Polytech.com : A 25 year old #domain hit with a #UDRP – What happened?

Polytech.com is a 25 year old domain name, registered in 1995.

A Danish company, PolyTech A/S, filed a UDRP at the National Arbitration Forum, claiming that their trademark registrations from 2018 and 2019 should grant them the domain. The operate from Poly-tech.DK.

The Complainant attempted to buy Polytech.com in 2017 and the Respondent sought $100,000 dollars. Polytech is a compound of two Greek words that mean “of many crafts.”

The Complainant’s assertions were objected to by the Respondent, who registered the domain in 1995 for his father’s company.

A three member panel delivered a decision in favor of the Respondent, but did not grant them a finding of Reverse Domain Name Hijacking as requested. Full details on the UDRP decision for Polytech.com follow:

PolyTech A/S v. Richard Secor / TechSolutions LLC

Claim Number: FA2003001887223

PARTIES

Complainant is PolyTech A/S (“Complainant”), represented by James R. Duby of DUBY LAW FIRM, Michigan, United States. Respondent is Richard Secor / TechSolutions LLC (“Respondent”), represented by Roberto Ledesma of Lewis & Lin LLC.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is , registered with GoDaddy.com, LLC.

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

The Honourable Neil Anthony Brown QC (Chair), David S. Safran Esq., and Paul M. DeCicco Esq. as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on March 6, 2020; the Forum received payment on March 6, 2020.

On March 9, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the Policy”).

On March 10, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 30, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@polytech.com. Also on March 10, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

A timely Response was received and determined to be complete on March 30, 2020.

On April 7, 2020, Complainant filed and served an Additional Written Submission.

On April 7, 2020, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC (Chair), David S. Safran Esq. and Paul M. DeCicco Esq. as Panelists.

On April 9, 2020 Respondent filed and served an Objection to Additional Submission including a reply to Complainant’s Additional Written Submission.

Pursuant to Rule 7 of the FORUM’s Supplemental Rules, the Panel exercises its discretion to accept and consider Complainant’s Additional Written Submission and the Respondent’s Objection to Additional Submission including its reply to Complainant’s Additional Written Submission.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant made the following contentions.

Complainant, Polytech, is a Danish company which is a solution-oriented supplier with a global presence. Complainant has rights in the POLYTECH mark based upon its registration of the mark with the World Intellectual Property Organization (“WIPO”) and United States Patent and Trademark Office (“USPTO”) (e.g. WIPO Reg. No. 1,432,989, registered September 14, 2018; USPTO Reg. No. 5,899,558 registered November 5, 2019).

Complainant has and continues to use the POLYTECH mark in connection with goods and services including wind turbines and structural parts and has done so in interstate commerce since at least as early as April 15, 1994.

The Respondent registered and/or is using the disputed domain name and the available WHOIS information for the registration is attached to the Complaint as Annex B.

The disputed domain name was not registered or created earlier than June 19, 1995.

Respondent’s domain name is identical and/or confusingly similar to Complainant’s POLYTECH mark, as Complainant has rights to its POLYTECH mark and the domain name fully incorporates the mark in its entirety, adding only the “.com” generic top-level domain (“gTLD”).

Respondent has no rights or legitimate interests in the domain name. The Respondent registered the domain name after the date when the Complainant started using the POLYTECH mark on April 15, 1994 and the Respondent’s date of first registration and/or use was no earlier than June 20, 1995.

Respondent is not commonly known by the disputed domain name nor has Complainant authorized or licensed Respondent to use the POLYTECH mark in any manner. Rather, Respondent is/was intentionally using the domain name for commercial gain and/or to disrupt the business of Complainant by misleadingly diverting consumers to the domain name associated with unauthorized links to unrelated products and services and it is believed that Respondent was/is receiving pay-per-click revenue in connection with the same which is not a use in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.

Respondent registered and is using the domain name in bad faith. Respondent is using the Complainant’s mark to attract the public to the domain name associated with unauthorized links for which it is believed he is/was receiving pay-per-click revenue.

Also, Respondent is and has used the domain name to intentionally divert for commercial gain internet users to the domain name unauthorized links for which it is believed the Respondent is receiving pay-per-click revenue.

Complainant cited a number of prior UDRP decisions which it maintains support its position.

Complainant submitted that an order should be made transferring the domain name to the Complainant.

B. Respondent

Respondent made the following contentions.

Respondent does not dispute that the domain name is similar to the trademark, although the similarity is unintentional. The term “polytech” is a common term in many different industries, and at least ten other companies have registered similar POLYTECH marks with the USTPO.

Respondent has rights and legitimate interests in the disputed domain name.

The domain name is a portmanteau of Respondent’s father’s company Polymer Technology Associates Inc. and it was created by taking the terms “poly” and “tech” from the company name. That was the reason why the Respondent registered the domain name and it was not to take advantage of the Complainant’s trademark.

The disputed domain name was registered with intent to use it for this existing business which predated the domain name’s registration and which constitutes demonstrable steps to use the domain name.

The term “polytech” is commonly used in different industries, particularly in education. The Complainant therefore does not have exclusive rights to use the term across all fields.

Respondent had never heard of the Complainant or its trademark when he registered the domain name in 1995. Respondent is not in the wind turbine industry as is the Complainant.

Respondent intended to use the domain name for his father’s company and his current intention is to use it himself for a site that promotes education in STEM fields. He has no intention of using it for anything related to wind turbines.

Complainant has not put forward any evidence that Respondent is seeking to capitalize on the Complainant’s goodwill.

Respondent did not target the Complainant or its mark.

Complainant waited 25 years to initiate this proceeding. Further, Complainant’s attempt to purchase the domain name in 2017 for $100,000 from Respondent shows that Complainant believes Respondent has rights and legitimate interests in the disputed domain name.

Respondent registered the domain name in good faith as Respondent intended to use the disputed domain name for the legitimate business referred to above. Respondent did not register the domain name with the intent to sell it or disrupt, target or compete with Complainant’s business. Respondent’s use of sponsored links is not indicative of bad faith as the links all relate to education, which is related to Respondent’s intentions for the disputed domain name. Further, there is no evidence that Respondent registered the disputed domain name with bad faith intentions.

Finally, Complainant engages in reverse domain name hijacking. That is particularly so as the Complainant tried but failed to buy the domain name and then resorted to filing this proceeding.

The Response is accompanied by a Declaration by the Respondent dated March 27, 2020.

C. Additional Submissions

Complainant

There are several reasons why the Respondent has no rights or legitimate interest in the domain name. They are:

1. The Respondent has not made an active use of the domain name for some 25 years.

2. For the last 4 years until the present time, Respondent has caused the domain name to resolve to pay-per-click listings.

3. Although the Respondent claims that he registered the domain name because of the name of his father’s company Polymer Technology Associates, Inc., that argument fails as that company was the prior registrant of the domain name, a different company and not the Respondent in this proceeding. Moreover, none of the submitted evidence supports “demonstrable preparations” by the Respondent, the alleged steps to use the domain name by the Respondent’s father were never acted on or fulfilled and the Respondent’s declaration is not relevant credible supporting evidence.

4. Respondent has shown no demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services.

5. Complainant has prior use rights to the POLYTECH mark and based on Respondent’s use of European Union (EU) providers, respondent was clearly aware of the EU business community, including the Complainant. The domain name was transferred to the Respondent on or after October 8, 2001, approximately 7 years after the Complainant was founded, making it more likely than not that the Respondent was aware of the Complainant and its use of the POLYTECH mark. Moreover, the Respondent’s hosting provider originates in Munich, Germany, confirming that the Respondent must be very familiar with the EU business community, which includes the Complainant.

The Respondent registered and used the domain name in bad faith. That is so for the following reasons.

1. Inactive use of the domain name for at least 25 years is bad faith.

2. Respondent’s offer to sell the domain name for $100,000 is far in excess of out of pocket costs and evidences Respondent’s registration and use of the domain name in bad faith.

3. Laches is not an applicable defense and should not be considered.

4. The date the Respondent became the registrant of the domain name is the date to be used for the purposes of assessing bad faith, not the date of the Respondent’s father’s separate company’s registration date.

The Complainant also summarized its case, cited prior UDRP decisions on which it relied and submitted that that the UDRP supported a finding for the Complainant .

Respondent

1. Respondent objects to the Complainant’s Additional Written Statement.

2. The bulk of the Complainant’s submission either reiterates or amplifies arguments already made in the Complaint. The arguments it contains are speculative.

3. Respondent registered the disputed domain name on June 20, 1995 and for his father’s company. The Complainant’s submission that Respondent registered it in 2001 is contrived to suit the Complainant’s new submission that the Respondent became the registrant only to target a Danish wind turbine company.

4. There is no significance in the fact that the Respondent has used a German hosting company.

5. A case has been made out for a finding of Reverse Domain Name Hijacking.

FINDINGS

1. Complainant is a Danish company engaged in the wind turbine industry and the provision of related goods and services.

2. Complainant has established its trademark rights in the POLYTECH mark by virtue of registration of the mark in WIPO registration No. 1,432,989, registered on September 14, 2018 and also by virtue of registration of the mark with the United States Patent and Trademark Office in registration No. 5,899,558, registered on November 5, 2019).

3. Respondent registered the disputed domain name on June 20, 1995.

4. The disputed domain name is identical to the POLYTECH mark.

5. The evidence shows that the Respondent has a right or legitimate interest in the disputed domain name.

6. The evidence shows that the Respondent did not register and use the disputed domain name in bad faith.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

It is also important to note that paragraph 4 of the Policy expressly provides that the onus is on the Complainant to prove each of these three elements.

Identical and/or Confusingly Similar

The first question that arises is whether Complainant has a trademark or service mark on which it may rely in this proceeding. Complainant has submitted that it has two trademarks for POLYTECH mark based upon registration of the mark with WIPO and the USPTO. The Panel has inspected the copies of the certificates of registration that have been submitted by the Complainant as evidence.

The WIPO registration is No. 1,432,989, and it states that the trademark was registered on September 14, 2018.

The USPTO registration is No. 5,899,558 and states that the trademark was registered on November 5, 2019. It also states that the application for the trademark was filed on September 14, 2018, which the Panel notes is the same date as the date on which the WIPO trademark was registered. It does not give any claimed date of first use.

Registration of a mark with a national or international authority is generally sufficient to establish rights in that mark for the purposes of the UDRP. See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA 1625332 (Forum July 17, 2015) (finding, “Registration of a mark with a governmental authority (or, in this case, multiple governmental authorities) is sufficient to establish rights in the mark for purposes of Policy ¶4(a)(i)”). The Panel therefore finds that Complainant’s registration of the POLYTECH mark with WIPO and the USPTO is sufficient to establish rights in the mark under paragraph 4(a)(i) of the Policy.

Next, Complainant submits that the domain name is identical or confusingly similar to the POLYTECH mark, as the name incorporates Complainant’s mark in its entirety. Respondent concedes that the domain name is confusingly similar to the trademark. The incorporation of a mark into a domain name has generally been accepted as demonstrating that a domain name is identical to a trademark. See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”). The Panel therefore finds that the domain name is identical to the POLYTECH mark under paragraph 4(a)(i) of the Policy.

The Complainant has thus made out the first of the three elements that it must establish.

Rights or Legitimate Interests

It is now well established that that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and that the burden then shifts to Respondent to show it does have rights or legitimate interests. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).

The Panel’s task is therefore to decide if the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.

Complainant’s prima facie case on rights and legitimate interests

Complainant has put what, so far as the Panel understands it, are two essentially different cases to advance its position on this element. The first case is contained in the Complaint itself. That case is itself based on two grounds.

First, it says that the Respondent registered the domain name on June 20, 1995. It does not make that submission in a vacuum, but submits that it is verified by the WHOIS information which is attached to the Complaint as Annex B. It then submits that the domain name “was not registered or created any early (sic) than June 19, 1995” and that “Respondent’s date of first registration and/or use being no earlier than June 20, 1995, see WHOIS records attached as ANNEX B.”

At that point, the Complainant’s case was clear enough and it was that the Respondent had registered the domain name on June 20, 1995, but that Respondent had no right or legitimate interest in it because, without permission, it had incorporated in the domain name the Complainant’s POLYTECH trademark which had been in use since April 15, 1994 and also because the Respondent had done this “ to divert users to an unauthorized links (sic) to unrelated pay per click advertisements, copies of which are attached as ANNEX C, which it is believed that the Respondent is receiving pay per click revenue in connection with the same.” In addition, the Complainant argued that the Respondent has not been commonly known by the domain name.

However, after the Response had been delivered, the Complainant added to its case by submitting a supplementary submission which argues the following grounds on which it maintains that Respondent does not have a right or legitimate interest in the domain name.

The argument advanced in that submission is that the Respondent in fact did not register the domain name on June 20, 1995 as had been previously alleged. Rather, Complainant submitted that it was the Respondent’s father’s company, Polymer Technology Associates, Inc. that registered the domain name on June 20, 1995 and that it was transferred to the named Respondent “on or after October 8, 2001” ( subsequently varied to “after October 8, 2001”) making it more likely than not that the Respondent was aware of the Complainant and its use of its POLYTECH mark when it registered the domain name. Finally, the Complainant submitted that as the Respondent’s hosting provider is in Munich, Germany, ”Respondent must be very familiar with the EU business community, which includes the Complainant.”

The Complainant then advances in its second submission further arguments as to why the Respondent has no rights or legitimate interests in the disputed domain name.

First, it is said that the Respondent has not made an active use of the domain name for some 25 years.

Secondly, for the last 4 years until the present time, Respondent has caused the domain name to resolve to pay-per-click listings.

Thirdly, although the Respondent claims that he registered the domain name because of the name of his father’s company Polymer Technology Associates, Inc, that argument fails as that company was the prior registrant of the domain name, a different company, and not the Respondent in this proceeding. Moreover, none of the submitted evidence supports “demonstrable preparations” by the Respondent; the alleged steps to use the domain name by the Respondent’s father were never acted on or fulfilled; and the Respondent’s declaration is not relevant credible supporting evidence.

Fourthly, Respondent has shown no demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services.

Putting together the Complainant’s two cases on this issue, the first being that the Respondent registered the domain name on June 20, 1995 and the second that he registered the domain name on or after October 8, 2001 the Panel now has to decide if on either version there is a prima facie case made out.

Having regard to the aforesaid, the Panel finds that the Complainant has shown a prima facie case as required.

It therefore remains for the Panel to examine the Respondent’s reply to ascertain if it has rebutted that prima facie case. It should also be pointed out here that after considering both sides, and especially if there is any doubt about the matter, the onus of proof remains on the Complainant to prove on the balance of probabilities that the registrant of the domain name has no right or legitimate interest in it.

Respondent’s reply to prima facie case on rights and legitimate interests

The Respondent has set out its case in detail in the Response and it has adduced in evidence a signed declaration made under penalty of perjury.

The first issue to be resolved is who registered the domain name and when was it registered? The Panel finds on the evidence that the only conclusion open to it is that the domain name was registered by the Respondent and that it was registered on June 20, 1995. In support of that conclusion is the fact that both parties were originally of one mind on that issue, namely that the domain name was registered on June 20, 1995. That is not surprising as it is precisely what was alleged by the Complainant when it embarked on this proceeding. Not only did it assert it on several occasions, and presumably being aware of all the facts, but it relied on and tendered in evidence the WHOIS record for the domain name which states the same thing, that the Respondent is the registrant and that the domain name was created on June 20, 1995. Secondly, the only evidence on the issue is from the Respondent in his Declaration where he declares that he, the Respondent, registered the domain name on June 20, 1995. The Complainant has not adduced any evidence from which an inference could be drawn that the Respondent registered the domain name in 2001. Thirdly, in his additional submission the Respondent expressly rejects any suggestion that he registered the domain name in the year 2001 and states that the only reason this argument has been advanced is in effect so that it can be alleged under the Complainant’s new theory that the Respondent registered the domain name to target the Complainant. Finally, the Respondent’s version has the ring of authenticity about it because it is consistent with the Respondent’s entire case, that it was the Respondent who had registered the domain name because he effected the registration, that he disclosed this by declaring that he was the administrative contact, that it was registered for use in his father’s company which had a very similar name to the domain name, that his father subsequently died, the company was dissolved and the record was regularized so that the true registrant was stated.

In that regard, it should be said here that the Complainant itself has admitted that Polymer Technology Associates, Inc, was dissolved on May 5, 2001, giving rise to the reason why the Respondent regularized the domain name record on October 8, 2001. The Panel’s understanding is that what is shown by the Complainant’s Annexure to its supplementary submission[i] is that Polymer Technology Associates Inc., was incorporated on April 2, 1992, that it was therefore in existence when the Respondent registered the domain name on June 20, 1995 and that it was dissolved on May 5, 2001, making it understandable that the Respondent should regularize the record on October 8, 2001. It therefore seems to the Panel that this was a normal and legitimate transaction and in no way negating the right or interest of the Respondent in the domain name from the day he registered it, namely June 20, 1995.

Finally, the alternative interpretation is unpersuasive, namely that when his father died, the Respondent changed the registrant of record not because his father died, but so that he could target the Complainant, a company in Denmark of which there is no evidence that he had heard or should have heard and of which there is no evidence whatsoever that it was even operating in the USA at that time.

The next question is therefore, given that the Respondent registered the domain name on June 20, 1995, does he have a right or a legitimate interest in the domain name?

The Respondent’s case, as would now be appreciated, is that he registered the domain name on June 20, 1995, as the record shows, because the name invoked terms used in the name of his father’s company, Polymer Technology Associates Inc., which was a going concern and for use in connection with that company. The Respondent expands on that reason by submitting that subsequently and when his father died in 2001, he corrected the record to reflect that fact, but that his intention was, as it still is, to use the domain name for advancing the understanding of technology and education and that these objectives were consistent with his and his father’s interest in science. He adds that his father was a chemical engineer and a college professor who taught PhD candidates at Columbia University. In the meantime, he has been content to leave the domain name parked and to allow it to carry generic links which are related to education for which he has earned in 5 years the sum of approximately $108.

The Complainant takes issue with this submission by the Respondent on the grounds set out above.

Having considered the submissions of both parties and the evidence tendered in support of those submissions the Panel finds that the Respondent’s explanation for registering the domain name is plausible and on the balance of probabilities correct. What the Panel must look for is whether the registration is plausible and done without infringing on a trademark or engaging in other deceptive or inappropriate conduct. The Panel has examined the matter closely and finds that the Respondent has met that test. Accordingly, the Panel accepts the Respondent’s explanation and finds that it gives rise to a right or legitimate interest in the domain name. That is so for the following reasons.

The Panel finds that the Respondent was suggesting the name of his father’s company, that he foresaw a time when the domain name could be used for that company and that he, the Respondent himself, might use it in his own venture to promote science and education. It is consistent with the Respondent’s argument that he acquired the domain name in 1995 in preparation for its use in his father’s business, retained it for several years, and changed the registration details after his father’s death and subsequently for his own business. In any event, the Panel must decide whether, when he registered the domain name and subsequently, the Respondent genuinely intended to use the domain name for his declared purpose. The Panel must act on the evidence and, on the evidence, there is nothing to show or from which it could be inferred, that his declared purpose was not genuinely held and the result is thus that it is more likely than not that this was the Respondent’s real intention.

Did Respondent register the domain name to target Complainant?

The Complainant takes the Respondent to task on this issue by submitting that Respondent registered the domain name to target the Complainant by having the domain name resolve to a webpage with unauthorized links to other goods and services, whether they were competing with the Complainant or not and that it could be assumed that the Respondent was paid pay-per-click fees for this service. The Complainant argues that this was not bona fide and that the existence of the links shows that the registration and use of the domain name has been and is illegitimate and that the Respondent has no right to use the domain name for this purpose.

The Panel finds this submission to be untenable. First, It must be remembered in this regard that the domain name was registered on June 20, 1995, that by that date the Complainant had been in existence for only one year and that it would therefore have been unlikely that the Respondent would have known of the existence of the Complainant which was a new company in Denmark with which the Respondent had had no contact at all and no reason for any contact. Accordingly, it is extremely unlikely that the Respondent would have known of the trademark and that there was scope for targeting it and carrying links to other providers of goods and services to compromise the Complainant, even if that were the intention of the Respondent, which the Panel finds it was not.

Moreover, it is unlikely that the Respondent would have carried unauthorized links if its explanation for the domain name was genuine, which the Panel finds it was. At the time of the registration, Polymer Technology Associates Inc., the Respondent’s father’s company, was an actual business and clearly had not been invented as a guise or cover for registering the domain name. Although there is no evidence of its financial success, the Respondent has adduced evidence showing that the company existed and had filed company information with the relevant authorities. Finally, as the Respondent submits, it has been recognized in many UDRP decisions that domain names often mirror already existing names of a business in connection with which the domain name is proposed to be used. It is quite likely, therefore that the name came to mind because of the father’s company and not because, in Denmark, there was a one-year old company of the same name. The Panel therefore accepts on balance that this is what happened in the present case.

Thirdly, the basis for the Complainant’s argument is, in the Panel’s view, untenable. It was clearly put in the Complaint as part of its “global presence” that:

(a) when the Respondent registered the domain name in 1995, the Complainant had been using the WIPO and USPTO marks for POLYTECH and that it had “done so in interstate commerce since at least as early as April 15, 1994…”;

(b) that the Complainant had a warehouse in Greely, Colorado( USA);

(c) the Complainant had also registered the domain name .

It was not made clear in the evidence in which country it was that the alleged “interstate commerce” took place.

However, the clear purport of those submissions was that the Complainant had a global presence of which the Respondent was or could have been aware when the domain name was registered in 1995. Moreover, the Complaint made it plain that the Complainant’s ”global reach” may be seen from its corporate profile in Annex A which is in effect the Complainant’s website at .

The Panel has inspected the Annex, as invited, and finds that it does not establish that the Complainant had the global presence alleged, from 1994, or from 1995 when the domain name was registered. It shows that in recent years the Complainant has developed an international reach and probably after the year 2000. The Annex states that the company stated operations in Denmark in 1994 and that it has a warehouse in Colorado. It gives no information on what international presence it had in 1994, 1995 or the later years of the 1990s. The Annex, and the company’s website, states that its current activity in the USA is conducted through a company named Polytech Windpower Technology Incorporated, which was not incorporated until November 16, 2016[ii]. It is a matter of public record that the domain name, that it relies on and which resolves to its website was not registered until June 16, 2000[iii]. Indeed, there is no evidence that has been tendered to show that the Complainant had any international presence at all by 1994 or 1995 or that there are any facts from which the inference could be drawn that the Respondent knew or should have known of the existence of the Complainant or its alleged international presence.

Such evidence, of course would be known to the Complainant and would be easy to collect, identity and present to the Panel in an evidentiary form with records that must be available. This is regularly done in UDRP cases and it is axiomatic that it is presented when it is necessary to prove factual matters rather than simply to make unpersuasive assertions. No explanation has been given as to why such obviously essential evidence has not been adduced in this proceeding.

For reasons of completeness, it should also be said that the same conclusions apply even if the Respondent registered the domain name in 2001. Even on that incorrect basis, no evidence has been offered by the Complainant that by that date it had

engaged in “interstate commerce” ( presumably in the United States), that it had a warehouse in Colorado or that it had a website for its domain name, .

For instance, although the submissions on behalf of the Complainant say that this international presence, since 1994, can be seen from the “sampling” in Annex 2 of the Wayback Machine[iv] pages of the website, that is not so. The first page of the “ sampling” is dated as coming from the year 2009 and all of the subsequent pages come from 2016. The Complainant’s own statement of its achievement by 2016 is that it had, at that time, overseas activities “manufacturing products for the global wind and offshore markets since 2011.” Indeed, the heading of the Wayback Machine states that it covers only snapshots from the Complainant’s website which have been “(S)aved 57 times between March 2, 2001 and July 22, 2019.”

Accordingly, there is no substance to the argument that from April 15, 1994 or, on the alternative argument, by 2001, the Complainant had engaged in international activities such that the Respondent would have or should have known of its existence. There is simply no evidence to that effect.

Underlying these considerations is, of course, the basic proposition that there is an entitlement to register domain names on a “first come, first served” basis, provided that the purpose of registering the domain name is not to damage the complainant’s trademark or engage in misleading or untoward conduct. Having regard to the whole of the evidence, the registration of the domain name seems to have been perfectly innocent.

Accordingly , the conclusion of the Panel on the only evidence put before it is that the registration of the domain name was legitimate and was not in breach of or contrary to the interests of the Complainant or its trademark and that there were no facts that suggest the Respondent was aware of the Complainant or was motivated against the Complainant when it registered the domain name.

The foregoing matters show that the Respondent has a right or legitimate interest in the disputed domain name.

The domain name as a common word.

The Respondent’s second ground for its right or legitimate interest in the domain name is that the domain name consists of a common word which the Respondent had every right to register as a domain name, subject of course to several well-known exemptions. In support of its position, the Respondent tendered in evidence Annex 6 which consists of the results of the first 5 pages of a Google search which give a very detailed exposition on the word “polytech” and its derivative “polytechnic.” They both have a variety of meanings, but particularly related to education, educational institutions, industry and health. It is clear therefore that the Complainant has no exclusive right to the use of the word as it is widely known and widely used by third parties. In is well established that there is a right and an interest in registering such words as domain names. They give no such right, however, to register them as a cover for trading on a trademark, capitalizing of the good will created by the trademark owner, passing the registrant off as a trademark owner, engaging in unfair and deceptive trading or engaging in untoward conduct designed to harm the trademark or its owner. This is often put as that the registrant of the domain name may not target the trademark or its owner.

Thus, the Respondent says that the domain name he created was drawn from the name of his father’s company and in any event is itself a common dictionary word that anyone may use in a domain name, subject to the abovementioned limitations.

The Respondent maintains that he did not have the Complainant’s trademarks in mind when he registered the domain name, which seems to be axiomatic, as they did not exist at that time. The only two trademarks relied on by the Complainant are the two trademarks already referred to that were registered on September 14, 2018 and November 5, 2019. The USPTO trademark was applied for until September 14, 2018.The domain name was registered much earlier, on June 20, 1995. No common law trademark has been alleged or proved. The panel therefore finds that the Respondent was not actuated in registering the domain name by the existence of the Complainant’s trademarks.

The Panel is therefore left with quite inadequate evidence as to how it is said that when the Respondent registered the domain name he was influenced by the existence of a trademark for POLYTECH.

The Respondent himself says that he did not target the Complainant or seek to trade on its name. The Panel’s assessment of the evidence is that this is probably right for the reasons given, and it will not repeat them here.

Moreover, as the Respondent states in his declaration, when the website to which the domain name resolves, started to carry advertising links, which was from July 2015 and twenty years after registration of the domain name, it carried links that are related to educational institutions, tech schools, certificates and such like which are clearly within the genre of the words used in the domain name and within the meanings expressly given in the Google search results. Perhaps more importantly, the evidence shows that the Respondent has never used the domain name to refer to the Complainant or its products or to compete with the Complainant.

The evidence, therefore, shows no reason why the Respondent would want to copy or plagiarize the Complainant’s name or brand or register the domain name for any improper purpose and, on the contrary, it shows every reason why he registered the domain name legitimately and for the reasons that he has given.

Thus, the Panel is disposed to accept the view of the panel in Uovo Art LLC v.

Mira Hold, Mira Holdings, Inc., WIPO Case No. D2016-0214, when it said:

“Accordingly, in cases where a respondent makes a plausible claim of descriptive use, the dispositive question is not necessarily limited to whether the respondent was aware of the complainant’s trademark rights, although such knowledge may be a relevant consideration. The larger question is whether, in light of the totality of facts and circumstances of a given case, it has been demonstrated that the respondent’s real aim was to exploit and profit from another’s mark.”

The Panel’s view on the facts and circumstances of the present case is that they do not show that the real aim of the Respondent was to exploit and profit from the Complainant’s mark, but rather that the real aim of the Respondent was to have a domain name that invoked the name of his father’s company and which would provide a vehicle for his own educational intentions.

For all of these reasons the Panel concludes that the Respondent has rebutted the prima facie case against it and has established that it has a right and a legitimate interest in the disputed domain name.

The Panel has thus not made out the second of the three elements that it must

establish.

Registration and Use in Bad Faith

In view of the findings of the Panel on rights and legitimate interests it is not strictly necessary to examine bad faith, because it will not affect the outcome of this proceeding. In any event, as the Panel has found that the Respondent has a right and legitimate interest in the domain name it could scarcely find that the Respondent had acted in bad faith in registering or using the domain name. However, the Panel will make a few remarks about bad faith to show that this aspect of the claim also fails.

It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.

The first question that arises is whether the facts come within any of the specified illustrations of bad faith set out in paragraph 4(b) of the Policy. They are as follows:

b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

In the Complaint, the Complainant did not allege that any of grounds (i), (ii) or (iii) had been made out. Rather, the case was that the Respondent was using the domain name to attract the public to the domain name with unauthorised links giving rise to pay-per-click revenue in breach of paragraph 4(b) (iv) of the Policy. The second ground was specifically based on paragraph 4(b) (iv). In its supplementary submission, however, the Complainant relied on, first that the Respondent had engaged in inactive use of the domain name for 25 years which constituted bad faith, and secondly in breach of paragraph 4(b)(i), on the basis that the Respondent had offered to sell the domain name for $100,000, which the Complainant had accepted.

The Panel will deal with each of the grounds in order.

Paragraph 4(b)(i)

The Panel does not accept that this ground has been made out as it is contrary to the Panel’s findings on the facts of what happened in this case. The Panel does not accept that the Respondent registered the domain name the purpose of selling, renting, or transferring the domain name to the Complainant or a competitor of the Complainant. The main reason why the Panel does not accept that conclusion is that it accepts the Respondent’s case that he was motivated by a wish to register a domain name that reflected the name of his father’s company and one that he could subsequently use himself for reasons already given. It was also unlikely in the Panel’s view that the Respondent knew of or had heard of the existence of the Complainant. Normally it is difficult for a panel to assess accurately the motivation behind the registration of a domain name, but in this case the explanation given by the Respondent is plausible and the opposite conclusion is highly unlikely. The opposite conclusion is that promoted by the Complainant in the Complaint which is that the purpose was “ to attract the public to the associated with unauthorised links which it is believed that the Respondent/registrant is/was receiving pay per click revenue…”. In the supplementary submission the Complainant advanced the same notion. No other reason was advanced in the Complaint. The Panel finds that the Complainant’s argument is inherently improbable, not only because the Panel has already given what it accepts was the reason for registering the domain name, but also because it is not what the Respondent did. The evidence is that for the first years after registration there were no pay per click links on the site and that when from the year 2001 the Respondent allowed them, they were all for services coming within the generic meaning of the domain name and they earned the Respondent $108 over five years.

In its supplementary submission the Complainant submits that the Respondent registered and used the domain name so that it could sell it to the Complainant for a figure subsequently agreed at $100,000. As the Panel has already given its understanding of the real reason for the registration, the Panel does not accept that the domain name was registered for resale to the Complainant. Moreover, the case advanced by the Complainant on this issue, based on the original approach to sell coming from or on behalf of the Complainant and not the registrant of the domain name, has long been rejected as showing bad faith registration.

The ground in Paragraph 4(b)(i) has therefore not been made out.

Paragraph 4(b)(ii) and (iii)

The Panel does not accept that registration or use in bad faith under paragraph 4(b)(ii) or (iii) has been made out on the evidence. There is no evidence establishing or circumstances from which an inference can be drawn that either of those grounds was a motivating factor in the mind of the Respondent.

Paragraph 4(b) (iv)

The Panel finds that the facts do not bring this proceeding within the ambit of paragraph 4(b)(iv). The Panel does not accept for reasons already given that the Respondent was motivated by a desire to confuse internet users or attract them to his website. The sheer difference in time between the date of registering the domain name and the time when the Complaint was filed , during which time the Respondent did nothing with the domain name that was at all inimical to the Complaint, makes it highly unlikely that the Complainant wanted to attract internet users to his site to confuse them. There was also a very legitimate reason why the domain name was registered; it is unlikely that the Respondent even knew of the Complainant at the time of registration; the Complainant did not have any registered trademark rights at that time and there was little if any reason why the name or brand of the Complainant should or would have been known in the United States where the Respondent was domiciled; and, importantly, links have been included on the website which come within the generic meaning of the domain name, thus avoiding any suggestion that they could be confused with the Complainant’s goods and services. Accordingly, it has not been established that the evidence brings the proceeding within any of the specified criteria of bad faith registration and use.

It is always open for a complainant to allege bad faith registration in general, and outside the parameters set by the provisions of paragraph 4(b) of the Policy. But here there is a formidable obstacle in the way of the present complainant establishing bad faith registration on the facts as they are known. The Panel has concluded that the domain name was registered on 10 June 1995 and any finding of bad faith registration must relate to that date. The only trademarks of the Complainant were registered in 2018 and 2019 respectively, long after the registration of the domain name. It is thus well established that bad faith registration cannot be shown in cases where the relevant trademark was not on foot at the time the domain name was registered as was the case in this proceeding. The reason is that if there were no such registered trademarks at that time, there would be no object of the alleged bad faith.

Accordingly, in the present case, bad faith registration cannot be shown. In any event the panel has hopefully made it plain that there is no case for a finding of bad faith in view of the findings of fact that have been made.

The Panel has thus not made out the third of the three elements that it must establish.

Laches

In the course of its submissions, the Respondent raised the issue of laches although it did not argue that the proceeding was barred because of laches itself. Rather, it argued that delay in filing proceedings is a fact to be taken into account by the Panel. The Complainant argued against the applicability of laches generally and in this proceeding.[v] In view of the ultimate outcome of this proceeding, it is not necessary to pass judgment on the applicability of laches, and as for delay, the Panel takes the view that all of the events that have occurred should be considered by the Panel which may then draw such inferences from the facts as it may be advised.

In that regard, the Panel notes that the domain name was registered on June 20, 1995 and that the proceeding was filed on March 6, 2000, a gap of 25 years. The Complainant has not explained why a delay of 25 years was allowed to occur before it took action to answer the rights it now pursues so vigorously. The substance of the Complainant’s case in this proceeding was that it has a “global presence“ and that to pursue that global presence it has used the POLYTECH mark “since at least as early as April 15, 1994,”[vi] that it had started to use it on April 15, 1994[vii], that it used it “continuously” and in a “global continuous” process. If this is correct, it is difficult to believe that in pursuing its global presence the Complainant did not know that the Respondent had registered the domain name on June 20, 1995 as it subsequently alleged. Not only had the domain name been registered but, as the Respondent conceded, for five years from July 2015 he allowed it to carry advertising links related to educational activities which the Complainant now describes as “offending web pages/links,”[viii] and “unauthorized links to unrelated products and services.”[ix] It is therefore also difficult to believe that the Complainant as a global business was not aware that the Respondent was using the domain name in this manner. On the record of this proceeding, the only response of the Complainant to this conduct was for it to agree to buy the domain name for $100,000, a domain name in which the Complainant now says the Respondent has no right or legitimate interest. Finally, when the Complainant failed to buy the domain name for $100,000, on October 29, 2017, the Complainant let another 2 years and five months pass by without taking any action to assert its rights. This sequence of events entitles the Panel to conclude that the Complainant has not believed that the Respondent had acted wrongly in registering the domain name or that it did not have a right or legitimate interest in the domain name.

Reverse Domain Name Highjacking

The Respondent has requested that the Panel make a finding of Reverse Domain Name Hijacking and the Complainant has opposed that finding being made.

The finding is of course discretionary and has to be considered judicially, having regard to all the circumstances. One of the circumstances generally considered to be worthy of following is that the finding should not be made simply because the Complainant has failed to make out the constituent elements of the claim, but rather that it should be made only when there is evidence that bad faith has motivated the bringing of the claim. Having regard to all the circumstances, the Panel finds that the claim has not succeeded, that it probably should not have been brought, but that the Complainant does not seem to have been motivated by bad faith, but rather by excessive and unjustified optimism about a case that was always dubious. In the exercise of its discretion, therefore, the Panel will not make a finding of Reverse Domain Name Hijacking.

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the domain name REMAIN WITH Respondent.

The Honourable Neil Anthony Brown QC (Chair)

David S. Safran Esq.

Paul M. DeCicco Esq.

as Panelists.

Dated: April 15, 2020

[i] State of Delaware certificate Annex 4 to Complainant’s Additional Written Submission dated April 7, 2020.

[ii] https://opencorporates.com/companies/us_de/6217737

[iii] http://whois.domaintools.com/poly-tech.dk

[iv] At www.archive.org.

[v] Complainant’s Additional Written Submission, pages 6-7

[vi] Complaint, pages 3 and 4

[vii] Complaint, page 6

[viii] Annex C, Offending Web pages/links

[ix] Complaint, page 7

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