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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

eSnipe, Inc. v. Modern Empire Internet, Ltd.

Case No. D2009-0719

1. The Parties

The Complainant is eSnipe, Inc. of Bellevue, Washington, United States of America, represented by Saunders & Silverstein LLP of United States of America.

The Respondent is Modern Empire Internet, Ltd. of Hong Kong, SAR of People`s Republic of China, represented by John Berryhill, Ph.D. of United States of America.

2. The Domain Name and Registrar

The disputed domain name <snipeit.com> (the "Domain Name") is registered with Fabulous.com (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 2, 2009. On June 3, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 4, 2009, the Registrar 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" 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 June 9, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response June 29, 2009. The Response was filed with the Center at 04:16 Geneva time on June 30, 2009. The Panel accepts the representation made by the Respondent`s representative that, pursuant to paragraph 2(f)(iii) of the Rules, the Response, which was sent via email from the United States of America, was lodged in time.

The Center appointed Tony Willoughby, Darryl C. Wilson and W. Scott Blackmer as panelists in this matter on July 29, 2009. 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 was incorporated in Washington State, United States of America, on January 19, 2001 and is engaged in the provision of auction services. It is the registered proprietor of three United States service mark registrations upon which it relies in this administrative proceeding, namely:

No. 3,302,577 SNIPEIT! registered on October 2, 2007 (application filed August 23, 2006) in class 35 for "placing bids for others on online auctions. The claimed date of first use (by a predecessor of the Complainant) is August 18, 2000.

No. 3,376,095 ESNIPE (device mark) registered on January 29, 2008 (application filed on August 23, 2006) in class 35 for "placing bids for others on online auctions. The claimed date of first use is September 26, 2002.

No. 3,480,722 ESNIPE registered on August 5, 2008 (application filed on August 23, 2006) in class 35 for "placing bids for others on online auctions. The claimed date of first use (by a predecessor of the Complainant) is January 18, 2000.

The Complainant is also the proprietor of the domain name, <esnipe.com>, which was registered on April 17, 1999 prior to the incorporation of the Complainant.

The Domain Name was registered on January 28, 2002. It is connected to a website featuring advertising links to a variety of auction related sites and other sites.

The Respondent has been a respondent in at least 14 previous proceedings under the Policy.

5. Parties` Contentions

A. Complainant

The Complainant contends that the Domain Name is identical or confusingly similar to its above-mentioned service marks, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith within the meaning of paragraphs 4(b)(ii) and 4(b)(iv) of the Policy.

The essence of the Complainant`s contentions is that the Complainant and its predecessor have been using its registered service marks since the claimed dates of first use cited in USPTO records and that the Respondent registered the Domain Name with knowledge of the Complainant`s rights in respect of those marks and with intent to exploit them for its own commercial benefit and to prevent the Complainant from registering the Domain Name.

B. Respondent

The Respondent denies the Complainant`s contentions. The Respondent contends that it registered the Domain Name in January 2002 without knowledge of the Complainant`s claimed rights and several years before the Complainant`s registrations were applied for, let alone registered.

The Respondent criticizes the Complainant for having filed no evidence to substantiate its use claims and/or its claims to rights based upon prior use and observes that the Domain Name is made up of two ordinary dictionary words with an established meaning in the context of auction bidding. The Respondent contends that there is nothing to support the contention that the Respondent, a Hong Kong entity, had knowledge or ought to have had knowledge of the Complainant`s rights in January 2002 when it registered the Domain Name.

The Respondent contends that its track record under the Policy is of no assistance to the Complainant. Commonly, domainers will elect not to respond to a Complaint rather than contest it, if they have no desire to retain the domain name in issue. There is nothing here to support the existence of a "pattern" of the kind referred to in paragraph 4(b)(ii) of the Policy.

6. Discussion and Findings

A. General

According to paragraph 4(a) of the Policy, the Complainant must prove that:

(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and

(iii) The Domain Name has been registered and is being used in bad faith.

B. Identical or Confusingly Similar

While the Respondent provides a detailed analysis of the Complainant`s service mark registrations, primarily with a view to demonstrating that they post-date registration of the Domain Name and that claimed dates of first use are meaningless without supporting evidence, the Respondent does not dispute the existence of the Complainant`s registered rights.

For the purpose of paragraph 4(a)(i) of the Policy, one relevant registration will suffice and the Panel selects United States registration No. 3,302,577 SNIPEIT! registered on October 2, 2007 (application filed August 23, 2006) in class 35 for "placing bids for others on online auctions.

The Domain Name comprises the Complainant`s service mark No. 3,302,577 (absent the exclamation mark) and the generic domain suffix. In assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic domain suffix. The Panel is not persuaded that the absence of the exclamation mark, a character which cannot form part of a domain name, is sufficient to obviate confusion.

The Panel finds that the Domain Name is identical or confusingly similar to a service mark in which the Complainant has rights.

C. Rights or Legitimate Interests

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name on the basis that:

(a) the Complainant`s claimed dates of first use (January 18, 2000 and August 18, 2000) of two of its service marks, ESNIPE and SNIPEIT!, which were eventually registered on August 5, 2008 and October 2, 2007 respectively as United States service marks under no. 3,480,722 and 3,302,577 in class 35 for "placing bids for others on online auctions, pre-date registration of the Domain Name;

(b) the Complainant has never given the Respondent permission to use its service marks or any variants of them;

(c) the use of a domain name for the purpose of connecting it to a parking page of the kind to which the Domain Name is connected is not use in respect of a bona fide offering of goods and services for the purposes of paragraph 4(c)(i) and 4(a)(ii) of the Policy;

(d) the Complainant has been using its domain name <esnipe.com> for a functional website since January 20, 2001.

In light of the Panel`s finding under the next head, it is unnecessary for the Panel to come to a concluded view on this topic. Suffice it to say that the Panel is far from satisfied that the linking of a domain name to a commercial directory page featuring sponsored advertising links will necessarily lead to a finding that the use is not use of the domain name in issue in connection with a bona fide offering of goods and services for the purposes of paragraph 4(c)(i) and 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

For a complaint under the Policy to succeed a complainant must, as a starting point, establish to the satisfaction of the Panel that when the respondent registered the domain name in issue he/she was, at the very least, aware of the complainant`s trade mark rights.

The Policy was introduced in 1999 to address a very narrow and egregious form of abusive registration of domain names, namely cybersquatting i.e. the intentional adoption of the trade mark of another for a domain name with a view to exploiting the trade mark owner`s rights unfairly or causing damage to his/her business.

Paragraph 4(b) of the Policy sets out a non-exhaustive list of the vices that the Policy was introduced to address. They are four in number and the first three expressly refer to the respondent`s bad faith intent at time of registration (broadly, registration with intent to sell to the trade mark owner at a profit, with intent to block the trade mark owner from registering it and with intent to disrupt the trade mark owner`s business). The fourth example is paragraph 4(b)(iv) of the Policy, which is one of the paragraphs under which the Complainant claims registration and use in bad faith, and which reads:

"by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location."

This subparagraph, unlike the others, makes no reference to the respondent`s intent at time of registration of the domain name in issue. However, the majority of panelists have interpreted this sub-paragraph to require a showing of bad faith intent at time of registration notwithstanding its wording, for to do otherwise would undermine the clear wording of paragraph 4(a)(iii) of the Policy, which calls for bad faith registration and use of the domain name in issue.

The Complainant does not contend otherwise. The Complainant points to its claimed dates of first use of two of its service marks (in 2000) and its use from 2001 of its domain name, <esnipe.com>, for its website and contends that the Respondent must have been aware of that use when it registered the Domain Name. The Complainant contends that the Respondent`s intentions were twofold, first, to derive commercial gain in the manner contemplated by paragraph 4(b)(iv) of the Policy and, secondly, to block the Complainant from registering the Domain Name, having engaged in a pattern of such conduct (paragraph 4(b)(ii) of the Policy).

What evidence is there before the Panel to suggest that the Respondent, a Hong Kong entity, might have been aware of the Complainant`s uses of its service mark, ESNIPE, since January 2000, its service mark, SNIPEIT!, since August 2000 and its domain name <esnipe.com> since January 2001? There is no evidence at all. Insofar as the service marks are concerned the Complainant relies solely upon its claims to first use appearing in the USPTO records for its registrations. Thus they are bare assertions. Nor has the Panel been provided with any evidence of the Complainant`s use of its domain name, simply a Whois printout to demonstrate the date of registration in 1999.

It is not as if the nature of the Complainant`s service marks, when set alongside the Domain Name, is such that it would be reasonable for the Panel to make any assumptions in the Complainant`s favour. The Respondent has produced evidence to show that the word "snipe" has an established meaning in the context of auction bidding and is not of itself distinctive, which leaves open the strong possibility that entities in different parts of the world might quite likely come up with the same or similar snipe-related names independently of one another.

Moreover, mere use of a name of itself is not enough to give rise to trade mark or service mark rights and the Policy`s stated objective is to protect the rights of trade mark and service mark owners. While there is no dispute that the Complainant is now in possession of relevant service mark rights for the purposes of paragraph 4(a)(i) of the Policy, under this head of the Policy (paragraph 4(a)(iii)) it is important to know what was the status of the Complainant`s service mark rights as at January 28, 2002, the date of registration of the Domain Name. Were there any relevant rights in existence then, which the Respondent could reasonably be said to be targeting when it registered the Domain Name?

The Panel has nothing before it to enable it to answer that question. The sort of material that the Panel would have expected to see is set out in answer to Question 1.7 in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, which is to be found on the Center`s website and reading:

"1.7 What needs to be shown for the complainant to successfully assert common-law or unregistered trademark rights?

Consensus view: The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such "secondary meaning" includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographic area does not limit complainant`s rights in a common law trademark. Unregistered rights can arise even when the complainant is based in a civil law jurisdiction."

While the question is asked in the context of paragraph 4(a)(i) of the Policy, it is pertinent to paragraph 4(a)(iii) of the Policy as the question and first part of the answer at 3.1 of the Overview demonstrates:

"3.1 Can bad faith be found if the disputed domain name was registered before the trademark was registered/common law trademark rights were acquired?

Consensus view: Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant`s non-existent right."

However, as indicated, all that the Panel has before it are the bare unsupported claims to first use appearing in the USPTO records for the Complainant`s service marks, marks which were applied for four and a half years after registration of the Domain Name and registered five and six years after registration of the Domain Name.

The Respondent claims to have been using the Domain Name continuously for several years to connect to its website featuring advertising links to sites appropriate to "sniping" (whether of the auction or the rifle shooting variety), unaware of the existence of the Complainant`s claim to rights in its service marks, and the Panel has no reason to doubt that claim.

The Panel is not satisfied that the Domain Name was registered and is being used in bad faith.

For completeness, the Panel now addresses the Complainant`s reliance upon the fact that the Respondent appears to have been on the losing side as respondent in a number of previous proceedings under the Policy, although succeeding, it appears, in the only complaint to which it responded. The Panel has not reviewed those decisions, because the allegation under paragraph 4(b)(ii) of the Policy, which calls for a pattern of abusive conduct under the Policy can only succeed if the Panel is satisfied that when registering the Domain Name the Respondent was targeting the Complainant. For the reasons given, the Panel is not so persuaded.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Dated: August 5, 2009