WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bigfoot Ventures LLC v. Khurram Awan
Case No. D2016-1306
1. The Parties
1.1 The Complainant is Bigfoot Ventures LLC of New York, New York, United States of America ("United States"), represented by Morton & Associates LLLP, United States.
1.2 The Respondent is Khurram Awan of Paris, France.
2. The Domain Name and Registrar
2.1 The disputed domain name <slized.com> (the "Domain Name") is registered with Gandi SAS (the "Registrar").
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 27, 2016. On June 28, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 29, 2016, 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. On June 30, 2016, the Complainant submitted an amended Complaint.
3.2 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").
3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 4, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 24, 2016. The Response was filed with the Center on July 24, 2016.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on August 1, 2016. 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
4.1 The Complainant is a company located in the United States.
4.2 The Complainant is the owner of registered Benelux trade mark No. 0809251 for the word mark SLIZED (hereinafter, "the Mark"), filed on October 10, 2006 and subsequently registered on January 5, 2007 in classes 9, 25 and 41.
4.3 The Respondent is an individual based either in France (which is the country identified in the contact details for the Respondent provided by the Registrar) or in Germany (which is the country identified in the address provided by the Respondent for correspondence in these proceedings).
4.4 The Domain Name was registered by the Respondent on January 28, 2016. It has since its registration been used to display a parking page generated by the Registrar.
5. Parties' Contentions
A. Complainant
5.1 The Complainant is very brief. The Complainant refers to the Benelux trade mark identified in the Factual Background section of this decision. It claims that the this mark has been "prominently and continuously used in global commerce" since registration in the classes in respect of the goods which it has been registered, but exactly what form that use has taken and how extensive that use has been is not explained and no supporting evidence is provided in respect of this alleged use.
5.2 The Complainant contends that the Domain Name and mark are "identical and thus, confusingly similar".
5.3 The Complainant asserts that the Respondent has no rights or legitimate in the Domain Name relying upon the fact that the Domain Name has been parked since registration in January 2016.
5.4 The Complainant also contends that the Respondent had knowledge of the Complainant's mark and its "accumulated goodwill" at the time the Domain Name was registered. The basis of this assertion is stated to be "upon information and belief" due to "the Mark's extensive advertising and commercial use across the global marketplace". However, once again there is no explanation of the nature and extent of that advertising or use, let alone further evidence provided in respect of the same.
5.5. This alleged knowledge on the part of the Respondent and the fact that the Domain Name has not been actively used since registration is said to show that the Domain Name has been both registered and used in bad faith.
B. Respondent
5.6 The Respondent claims that he was unaware of the Complainant's mark at the time he acquired the Domain Name. He disputes that the trade mark relied upon by the Complainant has been used. In this respect he refers to the fact that the trade mark is not referred to on any website or Facebook page operated by the Complainant or any other company related to the Complainant.
5.7 The Respondent further appears to take issue with the Complainant's contention that the Domain Name was registered in January 2016. He claims instead that the Domain Name was first registered many years earlier and had changed hands several time before it was acquired by the Respondent.
5.8 In this respect the Respondent refers to the use of the Domain Name by an "Asian technology forum" in 2007. He appears to claim that he knew of that use at that time.
5.9 The Respondent also asserts that he is a computer engineer and that in early [2017] "he decided to buy some domain names". He claims that he wanted to acquire "www.sliced.com" for his own I related business but that the owner of that domain name was seeking a sum of ""around xxxx US Dollars".
5.10 He also claims that he then searched on the website operating from the domain name <expireddomains.net> and noticed that the Domain Name had recently been dropped and was available for purchase for USD 10.
5.11 The Respondent further contends that before acquiring the Domain Name he searched for the word "slized" on the trade mark database available at the website "www.trademark247.com" and also undertook a search for the term "slized" on Google and as a Google keyword.
5.12 In support of the Respondent's claim that he intended to use the Domain Name for his own business, he attaches to the response a document he describes a plan for his business. However, this "business plan" takes the form of diagram on a single page as follows:
5.13 The Respondent claims that if the Complainant had contacted him directly and in light of the fact that he only paid USD 10 for the Domain Name, he might well have been prepared to transfer the Domain Name to the Complainant for free. However, he contends that he is now defending these proceedings because he takes objection to having been branded a "cybersquater" by the Complainant and asks that the Panel makes a finding of Reverse Domain Name Hijacking. One of a number of factors said to justify a finding of Reverse Domain Name Hijacking in this case, is that the Complainant claimed that "slized" was a "global brand despite the lack of evidence".
6. Discussion and Findings
6.1 To succeed in these proceedings the Complainant must make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.2 The Panel will address each of these requirements in turn. It will then address the Respondent's allegations of Reverse Domain Name Hijacking.
A. Identical or Confusingly Similar
6.3 The Complainant is the owner of a Benelux registered trade mark for the word mark SLIZED. The Panel accepts that the only sensible reading of the Domain Name is as the word "Slized" in combination with the generic Top-Level Domain ("gTLD"), ".com". The Complainant appears to contend that it follows from this that the Domain Name is identical to the Complainant's mark.
6.4 Although many panelists have concluded that when conducting the relevant comparison between mark and domain name, the gTLD is generally to be ignored, the Panel does not necessarily agree with this for the reasons advanced in Philip Morris USA Inc. v. Marlboro Beverages / Vivek Singh, WIPO Case No. D2014-1398. Therefore, the Domain Name and trade mark are not identical. However, in practical terms it makes no difference in this case. The Panel has no hesitation in concluding that the Complainant's marks and the Domain Name are confusingly similar.
6.5 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.6 Given the Panel's findings when it comes to registration in bad faith, it is not necessary to address the question of rights or legitimate interests.
C. Registered and Used in Bad Faith
6.7 The key issue in this case is the extent of the Respondent's knowledge and his intentions when he registered the Domain Name on January 28, 2016.
6.8 The Respondent takes issue with the suggestion that he registered the Domain Name in circumstances where it had been registered prior to January 2016 and he acquired it after it had expired. However, the publically available WhoIs details for the Domain Name record that the Domain Name was re-registered in January 2016. Indeed, even if the Respondent had acquired the Domain Name from a third party with no change being made to the WhoIs registration date, that would still have constituted a fresh registration for the purposes of the Policy; see paragraph 3.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the "WIPO Overview 2.0"). Therefore, the relevant date for this assessment is January 28, 2016.
6.9 However, in addressing this question the Panel has reached the unfortunate conclusion that he can give little weight to factual assertions made by either party in these proceedings that is unsupported by contemporaneous documentary evidence.
6.10 So far as the Respondent is concerned, the version of events he gives is highly implausible. The Respondent would have the Panel believe that (a) he was aware of the use of the Domain Name back in 2007, (b) in January 2016 he decided he wanted to register a different domain name for a new business; i.e. <sliced.com>; (c) although he could not afford <sliced.com>, coincidentally the Domain Name became available and he noticed this a result of a search on the "www.expireddomains.net" website.
6.11 There is no compelling contemporaneous documentary evidence before the Panel to support this version of events. The only document that is provided is the diagram identified in "Parties Contentions" section of this decision above. Although the Respondent attempts to characterise this document as a "business plan", in reality it is no such thing; being nothing more than a non specific list of steps associated with the setting up of an online business.
6.12 Nevertheless, this does not absolve the Complainant of the requirement to demonstrate on the balance of probabilities that the Domain Name was registered in order to take unfair advantage of the trade mark rights of the Complainant.
6.13 It is this part of the Complaint that is totally lacking. In particular, there are assertions as to use of and goodwill in a Benelux trade mark but these assertions are neither properly explained nor evidenced. No attempt has been made to explain the exact way in which the Complainant's mark has been used and the extent of that use, whether that be in terms of the territories in which it has been used and the magnitude of the economic activity in those territories under that mark. Instead there are simply bare assertions that it has been used in "global commerce" in respect of each of the classes of goods in respect of which the Benelux mark has been registered and that there has been "extensive advertising and commercial use across the global marketplace". That is wholly inadequate.
6.14 However, this is not just a case where a complainant has failed to file an adequate complainant. First, the Complainant's contentions are of themselves commercially implausible. Why would a business based in New York that had (if the Complainant is to be believed) since 2007 continuously used the term "Slized" as a mark in "global commerce", only seek to register that mark as a trade mark in the Benelux states? Second, the Respondent has brought forward evidence, by reference to websites and social media pages controlled by the Complainant or associated companies, which suggests that this mark has not been used by the Complainant at all.
6.15 In the circumstances, the Panel has reached the conclusion that the Respondent's claims that the trade mark has not been used (at least to any significant degree) are correct. Given this and even though the Panel has disregarded the Respondent's own claims as to why the Domain Name was registered, it accepts that the Respondent was unaware of the Complainant's mark when the Domain Name was registered. Consequentially, the Panel is not convinced that the Domain Name could have been registered in order to take unfair advantage of the trade mark rights of the Complainant.
6.16 It follows from this that the Complainant has failed to show that the Domain Name was registered by the Respondent in bad faith.
D. Reverse Domain Name Hijacking
6.17 The Respondent has requested that the Panel make a finding of Reverse Domain Name Hijacking in this case. Paragraph 4.17 of the WIPO Overview 2.0 summarises what UDRP panels have generally considered to be the circumstances in which a finding of Reverse Domain Name Hijacking may be made. In particular, it states, 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 complainant failed to notify the panel that the complaint was a refiling of an earlier decided complaint [see further discussion regarding refiled complaints in paragraph 4.4 above] or otherwise misled the panel; a respondent's use of a domain name could not, under any fair interpretation of the reasonably available facts, have constituted bad faith; the complainant knew that the respondent used the disputed domain name as part of a bona fide business for which the respondent obtained a domain name prior to the complainant having relevant trademark rights [see further paragraph 3.1 above with respect to bad faith and complainant trademark rights which post-date domain name registration].
The fact of default by a respondent does not necessarily prevent a finding of Reverse Domain Name Hijacking in appropriate cases, and WIPO panels have on occasion entered such findings on their own initiative, especially where the complainant has intentionally attempted to mislead the panel by omitting material evidence.
WIPO panels have declined to find Reverse Domain Name Hijacking in circumstances including where: the complainant has succeeded in establishing each of the three essential elements required under the UDRP; the complainant's argument under a required element of the UDRP fails, but not by such an obvious margin that the complainant must have appreciated that this would be the case at the time of filing the complaint; there is a question of clean hands or factual accuracy on the part of both parties; the respondent's website contains commercial links explicitly referable to the complainant for the purpose of generating revenue, providing a basis for the complainant to be aggrieved; or there appears to be another relevant factual basis for filing the complaint."
6.18 As has already been described in this decision, the Complaint in this case was totally inadequate. It seems likely that the Complainant is not unfamiliar with the UDRP. In this respect, the Panel notes that a company with the name "Bigfoot Ventures Ltd" was the unsuccessful respondent in Compania Mexicana de Aviacion, S.A. de C.V. d/b/a Mexicana v Bigfoot Ventures LLC,NAF Claim No. 1195961.
6.19 In any event, the Complainant was also professionally represented1 and as such should have been aware of the requirements of the Policy.
6.20 Further, the Panel has also reached the unfortunate conclusion that the Complainant misrepresented the nature of its use of the SLIZED mark. In particular, the claim that there has been "extensive advertising and commercial use across the global marketplace" of that mark is at best exaggerated. Obviously, this is something that was highly relevant to the question of whether the Respondent was aware of that mark at the time he registered the Domain Name.
6.21 In the circumstances, the Panel has reached the conclusion that the Complaint was speculatively filed with no real belief that the Complainant could satisfy the requirements of the Policy. The Panel has also expressed scepticism as to the Respondent's contentions in this case. However, this does not excuse the Complainant's conduct. The Panel, therefore, finds that there has been Reverse Domain Name Hijacking in this case.
7. Decision
7.1 For the foregoing reasons, the Complaint is denied.
Matthew S. Harris
Sole Panelist
Date: August 8, 2016
1 The Complaint was filed in the name of Morton & Associates LLLP by an individual who described himself as an "associate attorney" at that firm. Morton & Associates LLLP would appear to have the same address as the Complainant and this individual appears to have a LinkedIn profile in which he gives his job title as "In House Counsel for Bigfoot Entertainment". However, both Morton & Associates LLLP and that individual are named in the New York State register of attorneys.