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DECISION

Advanced Analytical Technologies, Inc. v. Hare, Myles / URL Enterprises Ltd.


Claim Number: FA1611001701430
PARTIES
Complainant is Advanced Analytical Technologies, Inc.
(Complainant), represented by Steve Siembieda, Iowa, USA.
Respondent is Hare, Myles / URL Enterprises Ltd. (Respondent),
represented by John Berryhill, Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aati.com>, registered with Network
Solutions, LLC.
PANEL
The undersigned certifies that he and the panel have acted
independently and impartially and to the best of his knowledge have
no known conflict in serving as Panelists in this proceeding.
Daniel B. Banks, Jr., Panel Chair
Dr. Beatrice Onica-Jarka, Panelist
Hon. Neil Anthony Brown QC, Panelist
PROCEDURAL HISTORY
Complainant submitted a Complaint to the FORUM electronically on
November 4, 2016; the FORUM received payment on November 4, 2016.
On November 4, 2016, Network Solutions, LLC confirmed by e-mail to
the FORUM that the <aati.com> domain name is registered with
Network Solutions, LLC and that Respondent is the current registrant of
the name. Network Solutions, LLC has verified that Respondent is
bound by the Network Solutions, LLC registration agreement and has
thereby agreed to resolve domain disputes brought by third parties in
accordance with ICANNs Uniform Domain Name Dispute Resolution
Policy (the Policy).
On November 9, 2016, the FORUM served the Complaint and all
Annexes, including a Written Notice of the Complaint, setting a
deadline of December 5, 2016 by which Respondent could file a
Response to the Complaint, via e-mail to all entities and persons listed
on Respondents registration as technical, administrative, and billing
contacts, and to postmaster@aati.com. Also on November 9, 2016,

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
Respondents registration as technical, administrative and billing
contacts.
A timely Response was received and determined to be complete on
December 5, 2016.
Additional submissions were received from the Complainant and
Respondent and were deemed to be timely filed.
On December 13, 2016, pursuant to Respondents request to have the
dispute decided by a three-member Panel, the FORUM appointed Daniel
B. Banks, Jr.,
Dr. Beatrice Onica-Jarka, and Hon. Neil Anthony Brown, QC, as
Panelists.
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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES' CONTENTIONS
A. Complainant
Policy 4(a)(i)
Complainant has used AATI as a brand name since the incorporation of
its company in 1997. The mark has been used on or in connection with
the following: International Organization for Standardization (ISO
Certification), Web and Internet based materials, Product Brochures,
Press Releases, Technical Sheets, Tradeshow Displays, Product
Manuals, Safety Data Sheets (SDS), Office Documents, Emails and
Electronic Communications, Legal Documents, Business to Business
Documents and other documents and communication related to
business operations. Additionally, Complainant has the following
domains registered: aati-us.com, aati-fr.com, aati-de.com and aatieu.com.
Policy 4(a)(ii)

Respondent is identified as a domain reseller as noted in their


company name URL Enterprises LTD. Currently, AATI.com displays a
for sale advertisement encouraging visitors to request a quote to buy
the domain. This could allow competitors of Complainant to purchase
the domain. The domain could then be used for motives that
negatively impact Complainants ability to provide legitimate products
and services to their customer base. Respondent has no known interest
in the AATI.com domain other than the resale of the domain for profit.
Policy 4(a)(iii)
Respondent competed with Complainant in both a public and private
auction for <aati.com>, and won. Subsequently, Respondent put the
domain name up for sale within 24 hours.
B. Respondent
Policy 4(a)(i)
Complainant uses the acronym AATI as a corporate name, but
Complainant does not show use or registration of AATI as a trade or
service mark, and therefore cannot have rights in AATI under the Policy.
Registration and use of domain names does not confer rights.
Complainant is incorporated as Advanced Analytical Technologies but
does not evince a trademark interest in AATI. Complainant's has
provided a list of documents, none of which demonstrate use of AATI
as a trade or service mark. Instead, it is used as a trade name,
introduced in the article in parenthesis after the corporate name and
then used as a noun to refer to the company. Complainant also
encountered failuretwicein attempting to register the AATI mark
with the United States Patent and Trademark Office (USPTO). The
first attempt was abandoned after refusal by USPTO. The second
attempt was cancelled because registrant did not file an acceptable
declaration under Section 8. Other documents provided by
Complainant concerning advertisements are without context, and no
information is given as to when the ads displayed may have been run,
by how many consumers they were seen, or in what goods or services
the ads establish a trademark. Complainant shows search engine
results using AATI as a trade name, and the results differ from
Respondents own research, wherein searching AATI returned the
following: American Association of Teachers of Italian at aationline.org;
the American Advanced Technician's Institute at aationline.com; the
Asociacin Argentina de Traductores e Intrpretes at aati.org.ar; and so
on.
Policy 4(a)(ii)
Respondent is a domain reseller who had acquired a valuable nondistinctive four-letter domain name at auction. <aati.com> has

inherent value in the secondary domain name market. The letters


comprising the domain name are not distinctive; in fact, they have a
wide range of existing uses. Demonstrated in the Complaint is
Complainants willingness to participate in an auction for the domain
name where the bidders were anonymous; and Complainant has not
demonstrated that Respondent lacks rights and legitimate interests in
the domain name.
Policy 4(a)(iii)
Complainant confuses a general offer for sale with the type of behavior
set out in Policy 4(b)(i). Respondent has not registered or used
<aati.com> in bad faith under Policy 4(b)(i) because it has not
deliberately tried to extort Complainant. Respondent is a generic
domain name reseller. Sale of domain names for profit is not proscribed
by the Policy or the ACPA.
Respondent had neither actual nor constructive knowledge of
Complainant when registering the domain name. Complainants
reputation is among a very limited clientele who possess doctorates in
genetics and run sophisticated laboratories. Even if Respondent had
constructed a trademark search, it would have found the previously
failed trademark applications filed by Complainant with the USPTO for
the AATI mark. Therefore, there could have been no bad faith
registration at the anonymous auction in which Respondent acquired
the domain name. Complainant claims it monitored the domain for
many years, and was willing to participate in an auction (max bid of
$2,410) to acquire it. Complainant's odd and incorrect paraphrasing of
certain "factors" relevant under the ACPA is not relevant to that
distinction of intent, nor does Complainant's history with the USPTO
suggest that the Complainant possesses any relevant rights under the
US Lanham Act in general, which is a necessary condition for an action
under the ACPA. This seems like a Plan B UDRP because Complainant
failed under a normal commercial context to acquire the domain name.
C. Additional Submissions
Complainant:
On December 12, 2016, an additional submission was filed by
Complainant. Therein, Complainant admits to not having a trade or
service mark granted by a government entity and openly admits that it
made several attempts at obtaining a trademark for "AATI".
Complainant contends that through its advertising and marketing, it
meets the criteria for holding the mark by common law.
Complainant also contends that Respondent has no legitimate rights to
the domain name because Respondent holds no connection to the

name; has not used or made demonstrable preparations to use the


name in connection with a bone fide offer of goods and services; and
that Respondent's sole purpose is to sell the domain at a price in
excess of out-of-pocket costs. Complainant further states that its
intent in trying to purchase the disputed name was to consolidate its
several URLs. Complainant states that, to the Respondent, this
disputed name "AATI " is a non-descript four letter URL while to
Complainant it represents their brand to their world-wide customer
base.
Complainant also addresses the issue of bad faith in the additional
submission. Complainant claims confusion and misunderstanding in
the bidding process and claims that, since Respondent had no
legitimate right to the domain name, it can only be concluded that
Respondents sole purpose was to resell the domain at a much higher
price than what they paid for it at public auction. Complainant
represents that there were bids from 71 different bidders and suggests
the likelihood that other bidders may have been trying to purchase this
domain in good faith.
Respondent:
In Respondent's additional submission, it points out that Complainant is
making a "better right" category of argument which actually presents
further evidence that "AATI" is not used as a trade or service mark and
does not present any of the usual indicia to establish a common law
trademark right. Also, Complainant does not show a single act of bad
faith premised on the Complainant's mark in the Respondent's
registration and use of the domain name. Complainant says it did not
pursue any attempt to gain the disputed domain as the previous
registrant was in a different industry and using the domain name in
good faith thereby not posing any conflict to the Complainant.
However, Complainant does not explain how Respondent's use of the
domain name or its prospective sale to a person named Aati or
someone else would pose any conflict in relation to Complainant.
Respondent also points out that Complainant admits "To the
Respondent this is a non-descript four letter URL..." Respondent says
this is precisely correct. It is a four letter domain name which has
value to the Respondent, and to the market in general, for reasons that
have nothing to do with Complainant's claimed trademark.
In addressing the remaining assertions of Complainant's additional
submission, Respondent points out that the exhibits presented by
Complainant are further examples of its lack of trade or service mark
rights in the term "AATI". Respondent makes the point that the

evidence submitted clearly shows that AATI is not used by Complainant


as a trademark or service mark. Finally, Respondent says that
Complainant, having now had a second opportunity to state its case,
has not identified a single act of Respondent or Respondent's use of
the domain name upon which one could infer a bad faith intent
premised on Complainant's limited claim of rights in a specialized
market.
FINDINGS
1 - The panel finds that Complainant has failed to bear its burden of
proof that the disputed domain name is confusingly similar to a
trademark or service mark in which Complainant has rights.
2 - Complainant has failed to make a prima facie case that Respondent
has no rights or legitimate interests in respect of the domain name.
3 - Complainant has failed to show that the disputed domain name was
registered and is being used 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.
Identical and/or Confusingly Similar
Complainant has failed to establish rights in the disputed domain name
under the Policy. First of all, Complainant has not registered the
acronym "AATI" although it has tried on two occasions and failed. And,
Complainant's claim of common law rights is limited to a few
publications and ads that use the acronym "AATI" not as a trademark
but to identify the producer of a product. It is the view of the Panel
that this evidence is not sufficient to support a finding of common law
rights. Also, registration and use of domain names does not confer

rights, as Complainant asserts. See Williams, Babbitt & Weisman, Inc.


v. Ultimate Search, FA 98813 (FORUM Oct. 8, 2001) (BAG was used by
Complainant in the domain names <BAG-works.com>,
<BAGonline.com> and <BAGinc.net>. These variations gave
Complainant no rights to contest and obtain the domain name
<BAG.COM>.).
While Complainant is incorporated as Advanced Analytical
Technologies, that fact does not evince a trademark interest in AATI.
See Koninklijke Nederlandse Springsstoffen Fabriek N.V. v. Kim
Hyungho GMM, D2002-0707 (WIPO Oct. 1, 2002) (As long as there is
no registration of the letters KNSF as a company name or trademark,
and the Complainant has not substantiated that the abbreviation has
been used to such an extent that it has been generally known to the
relevant commercial circuit as a trademark or trade name for
Complainant, Complainant has failed to prove that he has rights in
KNSF as a trademark.). In the documents submitted by Complainant,
it used the acronym as a trade name. Trade names do not confer rights
under the Policy. See G. Bellentani 1821 S.p.A. v. Filoramo, D2003-0783
(WIPO Nov. 21, 2003) ("[T]he Policy does not extend to trade names.);
see also Paris Jewellers Ltd. v. NAME ADMINISTRATION INC. (BVI), FA
1573085 (FORUM Sept. 12, 2014):
Even though Complainant submitted evidence to prove corporate
registration of PARIS JEWELLERS LTD., this Panel finds it is not
sufficient to create trademark rights. See The Woodlands
Dermatology Associates, P.A. v. Anthony Perri, FA1110001410742
(FORUM Nov. 28, 2011) (The use of the trade name The
Woodlands Dermatology Associates, P.A. by Complainant is
insufficient to establish rights under 4(a)(i) of the Policy). See
also, Diversified Mortgage, Inc. v. World Financial Partners, FA
118308 (FORUM Oct. 30, 2002) (finding that the Policy makes
clear that its rules are intended only to protect trademarks, and
not mere trade names).
Complainant's evidence regarding advertisement is without context,
and no information is given as to when the ads displayed may have
been run, by how many consumers they were seen, or in what goods
or services the ads establish a trademark. Additionally, Complainant's
search engine results show it using AATI as a trade name. Other
search engine research, for AATI returned the following: American
Association of Teachers of Italian at aationline.org; the American
Advanced Technician's Institute at aationline.com; the Asociacin
Argentina de Traductores e Intrpretes at aati.org.ar; and so on. Resp.,
at Attached Ex. D. The Panel finds that Complainant used AATI as a

mere trade name, which does not constitute appropriate evidence of


rights under the Policy.
Respondent notes that Complainant also encountered failuretwice
in attempting to register the AATI mark with the USPTO. Lack of
governmental registration of a mark may impute a lack of standing,
especially where common law evidence is lacking. See Brinks Servs.
Inc. v. Holt, FA 324699 (FORUM Nov. 4, 2004) (finding that the
complainant did not have standing to bring a complaint under the
Policy because the complainant did not provide any evidence that it
had valid trademark registrations for the mark or common law rights in
the mark, and the complainant did not even suggest how long it had
used the mark or identified what services were connected with the
mark). Therefore, the Panel finds that Complainant lacks standing to
bring this dispute.
Rights or Legitimate Interests
The Panel finds that Complainant has not established a prima facie
case in support of its arguments that Respondent lacks rights and
legitimate interests under Policy 4(a)(ii). See Terminal Supply, Inc. v.
HI-LINE ELECTRIC, FA 746752 (FORUM Aug. 24, 2006) (holding that the
complainant did not satisfactorily meet its burden and as a result found
that the respondent had rights and legitimate interests in the domain
name under UDRP 4(a)(ii)); see also Workshop Way, Inc. v. Harnage,
FA 739879 (FORUM Aug. 9, 2006) (finding that the respondent overcame
the complainants burden by showing it was making a bona fide
offering of goods or services at the disputed domain name).
Respondent is a domain reseller who had acquired a valuable nondistinctive four-letter domain name at auction. Four-letter domains
acquired by domain resellers have been considered as inherently
having value because of their appeal as being simplistic and therefore
rights and legitimate interests may exist merely by virtue of acquiring
them. See Franklin Mint Fed. Credit Union v. GNO, Inc., FA 860527
(FORUM Mar. 9, 2007) (concluding that the respondent had rights or
legitimate interests in the <fmcu.com> domain name because it was a
generic domain name reseller who owned numerous four-letter domain
names); see also IDN, Inc. v. Name Administration Inc. (BVI),
FA1741862 (FORUM Oct. 23, 2012) (The general use of a domain name
comprising four letters which could stand for anything without
targeting the Complainants business constitutes, in the opinion of the
Panel sufficient grounding for the Respondent to establish rights or
legitimate interests in the disputed domain name pursuant to Policy

4(a)(ii).); see also BioDelivery Sciences International, Inc v HLK


Enterprises, Inc. c/o Domain Admin, FA 0804002275189 (FORUM May.
19, 2008) (finding that based on the fact that the disputed domain
name and Complainants mark contain only four letters that could
stand for many things unrelated to Complainants business, the Panel
finds that Respondents use of the disputed domain name as a portal
website is a showing of rights or legitimate interests under Policy 4(a)
(ii).). Accordingly, while Respondenta generic domain name reseller
registered a four-letter acronymic domain name via an online
auction, the Panel finds that such circumstances confer rights and
legitimate interests under Policy 4(a)(ii).
The letters of <aati.com> are common and have a wide array of
meanings. Complainant does not have an exclusive monopoly on the
letters on the Internet. The Panel finds that Respondent can establish
rights or legitimate interests in <aati.com> pursuant to Policy 4(a)
(ii). See Kaleidoscope Imaging, Inc. v. V Entmt, FA 203207 (FORUM Jan.
5, 2004) (finding that the respondent was using the
<kaleidoscope.com> domain name for a bona fide offering of goods or
services because the term was generic and respondent was using
the disputed domain name as a search tool for Internet users
interested in kaleidoscopes); see also Qwest Commcns Intl v. QC
Publg Grp., Inc., FA 286032 (FORUM July 23, 2004) (stating that
Complainants rights in the QWEST mark are limited to its application
to the tele-communications industry, where a variety of other
businesses used the mark in unrelated fields).
Registration and Use in Bad Faith
The Panel finds that Complainant failed to meet the burden of proof of
bad faith registration and use under Policy 4(a)(iii). See Starwood
Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512
(FORUM Mar. 9, 2005) (finding that the complainant failed to establish
that the respondent registered and used the disputed domain name in
bad faith because mere assertions of bad faith are insufficient for a
complainant to establish Policy 4(a)(iii); see also Graman USA Inc. v.
Shenzhen Graman Indus. Co., FA 133676 (FORUM Jan. 16, 2003) (finding
that general allegations of bad faith without supporting facts or specific
examples do not supply a sufficient basis upon which the panel may
conclude that the respondent acted in bad faith).
Also, the Panel concludes that Respondent has rights or legitimate
interests in <aati.com> pursuant to Policy 4(a)(ii), and therefore,
Respondent did not register or use <aati.com> in bad faith pursuant
to Policy 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom

Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad
faith registration and use was moot once the panel found the
respondent had rights or legitimate interests in the disputed domain
name); see also Vanguard Group Inc. v. Investors Fast Track, FA
863257 (FORUM Jan. 18, 2007) (Because Respondent has rights and
legitimate interests in the disputed domain name, his registration is
not in bad faith.).
In it's attempt to assert bad faith, Complainant confuses a general offer
for sale with the type of behavior set out in Policy 4(b)(i). See Policy
4(b)(i):
[C]ircumstances 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-ofpocket costs directly related to the domain name[.] (emphasis
added). Respondent has not registered or used <aati.com> in
bad faith because it has not violated the above provision of the
Policy. Respondent is a generic domain name reseller. Sale of
domain names for profit is not proscribed by the Policy or the
ACPA. See Electronic Arts Inc. v. Abstract Holdings Intl LTD /
Sheren Blackett, FA 1415905 (FORUM Jan. 4, 2012):
Respondent never offered to sell the <ssx.com> domain name to
Complainant. Respondent never targeted Complainant as a
potential purchaser of the domain name. The offer to sell was
automatically generated on the resolving website. Respondent
would certainly have sold the name to Complainant, as
Respondent would have sold to any person interested in
purchasing the name, but it did not intend to sell the disputed
domain name to Complainant. These facts do not show that
Respondent registered or used the <ssx.com> domain name in
bad faith under Policy 4(b)(i).
Accordingly, the Panel finds the facts of the instant dispute analogous
to those in Electronic Arts Inc. and therefore that Respondent did not
register or use <aati.com> in bad faith under Policy 4(b)(i).
In this case, there is no evidence that Respondent had actual or
constructive knowledge of Complainant when registering the domain
name. Complainants reputation is among a very limited clientele who
possess doctorates in genetics and run sophisticated laboratories.

Even if Respondent had constructed a trademark search, it would have


found the previously failed trademark applications filed by Complainant
with the USPTO for the AATI mark. Therefore, there could not have
been bad faith registration at the anonymous auction in which
Respondent acquired the domain name.
The disputed domain name <aati.com> is comprised entirely of a
common acronym that has many meanings apart from the use of the
AATI acronym alleged by Complainant. Moreover, the registration and
use of domain names comprising such common acronyms is not
necessarily done in bad faith. The Panel finds that Respondent did not
register or use <aati.com> in bad faith under Policy 4(a)(iii). See
BioDelivery Sciences International, Inc, supra (The four letters that
create the asserted mark and the disputed domain name could stand
for many things that do not interfere with Complainants business.
Therefore, bad faith registration and use of the disputed domain name
pursuant [to] Policy 4(a)(iii) has not been proven.).
DECISION
Having failed to establish all three elements required under the ICANN
Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <aati.com> domain name shall
remain with Respondent.

Daniel B. Banks, Jr., Panel Chair


Dr. Beatrice Onica-Jarka, Panelist
Hon. Neil A. Brown, QC, Panelist
Dated: January 1, 2017