In the WIPO matter of Soft Trust Inc. v. Todd Hinton, Ikebana America LLC [Case No. D2020-2640], a Canadian Company Soft Trust Inc. brought a domain dispute complaint before WIPO over the domain name Ecourier.com. Complainant company has been in to business since 2004 while registered Trademarks since 2008 for Ecourier in USA and Canada. Currently the Complainant operates business through ccTLD www.e-courier.ca.
The main contention of the Complainant has been passive holding of the domain nam since 2001, as no legitimate use of the domain name being made. Further, the Complainant allege that the Respondent owns hundreds of domain names in a bid to prove cybersquatting. And also states that the disputed domain name has been owned by the Respondent since 2005 only after the Complinant came into existence.
The Respondent is Todd Hinton, Ikebana America LLC of United States of America, who submits that he registered the domain name in 1997 with Network Solutions. The Domain Name has been with diffeent domain Registrars since then. The Respondent challenged the Contentions of the Complainant of having used the mark since 2004 and the fact that Complainant has customers in USA, in the absence of any supporting evidence.
Between 2007 till 2011, the Complainant contacted the Respondent for purchase of the Domain Name but the same was declined by the Respondent. The Respondent holds hundreds of domain names, which were registered before any similar Trademark as registered in USA. Many of the domain names in the portfolio redirect to the Respondent’s website www.ikebana.com.
The Panelist analyzed the UDRP clauses as follows and rules it be a case for reverse domain name hijacking !
1. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.
The Respondent rightly concedes that the Complainant meets the first element of the Policy.
The design elements of the Design Trade Mark may be disregarded for the purpose of assessing confusing similarity (see section 1.10 of the WIPO Overview 3.0). Further, Top-Level Domains (“TLDs”) (i.e., the “.com” suffix) may be disregarded when comparing the similarities between a domain name and a trade mark (see e.g., Incase Designs Corp. v. Juliane Kuefer, WIPO Case No. D2012-2020, and cases cited therein). Therefore, the comparison is between the Disputed Domain Name and the textual elements of the Design Trade Mark (i.e., E-COURIER).
The Panel finds that the Disputed Domain Name is confusingly similar to the Design Trade Mark. The only difference between the marks is that the Disputed Domain Name does not contain a hyphen.
The Disputed Domain Name is also confusingly similar to the Word Trade Mark, despite the fact that the “.CA” element of the Word Trade Mark does not appear in the Disputed Domain Name.
The Complainant is successful on the first element of the Policy.
2. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lack rights or legitimate interests.
In this case, there is no evidence that the Respondent registered the Disputed Domain Name to trade off the Complainant’s rights, or that the Respondent’s intentions for the Disputed Domain Name were not and are not bona fide.
As outlined above, the Respondent presented evidence to demonstrate that he registered the Disputed Domain Name in 1997 and that he (or the company which he owned) has held the Disputed Domain Name continuously since that time. The Respondent registered the Disputed Domain Name well before the Complainant came into existence.
There is no indication that the Disputed Domain Name was registered in anticipation of the Complainant or its rights coming into being. Based on the evidence before the Panel, it appears that the Respondent genuinely planned to use the Disputed Domain Name for a business related to the industry in which is he employed and went as far as to apply for a trade mark for the term ECOURIER.COM. However, this business venture did not proceed and panels are typically required to assess rights and legitimate interests at the time of the dispute (see section 2.11 of the WIPO Overview 3.0).
For a number of years, the Disputed Domain Name has displayed a message reading “Sorry! This site is temporarily unavailable.” The Complainant contends that this is misleading and an attempt to disguise a pattern of the Respondent acquiring and stockpiling domain names. The Respondent contends that he has been using the Disputed Domain Name for email purposes and may use the Disputed Domain Name for a business venture in the future.
There is some evidence that the Respondent has used the Disputed Domain Name for email purposes. If the Respondent was to use the Disputed Domain Name in the future for a business similar to that operated by the Complainant, a question may arise as to which whether the Complainant or Respondent has a better claim to the “ecourier” name. The Panel will not speculate as to whether the Complainant or Respondent would be successful in such a scenario and such a dispute may be better resolved by way of court proceedings.
The facts at hand do not align neatly with one of the scenarios enumerated in paragraph (c) of the Policy. However, these scenarios are non-exhaustive and on balance, the Panel finds that the Respondent has established rights or legitimate interests in the Disputed Domain Name. This finding is based on the evidence that the Respondent:
– registered the Disputed Domain Name before the Complainant came into existence;
– applied to register a United States trade mark for E-COURIER.COM in 2001, approximately three years before the Complainant came into existence;
– at one time intended to use the Disputed Domain Name in relation to a bona fide business;
– has since made use of the Disputed Domain Name for email purposes; and
– has repeatedly rebuffed offers to purchase the Disputed Domain Name.
In light of the above, the Complainant does not succeed on the second element of the Policy.
3. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
A. Registration in bad faith
To succeed in a complaint under the Policy, it is well established that under the third element of the Policy, a complainant must prove on the preponderance of the evidence is that the domain name in issue was registered in bad faith, i.e., was registered with the complainant and/or its trade mark in mind.
The Complainant was not incorporated until 2004, and would not have accrued rights in the Trade Marks until some time after that. As outlined above, the Respondent registered the Disputed Domain Name in 1997 (at least six years prior to the Complainant’s incorporation) and accordingly, it is not possible that the registration of the Disputed Domain Name could have been targeting the Complainant or its Trade Marks.
The Complainant has therefore failed to demonstrate that the Respondent registered the Disputed Domain Name in bad faith to target the Complainant.
B. Use in bad faith
The Complainant contends that the Respondent is passively holding the Disputed Domain Name for the purpose of disrupting its use by the owner of a corresponding trade mark and/or selling the Disputed Domain Name for profit in excess of any out-of-pocket costs. The Complainant pointed to the large number of domain names owned by the Respondent as evidencing a pattern of such conduct.
As outlined above, the Panel is satisfied that at one time the Respondent intended to use the Disputed Domain Name in relation to a business venture. The Respondent also presented evidence that he has frequently rebuffed offers to purchase the Disputed Domain Name and that he has used the Disputed Domain Name for email.
The Complainant also contends the Panel should make a finding that the Respondent’s passive holding of the Disputed Domain Name represents use in bad faith and refers to Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (the “Telstra Case”). The Panel is not convinced that the factors identified in the Telstra Case support a finding of bad faith use for the following reasons:
– The Complainant has not provided sufficient evidence to demonstrate that the Trade Marks have a strong reputation or are widely known (as in the Telstra Case) and it appears that a number of other business around the world operate under the names “ecourier” and “e-courier”.
– Unlike the Telstra Case, the Respondent in this case provided some evidence of actual or contemplated good faith use of the Disputed Domain Name, including an application for a trade mark for ECOURIER.COM as part of a now discontinued business venture.
– There is no evidence that the Respondent provided any false or misleading contact details to the Registrar, as was the case in the Telstra Case.
Further, the Panel has reviewed the long list of domain names owned by the Respondent (over 240) and cannot conclude from this list that the Respondent has engaged in a pattern of registering domain names to target trade marks held by the Complainant or third parties. Many of the Respondent’s domain names registrations are for descriptive terms (e.g., and ). In addition, a number of the domain names owned by the Respondent which the Complainant identified as being identical or confusingly similar to existing trade marks appear to have been registered before those trade marks were filed.
In light of the above, the Panel finds that the Complaint also fails on the third element of the Policy.
4. Reverse Domain Name Hijacking
The Respondent has requested a finding of Reverse Domain Name Hijacking (“RDNH”).
RDNH is defined in paragraph 1 of the Rules as meaning “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”
The Complainant’s entire case hinges on whether the Respondent registered the Disputed Domain Name before or after the Complainant acquired rights in the Trade Marks. However, the Complainant should have been aware that the Respondent individual and Respondent company were connected at the time it submitted its initial Complaint and further evidence of the connection was presented when the Registrar provided the registrant details and when the Respondent filed the Response. However, these matters were not addressed by the Complainant in the amended Complaint or Supplemental Filing respectively. The Complainant persisted with the Complaint when it was evident that the Disputed Domain Name had been subject to common control since 1997 and therefore pre-dated the registration of the Trade Marks (and even the Complainant’s incorporation) by a number of years. The facts which evidence this common control are as follows:
– As part of the initial Complaint, the Complainant provided a list of other domain names owned by the Respondent, the registrant details included for almost all of the domain names in this list refer to both the Respondent individual and Respondent company.
– The Complainant’s list of other domain names owned by the Respondent includes a number of domain names which incorporate the name “ikebana”.
– The Panel was able to establish a link between the Respondent company and Respondent individual via a simple Google search.
– The registrant details provided by the Registrar (and adopted in the Complainant’s amended response) refer to both the Respondent individual and Respondent company.
– The Respondent’s reply on July 15, 2008, to one of the Complainant’s offers to purchase the Disputed Domain Name listed the Respondent’s email address, which contained the name of both the Respondent individual and Respondent company.
– Had the Complainant performed a search for United States trade marks owned or applied for by the Respondent individual, it would have found application number 78042687 for ECOURIER.COM which was lodged on January 11, 2001.
– The Respondent provided a number of pieces of correspondence with various parties offering to purchase the Disputed Domain Name. The Respondent’s signature block in a number of these pieces of correspondence included the names of both the Respondent individual and Respondent company.
– The Respondent provided an invoice addressed to the Respondent company for the attention of the Respondent individual.
Further, the Complainant indicated in the Complaint that it had contacted the Respondent in 2012 but did not refer to its offer to the Respondent to purchase the Disputed Domain Name in 2008 (or several other offers identified by the Respondent) or provide a copy of the relevant correspondence. As a result, the Complainant’s explanation of its history with the Respondent was incomplete and previous panels have considered that intentional omission of relevant evidence may justify a finding of RDNH.
In addition, the Complainant’s allegation that the Respondent acquired the Disputed Domain Name to sell it for profit in excess of any out-of-pocket costs has no evidentiary support. It is wholly inconsistent with the fact, documented in the Response, that the Respondent has never offered or invited offers to sell the Disputed Domain Name and rebuffed the Complainant’s repeated offers to purchase the Disputed Domain Name. This correspondence was not disclosed by the Complainant.
The Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the Administrative Proceeding.
For the foregoing reasons, the Complaint is denied.
Date: December 4, 2020