Wolfram Group LLC has lost its attempt to grab the domain name wolframventures.com
Here are the highlights:
The Complainant is a provider of computational knowledge and mathematical software with offices in Paris, Tokyo, Lima, Linkoping, Bangalore, Boston and Champaign (Illinois). It has been operating under the name “Wolfram” since 1987. Perhaps, its most well-known service to the general public is the “Wolfram Alpha” search engine.
Amongst other things, the Complainant has registered WOLFRAM as a trademark in both the United States of America and as a Community Trademark:
– United States Trademark No. 3,740,375 registered on January 19, 2010;
– Community Trademark No. 006413397 registered on September 15, 2009.
The Respondent graduated as a chemist from the University of Manchester in the UK in 1999. In 2011 and 2012, he undertook a Master of Business Administration (MBA) at the Manchester Business School associated with the University of Manchester.
The Respondent registered the disputed domain name on November 13, 2012.
On November 14, 2012, the Respondent incorporated a company in the UK under the name Wolfram Ventures Ltd. This company was subsequently dissolved, apparently without ever trading.
On June 25, 2013, the Respondent incorporated a second company in the UK under the name Wolfram Consulting Ltd.
The Respondent was the sole director and shareholder of the “Ventures” company and is the sole director and shareholder of the “Consulting” company.
According to the Response, the Respondent has carried on a business of management consultancy, including providing consultancy services to venture capitalists and private equity, since completing his MBA. Although he had incorporated the companies mentioned above, the Response appears to state the Respondent was operating as a sole trader under the name Wolfram Consulting until the business began to be carried on through the “Consulting” company during the financial year ending June 30, 2014. Some limited evidence has been submitted confirming the Respondent’s claims to carrying on business as Wolfram Consulting.
It appears that the disputed domain name has never resolved to an active website. It does, however, resolve to a “passive” parking page which, according to a letter from the Registrar includes advertisements placed there by the Registrar without any active involvement by the Respondent.
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
The Complainant relies on its reputation in its trademark and what are said to be admissions made by the Respondent in communications before the Complaint was filed to show that the Respondent was well aware of the Complainant and its trademark when he registered the disputed domain name.
The Complainant also relies on the dissolution of the “Ventures” company without trading and the use of the disputed domain name to resolve to a “parking” page which has “pay per click” advertisements.
In addition, the Complainant relies on the Respondent’s refusal to transfer the disputed domain name to the Complainant for a sum of USD500 or USD2,000. Instead, the Respondent suggested that GBP17,500 or even GBP200,000 would be required.
According to the Respondent, he registered the disputed domain name as one of four domain names for planned business ventures.
The Respondent says that the disputed domain name and the “Ventures” company were registered as the vehicles for his planned business of providing consultancy services for venture capitalists and private equity. This was said to be a second line to his general consultancy business.
According to the Respondent he initially carried on his general management consultancy business as a sole trader under the name Wolfram Consulting. Although he incorporated the “Consulting” company in 2013, he says he did not start using it actively as his business vehicle until some point in the financial year ending June 30, 2014. He says he dissolved the “Ventures” company as it was not necessary for the scale of his operations and maintaining the company registration was incurring unnecessary costs such as accounting fees associated with annual reporting requirements and the like.
The Panel first notes that the Respondent registered the disputed domain name and both the “Ventures” company and the “Consulting” company long after the Complainant commenced operations under its name and also a number of years after the Complainant registered the trademarks referred to in section 4 above.
In such circumstances, the facts of the registration of these company names or the Respondent’s business operations under the name “Wolfram Consulting” so many years after the Complainant are not in themselves sufficient to confer rights or legitimate interests or to constitute good faith under the Policy.
The Respondent categorically denies that he was aware of the Complainant, its trademark or its services when he registered the disputed domain name and adopted “Wolfram Consulting” for his business.
The Respondent points out that “wolfram” is the Latin or former name for tungsten.
In acknowledgement of this, tungsten is still identified by the letter “W” in the periodic table. The Respondent also points to a number of other companies and businesses which have been registered or operate under the name “Wolfram” and which are apparently not associated with the Complainant. In this context, the Respondent also refers to what he considers to be the very different fields of operation of his business and the businesses of the Complainant and its subsidiary.
As noted above, the Complainant says the Respondent’s actions were done with knowledge of the Complainant and its business. It points in particular to a statement in an email from the Respondent in which the Respondent stated that he was:
“a small businessman who is also – like your founder – a scientist, attempting to make a few small changes to the world around us ….” (emphasis supplied)
This does suggest awareness of the Complainant and its founder.
The Respondent seeks to explain this on the basis that he found out something about the Complainant and its founder through research the Respondent undertook following receipt of the initial approach from the Complainant.
While having more than a few reservations about the explanation advanced by the Respondent, the Panel considers that it is ultimately not appropriate to go behind the Respondent’s express denials of awareness of the Complainant or its trademark on the record in this case. These proceedings are proceedings on the papers without the benefit of cross-examination and the opportunity to observe and assess witnesses. The claimed derivation of the disputed domain name and the Respondent’s “consulting” trading name are not implausible having regard to the Respondent’s background in chemistry and the existence of a number of other companies and businesses which also apparently base themselves on “Wolfram”. Whether that would remain the case after further forensic examination of the kind available in court proceedings is another matter.
Accordingly, on the record in this case, the Complainant has not established that the disputed domain name was registered in bad faith. The Complaint therefore cannot succeed under the Policy.