Rive, LLC, a limited liability company organized under the laws of Nebraska v. Bill R.
Claim Number: FA1305001501995
Complainant is Rive, LLC, a limited liability company organized under the laws of Nebraska (“Complainant”), represented by Matt Catlett of 301 S. 13th Street, Suite 101, Nebraska, USA. Respondent is Bill R. (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rive.com>, registered with eNom, Inc.
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.
Calvin A. Hamilton, Honorable Neil Anthony Brown, Q.C. Honorable Carolyn M. Johnson (Ret.) as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 28, 2013; the National Arbitration Forum received payment on May 28, 2013.
On May 28, 2013, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <rive.com> domain names is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 May 29, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 18, 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@rive.com. Also on May 29, 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 June 18, 2013.
Complainant submitted an Additional Submission on June 23, 2013, which was determined to be compliant.
Respondent submitted an Additional Submission on June 28, 2013 which was also determined to be compliant.
On June 28, 2013, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Calvin A. Hamilton, the Honorable Neil Anthony Brown Q.C. and the Honorable Carolyn M. Johnson (Ret.) 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.
Complainant owns the RIVE mark, which is registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,016,626 filed March 2, 2010; registered August 23, 2011). See Complainant’s Annex A. Complainant uses the RIVE mark in connection with reusable glass containers for beverages.
Respondent registered the <rive.com> domain name, which does not resolve to an active website. The <rive.com> domain name is identical to Complainant’s RIVE mark. Respondent is not commonly known by the disputed domain name, as indicated by the information provided in the WHOIS record. Respondent registered and uses the <rive.com> domain name in bad faith, because Respondent attempted to sell the domain name for $45,500, fails to make an active use of the domain name, and owns at least 25 other domain names that demonstrate Respondent is a cybersquatter.
B. Respondent makes the following allegations:
Respondent is a consultant and web developer that registers, incubates, and develops portfolio domains. Respondent has a legitimate interest in the <rive.com> domain name, as it uses the domain name in conjunction with its e-mail service for professional and personal correspondences. Respondent registered the domain name on June 21, 2004, prior to the time Complainant became a legal entity in 2009, and was not aware of Complainant’s existence at the time it registered the domain name. Since a period of time has passed between the time Respondent registered the disputed domain name and Complainant brought suit, the doctrine of laches applies. Respondent has used the <rive.com> domain name continuously since the date of registration. The <rive.com> domain name is not identical to Complainant’s mark, as it contains none of the stylized characteristics associated with Complainant’s mark. The nature of Respondent’s business in developing portfolio domains requires that Respondent keeps numerous domain names in its possession, and sells the domain names in order to build its website. A supply of generic domain names is a business necessity for Respondent, which allows it to offset the cash purchase price and accelerate implementation efforts, and as such there is no bad faith in selling a domain name.
Complainant has no enforceable rights in the mark aside from the stylized logo mark as registered with the USPTO, and further, the word “rive” is an ordinary word in the English language, meaning “to rend or tear apart”; in the French language, meaning “shore” or “bank”; and in various other geographical contexts as specific rivers, municipalities, or communes. Complainant provides no evidence of substantive rights in its RIVE mark prior to Respondent’s registration of the domain name in 2004. Complainant has brought the Complaint in bad faith, demonstrating reverse domain name hijacking.
The Panel notes that Respondent registered the <rive.com> domain name on June 21, 2004.
C. Additional Submissions
Complainant makes the following allegations in its Additional Submission:
The stylized or design elements are generally incapable of being represented within a domain name, and are therefore typically disregarded when assessing identicality or confusing similarity, and rather domain names are assessed in the context of the alpha-numeric components and dominant textual components of the mark. Respondent’s claim that the trademark is not identical is based improperly on the claim that Complainant’s rights in the RIVE mark are specific to the stylized components thereof.
Respondent’s assertion that it has legitimate interests in the domain name due to its use as an e-mail services is mischaracterized, as such use is inconsequential and incidental relative to a domain name’s registration.
Complainant stipulates that although Respondent originally registered the disputed domain name in 2004, Respondent then renewed the domain name registration on May 23, 2012, and although registration renewal is not “registration” for determining bad faith, previous panels have nonetheless recognized the harshness of the rule and have concluded that renewal may be considered registration when making a determination of bad faith. See Eastman Sporto Group LLC v. Jim & Kenny, D2009-1688 (WIPO Jan. 3, 2010). Respondent argues that bad faith cannot be established without actual notice of a trademark, which is incorrect, as actual notice is not required where the trademark is registered in the same jurisdiction as Respondent. Because both parties are located in the United States, Respondent had notice of Complainant’s mark. Finally, the doctrine of laches, which Respondent claims as a defense, does not apply under the UDRP.
Respondent makes the following allegations in its Additional Submissions:
Complainant asserts that figurative, stylized or design elements in a trademark are generally incapable of representation in a domain name. In response to this assertion, Respondent hereby submits Annex I, which clearly demonstrates representation of Complainant's interest acquired in the stylized RiVÉ trademark can, in fact, be registered as a domain name.
Even if the Complainant was not able to register the domain name corresponding to its stylized trademark, which is denied by the Respondent, any interest the Complainant acquired in the trademark rive which is further denied by the Respondent, bears no enforceable rights apart from the registered mark in stylized form as evidenced by the fact that rive is an ordinary dictionary word in both the English and French language that has not, and cannot be monopolized by the Complainant.
In response to the assertion that the e-mail address corresponding to the disputed domain name was a mere creation, Respondent asserts that this is a blatantly misguided allegation, and respectfully asks the Panel to consider the active use of the e-mail service as evidenced by Annex D2 and subsequently elaborated on in Annex J, which demonstrates a multitude of personal and professional correspondences from 2005 - 2013, amongst its other uses and interests outlined in the original Response.
In response to the Complainant's Supplementary Exhibit 1, Respondent grossly denies the Complainant's mischaracterization of Exhibit 1 for the following reasons:
I. The disputed domain name is, and has always been, registered with the ICANN-accredited Registrar, eNom (see Annex K.) For proof of continuity on Registrar and Hosting Provider, see Annexes G1 through G8;
II. The disputed domain name has not, at any time in the past or present, been at or used GoDaddy as it's Registrar or Hosting Provider;
III. E-mail service for the disputed domain name was hosted by WebHost.info, a web hosting provider located in Chicago, Illinois USA, and was not, as Complainant implied, a default and passive GoDaddy e-mail service benefit;
IV. Therefore, the Respondent willingly, and at its own discretion sought out, and leveraged a web hosting provider for active use of its e-mail service.
Respondent alleges that contrary to the assertion in the Supplemental Complaint, recent Panels have overwhelmingly rejected the misguided attempt by a few panelists to rewrite the UDRP by disregarding the clear meaning of the test that a domain must be ‘REGISTERED' in bad faith as a necessary precondition to an order to transfer away the Disputed Domain Name from its registered owner.
The majority unequivocally rejected this attempt to change the meaning of the UDRP.
Further, an overwhelming majority of Panels since this decision have followed the reasoning of the majority in the SimplyBusiness.com case.
The Respondent requests that this Panel follow settled precedent on this issue for the reasons set forth in its analysis of the cases, for the manifest unfairness that would result from a contrary position, and for the sake of restoring some degree of uniformity to the interpretation of the Uniform Dispute
Resolution Policy.
Respondent suggests the fact that the Complainant persists in this harassing behavior is further justification for the Panel to return a finding of Reverse Domain Name Hijacking.
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.
Complainant asserts rights in its RIVE & Design mark through the registration it owns with the USPTO (Reg. No. 4,016,626 filed March 2, 2010; registered August 23, 2011). In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panel stated that the complainant’s rights in its marks were established by USPTO registrations. This Panel similarly concludes that Complainant has secured rights in its RIVE mark as a result of its USPTO registration, in satisfaction of Policy ¶ 4(a)(i).
Complainant makes the allegation that the <rive.com> domain name is identical to its RIVE mark. The Panel observes that the domain name includes Complainant’s mark in its entirety, adding only the generic top-level domain (“gTLD”) “.com.” Due to the inclusion of the mark in its whole form, with only the addition of a gTLD, the Panel determines that the <rive.com> domain name is not removed from the realm of being identical to Complainant’s RIVE mark. 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 generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
Complainant alleges in its Additional Submission that the design elements of the RIVE mark could not have been recreated in the <rive.com> domain name. The Panel finds the stylized elements of the RIVE mark to be irrelevant given the impossibility of appropriating design elements in a textual url. See Roux Labs., Inc. v. Sheldeez Beauty Salon, D2005-0799 (WIPO Sept. 30, 2005) (“The fact that Complainant’s stylized mark incorporates a distinctive design element is irrelevant to this analysis. Since a domain name can only consist of alphanumeric text, design elements are ignored when considering this element.”). Therefore, the Panel finds that the <rive.com> domain name is identical to the RIVE mark pursuant to Policy ¶ 4(a)(i).
While Respondent contends that the <rive.com> domain name is comprised of a common and generic term in many languages and as such cannot be found to be identical to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i) and finds that the disputed domain name is identical to the mark.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. 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.”).
Complainant asserts that Respondent should not be considered to have rights or legitimate interests in the <rive.com> domain name because the domain name registrant, according to the WHOIS information, is “Bill R.,” which does not show that Respondent is commonly known by the <rive.com> domain name. Previous panels have established that where the WHOIS information and the disputed domain name are incongruent, the respondent is typically not commonly known by the disputed domain name. See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
The Panel finds that as a result of the WHOIS information, Respondent is not commonly known by the <rive.com> domain name under Policy ¶ 4(c)(ii).
Complainant claims that Respondent fails to use the <rive.com> domain name to maintain an active website, and submits evidence showing a screenshot of the resolving website which displays the message, “Server not found.” Complainant further argues in its Additional Submission that Respondent’s mere ownership of an e-mail address corresponding to the disputed domain name is insufficient to demonstrate rights or legitimate interests.
Respondent admits that while no active website is associated with the <rive.com> domain name, same has been “leveraged as an e-mail service and has [been] used extensively in professional and personal correspondences.” Respondent submits its Annexes D1, D2, and D3, showing an e-mail inbox originating from the <rive.com> domain name.
The Panel determines that Respondent makes a satisfactory showing that it uses the disputed domain name in relation to its e-mail, and finds that linking a domain name to an e-mail address demonstrates a bona fide offering of goods or services under Policy ¶ 4(c)(i) and a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See IG Index PLC v. Index Trade, D2000-1124 (WIPO Oct. 16, 2000) (finding that the respondent has rights in the domain name because the respondent’s claimed use of the domain name is a “plausible explanation” to which the panel must give weight).
Respondent claims that it has a business based on creating and selling domain names to the highest bidder, which Respondent argues constitutes a use in connection with a bona fide offering of goods or services, so long as the registration was not undertaken with intent to profit or otherwise abuse a complainant’s trademark rights. In Franklin Mint Fed. Credit Union v. GNO, Inc., FA 860527 (Nat. Arb. Forum Mar. 9, 2007, the panel determined that the respondent had rights and legitimate interests in the disputed domain name, because it was a generic domain name reseller and owned many four-letter domain names.
Previous panels have found that the holding of a domain name for resale can in some circumstances constitute a Policy ¶ 4(c)(i) bona fide offering of goods and services. See Allocation Network GmbH v. Gregory, D2000-0016 (WIPO Mar. 24, 2000) (holding that under appropriate circumstances the offering for sale of a domain name can itself constitute a bona fide offering of goods or services for purposes of paragraph 4(c)(i) of the ICANN policy).
This Panel similarly determines that Respondent in this case makes a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and a legitimate noncommercial or fair use of the <rive.com> domain name pursuant to Policy ¶ 4(c)(iii), as Respondent may be considered a generic domain name reseller operating a business. Further, that Respondent could not have possibly targeted the Complainant since the Complainant did not exist at the time of the registration of the domain name.
Respondent also argues that the term of the <rive.com> domain name is common and generic, and therefore, Complainant does not have an exclusive monopoly on the term on the Internet. Respondent argues that the word “rive” means to “rip or tear apart, to break into pieces,” as defined in the English language, and also provides examples of the word’s meaning in French (meaning “shore” or “bank”), as well as use of the word in geographical locations.
The Panel agrees that Respondent’s Policy ¶ 4(a)(ii) rights and legitimate interests rests on the fact that it registers and sells generic domain names; an arrangement practiced by many business entities. See Alphalogix Inc. v. DNS Servs., FA 491557 (Nat. Arb. Forum. July 26, 2005) (“Respondent is in the business of creating and supplying names for new entities, including acquiring expired domain names. This is a legitimate activity in which there are numerous suppliers in the United States.”).
The Panel agrees and finds that under the present circumstances Respondent can establish rights or 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” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes); see also Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Nat. Arb. Forum July 23, 2004) (stating that “Complainant’s rights in the QWEST mark are limited to its application to the tele-communications industry,” where a variety of other businesses used the mark in unrelated fields).
Respondent further argues that Complainant’s mark is not exclusively associated with the Complainant. Respondent claims that the RIVE mark merely embodies a common and generic term. Respondent states that its decision to register this domain name reflects Respondent’s interest in obtaining generic terms. The Respondent asserts that possibly more than 940 million people would be familiar with the term which has meaning in over 83 countries. The Respondent also points out that there are more than 59,000 domain names which contain the letters “rive” and more than 39,000 of which begin with these letters.
The Panel agrees that when the term “rive” is used as a mere generic term, the registration of a domain name including that term gives Respondent rights and legitimate interests in the generic value of embodying a generic term in the domain name. See Walsh Bishop Assocs. v. Kim, FA 907521 (Nat. Arb. Forum Mar. 6, 2007) (“[A] respondent may have a legitimate interest in a domain name if the domain name is used to profit from the generic value of the word, without intending to take advantage of complainant’s rights in that word.”).
The Panel holds that Complainant has failed to make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The Panel finds to the contrary, that Respondent does have rights and legitimate interests in the disputed domain name under policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
In light of the Panel’s finding in favor of Respondent with respect to the existence of rights and legitimate interests in the disputed domain names pursuant to Policy 4(a)(ii), there is no need to reach an analysis of the third element. See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (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).
The Panel nevertheless finds that Complainant failed to meet its burden of proving bad faith registration and use under Policy 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy 4(a)(iii)); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Complainant makes the assertion that Respondent offers the <rive.com> domain name for sale for a price of $45,500 to the public See Complainant’s Annex J. Complainant argues that offering a domain name for sale is evidence that the domain name should be considered as having been registered and used in bad faith.
Respondent contends that its offer to sell the disputed domain name was not in bad faith, and rather, is a legitimate effort to sell property it owns. Further, in John Fairfax Publ’n Pty Ltd v. Domain Names 4U, D2000-1403 (WIPO Dec. 13, 2000), the panel concluded that no bad faith existed where the respondent sold generic domain names.
The Panel finds that because Respondent makes a business of selling domain names, the offer to sell the domain name at issue cannot be considered in bad faith under Policy ¶ 4(b)(i).
Complainant further alleges that Respondent owns at least twenty-five domain names, demonstrating that Respondent is a “squatter” with respect to domain names. Complainant submits its Annex E as evidence to show the volume of Respondent’s domain name ownership, which shows a variety of domain names registered under Respondent’s e-mail address.
The Panel notes, however, that the other domain names owned by Respondent are not at issue in the present dispute, and there is no evidence to suggest that they are actually infringing on the domain names. Therefore, the Panel will disregard Complainant’s arguments relating to prevention inferred from these various other domain names.
Complainant makes the allegation that Respondent does not maintain an active website associated with the domain name. Complainant submits evidence in its Annex B showing the webpage resolving from the disputed domain name, which states, “Server not found.” See Complainant’s Annex B.
The Respondent states that, while there is no website associated with the domain name, same has been leveraged as an e-mail service and has used it extensively in professional and personal correspondence. The Respondent attaches evidence of such use in Annexes D1, D2 and D3. The Respondent also refers to Nishan Systems, Inc. v Nishan Ltd, D2003-0204 (WIPO Jan. 5, 2003), in support of the proposition that the use of the domain name in connection with e-mail services is a legitimate use.
The Panel agrees and finds that under these circumstances Respondent’s use of the domain name in connection with e-mail services is a legitimate use.
Complainant argues in its Additional Submission that while Respondent did not have actual notice of Complainant’s RIVE trademark, Respondent nonetheless resides in the United States and thus has notice of Complainant’s USPTO registration. Complainant alleges that since its trademark is registered in the same jurisdiction as that in which Respondent resides, Respondent registered the <rive.com> domain name in bad faith.
The Panel concludes, however, that the existence of a trademark registration serves a respondent with constructive notice, and the Panel finds that constructive notice does not adequately support a finding of bad faith registration pursuant to Policy ¶ 4(a)(iii). See The Am. Auto. Assoc., Inc. v. Zag Media Corp., FA 1226952 (Nat. Arb. Forum Nov. 13, 2008) ("Mere constructive knowledge is insufficient to support a finding of bad faith.").
Respondent contends that the <rive.com> domain name is comprised entirely of a common term that has many meanings apart from use in Complainant’s RIVE mark. Moreover, Respondent contends that the registration and use of domain name comprising such a common term is not necessarily done in bad faith.
The Panel finds that a respondent is free to register a domain name consisting of common terms and that the domain name currently in dispute contains such common term.
The Panel therefore finds that Respondent did not register or use the <rive.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) ("Common words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis."); see also Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum July 9, 2004) (holding that the respondent’s registration and use of the <target.org> domain name was not in bad faith because the complainant’s TARGET mark is a generic term); see also Miller Brewing Co. v. Hong, FA 192732 (Nat. Arb. Forum Dec. 8, 2003) (finding that because the respondent was using the <highlife.com> domain name, a generic phrase, in connection with a search engine, the respondent did not register and was not using the disputed domain name in bad faith).
Respondent claims that Respondent’s RIVE mark was nonexistent when Respondent registered its domain name, and as a result, Respondent’s initial domain name registration could not possibly have been in bad faith. As stated by the panel in Open Sys. Computing AS v. Alessandri, D2000-1393 (WIPO Dec. 11, 2000), a respondent does not demonstrate bad faith registration if it registered the domain name before the complainant applied for and commenced use of the trademark upon which the domain name is based.
The Panel agrees that Respondent could not have registered the <rive.com> domain name in bad faith under Policy ¶ 4(a)(iii) if it was not aware of the mark because the RIVE mark did not exist at the time.
Nor does evidence exists on the record to make a finding that Respondent registered and used the disputed domain name in bad faith, and therefore finds that Respondent did not register or use the <rive.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii)).
Reverse Domain Name Hijacking
Respondent alleges that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute. Respondent contends that Complainant is attempting to deprive Respondent, the rightful, registered holder of the <rive.com> domain name, of its rights to use the disputed domain name. Respondent makes the argument that Complainant’s RIVE mark did not exist at the time Respondent registered the disputed domain name, and therefore Respondent could not possibly have registered the domain name in bad faith.
The Panel finds that although Complainant has failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith as such bad faith was not proven. See ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.”); see also Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001) (noting that a finding of reverse domain name hijacking requires bad faith on the complainant’s part, which was not proven because the complainant did not know and should not have known that one of the three elements in Policy ¶ 4(a) was absent).
Consequently, the Panel does not find that Claimant has engaged in reverse domain name hijacking in this case.
Doctrine of Laches
Respondent makes the allegation that the principle of laches is engaged, since the <rive.com> domain name has been registered since 2004 and Complainant took no action during that time to make a claim that Respondent improperly registered the domain name.
The Panel finds that while the doctrine of laches does not apply as a defense under the Policy, and correspondingly chooses to disregard Respondent’s assertions, the absence of any complaint over a long period of time in which domain names are in active use can suggest that such use does not give rise to a serious problem. See Meat & Livestock Comm’n v. Pearce, D2003-0645 (WIPO Oct. 27, 2003) (“Although laches is not a defence in itself under the Policy, the absence of any complaint over a long period of time in which domain names are in active use can suggest that such use does not give rise to a serious problem.”); see also Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) (“The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defence of laches has no application.”); see also Drown Corp. v. Premier Wine & Spirits, FA 616805 (Nat. Arb. Forum Feb. 13, 2006) (finding that the laches defense was inappropriate under the Policy and that the time frame within which the complainant brought the proceeding was of no consequential value); see also Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (“Respondent’s efforts at arguing related equitable defenses such as estoppel and acquiescence are equally misplaced as these legal arguments are not contemplated by the Policy. Moreover, recognition of these arguments in accordance with Respondent’s desires requires the Panel to make a legal determination regarding the continuing validity of Complainant’s DISNEY mark. Such action is beyond the scope of the UDRP proceeding and if Respondent desires such an outcome it should avail itself of the proper judicial proceedings by which such a result might be accomplished.”).[1]
As a matter of course, the Panel chooses to disregard Respondent’s assertions of a defense based on laches.
DECISION
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 <rive.com> domain name REMAIN WITH Respondent.
Calvin A. Hamilton, Esq.
Arbitrator
Honorable Carolyn M. Johnson (Ret.) Honorable Neil Anthony Brown Q.C
Dated: July 10, 2013
[1] Panelist Brown takes the view that laches or delay is available in UDRP proceedings and that such defences are contemplated by the Policy in view of the wide range of matters the Panel is expressly permitted to take into account by virtue of Rule 15(a). This does not mean that laches or delay will always result in the denial of a Complaint, but nor does it mean that laches or delay may never be considered. It means merely that the delay should be considered in the context of all of the facts and circumstances of the proceeding. In the facts and circumstances of the present case, the delay was considerable. However, as the case can be determined on the substantive issues there is no need for the Panel to make a definitive finding on the issue and its effect on the outcome of the proceeding.
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