Catalyzer, Inc v. Alexander Bitkin
Claim Number: FA2006001900506
Complainant is Catalyzer, Inc (“Complainant”), represented by Dennis Passovoy, Kansas, USA. Respondent is Alexander Bitkin (“Respondent”), Russian Federation.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <catalyzer.com> (‘the Domain Name’), registered with Epik Inc..
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 16, 2020; the Forum received payment on June 16, 2020.
On June 25, 2020, Epik Inc. confirmed by e-mail to the Forum that the <catalyzer.com> domain name is registered with Epik Inc. and that Respondent is the current registrant of the name. Epik Inc. has verified that Respondent is bound by the Epik Inc. 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 July 1, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 21, 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@catalyzer.com. Also on July 1, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 24, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne as Panelist.
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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
The Complainant’s contentions can be summarized as follows:
The Complainant is the owner of the trade mark CATALYZER registered in the USA for business training services with first use recorded as July 2019.
The Domain Name registered in 2004 is identical to the Complainant’s trade mark and company name for the purposes of the Policy.
The Respondent does not operate a legitimate business with the Domain Name and when the Complainant approached the Respondent in 2019 the Domain Name was offered for sale.
In June 2020 the Respondent added a free gas mileage calculator to the Domain Name.
The Domain Name was registered with the intent to sell.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the trade mark CATALYZER registered in the USA for business training services with first use recorded as July 2019.
The Domain Name registered in 2004 has been used for a free gas mileage calculator. When the Respondent was approached by the Complainant it indicated that the Domain Name might be for sale.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The gTLD .com in the Domain Name does not serve to distinguish the Domain Name from the Complainant’s CATALYZER mark (registered in the USA for business training services with first use recorded as 2019) as the .com gTLD is a necessary part of the Domain Name. See Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs.”).
The Domain Name is therefore identical to a mark in which the Complainant has rights under the Policy.
The Respondent is not commonly known by the Domain Name or authorized by the Complainant, however ‘catalyzer’ is an ordinary dictionary word for a device in the exhaust system of a car for converting polluting gases into less harmful ones. The Respondent has used the Domain Name for a free gas mileage converter.
As found below the Domain Name could not have been registered in bad faith as it was registered in 2004, fifteen years before the Complainant began use of the CATALYZER mark and there is no use of the Domain Name in the context of business training services or any evidence that the Respondent has ever specifically targeted the Complainant. The Respondent has a legitimate right and legitimate interest to register and sell a Domain Name consisting of a common dictionary word if at the time it was registered it could not have been registered in bad faith as alleged to take advantage of a third party trade mark.
Under the Policy a domain name must be both registered and used in bad faith before transfer to a Complainant can be ordered. In the circumstances of this case the Domain Name having been registered in 2004 it could not have been registered with the Complainant in mind as the Complainant did not use the CATALYZER trade mark for business training services until 2019. Further there is no evidence of use in bad faith targeting the Complainant. Selling a domain name consisting of a dictionary word acquired before the trade mark owner acquired rights in a trade mark (in the context of particular services) is not bad faith. In those circumstances the Panel holds that the Domain Name has not been registered or used in bad faith as alleged.
See Platterz v. Andrew Melcher, FA 1729887 (Forum Jun. 19, 2017) (“a complainant must prove both bad faith registration and bad faith use in order to prevail.”); see also Faster Faster, Inc. DBA Alta Motors v. Jeongho Yoon c/o AltaMart, FA 1708272 (Forum Feb. 6, 2017) (“Respondent registered the domain name more than a decade before Complainant introduced the ALTA MOTORS mark in commerce. Respondent therefore could not have entertained bad faith intentions respecting the mark because it could not have contemplated Complainant’s then non-existent rights in [the mark] at the moment the domain name was registered.”).
If the Panel concludes that Respondent has rights or legitimate interests in the <catalyzer.com> domain name pursuant to Policy ¶ 4(a)(ii), the Panel may also find that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Record Connect, Inc. v. Chung Kit Lam / La-Fame Corporation, FA 1693876 (Forum Nov. 3, 2016) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Sheet Labels, Inc. v. Harnett, Andy, FA 1701423 (Forum Jan. 4, 2017) (finding that because the respondent had rights and legitimate interests in the disputed domain name, its registration of the name was not in bad faith).
The Panel may further find that Respondent has not registered or used the <catalyzer.com> domain name in bad faith if it finds that Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Haru Holding Corporation v. Michael Gleissner / NextEngine Ventures LLC, FA 1685263 (Forum Aug. 30, 2016) (finding that where a respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith, lack of rights or legitimate interests on its own is insufficient to establish bad faith); see also Uhrenholt A/S v. FILLIP NIELSEN, FA 1646444 (Forum Dec. 21, 2015) (finding that mere assertions of bad faith, without evidence, are insufficient for a complainant to establish bad faith under Policy ¶ 4(a)(iii)).
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 <catalyzer.com> domain name REMAIN WITH Respondent.
Dawn Osborne, Panelist
Dated: July 27, 2020
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