A Telefire Fire & Gas Detectors Ltd. of Petach Tikva, Israel just lost a one member panel UDRP decision on the domain name Telefire.com in what in my opinion was a unnecessarily long opinion.
The Panelist basically calls out the Complainant attorney’s for doing a poor job of presenting the case and providing the panel with evidence that would have potentially changed the result and specifically for not using DomainTools.com to track ownership of the domain name over the years.
Here are the relevant facts and finding by the one member WIPO panel:
The Complainant is a company organized and registered under the laws of Isreal (sic) founded in 1979.
It specializes in the development, manufacture and sale of fire alarms and automatic extinguishing systems.
Its products have been installed in various buildings around the world, including Singapore and the Philippines.
The Complainant is the owner of various trade marks and applications for trade marks that take the following form:
Israeli trade mark no. 232876 in class 9 and applied for on September 16, 2010;
Community trade mark no 011471562 applied for on January 8, 2013 and which proceeded to registration on June 7, 2013 (i.e. 2 days after the Complaint was filed in these proceedings); and
Chinese trade mark application no. 12053285 in class 9 dated January 16, 2013.
The Complainant has also been the owner since December 1998 of the Domain Name , which it has used for a website from which to promote market and sell its products.
Telefire.com was first created on May 7, 2004.
Until recently, only a domain name parking page was being displayed from the Domain Name. On May 2, 2013 the Complainant sought to contact the owner of the Domain Name through Go Daddy’s “Domain Buy” service.
At some point thereafter the Domain Name may have been briefly used to display a “free Starter Web Page” advertising “Ecoproduct Co., of Mayfair Gardens, Commack NY, USA”.
On May 15, 2013 the Complainant received an email from GoDaddy’s “Domain Buy” service which stated as follows:
“We have successfully contacted the current domain registrant for domain TELEFIRE.COM. The domain registrant is giving serious consideration to selling TELEFIRE.COM but has not yet committed to entering negotiations. Once the domain registrant expresses an interest in reviewing offers, we will open negotiations with the guidelines you have set and contact you with updates and/or counter-offers that may exceed your maximum bid amount”
A further email from GoDaddy’s “Domain Buy” service later that same day stated:
“The current registrant of the domain telefire.com has indicated that they may be willing to sell the domain, however, they declined your maximum offer and are asking for $70,000.”
Unfortunately, for the Complainant there is a more fundamental problem in this case.
To succeed in proceedings, a complainant must show not only that there has been bad faith use but also bad faith registration.
The reason why this is a problem for the Complainant is that the Domain Name was initially registered in 2004, which pre-dates by many years any of the trademarks relied upon by the Complainant in this case.
That need not be fatal for the Complainant.
If the Complainant could credibly show that it had nevertheless developed something akin to unregistered trade mark rights, or even that it was using the term “Telefire” in a trade mark sense, that might answer this point.
However, none of this is alleged in the Complaint.
Although the Complainant refers to the fact that it was founded in 1979, when it first started to use the “Telefire” name is neither explained nor evidenced.
Regardless of the exact state of the Complainant’s rights, it would usually also be necessary to show that the Respondent must have known of those rights at the time of registration.
Although there is evidence that the Complainant has undertaken business in various parts of the world, no explanation is given as to how large that business is or was at that time. Certainly, from the way that the Complaint is structured it is not possible to draw any inference as to the Respondent’s likely knowledge. No other evidence is presented from which that knowledge might be inferred (for example, evidence that “Easy Property” or “Park Sanghoon” has a track record of registering the “.com” equivalents of “co.il” domain names).
Perhaps it might be said that the term “Telefire” is of itself so inherently unusual and distinctive that the only possible inference is that it must have been registered with the Complainant in mind. However, this is not what the Complainant contends and as the Panel will go on to explain, this may not be correct.
The preceding discussion assumes that the relevant date so far as registration is concerned is 2004.
This is the date mentioned in the Response and the Complainant does not appear to take issue with this. However the Panel is not sure that this is right. Significantly, historic WhoIs records for the Domain Name available on the Domain Tools website suggest that:
(a) as at February 7, 2008 the Domain Name was registered in the name of “TeleFire” in Mill Valley, California.
(b) from at least June 19, 2008 the Domain Name was registered in the name of “Visel Ce” of Commack, New York State;
(c) from at least April 10, 2012 the Domain Name is first recorded as registered in the name of “Young Park” of Commack New York State; and
(d) from February 26, 2013 the Domain Name is first recorded as registered in the name of “Easy Property Management Group”.2
6.37 The reason why this is significant is that the prevailing view among panelists is that where a domain name is transferred into the name of a different registrant, there is a fresh registration and that it is from this fresh registration date that the issue of bad faith is to be determined (see paragraph 3.7 of the WIPO Overview 2.0). This Panel has previously expressed the view that this is so even where the identity of the person who has underlying control of the domain name remains the same (see ehotel AG v. Network Technologies Polska Jasinski Lutoborski Sp.J., WIPO Case No. D2009-0785).
6.38 If this is right, the date upon which the question of bad faith registration is to be assessed is at some point in or around February 2013, although the Panel cannot help but wonder whether the facts that (a) the Domain Name was registered prior to that date in the name of “Young Park” and (b) that “Park” also forms part of the name of the claimed underlying registrant in this case, is simply coincidence or suggests that the two “registrants” are somehow connected.
6.39 Further, the Panel notes that the Complainant contends that after the registrant was approached in early May 2013, a web page appeared from the Domain Name that advertised a business in Commack, New York State. This is the address of a number of the previous registrants. Unfortunately, no evidence is offered to support that claim. But if such evidence was provided, can it be inferred from this that the underlying registrant for the Domain Name changed after the Domain Name was transferred into the name of “Easy Property”?
6.40 Further, material available on the Internet Archive and in the Screenshot archive of Domain Tools suggests that the early use by “Telefire” in California was use in connection with a genuine business unconnected with the Complainant. How and in what circumstances it came into the hands of “Easy Property” or “Park Sanghoon” is not clear, but even if either of these persons are dealers in domain names as the Complainant suggests, it does not follow that the reason why the Domain Name was acquired is because of its associations with the Complainant (although this in turn raises questions as to whether the circumstances of acquisition were such that there was nevertheless “wilful blindness” of the Complainant’s rights at the time of the acquisition as is discussed in paragraph 3.7 of the WIPO Overview 2.0).
Despite the requirements under the Policy (to demonstrate both registration and use in bad faith), and the unusual elements of the WhoIs record and supplemental submissions, none of these facts of arguments forms part of the Complainant’s case.
One way to address these issues would have been to set out the above statements in a procedural order and to seek the further comments of the parties in this regard. On reflection, the Panel does not think this is the right way to proceed. The issuing of procedural orders is not an uncontroversial practice. The complaint is that they can give a complainant a “second bite of the cherry” in perfecting its case that is unfair in circumstances where it is the complainant who can choose when to issue proceedings and how much time it spends preparing its case, and it is the complainant who bears the burden of proof in the proceedings. This Panel has perhaps issued more procedural orders than most in order to do what it considers to be justice in any particular case, but usually this has been in circumstances where a small number of facts or issues require clarification. In the present case an order would effectively amount to a suggestion that the Complainant construct a case very different from that originally put forward in the Complaint and to ask the Respondent to then deal with that completely new case.
Further, that new case would have been easily assisted with material available in Domain Tools’ historic WhoIs records and material available on the Internet archive and/or Domain Tools’ screenshot archive.
This database will be familiar to any lawyer who professes to have expertise in the area of domain name disputes and ordinarily one would expect a complainant’s lawyers to have checked those records as a matter of course.
The Panel is reluctant to issue an order which would invite the Complainant to reformulate its case on the basis of this material, when had it wanted to rely on this material previously, it could have done so.
This is particularly so in this case where it is clear that the Complainant’s lawyers were aware of the existence of Domain Tools given their reliance upon a print out from the Domain Tools website.
In the circumstances, and bearing mind that it is the Complainant that bears the burden of proof in proceedings under the Policy, the Panel dismisses this Complaint.