WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Toner Connect, L.L.C. v. Privacy Protect, LLC / Realogue Corporation

Case No. D2018-2829

1. The Parties

Complainant is Toner Connect, L.L.C. of Passaic, New Jersey, United States of America (“United States”), represented by Solace Law, United States.

Respondent is Privacy Protect, LLC of Burlington, Massachusetts, United States / Realogue Corporation of Panama City, Florida, United States, internally represented.

2. The Domain Name and Registrar

The disputed domain name <tonerconnect.com> is registered with BigRock Solutions Pvt Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2018. On December 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 13, 2018, 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 Complainant on December 27, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 1, 2019.

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 Respondent of the Complaint, and the proceedings commenced on January 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 31, 2019. The Response was filed with the Center on January 28, 2019.

The Center appointed Georges Nahitchevansky as the sole panelist in this matter on February 7, 2019. 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

Complainant, Toner Connect, L.L.C., is a company based in the State of New Jersey, United States. Complainant was incorporated in the State of New Jersey in June 2013 and its Chief Executive Officer is an individual by the name of James Cai. Complainant is in the business of buying new or unused toner cartridges from individuals, businesses, government agencies, schools and others. Complainant owns a United States trademark registration for the mark TONER CONNECT in connection with Complainant’s toner cartridge buyback services (Registration No. 5446924). Complainant’s application for TONER CONNECT was filed on August 14, 2017 (with a claim of first use in November 2011 and a first use in commerce date of June 12, 2013), and issued to registration on April 17, 2018. Complainant registered the domain name <tonerconnect.net> in June 2014 and has used that domain name in connection with a website that promotes Complainant’s services.

James Cai and Complainant were the listed owner of the disputed domain name from January through March 2013. During that time, the disputed domain name was used with a website promoting Complainant’s services. After March 19, 2013, Complainant and James Cai ceased to be listed as the owner of the disputed domain name and the disputed domain name was then registered to an individual by the name of Andre Schneider and the company DomCollect AG.

On or about August 18, 2017, the disputed domain name redirected to a website promoting a company in Birmingham, Alabama by the name of TonerBuyer.com, that also appears to be in the business of buying back toner cartridges.

Respondent, Realogue Corporation, is a company based in Panama City, Florida, United States. It was incorporated in the State of Florida in March 2018. The president and sole owner of Realogue Corporation is an individual by the name of Robert “Bob” Steffens. Respondent registered the disputed domain name on August 11, 2018, and has used the disputed domain name since that time in connection with a website that contains copies of customer complaints about Complainant along with responses by Complainant that first appeared on a Better Business Bureau website.

5. Parties’ Contentions

A. Complainant

Complainant contends that it is the owner of all rights in the mark TONER CONNECT which Complainant claims it has used since 2011 in connection with its toner cartridge buyback services. Complainant further contends that Respondent and Complainant are direct competitors as they are both in the business of buying back toner cartridges from individuals and businesses. Complainant asserts that the disputed domain name was used in August 2017 to redirect to a website for “www.tonerbuyer.com” that offered competing toner cartridge buyback services. Complainant also maintains that it previously owned the disputed domain name, but that it inadvertently expired on or about March 11, 2013.

Complainant argues that the disputed domain name is identical and confusingly similar to Complainant’s TONER CONNECT mark as it fully incorporates the TONER CONNECT mark. Complainant also argues that Respondent has used the disputed domain name to print negative reviews about Complainant and to confuse consumers into believing that the Better Business Bureau has taken control of the disputed domain name to warn consumers about Complainant’s business.

Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name as Respondent (i) is not known by the name or mark TONER CONNECT, (ii) is a direct competitor of Complainant, (iii) has not made a bona fide use of the disputed domain name to offer goods or services, (iv) has used the disputed domain name in bad faith to disrupt Complainant’s business for commercial gain by diverting consumers looking for Complainant to a website that tarnishes Complainant’s reputation.

Lastly, Complainant urges that Respondent, a direct competitor of Complainant, has registered and used the disputed domain name in bad faith as Respondent (i) has used and registered the disputed domain name to disrupt Complainant’s business and tarnish Complainant’s reputation, (ii) has used the disputed domain name with a webpage that falsely appears to be an official Better Business Bureau customer complaint alert regarding Complainant’s business, (iii) has used the disputed domain name in violation of the BigRock Solutions Pvt Ltd. Domain Registration Agreement, and (iv) sough to hide its identity using a privacy service.

B. Respondent

Respondent denies Complainant’s contentions. Respondent contends that it registered the disputed domain name on August 11, 2018 and, as such, is not responsible for any prior use of the disputed domain name by any other parties. Respondent also maintains that it does not conduct and is not affiliated with any toner resale business or other business related to Complainant’s business model. In that regard, Respondent asserts that it receives no compensation from any third party for its use of the disputed domain name, and that it has never provided links or redirects to any third party competitor of Complainant. Respondent also maintains that it does not offer any products for sale through the website at the disputed domain name and does not collect any information from any visitor of the website at the disputed domain name. Respondent asserts that its use of the disputed domain name has at all times been in good faith with a noncommercial, not-for-profit website.

Respondent notes that Complainant owned the disputed domain name from January through March 2013 and argues that Complainant either abandoned or sold the disputed domain name at that time. Respondent maintains that there have been seven previous owners of the disputed domain name before Respondent acquired the name in August 2018. Based on such change of ownership, Respondent contends that it has no responsibility for the prior use of the disputed domain name in August 2017 with a competing website also offering the buyback of toner cartridges.

Respondent argues that Complainant’s rights in the TONER CONNECT mark are limited to a buyback service for toner cartridges. As such, Respondent contends that because it does not conduct and is not affiliated with any toner buyback business there can be no infringement of Complainant’s rights in the TONER CONNECT mark.

Respondent asserts that it has a legitimate interest in the disputed domain name because Complainant voluntary sold or abandoned the disputed domain name in March 2013. Respondent maintains that Complainant willfully gave up its rights in the disputed domain name at that time and cannot now attempt to regain the disputed domain name. Respondent also contends that it has only used the disputed domain name for the fair use purpose of legitimately republishing publicly available information concerning customer complainants filed with the United States Better Business Bureau. Respondent emphasizes that the disputed domain name (i) has not been used for the purpose of selling toner cartridge buyback services or any other products or services, (ii) has not been used to redirect web traffic to any competitor of Complainant, and (iii) has not been offered for sale.

Finally, Respondent contends that based on the arguments that is has already provided, Respondent cannot be found to have registered or used the disputed domain name in bad faith. Respondent also contends that Complainant has engaged in reverse domain name hijacking, particularly as Complainant previously sold or abandoned its rights to the disputed domain name.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:

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

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and

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

A. Identical or Confusingly Similar

Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Complainant has provided evidence that it owns a trademark registration for the TONER CONNECT mark in connection with its services. Complainant has also submitted evidence that it owns and has used the domain name <tonerconnect.net> in connection with a website branded as TONER CONNECT well before Respondent registered the disputed domain name.

With Complainant’s rights in the TONER CONNECT mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain “.com”) is identical or confusingly similar with Complainant’s mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold.

In the instant proceeding, the disputed domain name is identical to Complainant’s TONER CONNECT mark as it consists solely of the TONER CONNECT mark with the generic Top-Level Domain “.com”. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant’s TONER CONNECT mark and in showing that the disputed domain name is identical or confusingly similar to that trademark.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.

The evidence before the Panel shows that the disputed domain name is currently being used in connection with a website that copies consumer complaints regarding Complainant that appeared on a website for the Better Business Bureau. The evidence also shows that the disputed domain name was used since at least August 2017, if not earlier, to redirect web traffic to a website for a company in Birmingham, Alabama using the name “TonerBuyer.com”, a direct competitor of Complainant that also offers toner cartridge buyback services. Respondent, however, maintains that it has no connection to the August 2017 use of the disputed domain name, as it registered the disputed domain name in August 2018. Respondent argues that because it has only made a noncommercial use of the disputed domain name to republish consumer complaints and responses to such from Complainant, Respondent is making a fair use of the disputed domain name.

In support of Respondent’s contentions, Respondent has provided portions of a report it obtained from “www.domaintools.com” (“DomainTools.com”), an online archival service, regarding the disputed domain name. The report, according to Respondent, establishes that Complainant sold or abandoned the disputed domain name in March 2013, that there were other parties that owned the disputed domain name at various points after March 2013, and that Respondent was not the listed registrant of the disputed domain name until August 11, 2018. Notably, though, the pages of the report submitted by Respondent contain no WhoIs records for the disputed domain name for the period after June 12, 2014, until August 10, 2018. Respondent has simply included a WhoIs record from June 12, 2014, that shows that the disputed domain name was owned by an individual by the name of Hassanain R, Net Site and an August 10, 2018, WhoIs record showing an entity by the name of Copier Solutions Corp. as the last owner of the disputed domain name before Respondent. Given Respondent’s claim and the gap in the archival ownership records for the disputed domain name, the Panel in its discretion under its general powers pursuant to paragraphs 10 and 12 of the UDRP Rules has for the benefit of the Parties reviewed archival WhoIs records for the disputed domain name that are available through Domaintools.com. WIPO Overview 3.0 at section 4.8.

What the Domaintools.com archival WhoIs records show is a somewhat different story from the one portrayed by Respondent. In particular, the Panel’s review of the available DomainTools.com WhoIs records for the disputed domain name reveals that a number of records that were likely in the DomainTools.com report for the gap period noted above have not been submitted by Respondent. While this may have been an oversight, the nature and content of the records suggests otherwise. What the archival WhoIs records show is that the disputed domain name was registered in the name of Bob Steffens, the current president of Respondent, in or about September 2016, and then was placed under the name of Bob Steffens and Copier Solutions Corp. from at least April 2017 through May 22, 2018, when the disputed domain name was listed for a short time under a privacy service. The disputed domain name, however, was still in the name of Copier Solutions Corp on August 10, 2018 and then on August 11, 2018, moved over to Respondent, a company owned and controlled by Bob Steffens.

Thus, contrary to what Respondent maintains in its Response (which was filed by Mr. Steffens), the disputed domain name while not technically registered under Respondent’s name in August 2017, was owned by and under the control of Mr. Steffens, the president and apparent sole owner of Respondent. To be sure, Mr. Steffens appears to be the actual or beneficial owner of the disputed domain name at all relevant times. Mr. Steffens owned and controlled the disputed domain name from September 2016 through August 10, 2018. On August 11, 2018, Mr. Steffens simply moved the disputed domain name from one company he controls to Respondent, a company he had incorporated in March 2018 and which he also controls.

The archival WhoIs records and evidence submitted further undermine Respondent’s claim that it had no involvement in the use of the disputed domain name in August 2017 to redirect to a web page for the competing toner cartridge buyback service, TonerBuyer.com. The August 2017 archival web page submitted by Complainant that shows the redirect to TonerBuyer.com features an address for the TonerBuyer.com company in Birmingham, Alabama. That address is the exact address used by Mr. Steffens and his Copier Solutions Corp in the WhoIs records from September 2016 through August 10, 2018 for the disputed domain name. In addition, a review of the DomainTools.com WhoIs records for <tonerbuyer.com> in or about August 2017 similarly shows that Mr. Steffens and Copier Solutions Corp owned the <tonerbuyer.com> domain name at that time.

What can be gleaned from the evidence before the Panel is that Mr. Steffens owns at least one business that directly competes with Complainant, and has used the disputed domain name both to redirect web traffic likely searching for Complainant to his website offering competing toner cartridge buyback services and, more recently, to a website whose purpose is to harm or negatively impact Complainant’s reputation. Given that Mr. Steffens is a direct competitor of Complainant and has used different corporate identities to shield his activities, ownership and use of the disputed domain name, it is more likely than not that Mr. Steffens is not using the disputed domain name for a noncommercial fair use purpose, but to gain a competitive advantage. Simply put, this is not a case of fair use, but a blatant attempt to use the trademark of a competitor to gain a commercial advantage.

The Panel want to emphasize that because the disputed domain name is identical to Complainant’s TONER CONNECT mark, consumers looking for Complainant’s toner buyback services are likely to believe that the disputed domain name is connected to Complainant. The fact that Mr. Steffens, the president of Respondent, registered and used the disputed domain name to gain a commercial advantage, makes it clear that Respondent was likely well aware that consumers would see the disputed domain name and associate it with Complainant. Such use of the disputed domain name by Respondent through its president to redirect web users to a competing website and/or to a page meant to harm Complainant’s reputation does not support a claim to rights or legitimate interests. WIPO Overview 3.0 at section 2.5.3.

As Complainant has established with sufficient evidence that it owns rights in the TONER CONNECT mark, and given Respondent’s above noted actions, the Panel concludes that Respondent does not have a right or legitimate interest in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.

C. Registered and Used in Bad Faith

In view of Respondent’s actions as noted above, it is not difficult for the Panel to infer that Respondent’s use of the disputed domain name which consists of Complainant’s TONER CONNECT mark to attract and redirect consumers to Respondent’s competing website, and then to a website with complaints about Complainant, is being done opportunistically and in bad faith. The remaining question is whether the conjunctive requirement of bad faith registration has been established by Complainant as to the disputed domain name.

Here, Respondent claims to have registered the disputed domain name in August 2018. But as shown above, Respondent’s president, Bob Steffens, registered the disputed domain name in September 2016. The question then is when did Complainant develop rights in the mark TONER CONNECT. While Complainant claims to have rights in TONER CONNECT going back to 2011, the evidence before the Panel does not support the claim. Complainant has provided no evidence showing the use of TONER CONNECT in 2011. As to whether Complainant had rights in March 2013 in the TONER CONNECT mark, Respondent asserts that Complainant abandoned its rights in TONER CONNECT when Complainant’s principal James Cai sold or abandoned the disputed domain name in March 2013. While the sale of the disputed domain name might put in question Complainant’s rights in TONER CONNECT in March 2013 or earlier, it certainly has no impact on any post-March 2013 uses of TONER CONNECT by Complainant. Put another way, Complainant could have simply stopped doing business under the TONER CONNECT mark in March 2013 and then started using and developing rights in the TONER CONNECT mark again at some point thereafter.

The evidence before the Panel in fact shows that Complainant started using the mark TONER CONNECT later in 2013 in connection with Complainant’s toner cartridge buyback services. Indeed, Complainant’s United States trademark registration for TONER CONNECT shows a first use date in commerce of June 12, 2013. The evidence also shows that Complainant registered and started using the domain name <tonerconnect.net> in 2014 in connection with toner cartridge buyback services. Simply put, Complainant has established that it had some rights in the TONER CONNECT mark in connection with its toner cartridge buyback services before Mr. Steffens registered the disputed domain name in September 2016 or when it was shown as registered to Respondent on August 11, 2018.

Given that the evidence submitted shows that Respondent’s sole owner and president is a direct competitor of Complainant, it is highly likely that Mr. Steffens knowingly registered or acquired the disputed domain name based on the TONER CONNECT mark and then started using the disputed domain name to gain a competitive advantage over Complainant. Moreover, because Mr. Steffens has moved the disputed domain name around to different parties that he controls, and appears to have attempted to conceal that fact from the Panel by claiming that Respondent is unrelated to any past actions which involved the disputed domain name, it seems more likely than not that the disputed domain name was opportunistically registered and/or acquired by Mr. Steffens for the purpose of either taking advantage of the goodwill associated with Complainant’s TONER CONNECT mark or to harm Complainant’s business.

That Mr. Steffens is not himself the named Respondent does not change the result here. Mr. Steffens registered and used the disputed domain name in bad faith for some period of time after September 2016, and in particular in August 2017, and then in August 2018 moved the disputed domain name to a new entity he created to obfuscate the past in what appears to be an attempt to shield his illegitimate conduct of using the disputed domain name to redirect web traffic to a webpage for his competing business. The claimed fair use of the disputed domain name by Respondent is essentially a pretext when seen in the broader context of when Mr. Steffens, the actual or beneficial owner of the disputed domain name, registered the disputed domain name and thereafter used it for his commercial advantage. See WIPO Overview 3.0 at Section 4.4.6 and cases cited therein.

Accordingly, the Panel finds that Complainant succeeds under this element of the Policy.

D. Reverse Domain Name Hijacking

The Panel notes Respondent’s request for a finding of reverse domain name hijacking. However, in the context of this case and taking into account the above findings, the Panel finds no basis to support a finding of reverse domain name hijacking.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <tonerconnect.com> be transferred to Complainant.

Georges Nahitchevansky
Sole Panelist
Date: February 21, 2019