Personally Cool Inc. v. Name Administration Inc. (BVI)
Claim Number: FA1212001474325
Complainant is Personally Cool Inc. (“Complainant”), New York, USA. Respondent is Name Administration Inc. (BVI) (“Respondent”), represented by John Berryhill, Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <coldfront.com>, registered with iRegistry.
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.
Jonas Gulliksson (Chair), David H. Bernstein and Sir Ian Barker as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 5, 2012; the National Arbitration Forum received payment on December 5, 2012.
On December 5, 2012, iRegistry confirmed by e-mail to the National Arbitration Forum that the <coldfront.com> domain name is registered with iRegistry and that Respondent is the current registrant of the name. iRegistry has verified that Respondent is bound by the iRegistry 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 December 6, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 26, 2012 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@coldfront.com. Also on December 6, 2012, 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 December 13, 2012.
A timely Additional Submission was submitted by Complainant on December 18, 2012.
A timely Additional Submission was submitted by Respondent on December 24, 2012.
On January 3, 2013, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Jonas Gulliksson (Chair), David H. Bernstein and Sir Ian Barker as Panelists.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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
The Complainant owns the COLDFRONT trademark registered in the United States, EU and Japan.
The Respondent has no legitimate business reason for owning the disputed domain name.
The name of the Respondent is not related to the disputed domain name. The absence of any content on the website linked to the disputed domain name other than other search and related search results, each of which is a hyperlink to content not owned by the registrant, shows that the Respondent has no legitimate interests in the disputed domain name.
The Respondent is attempting to sell the domain name. The first line at the resolving website states “Click here to buy Coldfront.com for your website name.” The asking price is $51,000, and the Respondent will not take less than $20,000. The last hyperlink on the website is for <DomainNameSales.com>. The “only call to action on the page as of 12/4/12 is a banner ad for <DomainNameSales.com>.”
The Respondent’s sole purpose of owning the disputed domain name is cybersquatting with bad faith intent for commercial gain and, consequently, confusing any consumer looking for the Complainant’s product and tarnish these customers’ user experience and thus the Complainant’s trademark.
The Respondent registered the disputed domain name in the early days of the Internet, and has been sitting on it ever since, such that the registrant’s out of pocket expense for the domain name is likely to be little more that the annual cost of renewal, but Respondent is preventing Complainant from using the domain name for its trademarked product.
B. Respondent
The proceeding concerns registration and use of a dictionary word domain name for more than 10 years by the Respondent for news, weather and forecasting in accordance with the primary meaning of the word “coldfront.” The Respondent registered the disputed domain name on June 21, 2002, after the prior registrant let it expire.
The Complainant was formed in 2009 and filed for a USPTO registration of the term COLDFRONT in connection with cooling packs on intent to use basis. The Complainant subsequently alleged a first use of the mark in 2010 and obtained registration in 2011. The Complainant states that “mycoldfront has been live for less than 9 months.”
The Complainant was informed prior to this proceeding that the Policy does not provide some sort of retroactive trademark right, by which junior users may hi-jack the domain names of legitimate senior registrants. The Complainant ignored this warning.
There are others who own COLDFRONT trademark registrations with the USPTO that have prior rights to the mark over the Complainant. Although Complainant’s recent USPTO registration satisfies the standing requirement of the first condition, it should immediately be apparent that the Respondent is the senior party to this proceeding.
The Respondent is engaged in a legitimate business. As such, it has the right to sell any valuable assets that the Respondent owns.
The disputed domain name “coldfront” is a reference to the dictionary phrase “cold front,” given the lack of ability to express word spacing in domain names, is a term used in weather forecasting.
The Respondent has, since the registration, used the disputed domain name continuously in connection with the primary meaning of the phrase. The Respondent is utilizing the disputed domain name for pay-per-click advertising relating to the topics listed, such as: Anemometer, Atomic Clocks, Barometers, Environment, Environmental, Environmental Management, Heat, Sun Shades, Temperature, and Temperature Measurements. Additionally, the header graphic on the landing page shows a partially cloudy sky, a rainbow, and a lightning strike. All of these topics and header graphics clearly demonstrate that the domain name is being utilized by the Respondent for pay-per-click advertising purposes relating to weather, atmospheric science, climate, etc., which are all semantically related to the primary meaning of the weather term “cold front.”
The Panel should make a finding under the Rules 15(e), Reverse Domain Name Hijacking, as this Complaint was brought frivolously and with knowledge that it could not win. The Complainant cannot claim ignorance in this case and has exercised willful blindness to the information presented by the Respondent.
C. Additional Submissions
Complainant
The Respondent last renewed the disputed domain name in 2011. At the time of the Respondent’s renewal of the domain name the Complainant possessed its COLDFRONT trademark, and the Respondent has caused harm to the Complainant.
The Respondent counts on products being trademarked after its domain names have been registered so that it may extort money from those trademark owners who require a domain name for their products.
Respondent’s valuation of the disputed domain name is 17 times higher than two independent analysts have stated that the domain name is worth.
Respondent’s pay-per-click website linked to the disputed domain name hasn’t received any clicks, so it is not being used in the nature that Respondent’s representative depicts it.
Respondent
The Complainant’s representative is the former CEO of an Internet advertising firm, and it cannot therefore be credibly asserted that the Complainant’s principal is unaware of Internet advertising methods, nor of ordinary due diligence to a branding effort.
The Complainant knows that before it brands a product it should look for the corresponding domain name for its product, but in this instance it did not do that.
The Respondent has the right to sell, or not sell, a productive asset which it owns for any price it deems acceptable in its sole discretion, and the Complainant is not allowed to dispossess others of longstanding assets senior to those activities of the Complainant.
The Complainant owns the following COLDFRONT trademarks registered with the United States Patent and Trademark Office ("USPTO"):
- COLDFRONT: Reg. No. 3931759, filed on June 4, 2009; registered on March 15, 2011, in Int. Cl. 11 for Cold packs for cooling the body and not for medical purposes, and
- COLDFRONT (fig.): Reg. No. 3935154, filed on August 17, 2009; registered on March 22, 2011, in Int. Cl. 11 for Cold packs for cooling the body and not for medical purposes.
The disputed domain name was registered by the Complainant on June 21, 2002.
The disputed domain name is identical or confusingly similar to a trademark in which the Complainant holds rights.
The Respondent has rights or legitimate interests in respect of the domain name.
The domain name has not been registered, nor used, in bad faith.
The Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding pursuant to paragraph 15(e) of the Rules.
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.
Before turning to the merits, the Panel first addresses the question of the parties’ supplemental submissions. As other panels have held, supplemental submissions may be appropriate when parties have new facts, law or arguments to make that could not have been anticipated in their earlier submissions. Under the ICANN Rules, supplemental submissions should not be used routinely as replies to rehash arguments already made, notwithstanding the Forum’s mechanism for filing supplemental submissions. The Forum’s Supplemental Rules do provide a mechanism for filing supplemental submissions, but those Supplemental Rules do not trump the ICANN Rules, which leave the discretion to request or accept supplemental submissions firmly with the Panel. Electronic Commerce Media, Inc. v. Taos Mountain, FA 95344 (Nat. Arb. Forum Oct. 11, 2000); The Tan Factory c/o Jeff D'Alessio v. DefaultData.com c/o Brian Wick, Claim Number: FA327674 (Nat. Arb. Forum Nov. 3, 2004); Bar Products.com, Inc. v. RegisterFly.com, FA 829161 (Nat. Arb. Forum Jan. 9, 2007); Town of Easton Connecticut v. Lightning PC Inc., FA 1220202 (Nat. Arb. Forum Oct. 12, 2008).
Here, there was nothing in Complainant’s supplemental submission that could not have been addressed in the Complaint. Rather, Complainant used the Supplemental Submission to reargue the points in its Complaint and to make new points that should have been addressed at the outset. For that reason, the Panel has disregarded the Complainant’s supplemental submission, and as such, has not considered the Respondent’s supplemental submission either. However, even if both supplemental submissions were considered, it would not change the outcome of this proceeding.
The Panel finds that the Complainant’s trademark registrations establish its rights in the COLDFRONT mark under Policy ¶ 4(a)(i), and that the rights date back to the filing date with the USPTO of June 4, 2009. See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
The Panel notes that the Complainant does not present any arguments that the disputed domain name is confusingly similar or identical to the COLDFRONT mark. However, the Panel is entitled to make an independent evaluation of the similarity of the disputed domain name to the COLDFRONT mark. The Panel notes that the disputed domain name contains the entire COLDFRONT mark, and merely adds the generic top-level domain (“gTLD”) “.com.” Therefore, the Panel finds that the disputed domain name is identical to the Complainant’s COLDFRONT mark under Policy ¶ 4(a)(i). See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a gTLD is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Respondent notes that its registration of the disputed domain name predates the Complainant’s alleged rights in the mark. That is true, but it is irrelevant to the issue under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether the Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i), but prior registration may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).
The first provision is thus fulfilled.
The Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden of production shifts to the Respondent to come forward with some evidence showing that the Respondent does have rights or legitimate interests (although the burden of proof always remains on the Complainant). See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Complainant argues that the Respondent’s name, as disclosed in the registration information, does not have any relationship to the disputed domain name. The Panel notes that the WHOIS information identifies the disputed domain name’s registrant as “Name Administration Inc. (BVI).” The Panel finds this name to be dissimilar from the disputed domain name indicating that that the Respondent is not commonly known by the disputed domain name. Further, the Panel finds that no other evidence submitted in this case indicates that the Respondent is commonly known by the disputed domain name. All in all, the Panel finds that the Respondent is not known under the disputed domain name. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
The Complainant further argues that the Respondent’s lack of rights and legitimate interests in the disputed domain name is proven by the absence of any content on the website linked to the disputed domain name other than other search and related search results, each of which is a hyperlink to content not owned by the Respondent.
In response, the Respondent contends that it is utilizing the disputed domain name for pay-per-click advertising relating to the topics listed, such as: Anemometer, Atomic Clocks, Barometers, Environment, Environmental, Environmental Management, Heat, Sun Shades, Temperature, and Temperature Measurements. Additionally, the Respondent argues that the header graphic on the landing page shows a partially cloudy sky, a rainbow, and a lightning strike, which the Respondent asserts clearly demonstrates that the domain name is being utilized by the Respondent for pay-per-click advertising purposes relating to weather, atmospheric science, climate, etc. The Respondent notes that such terms are all semantically related to the primary meaning of the weather term “cold front.”
The Panel notes that the resolving website contains “Related Searches” terms including among others, “Heat,” “Environment,” and “Temperature Measurements,”, that the header graphic on the landing page shows a partially cloudy sky, a rainbow, and a lightning strike. The Panel finds that “cold front” is a generic word relating to weather. Also, the Panel finds that the search terms used on the website linked to the disputed domain name are not related to the Complainant’s trademark or business. Therefore, the Panel finds that the Respondent is making a bona fide offering of goods or services under Policy ¶ 4(c)(i), through its use of the disputed domain name to take advantage of the generic nature of the terms of the domain name and by virtue of the fact that it does not take advantage of the trademark value of the Complainant’s mark. See Multicast Media Networks, LLC v. MDNH, Inc., FA 434268 (Nat. Arb. Forum Apr. 28, 2005) (finding that the respondent’s use of the disputed domain name to operate a pay-per-click website from which Respondent derives revenue was considered a bona fide use within the meaning of Policy ¶ 4(c)(i), especially considering the extended period of such use); see also Accetta v. Domain Admin, FA 826565 (Nat. Arb. Forum Jan. 2, 2007) (finding the respondent’s use of the disputed domain name to operate a pay-per-click search engine was a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) because the terms of the disputed domain name were of common usage and did not refer to the complainant or its products).
The Complainant argues that the Respondent’s website does not receive much Internet traffic, so is not being used legitimately, but is actually being used to drive up the price of the domain name. The Complainant asserts that the Respondent is attempting to sell the domain name as the first line at the resolving website states “Click here to buy Coldfront.com for your website name.” The Complainant notes that the asking price is $51,000, and that that Complainant has been informed that the registrant will not take less than $20,000. The Complainant also notes that the last hyperlink on the website is for <DomainNameSales.com>. The Complainant asserts that the Respondent’s contentions that there is a secondary market for domain names that is legitimate exceeds the definition of such a market, as two independent appraisers have appraised the domain name at around 17 times less than what the Respondent seeks.
The Panel finds that the bona fide nature of the Respondent’s use of the disputed domain name is not affected by whether or not the Respondent is interested in selling the disputed domain name or the preferred price. If the Respondent has legitimate interests in the domain name, it has the right to sell that domain name for whatever price it deems appropriate regardless of the value that appraisers may ascribe to the domain name. Nor does the amount of traffic on the site matter; if Respondent chooses to use the domain name for a website with pay-per-click advertising that is related to the generic meaning of the domain name, that is the Respondent’s prerogative; such use is legitimate regardless of whether it is successful. All in all, the Respondent has established its legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Nat. Arb. Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” when used in connection with kaleidoscopes and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes).
Consequently, the Complainant has failed to meet the burden of proof of the Respondent’s lack of legitimate interest or rights pursuant to Policy ¶ 4(a)(ii). See Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
With the Panel’s finding of the Respondent’s legitimate interests pursuant to Policy ¶ 4(a)(ii) further inquiries of the remaining element of the Policy is unnecessary. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Pensacola Christian Coll. v. Gage¸ FA 101314 (Nat. Arb. Forum Dec. 12, 2001) (“Because the Panel has found that Respondent has rights and interests in respect of [sic] the domain name at issue, there is no need to decide the issue of bad faith.”).
However, in order to assess whether Complainant is guilty of Reverse Domain Name Hijacking, it is useful for the Panel also to consider whether Complainant has satisfied its burden of proving that the Respondent registered and used the domain name in bad faith.
The Complainant did not even exist when the Respondent registered the disputed domain name or during several years thereafter, nor did the Complainant’s trademark. For that reason, the Respondent’s initial registration could not possibly have been in bad faith in relation to the Complainant. See Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb.Forum May 16, 2007) (determining the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark).
Complainant argues, though, that Respondent renewed the domain name registration in 2011, and that should count as a new registration. Respondent rejects that argument, citing GoPets Ltd. v. Hise, a 2011 decision by the United States Court of Appeals for the Ninth Circuit, in a case interpreting the United States Anticybersquatting Consumer Protection Act (the “ACPA”), 15 U.S.C. § 1125(d), which held that, for purposes of the ACPA, a renewal does not count as a registration.
Respondent’s reliance on GoPets is misplaced. That decision was not interpreting what “bad faith registration” means in the context of the UDRP; rather, it was interpreting the ACPA which has very different language. In contrast, in Paragraph 2 of the Policy, the UDRP expressly contemplates that renewal is a relevant time period, since the domain name registrant represents again at the time of renewal that the domain name does not violate any third parties rights: “By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that […] (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name infringes or violates someone else’s rights” (emphasis added).
The question of the relevant time for a bad faith finding when a domain name registration has been renewed is developing jurisprudence. Generally, a mere renewal of a domain name has not been treated as a new registration for the purpose of assessing bad faith, but a small number of panels have begun to consider the renewal of a domain name as equivalent to a new registration in certain circumstances. See Section 3.17 of the WIPO Overwiew 2.0. In the case at hand, regardless of the fact whether a renewal may be a relevant time period for considering if the Respondent registered the domain name in bad faith, the Complainant has failed to show bad faith at the time of the renewal. First, despite the Complainant’s application to register its trademark in 2009, there is no evidence in the record that the Respondent specifically knew or should have known of Complainant and its trademark, or was willfully blind to Complainant’s mark, at the time of the renewal. Had Respondent changed its use of the domain name after renewal to take advantage of the trademark value of COLDFRONT as a website selling competing cold packs for cooling the body, the Panel might have inferred a bad faith intention by the Respondent to take advantage of the trademark that the Complainant registered after the initial registration of the domain name but before the renewal. See generally Eastman Sporto Group LLC v. Jim and Kenny, D2009-1688 (WIPO Mar. 1, 2010);Gassan Diamonds B.V. v. Internet-Dating.Com, D2011-0774 (Jul. 29, 2011).
Here, though, the evidence is to the contrary: The Respondent did not change its use of the domain name after renewal; rather, it continued to do what it had always done, which was to offer pay-per-click advertising related to weather and related coldfront-topics. As such, Complainant has not shown that the renewal of the domain name in 2011 was made in bad faith.
Nor has the Complainant proven that the Respondent registered the disputed domain name primarily for the purpose of selling the disputed domain name to the Complainant or to any of the Complainant’s competitors for an amount in excess of out-of-pocket expenses. Further, the Respondent has not violated any of the other factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration or use pursuant to the Policy in connection with the disputed domain name. The offer to sell a domain name that a party otherwise has rights to is not bad faith; rather, that is nothing more than a legitimate effort to sell property properly owned by the party. See Etam, plc v. Alberta Hot Rods, D2000-1654 (WIPO Feb. 5, 2001). Therefore, the Panel concludes that Complainant has failed to show bad faith registration and use under Policy ¶ 4(b). See Mark Warner 2001 v. Larson, FA 95746 (Nat. Arb. Forum Nov. 15, 2000) (finding that considering or offering to sell a domain name is insufficient to amount to bad faith under the Policy; the domain name must be registered primarily for the purpose of selling it to the owner of a trademark for an amount in excess of out-of-pocket expenses); see also JCM Germany GmbH v. McClatchey Jr., D2004-0538 (WIPO Sept. 17, 2004) (holding that the respondent did not violate Policy ¶ 4(b)(i) by attempting to sell the disputed domain name for profit because the respondent did not register the domain name with the intent to sell it to the complainant or one of its competitors).
Reverse Domain Name Hijacking
The Respondent alleges that the Complainant has brought the Complaint in bad faith and is engaging in Reverse Domain Name Hijacking.
The Rules para. 1 defines Reverse Domain Name Hijacking as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”. Examples of Reverse Domain Name Hijacking include when the complainant knew or clearly should have known at the time that it filed the complaint that it could not prove one of the essential elements required by the UDRP or when the complainant knew that the respondent used the disputed domain name as part of a bona fide business for which the respondent obtained a domain name prior to the complainant having relevant trademark rights. See carsales.com.au Limited v. Alton L. Flanders, D2004-0047 (WIPO April 8, 2004) (“In the Panel’s view a finding of reverse domain name hijacking is warranted if the Complainant knew or should have known at the time it filed the Complaint that it could not prove one of the essential elements required by the Policy.”); see also 4.17 WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
The Panel finds that the onus of proving reverse domain name hijacking is on the Respondent. See Deutche Post AG v. NJDomains, D2006-0001 (WIPO March 1, 2006) (“The onus of proving bad faith is on the Respondent, and mere lack of success of the Complaint is not of itself sufficient to constitute reverse domain name hijacking.”).
That a claim is weak is not itself sufficient for a panel to find Reverse Domain Name Hijacking. See Mondial Assistance S.A.S. v. Compana LLC, D2007-0965 (WIPO October 23, 2007) (“A complainant with a weak claim may present this complaint in good faith. Not succeeding in the complaint does not amount to an attempt at reverse domain name hijacking except when it involves bad faith in an to attempt to deprive a registered domain-name holder of a domain name (paragraph 1 of the Policy).”).
In this case, the disputed domain name was registered more than seven years prior to the Complainant’s application for trademark registration for COLDFRONT. Apart from being a trademark of the Complainant and other trademark owners, “cold front” is also a generic word for a weather-related incident. The webpage linked to the disputed domain name has not been used to compete with or tarnish the Complainant’s trademark or business, but to present pay-per-click advertisement within fields unrelated thereto.
The Panel finds that the Complainant had or could easily have obtained knowledge of all these facts before it brought its Complaint to the Forum. Indeed, the Respondent expressly warned Complainant about the frivolous nature of its claims but the Complainant proceeded. It is true that Complainant appeared pro se, without counsel, but that is not an excuse for clear disregard for the limitations of the Policy. Rather, when there are questions about the validity of the claim – and especially where Respondent offered detailed information about why a complaint would have no merit – it is incumbent upon the Complainant to research carefully the validity of its claims, including if necessary consulting with experienced counsel.
Therefore, after considering the submissions in this case the Panel finds that the Complaint was brought in bad faith in an attempt at Reverse Domain Name Hijacking. See Viking Office Products, Inc. v. Natasha Flaherty a/k/a ARS - N6YBV, FA 1383534 (Nat. Arb. Forum May 31, 2011) (“The Panel finds that Complainant knew or should have known that it was unable to prove that Respondent lacks rights or legitimate interests in the <viking.org> domain name and that Respondent registered and is using the disputed domain name in bad faith. Therefore, the Panel finds that that reverse domain name hijacking has occurred.”).
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 <coldfront.com> domain name remain with Respondent.
The Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Jonas Gulliksson (Chair), David H. Bernstein and Sir Ian Barker, Panelists
Dated: January 17, 2013
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