DECISION

 

Master Call Connections, LLC v. Richard Seay / MasterCall, Inc.

Claim Number: FA1602001662809

PARTIES

Complainant is Master Call Connections, LLC (“Complainant”), represented by Mikhail Lezhnev, New York, USA. Respondent is Richard Seay / MasterCall, Inc. (“Respondent”), represented by Ann Seay, Florida, USA. Complainant and Respondent are collectively referred to in this Decision as “Parties.”

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is mastercall.com, registered with Gandi SAS.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

David J. Steele, Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on February 25, 2016; the Forum received payment on February 25, 2016.

 

On March 1, 2016, Gandi SAS confirmed by e-mail to the Forum that the mastercall.com domain name is registered with Gandi SAS and that Respondent is the current registrant of the domain name. Gandi SAS has verified that Respondent is bound by the Gandi SAS registration agreement and has thereby agreed to resolve domain name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On March 1, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 25, 2016 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@mastercall.com. Also on March 1, 2016, 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 March 21, 2016, Respondent expressly requested an automatic four (4) calendar days to respond to the Complaint pursuant to UDRP Rule 5(b).

 

A timely Response was received and determined to be complete on March 25, 2016.

On March 31, 2016, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed David J. Steele as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

 

A. Complainant

 

Complainant has rights to MASTERCALL which it has registered with the United States Patent and Trademark Office (“USPTO”). Complainant has also submitted a printout from the USPTO’s TESS system for U.S. Reg. No. 3,956,397 for the mark MASTERCALL (the “‘397 Registration”). The ‘397 Registration lists the owner as Master Call Communications (a New Jersey Corporation)[1]. The trademark registration for the mark MASTERCALL was applied for on September 3, 2008 and claims a first use in commerce of January 1, 2000.

 

Respondent’s domain name mastercall.com is identical or confusingly similar to Complainant’s MASTERCALL mark.

 

Respondent is a non-existing company that has no legitimate reason for maintaining the domain name in question. MasterCall, Inc., Respondent, currently holds the domain name mastercall.com. MasterCall, Inc. was a company in Georgia until it stopped operating in 2010. An exhibit showing a printout from the Georgia Corporations Division website is attached to the Complaint; the exhibit shows that Mastercall, Inc. was administratively dissolved on December 31, 2015.

 

The website [available at mastercall.com] is inactive, lacks content, and appears to have no legitimate purpose. Although the [website available at] mastercall.com indicates that it is reachable at websales@mastercall.com, that e-mail address is inoperative (any e-mail to it receives an auto error response that the email address does not exist). An exhibit showing the website available at mastercall.com is attached to the Complaint; the exhibit is shown below:

 

 

 

Before knowing of ICANN’s dispute proceedings, Complainant offered Respondent $5,000 for the domain name. Respondent refused and demanded $15,000 without providing any legitimate reason for Respondent’s retention of the domain name.

 

Since Respondent is a dissolved non-existent entity that has no content or useful information on mastercall.com, it appears that Respondent is maintaining the [mastercall.com domain name] for the sole reason of demanding or extorting funds from Complainant for the right to use the domain name.

 

Respondent’s conduct constitutes bad faith, as Respondent’s domain name related business terminated in 2010, Respondent conducts no business or services from the domain name, and Respondent’s demand of $15,000 grossly exceeds Respondent’s out‑of‑pocket domain name expenses.

 

B. Respondent

 

In 1993, Respondent coined the term “MasterCall.” Respondent incorporated MasterCall, Inc. and obtained the domain name mastercall.com. Respondent has maintained ownership of the domain name and done business under this name [MasterCall] continuously for the last 23 years. Respondent further contends that its customers identify Respondent as MasterCall.

Complainant’s company, Master Call Communications, Inc. (the predecessor to Master Call Communications, LLC) was not established until 2000 (7 years after Respondent acquired the domain name). Complainant could have, at the time of its formation, conducted a simple internet search to determine that the mastercall.com domain name was in use. Complainant could have, at that time, selected another name if Complainant believed Respondent’s choice of names would present a problem. Contrary to Complainant’s current contention regarding the subject domain name, at the time Complainant selected its company name, Complainant did not believe that the similarity of the subject domain name, owned by Respondent, would be a problem with Complainant’s selected company name.

 

Respondent’s business originally consisted of two components: a real estate hotline and a consulting service. Respondent closed the real estate hotline but continues its consulting service with customers with whom Respondent had a prior relationship. In 2015, on the advice of Respondent’s accountant, and for tax reasons, Respondent allowed the state to dissolve Mastercall, Inc. Respondent reports all income as a self-employed business.

 

Respondent admits that the website does not contain much information at this time. Respondent does not wish to be contacted via the website for inquiries about its former Real Estate Hotline.

 

Respondent continues to use the mastercall.com domain name to operate several MasterCall email addresses. Specifically, Respondent uses: [redacted]@mastercall.com and [redacted]@mastercall.com. Respondent uses these email addresses in connection with its consulting business. Respondent offers as evidence of this use the fact that it received the Complaint by email to one or more of the addresses. Respondent further contends that it has distributed these email addresses to hundreds of customers over the 23 years it has owned the domain name. Respondent contends that this use is a legitimate business purpose.

 

Respondent explains that it would be expensive and time consuming to identify and contact all of the people who have the email addresses it uses under the mastercall.com domain name, and that if Respondent lost the domain name, Respondent would inevitably miss any future emails resulting in lost business opportunities.

 

Respondent contends that it has tried not to tarnish the name of Master Call Communications. Respondent also contends that when it has received inquiries from individuals trying to contact Complainant, it provided them with the appropriate contact information.

 

Complainant first contacted Respondent and asked about purchasing the domain name in 2007. The Parties exchanged offers/counteroffers but were unable to reach an agreement (the Complainant offering to buy the domain name for $40,000; Respondent offering to sell it for $100,000 and several other terms that permitted Respondent to continue using the domain name for several email addresses and webpages). Respondent provides multiple screen shots of the purported email exchanges.

 

In 2013, the Parties again engaged in negotiations over the possible sale of the domain name. These negotiations included multiple emails, and at least one telephone conversation, between the Parties, and lasted until February, 2014. Like the 2007 effort, the Parties did not reach an agreement to sell the domain name (the Complainant offering to buy the domain name for $2,500; the Respondent offering to sell it for $15,000 and several other terms that permitted Respondent to continue using the domain name for several email addresses).

 

Respondent requests that the Panel find that the Complaint was brought in bad faith, and that Complainant is engaged in reverse domain name hijacking. Respondent asserts that the Complaint was brought primarily to harass Respondent, and that Complainant is using this process in order to circumvent monetary negotiations.

 

FINDINGS

 

For the reasons set forth below, the Panel finds Complainant is NOT entitled to the requested relief. The Panel also finds that reverse domain name hijacking HAS occurred.

 

DISCUSSION

 

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.

 

Identical and/or Confusingly Similar

 

The Panel finds that the Complainant has, as noted above, a registration incorporating its MASTERCALL mark including, in particular, the ‘397 Registration. Accordingly, Complainant owns trademark rights for the purposes of this element of the Policy. Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (holding that a trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).

 

The second level of the disputed domain name, mastercall, is identical to the Complainant’s MASTERCALL mark. The domain name contains the entire mark along with only the addition of the gTLD “.com.” Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to the complainant’s TERMQUOTE mark). Accordingly, the Panel finds that the mastercall.com domain name is identical to the MASTERCALL mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

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”).

 

Here, Complainant has not made a prima facie case because the submitted evidence is plainly inconsistent and contradicts Complainant’s claim that Respondent lacks a legitimate interest in the subject domain name. Accordingly, the burden to prove that Respondent does not have rights or legitimate interests in the subject domain name must be carried by Complainant.

 

Complainant claims that Respondent, MasterCall, Inc., is a non-existing company that has no legitimate reason for maintaining the subject domain name. Complainant has provided evidence that “MasterCall, Inc.” was dissolved on December 31, 2015. Complainant is correct, and Respondent admits that MasterCall, Inc. was dissolved.[2]

 

Complainant further asserts that:

 

“The website [available at mastercall.com] is inactive, lacks content, and appears to have no legitimate purpose. Although the [website available at] mastercall.com indicates that it is reachable at websales@mastercall.com, that e-mail address is inoperative (any e-mail to it receives an auto error response that the email address does not exist).”

 

However, Complainant’s Exhibit 4 shows the website’s current use and disproves Complainant’s other assertions regarding the use of the domain name. The exhibit shows that the website available at mastercall.com is active, has content, and is being used in connection with Respondent’s consulting services. That the email address listed on the website is inoperative is probative, but does not outweigh the obvious conclusion that Respondent is using the domain name in connection with its own MasterCall business.

Complainant places too much emphasis on the fact that Respondent’s former corporation was wound down. Trademark and service mark rights, as opposed to a corporate name or business entity, are created upon use of the mark in the ordinary course of business. 15 U.S.C. § 1127; Hanover Star Milling Co. v. Metcalf, 240 U.S. 403 (1916). Here, Complainant’s Exhibit 4 documents that Respondent (albeit not the legal entity that originally registered the domain name – but a person(s) who obtained the rights to the domain name from the original registrant) is using the subject domain name in connection with its consulting services.

Respondent, in its reply, explains that Respondent’s business originally consisted of two components: a real estate hotline and a consulting service. Respondent closed the real estate hotline but continues its consulting service with customers with whom Respondent had a prior relationship. Further, Complainant’s Exhibit 4 supports Respondent’s use of the domain name in connection with Respondent’s consulting services. Exhibit 4 also substantiates Respondent’s claim that its customers identify Respondent as MasterCall, and that Respondent is known as MasterCall.

 

The Policy provides several specific circumstances, which if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate a respondent’s rights or legitimate interests to the domain name. Policy ¶ 4(c). Here, the evidence supports a finding that several of these circumstances exist.

 

First, Policy ¶ 4(c)(i) provides, “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.” In this case, the Panel finds that Respondent used the domain name in connection with its consulting services - a bona fide offering of service - before any notice of the dispute. 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).

 

Moreover, even if the website available at the subject domain name was inactive, as Complainant incorrectly argues, Respondent was plainly using the domain name for email. The 2007 negotiations, while not resulting in a meeting of the minds, detail one important term which Respondent requested in its offer. Specifically, Respondent stated in its offer: “We have a number of email addresses that we would like to maintain for a period of five years. These addresses include [redacted].” Similarly, the 2013/2014 negotiations also included Respondent informing Complainant that it was currently using the subject domain name, and required continued use of several email addresses on the subject domain name should Respondent sell the domain name to Complainant. The lawful use of a domain name for email is a bona fide use under the Policy.

 

Second, Policy ¶ 4(c)(ii) provides, “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. Again, Respondent is known as MasterCall, and has been for 23 years. See Avnet, Inc. v. Aviation Network, Inc., D2000-0046 (WIPO Mar. 24, 2000) (finding that the respondent was commonly known by the <avnet.net> domain name because the respondent submitted “evidence that it was known by the name AVNET for at least ten years prior to its domain name registration”).

 

The Panel finds that the Complainant has not met its burden to establish this element of the Policy.

 

Registration and Use in Bad Faith

 

Complainant claims to have offered to purchase the domain name for $5,000, and claims that Respondent counteroffered with $15,000.00, without any explanation for this amount.

 

Complainant contends that Respondent uses the mastercall.com domain name in bad faith because it has offered to sell the domain to Complainant for $15,000, an amount in excess of Respondent’s out-of-pocket expenses. Respondent’s exhibits documenting the offers and counteroffers support these amounts.

 

Whether Respondent’s demand of $15,000 grossly exceeds Respondent’s out-of-pocket expenses is not the test. The Policy provides for a finding of bad faith if the Panel finds, “circumstances indicating that [a respondent] 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 your documented out-of-pocket costs directly related to the domain name.” Policy ¶ 4(B)(I) (emphasis added).

 

In this case, the subject domain name was registered many years before Complainant existed. Accordingly, Respondent could not have registered or acquired the domain name primarily for the purpose of selling it to Complainant. Further, Respondent’s 23 years of bona fide use of the domain name further support the conclusion that Respondent did not register the domain name primarily to sell it to Complainant.

 

As discussed above, while Respondent’s corporation may have been wound down, Respondent’s legitimate use of the domain name has been continuous. 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); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).

 

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 asserts that the Complaint was brought primarily to harass Respondent, and that Complainant is using this process in order to circumvent monetary negotiations.

 

“Reverse domain name hijacking” is a term of art to the Policy. Reverse domain name hijacking means using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name. Rules ¶ 1; See NetDepositVerkaik v. Crownonlinemedia.com, D2001-1502 (WIPO Mar. 19, 2002) (“To 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.”); 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”).

 

Here, the evidence shows that Complainant was aware Respondent was using the domain name in connection with Respondent’s consulting business. Specifically, the evidence includes multiple emails during the 2007 and 2013/2014 negotiations that made clear to Complainant that Respondent was using the domain name in connection with its ongoing consulting business, and that Respondent desired to continue using certain emails on the domain name even if a sale to Complainant were consummated. Further, Complainant’s Exhibit 4 confirms what Complainant already knew from its multiple contacts with Respondent during these negotiations that Respondent was using the domain name in connection with its bona fide offering of its consulting services.

 

Complainant conveniently ignored this information when preparing its Complaint and instead, made misstatements to the Panel including, “[t]he website [available at mastercall.com] is inactive, lacks content, and appears to have no legitimate purpose” despite its knowledge of, and plain evidence to the contrary.

 

Similarly, Complainant explained to the Panel that “Respondent refused [Complainant’s $5,000 offer] and demanded $15,000 without providing any legitimate reason for [Respondent’s] retention of the domain name.” The emails exchanged between the Parties, which are attached as exhibits to Respondent’s Reply, make clear that during numerous good-faith negotiations between the Parties, Respondent was making a business decision regarding selling its domain name. Respondent further explained, generally, that it would have been expensive and time consuming to change its domain name. Respondent explained in one email,

 

“We have further assessed the impact in selling our domain name. We have been in business since 1993 and much of our business through referrals, many of whom find us via the internet. We have investment in printed materials such as business cards, stationary as well as yard signs. In addition, we have to get the word out to our real estate agent base and they will have to update their materials that they provide to their sellers. In short, it will not be an easy transition.”

 

This is far cry from “… without providing any legitimate reason for [Respondent’s] retention of the domain name.”

 

Of course, given the facts of this case, Respondent need not have provided any reason for not selling the subject domain name. But here, Respondent did provide its reasons yet, Complainant failed to accurately convey that fact to the Panel. Complainant likely chose to inaccurately convey that fact to the Panel to bolster its case. Complainant omitted these important facts from its Complaint, notwithstanding its certification that “the information contained in [the Complaint] is to the best of Complainant’s knowledge complete and accurate. (emphasis added).

 

Just as in NetDepositVerkaik, Respondent has shown knowledge on the part of Complainant of Respondent’s right or legitimate interest in the subject domain name. Further Complainant’s misstatements and omissions of material facts evidence that Complainant is merely using “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”). Labrada Bodybuilding Nutrition, Inc.

 

The Panel finds that reverse domain name hijacking has occurred.

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 mastercall.com domain name REMAIN WITH Respondent.

 

The Panel also finds that reverse domain name hijacking HAS occurred.

 

David J. Steele, Panelist

Dated: April 12, 2016