Edward Smith v. Douglas Bates
Claim Number: FA1302001483682
Complainant is Edward Smith (“Complainant”), represented by Mr. Kuscha Hatami Fard., of Raj Abhyanker P.C., California, USA. Respondent is Douglas Bates (“Respondent”), represented by Jamie Halavais of Greenberg Traurig, LLP, Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <joopa.com>, registered with Tierranet Inc. d/b/a Domaindiscover (sometime referred to as the “Disputed Domain Name”).
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
The Honorable Carolyn M. Johnson, (Ret.), Kendall Reed, Esq., C.Arb., and Professor David E. Sorkin, as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 5, 2013; the National Arbitration Forum received payment on February 5, 2013.
On February 6, 2013, Tierranet Inc. d/b/a Domaindiscover confirmed by e-mail to the National Arbitration Forum that the <joopa.com> domain name is registered with Tierranet Inc. d/b/a Domaindiscover and that Respondent is the current registrant of the name. Tierranet Inc. d/b/a Domaindiscover has verified that Respondent is bound by the Tierranet Inc. d/b/a Domaindiscover 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 February 8, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 28, 2013 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@joopa.com. Also on February 8, 2013, 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 February 26, 2013.
On March 13, 2013, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed The Honorable Carolyn M. Johnson, (Ret.), Kendall Reed, Esq., C.Arb., and Professor David E. Sorkin as Panelist.
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
1. Complainant is the owner of the JOOPA mark. Complainant is the owner of the United States Patent and Trademark Office (“USPTO”) registration for the JOOPA mark (Reg. No. 4,254,590 filed Mar. 23, 2011; registered Dec. 4, 2012).
2. The <joopa.com> domain name is identical to the JOOPA mark. The generic top-level domain (“gTLD”) “.com” should be disregarded as it is required for the registration of a domain name.
3. Respondent has no rights or legitimate interests in the <joopa.com> domain name.
a. There is no evidence to support that Respondent is or ever has been commonly known by the disputed domain name.
b. Respondent has not used the <joopa.com> domain name for a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The disputed domain name resolves to a website which is nothing more than a landing page informing users that, “This domain is reserved with Domain Discover. Website is coming soon. If you are interested in purchasing this domain please click here for more information.” Respondent registered the domain name on January 25, 2000, and for 13 years Respondent has not used or demonstrated any intent to use the domain name in connection with any bona fide offering of goods or services or a legitimate noncommercial or fair use.
c. Respondent admits that the disputed domain name is readily transmissible.
4. The <joopa.com> domain name was registered and is being used in bad faith.
a. Respondent’s registration of the <joopa.com> domain name was done with the sole purpose of commercially exploiting it from an eventual sale. Respondent has offered to sell the <joopa.com> domain name to Complainant for $50,000, $100,000, and/or an equity stake in Complainant’s company. On July 13, 2012, Complainant offered $500 in exchange for a voluntary transfer of the disputed domain name to compensate Respondent for the registration fees and other out-of-pocket expenses, but Respondent refused. Complainant later offered $2,600 in exchange for the <joopa.com> domain name, but Respondent again refused to transfer the domain name for an amount that “low.”
B. Respondent
1. Respondent is a physician who develops websites as a secondary business which Respondent has developed over the years and which has been a source of collaborative work with his children. Because it is a secondary business, development takes a long time and thus sometimes domain names are inactive in the interim.
2. Over 11 years after Respondent registered the <joopa.com> domain name, Complainant contacted Respondent about purchasing the disputed domain name. Respondent has made websites valuable, and thus was willing to sell the disputed domain name in good faith.
3. The <joopa.com> domain name is identical to the JOOPA trademark.
4. Complainant and Respondent exchanged email correspondence during February and March of 2011 for the purpose of exploring a possible sale and purchase of the Disputed Domain Name by Complainant. These discussions did not culminate in a transfer of the Disputed Domain Name.
5. Complainant failed to meet its burden of showing that Respondent does not have rights or legitimate interests in the disputed domain name.
a. Complainant did not even file for trademark registration of the JOOPA mark until a month after Complainant approached Respondent about acquiring the <joopa.com> domain name.
b. The <joopa.com> domain name provides links to advertisements, which has been found to constitute a bona fide offering of goods or services.
c. Respondent is currently developing the <joopa.com> domain name, but it takes time because of his busy schedule as a physician.
d. Respondent has sold five domain names, loaned or donated others, and is developing 15 others.
6. Respondent did not register and is not using the <joopa.com> domain name in bad faith.
a. Respondent’s offer to sell the domain name does not demonstrate bad faith. Respondent knows that development of websites takes a long time and is thus willing to consider reasonable offers. The high value Respondent placed on the <joopa.com> domain name is simply a reflection of the success Respondent has had in website development.
b. Respondent could not have registered and be using the disputed domain name in bad faith because it was registered over a decade before Complainant ever could have had rights in the JOOPA mark.
7. Reverse Domain Name Hijacking
a. Complainant knew or should have known that the Complaint would not succeed.
b. While Complainant has some trademark rights in the JOOPA mark, Complainant knew that Respondent’s registration of the <joopa.com> domain name predates Complainant’s rights in the JOOPA mark by 11 years, and thus Complainant was well aware that Respondent did not register the domain name in bad faith.
c. Complainant not only harassed Respondent in attempts to obtain the <joopa.com> domain name, but Complainant initially lied to Respondent about why Complainant wanted the <joopa.com> domain name.
d. Complainant did not even file for trademark registration of the JOOPA mark until a month after Complainant approached Respondent about acquiring the disputed domain name.
1. Complainant is the owner of the United States Patent and Trademark Office registration for the JOOPA mark, Reg. No. 4,254,590.
2. Complainant filed its trademark application for said mark on March 23, 2011, based upon an intent to commence use of the mark in the future.
3. The registration for said mark issued on December 4, 2012.
4. Respondent registered the Disputed Domain Name on January 25, 2000.
5. Complainant and Respondent exchanged email correspondence during February and March of 2011 for the purpose of exploring a possible sale and purchase of the Disputed Domain Name by Complainant. These discussions did not culminate in a transfer of the Disputed Domain Name.
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.
The Complainant demonstrates that it owns a trademark registration for the mark JOOPA and thereby has established rights in this trademark for purposes of the Policy. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”)
The Respondent concedes that the Disputed Domain Name is identical to the Complainant’s trademark under Paragraph 4(a)(i) of the Policy.
The Complainant has established the first element of the Policy.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the Disputed Domain Name, and if it does so, then the burden shifts to the Respondent to come forward with concrete evidence that it does have rights and legitimate interests therein. 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 establishes a prima facie showing that the Respondent lacks rights and legitimate interests under the Policy. First, the Complainant provides a screen-shot of the landing page to which the Disputed Domain Name directs, and this landing page includes the following content: a statement that the website is under construction; a click-through option for those interested in buying the domain name; and several click-through options that appear to be placeholders that lack further content or live links. Whereas such uses are not illegitimate in themselves, these are not uses contemplated by Policy Paragraph 4(c)(i) as giving rise to rights or legitimate interests. Second, the Complainant demonstrates that the Respondent is not been commonly known by the Disputed Domain Name for purposes of Policy Paragraph 4(c)(ii). Third, the Complainant demonstrates that the Respondent was not making a legitimate noncommercial or fair use of the Disputed Domain Name for purposes of Policy Paragraph 4(c)(iii).
The Respondent argues that he does have rights and legitimate interests in the Disputed Domain Name because he has always intended to develop the Disputed Domain Name into a functioning and legitimate website, but he has not had the opportunity to do so yet because of the demands of his medical practice and his efforts to develop websites involving other domain names. However, the Respondent supplies no evidence of these preparations. This is an insufficient showing. Further, given that the Respondent has not made use of the Disputed Domain Name as contemplated by the Policy for eleven years after its registration, the Panel finds that this was not his intention.
The Complainant has established the second element of the Policy.
Policy Paragraph 4(a)(iii) prohibits registration and use of a domain name for the purpose of accomplishing certain impermissible goals, as are further defined by Policy Paragraphs 4(b)(i) through 4(b)(iv), with respect to another who has rights in a trademark, aka, the complainant. As a matter of logic, this is impossible if the complainant does not have rights in a trademark. More specifically, a respondent’s conduct cannot fall within the prohibitions of Policy Paragraphs 4(b)(i) through 4(b)(iv) if the complainant did not have rights in a trademark at the time the respondent registered the domain name. See Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark).
In the instant action the Complainant did not acquire rights in the trademark (to which the Dispute Domain Name is identical) until eleven years after the Respondent registered the Disputed Domain Name. As such, Respondent’s conduct cannot fall within the prohibitions of Policy Paragraphs 4(b)(i) through 4(b)(iv).
Policy Paragraph 4(b) is not limited to the prohibitions stated in subsections (i) through (iv). The prohibitions identified in these subjections are expressly stated as being non-exclusive. As such, a panel may find bad faith conduct of some other type. However, in the present action the panel finds no basis to do so.
The Complainant has failed to establish the third element of the policy.
Reverse Domain Name Hijacking
Rule 1 of the Uniform Domain Name Dispute Resolution Policy provides for “reverse domain name hijacking,” which is defined as “…using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”
See Collective Media, Inc. v. CKV/COLLECTIVEMEDIA.COM, D2008-0641 (WIPO July 31, 2008)(finding bad faith on the part of complainant sufficient to constitute Reverse Domain Name Hijacking where the registration date of the domain name was prior to the trademark rights accruing), see also Labrada Bodybuilding Nutrition, Inc. v. Glisson, FA 250232 (Nat. Arb. Forum May 28, 2004) (finding that complainant engaged in reverse domain name hijacking where it used “the Policy as a tool to simply wrest the disputed domain name in spite of its knowledge that the Complainant was not entitled to that name and hence had no colorable claim under the Policy”).
In the instant action, the Complainant has not established rights under the Policy and for the reasons state above should have known it could not do so. Further, the Complainant filed its trademark application shortly after it was unable to acquire the Disputed Domain Name from the Respondent on acceptable terms. The panel finds that failing in this effort, the Complainant undertook to use the Policy to acquire the Disputed Domain Name.
The panel finds that the Complaint has attempted reverse domain name hijacking in violation of the Rules.
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 <joopa.com> domain name REMAIN WITH Respondent.
The Honorable Carolyn M. Johnson, (Ret.), Kendall Reed, Esq., C.Arb., and Professor David E. Sorkin as Panelist.
Dated: March 27, 2013
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