Instant Domain Search, Inc. v. Mark Cambridge / Thrive Travel Services Ltd.
Claim Number: FA2003001889089
Complainant is Instant Domain Search, Inc. (“Complainant”), represented by Lewis & Lin, LLC, New York, USA. Respondent is Mark Cambridge / Thrive Travel Services Ltd. (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <instantdomains.com> and <instantdomain.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 20, 2020. The Forum received payment on March 24, 2020.
On March 23, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <instantdomains.com> and <instantdomain.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 25, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 14, 2020 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@instantdomains.com, postmaster@instantdomain.com. Also on March 25, 2020, 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 April 10, 2020.
On April 16, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury as Panelist.
By Procedural Order 1 dated April 20, 2020, detailed below, made in accordance with the Rules, paragraph 12, the Administrative Panel (the "Panel") sought further information from Complainant within 5 business days and requested Respondent to provide any reply to Complainant’s response within a further 5 business days. The due date for a decision was extended to May 15, 2020.
Complainant responded to the Procedural Order on April 22, 2020. Respondent did not reply to Complainant’s response.
Having reviewed the communications records, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant, Instant Domain Search, Inc., is a Canadian company that provides online domain name services. Complainant has rights in the INSTANT DOMAIN SEARCH mark through its trademark registration with the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA1005883, registered Oct. 1, 2018). It also has common law rights in that mark dating from 2005.
Each of the domain names is identical or confusingly similar to Complainant’s INSTANT DOMAIN SEARCH mark.
Respondent has no rights or legitimate interests in the domain names. Respondent is not licensed or authorized to use Complainant’s mark and is not commonly known by either of the domain names. Respondent does not use the domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the domain names to pass off as Complainant and offer services that compete with Complainant.
Respondent registered and uses the domain names in bad faith. Respondent disrupts Complainant’s business for Respondent’s own commercial gain by using the domain names to pass off as Complainant and offer competing services. Respondent had actual knowledge of Complainant’s rights in the INSTANT DOMAIN SEARCH mark at the time of registration based on Respondent’s use of the domain names.
B. Respondent
Respondent, Mark Cambridge / Thrive Travel Services, Ltd., operates a domain purchasing and resale business. Respondent is not the current owner of the domain names because it sold them to a third party on July 1, 2019.
Complainant does not have rights in the INSTANT DOMAIN SEARCH mark because “instant” and “domain” are generic terms and Complainant cannot maintain exclusive rights over generic terms.
Respondent has rights and legitimate interests in the domain names. Respondent is not using the domain names’ resolving websites to pass off as Complainant because they do not resolve to a website; rather, they redirect to a third-party website and therefore cannot disrupt Complainant’s business. Respondent is not attempting to disrupt Complainant’s business. Respondent does not operate a website or email using the domain names and has never made contact with Complainant’s customers.
Respondent is the owner of <domainify.com> which does not compete with Complainant. Respondent has not attempted to direct Internet users from Complainant to the domain names.
Respondent will entertain an offer from Complainant to purchase the domain names at market value. Respondent purchased the domain names when they became available in October 2018. Complainant could have purchased them at that time but chose not to do so. Complainant is using these proceedings to acquire the domain names for free without attempting to purchase them fairly. Complainant has not contacted Respondent to purchase the domain names.
Respondent does not use the domain names in bad faith. Complainant cannot prove that Respondent had actual knowledge of Complainant’s rights in the INSTANT DOMAIN SEARCH mark. Respondent purchased the domain names on October 10, 2018, before it was aware of Complainant’s website. Respondent had previously contacted Complainant only in regard to Complainant’s <instantdomainsearch.com> domain name.
The domain names were registered long before Respondent purchased them from the previous owner. Respondent is not using the domain names’ resolving websites to pass off as Complainant because the domain names do not resolve to a website; rather, they redirect to a third-party website.
Complainant has established all the elements entitling it to relief.
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.
Paragraph 1 of the Rules defines Respondent as “the holder of a domain-name registration against which a complaint is initiated”. This is clarified in Paragraph 1(d) of the Forum’s Supplemental Rules to the Policy to mean “the single person or entity listed in the registration information, as verified by the Registrar, at the time of commencement”, i.e. the commencement of a Mandatory Administrative Proceeding under Paragraph 4 of the Policy.
The Complaint was filed on March 20, 2020. The Registrar confirmed on March 23, 2020 that both domain names <instantdomains.com> and <instantdomain.com> are currently registered in the name of Mark Cambridge and that, in the case of the domain name <instantdomain.com>, Mark Cambridge’s organization is Thrive Travel Services Ltd. The proceeding commenced, in accordance with paragraph 4(f) of the Rules, on March 25, 2020, when the Forum notified Respondent of the Complaint.
The Complaint exhibits Companies House information naming Mr. Mark Richard Cambridge as a person with significant control of Thrive Travel Services Ltd.
These circumstances lead the Panel to conclude that Mark Cambridge / Thrive Travel Services Ltd. is the correct Respondent, notwithstanding any sale of the domain names to a third party prior to the commencement of this proceeding.
Complainant has produced evidence of Canadian registration No. TMA1005883 for the trademark INSTANT DOMAIN SEARCH, registered on October 1, 2018 and claiming use in Canada since October 17, 2005. Annexure 4 to the Amended Complaint shows that registration to be in the name of Hartshorne Software Inc., a company having the same address as Complainant. By Procedural Order 1 the Panel requested an explanation of this and any further evidence from Complainant to support its contention that it owns or can otherwise rely on the INSTANT DOMAIN SEARCH trademark to support the Complaint.
In response to Procedural Order 1, Complainant provided evidence that Hartshorne Software Inc. changed its name to Instant Domain Search, Inc. on January 29, 2020 with no change in ownership or control of the company; and that, in accordance with paragraph 41(1)(a) of the Trademarks Act, the Canadian Intellectual Property Office (“CIPO”) will amend the register to reflect a change in the name of a registered owner upon receipt of a written request, so long as the identity of the applicant has not changed.
The Panel is satisfied that, under its present and former name, Complainant has held Canadian registered trademark No. TMA1005883 INSTANT DOMAIN SEARCH since its registration on October 1, 2018 in Nice Class 35 for selling domain names and in Nice Class 45 for domain name registration; leasing of internet domain names; and registration of domain names for identification of users on a global computer network.
Although the mark consists of three generic words, this registration establishes Complainant’s rights in the mark for the purposes of Policy ¶4(a)(i). See The Toronto-Dominion Bank v. Reggie Rags, FA 1778853 (Forum Apr. 19, 2018) (“Registration of a mark with the CIPO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i).”).
Complainant’s claim that it also has common law rights in that mark dating from 2005 and Respondent’s objection that generic words cannot give rise to exclusivity are discussed in relation to elements (2) and (3). See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii).
Identical and/or Confusingly Similar
Complainant contends that both domain names are confusingly similar to the INSTANT DOMAIN SEARCH mark pursuant to paragraph 4(a)(i) of the Policy.
In determining confusing similarity, evidence of actual confusion is not required. The test is an objective one, confined to a comparison of the domain names and the trademark alone, independent of the products or services for which the domain names may be used, or other marketing and use factors usually considered in trademark infringement (see Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000‑1698; AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327).
Each of the Respondent’s <instantdomain.com> and <instantdomains.com> domain names includes the dominant part of the INSTANT DOMAIN SEARCH mark, namely the words INSTANT DOMAIN. The <instantdomains.com> domain name adds the letter “s”. In each case the “.com” gTLD may be disregarded.
The omission of the word “SEARCH” from Complainant’s mark and the addition of the letter “s” and the inconsequential gTLD do not sufficiently distinguish the domain names for the purposes of Policy ¶ 4(a)(i). See VNY Model Management, Inc. v. Lisa Katz / Domain Protection LLC, FA 1625115 (Forum Aug. 17, 2015) (finding that Respondent’s <vnymodels.com> domain name is confusingly similar to the VNY MODEL MANAGEMENT mark under Policy ¶ 4(a)(i).).
The Panel finds each of the domain names to be confusingly similar to Complainant’s INSTANT DOMAIN SEARCH mark under Policy ¶ 4(a)(i).
Complainant has established this element.
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in a disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Complainant’s assertions constitute a prima facie case that Respondent lacks rights and legitimate interests in the domain names under Policy ¶ 4(a)(ii). Accordingly, the burden shifts to Respondent to show it does have rights or legitimate interests. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014).
Respondent argues that Complainant does not have rights in the INSTANT DOMAIN SEARCH mark because “instant” and “domain” are generic terms and Complainant cannot maintain exclusive rights over generic terms. While it is correct to say that “instant” and “domain” (as well as “search”) are generic terms, such terms may nevertheless give rise to common law trademark rights if, through use, they have become distinctive of the goods or services of a person or entity. The word “apple” is an obvious example when used in connection with computers.
It appears from the Whois information provided by Complainant that:
(i) the <instantdomains.com> domain name was created on November 29, 2012 and was updated on November 3, 2018; and
(ii) the <instantdomain.com> domain name was created on September 10, 1996 and was updated on August 21, 2019.
Respondent says it purchased the domain names on October 10, 2018. Since those acquisitions necessarily involved a change in registrant, this constitutes the relevant date of registration of the domain names for the purpose of these proceedings.
Complainant secured registration of its trademark in Canada only a few days earlier. In considering the elements required to be established by Complainant under Paragraphs 4(a)(ii) and (iii) of the Policy, it is therefore necessary to determine whether, by the time Respondent acquired the domain names on October 10, 2018, Complainant had established common law trademark rights in the INSTANT DOMAIN SEARCH mark and, if so, whether it is likely that Respondent then had Complainant’s mark in mind.
(Particularly with regard to brands acquiring relatively rapid recognition due to a significant Internet presence, panels have also been considering factors such as the type and scope of market activities and the nature of the complainant’s goods and/or services.)
Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning…
The fact that a respondent is shown to have been targeting the complainant’s mark (e.g., based on the manner in which the related website is used) may support the complainant’s assertion that its mark has achieved significance as a source identifier.”
In support of its claim to unregistered rights in the name, Complainant has provided a sworn affidavit of its founder, Beau Hartshorne, stating that Complainant began using the INSTANT DOMAIN SEARCH mark and <instantdomainsearch.com> domain name in Canada on October 17, 2005, since when it has continuously, exclusively and extensively used the mark in commerce as a source identifier for online domain name services.
Exhibited to the affidavit is a list of 11 books and 6 blogs with extracts mentioning Instant Domain Search and the “www.instantdomainsearch.com” website prior to the registration of Respondent’s domain names. Examples are:
2007: “Media Guy’s Pop Pick: Instant Domain Search,” January 22, 2007: “Instantdomainsearch.com is a nifty, real-time platform for brand-name brainstorming.”
2013: “Instant Domain Search - See Domain Name Search Results As You Type.” Product Hunt. April 26, 2015: “Instant Domain Search checks domain availability as you type. It also automatically generates available domain names, and suggests related domain names for sale.”
According to Mr. Hartshorne’s sworn evidence, by the end of 2017 the “www.instantdomainsearch.com” website had received over 4 million users since 2005 and had generated nearly US$2 million in search revenue.
This evidence satisfies the Panel that Complainant had, through extensive use, acquired common law rights in the INSTANT DOMAIN SEARCH mark in the field of domain name services prior to its registration in Canada and prior to Respondent’s registration of the domain names <instantdomains.com> and <instantdomain.com>.
It is common ground that Respondent approached Mr. Hartshorne by email on June 4, 2018, seeking to purchase the <instantdomainsearch.com> domain name, a request which was declined that day. Respondent registered the domain names <instantdomains.com> and <instantdomain.com> 4 months later.
Contrary to Respondent’s claim that its business at <domainify.com> does not compete with Complainant and that Respondent has not attempted to direct Internet users from Complainant to the domain names, the Panel notes that screenshots annexed to the Complaint of Complainant’s website and of the website to which the <instantdomains.com> domain name resolved on February 27, 2020 support Complainant’s contention that the look and feel of Respondent’s website is strikingly similar in layout and function to that of Complainant and that Respondent’s website promotes domain name searching, an activity that competes with Complainant’s business. Mr. Hartshorne’s affidavit says both of Respondent’s domain names resolved to websites with similar look and feel to that of Complainant.
The Panel does not accept Respondent’s assertion that its Domainify business does not compete with Complainant because Respondent’s <instantdomains.com> website, having the same look and feel as that of Complainant, contained the following statement:
“Serious about your business name? Get a premium business name from Domainify branding experts. Logo, domain and transfer within 24 hours included.”
The mere fact that a disputed domain name redirects to a third-party website does not mean that it cannot disrupt a complainant’s business. A domain name registrant is responsible for the content of any website to which the domain name resolves. See WIPO Jurisprudential Overview 3.0, paragraph 3.5: “…a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name…”).
Even if Respondent’s assertions be accepted that Respondent does not operate email using the domain names and has never made contact with Complainant’s customers, the evidence establishes that, prior to the filing of the Complaint, Respondent’s domain names resolved to websites that compete with Complainant’s business by attempting to pass off as Complainant and thereby to disrupt Complainant’s business.
Respondent’s statement that it will entertain an offer from Complainant to purchase the domain names at market value is at odds with Respondent’s statement that he sold the domain names in 2019.
There is no suggestion that Respondent is commonly known by either of the domain names. The Panel notes that Respondent sought to purchase Complainant’s <instantdomainsearch.com> domain name some 4 months before registering the disputed domain names. The Panel is satisfied that Respondent was well aware of Complainant’s mark when registering the domain names and has used them in order to trade off Complainant’s reputation in its mark. Such use is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain names under Policy ¶ 4(a)(ii).
Complainant has established this element.
For the reasons set out above in relation to the second element, the Panel finds that Respondent was well aware of Complainant’s mark when registering the domain names and did so primarily for the purpose of disrupting the business of a competitor. Further, that by using the domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a service on his website.
Accordingly, the Panel finds that Respondent registered and is using the domain names in bad faith under Policy ¶ 4(a)(iii).
Complainant has established this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <instantdomains.com> and <instantdomain.com> domain names be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: May 2, 2020
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