The Complainant is Securus Technologies, LLC, United States of America (“United States”), represented by Magee Legal, PLLC, United States.
The Respondent is Domain Administrator, China.
The disputed domain name, <securus.com> (the “Domain Name”), is registered with Above.com, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2021. On October 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 20, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 21, 2021 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 October 26, 2021.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 17, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 26, 2021.
The Center appointed Tony Willoughby as the sole panelist in this matter on December 6, 2021. 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.
The invitation to the Complainant to file an amended Complaint stemmed from the fact that the Domain Name was registered in the name of a privacy service. In response to the Center’s registrar verification request, the Registrar disclosed the name and address of the entity in whose name the Domain Name is currently registered. The amended Complaint names the underlying registrant as the Respondent.
The Complainant is a Delaware Corporation having its principal place of business in Texas, United States. It provides technology solutions to customers in the corrections and government services sectors. Its principal website is at “www.securustechnologies.com”. There, it describes its “primary mission” as follows: “The primary mission of Securus Technologies® has always been to facilitate the connection between incarcerated individuals and their loved ones. Now, we want to focus on these relationships with our new campaign, Securus connects”.
The Complainant annexes to the amended Complaint a signed declaration from its Intellectual Property Manager. She states that the Complainant has operated its business under the “Securus” name “since as early as August 2004” and exhibits details of the Complainant’s trade mark registrations, the earliest of which is United States Trademark Registration No. 3,169,198 SECURUS (standard character mark) registered on November 7, 2006 (application filed on August 24, 2004) for a variety of services in classes 36 and 38. The registration features a first use in commerce claim of August 6, 2004.
The Domain Name was registered on September 28, 1995 and is connected to a parking page featuring “Related searches” labelled “Credit Card Payment Processing”, “Secure Online Video Conferencing with Inmates”, “Visitation Appointment Booking System”, and “Inmate Direct Mailing Services”.
The Complainant contends that the Domain Name is identical or confusingly similar to its SECURUS registered trade mark; that the Respondent has no rights or legitimate interest in respect of the Domain Name; and that the Domain Name has been registered and is being used in bad faith
The Respondent did not reply to the Complainant’s contentions.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights: and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name: and
(iii) the Domain Name has been registered and is being used in bad faith.
Moreover, in writing the decision, the Panel must have regard to paragraph 15(e) of the Rules and in particular the following sentence namely:
“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 in paragraph 1 of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”.
The Domain Name comprises the Complainant’s registered trade mark SECURUS and the generic Top-Level Domain “.com” identifier.
Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) explains the test for identity or confusing similarity under the first element of the Policy and includes the following passage:
“While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”
The Complainant’s registered trade mark is readily recognizable in its entirety in the Domain Name. The Panel finds that the Domain Name is identical to a trade mark in which the Complainant has rights.
In light of the finding under D below, it is unnecessary for the Panel to address this issue.
The Complainant contends that the Domain Name has been registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy, which provides: “by using the Domain Name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Complainant points to the fact that the Domain Name is identical to the Complainant’s SECURUS trade mark, that the links on the Respondent’s website lead to service providers offering services similar to those provided by the Complainant, three of which are specifically referable to the niche specialist area in which the Complainant operates, namely correctional facilities. The Complainant contends that confusion is inevitable and has to have been intended. Traffic will be diverted away from the Complainant to the detriment of the Complainant and the profit of the those to whom the traffic is diverted.
On the evidence provided by the Complainant and in the absence of any response from the Respondent, the Panel finds that, subject to one significant qualification, the Complainant’s contentions are well-founded. Specifically, the Panel finds on the balance of probabilities that the Respondent’s current use of the Domain Name is intended to trade on the back of the goodwill that the Complainant has built up by way of its trade under and by reference to its SECURUS trade mark.
However, for a complaint to succeed the Complainant must prove each of the three elements of paragraph 4(a) of the Policy. This, the third element, requires the Complainant to prove that the Respondent both registered the Domain Name in bad faith and is using it in bad faith. The Panel has no difficulty in accepting the Complainant’s unchallenged contention that the Respondent is using the Domain Name in bad faith, but it is barely conceivable that the Respondent can have registered it in bad faith, registration having taken place on September 28, 1995 almost nine years prior to the Complainant’s first use claim (August 6, 2004) in respect of its SECURUS trade mark. If there is any reason to suppose that back in 1995 the Complainant was discussing the adoption of that trade mark, the Complaint makes no mention of it.
While it is the true that paragraph 4(b)(iv) of the Policy on which the Complainant bases its case makes no mention of registration, only use, it is now well-established that only in very rare circumstances can a domain name registered prior to a complainant’s rights merit a finding of bad faith registration for the purposes of paragraph 4(a)(iii) of the Policy. All this is clearly set out in the following extracts from WIPO Overview 3.0:
Section 3.8.1
“Subject to scenarios described in 3.8.2 below, where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent.”
Section 3.8.2
“As an exception to the general proposition described above in 3.8.1, in certain limited circumstances where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trademark rights, panels have been prepared to find that the respondent has acted in bad faith.
Such scenarios include registration of a domain name: (i) shortly before or after announcement of a corporate merger, (ii) further to the respondent’s insider knowledge (e.g., a former employee), (iii) further to significant media attention (e.g., in connection with a product launch or prominent event), or (iv) following the complainant’s filing of a trademark application.”
As mentioned above, there is nothing in the Complaint to suggest that back in 1995 when registering the Domain Name the Respondent could have been targeting the then non-existent trade mark rights of the Complainant. Nor is there anything in the Complaint to suggest that it was not the Respondent who registered the Domain Name back in 1995.
Paragraph 23 of the Complaint opens with a passage commencing “Securus contends that the Respondent registered, renewed, and is using the Disputed Domain Name www.securus.com in bad faith ….”. There is no other reference to renewals in the Complaint. If this solitary reference to renewal of the Domain Name is intended to suggest that one or more of the Respondent’s renewals of the Domain Name since 1995 constitutes a new registration for the purposes of this element of the Policy, it is unsuccessful. First, there is nothing in the Complaint to indicate when the Respondent commenced its objectionable use of the Domain Name; but more fundamentally it is now well-established that for the purposes of this element of the Policy a mere renewal by the same registrant is insufficient to support a finding of bad faith registration (see Section 3.9 of WIPO Overview 3.0）.
The Complaint fails under this element of the Policy, there being no evidence that the Respondent registered the Domain Name with the Complainant’s then non-existent trade mark right in mind. The Domain Name is being used in bad faith, but was not registered in bad faith.
Section 4.16 of WIPO Overview 3.0 answers the question: “In what circumstances will panels issue a finding of Reverse Domain Name Hijacking (RDNH)?” 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’.
RDNH is furthermore 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’. Panels have also referred to paragraphs 3(b)(xiii) and (xiv) of the UDRP Rules in addressing possible RDNH scenarios.
Panels have consistently found that the mere lack of success of a complaint is not itself sufficient for a finding of RDNH. At the same time, the mere fact of a respondent default would not by itself preclude an RDNH finding as this ultimately turns on the complainant’s conduct. In either event, following some early cases to the contrary, panels have more recently clarified that, for an RDNH finding to be made, it is not necessary for a respondent to seek an RDNH finding or prove the presence of conduct constituting RDNH.
Reasons articulated by panels for finding RDNH include: (i) facts which demonstrate that the complainant knew it could not succeed as to any of the required three elements – such as the complainant’s lack of relevant trademark rights, clear knowledge of respondent rights or legitimate interests, or clear knowledge of a lack of respondent bad faith (see generally section 3.8) such as registration of the disputed domain name well before the complainant acquired trademark rights, (ii) facts which demonstrate that the complainant clearly ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint, including relevant facts on the website at the disputed domain name or readily available public sources such as the WhoIs database, (iii) unreasonably ignoring established Policy precedent notably as captured in this WIPO Overview – except in limited circumstances which prima facie justify advancing an alternative legal argument, (iv) the provision of false evidence, or otherwise attempting to mislead the panel, (v) the provision of intentionally incomplete material evidence – often clarified by the respondent, (vi) the complainant’s failure to disclose that a case is a UDRP refiling, (vii) filing the complaint after an unsuccessful attempt to acquire the disputed domain name from the respondent without a plausible legal basis, (viii) basing a complaint on only the barest of allegations without any supporting evidence.
Given the undertakings in paragraphs 3(b)(xiii) and (xiv) of the UDRP Rules, some panels have held that a represented complainant should be held to a higher standard.”
First, it should be noted that the Respondent has not participated in this proceeding and has not sought a finding of Reverse Domain Name Hijacking. Secondly, it should be acknowledged that on the face of it, the Respondent’s use of the Domain Name is in flagrant infringement of the Complainant’s trade mark rights. However, the scope of the Policy is narrow. Anyone who has studied WIPO Overview 3.0, which is readily accessible as a resource on WIPO’s website, will know that bad faith use of a domain name is insufficient on its own to lead to a finding of bad faith registration and use under the Policy.
Extraordinarily, the Complaint clearly sets out both the date of registration of the Domain Name in 1995 and the Complainant’s 2004 first use claim in respect of its SECURUS trade mark, but features no argument of any kind to overcome this obvious obstacle to success.
In the view of the Panel, the Complainant’s representative clearly ought to have known that the Complaint could not succeed. It was doomed to failure from the outset. The Complainant cited WIPO case decisions in support of its case under the second element, but no authority at all for its case under the third element.
Of the reasons for RDNH findings set out in section 4.16 of WIPO Overview 3.0, two are applicable here, namely (ii) facts which demonstrate that the complainant clearly ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint and (iii) unreasonably ignoring established Policy precedent notably as captured in WIPO Overview 3.0.
If the Complainant’s representative had researched the Policy and its jurisprudence properly (e.g., by studying the guidance materials readily accessible on WIPO’s website), the Complaint would not likely have been filed and certainly not in its current form, bereft of any argument (still less evidence) to overcome the fundamental defect identified above. The Complainant would have been told that its complaint needed to be followed up in another forum (such as a court).
The Panel is aware that some panels have taken the view that bad behaviour on the part of the Respondent should neutralise any criticism of the behaviour of the Complainant, but that is not how the Panel reads Paragraph 15(e) of the Rules, which makes no reference to the behaviour of the Respondent. Paragraph 15(e) of the Rules provides the only means by which a panel can seek to register formal disapproval of serious shortcomings in a complaint. Criticism of those shortcomings in this case cannot sensibly be watered down simply because the Respondent has given good cause for the Complainant to take action in another forum. In making this finding the Panel recognises that the Complainant was probably acting on the advice of its representative and recognises that the shortcomings in the Complaint were probably not intentional. Nonetheless they were fundamental to the result of the Complaint and fall within the reasons articulated by panels for findings of RDNH as set out in section 4.16 of WIPO 3.0.
For the foregoing reasons, the Complaint is denied and the Panel declares that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Tony Willoughby
Sole Panelist
Date: December 16, 2021