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Inspectorate America Corporation v. Netcorp, LLC
Case No. D2017-1930

1. The Parties

Complainant is Inspectorate America Corporation of Lauderdale, Florida, United States of America (“United
States”), represented by Ballard Spahr, LLP, United States.

Respondent is Netcorp, LLC of Glendale, California, United States, represented by John B. Berryhill Ph.d.
Esq., United States.

2. The Domain Name and Registrar

The disputed domain name <> (the “Domain Name”) is registered with PDR Ltd. d/b/a (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 2, 2017.
On October 3, 2017, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the Domain Name. On October 4, 2017, the Registrar transmitted by email to the Center its
verification response confirming that Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name
Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution
Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy
(the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint,
and the proceedings commenced on October 13, 2017. In accordance with the Rules, paragraph 5, the due
date for Response was November 2, 2017. On November 1, 2017, Respondent sent an email to the Center
requesting a four calendar day extension to submit its Response. On November 2, 2017, the Center granted
the automatic four calendar day extension for response. The Response was filed with the Center
November 6, 2017.
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The Center appointed Robert A. Badgley, Richard G. Lyon and Adam Taylor as panelists in this matter on
December 6, 2017. The Panel finds that it was properly constituted. Each member of the Panel has
submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the
Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant describes itself as an “independent analytic testing organization” which “offers oil testing
services to production machinery, manufacturing equipment, power generation, marine, heavy construction,
mining, trucking, transit and aircraft industries.” Complainant offers an online software application for
managing oil analysis program data known as LOAMS, an acronym for Lube Oil Analysis Management

Complainant holds two registered trademarks. First, the stylized mark LOAMS was registered with the
United States Patent and Trademark Office (“USPTO”) on June 1, 1999 under Reg. No. 2248502 in
connection with computer software (class 9). Second, the word mark LUBE OIL ANALYSIS MANAGEMENT
SYSTEM (LOAMS) was registered with the USPTO on May 25, 1999 under Reg. No. 2246946 in connection
with a computer software program (class 9).

On its own website, Complainant features a stylized mark LOAMS which differs stylistically – and
significantly – from the stylized LOAMS mark registered by Complainant. The stylized LOAMS mark on the
website bears an “®” registration symbol, but Complainant has submitted no evidence that this stylized mark
is registered.

The Domain Name was registered on April 17, 2003. For several years, the Domain Name has resolved to a
parking page featuring hyperlinks to various sites offering loan-related services. It is undisputed that
Respondent derives pay-per-click revenue from such hyperlinks. There is no evidence that Respondent’s
website has ever contained a hyperlink to any site related to oil or lubricants or oil testing or anything related
to Complainant’s business.

Fourteen years after the Domain Name was registered, Complainant’s counsel sent Respondent a cease-
and-desist letter on June 8, 2017. Respondent’s counsel responded by letter dated June 13, 2017. In that
letter, Respondent’s counsel stated that Respondent “has never heard of your client and has never used the
domain name in association with any purpose relating to lubricant analysis.” Respondent’s counsel also
stated: “My client’s use of the domain name to provide a paid advertising directory relating to
loans, as shown in your letter and has been the consistent use of the domain name for many years, in no
way violates your client’s specialized, figurative and apparently-abandoned mark for lubrication analysis
products and services.”

Respondent’s counsel also stated: “Your suggestion that use of a typographic variant of a generic term for
purposes relating to the generic meaning of that word does not constitute a legitimate use of a domain name,
is misinformed.” Respondent’s counsel then supplied the citation to a prior decision under the Policy, Dial-A-
Mattress Operating Corp. v. Ultimate Search, WIPO Case No. D2001-0764 (involving <>), in
which the panel had stated: “We accept that a consumer who is either correctly or wrongly spelling the word
‘mattress’ is most likely and obviously looking for a mattress and that the Respondent should not be unfairly
hindered from running a web site directed to the sale of mattresses or the supply of information relating
thereto. That is, under the Domain Name.”

Complainant sent another letter to Respondent’s counsel, evidently on June 30, 2017, but the letter is not
contained in the record. Complainant sent a chaser e-mail on July 17, 2017, to which Respondent did not
reply, directly or through counsel.

Respondent put into evidence several other domain names it owns, each reflecting a misspelling of a generic
word or phrase, such as <>, <>, <>, and <>.
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Respondent is in the business of using such domain names to set up directory pages related to the subject
of the misspelled generic term and derive pay-per-click revenues through hyperlinks, much as Respondent
has done vis-à-vis the Domain Name in this case.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has satisfied all three elements required under the Policy for a transfer of the
Domain Name. The thrust of Complainant’s case is that the Domain Name is identical to Complainant’s
LOAMS mark, and Respondent is using the Domain Name improperly for commercial gain by deriving pay-
per-click revenues at the website to which the Domain Name resolves.

B. Respondent

Respondent disputes the Complaint on all three elements of the Policy. The Panel will not discuss each of
Respondent’s arguments, because doing so is unnecessary to the disposition of this case. Respondent’s
essential point is that it has never targeted Complainant’s LOAMS mark, but has pursued its longstanding
business model of registering domain names reflecting a misspelling of a generic word in the hope of
attracting typo-driven Internet traffic and deriving commercial gain. According to Respondent, this activity is
legitimate and has been found to be so in prior decisions under the Policy.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the
Domain Name:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which
Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Although the issue is slightly more nuanced than it might seem at first blush (for reasons whose explication is
not necessary to the disposition of this case), the Panel is prepared to conclude that Complainant has rights
in the mark LOAMS through registration and use, and that the Domain Name is identical to the LOAMS

Complainant has established Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the
Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable
preparations to use, the Domain Name or a name corresponding to the Domain Name in
connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly
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known by the Domain Name, even if you have acquired no trademark or service mark rights;

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name,
without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark
or service mark at issue.

The Panel need not address this issue, in view of its conclusion below on the “bad faith” issue.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,”
are evidence of the registration and use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name
primarily for the purpose of selling, renting, or otherwise transferring the Domain Name
registration to Complainant who is the owner of the trademark or service mark or to a
competitor of that Complainant, for valuable consideration in excess of its documented out of
pocket costs directly related to the Domain Name; or

(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the
business of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for
commercial gain, Internet users to Respondent’s website or other on line location, by creating
a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or
endorsement of Respondent’s website or location or of a product or service on Respondent’s
website or location.

The gist of Complainant’s claim is that Respondent is in violation of the above-quoted Policy paragraph 4(b)

The Panel unanimously concludes that there is no evidence whatsoever of registration and use of the
Domain Name in bad faith. First, there is no reason to believe that Complainant was aware of Complainant
or its LOAMS mark, given the relatively specialized field of commerce in which Complainant operates.
Complainant provided no evidence, beyond a bald assertion, that its LOAMS mark has achieved widespread
recognition. Respondent flatly denied having ever heard of the LOAMS mark, and the Panel finds
Respondent’s denial to be very plausible.

Second, as Respondent spelled out clearly in its pre-Complaint response to Complainant’s cease-and-desist
letter, it registered the Domain Name because it reflects a common misspelling of the generic word “loans”,
and Respondent is in the business of capitalizing on the misspelling of generic terms. This type of activity
has been held to be legitimate in numerous prior decisions under the Policy. For example, in the Dial-A-
Mattress Operating Corp. v Ultimate Search decision, supra, cited by Respondent to Complainant prior to
this proceeding, the panel so held. See also, Florim Ceramiche S.p.A. v. Domain Hostmaster, Customer ID:
24391572426632, Whois Privacy Services Pty LTD / Domain Administrator, Vertical Axis Inc., WIPO Case
No. D2015-2085 (respondent’s use of <>, a misspelling of “credit”, to advertise credit services was
not bad faith despite complainant’s CEDIT mark).

Third, as Respondent pointed out in pre-proceeding correspondence, the hyperlinks at the website to which
the Domain Name resolves do not have and have never had any relationship to Complainant or
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Complainant’s competitors, products, or services, or to oil or lubrication analysis.

In sum, there is simply no basis to conclude that Respondent was seeking to engender consumer confusion
between Complainant’s LOAMS mark and the Domain Name.

Complainant has not established Policy paragraph 4(a)(iii).

D. Reverse Domain Name Hijacking

Respondent did not make a formal request for a finding of reverse domain name hijacking, i.e., a finding that
the Complaint was brought by Complainant in bad faith, but the Panel may make such a finding of its own
initiative – and elects to do so here. See WIPO Overview of WIPO Panel Views on Selected UDRP
Questions, Third Edition (“WIPO Overview 3.0”), section 4.16 (“it is not necessary for a respondent to seek [a
Reverse Domain Name Hijacking (“RDNH”)] finding” in order for a panel to make such a finding).

This Complaint was doomed before it was filed. Complainant, who was represented by counsel, should have
known this. The Domain Name was registered back in 2003, and the content of the website to which it
resolved bore no relationship to Complainant’s goods and services, or those of a competitor of Complainant,
or to anything even remotely close to such goods and services.

More importantly, in pre-dispute correspondence, Respondent plausibly denied having had any knowledge or
awareness of Complainant’s mark, spelled out its motivation for registering the Domain Name, confirmed that
it had been using the Domain Name for years in pursuit of its legitimate business purpose, and supplied
authority to Complainant and its counsel for the proposition that Respondent’s activities were not in bad faith.
Nonetheless, Complainant could not take “No” for an answer, and chose to launch its foredoomed Complaint.

The Panel unanimously finds that Complainant, in these circumstances, is guilty of reverse domain name

7. Decision

For the foregoing reasons, the Complaint is denied. This Complaint was brought in bad faith and constitutes
reverse domain name hijacking.

Robert A. Badgley
Presiding Panelist

Richard G. Lyon

Adam Taylor
Date: December 13, 2017