Complainant is Bryn Mawr Communications, LLC of Wayne, Pennsylvania, United States of America, represented by Stradley Ronon Stevens & Young, LLP, United States of America.
Respondent is Linkz Internet Services of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by John Berryhill, United States of America.
The Disputed Domain Name <eyetube.com> is registered with Uniregistrar Corp. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2016. On February 12, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 15, 2016, 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 February 17, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 8, 2016. The Response was filed with the Center on February 19, 2016.
On March 4, 2016, Complainant filed a supplemental brief with the Center. On March 17, 2016, the Center appointed Michael A. Albert, William R. Towns and Douglas M. Isenberg as panelists in this matter. On March 21, 2016, Respondent filed a supplemental brief with the Center.
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.
Founded in 2001, Complainant provides online educational resources related to ocular health and practice management for ophthalmologists in both the United States and Europe. These resources include surgical videos, webcasts, symposia, roundtables, articles, blogs, newsletters, discussion threads, and integrated social networking features that allow ophthalmologists to connect with one another. Complainant currently provides these services under the <eyetube.net> domain name.
On December 27, 2005, Respondent registered the Disputed Domain Name, which contains links to searches for cable boxes, DVDs, game shows, sports, satellite television, and other television-related results. Respondent has offered to sell the Disputed Domain Name for USD 145,200.
As early as December 4, 2006, Complainant registered the <eyetube.net>, <eyetube.org>, and <eyetube.info> domain names.
On November 9, 2007, Complainant filed an application with the United States Patent and Trademark Office (“USPTO”) to register the EYETUBE & Design mark. The EYETUBE & Design mark was used in commerce as early as February 1, 2008, and registered with the USPTO on March 31, 2009. On March 18, 2015, Complainant filed an application with the USPTO to register the EYETUBE mark. The EYETUBE mark was used in commerce as early as February 1, 2008, and registered with the USPTO on October 27, 2015. Both marks were registered for “education services for ophthalmic physicians only in the field of ophthalmology and eye care and featuring instruction for ophthalmic related surgical techniques and ophthalmic product demonstrations rendered through online videos.” Complainant uses the registered trademarks on its website and in its advertising and promotional material.
Between May 2011 and July 2015, at least three individuals employed by Complainant initiated communications with Respondent’s broker regarding the purchase of the Disputed Domain Name. On May 4, 2011, Complainant’s President and Co-Founder wrote to the broker: “I would be willing to pay USD 10,000 max for the url. Thanks, David.” The broker responded, but the President never replied. On February 20, 2015, Complainant’s Senior Director for Digital Products likewise messaged the broker: “Hello, I am interested in purchasing eyetube.com. Can you please tell me the rate for this domain?” After receiving a quote of USD 120,000, the Director responded that she was “reviewing with my team and will get back to you shortly.” Following further discussion, she wrote: “We’re still not ready to make a decision about this but thank you for your follow up.” Finally, in July 2015, Complainant’s Chief Technology Officer communicated via email and phone with Respondent’s broker. After being quoted USD 121,000, the Officer answered: “Great, thanks for staying in touch. I’ll let you know what I discover.” He later wrote: “Thanks for reaching out. Unless it miraculously drops under USD 100K, we aren’t interested. You never know!” In none of these communications did any of Complainant’s employees assert that Complainant had any right to the Disputed Domain Name.
Complainant alleges that the Disputed Domain Name is identical and confusingly similar to Complainant’s marks; that Respondent has no rights or legitimate interests in the Disputed Domain Name; and that Respondent registered and used the Disputed Domain Name in bad faith. On these grounds, Complainant requests that the Disputed Domain Name be transferred to Complainant.
In particular, Complainant alleges that the Disputed Domain Name wholly incorporates Complainant’s marks and is identical to the marks in every way. Complainant notes that although it filed its earliest application for the marks almost two years after Respondent registered the Disputed Domain Name, paragraph 4(a)(i) of the Policy does not require that the marks be registered prior to the registration of the domain name. Complainant also alleges that Respondent has never been licensed or authorized to use Complainant’s marks, has never been commonly known by the Disputed Domain Name, has made no legitimate noncommercial or fair use of the Disputed Domain Dame, and has no identifiable history of using the Disputed Domain Name in connection with the bona fide offering of goods or services. According to Complainant, Respondent has merely registered the Disputed Domain Name and is “parking” on it, which has diverted Internet users from Complainant’s website.
Complainant alleges bad faith pursuant to paragraphs 4(b)(i) and (iv) of the Policy. Despite the fact that Complainant had not begun to use its marks in commerce by the time Respondent registered the Disputed Domain Name, Complainant alleges that Respondent registered and continues to use the Disputed Domain Name with the intent to exploit the confusing similarity between the Disputed Domain Name and Complainant’s marks, and that such use has actually generated significant confusion among the medical professionals who make use of Complainant’s website. Complainant alleges that its marks have obtained widespread recognition, such that Respondent had either actual or constructive notice of the marks. Complainant further alleges that Respondent’s “unreasonable and exorbitant” asking price for the Disputed Domain Name of USD 145,200 constitutes additional evidence of bad faith.
Complainant’s supplemental filing raises several issues that Complainant contends it could not have raised in the Complaint. First, Complainant calls to the Panel’s attention what it claims to be Respondent’s “disturbingly long history of being brought before the Center as a result of its questionable usage of its domain names.” To support its contention that Respondent engaged in bad faith registration and use, Complainant cites a prior panel decision, and quotes from a dissenting opinion in another decision, involving Name Administration, Inc., an entity Complainant alleges is “undeniably closely related” to Respondent. See Julie Wampler v. Name Administration, Inc., WIPO Case No. D2014-1586 (dissenting opinion); Balglow Finance S.A., Fortuna Comércio e Franquias Ltda v. Name Administration Inc. (BVI), WIPO Case No. D2008-1216. Complainant contends that other panels have questioned the same tactics Respondent has employed in this case.
Second, Complainant alleges that, “after the filing of the Complaint, the Respondent actually ensured that its website, to which the domain name resolves, contained advertisements relating to the Complainant’s trademarks by altering the disputed domain name’s website.” (emphasis in original). Complainant attaches a printout of what it claims to be “the website to which the disputed domain name resolves.” This printout displays a link to a website maintained by Zenni Optical. Complainant argues that, contrary to Respondent’s assertion that the Disputed Domain Name includes no links related to the education of ophthalmic physicians, the Disputed Domain Name does in fact contain advertisements related to ophthalmology and optical issues. According to Complainant, this evidence indicates that Respondent “attempt[ed] to deceive both the Complainant and the Panel” by “knowingly and willfully submit[ting] false information to the Panel,” therefore “call[ing] into question the veracity of certain statements made by the Respondent in its Response.” Complainant also contends that the printout defeats any claim by Respondent that it is using the Disputed Domain Name purely in connection with its generic definition, rather than in relation to Complainant’s marks.
Respondent argues that not only has Complainant failed to establish all of the elements required by the Policy, Complainant has engaged in Reverse Domain Name Hijacking.
Respondent contends that its registration and use of the Disputed Domain Name is senior to Complainant’s registration and use of the trademarks, and that the right of seniority is sufficient for a finding in its favor on the second element of the Policy. Respondent also argues that it used the Disputed Domain Name for advertising subjects relating to television accessories and programs. Because Complainant does no business in the fields for which Respondent’s use of the Disputed Domain Name is both senior and non-infringing, Respondent argues that it has rights and legitimate interests in the Disputed Domain Name.
Furthermore, Respondent argues that its seniority precludes a finding of bad faith registration or use under the third element of the Policy. As Complainant had not registered or used the marks when Respondent registered the Disputed Domain Names, Respondent argues that it cannot have had knowledge of Respondent’s rights in the marks at that time.
Considering the circumstances of this case, Respondent argues that Complainant has engaged in “Plan B” Reverse Domain Name Hijacking, which occurs when a junior trademark claimant pursues a senior domain name that has never been used for the goods and/or services associated with the claimant’s mark, after having failed to negotiate the purchase of the domain name. Respondent argues that Complainant has been in touch with Respondent over the course of more than four years to attempt to purchase the Disputed Domain Name and yet nowhere in the Complaint is any mention made of the parties’ pre-dispute correspondence. Respondent notes that at no time over the course of those four years did Complainant make any claim of right, reference any trade or service mark, or suggest it was seeking to settle a legal claim of any kind. As Respondent points out, Complainant registered its own “eyetube” domain names in extensions other than “.com,” apparently because Complainant knew at that time that Respondent had already registered and been using the Disputed Domain Name for three years. Respondent contends that although Complainant must have known that the <eyetube.com> domain name might never be available to Complainant, Complainant nonetheless proceeded to register and use its marks.
Respondent filed a supplemental filing to respond to the issues raised in Complainant’s supplemental filing. Respondent explained that the printout of the Disputed Domain Name referenced in Complainant’s supplemental filing did not reflect the URL corresponding to <www.eyetube.com>, but rather was generated through Complainant’s use of the search function in order to retrieve advertisements related to the keywords for which Complainant had searched. Respondent clarified that the Balglow Finance decision cited by Respondent had reached a settlement following the panel’s decision, pursuant to which the parties had agreed that Name Administration’s registration of <chillibeans.com> “is and was lawful and does not violate any enforceable right of the Defendants.” Lastly, Respondent observed that Complainant’s citation to the Julie Wampler decision failed to mention that the full panel in that case found no bad faith registration.
The Panel finds that Complainant has not satisfied all of the elements required by the Policy. Although the Disputed Domain Name is identical or confusingly similar to Complainant’s marks, Complainant fails to show that Respondent has no rights or legitimate interests in the Disputed Domain Name, or that Respondent registered and used the Disputed Domain Name in bad faith. Additionally, the Panel finds that the Complaint was brought in bad faith in an attempt at Reverse Domain Name Hijacking.
As an initial matter, the Panel finds the parties’ supplemental filings admissible. Pursuant to the Rules, the Panel “shall determine the admissibility, relevance, materiality and weight of the evidence,” and “shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and [the] Rules.” Rules 10(a), (d). “While the Rules clearly delineate a procedure, for resolving disputes under the Policy, that, for the sake of expediency, relies on a single complaint and response, there is no prohibition in either the Policy or the Rules which circumscribes a panel’s authority to consider any additional material submitted by any party on its own initiative.” AutoNation Holding Corp. v. Rabea Alawneh, WIPO Case No. D2002-0058. Under the circumstances presented here, the Panel finds Complainant’s supplemental filing relevant to the Panel’s determination of Reverse Domain Name Hijacking. See Cosmos European Travels AG v. Eurotech Data Systems Hellos, Ltd., WIPO Case No. D2001-0941 (admitting Complainant’s supplemental filing, where Respondent requested a finding of Reverse Domain Name Hijacking and “the Complainant is entitled to defend itself”). Where one party’s supplemental filing is admitted, the other party’s supplemental filing should also be admitted in the interest of fairness. Rules 10(b) (“In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.”). Accordingly, the Panel will consider the arguments furthered by both parties in their original and supplemental filings.
Complainant has established that it has rights in the EYETUBE and EYETUBE & Design marks. The EYETUBE mark was used in commerce as early as February 1, 2008, and registered with the USPTO on October 27, 2015. The EYETUBE & Design mark was used in commerce as early as February 1, 2008, and registered with the USPTO on March 31, 2009. Panels have consistently held that a Complainant’s trademark registrations with the USPTO demonstrate rights in those marks. See, e.g., Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503 (Complainant has rights in marks registered with USPTO). Accordingly, Complainant’s rights in the EYETUBE and EYETUBE & Design marks have been established through Complainant’s multiple registrations with the USPTO.
In addition, the Disputed Domain Name is identical or confusingly similar to Complainant’s trademarks. The Disputed Domain Name includes the entire EYETUBE mark, in addition to the generic top-level domain (“gTLD”) “.com.” A gTLD may be irrelevant under paragraph 4(a)(i) of the Policy. See, e.g., Rollerblade, Inc. v. McCrady, WIPO Case No. D2000-0429 (finding that a gTLD, such as “.net” or “.com,” does not affect the determination of whether the domain name is identical or confusingly similar).
Respondent does not rebut the above showing or make any contrary claim or assertion. Complainant has therefore shown that the Disputed Domain Name is identical or confusingly similar to Complainant’s trademarks.
Complainant has failed to show that Respondent has no rights or legitimate interests in the Disputed Domain Name. Respondent established its ongoing “use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services.” Policy 4(c)(i). Accordingly, Complainant has failed to show the second element required by the Policy.
The evidence indicates that the links on the Disputed Domain Name are related to the domain’s generic meaning. The Disputed Domain Name consists of two generic words, “eye” and “tube,” that have meanings independent of any connection with Complainant’s business, and that together form a generic phrase related to television programming. Respondent used the Disputed Domain Name in association with these generic meanings. Although the Disputed Domain Name contains one link to a website maintained by Zenni Optical, that link is only visible upon a user’s custom search. In any event, Complainant fails to show how Zenni Optical, an eyewear retailer, is related to Complainant’s provision of educational resources to ophthalmologists.
The Panel finds that Respondent’s use of the Disputed Domain Name for this purpose, which does not capitalize on the value of Complainant’s trademarks, constitutes a bona fide offering of services. See Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031 (respondent had rights to and legitimate interests in the Disputed Domain Name where “Respondent was using the domain name not in the trademark sense, but in the descriptive sense”). Domain names that contain generic words and host links genuinely related to the words’ generic meanings have been found to support rights and legitimate interests under the Policy. See, e.g., Havanna S.A. v. Brendhan Hight, Mdnh Inc, WIPO Case No. D2010-1652 (Respondent had legitimate interest in landing page associated with generic domain name that incorporated advertising links related to the generic subject matter). For these reasons, the Panel finds that Complainant has failed to establish that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy.
The Panel finds that Complainant has failed to establish that the Disputed Domain Name was registered or used in bad faith. When a domain name is registered by a respondent before the complainant’s relied-upon trademark right is shown to have been first established, panels have typically found that the domain name was not registered in bad faith because the registrant could not have contemplated the complainant’s then non-existent right. See, e.g., John Ode d/ba ODE and ODE - Optimum Digital Enterprises v. Intership Limited, WIPO Case No. D2001-0074 (“There are ample authorities supporting the view that a trademark that did not exist at the time the disputed domain name was registered cannot serve as the basis for a claim under the ICANN Policy, since it is impossible for the domain name to have been registered in bad faith.”); PrintForBusiness B.V v. LBS Horticulture, WIPO Case No. D2001-1182 (no bad faith registration, where domain name registration occurred before trademark use and registration). In this case, Respondent registered the Disputed Domain Name on December 27, 2005. Complainant did not seek to register either of its trademarks until November 9, 2007, and did not use the marks until February 2008.
Respondent’s offer to sell the Disputed Domain Name for USD 145,200 does not, without more, constitute bad faith. Accordingly, Complainant has failed to established bad faith pursuant to paragraph 4(a)(iii) of the Policy. The decisions cited by Complainant do not compel a different conclusion. See Julie Wampler v. Name Administration, Inc., WIPO Case No. D2014-1586 (finding no bad faith); Balglow Finance S.A., Fortuna Comércio e Franquias Ltda v. Name Administration Inc. (BVI), WIPO Case No. D2008-1216 (finding bad faith where the complainant established rights in the mark and was using the mark before the respondent had registered the disputed domain name).
Under the circumstances of this case, the Panel finds that Complainant has engaged in Reverse Domain Name Hijacking. “Reverse Domain Name Hijacking means using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Paragraph 1 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.” Paragraph 15(e) of the Rules.
To establish Reverse Domain Name Hijacking, a respondent typically must show that the complainant knew of its own lack of relevant trademark rights, or of the respondent’s rights or legitimate interests in, or lack of bad faith concerning, the disputed domain name. In this case, Complainant “knew or should have known at the time it filed the Complaint that it could not prove one of the essential elements required by the Policy.” carsales.com.au Limited v. Alton L. Flanders, WIPO Case No. D2004-0047 (finding Reverse Domain Name Hijacking “where the Respondent’s registration of the domain name predates the very creation of the Complainant’s trademark”); see also Proto Software, Inc. v. Vertical Axis, Inc/PROTO.COM, WIPO Case No. D2006-0905 (finding Reverse Domain Name Hijacking where “Complainant is represented by Counsel who even on a rudimentary examination of the Policy and its application in this area should have appreciated that the Complaint could not succeed where the Respondent’s domain name had been registered three years prior to filing a trademark application or actual use of the mark.”). Complainant essentially admitted as much when it acknowledged in the Complaint that Respondent had registered the Disputed Domain Name several years prior to Claimant’s registration or use of the marks. As further evidence of Complainant’s bad faith, the Panel considers that Complainant must have known at the time that it registered its <eyetube.net>, <eyetube.org>, and <eyetube.info> domain names that the <eyetube.com> domain name was being used by Respondent and might never be available to Complainant; that at least three individuals employed by Complainant initiated communications with Respondent’s broker regarding the purchase of the Disputed Domain Name between May 2011 and July 2015; that at no time over the course of those four years did Complainant make any claim of right, reference any trade or service mark, or suggest it was seeking to settle a legal claim of any kind; that Complainant filed its Complaint only after it failed to negotiate a sale of the Disputed Domain Name; that the Complaint failed to make any mention of these pre-suit communications; and that Complainant misleadingly indicated to the Panel that the Disputed Domain Name contained an advertisement related to Complainant’s business, when the advertisement at issue was generated through Complainant’s own use of the Disputed Domain Name’s search function and had no relation to the educational services offered by Complainant. For these reasons, the Panel finds that Complainant has engaged in Reverse Domain Name Hijacking.
For the foregoing reasons, the Complaint is denied.
The Panel finds that Complainant has engaged in Reverse Domain Name Hijacking.
Michael A. Albert
Presiding Panelist
William R. Towns
Panelist
Douglas M. Isenberg
Panelist
Date: March 29, 2016