Complainant is Impossible B.V. of Enschede, the Netherlands, represented by Wilson, Elser, Moskowitz, Edelman & Dicker, LLP, United States of America.
Respondent is Joel Runyon, Impossible Ventures of Wheaton, Illinois, United States of America, represented by Wiley Rein LLP, United States of America.
The disputed domain name <impossibleproject.com> (the "Disputed Domain Name") is registered with Uniregistrar Corp (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 15, 2016, identifying the respondent as "The Owner of ImpossibleProject.com listed in the WHOIS registry as PRIVACYDOTLINK CUSTOMER 49 2029, Noah Black and Joel Runyon." On that date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 16, 2016, the Registrar transmitted by email to the Center its verification response confirming "Joel Runyon" and "Impossible Ventures" as the Registrant Name and Organization associated with the Disputed Domain Name.
On March 21, 2016, the Center notified Complainant that three of the annexes "exceed the 10 MB file size limit for individual files" and requested that the Complainant "resubmit compliant versions of these files" – which the Complainant did on the same date.
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 March 23, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 12, 2016. The Response was filed with the Center on April 12, 2016.
On April 18, 2016, Complainant submitted a document titled "Reply to Respondent's Response." On April 19, 2016, Complainant resubmitted this document, noting that the previously submitted version contained "a minor typographical error."
On May 1, 2016, Respondent submitted a document titled "Response to Complainant's Supplemental Filing."
The Center appointed Douglas M. Isenberg, Christopher S. Gibson and Tony Willoughby as panelists in this matter on May 5, 2016. 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.
Complainant states that it is "well known around the world as being the only company in the world that still produces instant film for [the] classic Polaroid® camera" and that it "refurbish[es] Polaroid® cameras in their workshops throughout the United States and Europe."
Complainant states that it "has used the 'IMPOSSIBLE PROJECT' mark since at least January 2009" and that it is the owner of the following trademark registrations and applications:
- U.S. Reg. No. 4,004,492 for the word mark IMPOSSIBLE in stylized form (registered August 2, 2011) for use in connection with, inter alia, "[c]hemical preparations for photography."
- U.S. App. No. 86/937,637 for the word mark IMPOSSIBLE PROJECT (filed March 11, 2016) for use in connection with, inter alia, "[p]hotography."
- U.S. App. No. 86/937,648 for the word mark IMPOSSIBLE PROJECT (filed March 11, 2016) for use in connection with, inter alia, "[c]hemicals used in industry, science and photography."
- CTM Reg. No. 1,268,808 for the word mark IMPOSSIBLE I-1 (registered July 16, 2015) for use in connection with, inter alia, "[c]hemical preparations and materials for film, photography and printing."
Respondent states that "for reasons unrelated to this proceeding, [it] recently changed its corporate name to Impossible X LLC" and that, "for a number of years," it has "operated a range of businesses using the word Impossible and other Impossible formative marks, slogans, and names, focusing on the mantra that nothing is impossible" and that its "businesses focus [is] on pushing customers beyond their limits to achieve the impossible in fitness, businesses, and grittiness." Respondent also states, and provides a declaration in support thereof, that it "has operated a variety of businesses under IMPOSSIBLE formative marks since 2010, when Mr. Runyon launched his 'blog of impossible things'"; that "[t]he following year, Mr. Runyon expanded the 'Impossible' brand to a number of businesses operating under the umbrella name 'Impossible Ventures'"; that "Mr. Runyon registered the domain names impossibleventuresllc.com, impossibleventures.org, impossiblelist.me, and impossibleventures.net" and that "[a] month later, Mr. Runyon formed Impossible Ventures LLC."
Respondent is the owner of the following trademark registrations:
- U.S. Reg. No. 4,260,617 for the word mark IMPOSSIBLE (registered December 18, 2012) for use in connection with, inter alia, "[p]roviding a website featuring information in the field of personal fitness, endurance athletics, story telling, and adventure activities."
- U.S. Reg. No. 4,624,158 for the word mark IMPOSSIBLE FITNESS (registered October 21, 2014) for use in connection with "[w]ebsite featuring information relating to exercise and fitness."
The Disputed Domain Name was created on March 29, 2009. Respondent states that it "acquired the ImpossibleProject.com domain name on December 2, 2013 to complement his portfolio of…over 250 Impossible formative domain names that are used in support of Respondent's businesses." Respondent has submitted an invoice indicating that it acquired the Disputed Domain Name from a third-party on December 2, 2013 for USD 797.25.
Complainant states that "from 2009 to 2014, Respondents merely used <lmpossibleProject.com> to direct traffic to Complainant's website" and, thereafter, "host[ed] a page with a sample of three thumbnail Polaroid®-type images overlaid on top of each other," later "re-formatt[ing] its web page with placeholders 'intentionally left blank' and a format that could be built if someone wanted to use the domain."
Complainant and Respondent exchanged numerous emails in late 2015 and early 2016, discussing a potential sale of the Disputed Domain Name, but the parties apparently never agreed on a price or other terms. Complainant made its highest offer at USD 12,000, while Respondent cited examples of comparable domain names selling in the range of USD 20,000 to USD 160,000.
Complainant contends, in relevant part, as follows:
- The Disputed Domain Name is "is identical to the 'IMPOSSIBLE PROJECT' mark, in which Impossible Project has common law trademark rights, and is nearly identical to the 'IMPOSSIBLE' mark, to which Impossible Project has federal trademark rights. The domain name incorporates the Impossible Marks in its entirety. For all of these reasons, the domain name <ImpossibleProject.com> is identical to the Complainant's Marks."
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, Complainant "has no relationship with the Respondents and [Complainant] has not authorized the Respondents to use the Impossible Project Marks"; Respondent, "in coordination with [a third-party who previously registered the Disputed Domain Name,] devised a plan to extort a six figure sum from the Complainant"; "[a]fter more than five years of directing traffic to Impossible Project's website, Respondent executed on his scheme to extort a significant payment of money, by trying to fashion a basic website to support its claim that it had a good faith basis to keep the domain"; "[t]here is no suggestion whatsoever that Respondents are commonly referred to by the name IMPOSSIBLE PROJECT or ImpossibleProject.com, or that they have any legitimate association with the terms"; and "the Respondent is using <ImpossibleProject.com> for the purpose of extracting a large buyout figure for <ImpossibleProject.com>."
- The Disputed Domain Name was registered and is being used in bad faith because, inter alia, "[t]he domain name is being used to in a manner to deceive the public into associating Respondent's website with the goods and services provided by Complainant"; Respondent's refusal to sell the Disputed Domain Name at a price offered by Complainant "shows that Respondent registered <ImpossibleProject.com> with the intention of selling it to the Complainant for more than out-of-pocket costs"; "[i]t is well-established that registration of a domain name that is confusingly similar to a famous trademark by an entity that has no relationship to that mark is itself sufficient evidence of bad faith registration and use"; and "[i]t is unfair that Complainant is required to use the domain name <the-impossible-project.com> when their name is 'IMPOSSIBLE PROJECT' and they own trademark rights to the Impossible Marks."
Respondent contends, in relevant part, as follows:
- "Complainant's conclusory statements and new trademark applications filed on the eve of the Complaint are insufficient to establish common law rights in 'Impossible Project'" and Complainant's "pending applications do not give rise to trademark rights." Accordingly, "Complainant only has established rights in – and only may rely upon in this proceeding" its registered mark IMPOSSIBLE, which is a design mark, not a standard character mark. "[T]he addition of 'Project' to the term 'Impossible' does not create any confusion with whatever rights Complainant has in the IMPOSSIBLE mark," especially considering that "[g]iven the descriptive connotation of 'Project,' and the hundreds of Impossible marks owned by unrelated parties, it belies belief to suggest that 'Impossible Project' is likely to be confused with 'Impossible.'"
- Respondent has rights or legitimate interests in the Disputed Domain Name because, inter alia, it has "conducted business and sold a range of goods and services throughout the United States under various IMPOSSIBLE formative marks for at least six years"; Respondent obtained its trademark registrations for IMPOSSIBLE "prior to notice of the present dispute"; "Respondent has operated a variety of businesses under IMPOSSIBLE formative marks since 2010"; and "Respondent acquired the ImpossibleProject.com domain name on December 2, 2013 to complement his portfolio of Impossible domain names."
- The Disputed Domain Name was not registered or used in bad faith because, inter alia, "[r]esponding to a purchase inquiry with a high quote does not establish bad faith registration and use"; "Respondent acquired the domain name for use with its IMPOSSIBLE line of businesses"; and "[i]t is absurd to suggest that the photos [on Respondent's website] are intended to simulate Polaroid pictures."
In addition, Respondent has requested a finding of Reverse Domain Name Hijacking "in the present case due to Complainant's (1) filing of an objectively baseless complaint, (2) omission of highly material facts from the Complaint, and (3) redacting emails to conceal Respondent's rights and legitimate interests and absence of bad faith." Respondent contends that "Complainant intentionally misled the panel in its zeal to accomplish through the administrative process what it was unable to do through commercial negotiations. Complainant was well aware of Respondent's rights and legitimate interests and failed to disclose this information."
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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. Policy, paragraph 4(a).
Where a complainant does not prove one or more of these elements, the panel is compelled to issue a decision denying the complaint, regardless of the complainant's ability to prove the other element(s) required by the Policy. Accordingly, under such circumstances, any discussion by the panel with respect to such other element(s) would be unnecessary in reaching a decision to deny the complaint. See, e.g., Admerex Limited v. Metyor Inc., WIPO Case No. D2005-1246 ("[s]ince the Complainant must prove all three elements of the Policy, and since the Complainant fails under the third element,…it is not necessary to make a finding under the second element of the Policy"); Micro Electronics, Inc. v. MicroCenter, WIPO Case No. D2005-1289 (where the complainant failed to prove the second element of the Policy, "there is no need for the Panel to address the third element of the Policy"). Therefore, given that the Panel majority in the instant case finds, as discussed below, that Complainant has failed to prove the second element of the Policy – that is, paragraph 4(a)(ii) – the Panel makes no findings with respect to the third element of the Policy. The dissenting panelist (dissenting solely on the question of Reverse Domain Name Hijacking) deals with the matter briefly in his dissent.
As noted above, each of the parties submitted a supplemental filing. As set forth in paragraph 4.2 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"):
Panels have discretion whether to accept an unsolicited supplemental filing from either party, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. The party submitting its filing would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response. Most panels that have allowed unsolicited filings have also tended to require some showing of "exceptional" circumstances. Panels which accept a supplemental filing from one side typically allow the other party the opportunity to file a reply to such supplemental filing. In either scenario, or on its own initiative, a panel may in its discretion request further evidence, information or statements from one or other of the parties by way of administrative panel order.
Here, Complainant has not set forth any "exceptional" circumstances that would justify its supplemental filing, and Respondent has objected to it. Nevertheless, it is significant to note that, as described above, the Response requests a finding of Reverse Domain Name Hijacking. Accordingly, it is appropriate for the Complainant to have an opportunity to respond to this request. See, e.g., Puls Elektronische Stromversorgungen GmbH v. NetIdentity, WIPO Case No. D2002-0205 ("[i]n light of the allegation by the Respondent that the pursuit of this administrative proceeding by the Complainant constitutes Reverse Domain Name Hijacking, the Panel takes the view that the Complainant ought to have an opportunity to respond to that allegation and has decided to accept the Complainant's Supplemental Filing insofar as it is relevant to that issue."); and Cosmos European Travels AG v. Eurotech Data Systems Hellos, Ltd., WIPO Case No. D2001-0941 (where a respondent asks a panel to find reverse domain name hijacking, "the Complainant is entitled to defend itself" and, therefore, a supplemental filing from the Complainant along with relevant supporting documents "should be admitted in their entirety"). Therefore, the Panel considers the parties' supplemental filings, but only to the extent that they address the issue of Reverse Domain Name Hijacking.
Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the trademark IMPOSSIBLE. But, the Panel agrees with Respondent that Complainant has not established that it has rights in and to the trademark IMPOSSIBLE PROJECT. "[T]he pending trademark applications cited by Complainant do not establish trademark rights for purposes of the Policy." DoorKing, Inc v. United Marketing Group, Inc, WIPO Case No. D2012-0952. And, Complainant has failed to establish that it has common law rights in the trademark IMPOSSIBLE PROJECT because it has not "show[n] that the name has become a distinctive identifier associated with the complainant or its goods or services" by providing appropriate evidence of secondary meaning via "length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition." WIPO Overview 2.0, paragraph 1.7.
Accordingly, the Panel considers whether the Disputed Domain Name is confusingly similar to the trademark IMPOSSIBLE. The relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., "impossibleproject"), as it is well established that the Top-Level Domain (i.e., ".com") may be disregarded for this purpose. See WIPO Overview 2.0, paragraph 1.2 ("The applicable top-level suffix in the domain name (e.g., '.com') would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.")
The Disputed Domain Name "wholly incorporates" the IMPOSSIBLE trademark, which some panels have found "is sufficient to establish identity or confusing similarity for purposes of the Policy." Oki Data Americas, Inc. v. Asdinc.com, WIPO Case No. D2001-0903. Further, because the IMPOSSIBLE trademark appears at the beginning of the Disputed Domain Name, "the dominant portion" of the Disputed Domain Name contains the IMPOSSIBLE trademark and the addition of the word "project" is insufficient "to create a distinct domain name capable of overcoming a proper claim of confusingly similar." F.M. Tarbell Co. dba Tarbell, Realtors v. Name Catcher/Mark Lichtenberger, WIPO Case No. D2007-0189. See also Carlsberg A/S v. Personal / decohouse, decohouse, WIPO Case No. D2011-0972 ("the prominent portion…of the disputed domain name and the Complainant's trademark are identical with each other"); and Aventis Pharmaceuticals Products Inc. v. PBS Publishing LLC, WIPO Case No. D2003-0122 ("[t]he initial portion of the Domain Name is identical to Complainant's…mark").
Accordingly, the Panel finds that Complainant has proven the first element of the Policy.
Paragraph 4(c) of the Policy states that a respondent may establish rights or legitimate interests by successfully demonstrating any of the following:
(i) 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.
However, these circumstances are, as the Policy makes clear, "without limitation." That is, a respondent may establish rights or legitimate interests via other circumstances that a panel finds "to be proved." Notably, "[p]anels have tended to recognize that a respondent's registration of a trademark which corresponds to a disputed domain name normally will, but does not necessarily, establish respondent rights or legitimate interests in that domain name for the purpose of the second element of the UDRP." WIPO Overview 2.0, paragraph 2.7.
Here, it is without question the case that Respondent is the owner of a U.S. trademark registration for the mark IMPOSSIBLE, namely, U.S. Reg. No. 4,260,617. This mark was registered on December 18, 2012, long before Respondent apparently became aware of this dispute. Further, "there are no elements suggesting that Respondent's trademark registration is other than genuine." Angels Baseball, L.P. v. Lee Dongyeon, NAF Claim No. 0925418. If anything, Respondent's detailed explanation as to its interest in using the name "Impossible", along with its apparently large portfolio of domain names containing the "Impossible" name, lends further credibility to the relevance of this trademark registration – which, in turn, appears to support Respondent's rights and legitimate interests in purchasing a domain name that contains this trademark. Although, of course, the Disputed Domain Name contains the word "project" in addition to the IMPOSSIBLE trademark, this additional word is, as stated above under the Panel's discussion of the first element of the Policy, of little consequence.
Nevertheless, the record is unclear as to why Respondent specifically chose to purchase the Disputed Domain Name from a third-party for USD 797.25 and whether Respondent had a relationship with a previous registrant of the Disputed Domain Name, as alleged by Complainant – questions that may be relevant to whether Respondent has taken actions simply to create the appearance of rights or legitimate interests. However, "the Policy and the Rules do not provide the Panel with any authority to ascertain the Respondent's credibility given the limitations on filings, the absence of discovery and the procedural efficiencies that are a part of (although admittedly occasionally detrimental to) this process." Google Inc. v. Blue Arctic LLC, NAF Claim No. 1447355. Accordingly, "while [i]t may be that Complainant could develop evidence of…lack of legitimate interest in a legal proceeding that would allow more evidentiary development….[t]he Policy…was not designed to transfer domain names in every case that a trademark owner might ultimately win." Trans Continental Records, Inc. v. Compana LLC, WIPO Case No. D2002-0105. Moreover, in light of the record that was presented to the Panel in this case, Complainant has not proved the allegations of conspiracy that it has asserted.
In light of the above, the Panel concludes that Complainant has failed to prove the second element of the Policy.
As stated above, given that the Panel in the instant case finds that Complainant has failed to prove the second element of the Policy – that is, paragraph 4(a)(ii) – the Panel makes no findings with respect to the third element of the Policy.
As set forth in paragraph 4.17 of WIPO Overview 2.0:
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". 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".
WIPO panels have found that the onus of proving complainant bad faith in such cases is generally on the respondent, whereby mere lack of success of the complaint is not itself sufficient for a finding of Reverse Domain Name Hijacking. To establish Reverse Domain Name Hijacking, a respondent would typically need to show knowledge on the part of the complainant of the complainant's 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 light of the Panel's outstanding questions about some of Respondent's actions, as alluded to above, the Panel declines to enter a finding of Reverse Domain Name Hijacking.
For the foregoing reasons, the Complaint is denied.
Douglas M. Isenberg
Presiding Panelist
Christopher S. Gibson
Panelist
Tony Willoughby
Panelist
Date: May 22, 2016
While this dissent is solely on the question of RDNH, I also disassociate myself from the Panel majority's comments opening up the possibility that there might be something in Complainant's conspiracy theories, which were wholly unsupported by any evidence. Had there been anything to them, the Panel could not, in my view, have made the finding that it has under the second element.
The Complaint failed because Complainant failed to satisfy the Panel that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The failure stemmed in large part because Respondent was able to establish that he had a US trademark Registration for IMPOSSIBLE (stylised), which appeared to have been registered before he became aware of Complainant's cause for complaint and which was consistent with the substantial evidence he produced showing his past use of his so-called "Impossible-formative" names.
I contend that as a matter of principle if a complainant is going to allege that a respondent has no rights or legitimate interests in respect of a domain name, he ought if he can to make some very basic investigation to verify whether or not the respondent does in fact have any such rights. In practice this can be very difficult if one knows nothing of the respondent; and it may well be that in many (if not most) cases, the complainant has nowhere to start.
However, in this case Complainant was corresponding with Respondent from October 2015 to January 2016 seeking to purchase the Disputed Domain Name from Respondent. In the course of that correspondence Complainant (through its CEO) acknowledged Respondent's interest in "Impossible-formative" names. Moreover, it was told in an email of October 27, 2015 that Respondent had a registered trademark covering its usage. From that month, if not before, Complainant was also well aware that it was dealing with Joel Runyon of "Impossible Ventures" and that Respondent and his business used the names "ImpossibleHQ" and <impossiblehq.com>, for these names appeared at the base of each of Respondent's emails.
There was thus quite a lot of basic information upon which Complainant could have based a simple investigation, but the Complaint mentions nothing. It does not even mention Respondent's claim to a registered trademark. The email in question was excluded from the selection annexed to the Complaint.
I'm afraid that I simply cannot believe that a trademark search would not have been carried out to check Respondent's claim. And one can only speculate as to why all reference to that trademark was omitted from the Complaint.
Other emails that were excluded from Complainant's annexures were emails from Respondent identifying its interest in "Impossible" names and an email in which Complainant both expressly acknowledges Respondent's interest in those names ("I just figured that you actually care about the impossible portfolio of domains.") and expressly recognises that "you can ask what you want for the domain and I understand that", which is a statement which flatly contradicts the whole tenor of the Complaint.
For me, the tone of the pre-Complaint inter partes correspondence when read in full (thanks to Respondent) is not correspondence with a cybersquatter, but correspondence with a genuine user of "Impossible-formative" names.
I am shocked at the level of selection and do not understand how the Complaint's certificate as to the completeness of the evidence could have been signed.
I am conscious that the Panel majority do not regard the issue of RDNH as being of any great relevance in the context of this dispute. I fundamentally disagree.
In my view, this was a case that should never have been launched and it is crucial that complainants and their advisers have it made very clear to them that in a system such as this where many respondents do not bother to respond, it is important that panels can rely upon the certificate at the end of the Complaint.
Finally, if, as some panelists believe, failure on the part of respondents to conduct trademark searches prior to registering domain names may be evidence of bad faith registration and use, one might reasonably enquire why it is not equally abusive for a complainant to assert that the respondent has no relevant rights, when a simple trademark search in the respondent's jurisdiction would have confirmed to the complainant that the respondent might well have such rights. In this case, what makes matters much worse is that, as I have pointed out above, the Complainant was expressly informed months prior to the filing of the Complaint that the Respondent was the owner of registered trademark rights and a simple search of the United States Patent and Trademark Office would have verified it.
I would make a finding of RDNH.
Tony Willoughby
Panelist (Dissenting)
Date: May 22, 2016