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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Richard W. Hodges v. Jim Johnson / Options, Unltd.

Case No. D2007-1847

1. The Parties

Complainant is Richard W. Hodges, an individual with an address in Sonoma, California, United States of America, represented by the Law Office of John A. Kelly, United States of America.

Respondent is Jim Johnson / Options, Unltd., an individual with an address in Takoma Park, Maryland, United States of America.

2. The Domain Names and Registrar

The disputed domain names are: <greenit.com> and <greenit.org>. Both domain names are registered with Dotster, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on December 13, 2007. On December 14, 2007, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the domain names at issue. On December 15, 2007, Dotster transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant for each of the domain names, providing contact details, and confirming various details of the applicable registration agreements. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“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 January 4, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 24, 2008. The Response was filed with the Center on January 24, 2008.

The Center appointed Debra J. Stanek as the sole panelist in this matter on February 6, 2008. 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.

4. Factual Background

Complainant owns a United States federal trademark registration for the mark GREENIT, INFORMATION TECHNOLOGY IN SUSTAINABLE BUILDINGS for educational services related to “reducing or minimizing the environmental effects of information technology in buildings.” The registration issued on July 24, 2007, and claims a date of first use of March 14, 2006.

Complainant has registered the domain name <greenit.net>, which he uses for his business.

In October and November 2004, Respondent acquired the domain names <greenit.com> and <greenit.org> from their prior registrants. Respondent has not yet begun using them in connection with active websites.

5. Parties’ Contentions

A. Complainant

Complainant makes the following contentions:

Complainant is the owner of state and federal trademark registrations that include the term “GreenIT.” Complainant contends that the “priority date” for all marks is November 19, 2004¹. Complainant also owns and operates a website at “www.greenit.net” that is associated with his business, “GreenIT.”

The disputed domain names consist of either the “entire, or part of the entire mark of each of [Complainant’s] registrations.”

Respondent has no legitimate rights or interests in the disputed domain names. Based on a search of the Internet Archive, there have not been active websites associated with either of the disputed domain names since October 5, 2006. Prior to that date, the only content on the “www.greenit.com” website appears to be from the prior registrant.

Respondent has not, either as an individual, business, or other organization, ever been commonly known by “greenit.com” or “greenit.org.”

Because Respondent is not using the domain names, he is not making a legitimate non-commercial or fair use of them.

The domain name was registered and is being used in bad faith. The domain names were registered for the purpose of selling, renting, or otherwise transferring them to the owner of the trademark or a competitor for valuable consideration in excess of Respondent’s out of pocket costs. This is evidenced by the fact that Respondent answered Complainant’s email inquiring, “Would you be interested in selling the greenit.com domain name?” with the following:

I’m not inclined to, but I’m curious at the use to which you would put it. It might make a difference.

B. Respondent

Respondent makes the following contentions:

Respondent registered the domain names in connection with a non-profit organization that he is developing to facilitate the matching of volunteer and reduced-cost software development and technical support personnel to organizations engaged in environmental activism. Respondent is considering naming the organization “greenit.org.”

Respondent does not contest that the disputed domain names begin with the same seven characters as Complainant’s trademarks. However, he notes that the trademark that Complainant has registered with the United States Patent and Trademark Office (and one of the state trademark registrations) is for the term “greenit” followed by the phrase “Information Technology in Sustainable Buildings.”

Respondent also points to the fact that:

- The domain names are in all lower case and contain the generic top-level domains, “.com” and “.org.”

- Complainant’s U.S. federal trademark registration is for services targeted at designing, constructing and maintaining buildings, which is distinct from and unrelated to the services of his planned organization.

- “Green IT” is a weak and diluted mark. It is a common, descriptive term used extensively in a variety of ways.

Complainant is a sole proprietorship. The fact that he has not incorporated suggests that his business “lack[s] the resources to establish a significant association of such a broadly-used term as ‘GreenIT’ with his service in the mind of the public.”

Respondent cites the following as evidence of demonstrable preparations to use the domain names in connection with a bona fide offering of goods or services, before any notice of the dispute:

- Respondent got the idea for his organization in early 2004 and further developed it at a conference in Washington, D.C. in September 2004 including considering use of “greenit.org” as the name of the organization.

- On October 31, 2004, Respondent acquired the <greenit.org> domain name. By November 27, 2004, Respondent had concluded the acquisition of the <greenit.org> domain name, which he had initiated on November 1, 2004. As was the case with <greenit.com>. Both prior to the Complainant’s first contact and two years before the registration of the Complainant’s trademarks.

- Respondent has spent the intervening time consulting with mentors on how to best create his “greenit.org” organization and establishing it as non-profit, tax-exempt entity. He has attended a class on the subject as part of which he created a feasibility study. Because Respondent is engaging in this activity on a volunteer basis in his spare time, the process has continued “in fits and starts.”

- In 2005, Complainant sent Respondent an email message inquiring about purchasing the domain names, but made no claim of infringement. After replying to that message, Respondent did not respond to the Complainant’s follow up message because he was not interested in selling them.

- Respondent learned for the first time that Complainant disputed his ownership of the domain names upon receipt of an October 7, 2007 letter from Complainant’s lawyer. That was also the first time that Respondent learned Complainant owned any trademarks.

- Respondent has received other inquiries regarding purchase of the domain names, but has not entertained any of them. Although he could use the domain names as advertising portals to generate money, given the media attention to the topic of “green IT,” Respondent does not believe that that is consistent with the mission of the organization that he is working to establish.

Respondent supports his contentions with printouts of notes from his PDA, copies of his correspondence with Complainant and other documents.

Respondent denies that he has registered and is using the domain names in bad faith, citing the following facts:

- Respondent acquired the domain names more than two years before Complainant’s registration of his trademarks.

- Respondent documented his intentions regarding the domain in his correspondence with the prior registrant and with Complainant. In their initial correspondence, Complainant never asserted any trademark rights.

- Respondent has never sold any domain name to anyone and has never offered any domain names for sale.

- Because the domain names are not currently active, Respondent is not trying to attempt to attract for commercial gain, Internet users to such a web site, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement.

- Any confusion, is a consequence of the widespread and popular adoption of domain names that include the term “Green IT.”

Finally, Respondent request that the Panel find that Complainant is engaging in “reverse domain name hijacking”, citing the following facts:

- Complainant made repeated attempts to purchase the domain names from Respondent but was unsuccessful.

- Complainant subsequently secured trademark registrations for marks similar to the domain names.

- Complainant later claimed that Respondent was damaging Complainant’s trademark even though Respondent’s registration predated the marks.

- In response to Complainant’s subsequent correspondence, Respondent outlined the above sequence of events and offered to set up a link from his site to Complainant’s to avoid confusion; however, Complainant declined.

- Complainant’s claim that Respondent has offered to sell the domain names is unfounded.

- Complainant has no evidence of bad faith.

6. Discussion and Findings

In order to prevail, Complainant must prove, as to each of the disputed domain names, that:

(i) The disputed domain name is identical or confusingly similar to Complainant’s mark.

(ii) Respondent has no rights or legitimate interests in respect to the disputed domain name.

(iii) The disputed domain name has been registered and is being used in bad faith.

Policy, paragraph 4(a). The Policy sets out examples of circumstances that may evidence a respondent’s rights or legitimate interests in a domain name, see Policy, paragraph 4(c), as well as circumstances that may evidence a respondent’s bad faith registration and use, see Policy, paragraph 4(b).

A. Identical or Confusingly Similar

Complainant has established its rights in the mark GREENIT, INFORMATION TECHNOLOGY IN SUSTAINABLE BUILDINGS by providing evidence of its federal trademark registration.

The extent of Complainant’s rights in the mark GREENIT, standing alone, are less clear. The Panel finds that neither Complainant’s pending federal trademark application nor the state trademark registration for GREENIT establishes Complainant’s rights for purposes of these proceedings. Consistent with the consensus view, the Panel finds that U.S. state registrations, which are not subject to the same level of scrutiny as federal trademark registrations, and may in some states be granted automatically, are not entitled to the same deference as a federal trademark registration. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Paragraph 1.1.

Notably, Complainant has not provided evidence regarding length of use and amount of sales, the nature and extent of its advertising, consumer surveys, or media recognition that would establish trademark rights in a mark that is not registered. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Paragraph 1.7 (setting out consensus view as requiring complainant asserting rights in unregistered trademark rights to show that the mark has become a distinctive identifier associated with complainant or its goods and services, such as by providing evidence of length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition).

Therefore, the Complainant has not established that the disputed domain name is identical to a mark in which it has rights.

As to confusing similarity, a domain name is likely to be deemed confusingly similar to a mark if it incorporates the mark or a variation of the mark. Respondent provides some evidence that the combination of the term “green” with “IT,” used as an abbreviation for “information technology” is weak and descriptive. However, the Panel finds that the test for confusing similarity should be determined by the degree of resemblance of the domain name and mark at issue as to appearance, sound, and meaning rather than consideration of other factors, such as the distinctiveness of the mark, how well-known the mark is, how long the mark has been used, and the nature of the goods and services with which the mark is used.

Here, the domain name does incorporate the dominant portion of the GREENIT, INFORMATION TECHNOLOGY IN SUSTAINABLE BUILDINGS mark. For purposes of considering identity or confusing similarity, spacing, capitalization, and the addition of the top-level domains are not relevant.

The Panel finds that each of the disputed domain names is confusingly similar to Complainant’s GREENIT, INFORMATION TECHNOLOGY IN SUSTAINABLE BUILDINGS mark.

B. Rights or Legitimate Interests

Complainant may establish that Respondent has no rights or legitimate interests in respect of the domain names by making a prima facie showing that none of the three examples of rights or legitimate interests in a domain name set forth in paragraph 4(c) of the Policy are applicable. This is consistent with the consensus view. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 2.1 (once complainant makes prima facie case, respondent has burden of showing rights or legitimate interests in the domain name).

The Panel need not decide whether the Complainant established a prima facie case as to all elements, in light of its determination, set out below, that Respondent has failed to establish that the domain names were registered and used in bad faith.

C. Registered and Used in Bad Faith

Complainant must establish that each of the disputed domain names has been registered and is being used in bad faith. The Policy itself sets out four sets of circumstances, evidence of which can establish bad faith, see Policy, paragraph 4(b)(i)-(iv):

(1) Registering the domain name primarily to sell it for more than documented out-of-pocket costs, see Policy, paragraph 4(b)(i).

(2) Registering the domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct, see Policy, paragraph 4(b)(ii).

(3) Registering the domain name primarily to disrupt the business of a competitor, see Policy, paragraph 4(b)(iii).

(4) Using the domain name to intentionally attempt to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement, see Policy, paragraph 4(b)(iv).

The consensus view, and the view of the Panel, is that as a general matter, a domain name that is registered before a trademark right has been established cannot be found to have been made in bad faith. The registrant would not have been aware of the complainant’s trademark rights, because those rights did not then exist. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 3.1.²

Respondent’s rejection of Complainant’s inquiry regarding a possible purchase in no way suggests that Respondent registered the domain name primarily to sell it to Complainant.

Under these circumstances, the Panel does not find that Respondent has registered and used the domain names in bad faith.

D. Reverse Domain Name Hijacking

Respondent asserts that Complainant is engaged in reverse domain name hijacking. Reverse domain name hijacking is defined in paragraph 1 of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Although the Panel is disturbed at the absence of any evidence of bad faith and has found that the Complaint lacks merit, it does not conclude that Complainant is attempting reverse domain name hijacking.

7. Decision

For all the foregoing reasons, the Complaint is denied.

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Debra J. Stanek
Sole Panelist

Dated: February 20, 2008