WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Qwalify, Inc. v. Domain Administrator, Fundacion Private Whois / Gregory Ricks

Case No. D2014-0313

1. The Parties

The Complainant is Qwalify, Inc. of Ontario, Canada, represented by Adelman Matz P.C., United States of America (“United States”).

The Respondent is Domain Administrator, Fundacion Private Whois of Panama City, Panama / Gregory Ricks of College Station, Texas, United States, self-represented.

2. The Domain Name and Registrar

The disputed domain name<qualify.com> is registered with Internet.bs Corp. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2014. On February 28, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 4, 2014, 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 March 7, 2014 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 March 12, 2014.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 14, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 3, 2014. The Response was filed with the Center on March 16, 2014.

The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on April 1, 2014. 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.

Having considered the case file, it became apparent to the Panel that the history of the disputed domain name was of particular importance and that additional information on this subject would be necessary before the Panel could come to a decision in this matter. The Panel considered that it would therefore be appropriate to conduct limited factual research on this topic and to put the results to the Parties (see paragraph 4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) and Laverana GmbH & Co. KG v. Victor Tang, WIPO Case No. D2013-2045). Accordingly, the Panel conducted research on the “www.domaintools.com” website and put the results of such research to the Parties by virtue of Procedural Order No. 1 dated April 10, 2014. The Complainant filed a further submission in response on April 15, 2014. The Respondent filed a further submission on April 16, 2014.

4. Factual Background

The Complainant is a Canadian company founded in 2010 which provides a recruitment platform under the QWALIFY mark and uses the domain name <qwalify.com>. The said platform allows employers to evaluate candidates for employment. The Complainant provides its services worldwide.

The Complainant is the owner of United States Registered Trademark no. 4319882 for the word mark QWALIFY, in international class 42, filed on March 22, 2012 and registered on April 16, 2013. The Complainant claims use of the QWALIFY mark since at least August 2010. The Complainant provides various materials dated from June 2010 to September 2013 including a press release, blog entries and news articles showing its use of the QWALIFY mark. The Complainant produces an article from a publication named “Technology Directory” which incorrectly quotes the Complainant’s domain name as <qualify.com>, in other words, the disputed domain name. The Complainant also produces a screenshot from the “Google” search engine showing a search for the term “qualify.com” which, in addition to search results, returns the question “Did you mean: qwalify.com”.

It is alleged, and not disputed, that the Respondent Gregory Ricks is a seasoned domainer who has a history of findings under the Policy that he has registered and used domain names in bad faith.

The disputed domain name was created on September 27, 1999. The Respondent claims to have owned the disputed domain name since it was first created. The history of the disputed domain name, taken from the “www.domaintools.com” website, is as follows:

The earliest available WhoIs record for the disputed domain name is therefore that dated October 20, 2004. This record shows the same email contact addresses as shown in the current WhoIs record.

The case of Just Wheels & Tires Co. d/b/a TSW Alloy Wheels v. Covanta Corporation / DNS Admin, WIPO Case No. D2009-1242 indicates that the Respondent, Gregory Ricks, was the President of Covanta Corporation. The case of BMEzine.com, LLC. v. Gregory Ricks / Gee Whiz Domains Privacy Service, WIPO Case No. D2008-0882 indicates that the Respondent, Gregory Ricks, was the controller of the registrants Motherboards.com and Covanta Corporation.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to a trademark in which the Complainant owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.

The Complainant asserts that based upon its registered trademark for the word QWALIFY, together with its use in commerce of the mark since August 2010 as evidenced by the media coverage produced with the Complaint, the Complainant has acquired rights in and to the QWALIFY trademark and is the proper Complainant in this proceeding. The Complainant submits that the disputed domain name is almost identical to the QWALIFY mark as it is identical phonetically and conceptually. The Complainant states that the differences between its mark and the disputed domain name, namely the use of “u” instead of “w” and the “.com” suffix are irrelevant as they do nothing to avoid a finding of confusing similarity.

The Complainant notes that it has not given the Respondent any right or license to utilize its mark. The Complainant also contends that the Respondent is not commonly known by the name “qualify”, nor has Respondent utilized the name “qualify” in a manner that would otherwise acquire any trademark rights therein.

The Complainant asserts that the Respondent is not using or planning to use the disputed domain name in connection with a bona fide offering of goods or services and adds that the disputed domain name has been parked to benefit from pay-per-click advertising until it can be sold. The Complainant notes that the only content on the website associated with the disputed domain name are links that redirect users to other online locations. The Complainant notes that the said website does not contain links genuinely related to the meaning of the disputed domain name but on the contrary redirect users to online games, wrestling and childrens’ games. The Complainant asserts that the use of terms which are unrelated to the meaning of the disputed domain name supports the inference that the Respondent has no legitimate interest therein. The Complainant submits that the Respondent is in pursuit of commercial gain such that the use of the disputed domain name cannot be considered fair or noncommercial.

The Complainant contends that there are numerous facts that indicate that the disputed domain name was recently registered or acquired by the Respondent primarily for the purpose of selling, renting or otherwise transferring the disputed domain name to the Complainant or to a competitor of the Complainant, for valuable consideration far in excess of any out-of-pocket costs directly related thereto. The Complainant submits that the Respondent acquired ownership of the disputed domain name at some time between March and May of 2012, post-dating the Complainant’s rights in its QWALIFY mark. The Complainant asserts that the Respondent was aware of the Complainant at the time it registered the disputed domain name and that even if it did not have actual notice of the Complainant’s mark it had constructive notice based on the extensive prior use of the name and that it comprises the dominant part of a registered trademark.

The Complainant contends that when the Respondent registered the disputed domain name it knew or should have known about the Complainant through basic inquiries in a search engine or trademark database. The Complainant makes reference to the warranty provided by the Respondent in connection with paragraph 2 of the Policy and submits that had the Respondent made an effort to ensure that the registration did not violate third party rights it would have found the Complainant’s QWALIFY trademark, in light of the efforts that the Complainant has made on widespread Internet advertising and the extent to which it features in press articles.

The Complainant states that the Respondent is targeting United States buyers for the disputed domain name, based upon the fact that bids are requested in United States dollars. The Complainant submits that an inference is raised that the Respondent knew about the Complainant but registered the disputed domain name anyway for the purpose of selling it to the Complainant at a price in excess of its out-of-pocket costs. The Complainant states the website landing page associated with the disputed domain name previously stated that the owner was not accepting bids below USD 200,000. The Complainant describes its unsuccessful attempts to ascertain the current price of the disputed domain name which it notes indicates that the Respondent is seeking hundreds of thousands of dollars. The Complainant states that the Respondent must have acquired the disputed domain name for the purpose of selling it to the Complainant or one of its competitors as they are the only persons who would pay such a sum.

The Complainant states that the Respondent is using the disputed domain name to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s mark. The Complainant asserts that this constitutes bad faith without reference to the Respondent's state of mind at the time that the disputed domain name was created, under reference to Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, WIPO Case No. D2009-0786.

The Complainant states that the Respondent has a history of bad faith registrations, citing Rewe Touristik Hotels & Investment GmbH v. Gee Whiz Domains Privacy Services and Gregory Ricks, WIPO Case No. D2008-1342 and BMEzine.com, LLC. v. Gregory Ricks / Gee Whiz Domains Privacy Service, WIPO Case No. D2008-0882.

With regard to Procedural Order No. 1, the Complainant submits that it disputes any potential finding that the Respondent has been the underlying registrant of the disputed domain name since 2004. The Complainant asserts that it is questionable as to whether the Respondent was the holder of the disputed domain name in 2004 and contends that he has not been the underlying registrant since that time. The Complainant notes that the earliest WhoIs record available dated October 20, 2004 states that the registrant of the disputed domain name was “Motherboards.com” and was controlled by an individual named “Bryan”. The Complainant goes on to set out the history of the disputed domain name from the available records, which the Panel has incorporated in a table in the factual background section above.

The Complainant submits that there is evidence supporting the conclusion that the Respondent first registered the disputed domain name in 2012 long after the Complainant began to use its mark in commerce in the United States in August 2010. The Complainant states that had the Respondent done any due diligence prior to acquiring the disputed domain name it would have been aware of the Complainant and that the fact that the Respondent did not is evidence of bad faith.

The Complainant contends that even if the Panel finds that the Respondent registered the disputed domain name in 2004 or some time following registration by Covanta Corporation bad faith is still evident because the disputed domain name has been transferred twice, once between March and May 2012 and once in March 2014 after the Complaint was filed. The Complainant states that these are considered new registrations for the purpose of a determination of bad faith. The Complainant notes that previous cases against the Respondent have held that while there could be reasons not to apply the “transfer is a new registration” rule, nothing supports departure from the rule in the case of the Respondent.

The Complainant relies on the fact that a previous panel in a case involving the Respondent noted that the circumstances suggested that the Respondent makes transfers “from one privacy service to another, to conceal his identity as long as possible”. The Complainant notes that the transfers in that case occurred shortly after the complainant filed its service mark application for a mark corresponding to the domain name concerned and the use of that domain name for a click-through site began immediately thereafter. The Complainant notes that even if the Respondent is the underlying registrant since 2004 in the present case, the disputed domain name has been transferred from one privacy service to another for years to conceal the Respondent’s identity, including a transfer within months after the Complainant filed its trademark in 2012, with the use of a click-through site commencing shortly thereafter. The Complainant notes that the Respondent has not provided any explanation for these actions and states that the transfers should not be viewed as renewals. The Complainant describes the identification of the Respondent as the underlying registrant of the disputed domain name in March 2014 as a new registration, which it says could not have been made in good faith as it was undertaken after the Respondent’s knowledge of the Complainant’s rights.

The Complainant notes the terms of paragraph 2 of the Policy requiring ongoing representations from the registrant and states that the Respondent violated these representations in 2012 and 2014, which it states are the last two transfers to a new registrant and at which times the Complainant says the Respondent should have been aware that he was violating the Complainant’s trademark rights. The Complainant asserts that the disputed domain name is being used to trade on the goodwill of the Complainant’s trademarks and that this is evidence that the registration was made and being maintained in bad faith.

The Complainant submits additional evidence which it states demonstrates that the Respondent acquired the disputed domain name for the purpose of selling it to the Complainant or the Complainant’s competitors for value that exceeds its out of pocket costs, namely an exact price of USD 50,000.

B. Respondent

The Respondent requests the Panel to make a finding of reverse domain name hijacking.

The Respondent states that the Complaint is nothing more than an attempt to “steal” a valuable domain name by way of the Policy. The Respondent notes the Complainant’s assertion that the disputed domain name was registered at some time between March 1, 2012 and May 15, 2012. The Respondent states that he registered the disputed domain name on September 27, 1999.

The Respondent notes the Complainant’s assertion that the Respondent was aware of the Complainant at the time the disputed domain name was registered. The Respondent asserts that he had never heard of the Complainant prior to receiving the Complaint. The Respondent notes that he is also the owner of <qualify.net> and <qualify.org>.

The Respondent states that he is personally responding to the Complaint without the benefit of legal advice because he is being bombarded with frivolous complaints and asserts that he should not have to repeatedly spend money to defend each such complaint. The Respondent adds that on March 11, 2014 another complaint has commenced on his domain name <justbelieve.com> and that on January 15, 2014 he won a dispute under the Policy regarding <justbulbs.com> for the second time.

With regard to the Complainant’s comments in response to Procedural Order No. 1, the Respondent states that the disputed domain name has been under the Respondent’s personal control since September 27, 1999. The Respondent provides evidence of a renewal email for the disputed domain name dated August 29, 2003, together with emails concerning a transfer of the disputed domain name between registrars initiated on April 8, 2004 with completion on April 12, 2004.

The Respondent states that he created Covanta Corporation on March 4, 2005 (evidence provided) to avoid extra WhoIs privacy service fees. The Respondent notes that thereafter it became common for registrars to offer free privacy services and that it is also common for owners of a large volume of domain names to switch registrars based on price and features, adding that some investors switch registrars every year.

The Respondent asserts that, contrary to the Complainant’s comments, Bryan, Texas, United States is the city where the Respondent’s business, Motherboards.com, was located.

The Respondent states that he is selling domain names because it would take “many lifetimes” to develop or liquidate his volume of domain names and that he made an error in pricing the disputed domain name at USD 50,000. The Respondent submits that the error came from applying a fixed “buy it now” price to a list of domain names for his broker and that he did not realize that the disputed domain name was on this list. The Respondent notes that the price for the disputed domain name would be considerably higher.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely 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

There are two parts to the inquiry under the first element of the Policy. The Complainant must first

demonstrate that it has rights in a trademark and secondly that the disputed domain name is identical or

confusingly similar to such trademark.

The Panel is satisfied that the Complainant is the owner of the QWALIFY registered trademark described in the factual background section above. Considering the second part of the inquiry, the Panel notes that the mark only differs from the disputed domain name by the substitution of the letter “w” in the mark for “u” in the disputed domain name. The Panel considers that the change of letter does not introduce a substantive difference between the mark and disputed domain name and therefore finds that the disputed domain name is confusingly similar to the Complainant’s mark, disregarding the generic top-level domain name (“gTLD”), in this case “.com” as is customary in cases under the Policy.

In these circumstances, the requirements of paragraph 4(a)(i) of the Policy have been satisfied.

B. Rights or Legitimate Interests

The requirements of paragraph 4(a) of the Policy are conjunctive. A consequence of this is that failure on the part of a complainant to demonstrate one element of the Policy will result in failure of the complaint in its entirety. Accordingly, in light of the Panel’s finding on the question of registration and use in bad faith, it is unnecessary for the Panel to address the issue of the Respondent’s rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

“(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

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location”.

There are two parts to the inquiry under this element of the Policy. First, the Panel must consider whether the Respondent registered or acquired the disputed domain name in bad faith. Secondly, the Panel must determine whether the Respondent is using the disputed domain name in bad faith. Before it may address the first part, the Panel must review the history of the disputed domain name to determine when it came into the Respondent’s ownership. The Parties take contrary positions on this matter. The Respondent states that the disputed domain name has been under the Respondent’s personal control since 1999 and seeks to explain the history of the changes of registrants over the years. The Complainant states that it disputes any potential finding that the Respondent has been the underlying registrant since 2004.

As noted in the factual background section above, circumstances described in the cases of Just Wheels & Tires Co. d/b/a TSW Alloy Wheels v. Covanta Corporation / DNS Admin, WIPO Case No. D2009-1242 and BMEzine.com, LLC. v. Gregory Ricks / Gee Whiz Domains Privacy Service, WIPO Case No. D2008-0882 are supportive of the contention that the Respondent, Gregory Ricks, was the controller of the registrants Motherboards.com and Covanta Corporation. The Respondent is able to produce a renewal email for the disputed domain name dating from 2003 together with emails from the losing and gaining registrars representing both sides of the transfer of the disputed domain name when it was transferred to the registrar shown on the WhoIs record from 2004. The Panel also notes from the historic WhoIs record that the same registrant email address was used on the WhoIs record from 2004 and is used on the current WhoIs record. Due to the structure of the address and the domain name employed, the Panel is satisfied that it is connected to the Respondent. The Respondent explains the various transfers between privacy services as the ordinary activity of the owner of a large volume of domain names, switching registrars based on price and features.

For its part, the Complainant argues that Covanta Corporation is a third party registrant, such that it would break any chain of ownership, and furthermore that the evidence supports the conclusion that the disputed domain name was not transferred to the Respondent until at least some time between March and May of 2012. Reviewing the chain of registrants, the Panel does not accept this approach. There seems no reason to select the date of transfer to the privacy service “Fundacion Private Whois” as the date of transfer to the Respondent Mr. Ricks, other than that this assists the Complainant in asserting that the Respondent acquired the disputed domain name after the Complainant had come into being. The Complainant cites the ordinary rule described in BMEzine.com, LLC., supra, that transfers of a disputed domain name are considered new registrations for the purposes of the assessment of bad faith. However, the Panel considers that the footnote in that case referring to transfers between privacy services is also apposite, namely:

“A panel might ignore movement from one privacy service to another where a plausible explanation is provided and the evidence clearly establishes an unbroken chain of underlying ownership by a single entity or within a genuine conglomerate. It should also be clear that any change in registrant data in the WhoIs is not being made to conceal an underlying owner's identity for the purpose of frustrating assessment of liability in relation to registration or use of the disputed domain name.”

Here, the Panel has a plausible explanation from the Respondent that its movement between privacy services is part of its ordinary business of domain name investment. The Respondent has changed privacy services some four times over the course of the decade in which it has demonstrably been the controller of the disputed domain name, leaving aside the question of Covanta Corporation, which the Respondent also argues was selected for reasons of privacy before the days of widespread registrar-provided free privacy services. This volume of changes, over a decade, does not strike the Panel as particularly unreasonable in the context of the Respondent’s explanation. It is important to note that three of these four changes pre-date the Complainant’s acquisition of any rights in the QWALIFY mark, given that the Complainant claims that such rights arose in about August of 2010. Furthermore, it should also be noted that the Respondent, Mr. Ricks, was promptly revealed by the privacy service and registrar as the underlying domain name holder as soon as verification was sought for the purposes of this administrative proceeding. In short, no evidence has been placed before the Panel in the present case indicating that the change in registrant data was intended to frustrate an assessment of liability in relation to registration or use of the disputed domain name.

The position in the present case may be contrasted with the circumstances in BMEzine.com, LLC., supra, where the complainant was able to show both that its rights in the corresponding trademark predated the entire history of the domain name concerned and that the disputed domain name was being used for pay-per-click revenues on a site that emphasized the complainant's line of business. The complainant in that case also showed that one of the transfers of the domain name concerned occurred shortly after the complainant filed its application for a mark corresponding to the domain name and that the use of the domain name for a click-through site targeting the complainant’s rights began immediately thereafter.

In the present case, the Complainant claims that there have been two transfers of the disputed domain name since it acquired any rights in the QWALIFY mark, namely first at some point between March and May 2012 and secondly in March 2014 after the Complaint was filed. In the Panel’s view this is plainly incorrect. At best there has been a single relevant transfer, namely that which occurred between March and May 2012. The Panel accepts that this transfer took place, as the Complainant puts it, “within months” of the point at which the Complainant filed an application for its QWALIFY trademark, which it did on March 22, 2012. However, unlike the circumstances in BMEzine.com, LLC., supra, there is no evidence before the Panel in the present case that pay-per-click usage began immediately thereafter, nor in fact any evidence of when such usage began, nor more importantly is there any evidence that such pay-per-click usage specifically targeted the Complainant’s rights or referred to its line of business at any point.

As far as the alleged March 2014 transfer is concerned, the revealing of an underlying registrant by a registrar or privacy service after a complaint is filed under the Policy, with corresponding amendment of the WhoIs record, is not typically viewed by panels under the Policy as a transfer of the domain name concerned, nor in the opinion of this Panel should it be. It is an action most commonly triggered by the Center’s registrar verification process and is under the control of the registrar of a domain name and/or the operator of the privacy service, not the registrant. It does not constitute a transfer or an acquisition of a domain name but rather a disclosure of registrant data.

In all of these circumstances, the Panel determines that there are sufficient reasons in the present case to ignore the movement of the disputed domain name between the various registrants and instead to treat the Respondent as the underlying registrant since earlier than 2003, this date being selected by the Panel on the basis of the renewal notice produced by the Respondent. As the Respondent’s registration of the disputed domain name long pre-dates the coming into existence of the Complainant or its rights, it follows that there can be no registration in bad faith in the present case. Consequently, the Complainant’s case that the Respondent registered the disputed domain name with intent to sell it to the Complainant at a price in excess of its out-of-pocket costs fails. The Respondent’s approach that it is the longstanding holder of a valuable domain name and, by implication, that it is entitled to place this on general sale at a substantial asking price is to be preferred.

Turning to the use of the disputed domain name, the Panel has seen no evidence indicating that the Respondent is targeting or has ever targeted the Complainant or its QWALIFY mark in any way through the Respondent’s use of the disputed domain name. The Panel notes that the associated website displays pay-per-click advertising. The Complainant states that the advertising links are not genuinely related to the common meaning of the disputed domain name. Even if this were true, the Complainant fails to point to any links whatsoever on the website associated with the disputed domain name that target the Complainant’s QWALIFY mark or the recruitment services offered under it. What is more, at least half of the links do relate to the generic meaning of the word “qualify” in that they concern credit services and financial products of one type or another and in the Panel’s view are most probably being referenced in the sense that a consumer may “qualify” for a loan or a mortgage.

Accordingly, based upon the website associated with the disputed domain name, the Panel cannot identify any way in which the Respondent could be said to have intentionally created a likelihood of confusion with the Complainant’s mark as the Complainant contends. While the Complainant puts much emphasis on the case of BMEzine.com, LLC., supra, which involved a finding of use in bad faith against the same Respondent in respect of a pay-per-click website, the fundamental difference between that and the present case is that the website in the present case does not appear to the Panel to emphasize the Complainant's line of business in any way.

The Complainant provides two examples of confusion which it cites in accordance with paragraph 4(b)(iv) of the Policy. First, it produces an example of an article where a journalist misquotes the Complainant’s website address as that of the disputed domain name. In the Panel’s mind, there can be no suggestion that this was caused by any action on the part of the Respondent. Secondly, the Complainant produces a screenshot showing that the “Google” search engine asks whether an Internet user meant to search for the Complainant’s domain name when the disputed domain name is entered as a search query. Again, there is no reason before the Panel to hold the Respondent liable for this apparently automated action of a third party website.

In these circumstances, the Panel finds that the Complainant has not proved that the disputed domain name was registered and used in bad faith. The Complainant has cited the case of Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, WIPO Case No. D2009-0786 in support of a contention that bad faith registration can be deemed to have occurred even without regard to the state of mind of the registrant at the time of registration, if the domain name is subsequently used to trade on the goodwill of the mark holder. The Complainant also makes the argument along the lines described in that case that the Respondent has violated representations and warranties contained in paragraph 2 of the Policy upon transfer of the disputed domain name in 2012 and 2014. Had the Panel found, for example, that the disputed domain name had been registered in good faith but that subsequent use thereof was in bad faith, it may have been necessary for the Panel to at least consider this argument. However, as matters stand, the Panel has made a finding that the Complainant has proved neither registration nor use in bad faith and accordingly need not consider the point.

D. Reverse Domain Name Hijacking

Paragraph 4.17 of the WIPO Overview 2.0 provides inter alia as follows:

“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. Evidence of harassment or similar conduct by the complainant in the face of such knowledge (e.g. in previously brought proceedings found by competent authorities to be groundless, or through repeated cease and desist communications) may also constitute a basis for a finding of abuse of process against a complainant filing under the UDRP in such circumstances.

WIPO panels have found Reverse Domain Name Hijacking in circumstances including where: the complainant in fact knew or clearly should have known at the time that it filed the complaint that it could not prove one of the essential elements required by the UDRP...”

The Respondent has requested that the Panel make a finding of Reverse Domain Name Hijacking on the grounds that the Complainant is using the Policy to “steal” a valuable domain name from the Respondent. In ordinary circumstances, given that the disputed domain name long pre-dates the Complainant’s trademark rights, that the Complainant knew this when it filed the Complaint, and that there is no apparent evidence that the Respondent is targeting the Complainant’s rights, the Panel might have considered it appropriate to enter such a finding. However, the situation is not quite as straightforward in the present case.

The Complainant was confronted by a registrant which is not only a seasoned domainer but which has also been the subject of a series of findings of registration and use in bad faith under the Policy. Among the cases brought against the Respondent, the Complainant carefully noted the circumstances of BMEzine.com, LLC., supra, in which a three member panel determined that the Respondent’s transfer of a domain name between privacy services was capable of changing the date on which bad faith was to be assessed. The present case involved a similar transfer. As a further common feature, in both cases there was proximity between the date on which the complainant applied for a trademark and a transfer of the corresponding domain name.

The primary reason for the failure of the Complainant’s case here is that the similarities with BMEzine.com, LLC., supra go no further. In particular, the Panel has found in this case that the transfers between privacy services do not alter the Respondent’s underlying ownership of the disputed domain name, which dates from at least 2003. None of the transfers appeared to the Panel to be tainted by the Respondent’s post-transfer use of the disputed domain name as was the case in BMEzine.com, LLC. However, this issue was inevitably somewhat unclear at the time when the Complaint was filed, due to the manner in which the disputed domain name had been held. Furthermore, the Respondent had not provided any reason for the transfers described in BMEzine.com, LLC, whereasit volunteered an explanation in the present case. That explanation, which was acceptable to the Panel, could not reasonably have been anticipated by the Complainant.

In all of these circumstances, the Panel considers that the Complainant was entitled to test the question of whether the Panel might take a similar approach to the panel in BMEzine.com, LLC., supra, and accordingly, the Respondent’s request that the Panel enter a finding of Reverse Domain Name Hijacking is denied.

7. Decision

For the foregoing reasons, the Complaint is denied.

Andrew D. S. Lothian
Sole Panelist
Date: April 29, 2014