videoiq.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

VideoIQ, Inc. v. Gotham Industries, Inc., Domain Manager

Case No. D2007-0937

1. The Parties

The Complainant is VideoIQ, Inc. of Bedford, Massachusetts of United States of America, represented by The Law Offices of Andrew S. Breines, P.C., United States of America.

The Respondent is Gotham Industries, Inc., Domain Manager of New York, New York, United States of America, represented by Adam M. Brown, United States of America.

2. The Domain Name and Registrar

The disputed domain name <videoiq.com> is registered with GKG.NET, INC (formerly GK Group LLC).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2007. On June 27, 2007, the Center transmitted by email to GKG.NET, INC a request for registrar verification in connection with the domain name at issue. On June 27, 2007, GKG.NET, INC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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 on July 4, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 24, 2007. The Response was filed with the Center on July 23, 2007.

The Center appointed Dennis A. Foster as the sole panelist in this matter on August 3, 2007. The Panel finds that it was properly constituted. 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 Complainant filed a Supplemental Filing with the Center by e-mail on August 9, 2007, including two Affidavits, the contents of which do not affect the Panel’s decision in this case.

4. Factual Background

The Complainant is a United States of America company that offers video surveillance products and services under the trademark VIDEOIQ. That mark was registered with the Unite States Patent and Trademark Office (the “USPTO”) on July 19, 2005 (Registration No. 2972709) and on the material before the Panel appears to have been put into use no earlier than June 2002.

The Respondent is listed as the registrant of the disputed domain name and the record of registration was created on September 6, 2001. Currently, the website located at the disputed domain name is hosted by a third party, which offers no products or services.

5. Parties’ Contentions

A. Complainant

- The Complainant is a United States of America company that sells video surveillance products and services, including its award-winning VideoIQ-4HD product. Up to the time of this filing, VideoIQ products have been sold to more than 300 customers worldwide, generating approximately USD 3 million in sales.

- Since June 2002, The Complainant, or its predecessor in interest, has used the trademark, VIDEOIQ, in marketing its products and services. Application to the USPTO for registration of that mark was first made by that predecessor on June 21, 2002. The registration was obtained on July 19, 2005, and it was assigned to the Complainant on May 2, 2007.

- The Complainant has expended considerable time and money in promoting its products and services under its trademark, causing goodwill to become associated with the mark throughout the world.

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

- The Respondent is not affiliated with the Complainant and has never received a license to use its trademark. Moreover, the Respondent does not own any USPTO trademark(s) incorporating the term “videoiq”.

- The Respondent does not use the disputed domain name for commerce and holds it merely for sale to the highest bidder. The website found at the name clearly states, “This domain may be for sale by its owner.”

- As of March 12, 2007, the Complainant has attempted to contact the Respondent, but has only received a reply from its broker asserting that the Respondent had previously rejected a bid of USD 127,000 for the disputed domain name. The Complainant has not received any communication directly from the Respondent.

- The Respondent has made neither legitimate commercial nor non-commercial or fair use of the domain name in question. Furthermore, there is no evidence that the Respondent has ever been known by that name.

- The Respondent registered and is using the disputed domain name in bad faith as evidenced by its desire to sell the name to the trademark owner for a sum greatly in excess of the Respondent’s out-of-pocket registration costs.

B. Respondent

- The Respondent registered the domain name <videoiq.com> on September 6, 2001 and immediately put it to use as the location of a video streaming website. The Complainant’s trademark, transferred to it nearly seven years later, was not registered then.

- The Respondent could not be infringing on a trademark which did not exist prior to its registration of the disputed domain name.

- The Respondent’s business is to offer web hosting, website design, website development and video streaming solutions on a worldwide basis.

- The Respondent’s registration of the domain name in question was in good faith as the Respondent could not have known of a corresponding trademark that did not then exist.

- The consensus view of prior UDRP panels is that a contention of bad faith cannot be sustained if the disputed domain name was registered before trademark rights were established.

- The reason why the disputed domain name is currently hosted by a third party is that the Respondent is presently designing a website offering video streaming services for use at the name.

- The disputed domain name was never offered for sale to anyone, including the Complainant.

- The Complainant is guilty of reverse domain name hijacking. It filed the Complaint in bad faith since the registration of its trademark postdates the registration of the disputed domain name. Also, the Complainant changed its name several times until it finally settled on a corporate name similar to the disputed domain name. Finally, the Complainant’s representatives made several disguised phone calls attempting to buy the disputed domain name, even after the Respondent’s representatives made it clear that the name was not for sale.

6. Discussion and Findings

Pursuant to Paragraph 4(a) of the Policy, the Complainant must prove the following to prevail in this administrative proceeding and obtain possession of the disputed domain name <videoiq.com>:

- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- The Respondent has no rights or legitimate interests in respect of the disputed domain name;

- The disputed domain name was registered and is being used by the Respondent in bad faith.

A. Identical or Confusingly Similar

The Panel has been supplied by the Complainant with sufficient evidence (Annex C) that it has acquired a valid USPTO trademark for the mark VIDEOIQ. As a result, the Panel finds that the Complainant has established the necessary rights in that mark for the purposes of asserting its claim under the Policy, paragraph 4(a)(i).

The Panel also finds that the disputed domain name, <videoiq.com>, is identical to the Complainant’s trademark, VIDEOIQ.

Ergo, the Panel concludes that the Complainant has met its burden under paragraph 4(a)(i) to show that the disputed domain name is identical to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) places upon the Complainant the burden of demonstrating that the Respondent has no rights or legitimate interests in the disputed domain name. Because this is a negative proposition and respondents are typically in sole possession of most of the relevant evidence, prior UDRP panels have required that complainants come forward only with a prima facie case on these grounds before the burden of rebuttal shifts to respondents. See, for example, Telex Communications, Inc. v. Jinzheng Net, NAF Case No. FA833071 (December 27, 2006); and AOL LLC v. Gerberg, NAF Case No. FA780200 (September 25, 2006) (where the Panel opined, “Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interests in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”) Here, the Complainant’s possession of a trademark which is identical to the domain name in question and the Complainant’s unequivocal assertion that it is not affiliated with and has never granted a license to the Respondent is sufficient to sustain its burden in putting forth a prima facie case.

The Respondent has done little to rebut the prima facie case against its rights or legitimate interests in the disputed domain name. The Policy, paragraph 4(c), suggests three ways in which the Respondent might have succeeded on this issue:

(i) before any notice to the Respondent of the dispute, its 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) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it acquired no trademark or service mark rights; or

(iii) the Respondent is 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.

With respect to Paragraph 4(c)(i), the Respondent has admitted that it is not presently using the disputed domain name and has instead parked it with a third party. The Respondent asserts that it has plans, originated before the instant Complaint filing, to use the domain name for a video streaming website. However, the Respondent has provided the Panel with no evidence of “demonstrable preparations” beyond this mere assertion, and thus fails to satisfy the clear requirement of this paragraph. For supporting cases, seeLo Manaco Hogar, S.L. v. MailPlanet.com, Inc., WIPO Case No. D2005-0896 (December 2, 2005)(where the panel ordered a transfer of the domain name <lomanaco.com>); and DigiPoll Ltd. v. Raj Kumar, WIPO Case No. D2004-0939 (February 3, 2005)(where the panel found for complainant regarding the domain name <digipoll.com>, stating “[i]nstead of showing any demonstrable preparations that he has made, the Respondent has merely asserted that he has had an inchoate idea that has been harbored for several years.”).

Similarly, Paragraph 4(c)(ii) is inapplicable, because the Respondent has supplied no evidence to the Panel to sustain a finding that the Respondent was or is in any conceivable way known by a name corresponding to the disputed domain name. Finally, the Respondent’s apparent concession of non-use of the disputed domain name means that it cannot claim to have engaged in “legitimate noncommercial or fair use” of the disputed domain name, negating the applicability of Paragraph 4(c)(iii). Since the Respondent has come forward with no other rationale to support a claim to rights or legitimate interests in the disputed domain name, the Panel concludes that it has failed to rebut the prima facie case made against it with respect to this issue.

In view of the above, the Panel rules that the Complainant has succeeded in proving that the Respondent has no rights or legitimate interests in the disputed domain name (Paragraph 4(a)(ii) of the Policy).

C. Registered and Used in Bad Faith

The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. To counter the first element of this contention, the Respondent points out that it registered the disputed domain name on September 6, 2001, before even the first application for trademark status in connection with the Complainant’s mark on June 21, 2002. The Respondent correctly cites the WIPO Overview of WIPO Panel Views on Selected UDRP Questions for the proposition that the consensus of previous UDRP panels holds that, normally speaking, when registration of the disputed domain name precedes establishment of the trademark to which it is being compared, the registration would not be in bad faith because the registrant could not have contemplated the complainant’s non-existing mark. For a further articulation of this principal, see PrintForBusines B.V v. LBS Horticulture, WIPO Case No. D2001-1182 (December 21, 2001); Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827 (September 23, 2001); and John Ode dba ODE and ODE – Optimum Digital Enterprises v. Internship Limited, WIPO Case No. D2001-0074 (May 1, 2001).

Some previous UDRP panels have suggested exceptions to this general rule. For example, see ExecuJet Holdings Ltd. v. Air Alpha America, Inc.WIPO Case No. D2002-0669(October 7, 2002); General Growth Properties, Inc., Provo Mall L.L.C v. Steven Rasmussen/Provo Towne Centre Online, WIPO Case No. D2003-0845 (January 15, 2004); MADRID 2012, S.A. v. Scott Martin-Madrid Man Websites, WIPO Case No. D2003-0598 (October 8, 2003); and Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc), WIPO Case No. D2003-0320 (July 4, 2003). However, the Panel’s examination of these exceptions yields the conclusion that they generally involve cases in which there existed some credible evidence that the respondent had knowledge that the complainant was conducting (or about to conduct) business under a company or brand name that would compel the reasonable expectation of likely confusion with the domain name in dispute. In the present case, the difficulty for the Complainant is that there is nothing to establish that the Respondent knew (or should have known) about the Complainant’s rights (or likely rights) in the VIDEOIQ mark at the time the disputed domain name was registered. Furthermore, the Complainant has not furnished evidence that, prior to September 6, 2001, it was engaged in producing the products which now bear the VIDEOIQ mark, nor evidence that it had announced publicly the intent to do so before that date. Nor is the Complainant assisted by its concession that the first use of the trademark did not occur before June 2002. As a result, the Panel is not persuaded that a bad faith assertion against the Respondent can be sustained in the circumstances of this case.

Accordingly, the Panel holds that the Complainant has failed to prove that the Respondent registered the disputed domain name in bad faith.

7. Reverse Domain Name Hijacking

The Respondent has requested the Panel to find the Complainant guilty of reverse domain name hijacking in this case. While it may be clear to a veteran of UDRP rulings that the Complainant’s claims were on the material provided fatally flawed with respect to the dates of domain name registration and first trademark use, the Panel cannot infer from the record that this was necessarily clear to the Complainant. Furthermore, any evidence of bad intent on the part of the Complainant is mitigated by the Panel’s ruling that the Complainant established the Respondent’s lack of rights or legitimate interests in the disputed domain name. Thus, the Panel does not find that the Complainant has engaged in reverse domain name hijacking.

8. Decision

For all the foregoing reasons, the Complaint is denied.

Dennis A. Foster
Sole Panelist

Dated: August 17, 2007