The WIPO Arbitration and Mediation Center announced its decision to transfer the domain inc.mobi from its registrant Jonathan Witte, the owner of Mobile Designer, to Mansueto Ventures, LLC, which owns inc.com as well as a US trademark for “INC.” as the title of a monthly magazine.
In a decision filled with hyperbole
[…] there is evidence of the Respondent attempting to sell the disputed domain name for the astronomically exorbitant sum of USD 550,000
and cranky passages
The Respondent’s Response is rather diffuse and difficult to follow. Basically, the Respondent has submitted at length that “inc” is a generic word and not entitled to protection. […] The Respondent seems to make some point of whether the mark INC has or has not a full stop after it.
(emphasis added), the WIPO Panel established that Mansueto Ventures had proved each of the following elements of ICANN’s Uniform Dispute Resolution Policy (UDRP):
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights, i.e. the “INC.” trademark.
- The respondent has no right or legitimate interest in respect of the disputed domain name.
- The disputed domain name was registered and is being used in bad faith, primarily because the respondent tried to sell it for $550,000 on eBay.
Mr. Witte asserted his belief of “INC” being a generic term which is used as an essential part of most incorporated companies’ names. The Panel rejected this argument:
It is not for the Panel or for the Respondent to second-guess the decision of the United States Patent Trademark Office to grant a registered trademark in this case. The Panel cannot upset the trademark registration just because a respondent claims the trademarked letters are said to represent a generic term.
Mr. Witte also noted that Mansueto Ventures had initially shown no interest in the domain because they had failed to secure inc.mobi during the sunrise period last year, which led to the domain becoming available for open registration.
He further stated that he had asked for $550,000 on eBay only to increase the importance of .mobi and in the certainty that nobody would purchase the domain at the quoted price.
What’s the Daily Domainer’s take on this?
The trademark issue is open to interpretation. Mansueto Ventures owns the “INC” trademark in the US and several other countries (but not in Japan).
The two remaining factors are far from conclusive.
Mr. Witte is a .mobi pioneer and one of the world’s leading developers of mobile websites. In addition to owning and operating Mobile Designer, he works for a company called Amu Inc., which is a content-providing company with eleven mobile websites, seven of which are currently on the official menu of the three mobile carriers in Japan. It could be argued that the foregoing forms the basis for his legitimate interest in the domain.
His attempt to sell inc.mobi on ebay for $550,000 can hardly be viewed as a sign of bad faith. First, he never tried to sell the domain to Mansueto Ventures directly, and second, eBay is filled with promotional domain auctions where the seller asks for six, seven and even eight figures just to generate attention.
The Panel’s consideration of whether the respondent was aware of Mansueto Ventures’ trademark reeks of 1984-style prosecution of thoughtcrimes:
The only concern of the Panel is whether the knowledge and fame of the Complainant’s mark extended to the Respondent when he registered the disputed domain name, since the mark is not registered in Japan where the Respondent has been residing for the past 8 years.
Three-letter domains are considered some of the most valuable domains in all extensions. All possible .mobi three-letter combinations had been registered by the end of October 2006. Yes, all 17,576 of them. We don’t know how many three-letter .mobi domains Mr. Witte owns, but it is extremely doubtful that after 8 years in Japan he specifically had Mansueto Ventures in mind when registering inc.mobi.
This heated conflict shows that .mobi domains have become something worth fighting over. Mansueto Ventures had initially failed to register the domain but now, possibly after realizing that .mobi is gaining popularity, they came after the registrant through the UDRP. We hope that he fights the decision.
This is only the third time a .mobi domain is transferred to the complainant. Previous cases include screwfix.mobi and myflorida.mobi.
Thanks to Carlos Blanco for making us aware of this case.