8×8, Inc. (“Complainant”), owner of the domain name 8×8.com just won a three member panel against 8×8 Mediacom Services Ltd represented by Ari Goldberger of Esqwire.com, New Jersey, USA on the domain name 8×8.net which was registered back on August 8, 2001.
Complainant states that it provides hosted business VOIP phone services and a wide variety of cloud-based communications services and that it has been using the 8X8 trade mark since at least as early as 1996 and that over the past 17 years it has invested a significant amount of time and resources to market its services under the 8X8 mark, and as a result has developed a strong reputation with substantial goodwill and customer loyalty.
Complainant advises that it owns U.S. federal trade mark applications and registrations for the mark 8X8 and operates a website at www.8×8.com
Respondent states that it registered the Domain Name because it is the domain name equivalent of the common computing, communication and digital information term “byte by byte,” and is derived from the fact a “byte” is the most fundamental increment of data used throughout computing and digital communications — consisting of 8 bits containing 0 or 1′s.
Respondent says that almost all commercial computing and digital communications equipment and services process data incrementally byte by byte, thus the byte by byte or 8×8 terminology. This sequential processing of data byte by byte or “8×8″ is the basis for world-wide technology and is the fundamental process shared by all computers, our electronic devices and digital communications.
The English language character “x” is the commonly used abbreviation for the word “by” and in the world of computing and communications technology abbreviations incorporating numerals and English language characters are used frequently. Respondent contends that the Domain Name was registered solely because it is the numerical representation for the term “byte by byte.”
Respondent argues that it registered an available domain on August 8, 2001 when it expired and became available, over 12 years ago, along with other computing and digital related domain names.
The Panel notes that the website housed at Respondent’s <8×8.net> domain name features links to websites offering telephone and VOIP services, which is one of the industries in which Complainant operates. Those links are thus links to Complainant’s competitors and it must be assumed that Respondent profits from click-through fees associated with the links displayed on its site. Moreover, although the Panel has given careful consideration to Respondent’s submissions in this regard, essentially Respondent is responsible for the content of the website.…
