Electronic Transaction Systems Corporation v. Will E.
Claim Number: FA1406001563968
Complainant is Electronic Transaction Systems Corporation (“Complainant”), represented by Andrew Sensi., Esq., of Michael P Fortkort PC, Virginia, USA. Respondent is Will E. (“Respondent”), represented by Ari Goldberger of Esqwire.com, New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <emoney.com>, registered with Inames Co., Ltd.
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.
Dianne Cabell, Ho-Hyun Nahm and Debrett G. Lyons.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 11, 2014; the National Arbitration Forum received payment on June 11, 2014.
After multiple attempts to contact Inames, the Forum notified ICANN on June 12, 2014 that all of the emails to the email address provided by ICANN for Inames were being rejected by Inames’ server. The Forum notified ICANN and proceeded without verification as required by ICANN.
On June 16, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 7, 2014 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@emoney.com. Also on June 16, 2014, 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.
On June 24, 2014, Inames Co., Ltd. confirmed by e-mail to the National Arbitration Forum that the <emoney.com> domain name was locked and asked for the verification email to be re-sent. The re-sent email was rejected by Inames’ server.
A timely Response was received and determined to be complete on July 7, 2014.
Complainant made Additional Submissions on July 14, 2014 which the Forum found to be compliant with Supplemental Rule 7.
On July 15, 2014, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Dianne Cabell, Ho-Hyun Nahm and Debrett G. Lyons (chair) as the Administrative Panel (the "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
Complainant alleges trademark rights in EMONEY acquired through registration and asserts that the disputed domain name is identical to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent broadly denies each of those allegations. It submits, in particular, that Complainant has no trademark rights since (1) the trademark registrations on which Complainant relies are in the name of a third party, (2) there is no proof of common law rights, and (3) the term “EMONEY” is descriptive.
Respondent asserts a right to and legitimate interest in the disputed domain name because Respondent is a reseller of generic domain names, including the disputed domain name.
Respondent submits that it did not register the disputed domain name in bad faith because at the time of registration it had no knowledge of Complainant or its claim to trademark rights.
Finally, Respondent seeks a finding of reverse domain name hijacking because Respondent asserts that the complaint has been brought in bad faith, using misleading, incorrect, and inaccurate information.
The factual findings pertinent to the decision in this case are that:
1. Complainant provides a system to facilitate monetary payments under the name EMONEY.
2. Complainant references two United States Patent and Trademark Office ("USPTO") registrations for the trademark EMONEY but neither nominates Complainant as its proprietor.
3. Respondent is a domain name reseller.
4. The disputed domain name was registered on January 11, 2000.
5. The domain name was not in use at the time the complaint was filed but has, in past times, been used to advertise various financial services.
6. Complainant approached Respondent to purchase the domain name in response to which Respondent asked for USD300,000 in exchange.
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 disputed domain name is legally identical to the trademark[i] but there is an open question concerning the threshold matter of trademark rights.
The USPTO registrations on which Complainant relies stand in the name of “Edward Vaughan” and there is no proof of a connection between that owner and Complainant[ii]. Accordingly there is no clear evidence that Complainant has registered trademark rights.
Neither is there adequate proof of common law trademark rights. Whilst Complainant states it has used the trademark since 1999, the only corroborating evidence of that claim is the 1999 first use in commerce date from the USPTO registrations which, as noted, do not belong to Complainant. In any event there is none of the usual indicia of secondary meaning which a panel would expect to see.
The Panel may have caused an Order to issue inviting Complainant to provide further and better particulars of its claim to rights in the registrations and/or of its common law trademark rights but, for reasons which follow, the Policy ¶ 4(a)(ii) and (iii) findings make that request for supplementary information unnecessary.
Panel finds that Complainant has not satisfied the requirements of Policy ¶ 4(a)(i).
Policy ¶ 4(c) states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no right or legitimate interest in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating that right or interest.[iii]
The publicly available WHOIS information identifies Respondent as “Andrew Sensi” and so there is no prima facie evidence that Respondent might be commonly known by the disputed domain name. There is no evidence that Respondent has any trademark rights. There is no evidence that Complainant has authorized Respondent to use the trademark and Complainant denies any such authorization.
There is no prima facie evidence that the disputed domain name has been used in connection with a bona fide offering of goods or services prior to notice of the dispute. At the time of the complaint there was no use of the domain name. Historically, the domain name had resolved to a website promoting a variety of financial services and loan services.[iv]
Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain name.
The critical question in this case is whether the disputed domain name has been used in connection with a bona fide offering of goods or services prior to notice of the dispute.
The Respondent first had notice of the dispute on June 16, 2014, the date on which the Forum served the complaint on Respondent. Nothing turns on that date since all relevant events took place more than a decade earlier.
Respondent states that he is a generic domain name reseller and that he registered the domain name during the ecommerce boom when there was a rush of interest in “e-” prefixed names. Respondent submits that the sale of domain names comprising generic terms is a bona fide offering of goods or services. The domain name is generic in the sense that it is apt to describe any electronic monetary matters or monetary dealings.
Panel is of the view that Respondent made bona fide use of the domain name either as part of a business which resells generic domain names and this was one such domain name, or as the host site for links to third parties offering goods or services linked in some way with electronic monetary matters.[v]
That said, Panel also accepts the consensus viewpoint of those applying this Policy that good faith use of that kind requires vigilant avoidance of the registration or use of domain names which might be confusingly similar to third party trademarks. The mere descriptiveness of a domain name does not create a legitimate interest in that domain name if it corresponds with the prior trademark of another. Put another way, the issue is not simply the legitimacy of Respondent’s business model, but whether it has a legitimate interest in the disputed domain name itself.
In this case, there is no cogent evidence that Respondent has shown a “willful blindness” of third-party rights, nor that constructive knowledge of such rights should attach to Respondent. The domain name was registered in January 2000. Even if it is accepted that Complainant is somehow the beneficial owner or licensed user of the USPTO trademark registrations, Reg. No. 4,462,300 was only filed May 23, 2013 and Reg. No. 2841887 was filed on January 4, 2002, both postdating registration of the domain name. Moreover, whilst the domain name registration postdates the claim to first use in commerce of the trademark by some few months, the only “proof” of first use in 1999 is the USPTO record. There is no evidence of a common law reputation in 2000 or indeed at any later point.
Accordingly, at the time of registration Respondent could not have done any meaningful due diligence on the term EMONEY and it would not have discovered Complainant’s USPTO filings.
Finally, Panel notes that the offer to sell the domain name to Complainant was only in response to Complainant approach and the USD300,000 is consistent with what must be a very desirable name.
The only evidence that might point away from Respondent’s bona fides is its involvement in two earlier UDRP proceedings, both resulting in findings adverse to Respondent. In particular, the complaint references MySpace Inc. v Will Eom, WIPO Case D2008-0448 (WIPO Jun. 30, 2008) in which the panel found Complainant had typosquatted the disputed domain name <mypsace.com> and NH Hoteles, S.A. v. Will Eom, D2010-0227 (WIPO Apr. 9, 2010) where Respondent’s registration of <nhotels.com> was transferred.
Respondent[vi] registered those names more than a decade ago and although that fact of itself might not excuse bad faith action, Panel takes the view that on the totality of the evidence before it in this case and having regard to the manifestly generic character of the term EMONEY, those earlier contested registrations already arbitrated should not cause this Panel to prejudge Respondent’s intentions.
In the result, Panel finds that Respondent has discharged the onus of proof that fell to it by showing that its actions came under Policy ¶ 4(c)(i). Accordingly, Complainant has also failed to establish the second limb of the Policy.
For the sake of a more complete understanding of this decision, Panel has gone on to undertake the Policy ¶ 4(a)(iii) analysis.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it was used in bad faith. Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
Even if Respondent was an astute cybersquatter who spotted the (unproven) public use of the Complainant’s trademark in 1999, fourteen years has since elapsed. In the absence of any compelling physical evidence, this passage of time makes the meaningful assessment of Respondent’s state of mind in 2000 difficult. Panel accepts as more likely than not to be true Respondent’s claim that, at the time it registered the disputed domain name, it had no knowledge of Complainant or of its trademark. Accordingly, none of scenarios (i)-(iii) above are triggered since they each depend on knowledge of Complainant or its trademark at the time of registration.[vii]
On the other hand, Policy ¶ 4(b)(iv) hinges on use and requires consideration because the domain name has been used. Over the years, the domain name has resolved to pages that promote various financial services, including unsecured loans, loans secured by security interests and mortgages. Complainant argues that this is competitive to its business interests and is proof of bad faith.
Panel disagrees. The use is all linked to the dictionary meaning of the word “money” and to the natural connotation of the term, “emoney”. By definition, the use of the domain name can be said to conflict with Complainant’s interests. However, Panel finds that Respondent did not intend “emoney” to refer to any particular good or service, still less to Complainant’s services. Panel considers that the use does not tell anything meaningful about bad faith.
Accordingly, Panel finds that none of the per se instances of bad faith use and registration outlined by Policy ¶ 4(b)(i)-(iv) apply. Nor, independently of those scenarios, does Panel find on a balance of the evidence that Respondent registered and then used the domain name in bad faith.
Complainant has failed to establish the third element under the Policy.
Reverse Domain Name Hijacking
Panel takes the view that a claim of reverse domain name hijacking is not to be taken lightly. A complainant’s failure to satisfy the Policy is a necessary but not sufficient condition to render a finding of reverse domain name hijacking.[viii]
In Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001) the panel noted that a finding of reverse domain name hijacking requires bad faith on a complainant’s part, which was not proven because the complainant did not know and could not have known that one of the three elements in Policy ¶ 4(a) was absent. Nonetheless, in the present case, Complainant has not only failed in its complaint, but it has failed to show each and every element of its case.
In Labrada Bodybuilding Nutrition, Inc. v. Glisson, FA 250232 (Nat. Arb. Forum May 28, 2004) the panel found reverse domain name hijacking where the complainant 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”.
Complainant’s assertion that Respondent is a “recalcitrant, serial cybersquatter” is, on the evidence, overstated. There is nothing to indicate Respondent has been recalcitrant (indeed, its reasonably argued Response in these proceedings is evidence otherwise) and the evidence of cybersquatting is limited to the two former UDRP proceedings already discussed, both concerned with domain names registered over a decade ago. Given that Respondent appears to continue to do business as a domain name reseller more than ten years afterwards, one view is that those were the mistakes of an immature business.
In NetDepositVerkaik v. Crownonlinemedia.com, D2001-1502 (WIPO Mar. 19, 2002) it was said that “[T]o establish reverse domain name hijacking, Respondent must show knowledge on the part of the complainant of the Respondent’s right or legitimate interest in the Domain Name and evidence of harassment or similar conduct by the Complainant in the fact of such knowledge.” In that respect there is something to be said for Respondent’s submission that these Administrative Proceedings have been brought as a “Plan B” after Complainant’s unwillingness to purchase the domain name at value.
Panel observes that the disputed domain name is clearly the name of choice for Complainant’s business and it would defy common sense if Complainant were to deny that it had not followed that path of the domain name over the course of fourteen years, looking for the time and opportunity to acquire it.
But does the bringing of these proceedings alone after failure to agree a price for the domain name constitute harassment? Probably not, unless it could also be said that Complainant uncontrovertibly knew either that it had no rights or that Respondent had rights.
Neither issue is plain. Given time and opportunity it is possible that Complainant could show trademark rights under Policy ¶ 4(a)(i). In any case Panel would be reluctant to say that Complainant had no trademark rights and was unable to show trademark rights.
Additionally, the activity of a domain name reseller is a precarious one as already noted. Complainant’s polemic regarding the business of speculation in domain names would suggest that it has a legitimate belief Respondent had no rights, a position no doubt underscored by Respondent’s earlier transgressions.
On balance, Panel finds that although Complainant might have better tempered its submissions there has been no attempt at reverse domain name hijacking. Contrary to Respondent’s submission, there is no evidence of overtly misleading, incorrect, and inaccurate information in the complaint.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <emoney.com> domain name REMAIN WITH Respondent.
Panel finds that Complainant has not engaged in Reverse Domain Name Hijacking.
Debrett G. Lyons
Dianne Cabell
Ho-Hyun Nahm
Panelists
Dated: July 28, 2014
[i] See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar.
[ii] In its Additional Submissions and following challenge to ownership of the registered rights, Complainant included an unsupported footnote that “Ed Vaughan is the owner of Complainant.” Were it of final consequence, Panel notes that USPTO trademark Reg. No. 4,462,300 gives the same address as that of Complainant and that on the application papers Edward Vaughan nominates his company as “of ETS Corporation”.
[iii] See Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000); Hanna‑Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006); AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006).
[iv] See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
[v] Panel accepts that Respondent is a domain name reseller and the reasoning of many panels that the business of registering and selling domain names for their generic value is a legitimate business practice protected under the Policy. See, e.g., Fifty Plus Media Corp. v. Digital Income, Inc., FA 94924 (Nat. Arb. Forum July 17, 2000).
[vi] Panel accepts that Will E. is one and the same as Will Eom.
[vii] See U.S. Nutraceuticals, LLC v. Telepathy, Inc., FA 365884 (Nat. Arb. Forum Jan. 17, 2005) (“Without knowledge of Complainant or its claim of right in the mark, it is difficult to see how Respondent could have the specific intent required for it to act in bad faith against the rights of Complainant.”)
[viii] 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.”).
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