WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Robin Hanger v. RPM Truck & Trailer Sales - Samantha Holcomb
Case No. D2013-1092
1. The Parties
The Complainant is Robin Hanger of Daytona Beach, Florida, United States of America, represented by Pappas, Russell & Rawnsley, United States of America.
The Respondent is RPM Truck & Trailer Sales - Samantha Holcomb of Braselton, Georgia, United States of America, represented by Bret S. Moore, United States of America.
2. The Domain Name and Registrar
The disputed domain name <bestpricedtrailer.com> is registered with FastDomain, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 17, 2013. On June 18, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 18, 2013, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 27, 2013.
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 June 28, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 18, 2013. On July 19, 2013 the Center received an e-mail communication from Respondent requesting the extension of the Response due date. On July 19, 2013 the Center sent an e-mail communication both requesting the Respondent to provide the approximate deadline sought and also requesting the Complainant to submit any comments on the extension of the Response due date. The Center received an e-mail communication from Respondent on July 19, 2013 in reply. However, the Center did not receive any comments from Complainant in this regard within the deadline. The Center sent an e-mail communication on July 22, 2013 informing the parties that the new Response due date was August 1, 2012. The Response was filed with the Center on July 30, 2013.
The Center appointed William R. Towns as the sole panelist in this matter on August 13, 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.
On August 15, 2013, the Complainant submitted to the Center a supplemental filing. The Respondent objected to the Complainant’s supplemental submission to the extent it sought to address any subject other than the reverse domain name hijacking claim included in the Response. The Panel thereafter advised the Parties that the Complainant’s supplemental submission would be considered only in relation to the reverse domain name hijacking claim and for no other purpose.
4. Factual Background
The Complainant and the Respondent are both in the business of selling trailers. The Complainant has sold trailers, and trailer parts and accessories since 2004 in Daytona, Florida under the business name “The Car Shop Trailer Sales”, or “TCS Trailer Sales”, but claims to be better known by the identifier “Best Price Trailers”. The Complainant does not own a trademark registration for BEST PRICE TRAILERS, but the Complainant asserts common law trademark or service mark rights based on use. The Complainant operates a website promoting its business at “www.bestpricetrailers.com”.
The Respondent operates a trailer dealership in Braselton, Georgia. The Respondent markets its business activities online generally at “www.rpmtrailersales.com”. The Respondent registered the disputed domain name <bestpricedtrailer.com> on August 28, 2012. The disputed domain name resolves to a website entitled “Best Priced Trailer – The Trailer Superstore” identified as a division of the Respondent. There are links provided to the Respondent’s website at “www.rpmtrailersales.com”. The Respondent concedes it has engaged in prior transactions with the Complainant, and acknowledges that the Complainant uses the domain name <bestpricetrailers.com> for marketing its services. The Respondent maintains, however, that this term is laudatory and incapable of serving as a mark.
5. Parties’ Contentions
A. Complainant
The Complainant submits that it has established unregistered trademark or service mark rights in BEST PRICE TRAILERS. According to the Complainant, BEST PRICE TRAILERS has been used continuously since as early as 2004 in connection with the Complainant’s trailer sales business. The Complainant contends that, due to the substantial time, money and effort the Complainant has devoted to promoting the mark over the last nine (9) years, BEST PRICE TRAILERS has come to be recognized by a relevant segment of the public as an indicator of source with respect to the Complainant’s services. The Complainant submits that it has expended more than USD 400,000 in promoting the mark in print and online advertisements, and has conspicuously displayed the mark in its business cards, signage, invoices, trailer decals, and on its Facebook page. The Complainant maintains that such efforts have resulted in widespread consumer recognition of the mark and sales exceeding USD 23 million.
The Complainant further contends that consumer recognition of the mark is evidence by organic search traffic indicating that consumers specifically seek out the Complainant’s trailer dealership. The Complainant further relies on web searches for the Complainant’s mark, web pages referencing the Complainant’s mark, correspondence directed towards the Complainant that references the mark, an entry by a blogger who purchased a trailer from the Complainant and identifies the Complainant by the mark, and several videos posted on You Tube in which the Complainant promotes the use of the mark. In light of the evidence submitted with the Complainant, the Complainant asserts that secondary meaning for BEST PRICE TRAILERS has been established.
The Complainant asserts that the disputed domain name <bestpricedtrailer.com> is nearly identical to the BEST PRICE TRAILERS mark, except for the addition of a “d” to form “priced” and the omission of the “s” from “trailers”. The Complainant submits this is an obvious misspelling of the mark, citing the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 1.10 (“WIPO Overview 2.0”). According the Complainant, the similarities between the disputed domain name and the Complainant’s mark suggest that the Respondent is engaging in the questionable practice of “typosquatting”, a practice the Policy is intended to prevent. The Complainant asserts that Internet consumers who accidentally misspell the Complainant’s mark will be led to the Respondent’s website by mistake.
The Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant contends that the Respondent first begin using the disputed domain name in December 2012, some eight (8) years after the Complainant began using the BEST PRICE TRAILERS mark. The Complainant avers that the Respondent has never been commonly known by the disputed domain name, and that the disputed domain name does not even resolve to the Respondent’s primary website. The Complainant maintains that while the Respondent has purchased products from the Complainant, there is no affiliation between the Parties and the Respondent has not been licensed or authorized to use the Complainant’s mark. To the contrary, according to the Complainant, the Respondent, a direct competitor of the Complainant, registered and is using the disputed domain name for the purpose of diverting Internet consumers searching for the Complainant to the Respondent’s websites.
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Complainant submits that there is a substantial likelihood of confusion between the disputed domain name and the Complainant’s mark, and that Internet consumers are likely to mistakenly believe that the Respondent’s website is associated with the Complainant’s services. The Complainant submits that the Respondent clearly was aware of the Complainant’s mark when registering the disputed domain name, as the Respondent has engaged in a number of transactions with the Complainant between 2007 and 2011.
Given the foregoing, and considering that the Respondent operates as competing trailer sales company, the Complainant asserts that the only plausible explanation for the Respondent’s registration and use of a domain name incorporating common misspellings of the Complainant’s mark is to divert consumers for commercial gain to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, endorsement or affiliation of the Respondent’s website or the products or services offered on the website. The Complainant submits that the Respondent is benefitting from its bad faith conduct, as evidenced by a press release issued by the Respondent in November 2012 stating the launch of the Best Priced Trailer website had resulted in growing traffic volume and added sales.
B. Respondent
The Respondent avers that the Complainant appears to be based on a fundamental misunderstanding of trademark law, and how that law applies to the UDRP. According to the Respondent, the Complainant has no protectable trademark rights in “Best Price Trailers” because the phrase is generic or merely descriptive in relation to services involving the sale of trailers. The Respondent urges that the evidence supplied by the Complainant is insufficient to overcome the genericness or descriptiveness of the Complainant’s purported mark, and that the value of the disputed domain name is in fact derived from its generic or descriptive nature, given that most Internet users search for generic keywords rather than specific brand names.
The Respondent asserts that “Best Price Trailers” is not inherently distinctive when used in relation to the Complainant’s services, and that under United States trademark law a showing of secondary meaning is required. The Respondent observes that “best price” is a laudatory term, and as such not capable of proving secondary meaning under United States law, particularly in this context when combined with the wholly generic word “trailers.” The Respondent allows that secondary meaning may be shown by the length and amount of sales under the mark, consumer surveys, and media recognition, citing Amsec Enterprises, L.C. v. Sharon McCall, WIPO Case No. D2001-0083. Regardless, even assuming arguendo the Complainant might be capable of demonstrating common law rights, the Respondent asserts that the evidence relied on by the Complainant is not sufficient to show that the phrase “Best Price Trailers” has come to be recognized by a relevant sector of the public as a distinctive indicator of the Complainant’s trailer sales services.
According to the Respondent, the Complainant does not specifically show what portion of the asserted USD 2.3 million in sales is directly attributable to the trailer sales, or that such sales have been driven by the public’s awareness of the Complainant’s purported mark as a source indicator, rather than a generic search term Internet consumers are likely to use when searching for the best price on trailers. Similarly, the Respondent argues that the evidence proffered by the Complainant regarding media attention amounts to little more than self-promotion by the Complainant and the results of the Complainant’s search engine optimization vendors. Furthermore, according to the Respondent, the advertising expenses referred to by the Complainant amount to only 1.7% of gross sales.
The Respondent submits that there is no evidence of any actual confusion, and that a simple Google search of the phrase “best price trailers” generates more than 49 million hits, respecting which the Complainant clearly does not have exclusive control. The Respondent further avers that there is no evidence supporting the Complainant’s assertion that Internet users who may accidently misspell the Complainant’s mark may be misled to the Respondent’s website by mistake. According to the Respondent, Internet consumers searching for “best price trailers”, by the very nature of the search term, are not expecting a particular brand or vendor; rather, they are simply looking for the best price or deal. The Respondent argues that no one can legitimately restrict competing businesses from arguing that their prices or deals on goods or services are the “best”.
The Respondent asserts that the disputed domain name is being used with legitimate business services. The Respondent rejects the Complainant’s assertion that this is a case of typosquatting as “seriously misguided.” According to the Respondent, it has annual trailer sales on the order of USD 1.7 million, and offers other legitimate business services and products for sale, including custom trailer design. The Respondent avers that it is not attempting to mouse-trap unsuspecting Internet visitors, or attempting to install malware, or engaging in other typical typosquatting behavior. To the contrary, the Respondent maintains that it registered the disputed domain name in good faith for its generic and descriptive qualities, and is making a legitimate use of the disputed domain name in connection with a bona fide offering of goods or services.
In light of the foregoing, the Respondent submits that its registration and use of the disputed domain name could not conceivably be characterized as being in bad faith. The Respondent further notes that it did not register the disputed domain name in order to sell it to the Complainant, and has not offered to do so; did not register the disputed domain name to prevent the Complainant from reflecting its business name in a domain name, and certainly had not engaged in a “pattern of such conduct.” According to the Respondent, the Complainant purchased the domain names <bestpricetrailers.com>, <bestpricetrailer.com>, and <bestpricedtrailers.com> on May 4, 2003, December 4, 2004, and September 27, 2004, respectively. The Respondent reiterates it registered the disputed domain name <bestpricedtrailer.com> for its generic search value, and created the web page linking to its primary website for legitimate search engine optimization purposes.
The Respondent urges the Panel to find that the Complainant has engaged in impermissible reverse domain name hijacking in this case. The Respondent relies on the following in support of its position: First, the Respondent alleges that the Complainant has asserted trademark rights in a phrase that is entirely generic and descriptive, and incapable of acquiring secondary meaning. Second, the Respondent submits that domain names are offered on a first come, first serve basis, and that the Complainant clearly was aware of the generic search value of the three similar domain names it registered in 2003 and 2004 and easily could have registered the disputed domain name at that time, had it wished to do so. Finally, the Respondent argues that the Complainant, knowing all of the foregoing, chose to “roll the dice” with a UDRP filing, forcing the Respondent to expend significant resources to defend a completely frivolous action.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The disputed domain name registered is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name are the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel initially addresses whether the Complainant has established trademark or service mark rights in “Best Price Trailers”. The term “trademark or service mark” as used in paragraph 4(a)(i) of the Policy encompasses both registered marks and common law marks. See, e.g., The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; United Artists Theatre Circuit, Inc. v. Domains for Sale Inc., WIPO Case No. D2002-0005; The Professional Golfers’ Association of America v. Golf Fitness Inc., a/k/a Golf Fitness Association, WIPO Case No. D2001-0218.
Since the Complainant does not own a trademark registration for BEST PRICE TRAILERS, the Complainant necessarily must rely on common law rights. In the United States, common law rights in a trademark or service mark may be established by extensive or continuous use sufficient to identify particular goods or services as those of the trademark owner. See United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918). In this instance BEST PRICE TRAILERS is descriptive in relation to the Complainant’s services, as the Complainant’s services feature “trailers”, and the term “best price” is used in a laudatory, descriptive sense to indicate that the Complainant’s pricing is better than its competitors’ prices. Under United States trademark law, such self-laudatory or puffing marks are regarded as descriptive of the character or quality of the claimed goods or services. If anything, puffing is more likely to render a mark merely descriptive, not less so. See DuoProSS Meditech Corp. v. Inviro Med.Devices, Ltd., 695 F.3d 1247, 1254 (Fed. Cir. 2012).
Consequently, to establish protectable trademark or service mark rights in BEST PRICE TRAILERS, the Complainant must demonstrate that secondary meaning has been developed, which occurs when, “in the minds of the public, the primary significance of a [mark] is to identify the source of the product rather than the product itself.” Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 211 (2000) (quoting Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 851 n.11 (1982). Generally speaking, relevant evidence of secondary meaning includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition.
In the context of the UDRP, some panels have noted that in cases where claimed common law or unregistered trademarks are comprised of descriptive or dictionary words, there may be a greater onus on a complainant to present compelling evidence of secondary meaning. See WIPO Overview 2.0, at paragraph 1.7 (and relevant UDRP decisions cited therein). However, that secondary meaning may only exist in a small geographical area does not limit the complainant's rights in a common law trademark. Furthermore, for a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, protectable rights can arise for the purposes of the UDRP even in jurisdictions where trademark rights ordinarily are based on registration. Id.
The Complainant in this case has presented evidence relating to sales, advertising and media recognition in support of the claim of secondary meaning. Given the descriptive nature of the asserted mark, which is comprised “best price” – a laudatory, descriptive phrase – and word “trailer”, which is generic in relation to the Complainant’s services, the Panel entertains some doubt whether the Complainant has made a compelling showing of secondary meaning, in the sense of conclusively demonstrating that the public has come to attach primary significance to BEST PRICE TRAILERS as an indicator of source for the Complainant’s services. Nevertheless, for purposes of the Policy, the Panel is prepared to accept that the Complainant’s substantially exclusive use of this identifier for some nine (9) years, given the undisputed evidence of sales and advertising in the record, is sufficient to give rise to a protectable interest in BEST PRICE TRAILERS as a service mark, at least with respect to a passing off action, which under United States law is considered a species of the common law tort of unfair competition.1
The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name <bestpricedtrailer.com> is confusingly similar to the Complainant’s BEST PRICE TRAILERS mark. In considering the question of identity or confusing similarity, the first element of the Policy stands essentially as a standing requirement.2 The threshold inquiry under the first element of the Policy is largely framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar. Based on such a comparison, the Panel concludes the disputed domain name is confusingly similar to the Complainant’s mark.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the Complainant makes a prima facie case showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the Respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made. The disputed domain name is confusingly similar to the Complainant’s mark. Further, the record reflects that the disputed domain name since its registration by the Respondent has been used to attract Internet users to the Respondent’s websites where services directly competitive with those of the Complainant are offered. There is no indication that the Respondent previously has been commonly known by the disputed domain name, nor indication that the Complainant has authorized the Respondent to use the Complainant’s mark.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain names by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
The Respondent appears to assert that it has established rights or legitimate interests in the disputed domain name based on the intent to make a good faith use of the domain name in connection with its trailer sales services. Specifically, the Respondent submits that it registered the disputed domain name for its generic search value, and created the web page linking to its primary website for legitimate search engine optimization purposes.
A number of UDRP panels have concluded that a respondent has a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly-used descriptive phrase, even where the domain name is confusingly similar to the mark of a complainant, at least in circumstances indicating that the respondent was not aware of the complainant’s trademark rights or believed in good faith that such use would not violate the complainant’s rights. See, e.g., National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424. Thus, where a respondent registers a domain name based on a good faith belief that the domain name’s value derives from its generic or descriptive qualities, the use of the domain name consistent with such good faith belief may establish a legitimate interest. See Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964.
It is evident to the Panel that BEST PRICE TRAILERS, when used in relation to the Complainant’s or services, is laudatory or descriptive in nature. It is this descriptive quality that the Respondent maintains is the reason why the disputed domain name has been registered, and it strikes the Panel that the laudatory phrase “best price” would be attractive to traders in many areas of business for marketing their respective goods and services. The Policy was not intended to permit a party who elects to register or use common or descriptive terms as a trademark to bar others from using these terms in a domain name, unless it is clear that the use involved is seeking to capitalize on the goodwill created by the trademark owner. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230. See also National Trust for Historic Preservation v. Barry Preston, supra.
The Panel acknowledges that the Respondent is a direct competitor of the Complainant, and considers that the Respondent scarcely could have been unaware of the Complainant’s prior use of “Best Price Trailers”, given the undisputed evidence in the record of the Respondent’s prior dealings with the Complainant. Regardless, the Panel is not persuaded that the Complainant’s adoption of a mark consisting of the laudatory, descriptive phrase “best price trailers” entails a right to exclude competitors from making a good faith use of similar laudatory terms such as “best priced trailer” in describing their services. As the United States Supreme Court noted in KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 122 (2004): “If any confusion results, that is a risk the plaintiff accepted when it decided to identify its product with a mark that uses a well-known descriptive phrase.” This is a fundamental premise of the trademark law of most jurisdictions with which this Panel is familiar.
As noted above, the Respondent maintains that the disputed domain name was registered based on its descriptive qualities. The Complainant’s mark itself is laudatory and descriptive in nature, and in the circumstances of this case the Panel considers that the Respondent could have believed in good faith that its use of the disputed domain name would not violate the Complainant’s rights, notwithstanding the Respondent’s awareness of the Complainant’s prior use of “Best Price Trailers.” Consequently, and in light of the Panel’s finding below that the Complainant has failed to demonstrate bad faith registration and use of the disputed domain name, the Panel finds that the Complainant on balance has failed to demonstrate that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Accordingly, in view of the foregoing and the Panel’s findings below, the Panel concludes that the Complainant has failed to satisfy the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is “to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another”. Match.com, LP v. Bill Zag and NWLAWS.ORG, supra. However, panels must decide cases based on the limited scope of the Policy, and the jurisdiction of this Panel necessarily is limited to cases of abusive domain name registration in which the registrant is seeking to profit from and exploit the trademark of another, also known as “cybersquatting”. Id.
After careful consideration of the totality of facts and circumstances in the record, the Panel concludes that the Complainant has not satisfied its burden of demonstrating that the Respondent registered and is using the disputed domain name in bad faith. As noted above, the Policy is not intended to permit a party who elects to register or use common or descriptive terms as a trademark to bar others from using such terms in a domain name, unless it is clear that the use involved is seeking to capitalize on the goodwill created by the trademark owner. See Match.com, LP v. Bill Zag and NWLAWS.ORG, supra. See also National Trust for Historic Preservation v. Barry Preston, supra. As discussed above, the Complainant has not demonstrated to the satisfaction of the Panel that the Respondent’s claim to be making a descriptive fair use of the disputed domain name is merely a pretext for cybersquatting, or that the Respondent more likely than not registered the disputed domain name primarily for purposes of disrupting the business of a competitor. Further, there is no evidence in the record to suggest that the Respondent registered the disputed domain name in order to sell it to the Complainant, or that the Respondent has in the past engaged in a pattern of registering domain names comprised of the trademarks of others.
Accordingly, the Panel finds that the Complainant has failed to satisfy the requirements of paragraph 4(a)(iii) of the Policy.
7. Reverse Domain Name Hijacking
Paragraph 15(e) of the 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 Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
The mere lack of success of the Complaint is not itself sufficient grounds for finding reverse domain name hijacking. The Panel, operating within the limited scope of the Policy, concluded that the Complainant failed to satisfy the requirements of paragraphs 4(a)(ii) and (iii) of the Policy, in light of the Respondent’s claim to be making a good faith, descriptive use of the disputed domain name. The case nonetheless was a close one, given the Complainant’s prior use of the asserted mark and the Respondent’s awareness of such use. Based on the totality of the facts and circumstances in the record, the Panel does not consider that the Complaint was brought in bad faith. See WIPO Overview 2.0, paragraph 4.17 and relevant decisions cited therein.
8. Decision
For the foregoing reasons, the Complaint is denied.
William R. Towns
Sole Panelist
Date: August 26, 2013
1 Under United States trademark law, descriptive marks are eligible for protection on the United States Patent and Trademark Office (“USPTO”) Supplemental Register. Rights conferred by such registration include the right to bring a trademark infringement action in U.S courts.