Bootler, LLC v. Rodolfo Fernandez
Claim Number: FA1605001677296
Complainant is Bootler, LLC (“Complainant”), represented by Tanja Proehl of Greer, Burns & Crain, Ltd., Illinois, USA. Respondent is Rodolfo Fernandez (“Respondent”), represented by Daniel T. Batten, Missouri, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bootler.com>, registered with GoDaddy.com, LLC.
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.
Anne M. Wallace, QC, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 31, 2016; the Forum received payment on May 31, 2016.
On June 1, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <bootler.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 June 2, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 22, 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@bootler.com. Also on June 2, 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.
A timely Response was received and determined to be complete on June 22, 2016.
On June 24, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Anne M. Wallace, QC, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts:
· Under the BOOTLER mark, Complainant operates a business providing searchable websites featuring goods and services of other vendors. Complainant has filed a trademark application for the mark with the United States Patent and Trademark Office (“USPTO”) (Serial No. 86928281, filed Mar. 3, 2016). Complainant has common law rights in the BOOTLER mark which date back to at least as early as December 2, 2015. Respondent’s <bootler.com> is identical to the BOOTLER mark under Policy ¶ 4(a)(i).
· Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name because the WHOIS does not indicate as such. The domain has been inactively held since its registration in 2003, evincing no bona fide offering of goods or services or any legitimate noncommercial or fair use.
· Respondent registered and used the disputed domain name in bad faith. Respondent offered the disputed domain name for sale to Complainant in excess of out-of-pocket costs per Policy ¶ 4(b)(i). Registrar communicated Respondent’s willingness to sell for “at least a couple hundred thousand dollars”). Respondent’s inactive holding of the disputed domain constitutes bad faith registration and use per Policy ¶ 4(a)(iii).
B. Respondent
Respondent asserts:
· Complainant adopted the BOOTLER junior mark in December 2015.
· Respondent has rights and legitimate interests as it is actively engaged in software testing and in staging servers within a private intranet which relies on the disputed domain name, and intends on using the disputed domain name to host a website to sell the software. Such use evinces rights and legitimate interests as intent to make a bona fide offering of goods or services.
· No bad faith is evidenced as Respondent’s registration predates any rights Complainant has asserted by twelve (12) years. Complainant has made false statements surrounding Policy ¶ 4(b)(i) because Respondent never made an offer to Complainant; rather, Respondent asked GoDaddy for a formal written offer after receiving information of an anonymous, unsolicited offer of $100,000.00, but never received one.
· Complainant is engaged in an attempt to reverse hijack Respondent’s domain. Respondent registered the domain on June 1, 2003.
The Panel finds:
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.
Under the <BOOTLER> mark, Complainant’s business provides searchable websites featuring goods and services of other vendors. Complainant has filed a trademark application for the mark with the USPTO (Serial No. 86928281, filed Mar. 3, 2016). Trademark applications do not grant rights under Policy ¶ 4(a)(i). Complainant may, however, establish rights by demonstrating common law rights in the mark. See ValueVapor LLC v. Vicki Oxman, FA 1542157 (Forum Mar. 20, 2014) (denying Complainant’s rights under Policy ¶ 4(a)(i) as “[t]here is no evidence of a registered trademark and it has long been held that a pending application for registration is not sufficient to prove trademark rights.”); see also Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (holding, “A Complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out.”).
Complainant argues it has common law rights in the BOOTLER mark which date back to at least as early as December 2, 2015. Common law rights may be established by evidence of secondary meaning acquired through media recognition, evidence of amount spent on promotion of a mark, longstanding use of a mark, etc. See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Forum July 17, 2015) (holding, “Complainant has provided evidence of secondary meaning by providing evidence of length of use in the mark; evidence of holding an identical domain name; media recognition; and promotional material/advertising (including letterhead and business cards). Complainant has used its mark in the oil and gas industry since 1997. Complainant has used its mark in the real estate industry since 2004. Complainant’s rights were previously recognized in Klabzuba Oil & Gas, Inc. v. ross micheal, Claim Number: FA1505001619813.”). Here, Complainant has demonstrated use of the mark and media recognition. The use of the mark is established since at least December 2015. The Panel agrees Complainant has established common law rights in the BOOTLER mark dating back to December 2015.
Respondent’s <bootler.com> is identical to the BOOTLER mark under Policy ¶ 4(a)(i). The “.com” addition is irrelevant when considering Policy ¶ 4(a)(i). See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”).
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 (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 (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 argues Respondent is not commonly known by the disputed domain name because the WHOIS indicates “Rodolfo Fernandez” as registrant with no indication Respondent is in any way known as BOOTLER. The Panel finds this is sufficient evidence to raise an inference Respondent is not commonly known by the disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)).
Complainant also asserts Respondent has inactively held the domain since its registration in 2003, evincing no bona fide offering of goods or services or any legitimate noncommercial or fair use. Panels have agreed that inactive holding may demonstrate lack of rights and legitimate interests. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
Prima facie the evidence suggests Respondent is not commonly known by the disputed domain name and Respondent has not engaged in a bona fide offering of goods and services or any legitimate noncommercial or fair use. The onus then shifts to Respondent to establish rights or legitimate interests. Respondent claims to have been developing a sophisticated software system for the last thirteen years and in his declaration speaks of actively pushing forward with release of his software for commercial sale using a web site under the disputed domain name. He says he has invested substantial funds, time and energy and that he is testing the software on an intranet that relies on the domain name. Respondent has not, however, produced any evidence to substantiate any of these assertions. Policy ¶ 4(c)(i) requires use of or demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. With nothing more than his assertions, Respondent has not demonstrated his use of or preparations to use the disputed domain name and has not otherwise demonstrated any rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii).
For a finding of bad faith, Complainant must establish registration and use in bad faith. In Policy ¶ 4(b), there are four circumstances listed where bad faith will be established. None of these four circumstances apply to this case. Complainant claims Respondent registered the disputed domain name back in 2003 in the hopes it would someday be valuable and could be sold for an outrageous profit. Complainant relies on two factors to support this assertion.
First, Complainant asserts Respondent offered the disputed domain name for sale to Complainant in excess of out-of-pocket costs per Policy ¶ 4(b)(i). In his Declaration, DiBenedetto says the Registrar communicated Respondent’s willingness to sell for “at least a couple hundred thousand dollars.” Respondent, in his Declaration, asserts Complainant has made false statements because Respondent never made an offer to Complainant. Respondent says he asked GoDaddy to obtain a formal written offer after GoDaddy provided him with an anonymous, unsolicited offer of $100,000.00. Respondent says he never received a written offer. Respondent also notes Complainant has not submitted any evidence of any offer from Respondent, other than its own self-serving allegations.
The conflicting evidence from Complainant and Respondent raises credibility issues which cannot be assessed in this process. I am therefore unable to conclude whether Respondent did make an offer to sell to Complainant as Complainant alleges. Complainant has the onus to establish its assertions and is unable to do so.
Secondly, Complainant asserts Respondent’s inactive holding of the disputed domain constitutes bad faith registration and use per Policy ¶ 4(a)(iii). Panels have agreed with such arguments in some circumstances. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”).
Respondent, on the other hand, asserts no bad faith is possible because Respondent’s registration predates any rights Complainant may have by twelve (12) years. See Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Forum May 16, 2007) (determining the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark). The Panel agrees with this assertion. Respondent conceived of and registered the disputed domain name in June of 2003. Complainant first became interested in the domain name in June of 2015, some twelve years later. The disputed <bootler.com> domain name uses the term BOOTLER which is not an actual word in the English language. To suggest Respondent had the aforethought to predict Complainant would choose this very word to start a business in 2015 defies logic.
Complainant, therefore, has failed to establish bad faith registration and use of the disputed domain name.
Reverse Domain Name Hijacking
The Panel is not satisfied Complainant engaged in reverse domain name hijacking. Complainant has failed to satisfy its burden under the Policy, but this does not necessarily lead to a finding of reverse domain name hijacking. See ECG European City Guide v. Woodell, FA 183897 (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). There is no evidence before the Panel of bad faith on Complainant’s part.
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 <bootler.com> domain name REMAIN WITH Respondent.
Anne M. Wallace, QC Panelist
Dated: June 28, 2016
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