WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Avenue 81, Inc. v. Karl Payne
Case No. D2014-1825
1. The Parties
The Complainant is Avenue 81, Inc. of St. Paul, Minnesota, United States of America, represented by Fredrikson & Byron, United States of America.
The Respondent is Karl Payne of Ann Arbor, Michigan, United States of America, represented by John Berryhill, Ph.D., Esq., United States of America.
2. The Domain Name and Registrar
The disputed domain name <leadpages.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 17, 2014. On October 20, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 22, 2014, 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 October 28, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response November 17, 2014. The Response was filed with the Center November 17, 2014.
The Center appointed William R. Towns, David H. Bernstein and Richard G. Lyon as panelists in this matter on December 29, 2014. The Panel finds that it was properly constituted. Each member of 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 provides lead generation services, consisting of a landing page generator designed to assist customers in improving lead generation and conversion rates for visitors to their websites. The Complainant maintains a business website at “www.leadpages.net”, on which it promotes and offers its service online using the “Leadpages” symbol. The Complainant represents that the service was inaugurated in November 2012.1
The Respondent registered the disputed domain name <leadpages.com> on February 11, 2004, and has continuously maintained possession of the disputed domain name for more than ten (10) years. The Respondent was contacted initially on September 13, 2013, by Clay Collins, who identified himself as the “Co-Founder of LeadPages™,” making inquiry whether the Respondent was open to selling the disputed domain name. The Respondent replied on October 21, 2013, stating “I’m not really interested in selling it. You’re welcome to make an offer if you think it will pique my interest.” On that same day, the Complainant responded, offering USD 10,000. After receiving no reply from the Respondent, the Complainant emailed the Respondent on December 2, 2013, inquiring “Would you be open to $15K?”
On December 9, 2013, the Complainant filed with the United States Patent and Trademark Office (USPTO) an intent-to-use trademark application for LEADPAGES in connection with its services. The application was published for opposition by the USPTO on April 29, 2014, and a notice of allowance was issued by the USPTO on October 28, 2014. The Respondent obtained an extension of time to oppose the Complainant’s application, but did not file an opposition.
The Respondent’s most recent renewal of the domain name registration apparently occurred on or about October 16, 2013, based on the WhoIs information relied on by both of the Parties.2 The content of the website to which the disputed domain name currently resolves consists of the prominent statement “You are about to become more productive”, underneath which there is a space for visitors submit their email addresses in order to “continue”. Based on the experience of the Respondent’s legal representative, a visitor submitting his or her email address then receives reply email from the Respondent, soliciting the visitor to “Make your own Whiteboard Videos.”
5. Parties’ Contentions
A. Complainant
The Complainant describes itself as a leader in providing businesses software and web apps to generate customer leads online. According to the Complainant, since the inauguration of its LeadPages™ service on November 12, 2012, the service has become increasingly popular, with 3,100 affiliates, more than 25,000 customers currently using the service, and more than 36,000,000 leads generated. The Complainant submits it spent USD 40,000 in 2013 and has spent more than USD 152,000 in 2014 in advertising related to its LeadPages™ services, which also has been the subject of discussions in publications such as TechCrunch.3
The Complainant maintains that the disputed domain name is identical and confusingly similar to its LEADPAGES mark, in which the Complainant asserts it has established rights. The Complainant observes that it has filed a trademark application for LEADPAGES that has been published for opposition, has not been opposed, and submits that, barring any unforeseen circumstances, the trademark will be registered shortly by the USPTO.
The Complainant acknowledges that the Respondent registered the disputed domain name on February 11, 2004, but contends that the Respondent’s use of the disputed domain name since the renewal of the registration on October 16, 2013 – following the Complainant’s first use of LEADPAGES – does not establish rights or legitimate interests in the disputed domain name. The Complainant alleges that the Respondent had not previously used the disputed domain name prior to that event, but instead was passively holding the disputed domain name.
The Complainant avers that the Respondent has acquired no trademark or service mark rights in “Leadpages”, that the Respondent has not been commonly known by the disputed domain name, and that the Respondent has not been authorized by the Complainant to register or use the disputed domain name. The Complainant further contends that the disputed domain name promotes or suggests a nonexistent connection or relationship with the Complainant, and that the disputed domain name is being used to direct Internet users to a website with content that “intentionally yet vaguely evokes the services that the Complainant provides,” but serves only to direct spam email to Internet visitors diverted to the website.
In view of the foregoing, the Complainant maintains that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name within the meaning of the Policy. The Complainant also submits that the Respondent’s use of the Complainant’s mark in the disputed domain name fails to qualify as a fair use under the Lanham Act, citing Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. The Complainant contends that the Respondent has no need to use the Complainant’s mark to identify or describe the Respondent’s business, that the content of the Respondent’s website does not clearly indicate the nature of the Respondent’s business, and that there is no evidence suggesting that the Respondent cannot readily identify its products or services without using the Complainant’s mark.
The Complainant argues that that the Respondent registered and is using the disputed domain name in bad faith. While not disputing that the Respondent had registered the disputed domain name almost a decade prior to the Complainant’s first use of LEADPAGES, the Complainant contends that the Respondent passively held the disputed domain name until becoming aware of the Complainant’s use of the LEADPAGES mark, and that the Respondent since then has intentionally tailored the content on his website to divert and mislead Internet users seeking the Complainant’s goods and services. The Complainant, citing Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, submits that the Respondent’s passive holding of the disputed domain name in such circumstances constitutes use of the domain name in bad faith.
Further, according to the Complainant, because its LEADPAGES mark has acquired a strong reputation and brand awareness, it is clear that the Respondent was well aware of the connection between the disputed domain name and the Complainant’s business. The Complainant contends that the Respondent is using the disputed domain name to create Internet user confusion in order to divert Internet traffic to his website, on which, according to the Complainant, the Respondent uses vague and ambiguous language about improving productivity to evoke the Complainant’s goods and services and divert consumers to the Respondent’s website.
The Complainant submits that the foregoing constitutes prima facie evidence of the Respondent’s bad faith registration and use of the disputed domain name (1) in an intentional attempt to attract, for commercial, gain, Internet visitors to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation or endorsement within the contemplation of paragraph 4(b)(iv) of the Policy; and (2) for purposes of disrupting the Complainant’s business, which the Complainant argues constitutes “disrupting the business of a competitor” under UDRP panels interpretations of paragraph 4(b)(iii) of the Policy.
B. Respondent
The Respondent submits that the disputed domain name has been registered, used, and renewed with a “continuity of purpose in connection with sales lead generation and conversion” for nearly ten years prior to the Complainant’s selection of LEADPAGES for use as a mark. According to the Respondent, the Complainant was fully aware of the Respondent’s seniority and use of the disputed domain name when it selected the mark, and unsuccessfully attempted to purchase the disputed domain name from the Respondent for USD 15,000 prior to filing a trademark application for LEADPAGES and subsequently bringing this proceeding. The Response takes the Complainant to task for omitting from the Complaint any mention of the Parties’ documented communications, and asserts this is typical of resort to the UDRP when failing to negotiate the purchase of a domain name on commercial terms from a party with prior rights.4
The Respondent maintains that the Complainant has not demonstrated that it has rights in a trademark or service mark respecting which the disputed domain name is identical or confusingly similar. The Respondent submits that under well-settled UDRP jurisprudence a trademark application does not create any rights in the mark until the application matures to registration, and further notes that the Complainant’s pending application was filed on an intent-to-use basis.
The Respondent invites the Panel to rule on whether the Complainant has established common law rights, but argues that such a determination ultimately is not relevant to the Panel’s decision, because such rights, if any, would have been established long after the Respondent registered and began using the disputed domain name. The Respondent cites Verb Products Inc.; Verb Hair Products Canada Inc.; Moroccanoil Israel Ltd. v. Richard Bloxham, WIPO Case No. D2014-1023, in support of this proposition. In addition, the Respondent argues that any consideration of whether the Complainant has trademark rights must take into account whether the Complainant made fraudulent representations to the USPTO regarding distinctiveness by failing to disclose its knowledge of the Respondent’s senior use of the disputed domain name with sales lead generation and conversion activities.
The Respondent submits that the Complainant cannot demonstrate that the Respondent lacks rights or legitimate interests in the disputed domain name, in view of the Respondent’s longstanding use of the disputed domain name in connection with sales lead generation and conversion dating back to 2004, almost a decade before the Complainant’s earliest claimed use of LEADPAGES.5 In support of this, the Respondent relies on the historical record of the Respondent’s use of the disputed domain name accessible at “www.screenshots.com”. The Respondent suggests that the Panel visit “www.screenshots.com” to directly view the complete record online, but provides a “sampler” of historical snapshots.6
According to the Respondent, his use of the disputed domain name with sales lead generation and conversion has varied over time depending on his ability to secure a favorable return on various sales programs aimed at home-based business operators. The Respondent represents that submitted “sampler” snapshots are representative of such use, including September 2005 (promoting an advertising video generator); March 2007 (PPC monetization for contextually relevant searches); January and March 2009 (used with the Respondent’s “www.leadgeneration101.com” site); and June 2013 (advertising a web page generation service related to the Respondent’s “www.fastcapturepages.com” site). The Respondent submits that the disputed domain name currently is being used to collect and refer leads to a commercial video preparation service of the type the Respondent had launched using the disputed domain name in the historical capture in 2005.
Taking into account the foregoing, the Respondent submits it is clear that the disputed domain name has not been registered or used in bad faith. The Respondent reiterates there is no dispute that he registered the disputed domain name long before the Complainant’s assertion of trademark rights in LEADPAGES. According to the Respondent, the record before the Panel clearly demonstrates that the Respondent has consistently used the disputed domain name for the purposes of sales lead maximization tools, including promotional videos, sales, courses, PPC links to MLM leads, and mailing lists. The Respondent asserts that under a traditional understanding of abusive registration as addressed by the Policy, the Respondent’s registration of the disputed domain name cannot have been undertaken in bad faith. The Respondent argues that the Complainant, knowing this, attempts to resurrect what the Respondent characterizes as the widely disfavored Mummygold/Octogen line of reasoning, by mentioning that the Respondent renewed the disputed domain name at some point.7 The Respondent relies on Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011, and UDRP panel decisions cited therein, as indicative of the “widespread rejection” of the Mummygold/Octogen line of cases.
The Respondent asserts that in any event the Mummygold/Octogen line of cases should not be applied to the facts of this case. The Respondent reiterates that while the particulars of the lead generation and conversion tools offered under the disputed domain name have varied over time, the essential thrust of the Respondent’s consistent and demonstrable use of “lead pages” in relation to Internet tools for maximizing sales leads has remained consistent over the years. According to the Respondent, the Complainant’s principals are “sophisticated Internet-savvy businessmen” capable of ascertaining that the disputed domain name <leadpages.com> was taken and in use at the time they selected their business name. The Respondent argues that trademark law does not sanction the Complainant, upon coming to an idea for its mark, to “disparage and defame anyone who may have had and implemented the idea years before them.”
The Respondent argues that the renewal of a domain name that the registrant demonstrably has been using for a particular purpose over a number of years entitles the registrant to rely on its priority of use in making requisite averments for purposes of paragraph 2 of the Policy. The Respondent further asserts that the “renewed in bad faith” species of UDRP decisions are inapposite to the facts of this case, which does not involve the scenario typified in such cases, in which a senior domain name registrant later seeks to capitalize on some different field of endeavor by a junior trademark claimant. The Respondent also remarks that this species of UDRP decisions “have strained to capture a largely fictional scenario”, and is critical of Octagen as encouraging an increase in incidents of reverse domain name hijacking, based on what the Respondent characterizes as a “you might as well try” approach taken by junior claimants in UDRP proceedings.
In respect of the foregoing, the Respondent maintains that the Complainant simply has failed under both the “traditional” and Octogen approaches to demonstrate bad faith registration and use of the disputed domain name. The Respondent avers that in continuing to advertise and promote lead generation services directed towards sales persons since 2004, he cannot under any interpretation of the Policy be found to have done so for the purpose of disrupting or diverting anyone from a business that did not exist until at the earliest 2012.
The Respondent maintains that the Complainant would have been aware of this when filing the Complaint, and the Respondent submits that the Complainant accordingly is guilty of reverse domain name hijacking. The Respondent asserts that it is for this salient reason the Complainant omitted any mention of the relevant pre-dispute correspondence between the Parties initiated by the Complainant. The Respondent further alleges that the Complainant’s USPTO filing, coming within days after receiving no response to its second offer to buy the disputed domain name, is merely part of a scheme by the Complainant to lay the foundation for commencing this proceeding under the Policy, citing Success Bank v. ZootGraphics c/o Ira Zoot, NAF Claim No. 1259918.
Further on the subject of abuse of the proceeding, the Respondent observes that the Complainant in the course of prosecuting its trademark application before the USPTO is required to make a declaration that, to the best of the applicant’s knowledge, no other party is entitled to use the applied-for mark, subject to the penalties for perjury under federal statute. The Respondent contends that under the circumstances described above, the Complainant could not credibly have done so. For purposes of a determination of reverse domain name hijacking, the Respondent maintains it is sufficient that the Complainant deliberately omitted “highly material” pre-dispute correspondence with the Respondent that continued up to a week before the filing of the intent-to-use USPTO application relied upon by the Complainant. In addition, the Respondent insists that the Complainant has presented no plausible argument whatsoever as to how the Respondent’s registration and continuous use since 2004 of a domain name suggestive of lead development could possibly have been undertaken in bad faith under the Policy with respect to an entity that would not exist until years hence. The Respondent cites the recent UDRP panel decision in Squirrels LLC v. Giorgio Uzonian, WIPO Case No. D2014-1434, as factually apposite.
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. See 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”. See Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See also 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 domain name registered by the respondent 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 domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the disputed 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 the disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, 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) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed 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 LEADPAGES. The Complainant does not currently have an existing trademark registration for LEADPAGES. While the USPTO has issued a notice of allowance respecting the Complainant’s intent-to use application, the Complainant’s assertion that LEADPAGES will now be registered by the USPTO as a matter of course overlooks the additional actions required of the Complainant in order for its application to mature to a registration – namely, the amendment of its application based on use and the submission of evidence of use of the mark in commerce sufficient to satisfy the requirements of the USPTO. Hence, the Complainant has not established trademark rights in LEADPAGES at this time based on registration.
The Complainant has not expressly asserted unregistered or common law trademark rights in LEADPAGES. Regardless, the Complainant has submitted some information relevant to common law rights (as set out earlier in Section 5.A of this Decision). Further, the Respondent has invited the Panel to determine whether the Complainant has made a sufficient showing to demonstrate common law rights in LEADPAGES. The Panel notes that 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.
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). That is to say, the mark must be used such that a relevant segment of the public comes to recognize it as a symbol that distinguishes the Complainant’s goods and services from those of others. Relevant evidence may include the length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition.8
The USPTO in examining the Complainant’s applied-for mark determined that the mark was distinctive and not merely descriptive of the services for which the Complainant proposed to use the mark. The Response also stops short of asserting that “Leadpages” is merely descriptive of lead generation and conversion services, instead describing the term as “suggestive” of such services. For purposes of United States trademark law, marks traditionally have been arranged into five generally increasing categories of consideration for protection: (1) generic, (2) descriptive, (3) suggestive, (4) arbitrary, and (5) fanciful. See, e.g., Genesee Brewing Co., Inc. v. Stroh Brewing Co., 124 F.3d 137 (2d Cir. 1997). The latter three categories are considered to be inherently distinctive. Id. Conversely, rights in a descriptive mark require a showing that the mark has acquired distinctiveness (“secondary meaning”) in the minds of a relevant segment of the public.
The Panel considers that the term “Leadpages” is in some sense evocative of lead generation services, but notes that the line between a descriptive and a suggestive mark may at times be a difficult one to draw. The Panel is thus disinclined to question the USPTO’s finding of distinctiveness based on the record before it, noting that the Respondent has not alleged that the Complainant’s use of LEADPAGES is merely descriptive of the Complainant’s services, nor those of the Respondent. To the extent that the Response questions the distinctiveness of the Complainant’s mark, this appears to be in the context of the Respondent’s claim of prior rights in the term “Leadpages”.9
The Complainant has submitted through the Declaration of its Chief Strategy Officer information respecting the amount of sales in 2013 and 2014, the extent of the Complainant’s expenditures on advertising during this time frame, and has also offered some evidence of media recognition of the mark. The Panel also notes that the Complainant’s website reflects consistent use of the ™ symbol with the “Leadpages” designation. Having regard to the foregoing, the Panel is prepared to accept for purposes of paragraph 4(a)(i) of the Policy that the Complainant has made out a showing of common law rights in LEADPAGES, at least as of the date of the filing of the Complaint.
The Panel further finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name is identical to the Complainant’s LEADPAGES mark. In considering the question of identity or confusing similarity, the first element of the Policy operates essentially as a standing requirement.10 The threshold inquiry under the first element of the Policy is framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar. Although gTLDs may in appropriate circumstances be considered when evaluating identity or confusing similarity, gTLDs may also be disregarded, and usually are not taken into consideration when evaluating the identity or confusing similarity between the complainant’s mark and the disputed domain name.
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 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 Complainant has demonstrated rights in the LEADPAGES mark, and the Panel has found that the disputed domain name is identical to the mark. The Complainant has also presented evidence supporting its contention that the Respondent currently is using the disputed domain name in connection with an offering of products are services that the Complainant claims compete with or appear to be substantially related to the Complainant’s services.
The Complainant concedes that the Respondent registered the disputed domain name in 2004, well before the Complainant acquired any trademark rights or even existed, making the Respondent’s prior use of the disputed domain name relevant to the issue of whether the Respondent has been commonly known by the disputed domain name. This raises a corollary question as to the extent to which the Complainant must explore and present findings regarding the Respondent’s past use of the disputed domain name for purposes of a prima facie showing under this heading. While websites such as “www.screenshots.com” and “www.archive.org” (the “Internet Wayback Machine”) may provide some information regarding the historical use of a domain name, it is still the case that such information is primarily within the knowledge of the respondent. In this case, the Complainant addresses prior use by asserting that the Respondent “passively held” – made no use of – the disputed domain name.
The Respondent contends he has indisputable prior rights in the disputed domain name arising from his consistent use of the disputed domain name since 2004 for purposes of sales lead maximization tools. In addition to his sworn Declaration, the Respondent relies on five (5) screenshots accessible on “www.screenshots.com”, captured on various dates between September 12, 2005 and June 27, 2013, which the Respondent submits are representative of his historical use of the disputed domain name. These screenshots are described in Section 5.B of the Decision. At the invitation of the Respondent, the Panel also visited the “www.screenshots.com” website, which in total contains 16 screenshots reflecting the Respondent’s use of the disputed domain name between September 12, 2005 and April 4, 2014.
Regardless of whether the Complainant has made a prima facie showing, the Respondent has come forward with evidence on which he relies in asserting rights or legitimate interests in the disputed domain name. As noted earlier the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy. While the Panel has some reservations how representative 16 screenshots, let alone the five submitted in the Response, are of the Respondent’s overall use of the disputed domain name over a span of 10 years, the screenshots clearly debunk the Complainant’s unsubstantiated claim that the Respondent had passively held the disputed domain name for nearly a decade until becoming aware of the Complainant’s use of the LEADPAGES mark. The Respondent’s use of the disputed domain name has varied over time, but the Panel is persuaded that the Respondent on balance has demonstrated prior use of the disputed domain name over a number of years for purposes of lead generation and conversion. The Panel considers that such use is consistent with the Respondent’s current use of the disputed domain name.
The Respondent thus has presented a credible argument, supported by credible (though perhaps not complete) evidence, that his use of the disputed domain name prior to becoming aware of the Complainant’s LEADPAGES mark is consistent with an assertion of rights or legitimate interests in the disputed domain name. However, under the “renewal as registration” approach articulated in Eastman Group LLC v. Jim and Kenny, WIPO Case No. D2009-1688 (“Sporto”), a demonstrable change in a respondent’s use of a domain name to target third-party trademark rights, even though such trademark rights were nonexistent at the time of the initial domain name registration, may depending on the facts and circumstances of a given case reflect bad faith registration and use within the meaning of paragraph 4(a)(iii) of the Policy.
The Panel considers these issues below in addressing the question of bad faith registration and use under paragraph 4(a)(iii) of the Policy. In view of the Panel’s determination under paragraph 4(a)(iii) of the Policy, it is unnecessary for the Panel to address the issue of the Respondent’s rights or legitimate interests with respect to the disputed domain name under 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 circumstances where the registrant seeks to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
Under the traditional and generally accepted view of the conjunctive language (“registered and being used”) of paragraph 4(a)(iii), now a Consensus View in the WIPO Overview 2.0, paragraph 3.1,11 the Complaint fails on its face, as the Complainant perforce acknowledges. The Complainant indirectly invokes Sporto, relying on the Respondent’s renewal of the disputed domain name after becoming aware of the Complainant’s trademark rights. The Panel finds this reliance misplaced, and in the circumstances of this case disingenuous.
Sporto does not hold that any renewal of a domain name in any circumstances automatically restarts the clock on evaluating registration in bad faith. The Sporto respondent, after years of use of the disputed domain name in various manners unrelated to the complainant or its marks, consciously changed the content of its website to a use (a hyperlink farm with links to the complainant and its competitors) almost uniformly deemed bad faith. The panel summarized: “Respondent intentionally changed its use of the disputed domain name. The new use is unrelated to Respondent’s earlier business. The new use is textbook cybersquatting. The new use occurred prior to the renewal held to be a registration subject to for purposes of paragraph 4(a)(iii). There has been no legitimate use since renewal.” That panel went on to note that “In other circumstances it might well be appropriate to continue to find otherwise ‘infringing’ use still within the safe harbors of paragraphs 4(c)(i) or 4(c)(ii). The obvious case that comes to mind is when the respondent had nothing to do with the intervening circumstances that changed things – a trademark is registered after initial registration but before renewal, and the use to which the respondent puts the domain name remains materially unchanged, for example.”
The Respondent in this case had nothing to do with any changed circumstances after his initial registration of the disputed domain name. The only things that changed were the Complainant's commencing its business and applying for a trademark. While the particular content at the Respondent's website may have changed subsequently to its most recent renewal, as it had changed from time to time over the years, all the Respondent's use over the ten-year span in which he has held the disputed domain name relates to lead generation and conversion services consistent with the Respondent’s current use. See Squirrels LLC v. Giorgio Uzonian, WIPO Case No. D2014-1434 (“Nor is there evidence to the effect that Respondent renewed the domain name registration and thereafter changed its use of the domain name to take advantage of the trademark value of the domain name”). None of the Respondent’s use after the Complainant came into existence seeks to take advantage of any goodwill in LEADPAGES that may have recently accrued as the result of the Complainant’s business. At no time, including the present time, the Panel finds, has the Respondent targeted the Complainant or its mark.
For the reasons discussed under this and the preceding heading, the Panel concludes that the Complainant has failed to carry its burden of demonstrating bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Complainant’s assertion that the Respondent passively held the disputed domain name with the patience of Job, awaiting the day when the Complainant or some other third party would eventually adopt “Leadpages” for use as a business identifier, borders on the absurd, and as the record reveals is simply untrue as a matter of fact – facts the Complainant could and should have found out for itself with a brief Internet search before filing the Complaint.
In the final analysis, the Panel considers that the Complainant has presented no evidence that supports, or conceivably could support, its otherwise barebones allegation that the Respondent, after becoming aware of the Complainant, changed his use of the disputed domain name in order to exploit or profit from the Complainant’s rights in the LEADPAGES mark.
Accordingly, the Panel finds that the Complainant has failed to satisfy the requirements of paragraph 4(a)(iii) of the Policy.
E. 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 for a finding of Reverse Domain Name Hijacking; rather, the record typically should reflect 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. Rule 15(e) does not on its face restrict a panel’s consideration of Reverse Domain Name Hijacking to cases in which a respondent has asserted that a complainant has been brought in bad faith. In cases where a respondent requests a finding of complainant bad faith, however, WIPO panels generally have placed the onus of proving bad faith on the respondent See WIPO Overview 2.0, paragraph 4.17, and panel decisions cited therein.
In the Panel’s view, the record in this case evinces that the Complaint was brought in bad faith within the meaning of the applicable provisions of the Policy and Rules. It is undisputed that the Respondent registered the disputed domain name many years before the Complainant’s launch of its business in November 2012. The Complainant registered the domain name <leadpages.net> in November 2012, and would have been aware of the Respondent’s prior registration of the disputed domain name when the Complainant adopted “Leadpages” as a business identifier.
As discussed earlier by the Panel, the Complainant’s assertion that the Respondent passively held the disputed domain name from 2004 until becoming aware of the Complainant’s use of “Leadpages” is undone by undisputed and indisputable facts in the record – facts that the Complainant easily could and should have found out before filing the Complaint. See, e.g., GIGS United S.L. v. SIE MANTIC, WIPO Case No. D2014-1689; Personal Communication Systems, Inc. v. CDN Properties Incorporated, WIPO Case No. D2014-0664. Further, the Complainant presented no evidence that supports or conceivably could support its allegation that the Respondent, after becoming aware of the Complainant, changed his use of the disputed domain name in order to target the Complainant or its mark. See Squirrels LLC v. Giorgio Uzonian, supra.
7. Decision
For the foregoing reasons, the Complaint is denied. The Panel further finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
William R. Towns
Presiding Panelist
David H. Bernstein
Panelist
Richard G. Lyon
Panelist
Date: January 19, 2015
1 The Complainant registered <leadpages.net> on November 7, 2012, according to publicly available WhoIs information, accessed by the Panel on the Domain Tools website (“www.domaintools.com”). Presumably, the Complainant would have discovered at that time the prior registration of <leadpages.com> by the Respondent.
2 This is asserted in the Complaint and not disputed in the Response.
3 This information is set out in the sworn Declaration of the Complainant’s Chief Strategy Officer, Tracy Simmons, without supporting documentation.
4 This is referred to as “Plan B” on the cases collected at “www.rdnh.com”.
5 The Respondent explains that sales “leads” refers to a persons who, by visiting a website or requesting information about a product or service, identify themselves as being interested in obtaining such products or services. “Conversion” is a term applied to leads that result in sales.
6 The Respondent further submits that his longstanding interest in lead generation, sales and advertising is reflected in other domain names he has registered and variously developed or retired over time, including among others <leadtutor.com>, <leadblueprint.com>, and <leadgeneration101.com>.
7 City Views Limited v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE, WIPO Case No. D2009-0643 ( hereinafter referred to as “Mummygold”); Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, WIPO Case No. D2009-0786 (hereinafter referred to as “Octogen”). The Respondent also refers to the panel decisions in Ville de Paris v. Jeff Walter, WIPO Case No. D2009-1278, and Jappy GmbH v. Satoshi Shimoshita, WIPO Case No. D2010-1001 (hereinafter referred to as “Jappy”).
8 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.7.
9 The Respondent alleges that the Complainant has committed fraud before the USPTO by failing to disclose the Respondent’s use of the disputed domain name. The Panel is inclined to view this issue as being outside the limited scope of the Policy, and in this regard further notes the representation in the Response that the Complainant will be called to answer for this at a time and forum of the Respondent’s choosing.
10 See WIPO Overview 2.0, paragraph 1.2.
11 “Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date [see further paragraph 1.4 above], when a domain name is registered by the respondent before the complainant's relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right.”