The Complainant is NovAtel Inc., Canada, represented by Carr Intellectual Property Law, United States of America.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Domain Admin, FindYourDomain.com, United States of America, represented by Grant Carpenter, Esq., United States of America.
The disputed domain name <novatela.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 8, 2019. On August 9, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 9, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 14, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 17, 2019.
The Center verified that the Complaint, together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 20, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 9, 2019. The Response was filed with the Center on September 10, 2019. On October 1, 2019, the Complainant filed an unsolicited supplemental submission.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on September 19, 2019. 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 is the owner of the United States of America Trademark Registration No. 2,468,649 for NOVATEL (Annex D to the Complaint), registered on July 17, 2001, in class 9.
The disputed domain name was registered on September 2, 2007, and presently resolves to a parked page indicating that it is available for sale.
On August 22, 2019, after the Complaint had been filed, the Respondent sent Complainant an email message (Annex 1 to the unsolicited submission made by the Complainant on October 1, 2019) stating that a client had registered the disputed domain name for a development project and that they firmly believed that “Nova Tela” is a generic term and would fight to protect their rights, being prepared to file for RDNH as well as a lawsuit in order to protect their rights in the disputed domain name, but yet would like to propose an amicable settlement.
The Complainant’s counsel requested a price estimate for the disputed domain name at the link available from the webpage that resolves from the disputed domain name and learned that the sale price would be of USD 3,200.
The Complainant claims to have started using the NOVATEL trademark in connection with navigation and positioning transceivers, GPS receivers, and related goods as early as June 1992, having become a
well-known company that specializes in GNSS (global navigation satellite system) products and systems, having acquired and presently enjoying substantial goodwill and a valuable reputation under its NOVATEL trademark, which has been registered in at least thirty countries and which has been found a well-known and famous mark in Spain (Annexes H and G to the Complaint).
According to the Complainant, the disputed domain name fully incorporates its NOVATEL trademark, causing a likelihood of confusion as to the source and/or sponsorship of the disputed domain name; furthermore, under the Complainant`s view, the addition of the letter “a” at the end of the disputed domain name does not mitigate the confusing similarity between the disputed domain name and the Complainant`s trademark.
As to the Respondent’s lack of rights or legitimate interests in the disputed domain name, the Complainant contends that:
i) the Respondent is neither commonly known by the “Novatel” name, nor is it affiliated with the Complainant;
ii) the Respondent has not been commonly known by the disputed domain name, as an individual or business and owns no registered trademark rights in any variation of the NOVATEL word;
iii) the Complainant`s NOVATEL trademark registration precedes the registration of the disputed domain name by at least six years, not having the Complainant, authorized, consented to, or licensed the Respondent the use of the NOVATEL trademark;
iv) the Respondent does not have and cannot obtain rights or legitimate interests in the disputed domain name because the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, since the disputed domain name resolved to a webpage indicating that the Respondent is offering it for sale, what indicates that the Respondent is not using and has made no reasonable preparations to use the disputed domain name; and
v) to the best of Complainant`s knowledge, there are no other circumstances that justify Respondent`s registration or use of the disputed domain name.
In relation to bad faith use of the disputed domain name, the Complainant asserts that the distinctiveness and reputation of the NOVATEL trademark suggest opportunistic and bad faith registration of the disputed domain by the Respondent, being it implausible that the Respondent would be unaware of the NOVATEL trademark when registering the disputed domain name.
The Complainant further contends that even if the Respondent would not have known of the NOVATEL trademark, it would have had an obligation to ascertain that the registration of the disputed domain name would not infringe on the rights of any other third parties and a quick Internet search on the term “novatel” would have revealed the existence of the Complainant and the NOVATEL trademark (Annex I to the Complaint).
The Respondent asserts that the disputed domain name involves a generic, descriptive, and common phrase in the Portuguese language, a fact that the Complainant deliberately obscured so as to mislead the Panel, requesting that the Panel makes a finding of Reverse Domain Name Hijacking under the Policy.
The Respondent argues that the test of confusing similarity under the Policy should follow the recommendation described in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) of a typical side-by-side comparison of the disputed domain name and the textual components of the relevant trademark as to assess whether the mark is recognizable within the disputed domain name, what, if done in this case would reveal that the “nova tela” in the Portuguese language means “new screen” making the disputed domain name distinct from the NOVATEL trademark, when compared to the “quirky and unfamiliar” NOVATEL trademark.
Furthermore, according to the Respondent, a Google search for “novatela” will show in the first page ten results that reference to “Nova Tela Solutions”, a Brazilian Database management company, not making the following five pages a single reference to the Complainant or its NOVATEL trademark, what shows that although the disputed domain name and the Complainant`s trademark may differ only by a letter, that difference is more than enough to draw a significant distinction between the two strings.
The Respondent rebuts the Complainant’s assertions as to the lack of its rights or legitimate interests indicating that the disputed domain name is wholly comprised of the common and generic Portuguese words “nova” and “tela” which also make up the common phrase “nova tela” which, when combined, has a clearly descriptive and well-known meaning, for instance commonly used in advertisements for smartphones in Brazil to emphasize that the smart phone has a “nova” (“new”) “tela” (“screen”). (See e.g., “www.motorola.com.br/smartphone/moto-g6#tela-max-vision”), therefore grounding its legitimate interest over the disputed domain name is the business of selling legitimately acquired generic and descriptive domain names, what, under the Respondent’s view, constitutes a bona fide use inferring a legitimate interest (See section 2.10.1 of WIPO Overview 3.0).
According to the affidavit submitted by Mr. Salbego, Director of Communications for the Respondent (Annex 4 to the Response), the Respondent owns thousands of common generic and descriptive dictionary word and phrase domain names in a variety of languages and exploits the business of buying and selling such names. The Respondent further states that it obtained and used the disputed domain name consisting of generic or descriptive words to profit from the generic and descriptive value of the terms and without knowledge of or intention to take advantage of the Complainant’s rights.
Furthermore, as to the Complainant’s claim of the registration and use of the disputed domain name in bad faith the Respondent asserts that the Complainant sustains that the NOVATEL trademark is well known but offers no additional argument or evidence that Respondent actually knew of the NOVATEL trademark when registering the disputed domain name, being, in fact the Complainant’s trademark not well-known and only having the Respondent learned of it when receiving the Complaint. The Respondent further asserts that the Complainant’s products are not consumer-facing and are not generally known to members of the public.
In addition to that, the Respondent contends that the Complainant is wrong to assume that a reasonable inquiry into whether the disputed domain name infringes on the rights of any third parties would have led to a discovery of Complainant or the NOVATEL trademark, given that the due diligence conducted by the Respondent before acquiring the disputed domain name showed no reasonable likelihood that it infringed on the rights of any third-parties, given it is composed of two generic terms that are frequently used in conjunction with each other in the context of the related concepts of a “new screen”, what is in line with the Respondent’s strategy to identify and acquire domain names that are composed of combinations of common descriptive and generic terms in a variety of languages and profit from their resale.
Lastly, the Respondent submits that the Complainant brought this case in bad faith, unconvincingly asserting that the possible interpretation of the disputed domain name would be of an extra “a” to the end of the NOVATEL trademark, and that it was an obligation of the Complainant to have conducted further searches which would have shown that the disputed domain name might be linked to generic and descriptive words from other languages which could be linked to various organizations and uses and therefore the Complainant “ought to have known that it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint”, according to section 4.16 of WIPO Overview 3.0.
The Respondent further concludes that, by ignoring the generic and descriptive nature of the disputed domain name, the Complainant is bypassing the precedents established under the Policy and should be found guilty of reverse domain name hijacking.
On October 1, 2019 the Complainant filed an unsolicited submission attaching a correspondence received from the Respondent on August 22, 2019, after the Complaint had been filed and “pressuring the Complainant to acquire” the disputed domain name, at a price of USD 3,200, what would consist a valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name.
Under the Complainant’s view such correspondence qualifies a fraudulent attempt by the Respondent to pressure the Complainant to buy the disputed domain name at a premium price, to avoid the risk and cost of litigation, misrepresenting a project that appears to never have existed and only corroborates with the Respondent’s bad faith under paragraph 4(b)(i) of the Policy to target the Complainant by taking advantage of the similarity between the disputed domain name and the Complainant’s NOVATEL trademark to sell the disputed domain name to the Complainant at a price likely in excess of its out-of-pocket costs.
The Complainant has established rights in the NOVATEL trademark.
Section 1.7 of the WIPO Overview 3.0 notes that the consensus of a relatively straightforward comparison between the disputed domain name and the complainant’s trademark so as to assess whether the mark is recognizable within the disputed domain name.
In the present case, given that the disputed domain name incorporates the Complainant’s trademark entirely, with the addition of the letter “a”, and disregarding the generic Top-Level Domain (“gTLD”) “.com”, the first element of the Policy has been met. The Respondent’s claim of a generic and descriptive nature of the words comprised in the disputed domain name will be dealt with below.
The Respondent has made a plausible case of a legitimate interest in the disputed domain name which can be read in multiple languages as the conjunction of two common words “nova” + “tela”, which can be translated into English as “new screen” and which therefore could be applied in multiple contexts, unrelated to the Complainant and its activities. Also, in view of the findings at the section below, the Panel finds that the Complainant has not shown that the Respondent has no rights or legitimate interests with respect to the disputed domain name.
Paragraph 4(a)(iii) of the Policy requires that the domain name “has been registered and is being used in bad faith”. Thus, for the Complaint to succeed, a UDRP panel must be satisfied that a domain name has been registered and is being used in bad faith.
In the present case, the disputed domain name was registered on September 2, 2007, some years ago. The Complainant presents no explanation as to why, at that time, the Respondent knew or should have known of the NOVATEL trademark or that the Respondent was targeting the Complainant when registering the <novatela.com> domain name, relying its case on an unevidenced distinctiveness and reputation that its NOVATEL would have acquired.
While the Complainant asserts that its NOVATEL trademark has been in use since 1992, it provides no evidence as to how widely the mark was known at that time or, more importantly, in 2007. The sole evidence filed is the rejection by the Spanish Trademarks Office of the third-party trade name NOVATEL FIBRA in classes 9, 37, 38, and 42 in view of the likelihood of confusion such trade name might produce in the market as to the source of the products and services it intended to cover in view of oppositions grounded on the prior registrations for NOVATEL (A 651984) in classes 9, 39, 40, and 42 and 37; NOVATEL DIGITAL (M2361774) in class 37 and other registrations for NOVATEL in class 37 (M2932422 and M307227).
The Panel notes that the translation provided by the Complainant (Annex H) included wording not contained in the original decision1 and which might lead to the interpretation that the Spanish Trademarks Office had recognized the Complainant’s trademark as notorious, what does not seem to be the extent of that decision which ruled in view of the likelihood of confusion between the previous trademarks and the intended trade name as to the commercial origin of the products and services that the trade name intended to distinguish, and not on the alleged notoriety of the Complainant’s trademark.
In addition to that, the Panel, in an independent search conducted at the Spanish Trademarks Office database (available at “www.oepm.es”), found out that the trademarks NOVATEL DIGITAL (M2361774) in class 37 and other registrations for NOVATEL in class 37 (M2932422 and M307227) which were also the basis of said rejection decision belong not to the Complainant but rather to Novatel Digital S.L, a company which appears to be unrelated to the Complainant (“www.novateldigital.com/empresa/”), making it unlikely that the Spanish Trademark’s Office decision would have the extent indicated by the Complainant.
Lastly, the Respondent’s argument that the Complainant is wrong to assume that a reasonable inquiry into whether the disputed domain name infringes on the rights of any third parties would have led to a discovery of Complainant or the NOVATEL trademark seems acceptable since that the disputed domain name can be read as “nova tela”, two words with different meanings in different languages and what would be sensible in relation to the Respondent’s business of reselling domain names composed of combinations of common descriptive and generic terms in a variety of languages; the Panel also notes that an Internet search shows third parties, such as a database solutions company in Brazil, using the term.
The Panel notes that the main flaw in the Complainant’s case is that it relies primarily on the fact that the disputed domain name is (passively) held for sale; the Complainant does not truly advance a case beyond citing its various trademark registrations. More is required. The Panel therefore concludes the Complainant has failed to establish the third element of paragraph 4(a) of the Policy.
The Respondent argues that the Complainant brought this case in bad faith, unconvincingly asserting that the possible interpretation of the disputed domain name would be of an extra “a” to the end of the NOVATEL trademark, and that it was an obligation of the Complainant to have conducted further searches which would have shown that the disputed domain name might be linked to generic and descriptive words from other languages which could be linked to various organizations and uses and therefore the Complainant “ought to have known that it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint”, according to Section 4.16 of WIPO Overview 3.0.
The Panel does not find that the Complainant’s case was doomed from the start, but that the Complainant did not adequately argue its case – even if it may have still lost a better pled case. (The Panel also notes the probably misguided inference of the Complainant based on the Respondent’s asking price for the disputed domain name).
For the foregoing reasons, the Complaint is denied.
Wilson Pinheiro Jabur
Date: October 4, 2019
1 The Spanish Trademarks Office decision read as follows (Annex G to the Complaint):
“Las oposiciones basadas en los registros anteriores A 651984 "NOVATEL Cls. 9, 39, 40 y 42 también basada en la prohibición del Art. 8.2 de la Ley de Marcas (Marca Notoria) se tiene en cuenta así como M 2361774 “NOVATEL DIGITAL” Cl. 37, M 2932422 “NOVATEL” Cl. 37 y M 3072227 “NOVATEL’ Cl. 37 por la semejanza denominativa y aplicativa con el nombre comercial en estudio pudiendo producir confusión en el mercado acerca de la procedencia empresarial de los productos y servicios que pretende distinguir. Por lo expuesto se procede a la denegación del presente nombre comercial.”
Which in a free translation would read:
“The oppositions based on the previous registrations A 651984 “NOVATEL” Cls. 9, 39, 40 and 42 also based on the prohibition of Art. 8.2 of the Law on Trademarks (Notorious Trademark) are taken into account as well as M 2361774 “NOVATEL DIGITAL” Cl. 37, M 2932422 “NOVATEL Cl. 37 and M 3072227 “NOVATEL” Cl. 37 due to the wording similarity applicable with the trade name under study which may produce confusion in the market about the commercial origin of the products and services that it intends to distinguish. Due to the above, the trade name is denied.”
Whereas the translation provided by the Complainant reads:
The trademarks on which the opposition is based, A 651984 NOVATEL, M 2361774 NOVATEL DIGITAL, M 2932422 NOVATEL and M 3072227 NOVATEL, are taken into account as there is a high wording similarity and they protect similar or very related goods and services when compared with those claimed by the trade name being studied, hence likelihood of confusion and association will arise between the signs.
Art. 8 of the Trademark Law is considered in relation with the protection of the notorious trademarks claimed in the opposition as far as the trademark A651984 as it could imply an unfair advantage of the distinctive character or notoriety of the same.
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