Decision

Erase Technologies, LLC v. Web Presence LLC, NetReputation.com, WIPO Case No. D2022-3797

1. The Parties

Complainant is Erase Technologies, LLC, United States of America (“United States”), represented by Gibney, Anthony & Flaherty, LLP, United States.

Respondent is Web Presence LLC, NetReputation.com, United States, represented by Cylaw Solutions, India.

2. The Domain Name and Registrar

The disputed domain name <guaranteedremoval.com> (hereinafter the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2022. On October 12, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 13, 2022, 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 21, 2022. In accordance with the Rules, paragraph 5, the due date for Response was November 10, 2022, was extended to November 14, 2022. The Response was filed with the Center on November 14, 2022.

The Center appointed Lawrence K. Nodine, John C. McElwaine, and Gerald M. Levine as panelists in this matter on December 15, 2022. 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 is a content removal company that specializes in the permanent deletion of negative material on websites and search engines. Complainant has owned the domain name <www.guaranteedremovals.com> since November 2013. Additionally, Complainant owns a New York State service mark registration for GUARANTEED REMOVALS (Reg. No. S25506; Registered April 26, 2022), a pending Florida State trademark application (Application No. W22000088220; filed on July 1, 2022), and one active pending U.S. federal trademark application (Application No. 97593365; filed on September 15, 2022) (the “GUARANTEED REMOVALS mark”).
Respondent provides web-design, web development, and SEO optimization services. Respondent registered the Disputed Domain Name on December 16, 2016, and used the website associated therewith to provide these reputation management services starting at the end of 2017.

Complainant contacted Respondent regarding its use of the Disputed Domain Name on March 21, 2022. Currently, the Disputed Domain Name resolves to an inactive webpage.

5. Parties’ Contentions 

A. Complainant
Complainant alleges that it has offered its services under the “guaranteedremovals.com” website since at least 2014, and now has 23,000 clients in the United States, as well hundreds of clients in 57 other countries. Complainant offers no evidence to support its allegations of use.

Complainant contends that its New York State service mark registration in conjunction with its years of use of the GUARANTEED REMOVALS mark establish that it has rights in the GUARANTEED REMOVALS trademark and that the Disputed Domain Name is confusingly similar thereto. Complainant further alleges that the singularizing of the GUARANTEED REMOVALS mark to GUARANTEED REMOVAL does not overcome a likelihood of confusion between the two marks. Complainant contends that through its use of its mark since 2014, it has established GUARANTEED REMOVALS as a global identifier for its services.

Complainant claims that Respondent is not making a bona fide or fair use of the Disputed Domain Name because the website associated with the Disputed Domain Name is currently inactive. Complainant charges Respondent with passive holding.

Complainant contends that Respondent registered and continues to use the Disputed Domain Name in bad faith. Specifically, Complainant states that  Respondent knew about the use of the GUARANTEED REMOVALS mark years prior to any direct contact with Complainant. Complainant further claims that Respondent’s USD 75,000 counteroffer to Complainant’s offer to purchase the Disputed Domain Name is evidence of bad faith under the Policy.

B. Respondent

Respondent replies that Complainant has no standing to bring this Complaint because Complainant does not have a federal trademark registration and Complainant has failed to prove secondary meaning in the GUARANTEED REMOVALS mark.

Respondent asserts that it has rights and a legitimate interest in the Disputed Domain Name because the Disputed Domain Name is composed of two common English dictionary words that have a descriptive and well known meaning that is wholly separate and that is related to Respondent’s service offerings.

Since 2014, it also has provided services in relation to reputation management, including the removal of negative online content, in the name of “NetReputation.com”.

Respondent contends (and supplies evidence) that it has made uninterrupted and continuous use of the Disputed Domain Name in relation to its dictionary meaning from 2017 until 2022.

Respondent states that it registered the Disputed Domain Name in good faith purely because it comprised a common phrase that is descriptive of its services. Respondent asserts that it only became aware of Complainant’s website in February 2018 when an individual employed by Complainant outsourced reputation management work to Respondent. According to Respondent, in June 2022 it deactivated the website associated with the Disputed Domain Name out of its respect for Complainant. Respondent also denies it provided a monetary demand to Complainant in exchange for the sale of the Disputed Domain Name.

6. Discussion and Finding

A. Identical or Confusingly Similar

The Panel finds that Complainant’s New York State service mark registration establishes that it has rights in the GUARANTEED REMOVALS mark. However, state trademark registrations are not always granted the same deference as national trademark registrations because they are sometimes issued automatically. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.2. This does not appear to be the case in New York where the New York State trademark registration statute and related regulations provide on their face for substantive review, including consideration of descriptiveness. See NY Gen Bus L § 360-A-C (2014) and regulations at https://dos.ny.gov/state-records-rules-and-regulations. Accordingly, “the exception in the Overview does not apply”. Paul McMann v. J McEachern, WIPO Case No. D2007-1597 (Massachusetts state registrations not issued “automatically”; Secretary of the Commonwealth exercises some scrutiny); Teresa Christie, d/b/a The Mackinac Island Florist v. James Porcaro, d/b/a Weber’s Mackinac Island Florist, WIPO Case No. D2001-0653 (Panel has no power to nullify Michigan state registration). Even though Complainant’s New York registration recites a design element, it is not dominant and Complainant was not required to disclaim the textual elements. WIPO Overview 3.0 section 1.10.

Accordingly, the Panel finds that Complainant has satisfied Policy paragraph 4(a)(1).

B. Rights or Legitimate Interests

The Panel finds that Respondent has legitimate interests in the Disputed Domain Name as prior to any notice of the dispute, Respondent was using the Disputed Domain Name in connection with a bona fide offering of services. See WIPO Overview, section 2.10.1. Respondent has submitted evidence of press releases and an archived webpage of the Disputed Domain Name from 2018 confirming Respondent’s use of the Disputed Domain Name in association with bona fide offering of negative content removal services.

See Dollar Bank, Federal Savings Bank v. Host Master / Jason Duke, WIPO Case No. D2016-0701. Publicly available archive webpages also confirm that the Disputed Domain Name was actively offering reputation management services until June 2022, shortly after Complainant contacted Respondent and demanded that it cease use of the Disputed Domain Name, thereby supporting Respondent’s claim that it deactivated the website in light of the dispute, and refuting Complainant’s allegation of passive holding.

Respondent has also offered substantial evidence of third party use of “guaranteed removal” descriptively.

The Panel finds that preponderance of evidence supports Respondent’s claim that it registered the Disputed Domain Name to exploit its descriptive connotations and not to exploit any alleged trademark rights of Complainant.

Therefore, Complainant has not satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel also finds that Complainant has failed to prove by a preponderance of the evidence that Respondent registered the Disputed Domain Name in bad faith. Respondent registered the Disputed Domain Name in 2016, more than five years before Complainant applied for its New York State trademark
registration in 2022. Although Complainant alleged widespread use since 2014, it did not submit any evidence to support the allegation, other than the declaration of its General Counsel that the “Company has been using the mark Guaranteed Removals in connection with their servi ces since at least as early as 2014”.

It is important to note that the Panel holds that there was insufficient evidence that Complainant would have acquired distinctiveness in the descriptive GUARANTEED REMOVALS mark prior to registration of the
Disputed Domain Name by Respondent. There is no basis, therefore, for the Panel to infer that Respondent was more likely than not aware of Complainant’s trademark rights when it registered the Disputed Domain
Name in 2016. The Panel finds that Complainant has failed to provide evidence of its purported extensive use of the GUARANTEED REMOVALS mark in 2016 when Respondent registered the Disputed Domain
Name.

Respondent candidly acknowledges that it learned of Complainant’s predecessor in 2018, when Complainant outsourced some work to Respondent. However, this knowledge was acquired well after the registration of the Disputed Domain Name in 2016 and, in any event, there is no evidence that Complainant objected at that time or made Respondent aware of a claim of trademark rights. Complainant offers no argument or evidence to rebut Respondent’s plausible contention that both parties used “guaranteed removal” as a descriptive term.

Because Complainant has failed to carry its burden to prove bad faith registration, the Panel will not address the bad faith use contentions.

D. Reverse Domain Name Hijacking

Paragraph 15(e) of the UDRP Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. WIPO Overview 3.0, section 4.16. That section of the Overview further provides a number of non-exclusive factors which, in appropriate circumstances, support a finding of RDNH. Such factors as may be relevant to the instant proceeding include: “the provision of false evidence, or otherwise attempting to mislead the panel”; and “the
provision of intentionally incomplete material evidence–often clarified by the respondent”.

The Panel finds Reverse Domain Name Hijacking because Complainant factually misleading allegations and key arguments that lacked a plausible legal basis.

First, Complainant relied in part on two federal trademark applications,  representing that “[b]oth applications are currently pending”. Complaint p. 7. This argument was factually misleading because Complainant did not disclose that it filed an “Express Abandonment” of the standard character application on the very same day that it filed the UDRP Complaint with the Center. The email submitting the Complaint was received by the Center on October 11, 2022 at 12:28 PM Eastern Time USA. Complainant filed the Express Abandonment of its application for the GUARANTEED REMOVALS word mark (Serial Number 97312285) in the United States Patent and Trademark Office (“USPTO”) about six hours later at “18:51:29 ET 2022”
(USPTO time stamp).

The Panel finds that, even though the allegation that the application was “pending” was technically correct when the UDRP complaint was filed, the Panel finds that the Express Abandonment was doubtless being prepared before it was filed. And, in any event, Complainant could have and should have amended its complaint to avoid misleading the Panel. It is immaterial that Complainant did not abandon both of its federal applications. Indeed, neither of the applications advanced Complaint’s case as applications confer no rights.

Policy paragraph 4(a)(i), WIPO Overview 3.0 section 1.1.4. It is Complainant’s effort to mislead the Panel that supports the finding of RDNH. It is not an excuse to say that the entire allegation was not misleading or
that the misleading allegations pertain to an argument that would not have succeeded.

Second, and similarly, Complainant alleged that “[a] Florida state registration currently pending,” but the exhibit to which it points recites “Rejected Filing”. Here again, the misleading allegation, which Complainant’s counsel certified under Rule 3(b)(xiii) as “accurate,” is not excused because the annexed evidence reveals the allegation’s falsity on its face.

Third, Complainant’s only contention with respect to Policy paragraph 4(a)(ii) is that Respondent was making no use of the Disputed Domain Name as of the filing of the complaint*, even though it well knew (and had alleged) that Respondent had been using the Disputed Domain Name to provide services for several years. (* The Complaint alleges that: “As of the filing of this Complaint, the Infringing Domain Name is not active in connection with any bona fide offering of goods or services. The inactivity of the website indicates that the Respondent does not have any rights or legitimate interests in the domain name . . . Since the Infringing Domain currently has no content, there is essentially no use of the domain name.”)

In essence, Complainant would penalize Respondent for taking down the site as it had insisted in its cease and desist letter, and then labeling this “passive holding”. This contention lacked any “plausible legal basis.” WIPO Overview 3.0, section 4.16.

7. Decision

For the foregoing reasons, the Complaint is denied.

Lawrence K. Nodine
Presiding Panelist

John C McElwaine
Panelist

Gerald M. Levine
Panelist

Date: January 5, 2023

Brillon Consumer Products Private Limited v. Sachin Khairnar, AllOut Pest Control India Pvt. Ltd., WIPO Case No. D2022-4063

1. The Parties

The Complainant is Brillon Consumer Products Private Limited, India, represented by Singh and Singh Law Firm LLP, India.

The Respondent is sachin khairnar, AllOut Pest Control India Pvt. Ltd., India, self-represented.

2. The Domain Name and Registrar

The disputed domain name <alloutindia.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2022. On October 28, 2022, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On October 31, 2022, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the
contact details. The Center received an email communication from the Respondent on October 31, 2022. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant
filed an amended Complaint on November 1, 2022.

The Center verified that the Complaint together with the amended 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 the Respondent of the Complaint, and the proceedings commenced on November 2, 2022. In accordance with the Rules, paragraph 5, the due date for Response was November 22, 2022. On November 17, 2022, the Respondent requested for an extension to the Response due date. In accordance with paragraph 5(b) of the Rules, the due date for Response was extended to November 26, 2022. The Response was filed with the Center on
November 26, 2022.

The Center appointed Shwetasree Majumder as the sole panelist in this matter on December 2, 2022. The Panel finds that it was properly constituted. 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

The Complainant is a manufacturer of household insecticides/mosquito repellents in various forms including coils, mats, liquid vaporizer apparatus, and liquid vaporizer refills under its mark ALL OUT. The Complainant’s mark ALL OUT is registered in India since February 11, 1988 under Indian Registration number 485591 in class 9, and under number 485592 in class 5.

The Complainant’s related entity owns the domain name <allout.in> registered on September 29, 2015.

The disputed domain name has been registered on July 28, 2013. The disputed domain name resolves to an active website where the Respondent offers pest control services. The Respondent established its business under the name All Out India in the year 2013. In the year 2015, the Respondent incorporated a company under the present name AllOut Pest Control India Private Limited.

The Respondent had filed an Indian trademark application number 2594089 for the mark ALL OUT in class 44 on September 10, 2013. This application was opposed by the Complainant on October 5, 2016, and the Respondent subsequently abandoned it. The Respondent then filed another Indian trademark application number 3705712 for ALL OUT (figurative mark) in class 37 on December 19, 2017. This application has also been opposed by the Complainant and the Respondent has been contesting this opposition. The
opposition proceedings are pending final adjudication at the Indian trademark office.

5. Parties’ Contentions

A. Complainant

The Complainant claims to be a renowned manufacturer and marketer of a wide range of household insecticides/mosquito repellents in various forms including coils, mats, liquid vaporizer apparatus, and liquid vaporizer refills under the mark ALL OUT. The Complainant claims to be using the mark ALL OUT in India in since 1988.

The Complainant’s brand-specific website “www.allout.in” contains information about the Complainant’s products under the brand ALL OUT and the domain name <allout.in> is registered since September 29, 2015.

The earliest registration for the Complainant’s trademark ALL OUT dates back to February 11, 1988 in India. The Complainant has submitted copies of the Indian registration certificates for its mark ALL OUT as Annex 8 with the Complaint.

The Complainant also claims that its mark ALL OUT is a well-known mark in India. The Complainant has submitted as Annex 5 to the Complaint extracts for its social media pages for its brand ALL OUT and also an order of the Delhi High Court as Annex 7 where it rights in ALL OUT were upheld.

The Complainant states that the disputed domain name is identical to its mark ALL OUT. The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant alleges that the Respondent’s action of adopting a deceptively similar domain name/mark is contrary to honest practices and results in infringement of the Complainant’s mark.

It is contended that the Complainant and the Respondent are engaged in the identical business of pest control. The Complainant states that the registration of the disputed domain name is clearly an attempt to attract internet users to the Respondent’s website and make them wrongly believe that the Respondent is connected to the Complainant in some manner, which brings the said act within the ambit of Paragraph 4 (b)(iv) of the Policy.

B. Respondent

In its response, the Respondent claims that the registration of the disputed domain name is prior to the Complainant’s registration of its domain name <allout.in> in the year 2015. It argues that the delay of 10 years in filing the Complaint ought to disentitle the Respondent.

The Respondent also states that the disputed domain name consists of a mark that has a dictionary meaning and is descriptive in respect of the services offered. The Respondent also contends that the disputed domain name is different from the Complainant’s domain name and trademark as the Complainant does not provide pest control services and that it has not registered its mark ALL OUT in class 37.

The Respondent also argues that its registered company name “AllOut Pest Control India Pvt., Ltd.,” has created a distinct identity in the market.

In support of its claims the Respondent relies on its certificate of  incorporation, web extracts of its social media pages, and copies of work orders to demonstrate that it is an ongoing business.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following, in conjunction:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the  disputed domain name;
(iii) the disputed domain name has been registered and is being used in bad faith.

A. Delay in Bringing the Complaint

Prior to going into the elements of Paragraph 4(a), the Panel makes a preliminary noting in relation to the Respondent’s apparent defence of delay and laches.

The disputed domain name has been registered since July 28, 2013 and the Complaint has been filed on October 28, 2022. The Annex with the Response indicates that the Respondent has been in business all this while. Admittedly, the Complainant has been aware of the Respondent’s use of the mark ALL OUT since the year 2016 when it opposed the Respondent’s Indian trademark application number 2594089. The Panel has considered the Respondent’s contention but notes that the defense of laches does not apply in UDRP proceedings. This view finds resonance in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.17.

Although section 4.17 observes, “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”, the test of “detrimental reliance” cannot come into play when clearly the Respondent has been put to notice of the Complainant’s registered trademark rights since October 5, 2016 when it opposed the Respondent’s trademark before the Indian trademark office. The Panel also notes that the fact that the Respondent chose at that juncture to abandon its trademark application goes against any notion that it (detrimentally) relied on any (in-)action on the part of the Complainant.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Panel does not agree with the Respondent’s contention that ALL OUT is a dictionary word or that it is descriptive. The Respondent itself had filed an Indian application for registration of ALL OUT as a trademark on September 10, 2013 and was therefore clearly taking the position that it was a trademark at that point in time. The Complainant has also got registered the ALL OUT trademark in India, making it clear that the Indian trademark office considered the term capable of serving a trademark function. The  Complainant’s trademark registrations are prior to the registration of the disputed domain name and are valid and subsisting today.

The disputed domain name incorporates the Complainant’s mark ALL OUT in its entirety, together with the term “India”. Referring to WIPO Overview 3.0, sections 1.7 and 1.8, this Panel notes that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity under the first element. In the present case, the Complainant’s mark ALL OUT is clearly recognizable in the disputed domain name and therefore the addition of “India” does not prevent a finding of confusing similarity. (See Hoffmann-La Roche AG v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org / Conan Corrigan, WIPO Case No. D2015-2316).

The generic Top-Level Domain (“gTLD”) “.com” is generally disregarded for the purposes of comparison under this element.

In view of the above-mentioned findings, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademarks and that the requirement of paragraph 4(a)(i) of the Policy  stands satisfied.

C. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. A complainant is normally required to make
out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name.

If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

The Panel is of the view that the Complainant has made out a prima facie case. To demonstrate rights or legitimate interests in a domain name, the defenses under UDRP paragraph 4(c) include that before any notice of the dispute, the respondent ought to have used, or made 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.

As a rebuttal to the Complainant’s prima facie case, the Respondent has demonstrated that the disputed domain name is being used to offer its pest control services long before any notice of the dispute. Page 4 of the Respondent’s Annex indicates that the Respondent started using the business name ALL OUT INDIA at least since 2013 and went on to incorporate a company (see page 5 of Annex to Response) by the name of All Out India Private Limited in the year 2015. Further, Pages 32 -52 of the Annex to Response are copies of work orders of the Respondent. These pertain to the years 2013, 2014, and 2015. Studying these work orders, the Panel observes that the Respondent has a sizable clientele in India.

The Respondent’s case is that the Complainant is neither providing pest control services nor has a trademark registration covering these services. The Annexes to the Complaint and the Complainant’s trademark registrations lead to the conclusion that the Complainant does not offer pest control services. The Complainant however additionally contends that its trademark ALL OUT is a well-known mark and also that pest control services (falling in class 37) are allied and cognate to its goods under classes 5 and 9.

In the above backdrop, the Panel considers that the issue of rights or legitimate interests essentially turns on answering the question: Can the Respondent’s use of the disputed domain name for pest control services
be considered bona fide under the defense under paragraph 4(c) of UDRP.
To answer this question, the Panel would have to adjudicate two critical issues which are clearly outside the remit of the present proceedings:

(i) Whether the Complainant’s trademark is well-known; and

(ii) Whether the Complainant’s trademark rights in relation to classes 5 and 9 can be said to be “allied and cognate” to pest control services under class 37, in respect of which the Respondent claims to have rights.

Both of these issues are already at the heart of the ongoing opposition proceedings at the Indian trademark office, where the Complainant on May 18, 2018 opposed the Respondent’s Indian application number 3705712 for ALL OUT (figurative mark) in class 37. The Panel observes that in the said proceedings the Complainant has argued that its mark ALL OUT is a well-known mark and the decision in the proceedings is awaited.

As the above recitation makes it clear that this is not a garden-variety  cybersquatting case. The only arguable reason that the Complainant is seeking relief in this forum is that the particular property at issue is a domain name. There are however wider trademark (registration and infringement) issues which have been placed before the Panel in the present case. These issues, are not suited for resolution under the Policy (see, for example, the observations of the UDRP panels in The Thread.com, LLC v. Jeffrey S. Poploff, WIPO Case No. D2000-1470; Kurt Garmaker d/b/a “Repetition Miniature Schnauzers” v. Hilde Haakensen, Axcium Design, WIPO Case No. D2015-0993; and IL Makiage Cosmetics (2013) Ltd. v. Mark Rumpler / Mordechai Rumpler / Domains By Proxy, LLC, WIPO Case No. D2015-2311). This Panel finds that it will be prudent for a court or tribunal of competent jurisdiction in India to adjudicate the rights of the parties in the mark ALL
OUT and the import of the Respondent’s business and rights, if any.
In these circumstances, the request for a determination on the merits of the Complaint must be rejected. In reaching this conclusion, although the Panel notes that the Respondent has withdrawn its first trademark application once opposed by the Complainant, and faces an opposition on its second one, the Panel takes no position on the merits of any wider dispute between the Parties. The Complainant remains free to seek remedies in other fora and the Panel notes for completeness that the present finding is confined to the Policy and that it does not seek to influence any such subsequent proceedings, should they be raised.

D. Registered and Used in Bad Faith

In light of the Panel’s finding above it is unnecessary for the Panel to address the topic of the Respondent’s bad faith under the third UDRP element.

7. Decision

For the foregoing reasons, the Complaint is denied.

/Shwetasree Majumder/
Shwetasree Majumder
Sole Panelist
Date: December 13, 2022

Tox Pressotechnik GmbH & Co. KG v. TFourth LLC
WIPO Case No. D2022-3270

1. The Parties

The Complainant is Tox Pressotechnik GmbH & Co. KG, Germany, represented by Otten, Roth, Dobler &
Partner GmbH, Germany.
The Respondent is TFourth, LLC, United Kingdom (Cayman Islands), represented by Cylaw Solutions, India.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 2, 2022. On September 2, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 3, 2022, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on September 5, 2022. In accordance with the Rules, paragraph 5, the due date for Response was October 3, 2022. The Response was filed with the Center on October 3, 2022.

The Center appointed W. Scott Blackmer, Stefan Abel, and Gerald M. Levine as panelists in this matter on November 9, 2022. 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

The Complainant is a German limited partnership headquartered in Weingarten, Germany. As related on the

Complainant’s website (available in different national versions through a portal at “www.tox-pressotechnik.com”), the Complainant was established in 1978 and continues as a family-owned business, producing press drive systems and other industrial tools for sheet metal joining. The Complainant’s website states that the Complainant currently has 1400 employees worldwide, with production facilities in Germany, the United States of America (the “United States”), China, India, Brazil, and the Czech Republic.

The Complainant holds numerous TOX and TOX-formative trademark registrations, including the following:

MARK JURISDICTION REGISTRATION NUMBER REGISTRATION DATE
TOX (word) United States 1501926 August 30, 1988
TOX (word) Canada TMA381260 March 8, 1991
TOX (word) European Union 000216150 October 7, 1998

The Registrar reports that the Disputed Domain Name was registered on February 14, 2001, and is registered in the name of TFourh, LLC of Grand Cayman, Cayman Islands, United Kingdom. That appears to be a typographical error for the name of the Respondent, as the Response identifies the registrant as TFourth LLC of Grand Cayman, hereafter referred to as “the Respondent”. From the Response, it appears that the Respondent is a limited liability company established as a vehicle for investing in domain names and developing associated websites for some of them.

At the time of this Decision, the Domain Name does not resolve to an active website, and it appears to have been used sporadically in the past only for pay-per-click (“PPC”) advertising links hosted by third parties.

In May 2021, the Complainant contacted the Respondent to inquire about purchasing the Domain Name.

The Respondent’s representative replied as follows:

“We represent the owner of the domain, who has had the name for over 20 years. They recently advised us that they are now considering selling the domain. Their expectations are in the six digit range USD, consistent with current valuations for three letter “.com” domain names. Several recent
sales for which public information is available are listed below.”

The Respondent’s message listed the sales prices for a dozen three-digit “.com” domain names since 2019, ranging from USD 140.000 to USD 1.5 million. The Complainant’s representative responded that the Complainant would not be willing to pay more than USD 24.000 for the Domain Name. The conversation between the parties apparently ended in early 2022, and this proceeding followed.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Domain Name is identical to its registered TOX trademark, which the Respondent has no permission to use and which does not correspond to the Respondent’s name. The Respondent has not been using the Domain Name for a bona fide commercial offering or  legitimate noncommercial fair use.

The Complainant infers bad faith on the part of the Respondent because it demanded a purchase price for the Domain Name in excess of out-of-pocket costs and because the Respondent registered the Domain Name with “actual knowledge” of the Complainant’s marks, which are registered “all over the world”.

B. Respondent

The Respondent does not dispute that the Complainant holds valid trademark registrations but contends that the Complainant does not have exclusive rights to the three-digit string “tox”, which is also a dictionary prefix and suffix denoting poison and serves as a common abbreviation for medical terms such as “toxic” and “toxicology” and is found in terms such as “tox screen”. The Respondent points out that an Internet search on the term “tox screen” alone (referring to medical diagnostic testing for toxic  substances) produces more than six million results.

The Response is supported by the Declaration of May Greenberg, the Respondent’s Administrative Services Manager based in the United States, who personally handled domain registrations for the Respondent. Ms. Greenberg denies that the Respondent had knowledge of the Complainant before the Complainant contacted the Respondent about purchasing the Domain Name.

Ms. Greenberg states in her Declaration that the Respondent registered other three-digit domain names in 2001 for their potential investment or development value, including <bzc.com> (for potential use in the fields
of botany, zoology, and chemistry), <jql.com> (for possible reference to the software Jira Query Language), <gxc.com>, <cuy.com>, and <wmk.com> (an abbreviation for “watermark”), as well as other short domain names or domain names based on dictionary terms.

Ms. Greenberg explains the Respondent’s business as follows: “Our ultimate goal is to develop the domain names with highly customized web sites that provide users and visitors with information and options for related services and products. We, on occasions [sic], host underdeveloped domain names with domain name parking services which pay a share of the advertising
revenue they generate, an industry-wide accepted practice. From on or about the date when We first registered the Domain Name in 2001, We have consistently used the Domain Name for general advertising, using a third party service provider which automatically generates the advertising displayed on a website associated with the Domain Name.

At no time to-date, have We ever set the advertisements to target the Complainant or its marks. At all times to-date, We have always set the Domain Name’s settings via the third party advertising platform, to display
non-industry specific advertising links and links based upon the abbreviated term, “TOX”. That is why to-date for 21+ years, the advertising has always been of a very general nature or related to the meaning of “tox”, namely Toxicology, Toxic, Tox Screen and so on.”

The Response attaches examples of the PPC advertising associated with the Domain Name, with links to third parties relating to “tox screens”, “drug tests”, “toxicology jobs”, and toxicology training and education programs. The Panel notes that screenshots available from the Internet Archive’s Wayback Machine show a similar pattern, rather than displaying links associated in any way with the Complainant or its competitors in industrial machinery.

The Respondent argues that its actions are consistent with a legitimate business model and do not reflect bad faith in an attempt to exploit the Complainant’s trademark:

“Respondent registered the Disputed Domain because it was an inherently rare and valuable three-letter domain name which corresponded to a common dictionary word. It has multiple possible uses (including development possibilities) and has many potential meanings without targeting the Complainant and its trademark. See VOI Technology v. Domain Department, Arcanite Media Ltd., WIPO Case No. DSE2022-0002: ‘The Respondent’s acquisitions of other similar two- and three-letter domain names appears to be consistent with the Respondent’s described business model and explanation.”

Citing Match.com v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230, the Respondent argues “The primary rule in relation to domain name registrations is ‘first come, first served’… It is not a per se breach of the UDRP to register the trademark of another as a domain name where the trademark is a generic word.”

The Respondent invokes the equitable doctrine of laches and suggests that even if it does not apply strictly to bar UDRP complaints, the Complainant’s long delay in bringing this Complaint and its efforts to purchase the Domain Name suggest that it lacked confidence in its legal rights. The Respondent also notes that the Complainant does not assert common law rights in TOX as a word mark or establish a record of secondary meaning for TOX associated with the Complainant.

In support of its claim to a legitimate interest, the Respondent cites UDRP precedents to the effect that “a good faith belief that a domain name’s value derives from its common/descriptive qualities rather than its specific trademark value serves to establishes a legitimate interest” (National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424; Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc., WIPO Case No. D2004-0843; and Zero International Holding GmbH & Co.
Kommanditgesellschaft v. Beyonet Services and Stephen Urich, WIPO Case No. D2000-0161). Moreover, The Respondent specifically claims a legitimate interest in investing in three-digit domain names that have inherent value for their potential usefulness related to acronyms, abbreviations, or dictionary terms, citing Trans Continental Records, Inc. v. Compana LLC, WIPO Case No. D2002-0105 (<lfo.com>); Grupo Nacional Provincial S.A. v.Privaczdotlink Customer 4270030 / Yancy Naughton, WIPO Case No.
D2021-1136 (<gnp.com>); and Kis v. Anything.com, WIPO Case No. D2000-0770 (<kis.com>).

The Respondent denies prior actual knowledge of the Complainant and emphasizes its legitimate reasons for registering and holding the Domain Name for its inherent value for a variety of non-trademark uses.

Given this value, and in line with the demonstrable monetary value of other three-letter “.com” domain names, the Respondent refutes the Complainant’s inference that the Respondent registered and maintained the Domain Name with the intent of selling it to a trademark holder for an excessive price.
Finally, the Respondent argues that the Complainant should have recognized that there is no evidence here that the Respondent targeted the Complainant’s mark and, therefore, that the Complaint is fatally weak. The
Respondent asks the Panel to enter a finding of attempted Reverse Domain Name Hijacking against the Complainant.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following: (i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) the 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. Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the
statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

A. Identical or Confusingly Similar  

The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed
domain name”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Domain Name incorporates the Complainant’s registered TOX mark in its entirety. (As usual, the Top-Level Domain (“TLD”) “.com” is disregarded as a standard registration requirement. See id. section 1.11.2.)

The Panel finds that the Domain Name is identical to the Complainant’s registered TOX mark and concludes, therefore, that the Complainant has established the first element of the Complaint.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which a respondent may establish rights or legitimate interests in a domain name, by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s 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) that the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is 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.

Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1.

The Complainant has established trademark rights, a lack of permissive use, and the use of the Domain Name only for sporadic PPC advertising by the Respondent not known by a corresponding name. Thus, the Complainant has made a prima facie case, and the burden of production shifts to the  Respondent.

The Respondent demonstrates that “tox” is a dictionary prefix and suffix used as an abbreviation or acronym for medical studies, tests, specialties, and procedures relating to poisons. The Respondent shows as well that there is an inherent value in three-character domain names for their potential use as acronyms and simply as memorable short domain names. As noted in the decisions cited by the Respondent and others found in the WIPO Overview 3.0, section 2.10 (“Does a respondent have rights or legitimate interests in a
domain name comprised of a dictionary word/phrase or acronym?”), panels seek to determine whether a respondent has selected such a domain name for its inherent or trademark value, looking at factors such as these:

– whether the Respondent has actually used the Domain Name, or made preparations to use it, for purposes not related to the trademark at issue (here, the Respondent has merely tested the waters with PPC advertising, but that has generated advertisements relating to the “toxic” and “toxicology” dictionary abbreviations associated with the Domain Name, not the Complainant’s trademark);

– the “status and fame” of the Complainant’s mark (not strongly established in this case, especially at the time of the Domain Name registration)

– whether the Respondent registered and used other domain names similarly containing dictionary words or phrases (there is evidence of this on the current record, including multiple registrations in the same year as the Domain Name registration).

The conclusion in WIPO Overview 3.0, section 2.10.2, with respect to acronyms is instructive here:

“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.”

The Panel finds the Declaration of Ms. Greenberg plausible concerning the Respondent’s business model and its practice of registering short domain names in 2001 based on dictionary terms or acronyms, including the Domain Name, for investment and potential website development. The Complainant has not offered evidence indicating the likelihood that the Respondent nevertheless would be aware of the Complainant or its mark for industrial machinery until the Complainant offered to purchase the Domain Name 20 years later.

Thus, on balance, the Panel finds that the Respondent has established a legitimate interest in investing in a short domain name, one that also corresponds to a common prefix and suffix and abbreviation found in
English dictionaries and used in the medical field.

The Panel concludes, accordingly, that the Complainant has not established the second element of the Complaint.

C. Registered and Used in Bad Faith

The Complainant’s failure to prevail on the second element is fatal to the Complaint. However, because the Respondent has asked for a finding of Reverse Domain Name Hijacking, it is also useful to examine the Complainant’s case under the third element.

The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or …

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

The Complainant argues that the Respondent had “actual knowledge” of its trademark, which is registered “all over the world” and “clearly” registered the Domain Name to obtain “an unacceptable high amount of money” from the Complainant”, pointing to the Complainant’s unsuccessful efforts in 2021 and 2022 to purchase the Domain Name for USD 24,000.

There is no evidence of “actual knowledge” in this instance, which the Respondent denies. Moreover, panels typically have not inferred bad faith on the basis of constructive notice of trademark registrations without relying on supporting evidence of the strength and distinctiveness of the mark and/or some indication of the respondent’s awareness of the mark – especially where “the complainant’s mark is not inherently distinctive and it also corresponds to a dictionary term or is otherwise inherently attractive as a domain name (e.g., it is a short combination of letters)”, which is precisely the case here. See WIPO Overview 3.0, section 3.2.2.

The use of a disputed domain name for PPC advertising is often evidence of bad faith misdirection for commercial gain, consistent with the Policy, paragraph 4(b)(iv), but the circumstances here do not warrant such a finding. The record does not suggest that the Respondent was aware of the  omplainant’s mark and sought to exploit it, and the PPC links themselves are in this case relevant to the dictionary sense of the Domain Name not the Complainant’s trademark.

The fact that the Respondent rejected a purchase offer from the Complainant – an offer initiated by the Complainant – is insufficient to establish bad faith. The record does not indicate that the Respondent likely targeted the Complainant’s mark in 2001, and the amount of the Respondent’s demand in 2021 does not prove otherwise. The record amply demonstrates the inherent value of three-letter “.com” domain names, particularly those, such as the Domain Name, based on dictionary terms. In any event, it strains credulity to
imply that the Respondent obtained the Domain Name in 2001 “primarily” with the intent of attracting an offer from the Complainant and then patiently waited two decades for that offer.

Given that the Respondent has not itself developed a website associated with the Domain Name, the Complainant also briefly mentions the “passive holding” doctrine of Nuclear Marshmallows. The Complainant fails to demonstrate the relevance of this doctrine in the present circumstances, however, with reference to the relevant conditions as summarized in the WIPO Overview 3.0, section 3.3:

“(i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”

Here, the Complainant’s mark also corresponds to a dictionary term; the Complainant has not established its widespread reputation in 2001; the Respondent was not concealed and has filed a full Response supported by a Declaration from a person with contemporaneous knowledge; and the Respondent offers plausible, good-faith uses for the Domain Name consistent with its business model for similar short domain names. In the “totality of the circumstances” (id.), this is not a good record for applying the passive holding doctrine of Nuclear Marshmallows and its progeny.

The Panel concludes, therefore, that the Complainant has failed to establish the third element of the Complaint, bad faith.

7. Decision

For the foregoing reasons, the Complaint is denied.

8. Reverse Domain Name Hijacking

Paragraph 15(e) of the UDRP Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking (‘RDNH’) or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. The Respondent has requested such a finding here.

Reverse Domain Name Hijacking is defined under the UDRP Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”. Mere lack of success of a complaint is not sufficient to find Reverse Domain Name Hijacking. See WIPO Overview 3.0, section 4.16.

A finding of RDNH is warranted, for example, when a panel finds that the complainant (especially one represented by counsel) should have recognized that it could not succeed on one of the three elements of the complaint under any fair interpretation of the available facts or brings a complaint based “on only the barest of allegations without any supporting evidence” (id.).
This is such a case. The three-letter Domain Name corresponds to a dictionary term and was registered more than 21 years ago. The bare-bones Complaint does not establish that the Complainant’s mark had achieved widespread recognition by that time and was uniquely associated with the Complainant. It does not come close to establishing the probability that the Respondent “must have been” aware that the mark was associated with a manufacturer of sheet-metal joining tools and chose to invest in the three-letter Domain Name – and hold onto it for more than two decades – in the hope that the manufacturer would pay a large sum for the Domain Name.

The Complaint makes no serious effort to confront these obvious issues, and it throws in a reference to the passive holding doctrine without addressing the conditions laid down in Nuclear Marshmallows and following decisions for finding bad faith under that doctrine, such as establishing the fame of the mark, the lack of a Response, or the absence of plausible, legitimate reasons for selecting the disputed domain name. The Complainant focuses on the fact that the Respondent declined an offer for the Domain Name for USD 24,000, but this is unsurprising for a three-letter “.com” domain name.

The Complainant can rightly be faulted for subjecting the Respondent to the expense and burden of a UDRP proceeding on such thin premises.

The Panel finds that the Complainant brought the Complaint in bad faith, within the meaning of Rule 15(e), in an attempt at Reverse Domain Name Hijacking.

/W. Scott Blackmer/
W. Scott Blackmer
Presiding Panelist

/Stefan Abel/
Stefan Abel
Panelist

/Gerald M. Levine/
Gerald M. Levine
Panelist

Date: November 23, 2022

WIPO ADMINISTRATIVE PANEL – UDRP DECISION
NV5 Global Inc. v. NV4 Geospatial Consulting Private Limited,
WIPO Case No. D2022-3689

1. The Parties

The Complainant is NV5 Global Inc., United States of America (“United States”), represented internally.

The Respondent is NV4 Geospatial Consulting Private Limited, India, represented by Cylaw Solutions, India.

2. The Domain Name and Registrar

The disputed domain name <nv4geospatial.com> is registered with Hosting Concepts B.V. d/b/a Registrar.eu (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 4, 2022. On October 4, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 10, 2022, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain name.

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 the Respondent of the Complaint, and the proceedings commenced on October 13, 2022. In accordance with the Rules, paragraph 5, the due date for Response was November 2, 2022. On October 26, 2022, the Respondent’s Representative requested an extension of 13 days to respond to the Complaint. After confirming that the Complainant did not object to the requested extension, the Respondent’s request was granted, and the response date was extended to November 15, 2022. The Response was filed with the Center on November 13, 2022.

The Center appointed Steven A. Maier as the sole panelist in this matter on November 17, 2022. The Panel finds that it was properly constituted. 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

The Complainant is a corporation organized under the laws of Florida, United States. The Complainant claims to be the owner of United States trademark registration number 4304381 for the word mark NV5, registered on March 19, 2013 for goods and services including engineering services, geological services and consulting in the field of structural and geotechnical engineering in International Class 42*.

(* While the trademark in question is registered in the name of NV5 Holdings, Inc. the Panel will proceed for the purposes of this Decision on the basis that the Complainant is duly authorized to use the trademark.)

The disputed domain name was registered on January 29, 2022. On June 6, 2022 the Complainant filed a United States trademark application number 97444076 for a word mark NV5 GEOSPATIAL.

The disputed domain name has resolved to a website operated by the  Respondent offering services including “terrestrial laser scanning”, “photogrammetry and orthophotography” and “total station and DGPS survey”.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it has used the mark NV5 GEOSPATIAL since at least February 2021 through a wholly-owned subsidiary named Quantum Spatial, Inc., which is a company registered in Wisconsin, United States. It states that its has used the mark in connection with geospatial data collection and related services and that it registered the domain name <nv5geospatial.com> on February 22, 2021.

The Complainant exhibits evidence of its website and social media accounts. Archived news items on the website suggest that the Complainant has used the name “NV5 Geospatial” in connection with its business activities since at least January 27, 2021.

The Complainant claims to have acquired common law service mark rights in the mark NV5 GEOSPATIAL.

The Complainant submits that the disputed domain name is confusingly similar to its NV5 GEOSPATIAL mark, both containing the letters “NV” together with a singular number and the term “geospatial”.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It contends that the Respondent is not commonly known by the disputed domain name and that it registered the disputed domain name primarily for the purpose of attracting Internet users to its website by creating a likelihood of confusion with the Complainant’s NV5 GEOSPATIAL mark.

The Complainant submits that the disputed domain name was registered and is being used in bad faith. It contends that the Respondent was aware of the Complainant and its use of the NV5 GEOSPATIAL mark since both parties have offices in Bangalore, India and offer identical services.

The Complainant repeats its submission that the Respondent registered the disputed domain name primarily for the purpose of attracting Internet users to its website by creating a likelihood of confusion with the Complainant’s NV5 GEOSPATIAL mark.

The Complainant states that it contacted the Respondent in connection with this matter and that the Respondent “verbally offered to change the name” for a payment of USD 13,000. The Complainant submits that this sum exceeds the Respondent’s out-of-pocket costs directly related to the disputed domain name.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent denies the Complainant’s allegations and submits that it is carrying on a legitimate business under the name “NV4 Geospatial Consulting Pvt. Ltd.”.

The Respondent states that it originally intended to trade as “V4 Geospatial Consulting Pvt. Ltd” and registered the domain name <v4geospatial> on January 9, 2022 for that purpose. It provides evidence of that domain name registration. It also produces what it states to be a communication from the Indian Ministry of Corporate Affairs, stating that the company name “V4” could not be registered owing to a conflict with existing trademark rights. It provides evidence that an alternative name, “NV4 Geospatial Consulting Private Limited”, was however approved on January 29, 2022 and that it registered the disputed domain name on the same day.

The Respondent explains its choice of the disputed domain name as follows. It states that the originally- chosen term “V4” was intended to represent the term “we four”, referring to the founders and directors of the Respondent’s business. That name having been refused, the Respondent states that it added the prefix “N”, which stands for the Hindi word “naveen”, which both translates as “new” and is also the “official” first name of Mr Naveen Kumar Muninarayanappa, who is one of the four founder directors of the Respondent. The Respondent submits that using the term “new” as part of a company name is highly common in India.

The Respondent provides evidence that it was incorporated on March 9, 2022 and states that it actively conducts the business of geospatial consulting under the various methodologies specifically mentioned on its website. It states that two of its directors have more than 10 years’ prior experience in the geospatial field and provides evidence of their LinkedIn profiles together with the names of their previous employers.

The Respondent tenders various documents as evidence that it is operating a bona fide business venture. These include its company and tax registration documents; what appear to be invoices issued to customers (although with the customer names redacted); a rental agreement for premises for the period of 11 months from January 1, 2022 (which is notarized); an electricity bill (although the name of the customer is unclear); a third-party invoice addressed to the Respondent for IT equipment; and what appear to be letters of offers of employment issued to, and countersigned by, several employees of the company. The Respondent also produces photographs stated to be of the company’s employees, although those photographs contain nothing to identify the Respondent.

The Respondent disputes that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. It points out that the mark NV5 is not registered under the Complainant’s name and that the Complainant’s application for the mark NV5 GEOSPATIAL is merely a pending application. With regard to the Complainant’s claim to have obtained unregistered trademark rights in that name, the Respondent submits that the Complainant has provided no evidence of matters such as its business, reputation, sales volume, advertising, marketing or other matters to establish that the name had established a “secondary meaning” distinctive of the Complainant, particularly in India.

The Respondent submits that the Complainant has never used its domain name <nv5geospatial.com>, which it says has redirected to “www.nv5.com”. It also disputes that the Complainant has used the name NV5 GEOSPATIAL in India or anywhere outside the United States. It asserts that the Complainant’s claimed presence in India was based on its acquisition of a Bangalore company named Quantum Spatial Pvt. Ltd. and that any Bangalore office that the Complainant may have had is now closed.

The Respondent submits that it has rights or legitimate interests in respect of the disputed domain name by virtue of its trading under the name “NV4 Geospatial Pvt. Ltd.”. It states that it has therefore been commonly known by that trade name. It refers again to its evidence of active trading and states that all of this evidence shows that it had made demonstrable preparations to use the disputed domain name before receiving any notice of this proceeding.
The Respondent asserts that the Complainant must show that the Respondent has a total lack of any rights or legitimate interests in the disputed domain name, not merely that the Complainant has a purported “better” right.

The Respondent denies that it registered or has used the disputed domain name in bad faith. With regard to registration, it states that it has explained its choice of the disputed domain name and that it did not have actual knowledge of the Complainant’s use of the name NV5 GEOSPATIAL at the relevant time. It reiterates that the Complainant has not used that name in India and that it has closed its Bangalore office, which was in any event operated by a company named Quantum Spatial India Pvt. Ltd.

The Respondent denies have sought misleadingly to attract Internet users to its website. It adds that its website is substantially different in appearance from the Complainant’s and that the two websites could not be confused.
The Respondent denies having registered the disputed domain name primarily for the purpose of selling it to the Complainant for a sum in excess of its out-of-pocket costs. Its evidence is that someone from Quantum Spatial India Pvt. Ltd. contacted an (unnamed) member of its staff several months before the date of the Complaint and that there was a discussion about the company name and a United States company named “NV5”. The Respondent says it cannot now remember details of that call, but believes the discussion must have related to the entirety of the Respondent’s trading under the name “NV4 Geospatial” and not only to the disputed domain name. The Respondent does not expressly dispute that a figure of USD 13,000 may have been discussed, but says that its overall investment in its business exceeds that figure. The Respondent points out that, on the Complainant’s own case, it was the Complainant who contacted the Respondent in connection with the disputed domain name and not vice versa.

The Complainant adds that the UDRP does not provide a forum for determining what is in fact a complex business or trademark dispute, as opposed to cases purely of “cybersquatting”.

The Respondent requests a finding of Reverse Domain Name Hijacking (“RDNH”) against the Complainant. It submits that the Complainant knew or should have known that its claim could not succeed and that it should be held to a higher standard of conduct as it is represented by intellectual property counsel. The Respondent says that the Complainant should have known from the Respondent’s website that it was operating a bona fide business and that there is no evidence of the Respondent targeting the Complainant’s trademark.

The Respondent’s evidence is supported by a notarized affidavit sworn by Mr Naveen Kumar Muninarayanappa.

6. Discussion and Findings

In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant relies on registered trademark rights in the mark NV5 and claims to have obtained unregistered trademark rights in the mark NV5 GEOSPATIAL. With regard to the latter mark, the Respondent is correct to observe that the Complainant has failed to provide evidence of its commercial activities such as would lead to the mark NV5 GEOSPATIAL having become a distinctive identifier of the Complainant and its services.

However, the Panel accepts that the Complainant has used the name
“NV5 Geospatial” in various news items on its website since at least January 2021. Also bearing in mind that the purpose of paragraph 4(a)(i) is merely to establish that a complainant has sufficient standing to pursue its complaint, the Panel finds that the Complainant has attained some level of unregistered trademark rights in the mark NV5 GEOSPATIAL. The disputed domain name differing from that mark only by the digit “4” and opposed to “5”, the Panel finds that the disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.

B. Rights or Legitimate Interests

Under paragraph 4(c)(i) of the Policy, a respondent may establish that it has rights or legitimate interests in respect of a disputed domain name by demonstrating:

“… before any notice to you 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.”
In this case the Respondent claims to be carrying on a legitimate business in India under the name “NV4 Geospatial Pvt. Ltd.” and to have registered the disputed domain name in connection with that business. In the circumstances, the Panel must consider whether the disputed domain name does in fact reflect a legitimate business interest of the Respondent, or was instead registered in the knowledge of the Complainant’s use of the mark NV5 GEOSPATIAL and with the intention of taking unfair advantage of the reputation and goodwill attaching to that mark.

The Panel is unable in this case to form a definitive view upon the veracity of the Respondent’s submissions and evidence. Its explanation for the choice of the business name “NV4 Geospatial” appears to the Panel to be somewhat contrived and also to be remarkably coincidental with the Complainant’s mark NV5 GEOSPATIAL. Yet at the same time, the Respondent provides persuasive evidence that it originally intended to call its business “V4 Geospatial” and added the character “N” once the registration of this name was refused.

The Panel also accepts on the evidence that at least two of the founder directors of the Respondent company appear to have had previous experience and employment in the geospatial consulting sector.
As to the Respondent’s evidence of its actual business activities, the Panel finds items such as the incorporation and tax registration documents and the rental agreement to be persuasive, but can reach no firm conclusions concerning the Respondent’s (redacted) customer invoices, the third-party invoice for IT equipment and the offer of employment letters. As previously indicated, the Panel finds the photographs to be of no evidential value.
The Panel also has misgivings concerning the Respondent’s website. While listing specific services in the geospatial sector, the language of much of the website is highly generic in nature, e.g. “We are built upon secure principal values. In keeping with these values, we are pledged to provide spectacular care and a standard of service to our clients and our community”.

Furthermore, while the “We are a person who has excessive thoughts or actions passionate about our business to help clients achieve success” and
website includes tabs for both “Projects” and “Case Studies” both of these resolve to a “Coming Soon” message. In addition, links to Facebook, Twitter and other social media do not appear to be operational.

The Panel’s difficulty with the evidence described above illustrates that this is not a suitable dispute for determination under the UDRP which, as the Respondent correctly observes, is a forum for resolving what are essentially “cybersquatting” cases and not for determining more complex business disputes. While a court of law could, for example, hear the parties’ oral evidence and comprehensively investigate the veracity of the Respondent’s evidence, these are matters beyond both the scope and the remit of the UDRP. In view of this, and based on the Respondent’s at least prima facie evidence of legitimate trading, the Panel finds it impossible to conclude, on the balance of probabilities, that the Respondent’s business is not genuine and is instead a sham or pretext aimed primarily at targeting the Complainant’s trademark.

In these circumstances, the Complainant cannot establish to the satisfaction of the Panel that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Complainant must necessarily fail.

C. Registered and Used in Bad Faith

In the light of the Panel’s findings above, it is unnecessary for the Panel to make specific findings concerning the issues of registration and use of the disputed domain name in bad faith. The Panel comments, however, that for similar reasons as set out above, this is not a case in which the intentions of the Respondent could satisfactorily be determined from the evidence available to the Panel and within the scope of the UDRP procedure.
The Panel further comments that it would not find the discussion between the parties involving USD 13,000 (if such figure was in fact discussed) to be conclusive of the Respondent’s registration or use of the disputed domain name in bad faith. The Panel accepts in this regard that the Respondent had not advertised the disputed domain name for sale, that the Complainant (or its predecessor) contacted the Respondent about the disputed domain name and that the discussion may have concerned issues of business names and branding beyond the ownership of the disputed domain name itself.

D. Reverse Domain Name Hijacking

Under paragraph 15(e) of the Rules: “If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
Panels will typically make a finding of RDNH in circumstances where a complainant knew or ought to have known that its complaint had no reasonable prospects of success. Furthermore, in a case such as this, where a complainant is legally represented, the complainant is held to a higher standard than an unrepresented party.

In this case, the Panel finds the Complainant’s rights in respect of the NV5 GEOSPATIAL trademark to be marginal. Furthermore, the Complainant was aware of the Respondent’s company name and website but provides little explanation for its contentions that the Respondent has not commonly been known by the disputed domain name and that the Respondent registered the disputed domain name primarily to target the Complainant’s trademark.
At the same time, the Panel has found the Respondent’s explanation for its choice of the disputed domain name to appear somewhat contrived and the disputed domain name to be remarkably coincidental with the Complainant’s NV5 GEOSPATIAL mark. The Panel has also found that this is not a case in which it can determine the veracity of the Respondent’s evidence within the scope of a proceeding under the UDRP.

In the circumstances, the Panel would find it inappropriate to conclude that the Complainant has brought the Compliant in bad faith and therefore declines to make a finding of RDNH pursuant to paragraph 15(e) of the Rules.

7. Decision

For the foregoing reasons, the Complaint is denied.

/Steven A. Maier/
Steven A. Maier

Sole Panelist
Date: November 25, 2022

HCCI Professional Protective Services, LLC v. Jonathan McMaster / Anonymize, Inc. 

WIPO Case No. D2022-1668

1. The Parties

The Complainant is HCCI Professional Protective Services, LLC, United States of America (“United States”), represented by Thomas P. Howard LLC, United States.

The Respondent is Anonymize, Inc. / Jonathan McMaster, United States, represented by Archer Softech, India.

2. The Domain Name and Registrar

The disputed domain name <hcciprotection.com> is registered with Epik, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2022. On May 9, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 9, 2022, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 16, 2022 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 16, 2022.

The Center verified that the Complaint together with the amended 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 the Respondent of the Complaint, and the proceedings commenced on May 19, 2022. In accordance with the Rules, paragraph 5, the due date for Response was June 8, 2022. The Response was filed with the Center on June 6, 2022. On June 14, 2022, the Complainant filed “Supplemental Information” to address certain issues raised in the Response.

The Center appointed Evan D. Brown as the sole panelist in this matter on June 20, 2022. The Panel finds that it was properly constituted. 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.

4a. Factual Background

The Complainant is a single-member Colorado limited liability company, established in 2019 to provide private security and related services. The Complainant retained the Respondent to provide website development and other services for the Complainant. One of the tasks the Respondent performed in the service of the Complainant was the registration of the disputed domain name, which was done on November 28, 2019. The parties do not dispute that the Respondent registered the disputed domain name at the instruction of the Complainant and for the Complainant.

Though it appears the parties were at one time friends, the relationship between them deteriorated, and they parted ways, such separation being reflected in dramatic communications between them in late April 2022. Around the same time (e.g., in an email dated April 29, 2022), the Complainant demanded, among other things, that the Respondent “return the domain to [the Complainant’s] control”. The Respondent did not turn over control of the disputed domain name and set the disputed domain name to no longer point at the Complainant’s business website. This UDRP action ensued.

4b. Respondent Identity

The Registrar disclosed the registrant to be Anonymize, Inc, which is a WhoIs privacy service. However, due to the parties’ history the Complainant was able to identify the Respondent as Jonathan McMaster and provided his contact information so as to receive correspondence regarding this proceeding.

5. Parties’ Contentions

A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademark; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
For the first element under the Policy, the Complainant asserts it has been operating under the trade name HCCI PROFESSIONAL PROTECTION SERVICES and shortened variations thereof since 2019. It submitted documents showing it has registered the trade name HCCI PROTECTION with the Colorado Secretary of State. In the Supplemental Information filed with the Center, the Complainant asserts that the Colorado trade name registration, along with proof of use, establishes common law rights in the HCCI PROTECTION mark. The Complainant asserts that the disputed domain name is “identical in whole or in part” to the Complainant’s purported marks.

As for the second element, the Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name because the Respondent’s only relation to the disputed domain name is as an independent contractor that registered the disputed domain name at the instruction of the Complainant and for the Complainant. For these reasons, according to the Complainant, the Respondent at no time acquired any ownership rights in the disputed domain name.

And for the third element, the Complainant states – with no elaboration whatsoever – that the Respondent registered the disputed domain name in bad faith. It asserts that the Respondent has used the disputed domain name in bad faith by attempting to block the Complainant from using the disputed domain name and by attempting to sell the disputed domain name on the open market for an amount in excess of the registration fees.

B. Respondent
The Respondent argues principally that the Complainant has failed to establish any of the three elements required under the Policy, that the present situation is a business dispute outside the scope of the UDRP that would be better resolved in court, and that the Complainant has engaged in Reverse Domain Name Hijacking.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name, and (iii) the disputed domain name has been registered and is being used in bad faith, AXA SA v. Huade Wang, WIPO Case No. D2022-1289.

The Panel finds that the Complainant has failed to establish the third element. Specifically, the Panel finds that the Complainant has provided no evidence that the Respondent registered the disputed domain name in bad faith.

A. Identical or Confusingly Similar

This element under the Policy functions primarily as a standing requirement. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. This element requires the Panel to consider two issues: first, whether the Complainant has rights in a relevant mark; and, second, whether the disputed domain name is identical or confusingly similar to that mark.

The Complainant asserts it has been operating under the trade name HCCI PROFESSIONAL PROTECTION SERVICES and shortened variations thereof since 2019. The evidence submitted to support this assertion, however, comprised of the company’s articles of organization filed with the Colorado Secretary of State, photographs and social media posts, all show use of the name HCCI PROFESSIONAL PROTECTIVE SERVICES.

The Complainant submitted documents showing it has registered the trade name HCCI PROTECTION with the Colorado Secretary of State, but provided no evidence that such trade name has been used in commerce. The applicable laws of the State of Colorado do not require that use in commerce be asserted to support the registration of a trade name. C.R.S. §7-71-101 et seq. And the Statement of Trade Name of a Reporting Entity the Complainant provided as evidence contains no assertion that HCCI PROTECTION has been used in commerce.

The Panel therefore rejects the Complainant’s assertions that the Complainant has established any trademark rights in either HCCI PROFESSIONAL PROTECTION SERVICES or HCCI PROTECTION.

Web page screenshots submitted as annexes to the Complaint show that the Complainant has used the mark HCCI PROFESSIONAL PROTECTIVE SERVICES to market and promote its services. For example, the screenshots show the mark has been affixed to company vehicles and on uniforms. The mark is used as the title of the company’s business Facebook page. Photos show the mark appearing on business cards. The Facebook page was created in February 2019 and has gathered more than 300 followers in that time. The Panel finds in the circumstances of this case, where the Respondent was clearly aware of the Complainant’s use of its business name, evidence to support the Complainant’s rights in the mark HCCI PROFESSIONAL PROTECTIVE SERVICES.

This test to determine whether the domain name is identical or confusingly similar to a complainant’s mark typically involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. WIPO Overview 3.0, section 1.7; Supercell Oy v. Lombardo Fausto, WIPO Case No. D2017-0701 (<clashofheroes.net> confusingly similar to the mark CLASH OF CLANS). The confusing similarity test may also include recognizability by technological means such as search engine algorithms. WIPO Overview 3.0, section 1.7; Sodexo v. Lloyd Group, WIPO Case No. D2021-1214 (the panel therein found that a Google search affirmed recognizability by search engine algorithms). In some cases, such assessment may also entail a more holistic aural or phonetic comparison of the complainant’s trademark and the disputed domain name to ascertain confusing similarity. Boehringer Ingelheim International GMBH v. JH Kang, WIPO Case No. DCO2020-0001.

The distinctive “HCCI” portion of the Complainant’s mark is recognizable in the disputed domain name. See Supercell Oy v. Lombardo Fausto, supra. (“the first two words of each name (‘Clash of’) stand out”). The Panel ran a Google search (which the Panel is permitted to conduct under the general powers of a panel articulated in the Rules) using the second level portion of the disputed domain “hcciprotection”. The search returned results for the Complainant’s LinkedIn and Facebook pages, each titled “HCCI Professional Protective Services”. And the disputed domain name and the Complainant’s mark are confusingly similar when viewed by means of a “holistic aural or phonetic comparison”.

For these reasons, the Panel finds that the Complainant has established the first element under the Policy.

B. Rights or Legitimate Interests

Having found that the Complainant has failed to establish the third element under the Policy (discussed below), the Panel declines to make a determination under this second element.

C. Registered and Used in Bad Faith

The plain language of paragraph 4(a) of the Policy provides that the Complainant must prove that the disputed domain name “has been registered and is being used in bad faith”. Under this third element, “it is clear that both bad faith use and bad faith registration are required.” e-Duction, Inc. v. John Zuccarini, d/b/a The Cupcake Party & Cupcake Movies, WIPO Case No. D2000-1369 (emphasis in original). Similarly, “if a domain name was registered in good faith, it cannot, by changed circumstances, the passage of years, or intervening events, later be deemed to have been registered in bad faith.” Substance Abuse Management, Inc. v. Screen Actors Modesl [sic] International, Inc. (SAMI), WIPO Case No. D2001-0782.

The Respondent correctly observes that the Complainant has not alleged bad faith registration of the disputed domain name. All of the assertions in the Complaint under this third element deal with how the Respondent is alleged to have used the disputed domain name. Moreover, the Complainant’s assertion that the Respondent “purchased the domain for and at the direction of [the Complainant]” undermines the claim that the Respondent was acting in bad faith when it registered the disputed domain name. In the “Supplemental Information” that the Complainant provided after the Response, the Complainant doubled down on these assertions, stating that the Respondent purchased “the domain as an agent for [the Complainant] and for [the Complainant]’s use.” Neither the Complainant’s assertions, nor the correspondence provided by the Complainant, support the notion that the Respondent was acting in bad faith by registering the disputed domain name. Instead, the record shows that by registering the disputed domain name, the Respondent was doing precisely what the parties had agreed the Respondent would do.

Having not shown that the Respondent registered the disputed domain name in bad faith (there being nothing in the record to lead the Panel to believe e.g., that the registration was initially undertaken in the Respondent’s name with a view to holding it as ransom), the Panel finds that the Complainant has failed to establish this third element under the Policy.

The Panel takes no position (not the least because there is not sufficient information in the various pleadings and annexes, but also given the limited scope of the Policy) on the status of and compensation outstanding between the Parties; to the extent the Complainant feels it has a cause of action under local law, it remains free to pursue those in court.

7. Reverse Domain Name Hijacking

The Respondent has asked the Panel to find that the Complainant engaged in Reverse Domain Name Hijacking (“RDNH”). The Panel declines to make such a finding.

Paragraph 15(e) of the Rules provides that, if “after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. Paragraph 1 of the Rules defines RDNH as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”. Mere lack of success of the Complaint is not itself sufficient for a finding of RDNH (see paragraph 4.16 of the WIPO Overview 3.0).

Paragraph 4.16 of the WIPO Overview 3.0 provides that RDNH is appropriate to address a party “unreasonably ignoring established Policy precedent notably as captured in this WIPO Overview – except in limited circumstances which prima facie justify advancing an alternative legal argument”. Here, the Complainant has entirely disregarded established Policy precedent regarding the need to prove registration in bad faith. The Complainant has made no assertion seeking to justify an alternative legal argument. This issue of bad faith registration is “not Policy arcana.” See DIGITI limited liability company v. Privacy Administrator, Anonymize, Inc / Michele Dinoia, Macrosten LTD, WIPO Case No. D2018-2148, quoting from Pick Enterprises, Inc. v. Domains by Proxy, LLC, DomainsByProxy.com / Woman to Woman Healthcare / Just Us Women Health Center f/k/a Woman to Woman Health Center, WIPO Case No. D2012-1555. Instead, the conjunctive requirement of both registration and use in bad faith is derived from the plain language of the Policy and longstanding, clear precedent.

Moreover, the Complainant is represented by counsel from a law firm that self-identifies on its website as experienced in intellectual property and business litigation. It is not unreasonable for the Panel to require that the Complainant and its counsel will not gloss over matters on which well-established Policy precedent weighs directly against the Complainant’s contentions. See Intellect Design Arena Limited v. Moniker Privacy Services / David Wieland, iEstates.com, LLC, WIPO Case No. D2016-1349; citing Spy Optic, Inc. v. James Lee, WIPO Case No. D2013-1411.

Based on the above, the Panel believes that the Complainant approaches the conduct necessary for a finding of RDNH. However, neither has the Respondent’s conduct been exemplary. The course of dealing between the parties, evidenced by the correspondence they exchanged, indicates that all relevant persons agreed that the disputed domain name was procured and was to be used for the Complainant’s business. The Respondent may have legitimate professional and/or personal grievances against the Complainant. In any event, by holding onto the disputed domain name and redirecting it away from the Complainant’s website, the Respondent appears to be engaging in self-help that is in the Panel’s view clearly unsavory. A finding of RDNH would make the Complainant the sole stigma bearer, which would not be equitable on these facts. The Panel in this case instead follows the style of Rudy Rojas v. Gary Davis, WIPO Case No. D2004-1081 in which, invoking Shakespeare, that panel conjured “[a] plague o’ both your houses” to leave the parties as it found them.

8. Decision

For the foregoing reasons, the Complaint is denied.

Evan D. Brown
Sole Panelist
Date: July 3, 2022