WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bryant Tyson v. Fundacion Private Whois/ Domain IP Holding Corp.

Case No. D2013-0529

1. The Parties

The Complainant is Bryant Tyson of Williamsville, New York, United States of America (the “US”), represented by Simpson & Simpson PLLC, US.

The Respondent is Fundacion Private Whois of Panama / Domain IP Holding Corp of Panama, represented by Oscar Luzcando, Panama.

2. The Domain Name and Registrar

The disputed domain name <webtys.com> (the “Disputed Domain Name”) 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 March 18, 2013. On March 19, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 20, 2013, 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.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 21, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 10, 2013. The Response was filed with the Center on April 11, 2013.

The Center appointed John Swinson as the sole panelist in this matter on April 16, 2013. 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

The Complainant is Bryant Tyson, who is in the business of website design and hosting.

The Respondent is Domain IP Holding Corp., an intellectual property holding company.

The Disputed Domain Name was registered by the Respondent on January 18, 2013. The website at the Disputed Name displays links to various goods and services.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions are as follows.

Identical or Confusingly Similar

The Disputed Domain Name is identical to the Complainant’s WEBTYS mark (the “WEBTYS Mark”). The Complainant has common law trade mark rights dating from as early as 1993. Since this time, the Complainant has used the WEBTYS Mark in association with website design and hosting services.

The Complainant has registered the following domain names:

- <webtys.com> (the Disputed Domain Name), on November 16, 1999;

- <webtys.net>, in 2006; and

- <webtys.biz>, on January 18, 2013.

The Complainant has used the WEBTYS Mark extensively at these domain names to advertise his website design and hosting services and to contact his clients.

Rights or Legitimate Interests

The Respondent has no rights or legitimate interests in the Disputed Domain Name for the following reasons:

- acquired the Disputed Domain Name due to an administrative error by the Complainant’s registrar (which resulted in a lapse in the Complainant’s ownership of the Disputed Domain Name);

- is not using the Disputed Domain Name for any bona fide offering of goods or services, the Disputed Domain Name has resolved to either a “landing page” website (with links to third party websites), or to no website at all;

- the Respondent has not previously been known by the Disputed Domain Name; and

- the Respondent’s use of a privacy service indicates that its primary interest in the Disputed Domain Name is to resell it.

Registered and Used in Bad Faith

The Respondent has registered and is using the Disputed Domain Name in bad faith for the following reasons:

- failed to investigate whether any other party had rights in the Disputed Domain Name;

- rough a domain name broker, it attempted to sell the Disputed Domain Name to the Complainant, but rejected the Complainant’s offer of USD 500 and requested a “substantially higher” offer, in excess of the Respondent’s out-of-pocket costs;

- has failed to use the Disputed Domain Name for any bona fide purpose; and

- use of a privacy service may be evidence of bad faith.

B. Respondent

The Respondent’s contentions are as follows.

Identical or Confusingly Similar

The Complainant does not have a registered trade mark and has provided insufficient evidence to establish common law trade mark rights.

Rights or Legitimate Interests

The Respondent is making a legitimate non-commercial or fair use of the Disputed Domain Name, without intent to misleadingly divert consumers or tarnish any trade mark or service mark in issue. The use of a privacy service does not lessen the Respondent’s rights to the Disputed Domain Name.

Registered and Used in Bad Faith

The Complainant’s registration expired and the Complainant did not renew its registration during the grace period.

The Disputed Domain Name was not registered for the purpose of resale or similar. The Complainant’s USD 500 offer is vastly below the Respondent’s out-of-pocket costs.

The Respondent’s use of the Disputed Domain Name to direct to a pay-per-click “landing page” does not constitute bad faith.

Any communication between the Complainant and any domain name broker is hearsay and is irrelevant to this Complaint.

Reverse Domain Name Hijacking

The Respondent submits that the Complaint was brought in order to abuse the UDRP process. The Complainant simply did not renew his registration and is now harassing the Respondent to regain the Disputed Domain Name.

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:

(i) the Disputed 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 Disputed Domain Name; and

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

A. Procedural Matters

The due date for the filing of a response was April 10, 2013. The Respondent filed its Response late, on April 11, 2013.

Paragraph 10(b) of the Rules gives the Panel the power to “determine the admissibility, relevance, materiality and weight of the evidence”. The Response was submitted to the Center before the Panel’s commencement of the decision making process and the lateness of the Response has not delayed the decision. In the interests of fairness, the Panel will accept the late Response.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the WEBTYS Mark.

The Complainant submits that it has been using the WEBTYS Mark since 1993 and has extensive common law rights in the WEBTYS Mark. In order to successfully assert common law or unregistered trade mark rights the Complainant must show that the WEBTYS Mark has become a distinctive identifier associated with the Complainant or his goods or services (i.e. that the WEBTYS Mark has acquired a “secondary meaning).

The Panel has conducted independent research into the use of the WEBTYS Mark, as it is entitled to pursuant to paragraph 10 of the Rules, and confirms that the WEBTYS Mark has been used by the Complainant on websites at various domain names in relation to his website design and hosting services for many years. The Panel is satisfied that that Complainant has acquired the requisite common law or unregistered trade mark rights for the purpose of the Policy.

The Disputed Domain Name is identical to the WEBTYS Mark. The “.com” at the end of the Disputed Domain Name is irrelevant in assessing confusing similarity under the Policy and is thus ignored.

The Complainant succeeds on the first element of the Policy.

C. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.

In the Panel’s opinion, the following establish a prima facie case:

- the Complainant has not licensed or otherwise authorized the Respondent to use the WEBTYS Mark;

- there is nothing to suggest that the Respondent might be commonly known by the Disputed Domain Name;

- the website that the Disputed Domain Name resolves to appears to be commercial in nature. It is a “link farm” website which directs users to various goods and services. The Disputed Domain Name is not a dictionary or common word and is not being used in a descriptive sense (i.e. to describe the sponsored links hosted). Accordingly, the Panel infers that it is being used to misleadingly divert consumers. This is not a fair commercial use of the Trade Mark, nor does it constitute a bona fide offering of goods or services.

The Respondent has not provided sufficient evidence to rebut the Complainant’s prima facie case.

In light of the above, the Complainant succeeds on the second element of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.

Paragraph 4(b) of the Policy enumerates several circumstances that are evidence of registration and use of a domain name in bad faith, including where a domain name is “used to intentionally attract, for commercial gain, internet users to a web site or other online location, by creating a likelihood of confusion with the complainant’s name or mark as to the source, sponsorship, affiliation, or endorsement of that web site or location or of a product or service on that web site or location” (paragraph 4(b)(iv)).

The Respondent has registered the Disputed Domain Name (which is identical to the WEBTYS Mark) and used it to direct users to a “link farm” website of advertisements offering various goods and services. It can be reasonably inferred that the Respondent is profiting from the website through “click-through revenue”. As such, the Panel is of the opinion that the Respondent is using the Disputed Domain Name to intentionally attract, for commercial gain, internet users to the Respondent’s website by creating a likelihood of confusion with the WEBTYS Mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.

Paragraph 4(b)(i) of the Policy provides that bad faith can be evidenced where there are “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 associated to the domain name”. This provision also requires that the Respondent has knowledge of the Complainant and of the WEBTYS Mark, given that this provision applies in case of acquisition primarily for a sale (or another transaction) to the Complainant or to a competitor of the Complainant.

Paragraph 2 of the Policy provides that registrants have a responsibility to “determine whether [their] domain name registration infringes or violates someone else’s rights”. The Panel finds that the Complainant was, or should have been aware of, the Complainant’s rights in the WEBTYS Mark (particularly given the short period of time between the expiration of the Complainant’s registration and the Respondent’s registration of the Disputed Domain Name).

The website at the Disputed Domain Name contains a link “Contact the owner of this domain”. This links to a page which states that “webtys.com is for sale” and provides a facility for interested parties to make an offer.

The Respondent (through a domain name broker) has refused the Complainant’s offers to purchase the Disputed Domain Name (for USD 500 and for USD 2,000) and has advised the Complainant that USD 10,000 would be an “absolute min to sell the domain”. The Respondent has submitted that the Complainant’s offer to purchase the Disputed Domain Name for US500 is “vastly below the Respondent’s out-of-pocket costs”, but has provided no evidence in support of this submission.

Out-of-pocket costs include the costs of obtaining, registering, and maintaining domain name. This issue of "excessive" out-of-pocket costs is considered on a case-by-case basis. In the Panel’s experience, as the Disputed Domain Name has little commercial value, USD10,000 would greatly exceed the Respondent’s out-of-pocket costs.

In light of the above, the Panel finds that the Respondent was aware of the Complainant and its WEBTYS Mark and registered the Disputed Domain Name for the purposes of making undue profits by selling the Disputed Domain Name to the Complainant or one of its competitors for a price in excess of the Respondent's out of pocket expenses, while in the meantime generating “click-through revenue”.

The Respondent registered the Disputed Domain Name using a privacy service. While this is not, of itself, indicative of bad faith, the use of a privacy service to shield the Respondent's identity can further support an inference of bad faith where there is evidence of other improper behaviour on the part of the Respondent.

Both parties have made submissions regarding the expiration of the Complainant’s registration of the Disputed Domain Name. In similar circumstances, other panelists have considered re-registration of a domain name by another shortly after it has accidently expired to amount to opportunistic bad faith. See, for example, Kevin Nealon v. Whois Protection, WIPO Case No. D2007-1225. See also, Rug Doctor L.P. v. Domain Strategy, Inc., WIPO Case No. D2002-0355; Gatwick Express Limited v. Jungmo Lee, WIPO Case No. D2002-0311; and Nady Systems, Inc. v. Registrant [1075807]: St Kitts Registry / Moniker Privacy Services, WIPO Case No. D2007-1401.

The Panel finds, taking account of all of the circumstances of the case, the Respondent has registered and is using the Disputed Domain Name in bad faith. The third element of the Policy is satisfied.

E. Reverse Domain Name Hijacking

In light of the Panel’s findings above, it is unnecessary to address the Respondent’s submissions regarding Reverse Domain Name Hijacking.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <webtys.com> be transferred to the Complainant.

John Swinson
Sole Panelist
Date: April 28, 2013