The Complainant is Teradyne, Inc. of 321 Harrison Avenue, Boston, Massachusetts 02118-2238, U.S.A. The Respondent is 4Tel Technology, whose address is 180 Ruby Drive, Lakeport, California 94953, U.S.A.
2. The Domain Name(s) and Registrar(s)
The Domain Name is 4TEL.COM. The Registrar is Network Solutions, Inc. of 505 Huntmar Park Drive, Herndon, Virginia 20170-5139, U.S.A.
3. Procedural History
A Complaint pursuant to the Uniform Domain Name Dispute Resolution Policy (implemented by the Internet Corporation of Assigned Names and Numbers ("ICANN") on October 24, 1999) ("UDRP Policy") and under the rules for the UDRP implemented by ICANN on the same date ("UDRP Rules") was submitted to the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on January 27, 2000, in a hard copy transmitted by air courier. The Complaint and Exhibits were received by the Center on January 31, 2000. The Center acknowledged receipt of the Complaint by e-mail sent on February 3, 2000, and sent a request for registrar verification to Network Solutions that same date. Also on February 3rd, the Center received an e-mail from Complainant's authorized representative, attaching an electronic copy of the Complaint and cover sheet, and (in a separate communication) supplementing the Complaint. The case materials also include a printout of the WHOIS report for the 4TEL.COM domain name, which is undated.
When originally filed, the Complaint did not meet the requirements of the Rules since the Complainant did not:
1. Submit the Complaint accompanied by the Complaint Transmittal Cover Sheet electronically;
2. Confirm that a copy of the Complaint was forwarded to the concerned Domain Name Registrar; and
3. Elect a mutual jurisdiction, as required under UDRP Rule 3(b)(xiii).
Complainant complied with the Center's requirements by providing an electronic copy of the Complaint, accompanied by the Complaint Transmittal cover sheet; a copy of the Complaint submitted to the Domain Name Registrar in hard copy and electronic formats; and supplementation of the Complaint to elect mutual jurisdiction as the principal office of the Domain Name Registrar. Complainant also forwarded a copy of this entire submission to Respondent in hard copy and electronic formats, and to the Domain Name Registrar in hard copy and electronic formats.
On February 4, 2000, Network Solutions responded to the Center's request for registrar verification, by e-mail. On February 5, 2000, the named Respondent provided two e-mail messages to the Center, and copied the Center on a third e-mail message to the Complainant's authorized representatives.
As originally filed, the Complaint named Mr. Michael Boyd as the Respondent. Mr. Boyd is not the listed owner of the domain name at issue, but rather its administrative contact. Respondent did not make a formal Response to the Complaint. However, Mr. Boyd (the registrant's administrative contact)'s e-mails indicate that he did receive notification of the Complaint. The first e-mail, date-stamped Saturday, February 5, 2000, 12:06 a.m., includes the text of the Center's e-mail message of February 3, 2000, to Complainant's authorized representatives, informing of the receipt of the Complaint and noting certain insufficiencies. The e-mail returned to the Center is from a Michael Boyd, whose domain name address is [email protected], and refers to this proceeding number. The text of his message reads:
"They have no valid claim!!! please feel free to call!
Mike Boyd MCI Worldcom Technical Architect
2600 Napa Valley Corp Drive Napa, CA 94558
(707) 256-4695 (707) 426-7663 (pager)"
The Panel notes that while the name "Michael Boyd" is identical to that of the named Respondent, and of the administrative contact for the domain name 4TEL.COM, the e-mail address Mr. Boyd used to contact the Center, and his actual address and telephone number differ from the contact information received from NSI.
The Panel is satisfied, however, that the sender of this message is the same "Michael Boyd" who is Respondent's administrative contact, because Mr. Boyd's e-mail message to the Center contained the text of the Center's e-mail message to the Complainant's authorized representatives. That message was cc'd to Mr. Boyd at the contact information listed in the domain name registrar's records. It is extremely unlikely that a different "Mike Boyd" obtained the text of this message sent by the Center to the named Respondent, and forwarded it back to the Center with the text described above.
At 12:07 a.m. on February 5, 2000, Mr. Boyd sent a second reply version of the Center's e-mail to Complainant's authorized representatives of February 3rd, and cc'd the Center. This reply added the following text:
"I'm taking it to ICANN directly. You want a fight you got one! I know Chris Gibson and that takes the mediator out of it.
Mike Boyd MCI Worldcom Technical Architect 2600 Napa Valley Corp Drive Napa, CA 94558
(707) 256-4695 (707) 426-7663 (pager)"
Finally, at 12:13 a.m. that morning, Mr. Boyd sent a third reply to the Complainant's representatives, with a cc to the Center:
Re: Case No. D2000-0026: Teradyne, Inc. v. Michael Boyd
Mr. David Rouille
Mr. Edmund Walsh,
"You should read this: You are in Bad Faith it would damage any further actionable domains in the future.
(e) Panel decisions and dissenting opinions shall normally comply with the guidelines as to length set forth in the Provider's Supplemental Rules. Any dissenting opinion shall accompany the majority decision. If the Panel concludes that the dispute is not within the scope of Paragraph 4(a) of the Policy, it shall so state. If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding."
The text of these three e-mail messages make it abundantly clear that Michael Boyd, who is the named Respondent and the domain name holder's administrative contact, received actual notice of the Complaint that was filed in this proceeding, and chose not to respond to that Complaint. Under Rule 14(a), Respondent should be considered in default, permitting the Panel to "proceed to a decision on the Complaint."
However, for reasons explained in detail below, this was not done.
On February 6, 2000, the Center issued a Notification of Complaint and Commencement of Administrative Proceeding, by e-mail. In its Notification of Complaint, the Center verified that the Complaint satisfies the formal requirements of the Policy, Rules and Supplemental Rules. The Center also confirmed that payment in the required amount has been made by the Complainant. On February 7, 2000, this document was forwarded to Complainant's authorized representatives and to Respondent by priority air courier.
The Center forwarded its Request for Declaration of Impartiality and Independence to this Panel on February 28, 2000. The Panel completed and returned the Request for Declaration of Impartiality and Independence on that same day.
Also on February 28, 2000, the Center issued a Notification of Respondent Default forwarded by e-mail, facsimile and post. Neither Complainant nor Respondent having elected a three-member panel under the UDRP Rules, the Center appointed the undersigned Panel on February 29, 2000, one day after the Notification of Default.
On February 29, 2000, the Center transmitted the case file in this proceeding to the Panel for review and decision.
On March 3, 2000, Mr. Boyd e-mailed the Center, advising that the parties reached an out-of-court settlement, and inquiring whether there was any "need to go further."
The Center requested that the settlement be forwarded to the Center so that it could be communicated to this Panel. On March 14, 2000, this Panel advised the Center (and the Center advised the parties) that the Panel would postpone issuing a decision until Thursday, March 16, 2000, by which date a decision would be rendered if the Center did not receive either an executed settlement, or some compelling reason why the decision should be delayed. The parties requested a further extension of time of two weeks, or through March 27, 2000. This request was granted by the Panel in an e-mail of March 14, 2000.
The authorized representative for Complainant advised the Center on March 25, 2000 that the parties had failed to come to terms regarding resolution of this matter, and requested that these proceedings be recommenced.
On April 4, 2000, this Panel issued an Interim Order advising the parties that the Complaint did not meet the formal requirements of the UDRP Policy, since it did not name the Domain Name Registrant as the Respondent. Rather, it named Mr. Boyd, the administrative contact for the Registrant. The Panel requested that Complainant file an amended Complaint, naming the Domain Name Registrant as shown in the records of the Domain Name Registrar, as the Respondent in the proceeding.
On April 5, 2000, Complainant's authorized representative submitted an amended Complaint to the Center by e-mail, which the Center received in hard copy on April 10, 2000. These documents were submitted by the Center to the Domain Name Registrant (now also the Respondent) on April 10, 2000, by e-mail, facsimile and courier. The Center set the deadline for the Respondent to file a Response on April 29, 2000.
Respondent filed a Response on April 19, 2000. The Center forwarded a second Request for Declaration of Impartiality and Independence to this Panel on April 25, 2000, which was returned by facsimile the following day. This Panel was re-appointed, and the case file was submitted by the Center to this Panel, on April 26, 2000.
Supplemental Submissions
On April 28, 2000, Complainant submitted a supplement to its Complaint, responding to arguments made by Respondent in its Response. Although the Center advised Complainant's authorized representative that the UDRP Policy and Rules do not provide for such submissions, the Center forwarded the Complainant's supplemental filing to this Panel by e-mail on April 29, 2000.
Respondent likewise provided two replies to Complainant's supplemental filing, by e-mail on April 29, 2000. As with Complainant, the Center advised Respondent that while there was no provision for filing supplemental submissions under the UDRP Policy and Rules, the Center would forward the documents to the Panel for consideration in the Panel's sole discretion.
This Panel elects not to consider supplemental filings made by Complainant or Respondent. Both parties have had numerous opportunities to formulate their positions and provide the proper pleadings called for under the UDRP Policy and Rules. In the case of Complainant, it had the opportunity to amend its Complaint not once but twice, both of which were considered by this Panel. In the case of Respondent, it was abundantly clear that Respondent had received and considered Complainant's Complaint, but chose not to respond.
Respondent argues that it received notice that the Response was due only a day prior to the deadline. This Panel finds this statement inconsistent with Respondent's prior actions. Specifically, Respondent's administrative contact responded to transmissions from the Center, within two days of their receipt. Respondent's Response was actually filed ten days early. Respondent now complains that the address to which these transmissions were sent is no longer valid. This also ignores materials forwarded to Respondent from the Center and from Complainant's authorized representative by facsimile and courier. If Respondent indeed received none of these communications, it is a problem of Respondent's own making.
This Panel believes that the goals of permitting parties to resolve a dispute expeditiously and at a low cost, See Report of the WIPO Domain Name Process, ' 150(i), can only be promoted by declining to consider additional pleadings except in extraordinary circumstances. Otherwise, panelists will be hard pressed to meet the very stringent deadlines under which they operate in order to render their decisions, and delays and decisions will become more and more frequent. No extraordinary circumstances exist here. Complainants, potential complainants and respondents to these proceedings are admonished to provide the best evidence they possibly can in their Complaint or Response, and to expect that permission to file additional pleadings will be the rare exception, rather than the rule.
4. Factual Background
Complainant is the owner of a registration in Benelux (a combined trademark registration office covering Belgium, Netherlands and Luxemburg) for the trademark 4-TEL, in connection with computer-operated diagnosis equipment for testing and analyzing telephone lines containing electronic line testers, cathode ray tube terminals and a mini-computer. The registration was deposited on January 13, 1981, renewed on September 26, 1990, and is due to expire on January 13, 2001.
5. Parties' Contentions
A. Complainant
Complainant claims that the domain name 4TEL.COM is confusingly similar to Complainant's registered trademark 4-TEL. Complainant asserts that Respondent "should be considered as having no rights or legitimate interests in respect of the domain name that is the subject of this Complaint," and that the domain name was registered and used in bad faith. In support, Complainant asserts that "Respondent has contacted Complainant and attempted to sell to Complainant the domain name 4TEL.COM for the sum of $6,000 (six thousand) dollars. Respondent has claimed out-of-pocket expenses of $3,000 (three thousand dollars). Respondent has indicated he will sell the domain name to another company if Complainant refuses to purchase the domain name from Respondent."
B. Respondent
Respondent apparently ran a computer design business under the name 4Tel Technologies for almost three years. Respondent claims that it used the domain name 4TEL.COM in connection with this computer design business. Respondent provided the URL to its site, www.lanteq.com, which itself provided a link to other publications reporting on this business's products. Two such articles, attached to this decision as Annex A, may be found at www.techweb.com/wire/story/INV19971202S0009 and www.techweb.com/se/directlink.cgi?WIR1997111714. While neither these stories refer to use of the domain name 4TEL.COM, they do refer to products from "start-up 4tel." The articles both date from 1997.
Respondent claims it offered "to sell Teradyne the web-site after 4Tel Technologies went out of business due to financial problems." Respondent apparently made this offer after "Telenor the Norwegian Phone (sic) which does use 4tel in its business asked to buy [the domain name] for $6,000." Instead, Respondent "was a nice guy and offered it to an American company for the same as [Telenor] had offered." Complainant turned down the offer, and counter-offered $100. Respondent asserted he then sold the domain name to the Norwegian company over a year ago, six months before this action was filed.
Respondent provided the URL for Telenor, namely www.4tel.no, which connects to EDB 4Tel, a Norwegian company which promotes itself as "one of Europe's largest companies specializing exclusively in IT solutions for the telecom industry."
EDB 4Tel apparently was created as an IT department within Telenor, the Norwegian telephone company. This Panel notes that up through the date of this decision, there is no evidence that the 4TEL.COM domain name was transferred to EDB 4Tel or Telenor.
6. Discussion and Findings
A. Applicable Rules and Principles of Law
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1. That the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
2. The domain name holder has no rights or legitimate interests in respect to the domain name; and
3. The domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy enumerates the following, noninclusive circumstance as evidence of registration and use of a domain name in bad faith:
1. Circumstances indicating that the domain name was registered or acquired primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant, for valuable consideration in excess of documented out-of-pocket costs.
* * *
Complainant asserts no other basis for finding the domain name was registered and used in bad faith.
B. Application of the Policy to the Facts
This Panel is satisfied that Complainant has proved the first prong of paragraph 4(a) of the Policy. The domain name 4TEL.COM is legally identical to Complainant's registered trademark 4-TEL. The Complainant has provided uncontested evidence that it owns a Benelux trademark registration for the mark 4-TEL. The addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen. Internet users entering a domain name in their browser would know to add or remove a hyphen between the "4" and "TEL" portion of a mark, when searching for the connected site.
Complainant has also proved the second prong of the test, namely that the domain name holder has no rights or legitimate interests in respect to the domain name. Respondent itself admits that any business it operated in connection with the domain name has now expired, and that it relinquished any rights it may have had to Telenor over a year ago. These admissions are sufficient to find against the Respondent under the second prong of the test.
Respondent has presented evidence sufficient for this Panel to conclude that at the time it registered the domain name, it was used in connection with the bona fide offering of goods or services. This is proof of "rights and legitimate interests" under Paragraph 4(c)(i) of the Policy. However, Respondent admits that it has long since ceased to offer goods and services under the domain name, and is now merely offering the domain name to other interested parties with trademark rights.
The third prong of the test is more problematic, as it requires a finding that the domain name has both been registered and is being used in bad faith. As has been pointed by previous panels, this requires a finding both of registration and use in bad faith. Normally, the difficult issue revolves around use in bad faith. Here, the difficult issue revolves around registration in bad faith.
Respondent has failed to present any evidence to counter (and indeed confirms) the assertion that it attempted to sell the domain name at issue for $6,000, claiming out-of-pocket expenses of $3,000. Putting aside that these asserted out-of-pocket expenses have not been "documented" as suggested by subparagraph 4(b)(i) of the Policy, even Respondent's own admission reveals that Respondent attempted to sell the domain name registration to Complainant, for "valuable consideration in excess of documented out-of-pocket costs." Therefore, this Panel finds the domain name is being used in bad faith.
However, there is no evidence that Respondent registered or acquired the domain name primarily for the purpose of selling it. Rather than the classic cybersquatting model of a Registrant who registers the trademark of another, hoping to profit from the trademark owner's desire to reflect its trademark in a corresponding domain name, we have here a company which registered a domain name to reflect the name of its own business, which seeks to sell that domain name to others for profit now that its business has dissolved.
There is some support in the Report of the WIPO Internet Domain Name Process, for the proposition that a domain name originally registered in good faith can become an abusive registration by changing circumstances. Specifically, ' 197 of the Report reads as follows:
The WIPO Interim Report recommended that a time bar to the bringing of claims in respect of domain names (for example, a bar on claims where the domain name registration has been unchallenged for a designated period of years) should not be introduced. It was considered that such a measure would not take into account that the underlying use of a domain name may evolve over time (with the consequence that the use of a domain name may become infringing through, for example, the offering for sale of goods of a different sort to those previously offered on the website); that any related intellectual property rights held by the domain name holder may lapse; and that a time bar would in any event be undesirable in cases of bad faith. (Italics added.)
However, close examination reveals it was not the intent of ' 197 to extend the definition of "abusive registration" to include domain names originally registered in good faith. First of all, ' 197 itself contemplates not that the domain name will become an abusive registration, but rather that the domain name "may become infringing" (italics added). Second, the clarifying language in the following paragraph, ' 198, makes clear that the reference to "infringing" rather than "abusive" in ' 197 was intentional; and was not intended to create abusive registrations where none existed originally:
The comments received on this question by WIPO were addressed to an administrative procedure with comprehensive jurisdiction over all intellectual property disputes relating to domain name registrations. Since the scope of the procedure is now limited to cases of bad faith, abusive registrations, we consider that the interim recommendation should apply with more force. It is usual for time bars in legal proceedings not to be applicable to cases of bad faith.
Read in conjunction with ' 198, it becomes clear that ' 197's reference to "infringing", was intended to apply to the wider category of trademark infringement disputes, not to the narrow category of abusive registration. A conscious decision was made that UDRP proceedings be limited to abusive registrations. The question whether domain names registered in good faith become infringing is outside the scope of this inquiry. Further support for this interpretation is contained in the example of "bad faith" contained in ' 4(b)(i) of the Policy, which contemplates that the domain name must have been registered or acquired "primarily for the purpose of selling, renting or otherwise transferring" the domain name. In this case, it is clear that the domain name was not registered or acquired for this purpose. This Panel is not ready to extend the Policy to cover cases clearly intended to be outside its scope. That is a task for ICANN, or for the courts.
7. Decision
In light of the fact situation, the Panel decides that the domain name at issue was not the subject of abusive registration, and therefore the Policy can not be applied to transfer or cancel it. Nevertheless, Respondent itself admits it is not entitled to continued registration of the domain name. Therefore, this Panel directs the Center to transmit a copy of this decision to the asserted new "owner" of the registration, EDB 4Tel and/or Telenor, whose contact information may be found at the URL's www.4tel.no and www.telenor.com. While this Panel cannot act in what is apparently not a case of abusive registration, perhaps EDB 4Tel would benefit from awareness of the Respondent's activities, and of the status of this domain name.
