order to obtain legal advice. He did not agree to transfer

it to Complainant. Some time in 2002, he transferred it to Future Media Architects,

Inc. and at the same time redirected it to that company’s primary project at

the time, the OXIDE Internet search site.

There is no requirement under the Policy that the meaning of a disputed domain

have any correlation to the substance of the web site it promotes. Respondent

has a legitimate interest in the disputed domain name because of its use as

a simple 3-letter combination for the purpose of promoting its Oxide Search

web site.

Complainant has failed to show any of the four circumstances identified by

the Policy as constituting bad faith. Respondent did not register the disputed

domain name with intent to sell it to Complainant, to prevent Complainant from

registering its trademark or to confuse consumers. Nor has Complainant proffered

any evidence to support bad faith registration or use. There is not even any

evidence that Respondent had knowledge of Complainant or its mark when it registered

the disputed domain and Respondent, in Mr. AL-Ghanim’s Declaration, denies having

any such knowledge.

The common 3-letter term QNX is subject to substantial third party use unaffiliated

with Complainant, as a Google search has shown. Thus the value of the domain

name derives not exclusively from the "fame of the trademark" (Ultrafem,

Inc. v. Warren R. Royal, NAF Case No. 97682) but from the fact that it is

a 3-letter combination. Accordingly, no inference can be drawn that Respondent

intended to attract consumers seeking Complainant, nor is it reasonable to conclude

that users typing in this common 3-letter term are looking for Complainant.

There is nothing on the "mp3.tv" or "oxide" web sites to

which users are directed that would create the impression that the site is affiliated

with Complainant, so users would not be confused when they arrived there.

C: Complainant’s Reply

Respondent’s Google search in fact shows virtually no third party use of the

disputed domain name unaffiliated with Complainant. Virtually all the references

are to Complainant or its software product. The value of the disputed domain

does derive exclusively from the fame of Complainant’s QNX trademark and trade

name. It is therefore reasonable to conclude that people seeking QNX will be

seeking the Complainant or its products.

Contrary to Respondent’s assertion that there is nothing on the mp3.tv or oxide

web sites to which users are directed that would create the impression that

the site is affiliated with Complainant, when users arrive at the "oxide.com"

website and search on the site for qnx or qnx.info, the only reference that

is returned is to an authorized distributor of Complainant, thereby suggesting

some connection between Respondent and Complainant.

Respondent has not used the disputed domain name to promote its "mp3.tv"

or "oxide.com" websites legitimately. There are no web pages revealed

by common search engines that contain reference to the disputed domain name

and to either "mp3.tv" or "oxide.com". The only way in which

Respondent has promoted those websites is through the redirection of people

seeking Complainant or its products.

6. Discussion and Findings

Paragraph 15(a) of the Rules requires the 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.

Under paragraph 4(a) of the Policy, the Complainant bears the burden of showing:

- that the domain name registered by the Respondent is identical or confusingly

similar to a trademark or service mark in which the Complainant has rights;

and

- that the Respondent has no rights or legitimate interests in respect of

the domain name; and

- that the domain name has been registered and is being used by the Respondent

in bad faith.

A. Identical or Confusingly Similar

Although some of Complainant’s trademark registrations are of the letters QNX

in stylized form, others are of the letters alone as a word mark. Complainant

has established that it has trademark rights in the word mark QNX. In accordance

with long established practice under the Policy, the gTLD .info is to be disregarded

when considering identity or confusing similarity. Clearly, the disputed domain

name <qnx.info> is identical to Complainant’s mark QNX.

Complainant has established this element of its case.

B. Rights or Legitimate Interests

Complainant has established that it has heavily promoted and advertised its

QNX mark, particularly on the Internet, by means of which its software is extensively

downloaded by Internauts. Although that mark is a combination of three letters,

it does not appear to any of the members of the Panel to be a combination that

has any inherent meaning. It is neither descriptive, suggestive nor generic.

The Panel accepts Complainant’s evidence in Reply (by way of sworn affidavit)

that it is not the subject of substantial third party use, unaffiliated with

Complainant. Accordingly, the Panel concludes that QNX is an arbitrary mark

that is indeed distinctive of Complainant’s software products.

Respondents are not associated with Complainant and were neither authorized

to use Complainant’s mark nor to register the disputed domain name.

These circumstances are sufficient to constitute a prima facie showing

by Complainant of absence of rights or legitimate interest in the disputed domain

name on the part of Respondents. The evidentiary burden therefore shifts to

Respondents to show by concrete evidence that they do have rights or legitimate

interests in that name: Do The Hustle, LLC v. Tropic Web, WIPO

Case No. D2000-0624 and the cases there cited.

Paragraph 4(c) of the Policy sets out, without limitation, circumstances which,

if proved, establish the registrant’s rights or legitimate interests to the

disputed domain name. The only such circumstance on which Respondents rely is

specified in sub-paragraph 4(c)(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."

Even perfunctory preparations have been held to suffice for this purpose: Shirmax

Retail Ltd. v. CES Marketing Group, Inc., eResolution Case No. AF-0104.

The Panel accepts that there is no requirement under the Policy that the meaning

of a disputed domain have any correlation to the substance of the web site it

promotes. However, where a mark is arbitrary, it would be unlikely that a respondent

could develop a legitimate interest in using a domain name confusingly similar

to Complainant’s mark: Goldline International, Inc. v. Gold Line, WIPO

Case No. D2000-1151. A fortiori where the domain name is identical

to an arbitrary mark.

Respondents argue that the use of the disputed domain name is legitimate because

that name is a simple 3-letter combination, to which Complainant does not have

exclusive rights around the world. This cannot be accepted in light of the Panel’s

finding that the domain name is identical to Complainant’s arbitrary and distinctive

mark, even though that mark is not registered in all countries of the world.

Respondent has offered no explanation as to how the particular combination

QNX could possibly promote either its "mp3.tv" or "oxide.com"

websites. There is nothing about that combination of letters which could lead

a person wishing to reach Respondents’ websites to associate the combination

with those sites. Since QNX is not a combination that has any inherent meaning,

Respondent’s assertion makes sense only in relation to people who have some

reason to type in QNX. Complainant has shown that such people would comprise

or at least include those who are seeking Complainant or its products. To that

extent the promotion of Respondents’ websites involves use of Complainant’s

goodwill without its consent.

Respondents contend further that their use of the disputed domain name to promote

the oxide.com web site demonstrates legitimacy. However, that use (and indeed

use in connection with the "mp3.tv" website) cannot establish legitimacy

under paragraph 4(c)(i) of the Policy because such use commenced after notice

of the dispute and after formal notice of Complainant’s rights in the QNX mark.

Mr. AL-Ghanim, who registered the disputed domain name in his own name on October

7, 2001, received notice of this dispute when he received the protest letter

from Complainant’s counsel in late November 2001.

At that time the only evidence of use or demonstrable preparations to use the

disputed domain name is that it resolved to a web page called liquid.tv. According

to Complainant, this purported to be a "video communication tool".

Mr. AL-Ghanim asserts the disputed domain name was acquired to promote his "mp3.tv"

website and says: "In 2001, the primary company name was Liquid TV the

primary focus of which was music. In 2002, the company name was changed to Future

Media Architects…"

The critical issue is therefore whether the use of the disputed domain name

to resolve to the liquid.tv page in preparation for use to promote the "mp3.tv"

website was ‘in connection with a bona fide offering of goods or services’.

It has been held that use which intentionally trades on the fame of another

cannot constitute a ‘bona fide’ offering of goods or services: Madonna Ciccone,

p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO

Case No. D2000-0847. Accordingly the Panel must determine whether Mr. AL-Ghanim

knew of Complainant’s mark before he registered the disputed domain name. By

majority, the Panel considers that he did, for the following reasons.

In his unsworn declaration Mr. AL-Ghanim says he acquired the disputed domain

name in the same period of time as when he bought 500 other .info domains and

that he had never heard of Complainant or its trademark when he acquired the

disputed domain name. Respondents have not provided any evidence of these assertions.

It is a surprising contention that Mr. AL-Ghanim registered a three-letter domain

name without apparently knowing of any association which that combination

of letters might have. Such an argument could not be accepted if those three

letters were IBM or MTV, for example.

Accordingly, Respondents have not shown by concrete evidence that the disputed

domain name was acquired pursuant to a strategy of registering numerous 3-letter

domain names. This failure casts doubt on the assertion that Mr. AL-Ghanim was

unaware of Complainant or its mark when he registered the disputed domain name.

In the absence of any evidence to support that unsworn assertion, and having

regard to the arbitrary and distinctive nature of the QNX mark, to its extensive

use via the Internet, available worldwide, including in Kuwait and the British

Virgin Islands, to Complainant’s registration of the .com, .net, .org and .biz

versions of the domain name and to the absence of any apparent connection between

the combination QNX and Respondents’ websites, the majority of the Panel concludes

that, on balance, it is more likely than not that Mr. AL-Ghanim was aware of

Complainant and its mark when he registered the disputed domain name and that

he intended, when registering the disputed domain name, to trade on the reputation

of Complainant’s mark. In consequence, the majority is of the view that neither

of the Respondents has a legitimate interest in the disputed domain name.

Complainant has established this element of its case.

The dissenting panelist, David Sorkin, joins in the Panel's conclusion on this

issue, but does so solely on the basis that Respondents' use of the disputed

domain name merely to redirect random web traffic to their site is insufficient

to create rights or legitimate interests in the name, regardless of the timing

of such use.

C. Registered and Used in Bad Faith

The four circumstances identified in paragraph 4(b) of the Policy as constituting

evidence of both bad faith registration and bad faith use are illustrative,

not exhaustive.

The Panel finds that Respondents’ use of the disputed domain name after formal

notice of Complainant’s rights, to attract Internauts to the "mp3.tv"

and "oxide.com" websites, was bad faith use because it was done, for

commercial gain, to attract people seeking Complainant or its products, by creating

a likelihood of confusion with the QNX trademarks as to the source, sponsorship,

affiliation or endorsement of Respondents’ sites. See paragraph 4(b)(iv) of

the Policy.

Although use of the kind described in paragraph 4(b)(iv) of the Policy is to

be taken as evidence of bad faith registration as well as evidence of bad faith

use, this evidence is not necessarily conclusive: Passion Group Inc. v. Usearch,

Inc., eResolution Case No. AF-0250, followed in Viz Communications, Inc.,

v. Redsun dba www.animerica.com and David Penava, WIPO

Case No. D2000-0905. In this case Mr. AL-Ghanim was formally notified of

Complainant’s trademark rights after he had registered the disputed domain name.

The subsequent bad faith use evident here does not therefore itself establish

bad faith registration in this case.

The majority has concluded that, on balance, the disputed domain name was registered

with knowledge of Complainant’s mark and finds that, consequently, the disputed

domain name was registered in bad faith. See SportSoft Golf, Inc. v. Hale

Irwin’s Golfers’ Passport, NAF Case No. FA94956, in which a finding of bad

faith was made where the respondent "knew or should have known" of

the registration and use of the trademark prior to registering the domain name.

Likewise Marriott International, Inc. v. John Marriot, NAF Case No. FA94737;

Canada Inc. v. Sandro Ursino, eResolution Case No. AF-0211 and Centeon

L.L.C./Aventis Behring L.L.C. v. Ebiotech.com, NAF Case No. FA95037.

The dissenting panelist, David Sorkin, is of the view that the disputed domain

name was acquired for reasons entirely unrelated to Complainant and its mark,

and therefore would find that Complainant has failed to prove bad faith registration.

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 <qnx.info>

be transferred to Complainant.

Alan L. Limbury

Presiding Panelist

Jacques A. Léger

Panelist

David E. Sorkin

Dissenting Panelist

Dated: February 26, 2004