DECISION

 

Aether, LLC v. Aether Domains / Aether Things, Inc.

Claim Number: FA1707001739957

 

PARTIES

Complainant is Aether, LLC (“Complainant”), represented by Scott Hervey of Weintraub Tobin Chediak Coleman Grodin, California, USA.  Respondent is Aether Domains / Aether Things, Inc. (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <aether.com>, registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certifies 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.

 

John J. Upchurch, Paul M. DeCicco and Steven M. Levy as Panelists.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on July 13, 2017; the Forum received payment on July 13, 2017.

 

On July 14, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <aether.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 July 18, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 7, 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@aether.com.  Also on July 18, 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 August 2,

2017.

 

An Additional Statement from Complainant was received on August 8, 2017.

 

An Additional Submission from Respondent was received on August 14, 2017.

 

On August 14, 2017, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed John J. Upchurch,

Paul M. DeCicco and Steven M. Levy 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.   Complainant

1.    Complainant, Aether, LLC, was founded in 2009 and is engaged in in the manufacture and sale of high-end outerwear. In furtherance of its business, Complainant has registered the AETHER mark with the likes of the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,819,754, filed Feb. 12, 2008, registered July 13, 2010), establishing rights in the mark. Respondent’s <aether.com> is identical to

Complainant’s AETHER mark as the mark is incorporated entirely, unaltered, and merely includes the “.com” generic top-level domain

(“gTLD”).

2.    Respondent has no rights or legitimate interests in <aether.com>.  Respondent is attempting to sell the disputed domain name to the highest bidder, indicating a complete lack of rights and legitimate interests under Policy ¶ 4(a)(ii).

3.    Respondent registered and used <aether.com> in bad faith. <aether.com> was registered originally in 1994. As of May 10, 2010, <aether.com> resolved to a website published by Gary Wolf. On or about February 27, 2014, Aether Things, Inc. acquired <aether.com> from the previous owner, reflected by the “Update Date” on the WHOIS and Wayback Machine website history. See Compl., at Attached Annex B, ¶3.  Respondent’s willingness to sell the domain name in excess of out-of-pocket costs—over $100,000—shows bad faith under Policy ¶ 4(b)(i). Respondent clearly registered and used the domain name with actual or constructive knowledge of the AETHER mark and Complainant’s rights in the mark.

 

B.   Respondent

1.    Complainant did not coin the term “AETHER,” is not the only company to use the word, and should not be considered as having a monopoly on the generic term on the Internet.

2.    Respondent has rights in the AETHER mark by developing  and marketing its own consumer electronics products under that mark, receiving extensive press coverage, and creating various social media accounts reflecting its products under the mark. Respondent holds a number of AETHER trademarks throughout the world. Respondent has invested millions of dollars in facilitating its business and building its brand in the consumer electronics sector, and thus cannot be considered as having “no rights or legitimate interests” in the domain name.

3.    Respondent did not register or use the domain name in bad faith under any Policy ¶ 4(b) element.

4.    The Doctrine of Laches should prevent Complainant’s claim as Complainant has waited several years to bring this action.

5.    Complainant has also engaged in reverse domain name hijacking, which characterizes situations in which a complainant abuses the administrative UDRP process after commercial negotiations to purchase the domain name have failed.

 

FINDINGS

1.    Respondent’s <aether.com> domain name is confusingly similar to Complainant’s AETHER mark.

2.    Complainant failed to establish that Respondent has no rights or legitimate interests in the <aether.com> domain name.

3.    Complainant failed to establish that Respondent registered or used the <aether.com> domain name in bad faith.

4.    The doctrine of laches is not applicable.

5.    Complainant has engaged in Reverse Domain Name Hijacking.

 

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

Complainant claims it has registered the AETHER mark with the USPTO (e.g., Reg. No. 3,819,754, filed Feb. 12, 2008, registered July 13, 2010), establishing rights in the mark. Registration with the USPTO constitutes evidence of rights in a mark, and registered rights are considered to date back to a mark’s filing date. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office); see also Lenovo (Beijing) Limited Corporation China v. jeonggon seo, FA 1591638 (Forum Jan. 16, 2015) (finding Complainant has rights in the LENOVO mark dating back to the Feb. 20, 2003 filing date with the USPTO as the trademark application was ultimately successful). Accordingly, the Panel agrees that Complainant has demonstrated rights in the AETHER mark under Policy ¶ 4(a)(i).

 

Complainant also claims Respondent’s <aether.com> is identical to

Complainant’s AETHER mark as the mark is incorporated entirely, unaltered, and merely includes the “.com” gTLD. Adding a gTLD does not distinguish a mark. See erry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). The Panel agrees that Respondent’s <aether.com> is identical to Complainant’s AETHER mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

The Panel holds that 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).  See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (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).

 

Respondent asserts that it has rights in the AETHER mark by marketing its products under that mark, receiving extensive press coverage, and creating various social media accounts reflecting its product under the mark. Respondent claims it holds a number of AETHER trademarks throughout the world, and provides evidence of one such registration at its Attached Annex B.

 

Complainant does not contest that such a product did, in fact, exist and was sold by Respondent as part of a bona fide offering.  The product appears to no longer be on the market but the current website offers a software update for the product and this further evidences use of the domain name for a bona fide offering of goods.

 

Based on its undisputed corporate name Aether Domains / Aether Things, Inc., Respondent is commonly known by the name “Aether” and, as such, satisifies 4(c)(ii).  The question of whether the domain is, in fact, owned by Respondent’s capital investor Iconical Investments LP, its business advisor Europlay Capital Advisors LLC (ECA), or another entity is a contractual issue that is outside the scope of the UDRP.   

                                                                       

Registration and Use in Bad Faith

The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii).  See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).

 

Given the significant number of other businesses that use the word Aether as a brand or trade name, the evidence does not indicate that Respondent specifically knew of, or targeted Complainant or its AETHER trademark when it purchased the aether.com domain. Further, at the time of such purchase/registration, the Respondent sold consumer electronics equipment as part of a legitimate business. For its part, Complainant sells clothing and is not engaged in the sale of any electronic products. It has provided no evidence that the resolving website of the aether.com domain has displayed any content related to the goods that are within the scope of its trademark.  Trademark law permits such parallel use of a brand so long as the average consumer would not expect the two products to originate from the same source (e.g., the trademark “Delta” as used by different companies for an airline, faucets, and power tools). Here, the two products at issue are quite different and the possibility of consumer confusion is remote. Complainant’s mention of actual consumer confusion is not supported with any evidence or further details and is thus a conclusory allegation.

The fact that Respondent may now be attempting to liquidate some of its assets, including the domain name, does not detract from the fact that it did not demonstrate bad faith at the time it registered the domain and that it does not now use the domain in any way that is likely to create confusion with Complainant’s trademark. Attempting to sell a domain name that was acquired in good faith does not convert the intention into one of bad faith.

There is mention of a number of different business entities and individuals in the pleadings with no actual evidence provided, by either party, to show the legal relationship of one to the other. Nevertheless, Respondent asserts, and Complainant does not dispute, that if the disputed domain name was acquired by an entity other than the Registrant named in the Whois record, it was done so as part of a larger acquisition of the business that actually sold consumer electronics under the AETHER brand. In fact, it was acquired by a company that had provided financing to Respondent. The domain was not acquired alone, as might have been done by an unrelated domain investor and so Complainant’s “relation back” arguments are not applicable.  As such, the question of who currently owns the domain name and when it was acquired does not change the outcome of the bad faith analysis under the UDRP.

 

Doctrine of Laches

This defense is generally held to be inapplicable unless Complainant’s actions have caused Respondent to rely on the delay to its detriment. This does not appear to be the case here.  The Panel holds that this defense is not applicable.

 

Reverse Domain Name Hijacking

Respondent alleges that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute.  Respondent contends that Complainant is attempting to deprive Respondent, the rightful, registered holder of <aether.com> domain name, of its rights to use the disputed domain name.  Respondent characterizes Complainant’s claim as a “Plan B” scenario whereby Complainant, in bad faith, is bringing this dispute because its attempts to acquire the domain name via commercial negotiations have failed.  Thus, Respondent asserts that Complainant knew or should have known that it was unable to prove that Respondent lacks rights or legitimate interests in <aether.com> and that Respondent registered and is using the disputed domain name in bad faith.

 

The Panel finds there is sufficient evidence to this effect, and finds that reverse domain name hijacking has occurred.  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 (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”).

 

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 <aether.com> domain name REMAIN WITH Respondent.

John J. Upchurch, Chairman

Steven M. Levy, Panelist

Paul M. DeCicco, Panelist

Dated:  August 24, 2017