WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

DataServ, L.L.C. v. Name Administration Inc. (BVI)

Case No. D2012-1538

1. The Parties

The Complainant is DataServ, L.L.C. of St. Louis, United States of America, represented by Bryan Cave LLP.

The Respondent is Name Administration Inc. (BVI), Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by John Berryhill, Ph.d., Esq., United States of America.

2. The Domain Name and Registrar

The disputed domain name <dataserv.com> is registered with iRegistry Corp. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2012. On July 31, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 31, 2012, the Registrar transmitted by email to the Center its verification response.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 August 2, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 22, 2012. The Response was filed with the Center on August 22, 2012.

On August 27, 2012, the Complainant made a supplementary submission. This submission was followed by a reply filed by the Respondent on September 20, 2012. The Panel notes that the Rules contain no express provision for supplementary filings by either party, except in response to a deficiency notification or if requested by the Center or by the Panel. Paragraphs 10 and 12 of the Rules grant the Panel sole discretion to determine the admissibility of supplementary filings (including further statements or documents) received from either party. Taking this into account, for reasons of due process and equality of treatment of the two parties, and in order to provide both parties with a reasonable opportunity to present their cases, the Panel has determined to consider and admit the two supplementary filings in rendering its decision.

The Center appointed Ian Lowe and Tony Willoughby as panelists in this matter on August 28, 2012, and appointed Assen Alexiev as presiding panelist on September 13, 2012. 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.

4. Factual Background

The Complainant is a provider of document and process automation solutions and related data storage, security, processing and retrieval services, provided primarily through software as a service (“SAAS”) services. Its activities include capturing documents and data, utilizing OCR and automating business processes within its clients’ accounts payable systems. The Complainant is headquartered in Saint Louis, Missouri, U.S.A., and also utilizes operation centers in Amsterdam, Netherlands and Bangalore, India.

The Complainant owns the DATASERV and Design service mark, registered in the State of Missouri, United States of America with reg. No. S13039, registered on November 7, 1994, for the services “storage and retrieval of computerized data” in International Class 042 (the DATASERV service mark).

The disputed domain name was registered on October 24, 2003.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it provides services to clients on five continents, with users in more than forty countries. It has performed hundreds of implementations and serves over 15,000 users worldwide daily. Its services have generated more than USD 4 million in revenue in 2011 alone, and more than USD 41 million since its inception in 1994. The Complainant’s clients include major global businesses such as Sony Pictures, Thomson Reuters, 20th Century Fox, and Kendall-Jackson. The Complainant contends that it has continuously used its DATASERV service mark and trade name in connection with accounts payable automation and related services since 1994. Its website at “www.DataServOnDemand.com” has received nearly 400,000 visits, and nearly 1,000,000 page views.

According to the Complainant, the disputed domain name wholly incorporates and is thus identical or confusingly similar to the Complainant’s DATASERV service mark.

The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not in any way associated with Complainant, has never sought or received authorization to use the Complainant’s DATASERV service mark, and has not made any legitimate offering of goods or services under the same mark. The Respondent has never been commonly known as “Dataserv”, and has not sought or procured any registrations for any trade names, trademarks or service marks for “Dataserv” or “Dataserv.com.” Respondent does not appear to have any legitimate trademark, service mark or other intellectual property rights in the DATASERV service mark.

The Complainant further alleges that the Respondent is not making any legitimate noncommercial use of the disputed domain name – the same is used for a website containing pay-per-click links. While this practice may be permissible in some circumstances, it does not in itself confer rights in a domain name. Domain names comprised of dictionary words posting links genuinely related to the generic meaning of the domain name may be permissible, but the present case is different, as “dataserv” is not a dictionary word or commonly used phrase to refer to the generic name of any good or service. The Respondent has only used the disputed domain name in an attempt to confuse and divert consumers to various websites that offer third party goods and services.

The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith. It has registered and is using the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the Complainant for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain name.

The Respondent has offered to sell the disputed domain name to the Complainant for a price of USD 56,000, which is well in excess of the Respondent’s out-of-pocket costs, after having rejected the Complainant’s offers of USD 10,000, USD 15,000 and finally of USD 20,000.

The Complainant submits that it has made substantial efforts to promote its services under its DATASERV service mark. According to it, this mark is uniquely associated with the Complainant’s document and process automation solutions and related data storage, security, processing and retrieval services in more than 40 countries around the globe. The Respondent registered the disputed domain name at least nine years after the Complainant began using and registered the DATASERV service mark, well after the Complainant became a leading global provider of document and process automation solutions, and related data storage, security, processing and retrieval services. The Respondent is intentionally attempting to divert, for commercial gain, Internet users to third party websites (which presumably compensate the Respondent for driving Internet traffic to their sites) in an effort to confuse and mislead consumers. Where a respondent is found to be diverting users to its website (and/or third party websites) to generate traffic and sales commissions for its own commercial benefit, such conduct is uniformly recognized as bad faith under the Policy.

The Respondent’s website is a wholly commercial search portal website displaying links to various third party websites offering for sale various products or services, many of which compete with or are related to the Complainant’s services.

The Respondent’s attempts to misdirect Internet users looking for the Complainant have been successful, as several of the Complainant’s clients have informed it of such misdirection to the disputed domain name. For these reasons, the Complainant alleges that the Respondent must have known of the Complainant’s long and continuous use of its DATASERV mark, and was or should have been aware of the Complainant’s prior trademark rights at the time of the registration of the disputed domain name.

The Complainant also submits that professional domain name registrants like the Respondent, who register large numbers of domain names through automated processes, must accept the consequences of turning a blind eye to third party trademarks. Even if the Respondent could claim it had no knowledge of the Complainant’s rights, it is nonetheless chargeable with such knowledge. To allow a professional domain name registrant to hide behind a claim of “no actual knowledge” of a particular trademark, while registering large numbers of domain names and remaining willfully blind to third party rights, would frustrate the very purpose of the Policy.

According to the Complainant, the Respondent’s conduct is designed to disrupt and harm the business of the Complainant. The disputed domain name allegedly diverts potential users away from the Complainant and its authentic goods and services and toward the goods and services of the Respondent’s third party advertisers. This conduct of the Respondent has caused and will continue to cause commercial detriment to the Complainant in terms of consumer confusion, lost sales and goodwill, and the loss of the general ability to communicate and transact with its existing and potential customers.

In its supplementary filing, the Complainant alleges that third party rights in DATASERV trademarks do not negate the Complainant’s rights or the Respondent’s bad faith, as third parties may acquire rights in the same or a similar mark in connection with different goods or services, provided there is no likelihood of consumer confusion. The critical difference between these third parties and the Respondent is that the Respondent has never made a bona fide offering of any goods or services under the DATASERV service mark, nor does it claim to have done so in its Response.

The Complainant further states that the DATASERV mark is not a dictionary term, but is a coined term. The USPTO has six times approved registration of a DATASERV variant in the Principal Register without a claim of acquired distinctiveness. Likewise, the Office of Harmonization for the Internal Market (“OHIM”) and the UKIPO have reviewed the respective applications for DATASERV & Design, DATASERV, and DATASERVE UK & Design, and have registered them. That is why the DATASERV mark is not descriptive, and there is no set of goods or services to which the website at the disputed domain name could permissibly pertain.

The Complainant rejects the Respondent’s argument that it could not have discovered the Complainant’s use, even if it had attempted to discharge that duty. It asserts that it has had an active Internet presence since at least as early as 1997. Four of the Complainant’s domain names were registered and active before the Respondent registered the disputed domain name. Numerous commercial search providers maintain searchable databases of the trademark records of U.S. states and other jurisdictions throughout the world. These websites, clearly accessible to the Respondent at the time of registration, are allegedly sufficient to provide constructive knowledge to the Respondent under the Policy.

Finally, the Complainant submits that its offer to purchase the disputed domain name does not negate the Respondent’s bad faith registration and use. The Respondent is guilty of bad faith registration and use whether or not the Complainant was willing to pay a substantial price for the disputed domain name, in an effort to achieve a prompt and certain resolution of this matter.

B. Respondent

The Respondent describes itself as a well-known domain registrant, advertising broker, and member of the ICANN Commercial Business Users Constituency.

It contends that the term “dataserv” was not “coined” by the Complainant and that the Complainant does not have exclusive rights in it, even in the State of Missouri. This term has long been concurrently used in relation to data services by various parties, including by the Respondent, who has used it for advertising purposes for which the disputed domain name is directly phonetically descriptive - i.e. data services.

According to the Respondent, the evidence submitted by the Complainant shows that in 2003 the latter was a relatively small regional provider of business-to-business services using a non-distinctive and non-exclusive name to provide specialized document scanning and storage services to a small number of business customers in several states in the USA, as of the time the disputed domain name was registered. There is allegedly no evidence of national or international advertising or widespread consumer recognition of the Complainant.

The Respondent further submits that the Complainant has presented no evidence to show that the Respondent knew or had a duty to know the Complainant when the disputed domain name was registered. There is no searchable index of Missouri state trademark registrations, and the Complainant has never sought federal trademark registration to provide notice of its claimed rights. US state trademark registrations are granted on a pro forma basis. The Missouri service mark registration was not examined, and a Missouri corporation named “Dataserv Computer Maintenance, Inc.” had existed since 1985. The Missouri and other state-registered entities operating under the DATASERV name since 1985 constituted a business unit of BellSouth Corporation, which maintained US federal registrations for a family of figurative DATASERV marks from 1986. The term “dataserv” has remained in concurrent use by a variety of entities in various data service industries in the US and abroad. A United States federal trademark registration with Reg. No. 3443507 was issued in June 2008 to Volt Delta Resources of California, for the textual mark DATASERV with no objection by the Complainant. In the European Community, a figurative DATASERV registration has been owned since 2008 by Dataserv Group Limited of Middlesex, UK, operating a website at “www.dataserv-group.com” with no objection by the Complainant. For these reasons, the Respondent claims that the term “dataserv” cannot be considered exclusive or distinctive of the Complainant.

The disputed domain name was registered by the Respondent in October 2003 upon its abandonment by a prior registrant to provide paid advertising results from Internet advertisers who had paid for placement in connection with the keyword data. The disputed domain name was immediately put into use in the Respondent’s keyword advertising system due to the attractiveness of the word “data” and the truncated term “serv”, which may be indicative of “service” or “servers” and is phonetically indistinguishable from the verb “serve”. At the time the disputed domain name was registered, the Respondent had no knowledge or duty to know of the Complainant’s reputation.

For these reasons, the Respondent submits that its use of a descriptive, non-exclusive and non-distinctive combination of two words for the purpose of generally advertising data services is not illegitimate, and suggests that there may be a legitimate interest in a domain name which incorporates a descriptive term and is used in connection with the subject matter that term describes, where there is no obvious intention to trade on the rights or reputation of a trademark owner in another part of the world.

The Respondent contends that the “bad faith” criterion is an element of specific intent directed toward the Complainant, and arising from rights known by the Respondent to belong to the Complainant at the time the disputed domain name was registered. The concept of “willful blindness” may be applicable in cases where there is something substantial of which the domain name registrant is accused of being willfully blind. In 2003, the Complainant had a Missouri state trademark registration, which was not available online. What was known to the Respondent in October 2003 was that the disputed domain name had been registered before by a third party which had abandoned it. There is allegedly nothing in the Complainant’s evidence of which the Respondent could reasonably be expected to be held to a duty of notice, or even of which the Respondent could have been practically aware. However, none of that material, even if known, would have established a sole and exclusive right of the Complainant in what has been shown here to be a non-exclusive and non-distinctive term used by a variety of parties for various purposes in relation to data services.

The Respondent points out that the Complainant itself had no reservations about adopting, as its name, a term identical to a then-extant federally-registered mark owned by BellSouth at the time of the Complainant’s formation. While the Complainant argues that the Respondent had some undefined duty in relation to the State of Missouri and the St. Louis newspapers, the Complainant does not explain why it appropriated a federally registered trademark owned by another at the time. According to the Respondent, the Complainant’s own conduct would not survive the Complainant’s own professed standard of “bad faith” adoption of the term “dataserv”.

According to the Respondent, the Complainant has not shown that the Respondent has registered the disputed domain name primarily for the purpose of selling it to the Complainant or its competitors. It submits that there is nothing wrong per se with offering to sell a domain name at a high price, which is a very common business practice. The Respondent did not initiate contact with the Complainant, but responded to contact from the Complainant concerning the disputed domain name. The fact that the Complainant was willing to offer such an amount, rather than to assert its alleged rights and demand transfer, provided the Respondent with the impression that the Complainant must have believed the disputed domain name was legitimately registered and used by the Respondent. The Complainant is not the only party who has contacted the Respondent, who has also received a similar solicitation from Dataserv Group Limited of Middlesex, UK, the holder of the junior European and UK trademark registrations. At no time did the Complainant state to the Respondent that the Complainant believed it was the owner of superior exclusive rights in the name. The Complainant’s delay does not suggest that the registration of the disputed domain name significantly disrupted its business.

The Respondent also contends that the Complainant has not established that it actually uses the DATASERV mark registered in Missouri, and does not claim an intent to resume its use, even if it had ever used it. The Complainant’s asserted Missouri registration has not been in use by the Complainant for quite a number of years well beyond the three years of non-use establishing presumptive abandonment under 15 U.S.C. § 1127. Whether the Missouri state registration was available via commercial online services at the time the disputed domain name was registered is neither proven nor relevant to the Respondent’s intent. The Respondent has no duty of constructive notice of Missouri state trademark registrations.

6. Discussion and Findings

Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:

(i) the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the Respondent has registered and is using the disputed domain name in bad faith.

A. Identical or Confusingly Similar

The Complainant has provided evidence and has thus established its rights in the DATASERV service mark, registered in the State of Missouri, United States of America. This service mark contains the word element “DataServ”. While, as appears from paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), some panels have declined to acknowledge United States State trademark registrations as being sufficient to constitute relevant rights for this purpose, the Panel is satisfied that as at the date of the filing of the Complaint the nature and extent of the Complainant’s use of the DATASERV mark has been sufficient to overcome any potential weaknesses of the Missouri State registration.

For the purpose of assessing identity or confusing similarity under the Policy, paragraph 4(a)(i) it is widely acknowledged that the top level gTLD domain suffix may in appropriate circumstances be ignored. In this case the relevant part of the disputed domain name is its “dataserv” section. This element is identical to the word element of the Complainant’s DATASERV service mark. Therefore, the Panel finds that the disputed domain name is identical or confusingly similar to a service mark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Policy requires the Complainant to make at least a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant makes such a showing, the Respondent has to provide evidence to demonstrate that it has rights or legitimate interests in the disputed domain name. The burden of proof, however, always remains on the Complainant to establish by a preponderance of the evidence that the Respondent lacks rights or legitimate interests in the disputed domain name. See paragraph 2.1 of the WIPO Overview 2.0.

The Complainant alleges that the Respondent is not associated with the Complainant in any way, has never sought or received authorization to use the Complainant’s DATASERV service mark, is not commonly known as “Dataserv” and has no intellectual property rights in the DATASERV mark. The Complainant also contends that the Respondent has not made any legitimate noncommercial use of the disputed domain name, which is only used for a website containing pay-per-click links allegedly in an attempt to confuse and divert consumers to various websites that offer third party goods and services. These allegations may be regarded as sufficient to sustain the required prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name.

On its part, the Respondent submits that it has registered the disputed domain name in order to use it to advertise data services using a combination of two words, which combined are directly descriptive of data services, and to provide paid advertising results from Internet advertisers who had paid for placement in connection with the keyword “data”. The Respondent’s position is also that there may be a legitimate interest in a domain name where that domain name represents a descriptive and non-distinctive combination of two words and is used in connection with the subject matter that term describes, and where there is no obvious intention to trade on the rights or reputation of a trademark owner in another part of the world.

After the review of the evidence submitted by both parties, the Panel reached the conclusion (as set out in more detail in the section on bad faith below) that it is more likely than not that the Respondent was unaware of the existence of the Complainant at the time it registered the disputed domain name, and that the Respondent does not appear to have targeted the Complainant with its actions. In these circumstances, the Panel is not satisfied that the use of the disputed domain name for a website containing links to third parties providing data services should be regarded as unlawful vis-à-vis the Complainant. In so finding the Panel accepts the evidence of the Respondent that “serv” is a commonly used abbreviation for “serve” or “service”.

Therefore, the Panel decides that the Complainant has not established that the Respondent does not have rights and legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the holder has registered or has acquired the domain name 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 the holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder 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 holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on the holder’s website or location.

The Complainant argues that the Respondent has registered and used the disputed domain name in bad faith with the Complainant in mind: with the intent to extract an undue profit by using the disputed domain name to mislead and divert Internet users to third parties and thus generate sales commissions; and by the offer to sell the disputed domain name to the Complainant for an amount well in excess of its documented out-of-pocket costs directly related to it.

The Respondent denies that it knew or had a duty to know the Complainant when the disputed domain name was registered, and contends that the registration was made for advertising purposes in view of the descriptive character for “data services” of the disputed domain name. The Respondent points out that there are other business entities using the name “dataserv” for their business as part of their company names, trademarks and domain names in the United States of America, including in the State of Missouri, and in other countries, and that the offering to sell a domain name at a high price is not illegitimate as such.

Having carefully reviewed the evidence submitted before it, the Panel reached the conclusion that it does not establish that back in 2003 the recognition by the public of the Complainant and of its DATASERV service mark was of such a magnitude that would make it likely that the Respondent was or should have been aware of the existence of the Complainant at that time. Such likelihood is further reduced by the parallel existence of other entities using the term “dataserv” in their business at that time.

The DATASERV service mark was registered at the time when the Respondent registered the disputed domain name. However, the Panel accepts the Respondent’s assertion that it was unaware of the existence of the Complainant at that time. The Panel is also of the view that there is nothing about the circumstances of this case to suggest that the Respondent was willfully blind to the Complainant’s rights when acquiring the disputed domain name and/or should have been under an obligation to conduct a trademark search in the State of Missouri.

Nor is the Panel convinced that the Respondent has specifically targeted the Complainant. The website associated to the disputed domain name has been used to post pay-per-click links to third parties offering various types of what can generally be described as data services. This use appears to be in line with the alleged descriptive character of the disputed domain name, and does not specifically refer to the Complainant, so the Panel does not regard it as illegitimate towards the Complainant.

As it has not been established that the Respondent has specifically targeted the Complainant with its actions, the engagement of the Respondent in negotiations initiated by the Complainant for the sale of the disputed domain name should not be regarded as illegitimate either.

For these reasons, the Panel finds that the Complainant has failed to establish that the Respondent has registered and used the disputed domain name in bad faith.

7. Decision

For the foregoing reasons, the Complaint is denied.

Assen Alexiev
Presiding Panelist

Ian Lowe
Panelist

Tony Willoughby
Panelist

Dated: September 27, 2012