Platterz Inc. v. Andrew Melcher
Claim Number: FA1705001729887
Complainant is Platterz Inc. (“Complainant”), represented by May M. Cheng of Osler, Hoskin & Harcourt LLP, Canada. Respondent is Andrew Melcher (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <platterz.com>, registered with GoDaddy.com, LLC.
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.
Charles A. Kuechenmeister
Dawn Osborne
David H. Bernstein
Complainant submitted a Complaint to the Forum electronically on May 2, 2017; the Forum received payment on May 2, 2017.
On May 3, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <platterz.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 May 11, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 31, 2017 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@platterz.com. Also on May 11, 2017, 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 May 30, 2017.
Complainant’s Additional Submission was received on June 2, 2017. Respondent’s Additional Submission was received on June 7, 2017.
On June 7, 2017, pursuant to Respondent's request to have the dispute decided by a three-member Panel, the Forum appointed Charles A. Kuechenmeister (Chair), Dawn Osborne and David H. Bernstein as Panelists.
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 has common law rights in the PLATTERZ mark under Policy ¶ 4(a)(i) because Complainant has become known under that name as a catering service and has thus established a secondary meaning in the mark. Respondent’s <platterz.com> (the “Domain Name”) is identical or confusingly similar to Complainant’s mark because it merely appends the generic top-level domain (“gTLD”) “.com” to the fully incorporated mark.
Respondent lacks rights and legitimate interests in or to the Domain Name. He is making no use whatever of that name (it does not resolve to an active webpage) and has no legitimate business interest other than to seek to sell it to another party at some later date. Under Policy ¶¶ 4(c)(i) and (iii), an inactive webpage may not be construed as a bona fide offering of goods or services or legitimate noncommercial or fair use of a domain name. Respondent is not commonly known by the Domain Name.
Respondent registered and is using the Domain Name in bad faith. He has a history and pattern of cybersquatting and owns nearly 13,000 domains. Registering numerous domains may be evidence of bad faith under Policy ¶ 4(a)(ii). Respondent has also failed to make an active use of the Domain Name, which also is evidence of bad faith under Policy ¶ 4(a)(iii).
B. Respondent
Complainant has failed to establish rights in the PLATTERZ mark because it is a generic term which cannot be registered as a trademark. Nor has Complainant established secondary meaning in the mark, as it has only 27 employees and 250 customers. Many other businesses are using the name Platterz as their trade or brand names. Even if Complainant did have common law trademark rights in PLATTERZ, they would be limited: people in other locations could use it, and people in Complainant’s location could use it for other goods and services.
Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). The Domain Name is common and generic, and therefore, Complainant does not have an exclusive monopoly on the term on the Internet.
Respondent registered the Domain Name in 2008, seven years before Complainant was organized as a business entity and seven years before it applied to register its alleged mark.
Respondent has the right to sell the Domain Name to any of the business entities using the name “Platterz.”
There are no famous trademarks included in the many domain names registered by Respondent.
There is no evidence that Respondent offered to sell the Domain Name to anyone. Indeed, when Complainant attempted to buy it from Respondent, Respondent replied that it was not for sale.
Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). Respondent registered the name at least six years before Complainant even existed or filed its trademark application. The fact that the website to which the Domain Name resolves is wholly blank shows that Respondent is not using it in bad faith.
Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute. Complainant is attempting to deprive Respondent, the rightful, registered holder of the <platterz.com> domain name, of its rights to use the disputed domain name.
C. Additional Submissions--Complainant
Respondent makes no attempt to show that he has a legitimate interest in any of his domain names. He does not assert that he ever had or has any future intention of using them, other than to sell them to the highest bidder once legitimate businesses are established and want to own them.
The Policy protects unregistered marks.
The fact that a respondent registered its domain name before the complainant acquired its right in the mark does not preclude the complainant from prevailing on its claim for transfer.
The fact that Respondent has renewed the Domain Name numerous times since learning of Complainant and its rights in the PLATTERZ mark is evidence of bad faith.
Non-use of a domain name is evidence of lack of rights and legitimate interest, and of bad faith. Respondent says he refused to sell the Domain Name but his practice is to lease them and this is how he avoids being accused of cybersquatting.
Respondent has not offered evidence that any of the circumstances listed in Policy ¶ 4(c) as showing rights and legitimate interests in the Domain Name are present in this case.
The Policy is intended to prevent trafficking in domain names.
Although it is typically held that the date at which a domain was registered is considered by the panel, nothing in the Policy gives primacy to first adoption without legitimate use.
Because Respondent has had to spend time and funds to fight this case, it is highly foreseeable and probable that he will engage in future actions to disrupt the business of Complainant.
D. Additional Submissions—Respondent
The Policy was created to protect pre-existing trademarks from domainers that sought to extract money or divert customers from pre-existing marks.
Trademark law does not allow people to claim the exclusive right to use a descriptive and generic term for the name of their business. That is what PLATTERZ is.
Respondent has never sold a domain name. Respondent has never leased a domain name for payment. Nevertheless, it has the right to do so. There is nothing wrong with holding generic terms as domain names and selling them.
Mere non-use of a domain name is not indicative of no legitimate business interests.
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 has applied to register its PLATTERZ mark with the Canadian Trademark Office. See, Annex A to Complaint. The mere application for a trademark does not evidence actual rights in a 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.”); WIPO Decision Overview 3.0 at ¶ 1.1.4. Nevertheless, complainants may establish rights in a mark under common law in certain countries, including Canada, by showing use of an inherently distinctive mark in commerce or use of a descriptive mark in commerce that has acquired secondary meaning. Registration is not required to satisfy Policy ¶ 4(a)(i). See Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (“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 asserts that it has been using the name PLATTERZ in Canada since March, 2015. A screenshot of Complainant’s website at <platterz.ca> (Annex B to Complaint) shows that it offers catering and related services under its PLATTERZ mark. Complainant also submitted a list of its top customers as Annex C to the Complaint, listing more than 40 firms.
Contrary to Respondent’s arguments, PLATTERZ is not a generic trademark for an online platform that connects companies seeking catering for events with companies that provide catering services. PLATTERZ, as misspelled, might be generic for physical plates and platters, but it does not appear to be generic for online catering related services.
Whether PLATTERZ is descriptive or suggestive of such services is a closer question. Because the parties did not address this issue in their submissions, the Panel has little evidence on which to rely. On the thin record presented, the Panel is inclined to find that PLATTERZ is a suggestive mark because it does not directly describe the online platform provided by the Complainant; rather, it appears to require some amount of imagination to connect the mark with the specific services provided here. If the mark is suggestive, it would be inherently distinctive and thus entitled to protection as a common law trademark based on Complainant’s use of the mark in commerce for more than two years.
Even if the mark were found to be descriptive, it could be protected as a common law mark if it has acquired secondary meaning. Evidence of secondary meaning may be established by showing exclusive use of the mark in commerce for a period of time, evidence of advertising and sales, recognition of the mark by customers, unsolicited media attention, or other evidence showing that the relevant consuming public has come to associate the mark with goods or services provided by a single vendor, rather than as describing goods or services provided by multiple vendors. WIPO Decision Overview 3.0 at ¶ 1.3.
Respondent argues that Complainant has failed to establish secondary meaning in the PLATTERZ mark because Complainant has only 27 employees and 250 customers, and has operated primarily in the geographic area of Toronto, Ontario. But secondary meaning is not dependent on the size of a firm, its number of customers, or its geographic reach. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant’s rights in a common law trademark. WIPO Decision Overview 3.0 at ¶ 1.3. Rather, the principal question is whether the mark (if descriptive) is associated with one company or more than one company. Although the evidence is relatively thin, Complainant’s submissions are sufficient to show that Complainant has been conducting its catering business under the PLATTERZ mark for some time, at least in Toronto, Ontario, and that Complainant is known as the source of its PLATTERZ services in that market among hundreds of companies. Complainant has thus demonstrated its common law rights in that mark for the purposes of Policy ¶ 4(a)(i).
Likewise, Respondent’s Domain Name is identical or confusingly similar to Complainant’s mark because that mark appears verbatim within the Domain Name and is clearly recognizable as such. WIPO Decision Overview 3.0 at ¶ 1.7. The Domain Name merely appends the gTLD “.com” to the fully incorporated mark. The addition of a gTLD is considered irrelevant when distinguishing between a mark and disputed domain name. 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); WIPO Decision Overview 3.0 at ¶ 1.11.1.
For the reasons discussed above, the Panel finds that Domain Name is identical or confusingly similar to the PLATTERZ mark, in which Complainant has rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in the domain name. If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interest. If, though, the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Decision Overview 3.0 at ¶ 2.1
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) he is making no use whatever of that name (it does not resolve to an active webpage), (ii) he has no legitimate business interest other than to seek to sell it to another party at some later date, and (iii) he is not commonly known by the Domain Name. The first and third allegations, at least, appear to be true; for this reason, the Panel finds that Complainant has made a prima facie showing that Respondent has no rights or legitimate interests in the Domain Name. Accordingly, the Panel looks to the evidence offered by Respondent in support of his claim of rights or legitimate interests.
Respondent argues that Complainant has not established a prima facie case that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii) because the Domain Name is common and generic, and therefore Complainant does not have an exclusive monopoly on the term on the Internet. Further, Respondent registered the Domain Name in 2008, seven years before Complainant was organized as a business entity and seven years before it applied to register its alleged mark. Finally, Respondent argues that it has the right to sell the Domain Name to any of the several business entities using the name “Platterz.”
The fact that Complainant’s mark may consist of a descriptive term is certainly relevant for determining other elements of Complainant’s case (namely, whether Complainant has established trademark rights), but it is not relevant for the purposes of Policy ¶ 4(a)(ii). Similarly, the timing of Respondent’s registration of the domain name is relevant for determining other elements of Complainant’s case (namely, whether Respondent registered the domain name in bad faith), but again, that is not relevant to the question of whether Respondent has rights or legitimate interests in the domain name. In order to prevail on this element, Respondent must affirmatively identify some legitimate interest he has in the Domain Name.
Policy ¶ 4(c) lists the following three nonexclusive circumstances that can demonstrate rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(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 trademark or service mark at issue.
Respondent has submitted no evidence to establish that he has rights or legitimate interests under any of these categories, or any other category. Respondent does not provide any evidence that he has ever used the domain name for any purpose, and does not provide any evidence of any demonstrable preparations to do so. Respondent has not provided any evidence that the Respondent is known by the name PLATTERZ or any variation thereof. Complainant argues that Respondent is not making any legitimate use of the Domain Name, or any use of it at all for that matter, pointing out that the website resolving from it is a blank page, with nothing on it. Respondent confirms that this is correct.
The more difficult question is whether Respondent has the right to register and warehouse this Domain Name for some possible future, undefined use. Because Respondent has disclaimed any intention of selling the Domain Name to Complainant, and has not otherwise articulated a potential right or legitimate interest in this Domain Name, the Panel finds, on the record presented, that Complainant has sustained its burden of establishing that Respondent lacks rights or legitimate interests in this Domain Name.
Complainant shows that Respondent owns some 12,728 domain names (Annex F to Complaint). Complainant argues from all of this that Respondent’s business interest must be to sell the Domain Name to another party at some later date in order to disrupt its own successful business (Amended Complaint, p. 5). However, Complainant offers no evidence to support that speculation.
Respondent argues that he has the right to sell the Domain Name to any of the other fourteen pre-existing users of the PLATTERZ term (Response, p. 7 under heading “Sec 7b paragraph-4 It is obvious that.”) Nowhere, however, does Respondent say what he actually does with this or the many other domains he has registered, or what his plans or intentions for them may be.
Complainant argues that domain investing, which is what it accuses Respondent of doing, is contrary to the Policy, but UDRP panels have consistently found that investing in genuinely generic terms, for purpose of resale, is a legitimate business and that the acquisition of domain names consisting of common, dictionary terms for resale can confer rights and legitimate interests upon entrepreneurs who engage in this activity. See, X6D Limited v. Telepathy, Inc. WIPO Case No. D2010-1519, Network GmbH v. Steve Gregory, WIPO Case No. D2000-0016, John Fairfax Publications Pty Ltd v. Domain Names 4U and Fred Gray, WIPO Case No. D2000-1403. Incorp Services, Inc. v. RareNames, webReg, FA 559911, (Forum Nov. 19, 2005), General Machine Products Company, Inc., v. Prime Domains ) a/k/a Telepathy, Inc. FA 92531 (Forum Mar. 16, 2000. See also, Alphalogix Inc. v. DNS Servs., FA 491557 (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)”.
This principle, though, does not necessarily confer a right on the Respondent to this Domain Name. First, PLATTERZ is not a dictionary term; at best, it is a misspelling of a dictionary term (platters). There is no right in registration of misspellings. Cf. e-Duction, Inc. v. John Zuccarini, d/b/a The Cupcake Party & Cupcake Movies, WIPO Case No. D2000-1369 (concerning misspelling “eduction” of “education”). Second, Respondent is not making any use of the Domain Name in connection with its alleged dictionary meaning (nor has Respondent shown any demonstrable preparations to make such use). WIPO Decision Overview 3.0 at ¶ 2.10.1 (“Panels have recognized that merely registering a domain name comprised of a dictionary word or phrase does not by itself automatically confer rights or legitimate interests on the respondent; panels have held that mere arguments that a domain name corresponds to a dictionary term/phrase will not necessarily suffice. In order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning….”).
Considering all of the evidence, the Panel finds that Complainant has made a prima facie case and that Respondent has failed to come forward with evidence to rebut that showing. The possession of thousands of domain names could indicate that Respondent is in the business of buying domain names consisting of common dictionary words and turning them around for a profit—without attempting to take advantage of any third party rights in any marks but rather to take advantage of the inherent value in domain names comprised of dictionary words. Had Respondent offered evidence that he was engaged in this business, the Panel might have had a basis for finding rights and legitimate interests in the Domain Name, but Respondent offered no such evidence. As noted, Respondent has not established that PLATTERZ is a dictionary word. Furthermore, in his Additional Submission, Respondent asserts that he “has never sold a domain [name]” and that he “has never leased a domain for payment.” It is not clear what Respondent may have meant by the “for payment’ reference, but what is clear is that the record is utterly devoid of any factual basis for a finding that Respondent is an investor or reseller of domain names consisting of dictionary words. The Panel is left to speculate as to what his plans or intentions with respect to the Domain Name and the others he has registered may be. As stated above, once a Complainant establishes a prima facie case of no rights or legitimate interests, the burden of going forward with evidence shifts to Respondent. Kraft Foods Global Brands, LLC v. Jet Stream Enterprises Limited, Jet Stream, WIPO Case No. 2009-0547. In this case the Respondent has failed to meet that burden.
For the foregoing reasons the Panel finds that Complainant has sustained its burden of showing that the Respondent has no rights or legitimate interests in the Domain Name.
Respondent argues that there can be no bad faith on its part because he registered the domain name years before Complainant began its business. As the Panel found in Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Forum May 16, 2007), a respondent can not be found to 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. This is exactly the case here, as Complainant’s earliest use of the PLATTERZ mark is alleged to be in 2015, and Respondent has held the domain name since 2008.
The WIPO Decision Overview 3.0 states under 3.8.1:
Subject to scenarios described in 3.8.2 [dealing with domain names registered in anticipation of trademark rights], where a respondent registers a domain name before the complainant's trademark rights accrue, panels will not normally find bad faith on the part of the respondent.
In that circumstance, “the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right.” WIPO Decision Overview 2.0 at 3.1.
None of the exceptions to this general principle apply to the present case. As stated above, there is no evidence whatever that Respondent registered the domain name in bad faith. The registration was made some seven years before Complainant ever used its PLATTERZ mark in commerce. Any rights Complainant may have acquired in that mark since 2015 were not in existence in 2008 when the registration occurred, and it is axiomatic that Respondent did not register the domain name in 2008 with any knowledge or anticipation of Complainant’s specific trademark being developed seven years later.
Complainant’s only remaining argument with respect to bad faith registration is that Respondent renewed and re-registered the Domain Name numerous times after becoming aware of Complainant’s rights, but this line of reasoning has been soundly rejected by a vast majority of panels and is simply without merit. Arena Football League v. Armand F. Lange & Assocs., FA 128791 (Forum Dec. 26, 2002) (“[O]nce a Panel finds that a domain name was originally registered in good faith, any subsequent renewal [that] could qualify as having been done in bad faith is irrelevant: the relevant point of inquiry occurs at registration, not renewal of that registration”). See also, Mile, Inc. v. Michael Berg, WIPO Case No. 2010-2011; WIPO Decision Overview 3.0 at ¶ 3.9.
Whatever the merits of Complainant’s arguments that Respondent is using the Domain Name in bad faith, those arguments are irrelevant, as a complainant must prove both bad faith registration and bad faith use in order to prevail. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D 2000-0003.
For the foregoing reasons, the Panel finds that Complainant has failed to prove that Respondent registered and is using the Domain Name in bad faith.
Reverse Domain Name Hijacking
Respondent requests a finding of reverse domain name hijacking. This is defined in Rule 1 as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Rule 15(e) provides as follows:
If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Complainant and its counsel knew or should have known when they filed this case that Complainant could not possibly prove bad faith registration, since Respondent registered the Domain Name seven years before Complainant began using its PLATTERZ mark. Complainant and its counsel knew or should have known that the renewal/re-registration argument was universally discredited and would not be accepted by any Panel. WIPO Overview 2.0 at ¶ 3.7; WIPO Decision Overview 3.0 at ¶¶ 3.2.1, 3.8, 3.9.
Even worse, Complainant and its counsel attempt to deceive the Panel by citing TMP Int’l Inc. v. Baker Enters., FA 204112 (Forum Dec. 6, 2003) for the proposition that bad faith can be found when a domain name is registered prior to the establishment of trademark rights. That case, though, stands for no such proposition; rather, it stands for the noncontroversial proposition that registration can be in bad faith if the registration is after the establishment of common law trademark rights, even if the trademark is not registered until after the domain name registration. In TMP, Complainant established common law trademark rights through its use in commerce since 1998, and subsequently registered its trademark with the United States Patent and Trademark Office in 2003. The domain name, though, was registered in 1999, after the development of common law trademark rights. Here, in contrast, the domain name was registered seven years before any trademark rights – common law or otherwise.
Given that there was no possibility of bad faith registration, this Complaint was doomed to failure from the start. Complainant and its counsel knew or should have known that Complainant would have to prove both bad faith registration and bad faith use in order to prevail. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. It is undisputed that Complainant attempted unsuccessfully to buy the Domain Name from Respondent in February 2016 and again in February 2017, and this action followed. For the foregoing reasons the Panel is convinced that Complainant filed this action in bad faith, perhaps as an alternative acquisition strategy, but in any event without any legal or factual basis for its claims.
The Panel therefore finds Reverse Domain Name Hijacking and declares that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Complainant having failed to establish all of the elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <platterz.com> domain name REMAIN WITH RESPONDENT.
The Panel further declares that Complainant brought this Complaint in bad faith and that the Complaint constitutes an effort at Reverse Domain Name Hijacking.
Charles A. Kuechenmeister, Chair
Dawn Osborne, Panelist
David H. Bernstein, Panelist
Dated: June 19, 2017
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