AnyDoc.com Saved In UDRP Despite Predated Trademark and Non-Use

Microsystems Technology, Inc. d/b/a ANYDOC of Tampa, Florida just lost a UDRP on the domain AnyDoc.com which is owned by Matthew Lamb, despite having a trademark on the term since 2004 and despite the fact that since the domain holder acquired it at SnapNames.com in  2006 the panel found the domain name usually did not resolve  and when it did, it went to a parked page with some links to products which compete with the trademark holder.

Actually it seems the 6 year passive holding of the domain name without it resolving saved the domain from being taken away and awarded to the trademark holder.

Any parking done on the domain seems to have been done at the registrar level which the panel forgave

Here are the relevant facts and findings by the three member panel:

“The Complainant is a Florida business corporation that offers automated document and data solutions. The Complainant does business under the name “AnyDoc”, and the Complaint states that the Complainant’s software products have been branded with the ANYDOC mark since March 24, 2003, when the product line was rebranded.”

The Complainant’s site is anydocsoftware.com

“Typically include the ANYDOC mark with other descriptive terms, such as “OCR for ANYDOC”, “ANYDOC Invoice”, and “ANYDOC Claim”. The Complainant has offices in Florida, the United Kingdom, Switzerland, and Germany, and it also sells its software products globally through its website”.

The Complainant holds United States Trademark Registration No. 2805085 (registered January 13, 2004) for the standard-character mark ANYDOC. This is also the basis for an International Registration of the mark under the Madrid System in several other countries.”

“According to the Registrar’s WhoIs database, the Domain Name was created on October 12, 2001. It does not currently resolve to an active website. ”

“The Panel notes that archived screenshots found through the Internet Archive Wayback Machine at “www.archive.org” show that in the period 2002 – 2006 the Domain Name resolved to a website for an English company offering print and online customer communications services, variously styled as “AMIC Solutions Limited”, “dsiAMIC”, “AnyDoc”, or “dsiAnyDoc”. ”

“The latest of these screenshots is dated May 1, 2006. Subsequent screenshots in 2006 show that the Domain Name resolved to an error message, “No web site is configured at this address”, and then, by December 2006, to a pay-per-click (“PPC”) advertising landing page. :

“A single archived screenshot for the Domain Name in February 2011 also shows a PPC advertising landing page with “sponsored listings” for a variety of goods and services. The links prominently featured in the main body of the page are for document scanning and document management products, at least some of which appear to compete with those offered by the Complainant.”

“The Response recounts that the Respondent began registering domain names in 2003, “with the idea of accumulating enough domains to permit him to create an Internet media conglomerate.”

“The Respondent says that he and a partner formed a California corporation for this business and focused initially on developing a website for ememorials or end-of-life memory preservation.”

“The Respondent’s “larger business plan” was to develop topical informational websites. According to the Response, the Respondent purchased the Domain Name in November 2006 (the Response attached a receipt for the purchase from Snapnames), and this is consistent with the Internet Archive screenshots showing that the Domain Name was no longer used for the English commercial website by that time”.

“The Respondent states that the Domain Name was to be used for a website helping Internet users locate medical doctors in a region or specialty. ”

“This would compete with online services offered by others, such as those found at “www.docasap.com”, where “doc” is used, as in the Domain Name, to refer to doctors, not documents. ”

“The Respondent registered other domain names that also would have been used for a planned “Medical Services Network”, including <usdentistfinder.com> and <orthodontistlocator.com>.”

“The Respondent says that his new company engaged software developers but then ran out of funds to develop any websites. The Respondent’s corporation was dissolved in 2007. The Respondent maintains the various domain name registrations “in the hope of reviving the business plan” and denies ever listing them for sale”.

“The parties agree that in 2010 the Complainant’s Manager of Information Services contacted the Respondent about purchasing the Domain Name.”

“The Respondent denies any prior awareness of the Complainant. The Respondent replied that he was not interested in selling the Domain Name, but the Complainant asserts that they subsequently discussed a purchase price. However, no agreement was reached. It is undisputed that the communications in 2010 did not mention the Complainant’s trademark claims.”

“In October 2012, counsel for the Complainant inquired about purchasing the Domain Name through the Registrar’s Domain Buyer service. The Respondent initially declined, but the parties subsequently exchanged emails about a proposed purchase of the Domain Name for USD 6,500.”

“The parties disagree on whether an agreement was reached and then rescinded, but it is clear that the Respondent ultimately declined to sell the Domain Name for that price. This UDRP proceeding followed.”

“It is undisputed that the Respondent allowed the Domain Name for a time resolve to a PPC advertising landing page.”

“This could be considered a use in connection with the bona fide offering of goods and services under certain conditions, such as presenting advertising relevant to the generic rather than trademark value of the Domain Name.”

“However, the Respondent does not claim any deliberate effort to establish such a topical advertising portal. ”

“The Respondent explains that the landing page was linked automatically by the Registrar to the inactive Domain Name and denies receiving any revenues from this activity. ”

“Thus, the temporary use of the Domain Name for PPC advertising does not reflect the Respondent’s rights or legitimate interests in the Domain Name.”

“The Respondent has described business plans to use the Domain Name for an informational website for which the Domain Name would be relevant as a generic reference to locating “any” doctor. The Respondent has admittedly never developed such a website, however, and the record is slim when it comes to evidence of “demonstrable preparations” for such use. ”

“Perhaps the only concrete evidence is that the Respondent also registered two other domain names that would be relevant for those seeking to locate other medical professionals, dentists or orthodontists, respectively. ”

“In the Panel’s view, this is not sufficient to meet the Respondent’s burden of showing “demonstrable” preparations to use the Domain Name for the legitimate purpose described in the Response.”

“The Panel concludes that the second element of the Complaint has been established.”

“The Respondent denies being aware of the Complainant or its brand in 2006, and the Response includes the mandatory signed certification of completeness and accuracy. ”

“The Respondent’s denial is plausible. ”

“The Complainant’s mark is based on two common words, which have generic as well as trademark signification. The Complaint refers to the “fame” of the mark, but the evidence in the record relates to industry recognition and website awards rather than to advertising in mass media, stories in popular print and broadcasting outlets, or sales in retail chain stores. ”

“The Complainant’s branded products are specialized kinds of business software, not consumer items. ”

“There is no evidence that the Respondent was ever involved in the purchase or sales of such business software, and the stated business plan for the Domain Name concerned a consumer information website about medical professionals, an entirely unrelated business.”

“There was no reported contact between the parties until more than three years after the Domain Name was registered. ”

“Thus, the Panel finds that there was no particular reason that the Respondent should have been aware of the Complainant’s brand in 2006.”

“The Complainant cites UDRP decisions finding bad faith on the basis of “constructive notice” of a registered mark (particularly if both parties are located in the United States, where the constructive notice principle has been applied in trademark law), constructive knowledge (the domain name registrant “knew or should have known” about the mark), or “willful blindness”. As explained in WIPO Overview 2.0, paragraph 3.4, most panels have declined to find bad faith solely on the basis of constructive notice or similar grounds, and this Panel similarly concludes that the Policy requires more to establish bad faith than the existence of a registered trademark. Moreover, this proceeding does not involve a factual pattern similar to those that typically ground a finding of bad faith on the theories of constructive notice, constructive knowledge, or willful blindness, such as a record of cybersquatting, irresponsible bulk registrations, famous brand names, highly distinctive marks, or other indications that a denial of awareness of the mark is improbable or inexcusable.”

Id., paragraph 3.4. The few examples cited by the Complainant of questionable domain name registrations by the Respondent are inconclusive, and there is no indication in the record that a court or UDRP panel has determined that the Respondent is a cybersquatter or engaged in automated bulk registrations. The mark at issue is not demonstrably “famous,” the Domain Name at issue consists of dictionary words, and the Respondent plausibly selected it for a relevant potential use. In the Panel’s view, the facts of this case do not warrant an inference of bad faith on the basis of constructive notice, constructive knowledge, or willful blindness.

“The Panel is also inclined to credit the Respondent’s denial of any intention, when he registered the Domain Name, to sell the Domain Name to the Complainant or a competitor. ”

“The Respondent denies awareness of the Complainant or its mark at that time and offers plausible reasons for registering the Domain Name for its generic rather than trademark value. ”

“It is undisputed that the Respondent held the Domain Name for years without listing it for sale or approaching the Complainant or a competitor.”

“It was the Complainant that approached the Respondent about purchasing the Domain Name in 2010 and 2012. ”

“Hence, the Panel is not persuaded that the Respondent acquired the Domain Name “primarily” to sell or lease it to the Complainant.”

“Nor is it likely, in the Panel’s opinion, that the Respondent acquired the Domain Name primarily to disrupt the Complainant’s business, a conclusion in some UDRP cases involving respondents that are competitors, disgruntled former employees, or protestors. The Respondent plausibly denies knowing about the Complainant and, so far as the record reveals, never engaged in a business competing with the Complainant.”

“The Complainant uses a different domain name for its online business and had done so for several years preceding the Respondent’s acquisition of the Domain Name. ”

“The Respondent has held the Domain Name for six years without setting up a competing website. ”

“Thus, there is no evident disruptive effect, and the Panel does not find that the Respondent acquired the Domain Name primarily to disrupt the Complainant’s business.”

“”These examples do not describe the facts in the current proceeding. The Panel notes as well that bad faith findings based on “passive holding” tend to involve highly distinctive and well-known marks such as TELSTRA, where the panels often remark that it is difficult to imagine a reason for choosing the disputed domain name other than in reference to the well-known mark.”

 

Comment Policy:

TheDomains.com welcomes reader comments. Please follow these simple rules:

  • Stay on topic
  • Refrain from personal attacks
  • Avoid profanity
  • Links should be related to the topic of the post
  • No spamming. Listing domains, products, or services will get the comment deleted

To report spelling errors or other mistakes, please email raymond@thedomains.com instead of adding a comment. We thank you for the heads up, but want to keep the discussion on topic.

We reserve the right to remove comments if we deem it necessary.

Join the Discussion