WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bellhops, Inc. v. WhoisAgent, Whois Privacy Protection Services, Inc. / Domain Vault, Domain Vault LLC

Case No. D2016-0756

1. The Parties

The Complainant is Bellhops, Inc. of Chattanooga, Tennessee, United States of America, represented by Maynard, Cooper & Gale, P.C., United States of America.

The Respondent is WhoisAgent, Whois Privacy Protection Services, Inc. of Kirkland, Washington, United States of America / Domain Vault, Domain Vault LLC of Dallas, Texas, United States of America.

2. The Domain Name and Registrar

The disputed domain name <bellhops.com> is registered with Name.com, Inc. (Name.com LLC) (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 15, 2016. On April 18, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 19, 2016, 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. The Center sent an email communication to the Complainant on April 22, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 25, 2016.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 6, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 26, 2016. A submission filed by NovoPoint LLC was received by the Center on May 26, 2016.

The Center appointed Angela Fox as the sole panelist in this matter on June 8, 2016. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a Delaware company offering business services based in Chattanooga, Tennessee, doing business throughout the United States in the field of moving company services, including the moving and installation of furniture and office equipment for others. The Complainant was formed on or around January 30, 2013 and had begun trading by the beginning of April 2014, including through a website at "www.getbellhops.com". Its business since its inception has been carried out under the name and trademark BELLHOPS.

The Complainant is the proprietor of United States federal trademark registration No. 4747947 for BELLHOPS, filed on October 16, 2014 and registered on June 2, 2015 for "installation of furniture and office equipment, in Class 37" and "furniture moving; moving company services, in Class 39," details of which were exhibited to the Complaint. The Complainant claimed a first use date of April 1, 2014.

The disputed domain name was registered on December 29, 2000 and at the time the Complaint was filed it stood in the name of Whois Privacy Protection Service, Inc. ("the First Respondent"). Shortly after the Complaint was filed the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name informing that it was registered in the name of Domain Vault LLC ("the Second Respondent") and an Amended Complaint was filed by the Complainant to add Domain Vault LLC as a second Respondent (collectively, "the Respondents").

The disputed domain name has been in use for a holding page with pay-per-click links to third party websites under links with titles including "Bell Hop Job", "Bellhop at Amazon.com", "Bellhop – 70% Off" and several links to "Bellhops Moving Company". Currently the disputed domain name does not resolve to any active website.

It is submitted that on or about April 4, 2016 the Complainant communicated to the First Respondent its desire to purchase the disputed domain name. The First Respondent apparently replied offering the disputed domain name for sale for more than USD 1 million.

This administrative proceeding was filed on April 25, 2016.

5. Parties' Contentions

A. Complainant

The Complainant submits that the disputed domain name is identical or confusingly similar to its trademark BELLHOPS in which it claims registered trademark and common law rights arising through use since April 2014.

The Complainant further submits that the Respondents have no rights or legitimate interests in the disputed domain name, which the Complainant submits is for use in respect of a page hosting pay-per-click links including to competitors of the Complainant.

The Complainant further contends that the disputed domain name was registered and has been used by the Respondents in bad faith, noting that numerous UDRP panels have made findings against the Respondents, which the Complainant submits is evidence of a pattern of cybersquatting behavior. The Complainant further submits that the Respondents' bad faith is manifested by their use of the disputed domain name to provide what appear to be pay-per-click links to competitors of the Complainant in the field of moving services. The Complainant adds that the Respondents' offer to sell the disputed domain name on or about April 4, 2016 for more than USD 1million further evidences their bad faith, since that sum substantially exceeds any expense the Respondents are likely to have incurred to register and use the disputed domain name. Finally, the Complainant contends that the Respondents' bad faith is demonstrated by their use of "robot.txt" to prevent access to historical screenshots of their website through the Wayback Machine at "www.archive.org".

B. Respondents

The Respondents have not filed a Response. However, a submission was filed, not by either of the Respondents, but by a third entity, NovoPoint LLC ("NovoPoint"), of Cook Islands.

NovoPoint filed an elaborate and somewhat confusing explanation for why it was the proper respondent. Its explanation appears to be, in substance, that it was the actual owner of the disputed domain name, but that its assets were put into receivership in 2010 and then subsequently transferred to an individual, who absconded with the assets, including the disputed domain name. The disputed domain name was subsequently transferred to the Second Respondent, Domain Vault LLC. NovoPoint says that it has filed an action in the Texas District Court ("the Collin County Action") against the individual, her attorney and others, and that the Registrar has locked the disputed domain name pending the outcome of the Collin County Action. NovoPoint says that the Second Respondent, Domain Vault LLC, is "an imposter without legal rights", and that NovoPoint is the correct respondent because it is "the true and beneficial owner" of the disputed domain name.

NovoPoint adds that it only became aware of this UDRP proceeding because it was notified by the Registrar.

NovoPoint indicated that it could provide copies of the receivership actions and of the Collin County Action if requested. In the Panel's view, documents or extracts from documents proving NovoPoint's claim to ownership of the disputed domain name should have been filed at the outset, without the need for the Panel to request them - and indeed, it is unclear whether the documents in question would provide that proof. In the absence of such evidence, NovoPoint's claim to ownership is no more than a bare assertion. That the UDRP procedure is intended to be a relatively simple, streamlined procedure does not excuse the parties from the need to provide panels with the essential information needed to assess the merits of any claims asserted. That a panel may ask the parties to supply information during a proceeding is not really an answer, since to do so necessarily lengthens the proceedings.

For reasons that will become clear below, nothing turns on NovoPoint's failure to prove its claim to ownership. However, the lack of evidence of the claim to beneficial ownership is troubling and would have been an issue had the Complaint been more clearly meritorious.

In its submission, Novopoint submits that the disputed domain name is comprised of a common English word which Novopoint claims was being used descriptively on a pay-per-click links website to host links to sites relating to bellboys. NovoPoint claims that the links to "Bellhops Moving Company" are either broken, or connect to unrelated websites containing general news and links to subjects other than furniture or moving services. NovoPoint also notes that the Complainant's registration and use of the BELLHOPS trademark appears to have post-dated the disputed domain name. Moreover, the Complainant did not prove that BELLHOPS had acquired a secondary meaning such that it was known as denoting the Complainant's services. NovoPoint denies bad faith and submits that there is no evidence that the disputed domain name targeted the Complainant's trademark. NovoPoint (somewhat self-servingly) claims that any alleged "pattern" of decisions against the actual Respondents was not relevant because they were mere privacy shields.

Finally, NovoPoint is coy about the alleged offer to sell the disputed domain name to the Complainant for more than USD 1million. It neither admits nor denies making that offer, but states that the disputed domain name is not for sale and that the Complainant has not provided further information or any evidence of communications between the Complainant and the Respondents other than an affidavit by the Complainant's CEO. NovoPoint also argues that the Respondents would not have the requisite authority to sell the disputed domain name. NovoPoint also argues that, even if it had made the offer to sell the disputed domain name, it would have been in response to the Complainant's offer to purchase and therefore would have been entirely legitimate.

Admissibility of NovoPoint's Submission

There is insufficient information or material to allow the Panel to find that NovoPoint is the true owner of the disputed domain name. However, the Complainant has not objected to NovoPoint's submission, and the Panel has decided to take it into account under its general powers for the conduct of the administrative proceeding under paragraph 10 of the Rules.

For the reasons given below, though, NovoPoint's submissions have not been determinative in this case.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) the respondent has no rights or legitimate interests in the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.

A. Identical or Confusingly Similar

The Complainant has shown that it has registered trademark rights in BELLHOPS in the United States.

The disputed domain name is identical to the Complainant's registered trademark, differing only in the addition of the non-distinctive domain name suffix ".com".

The Complainant succeeds under the first element of the Policy.

B. Rights or Legitimate Interests

The Complainant must also show that the Respondents have no rights or legitimate interests in the disputed domain name under the Policy.

Under paragraph 4(c)(i) of the Policy, a panel shall find that a respondent has demonstrated rights or legitimate interests where the panel finds that, based on an evaluation of all the evidence presented, before any notice to the respondent of the dispute, the respondent was using, or making 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.

In this case, the Complainant appears to have learned about the disputed domain name in or around the beginning of April 2014. Annexed to the Complaint were screenshots showing that the disputed domain name was in use at that time to host pay-per-click links to a range of third-party websites, some of which appeared to relate to the dictionary meaning of "bellhop", but some of which referred to "Bellhops Moving Company", in which "Bellhops" was used in a trademark manner in relation to services identical to those of the Complainant. The Respondents have not provided any arguments or evidence on this issue, but NovoPoint claims that the links from those references were harmless because they did not in fact link to websites relating to moving. However, the attractiveness of those links to a visitor would have been based on the plain meaning of the words, which clearly indicated that the links were to a website providing information on "BELLHOPS"-branded moving services. The value of the disputed domain name for the provision of such links is therefore at least partly bound up with the trademark meaning of BELLHOPS in relation to moving services. The word "bellhops" has no direct descriptive meaning in relation to moving services; rather, it denotes a hotel employee who inter alia carries luggage to rooms.

Paragraph 2.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") states:

"Panels have generally recognized that use of a domain name to post parking and landing pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a 'bona fide offering of goods or services' or from 'legitimate noncommercial or fair use' of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder. As an example of such permissible use, where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP, provided there is no capitalization on trademark value (a result that PPC page operators can achieve by suppressing PPC advertising related to the trademark value of the word or phrase). By contrast, where such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion."

In this case, there is a mix of both descriptive and trademark-related links on the website linked to the disputed domain name. The Panel recognizes that the links appearing on such pages are typically automatically generated by software and that the contents may change depending on factors such as the geographical location of the user's computer and any "cookies" present on it (see, inter alia, Nedbank Limited v. Gregg Ostrick, GNO Ltd., WIPO Case No. D2016-0515). However, it is open to domain name registrants to block terms from the automatically generated links where it becomes apparent that trademark terms are appearing. In this case, NovoPoint acknowledges that trademark references appear, but takes the view that they are not of sufficient importance to detract from its legitimate interest in the disputed domain name as a descriptive word. Neither NovoPoint nor the Respondents have made any effort, or if they have, they do not say so, to block trademark terms from appearing as links on the website under the disputed domain name.

In the Panel's view, this is a case where the disputed domain name was made up of a word with both descriptive and trademark value. The appearance of multiple links to "Bellhops Moving Company" on the linked website demonstrates that the trademark value was not negligible as suggested by NovoPoint. Nor does "Bellhops" have a direct descriptive meaning in relation to moving services that would render those usages also descriptive. In line with the WIPO Overview 2.0, therefore, the Panel considers that on balance such use of the disputed domain name to host pay-per-click links does not confer rights or legitimate interests in the disputed domain name on the Respondents, nor indeed on NovoPoint.

The Complainant therefore succeeds under the second element of the Policy.

C. Registered and Used in Bad Faith

Difficulties with the Complainant's case emerge, however, in relation to bad faith.

The disputed domain name was registered in 2000, some 13 years before the Complainant registered and began to trade under its BELLHOPS trademark. There is no evidence that in registering the disputed domain name the Respondents (and/or NovoPoint) targeted the Complainant's trademark. The disputed domain name corresponds to a common English word, and indeed at least some of the links on the website page linked to it related to the descriptive English meaning. There is no evidence that in registering the disputed domain name, the Respondents, or NovoPoint, targeted the Complainant. The Complainant did not exist at that time to be targeted.

Of course, a transfer of a domain name can amount to a new registration for the purpose of paragraph 4(a)(iii) of the Policy. In this case, it is not clear when the disputed domain name was transferred to the Second Respondent, Domain Vaults LLC. NovoPoint claims it was on or about March 12, 2014. The Complainant claims it was after the Complaint was filed; the Registrar, however, for some reason, could not confirm either date. NovoPoint disputes the propriety of that transfer, but as noted no evidence was filed by NovoPoint to provide any basis, beyond mere assertion, to prove that NovoPoint has any rights in the disputed domain name. In any event, the Panel finds that there is insufficient evidence to prove targeting of the Complainant around the time of the claimed transfer/ the Complainant's claimed first use of its mark.

Since the time the Complaint was submitted to the Panel for a decision it is no longer possible to access any website through the disputed domain name, so it is impossible to say whether, since the transfer, links based on the trademark value of BELLHOPS have appeared. Had they, there may have been evidence that there had effectively been a new registration that targeted the Complainant, in light of the links to "Bellhops Moving Services". Even then, though, the Complainant did not file evidence as to the overall scale and profile of its business under BELLHOPS that would have assisted the Panel in determining whether the Second Respondent was likely to have been aware of and to have targeted the Complainant.

In any event, though, there is no evidence that the disputed domain name has been used in a misleading manner since the transfer.

Moreover, there is insufficient evidence on which to find, in the circumstances, that the disputed domain name was registered or acquired with the intention of selling it to the trademark owner or a competitor for costs in excess of out of pocket registration expenses. The alleged offer to sell for over USD1million would certainly be in excess of those charges, but the disputed domain name could not have been registered in 2000 with a sale to the Complainant in mind, since the Complainant did not then exist. Moreover, there is no evidence that the offer to transfer the domain name for that sum was made after the disputed domain name was transferred to Domain Vaults LLC. Indeed, the facts as presented suggest that it took place before such a transfer, although it is difficult to say with certainty given that no evidence of the transfer date was filed.

In the absence of other factors demonstrating targeting, the Respondents' use of "robot.txt" to prevent access to historical screenshots of their website through the Wayback Machine at "www.archive.org" is not by itself indicative of bad faith.

While the Panel has doubts about many of NovoPoint's assertions and the Respondents have not submitted a response, the Panel has concluded that there is insufficient evidence to allow a finding that the disputed domain name was registered or used in bad faith. There is no evidence that would allow the Panel to infer that the Respondents or NovoPoint were aware of, and were targeting, the Complainant prior to acquisition of the disputed domain name. As noted, however, the position might be different in the future if, following the recent transfer, the disputed domain name were to host links based on the trademark meaning of the Complainant's mark in a way that supported an assertion that the Complainant was being targeted.

The Panel finds that the Complainant has not made out its case under the third element of the Policy.

7. Decision

For the foregoing reasons, the Complaint is denied.

Angela Fox
Sole Panelist
Date: July 4, 2016