8×8, Inc. (“Complainant”), owner of the domain name 8×8.com just won a three member panel against 8×8 Mediacom Services Ltd represented by Ari Goldberger of Esqwire.com, New Jersey, USA on the domain name 8×8.net which was registered back on August 8, 2001.
Complainant states that it provides hosted business VOIP phone services and a wide variety of cloud-based communications services and that it has been using the 8X8 trade mark since at least as early as 1996 and that over the past 17 years it has invested a significant amount of time and resources to market its services under the 8X8 mark, and as a result has developed a strong reputation with substantial goodwill and customer loyalty.
Complainant advises that it owns U.S. federal trade mark applications and registrations for the mark 8X8 and operates a website at www.8×8.com
Respondent states that it registered the Domain Name because it is the domain name equivalent of the common computing, communication and digital information term “byte by byte,” and is derived from the fact a “byte” is the most fundamental increment of data used throughout computing and digital communications — consisting of 8 bits containing 0 or 1’s.
Respondent says that almost all commercial computing and digital communications equipment and services process data incrementally byte by byte, thus the byte by byte or 8×8 terminology. This sequential processing of data byte by byte or “8×8” is the basis for world-wide technology and is the fundamental process shared by all computers, our electronic devices and digital communications.
The English language character “x” is the commonly used abbreviation for the word “by” and in the world of computing and communications technology abbreviations incorporating numerals and English language characters are used frequently. Respondent contends that the Domain Name was registered solely because it is the numerical representation for the term “byte by byte.”
Respondent argues that it registered an available domain on August 8, 2001 when it expired and became available, over 12 years ago, along with other computing and digital related domain names.
The Panel notes that the website housed at Respondent’s <8×8.net> domain name features links to websites offering telephone and VOIP services, which is one of the industries in which Complainant operates. Those links are thus links to Complainant’s competitors and it must be assumed that Respondent profits from click-through fees associated with the links displayed on its site. Moreover, although the Panel has given careful consideration to Respondent’s submissions in this regard, essentially Respondent is responsible for the content of the website.
The Panel holds therefore that Respondent has not used the Domain Name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Respondent’s argues that Domain Name is what is referred to variously as a common, dictionary, generic or descriptive expression and that it is being used for purposes that come within the meaning of that expression. Respondent submits that it registered the Domain Name because it refers to a common computing term.
Respondent has produced several references and sources intended to support its contentions concerning the general principle and the origin and meaning of the expression “8×8” and that evidence has been helpful to the Panel in its deliberations.
The Panel agrees with Respondent on the general principle.
The Panel also accepts that there is evidence to the effect that “byte-by-byte” is an expression used in computer and related terminology and that, as there are 8 “bits” in a “byte,” the sequential processing of data is carried out, in one sense, on the basis of sequences of 8 by 8 bits, meaning “byte-by-byte.”
However, that does not mean that the expression “8×8” itself necessarily is or has become a common, dictionary, generic or descriptive expression.
The Panel has examined closely the evidence tendered by Respondent to show that the expression “8×8” is in common usage, even common usage among those involved in “computing, programming, or digital communication” but is unable to reach that conclusion on the evidence adduced.
In any event, the submission of Respondent is that the Domain Name is “the equivalent” of the expression “byte-by-byte” and the Panel would require evidence of the nature of the expression actually used in the Domain Name, rather than its broad equivalent, before it could accept Respondent’s position. Thus, in this respect also, the evidence falls short of the evidence the Panel would need to enable it to conclude that the Domain Name is a common, dictionary, generic or descriptive expression as alleged.
As noted above, on November 13, 2013 the Panel provided Respondent with the opportunity to respond to Complainant’s memorandum of November 4, 2013. It did not avail itself of this opportunity and the reasonable inference is that it had no further basis to refute Complainant’s assertions.
The Panel therefore finds that Respondent has not rebutted the prima facie case and is obliged to find that Respondent has no rights or legitimate interests in the Domain Name.
The Domain Name resolves to a website featuring links to third-party websites, some of which offer products and services that directly compete with those offered by Complainant. The Panel therefore holds that Respondent’s registration and use of the <8×8.net> Domain Name illustrates bad faith pursuant to Policy ¶ 4(b)(iii).
This Panel has already concluded that Respondent has not submitted sufficient evidence to prove that the expression “8×8” is a generic or common word for the goods of Respondent’s interest. In the absence of other evidence, the Panel is obliged to find that the choice of a domain name identical to a registered trade mark can be considered an act of bad faith.
The Panel also finds that Respondent has exhibited bad faith within the meaning of Policy ¶ 4(b)(iv) by creating a likelihood of confusion with Complainant in order to attempt to attract intentionally, for commercial gain, Internet users to Respondent’s <8×8.net> web site.
The Panel initially had doubts on the material before it whether Complainant was well enough known by August 8, 2001, the date when the Domain Name was registered, to enable it to conclude that Respondent registered the Domain Name with Complainant in mind. To clarify that situation the Panel issued an Order requiring Complainant to provide “any relevant evidence in its possession to show the established presence of Complainant in the industry and its use of the 8X8 trade mark or name prior to August 2001 (namely the date of registration of the Domain Name by Respondent).” Complainant complied with this order and provided evidence of the presence of Complainant and use of Complainant’s name back to 1996. Complainant also produced a Declaration by its attorney to the effect that he had acted for Complainant since 1996 and attended to its 8×8 trade mark and that Complainant had used the 8×8 trade mark in its business since that time.
The Panel has concluded on the basis of this evidence that on the balance of probabilities the Domain Name was registered with Complainant’s name and trade mark in mind.
Doctrine of Laches
Respondent has also argued that the proceedings should be barred because of the doctrine of laches. There
In the instant case, the Panel notes that Complainant has not argued that laches is inapplicable in all cases, but it argues that it is not appropriate to apply it to the facts of the present proceedings. In that regard, Complainant points to the fact that its action has only been prompted by the use Respondent is making of the Domain Name, that Respondent has not provided evidence of related telecommunications business in which it is engaged and that the only use made by Respondent of the Domain Name is illegitimate as, Complainant submits, it has used the Domain Name to attract Internet users to competitors of Complainant. Taking everything into account, the Panel has concluded that, on balance, this is not an appropriate case to reject the claim on the basis of laches or delay.