Rayfil Wong v. Domain Admin / HugeDomains.com
Claim Number: FA1908001856257
Complainant is Rayfil Wong (“Complainant”), represented by Rayfil Wong, California, USA. Respondent is Domain Admin / HugeDomains.com (“Respondent”), represented by Megan R. Long, Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <professorsavings.com>, registered with GoDaddy.com, LLC.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Hon. Carolyn Marks Johnson (Ret.), David H. Bernstein and Dennis A. Foster (Chair) as Panelists.
Complainant submitted a Complaint to the Forum electronically on August 8, 2019; the Forum received payment on August 8, 2019.
On August 8, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <professorsavings.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 13, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 3, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@professorsavings.com. Also on August 13, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on August 30, 2019.
On September 9, 2019, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed Hon. Carolyn Marks Johnson (Ret.), David H. Bernstein and Dennis A. Foster (Chair) as Panelists.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
- Complainant operates an online service that teaches financial literacy to Americans through its online business platform and educational videos on YouTube. Complainant has acquired common law rights in the PROFESSOR SAVINGS mark through its continuous use of the mark from June 19, 2013 for a business model that has generated advertising revenue in connection with YouTube, Facebook and Instagram accounts.
- The disputed domain name, <professorsavings.com>, is identical to Complainant’s mark.
- Respondent has no rights or legitimate interests in the disputed domain name. Respondent is a premium domain name reseller that acquired the disputed domain name for cybersquatting and illegitimate resale purposes. Complainant originally registered the disputed domain name in 2013 and used it for business operations until Complainant's registration license expired on June 18, 2019.
- Respondent registered and uses the disputed domain name in bad faith. Respondent purchased the disputed domain name for the sole purpose of reselling it for a profit.
B. Respondent
- The disputed domain name is not identical or confusingly similar to a trademark owned by Complainant. Complainant has not registered the mark, PROFESSOR SAVINGS, and provided inadequate evidence that it possesses common law rights in that mark. Complainant's past ownership of the disputed domain name, if true, does not mean that Complainant has rights in that name forever.
- Respondent has a legitimate interest in the disputed domain name, as Respondent is using the name in a bona fide offering of goods or services. Respondent has included the disputed domain name in a large portfolio of generic two-word domain names that Respondent legitimately resells to the public. Respondent has many domain names that begin with the first word "professor," or end with the second word, "savings."
- The disputed domain name was not registered and is not being used in bad faith. Without any knowledge of possible trademark rights corresponding to the disputed domain name, Respondent registered and is using the name for resale purposes in connection with Respondent's legitimate business.
- Complainant should be subject to a finding of Reverse Domain Name Hijacking because the Complaint was brought in bad faith.
Complainant has been engaged in online offerings to the public regarding financial advice. Complainant conducted operations through the disputed domain name, <professorsavings.com>, which Complainant owned from 2013 to 2019. Complainant never registered the mark PROFESSOR SAVINGS with any trademark authority.
Respondent owns the disputed domain name, which Respondent registered on July 24, 2019. Respondent placed that name in a portfolio of domain names that Respondent holds for resale to the public.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Simple visual inspection allows the Panel to determine that the disputed domain name, <professorsavings.com>, is identical to the claimed mark PROFESSOR SAVINGS.
It is not clear to the Panel that Complainant has sufficient rights in the PROFESSOR SAVINGS mark to satisfy the requirements of Policy ¶ 4(a)(i). Complainant has not registered the claimed mark with any competent trademark authority. In the alternative, Complainant argues that he has acquired common law rights in the mark through its continuous use since 2013 in connection with various online applications on YouTube, Facebook and Instagram which have involved some advertising support. But significantly, Complainant has failed to quantify in any meaningful manner the scope of online viewers, the amount of revenue obtained, the extent of promotional advertising, the degree of media awareness/comment, or other indicia typically cited in measuring whether a mark has garnered the secondary meaning required to confer common law rights. This failure is especially noteworthy in this case as the mark in question, PROFESSOR SAVINGS, appears to be descriptive and not suggestive, arbitrary or fanciful, which means that Complainant must show secondary meaning in order to acquire distinctiveness and common law trademark rights. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.3; see also Regenxbio Inc. v. Solomon, FA 1819239 (Forum Jan. 14, 2019) ("...absent supporting evidence of sales figures or extent of use, a complainant may not sufficiently allege common law rights in a mark under the Policy.”); see also CW & Associates. v. Pitchford, FA 1619758 (Forum June 29, 2015) ("Mere use of social media alone is not acceptable proof of secondary meaning, a/k/a/ acquired distinctiveness, in the mind of the general public.").
However, given its findings below, the Panel declines to reach a conclusion as to whether Complainant has sufficient rights in the PROFESSOR SAVINGS mark for the purposes of Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must prove that Respondent has no rights or legitimate interests in the disputed domain name.
However, in making its case, Complainant concedes that Respondent is "operating as a premium reseller of domain names." Many previous UDRP panels have held that that kind of activity is a legitimate business which can give rise to legitimate interests in domain names composed of generic or common terms as long as the domain name was registered and used based on its descriptive meaning, and not based on its value as a trademark. See Virgin Enterprises Limited v. Hugedomains.com, D2017-1961 (Wipo Dec. 11, 2017) ("The Respondent is a domainer which regularly registers domain names that include generic words for the purposes of selling them. Such business activities can be legitimate and are not in themselves a breach of the Policy, so long as they do not encroach on third parties' trade mark rights."); see also Clark Equipment Company v. HugeDomains.com, FA 1634156 (Forum Oct. 2, 2015).
As noted above, the Panel finds that the disputed domain name is descriptive, a combination of two generic terms, "professor" and "savings." As such, the disputed domain name fits well within Respondent's business offerings. Moreover, as Complainant's rights, if any, in the PROFESSOR SAVINGS mark are not clear-cut, the Panel does not see a clear encroachment of trademark rights by Respondent.
In viewing a prior UDRP case, Alphalogix, Inc. v. DNS Services., FA 491557 (Forum July 26, 2005), the Panel finds some of the salient elements involved in this case. The respondent was "in the business of creating and supplying names for new entities, including acquiring expired domain names." The complainant, as in this case, had owned the disputed domain name, but allowed (inadvertently) the registration to lapse. In that case, the panel did rule that the complainant had common law rights in the mark in question, yet still found that the respondent had little reason to be aware of those common law rights -- mirroring the circumstances in this case -- and concluded that the respondent did indeed have rights and legitimate interests in the disputed domain name. The Panel reaches the same conclusion in this case.
In accordance with the foregoing, the Panel finds that Complainant has failed to prove that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant contends that Respondent registered and is using the disputed domain name in bad faith because Respondent's actions with respect to the disputed domain name are "for the sole purpose of reselling it for a profit." Presumably, Complainant is referring to the bad faith circumstance set forth in Policy ¶ 4(b)(i), but that circumstance requires that such a sale be directed specifically at Complainant or its competitors. However, Complainant has presented no evidence that Respondent targeted Complainant or its competitors for sale of the disputed domain name.
Respondent does not deny that it wishes to resell the disputed domain name, likely for a profit. That is its business model: acquire dictionary-term domain names for resale to the highest bidder. Respondent has presented the Panel with dozens of two-common-word domain names that contain either "professor" or "savings," which Respondent intends to market in this manner. Other UDRP panels have found that this type of business model does not represent bad faith registration and use of domain names if the entity conducting the business is reasonably unaware of any rights attached to the names and cannot be concluded to have targeted the respective rights holders. Given the vague, at best, common law rights that Complainant might have in the disputed domain name, the Panel finds that Respondent was likely unaware of any rights attached to the disputed domain name and cannot conclude that Respondent targeted Complainant in any way. Thus, the Panel finds that Complainant has not sustained its burden of proving that the disputed domain name was registered and is being used in bad faith. See Virgin Enterprises Limited v. Hugedomains.com, D2017-1961, supra; see also Technologies Sensopia Inc. v. BLUE NOVA INC., FA 1725217 (Forum June 9, 2017) ("As to bad faith use, the resale of descriptive, generic domain names does not prove bad faith. So long as there is no intended targeting of the mark owner, or some level of abuse directed specifically toward that victim, bad faith cannot be found from an offer to sell such a domain name."); see also Alphalogix, Inc. v. DNS Services, supra.
As a result, the Panel finds that the disputed domain name was not registered and is not being used in bad faith.
Reverse Domain Name Hijacking
Respondent has requested that the Panel issue a ruling of Reverse Domain Name Hijacking in this case. In order to do that, the Panel must find that Complainant brought the case in bad faith and engaged in an abuse of this administrative proceeding. See WIPO Overview 3.0, section 4.16.
The Panel is unwilling to make such a finding. Although, as reasoned above, the Panel finds the Complaint to be exceedingly weak, the Panel believes that Complainant, in good faith, may have believed that he had sufficient rights in the PROFESSOR SAVINGS mark to initiate these proceedings.
Accordingly, the Panel does not issue a finding of Reverse Domain Name Hijacking.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <professorsavings.com> domain name REMAIN WITH Respondent.
Hon. Carolyn Marks Johnson (Ret.), Panelist
David H. Bernstein, Panelist
Dennis A. Foster, Chair
Dated: September 20, 2019
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