Summary:
US based Empire Flippers, LLC claimed that the disputed domain name BuySellEmpire.com have copied the dominant part of their mark “Empire” and also the site is copied (both read buy and sell Quality Website/Business), etc. And prayed for the transfer of the domain name.
EmpireFlippers is a registered Trademark in the USA and has been operating since 2013. But BuySellEmpire.com was registered since 2017 and has been actively operating since 3 years at a good scale and also has a Trademark Application pending in India, so held to have legitimate rights.
Mainly the EmpireFlippers were trying to show they just discovered about BuySellEmpire recently, but the parties already had communicated in 2018, the evidence was produced by the Respondent and since then BuySellEmpire have grown a lot…. so now demonstrable preparation were visible in terms of the UDRP Policy and hence legitimate interests upheld.
Further, given the generic nature of the keywords in the domain name, no Bad Faith could be presumed. In any case both the Companies involved in Buying and Selling of Empires, i.e. large businesses. Hence, Complaint Denied.
DECISION
Empire Flippers, LLC v. Ansh Gupta / Jamkain Media Ventures
Claim Number: FA2012001925050
PARTIES
Complainant is Empire Flippers, LLC (“Complainant”), represented by Eric Misterovich of Revision Legal, Michigan, USA. Respondent is Ansh Gupta / Jamkain Media Ventures (“Respondent”), represented by Ankur Raheja of CyLaw Solutions, India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <buysellempire.com>, registered with GoDaddy.com, LLC.
PANEL
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
David H. Bernstein as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the Forum electronically on December 15, 2020; the Forum received payment on December 15, 2020. The Complaint named Domains by Proxy, LLC as the respondent.
On December 16, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <buysellempire.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the domain name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”). Also on December 16, 2020, the Forum notified Complainant of the Respondent’s identity.
On December 16, 2020, the Complainant filed an Amended Complaint. On December 17, 2020, the Forum served the Complaint, the Amended Complaint, and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 6, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@buysellempire.com. Also on December 17, 2020, 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 Respondent’s registration as technical, administrative, and billing contacts.
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.
On December 18, 2020, Respondent requested a seven-day extension of time for its Response in light of the Christmas and New Year’s holidays. Because Rule 5(b) provides that a Respondent may obtain an automatic four-day extension of the deadline for Response, and in light of Forum’s Supplemental Rule 1(g)(ii), the Forum extended the deadline for Response to January 11, 2021.
A timely Response was received and determined to be complete on January 7, 2021.
On January 12, 2021, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed David H. Bernstein as Panelist.
On January 14, 2021, Complainant filed an additional submission. Unsolicited supplemental filings are not permitted as a matter of right; they are only permitted in exceptional circumstances, such as where Respondent’s submission includes contentions that Complainant could not reasonably have anticipated when it filed its Complaint. See WIPO Decision Overview 3.0, § 4.6.
On January 18, 2021, Respondent filed an objection to Complainant’s additional submission and, in the alternative, sought leave to file its own additional submission.
Complainant has not identified any particular contentions in the Response that it could not reasonably have addressed in the Complaint or any other factors that would justify the filing of an additional submission. Instead, Complainant has primarily reiterated arguments made in the Complaint and responded to Respondent’s defenses (all of which could have been anticipated). Although Respondent’s allegation of Reverse Domain Name Hijacking could potentially merit a reply (such as to explain why Complainant did not file the Complaint in bad faith or with the purpose of harassing Respondent), Complainant merely denied this accusation in a summary manner and reiterated facts already alleged in the Complaint.
For the foregoing reasons, and in light of the Panel’s discretion on whether to accept additional submissions under Rules 10(d) and 12 and Forum Supplemental Rule 7, the Panel declines to consider Complainant’s additional submission. Because the Panel declines to consider Complainant’s additional submission, Respondent’s alternative request to submit an additional submission is denied as moot.
RELIEF SOUGHT
Complainant requests that the domain name be
PARTIES’ CONTENTIONS
A. Complainant
Complainant Empire Flippers, LLC is a Delaware company that, since 2013, has brokered the sale of internet businesses under the name EMPIRE FLIPPERS. Complainant owns the domain name <empireflippers.com>. Complainant alleges that it has assisted in the sale of over 1,400 businesses worth a combined total of $180,000,000 USD.
On May 13, 2015, Complainant’s predecessor in interest submitted an application to the U.S. Patent and Trademark Office (“USPTO”) to register EMPIRE FLIPPERS, noting a first use in commerce date of March 14, 2013. The USPTO granted the registration effective January 26, 2016, under Reg. No. 4,892,061. The registration was assigned to Complainant on February 24, 2016.
Complainant contends that the disputed domain name, <buysellempire.com>, is confusingly similar to Complainant’s registered mark because the domain name incorporates a dominant portion of Complainant’s mark, namely, the word “empire.” Complainant further contends that Respondent’s addition of the words “buy” and “sell” in the disputed domain name does not prevent a finding of confusing similarity because those words are merely descriptive of the services offered by Respondent and do not mitigate against confusion.
Complainant contends that Respondent does not have rights or legitimate interests in the disputed domain name because Respondent is not known by the disputed domain name and Complainant has not authorized Respondent to use its mark. Additionally, Complainant contends that Respondent is not utilizing the mark to make a bona fide offering of services because Respondent uses the disputed domain only for deceptive and improper business purposes. In support of these contentions, Complainant asserts that Respondent is a competitor of Complainant and that Respondent copied certain elements of the layout, design, and content of Complainant’s website.
Finally, Complainant contends that Respondent registered and used the disputed domain name in bad faith. In support of this contention, Complainant asserts that “it is inconceivable” that Respondent could have registered the disputed domain name without actual or constructive knowledge of Complainant’s rights in the EMPIRE FLIPPERS mark and that Respondent selected the disputed domain name in order to create a misimpression among prospective customers of an association between the disputed domain and Complainant. Complainant further asserts that Respondent uses the disputed domain name to divert prospective customers of Complainant to Respondent’s website, where Respondent offers competing services. In support of these contentions, Complainant points to the fact that Respondent registered the disputed domain name in July 2017, several years after Complainant first used its EMPIRE FLIPPERS mark, that Respondent chose a confusingly similar domain name to offer competing services, and that Respondent copied various elements of Complainant’s website.
B. Respondent
Respondent is an Indian company (and the company’s owner) that brokers the sale of internet businesses through the disputed domain name, <buysellempire.com>.
Respondent registered the disputed domain name on July 22, 2017. In March 2018, Respondent applied to register the mark BUYSELLEMPIRE with India’s Trade Marks Registry; that application is, apparently, still pending. Respondent alleges that it has never been accused by Complainant of infringing Complainant’s trademark prior to the filing of the Complaint in this dispute.
Respondent contends that the disputed domain name is not confusingly similar to Complainant’s mark. Respondent denies that Complainant’s mark and the disputed domain name are phonetically similar. Respondent also denies that Complainant has any rights in the word “empire” because “empire” is merely a dictionary word that Complainant may not monopolize for its dictionary meaning. Respondent provided a list of thousands of domain names that contain the word “empire,” contending that “empire” is commonly used by many businesses, including businesses in Class 35, and, for that reason, the mark is not protectable by itself. Respondent further notes that neither the disputed domain name nor Respondent’s website makes reference to the word “flippers” or to Complainant’s mark in its entirety.
Respondent contends that it has legitimate interests in the disputed domain name. First, Respondent contends that, where a Respondent registers a domain name consisting of dictionary terms under the good faith belief that the domain name’s value derives from its descriptive qualities rather than its trademark value, the registration and use establish a legitimate interest in the mark. Respondent contends that “empire” is a common dictionary term used by both Complainant and Respondent for one of its dictionary meanings (referring to a large business or organization), and that Respondent selected the disputed domain name solely for its descriptive qualities. Second, Respondent contends that it used the disputed domain name to make a bona fide offering of services prior to the dispute. In support of this contention, Respondent cites the following facts: Respondent has brokered the sale of websites through the disputed domain name since 2018; in February 2018, Respondent hired a UK-based company to generate leads for buyers and sellers on the disputed domain; Respondent partnered with Flippa.com to broker the sale of businesses, brokering more than $100,000 USD worth of businesses together; in 2019, Respondent listed businesses on the disputed domain collectively worth more than $3 million; Respondent received a grant from the Indian government to run and grow its website at the disputed domain; and Respondent engaged in a Facebook advertisement campaign for the disputed domain starting in September 2020. Additionally, Respondent provided documentation of at least 16 sales completed through the disputed domain. Third, Respondent contends that it is commonly known by the disputed domain name, citing numerous news articles and blog posts that make reference to the disputed domain.
Finally, Respondent contends that its registration and use of the disputed domain name were not done in bad faith, citing a variety of factors in support of this contention. Respondent contends that, in order to prove bad faith registration, Complainant must show that Respondent registered the domain name not because of its common descriptive meaning but rather because the domain name corresponded to a protected mark. Respondent implied that it was aware of Complainant at the time it registered the domain name but denied that it registered the domain name with Complainant’s mark in mind or with intent to capitalize on Complainant’s registered mark, arguing that it could not be assumed to have been aware that Complainant registered its mark in the United States because Respondent is located in India. Respondent alleges that it chose the domain name <buysellempire.com> because Respondent sought an “exact match domain” that described the type of services provided by Respondent, and many similar domains were already registered. Respondent asserts that “empire” is merely a synonym for a large business, and the disputed domain name is simply the combination of that dictionary word with “buy” and “sell,” which accurately describes the business Respondent conducts through the disputed domain. Respondent contends that its website is not designed to mislead consumers into thinking it is associated with Complainant, alleging that Respondent’s website makes no reference to Respondent’s mark on its website and that Respondent did not copy Complainant’s website design but instead designed it using the Themify Ultra theme. Complainant denied that the disputed domain name is likely to cause confusion among consumers, alleging that no one has contacted Respondent about experiencing confusion and that prospective customers of Complainant and Respondent are relatively sophisticated and unlikely to be confused. Lastly, Respondent denies that the disputed domain name was registered or used for the purpose of disrupting Complainant’s business, that the domain name was registered or used to prevent Complainant from using its mark in a corresponding domain name, and that Respondent has ever tried to sell the disputed domain name to Complainant.
Respondent also claimed that Complainant engaged in Reverse Domain Name Hijacking by filing the Complaint. Respondent characterized the Complaint as a “Plan B” claim that is calculated and designed to harass and destroy Complainant’s competitors, create a monopoly in the industry, and steal a highly valuable domain name. In support of this claim, Respondent contended that due diligence on the part of Complainant would have shown that Complainant could not prove its claims, emphasizing that Complainant is represented by counsel who should have recognized that the Complaint could not succeed. Throughout its Response, Respondent also repeatedly asserts that Complainant attempted to mislead the Panel in a variety of ways.
FINDINGS
The disputed domain name, <buysellempire.com>, is confusingly similar to Complainant’s registered mark, EMPIRE FLIPPERS.
Complainant has presented insufficient evidence to establish that Respondent lacks rights or legitimate interests in the domain name.
Complainant has not presented evidence that proves that Respondent registered and used the disputed domain name in bad faith.
Complainant did not engage in Reverse Domain Name Hijacking.
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
It is undisputed that Complainant has rights to the U.S. federally registered EMPIRE FLIPPERS service mark. This registration “prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP.” WIPO Decision Overview 3.0, § 1.2.1.
Respondent’s argument that the disputed domain name is not confusingly similar to Complainant’s registered mark is without merit. Confusing similarity for the purposes of the Policy is assessed by “comparing the (alpha-numeric) domain name and the textual components of the relevant mark.” Id. § 1.10. “[W]here at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” Id. § 1.7.
In this case, the disputed domain name incorporates a dominant feature of Complainant’s mark—the word “empire.” That alone is sufficient to establish confusing similarity.
Respondent nevertheless argues that the disputed domain name is not confusingly similar to Complainant’s mark because the disputed domain name includes the words “buy” and “sell” and omits of the word “flippers,” such that Internet users are not likely to confuse Respondent’s website for Complainant’s website. This argument reflects a misunderstanding of the first prong of the Policy. Whether the domain name is likely to confuse Internet users into believing that the disputed domain name comes from or is associated with Complainant is irrelevant to the inquiry under the first prong. As explained in Section 1.7 of the WIPO Decision Overview 3.0:
It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. . . . Issues such as the strength of the complainant’s mark or the respondent’s intent to provide its own legitimate offering of goods or services without trading off the complainant’s reputation, are decided under the second and third elements. Panels view the first element as a threshold test concerning a trademark owner’s standing to file a UDRP complaint, i.e., to ascertain whether there is a sufficient nexus to assess the principles captured in the second and third elements.
For these reasons, “the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.” Id. § 1.8. The Panel notes that “buysell” could reasonably be understood as a synonym for “flipp[ing]” a business, which underscores rather than undermines the Panel’s conclusion that the disputed domain name is confusingly similar to Complainant’s mark for the purposes of this first element.
Accordingly, Complainant has met its burden under the first element.
Rights or Legitimate Interests
In order to prevail under the second element, Complainant must first establish “a prima facie case that the respondent lacks rights or legitimate interests . . . in the domain name.” WIPO Decision Overview 3.0, § 2.1. Complainant has alleged that Respondent is not commonly known by the disputed domain name or a related name, and that Complainant has not granted Respondent authority to use Complainant’s mark. This is sufficient to make out a prima facie case. See Logistics Plus, Inc. v. Silverman, Jay, FA2007001903358 (Forum Aug. 18, 2020).
Consequently, “the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name.” WIPO Decision Overview 3.0, § 2.1. The burden of proof, however, always remains with the Complainant. Id.; Agfa-Gevaert N.V. v. Pascal Olaf Schubert, Schubert UG, WIPO Case No. D2020-1413 (July 27, 2020); American Public University System, Inc. v. Domain Protection Services, Inc. / Domain Vault, Domain Vault LLC, WIPO Case No. D2020-1690 (Sept. 4, 2020).
Respondent contends that it has rights or legitimate interests in the disputed domain name, citing three factors: (1) Respondent’s use of the disputed domain name to make a bona fide offering of services prior to notice of the dispute, see Policy ¶ 4(c)(i); (2) Respondent’s registration of the disputed domain name constituted by three dictionary words that the Respondent registered in good faith due to the name’s descriptive qualities (which the Panel interprets to be a contention that Respondent made fair use of the disputed domain name under ¶ 4(c)(iii) of the Policy); and (3) Respondent is commonly known by the disputed domain name, see id. ¶ 4(c)(ii).
The second of these defenses is not valid. Whether “buy,” “sell,” and “empire” are dictionary words is irrelevant; there is no general right to register and use any domain name comprised of dictionary words. Rather, as explained in the WIPO Decision Overview:
Panels have recognized that merely registering a domain name comprised of a dictionary word or phrase does not by itself automatically confer rights or legitimate interests on the respondent; panels have held that mere arguments that a domain name corresponds to a dictionary term/phrase will not necessarily suffice. In order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trademark rights. . . .
For a respondent to have rights or legitimate interests in a domain name comprising an acronym, the respondent’s evidence supporting its explanation for its registration (and any use) of the domain name should indicate a credible and legitimate intent which does not capitalize on the reputation and goodwill inherent in the complainant’s mark.
WIPO Decision Overview 3.0, § 2.10.
If Respondent’s domain name were <buysellinternetbusinesses.com>, Respondent might be able to establish that such a domain name is descriptive of Respondent’s business. “Empire,” though, is not a descriptive term for internet businesses. Although one of its meanings is “a large commercial organization owned or controlled by one person or group,” that is not a description for all (or even most) internet businesses. Moreover, Respondent has not established that the only internet businesses that it sells are empires; rather, they appear to be smaller businesses that cannot fairly be described as empires. For these reasons, the Panel rejects the second of Respondent’s arguments.
Respondent’s first and third arguments are related, and present a closer question. If Respondent has credible evidence that it was known by the name buysellempire and was using the corresponding domain name in connection with a bona fide offering of services prior to notice of the dispute, that would be sufficient for Respondent to have carried its burden of producing evidence showing that Respondent has rights or legitimate interests in the disputed domain name.
There are two components to this showing. First, the Panel must consider when Respondent was first notified of this dispute. And, second, the Panel must consider whether Respondent’s offering of services prior to that date was bona fide.
Respondent alleges, and Complainant does not contest, that Complainant did not send Respondent a cease-and-desist letter prior to filing the Complaint, and neither party has alleged that Complainant and Respondent otherwise communicated regarding Respondent’s use of the disputed domain name prior to the filing of the Complaint. Accordingly, the Panel finds that Respondent was first notified of the dispute on December 17, 2020, when Respondent received notice of the Complaint in this case.
Respondent has offered uncontested evidence that Respondent prepared to use and actually used the disputed domain name to offer services long prior to December 17, 2020. Specifically, Respondent has alleged and documented its preparations to use the domain name—including its efforts to generate leads for buyers and sellers, its advertising efforts, its development of its website, and its various partnerships—as far back as January 2018. Respondent also provided documentation of at least 16 sales completed through the disputed domain, at least some of which were completed on or before December 16, 2020.
Complainant does not appear to contest that Respondent was engaged in this business prior to notice of the dispute. Indeed, Complainant concedes that, at the time the Complaint was filed, Respondent’s website listed two businesses for sale. That alone is sufficient to support a conclusion that, before notice of the dispute, Respondent used the disputed domain name in connection with an offering of services.
The central question, then, is whether Respondent’s offering of services before the filing of the Complaint was bona fide. If Respondent’s use of the disputed domain name was infringing on Complainant’s trademark rights, then that use would not be bona fide for the purposes of establishing Respondent’s rights or interests in the disputed domain name. See Schouten Industries B.V. and Schouten Products B.V. v. Canadian Soylife Health Co. Ltd., FA0303000149188 (Forum July 19, 2003) (“Because Respondent’s adoption and use of the SOYLIFE mark was thus infringing, the majority holds that it cannot qualify as ‘bona fide’ for purposes of establishing a legitimate interest under the Policy.”). If, on the other hand, Respondent’s use of the disputed domain name prior to December 16, 2020 did not infringe or otherwise violate Complainant’s trademark rights, then Respondent’s use would have been bona fide and would support a finding that Respondent has rights or legitimate interests in the disputed domain name.
Although it is a close question, the Panel finds that Respondent has satisfied its burden of production by coming forward with evidence that supports a finding that its use of the disputed domain name was bona fide. The Panel also finds that, although Complainant offers some credible arguments in support of its assertion that Respondent’s use of the disputed domain name was infringing, Complainant has not met its burden of proving that infringement by a preponderance of the evidence.
Respondent has provided uncontested documents demonstrating, among other things, its preparations for use of the disputed domain, its sales through the website to which the disputed domain name resolves, and that its design of its website was based on a Themify template. These facts are consistent with Respondent’s claim that it was making a bona fide use of the domain name prior to being notified of this dispute. Further, although Respondent appears to have been aware of Complainant and its website, Respondent argues that it selected the disputed domain name because it wanted to portray its ability to buy and sell empires (and smaller businesses as well), not because it wanted to deceive consumers into believing that Respondent was, or was affiliated with, Complainant. Notably, Respondent selected a domain name that starts with a term other than “empire,” which helps to distinguish Respondent’s domain name from Complainant’s trademark, and did not use a term confusingly similar to the “flippers” component of the mark. Had Respondent instead registered as its domain name a term such as <empirebuysell.com>, which more closely mirrors the structure of Complainant’s trademark and domain name, or had Respondent selected a domain name that included the “flippers” component, such as <flipempires.com>, the Panel might have reached a different conclusion. Although it is a close question, and though Respondent’s assertion that it wanted to portray its ability to buy and sell empires is a bit strained, on balance, the Panel finds that Respondent did produce evidence that supports its assertion that it selected this domain name in order to communicate a feature of its business, not in order to confuse consumers into thinking that Respondent’s website was, or was associated or affiliated with, Complainant and its website.
The Panel also notes Complainant’s long delay in filing the Complaint as a factor weighing in favor of Respondent’s claim of bona fide use of the domain name. Mere delay between a respondent’s registration and a complainant’s filing of a complaint does not bar complainant’s success in a UDRP action, because a complainant cannot reasonably be expected to perpetually monitor the Internet or immediately enforce each potential instance of trademark abuse. See WIPO Decision Overview 3.0, § 4.17. Respondent has produced uncontested evidence, however, that the parties interacted via Facebook in October 2018 regarding a Quora post mentioning both Complainant and Respondent, indicating that Complainant likely was aware of Respondent by October 2018 at the latest, more than two years before Complainant filed the Complaint in this case. In the meantime, Respondent invested significant amounts of time and money building its business at the disputed domain. Although laches is not a defense to a UDRP action, Complainant’s two-year delay in filing the Complaint undermines Complainant’s claim of obvious trademark infringement and supports Respondent’s contention that its use of the disputed domain name was bona fide. Id. (“Panels have however noted that in specific cases, certain delays in filing a UDRP complaint may make it more difficult for a complainant to establish its case on the merits, particularly where the respondent can show detrimental reliance on the delay.”).
Complainant, on the other hand, has not satisfied its burden of refuting Respondent’s evidence and proving that Respondent’s use was not bona fide. Complainant’s contention that Respondent used the disputed domain name only for deceptive and improper business purposes is merely conclusory. Complainant asserts that Respondent is a competitor of Complainant, but Complainant has offered no evidence of the markets in which the parties compete or the existence of any instances of actual confusion (despite the parties’ approximately three years of coexistence). Nor has Complainant provided evidence of the strength of Complainant’s mark (including whether other companies similarly use the term “empire” in connection with the sale and purchase of business) and whether sophisticated customers would likely be confused (which is another key consideration in assessing trademark confusion).
Complainant has provided documentation in support of its contention that Respondent copied certain elements of the layout, design, and content of Complainant’s website. In response, Respondent provided evidence that its website layout was based on a stock website template, which undermines Complainant’s contention that Respondent attempted to mislead consumers by copying Complainant’s website. Again, although this fact raises close questions, on balance, the Panel finds Respondent’s explanation credible.
Because the question of Respondent’s rights or legitimate interest in the disputed domain name raised a close question, the Panel wants to be clear about the limitations of this conclusion. The Policy provides a streamlined, efficient administrative proceeding for adjudication of certain domain name disputes. Proceedings under the Policy do not provide the parties with the opportunity to take discovery, and do not provide the Panel with the opportunity to assess credibility through live testimony. For these reasons, the Panel is ill-equipped to make a conclusive finding on whether Respondent’s domain name actually infringes Complainant’s trademark rights. If the parties were to engage in litigation, Complainant might be able to develop sufficient evidence to persuade a fact-finder that Respondent did infringe Complainant’s mark, and this decision does not foreclose such a remedy. However, Complainant has not carried its burden of making that showing on this record. Specifically, Complainant has failed to prove, by a preponderance of the evidence, that Respondent’s use of the disputed domain name to offer brokerage services was not bona fide.
Accordingly, for the foregoing reasons, Complainant has not proven that Respondent has no legitimate rights or interests in the disputed domain.
Registration and Use in Bad Faith
Whether Respondent registered and used the disputed domain name in bad faith also is a close question.
Respondent’s assertion that it chose the word “empire” simply for its descriptive properties is not fully credible. Respondent concedes that it was aware of Complainant and its website prior to registering the disputed domain name. At the very least, regardless of whether Respondent was aware that Complainant had registered the EMPIRE FLIPPERS mark, one could reasonably infer that Respondent chose the domain name <buysellempire.com> because Complainant operated a successful website brokerage business under a similar name and Respondent wanted to operate a comparable business with comparable success that consumers would associate with Complainant. It is equally plausible, though, that Respondent did not act with objective bad faith and that Respondent believed its conduct was permissible; after all, not every effort at mimicry rises to the level of trademark infringement, and it may simply be that Respondent wanted to communicate that it was a different company that offered similar services.
Given these alternative, plausible inferences, whether Respondent registered and used the disputed domain name in bad faith is a close question. Because the burden of proof is on Complainant, though, and because Respondent has put forward a credible explanation, the Panel concludes that, on this record, Complainant has not proven that Respondent registered and used the disputed domain name in bad faith.
Reverse Domain Name Hijacking
Respondent alleges that, by filing the Complaint, Complainant has engaged in Reverse Domain Name Hijacking. The Panel disagrees. Although Complainant is ultimately unsuccessful in this case, Complainant had good faith grounds for bringing its Complaint.
There are numerous credible aspects to Complainant’s contentions. As noted above, the questions of whether Respondent’s offering of services through the disputed domain were bona fide and whether Respondent registered and used the disputed domain in bad faith are close questions. The Panel concludes that Complainant has not offered sufficient evidence to support its claims, but those claims were nevertheless credible and supported by evidence (including the similarity of the domain names and of the website design).
Respondent’s allegations of reverse domain name hijacking are accordingly rejected.
DECISION
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <buysellempire.com> domain name REMAIN WITH Respondent.
David H. Bernstein, Panelist
Dated: January 27, 2021
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