Daily Domainer

The next time you register a domain name be careful what you think.

Just ask Tokyo-based Jonathan Witte, one of the world's foremost mobile designers, who lost his domain name inc.mobi to a company called Mansueto Ventures because of his alleged thoughts at the moment he registered the domain.

Mansueto Ventures owns inc.com as well as a US trademark for "Inc" as the title of a monthly magazine. However, "Inc" is not trademarked in Japan, where Witte, the owner of Mobile Designer, has been living for the past eight years.

WIPO judge Sir Ian Barker's decision to transfer inc.mobi to Mansueto Ventures boils down to Witte's alledged thoughts at the moment he registered the domain:

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.

The judge's conclusion? Since Witte is a US citizen and admitted that he had heard of INC Magazine before, he must have thought of the magazine when he registered the domain. Thus, so the judge's reasoning goes, he made the registration in "bad faith", which is one of the three elements a complainant must prove to obtain the rights to a domain name under ICANN's Uniform Dispute Resolution Policy (UDRP):

1. The disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. (The judge acknowledged that "Inc" is not registered as a trademark in Japan but claimed that it doesn't make any difference.)
2. The respondent has no right or legitimate interest in respect of the disputed domain name. (According to the judge, as Mr. Witte doesn't run a business by the name of "Inc" under the inc.mobi domain he has no right to the domain.)
3. The disputed domain name was registered and is being used in bad faith. (Let's see, says the judge: Mr. Witte tried to sell the domain for $550,000 on eBay, he is an American citizen, he has heard of INC. Magazine before, and he is involved in the mobile industry. Therefore, he must have thought of INC. Magazine when he registered the domain.)

In his defense, Mr. Witte said that "Inc" is a generic term which is used to indicate that a company has been incorporated (examples: Google Inc., Yahoo! Inc.).

The judge 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 relatively straight-forward. Mansueto Ventures owns the "Inc" trademark in the US and several other countries (but not in Japan). To meet the UDRP requirements, unjust as they may be, it is sufficient to own a trademark anywhere in the world.

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. On the contrary, it is Mansueto Ventures who is showing bad faith because they never approached Mr. Witte directly and are effectively hijacking a valuable domain without compensation.

The judge's consideration of whether Mr. Witte 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.

Mr. Witte owns several three-letter .mobi domains, and it is extremely doubtful that after 8 years in Japan he specifically had Mansueto Ventures in mind when registering inc.mobi. A quick survey among the Daily Domainer's friends and associates showed that not a single person thought of INC. Magazine when asked for their associations with the term "Inc".

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 to send a message to the world that corporate bullying and reverse domain hijacking will not be tolerated by the Internet community.

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.