JYDR Consulting v. joshua orbach
Claim Number: FA1803001778978
Complainant is JYDR Consulting (“Complainant”), represented by Isabelle Jung Greenberg of CRGO Law, Florida, USA. Respondent is joshua orbach (“Respondent”), represented by Jason B. Pear of The Bernstein Law Firm, Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jewpon.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Katalin Szamosi as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 26, 2018; the Forum received payment on March 26, 2018.
On March 27, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <jewpon.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 April 3, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 27, 2018 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@jewpon.com. Also on April 3, 2018, 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 April 27, 2018.
Additional Submission of the Complainant was received on May 2, 2018.
On May 10, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Katalin Szamosi 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 uses the JEWPON mark in connection with an online website featuring coupons, rebates, price comparison information, product reviews, links to retail websites of others, and discount information. Complainant has rights in the JEWPON mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,177,687, registered Apr. 4, 2017). See Compl. Ex. B. Complainant’s rights in the mark date back to the filing date of January 22, 2016. Id. Respondent’s <jewpon.com> domain name is confusingly similar to Complainant’s mark as it fully incorporates the mark and adds the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <jewpon.com> domain name. Respondent is not commonly known by the disputed domain name, as the WHOIS information lists the Respondent as “Joshua Orbach” and makes no mention or reference to the JEWPON mark. See Compl. Ex. C. Respondent also does not use the domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent has failed to make an active use of the resolving website associated with the domain name since at least as early as January 1, 2014. See Compl. Exs. D (current webpage) and F (historical screenshots of the resolving webpage).
Respondent registered and uses the <jewpon.com> domain name in bad faith. While Complainant initiated negotiations to purchase the domain name, Respondent rejected all of Complainant’s offers and instead offered to sell the domain name for no less than $125,000. See Compl. Ex. I. Further, while Respondent registered the domain name prior to Complainant acquiring rights in the JEWPON mark, Respondent’s re-registration of the domain name was done in bad faith. Additionally, Respondent has failed to make an active use of the resolving webpage since at least as early as January 1, 2014. See Compl. Exs. D & F.
B. Respondent
Respondent does not make any contentions under Policy ¶ 4(a)(i).
Respondent has been commonly known by the <jewpon.com> domain name, as it offered items for sale and was covered by the press at least as early as 2010. Respondent’s use of the domain name to offer items for sale is a bona fide offering of goods and services in regards to the domain name.
While Respondent did offer to sell the domain name to Complainant after Complainant contacted Respondent, Respondent is only attempting to recoup some of the money it lost in its failed business venture associated with the domain name. Respondent did not register the domain name for the purpose of selling it at a later date. Further, Respondent could not have registered the domain name in order to prevent the Complainant from reflecting the mark because the Respondent registered the domain name long before the Complainant either (a) registered <jewpon.me> or (b) registered its trademark. Additionally, Respondent previously used the domain name, and has been developing business plans for the <jewpon.com> domain name over the past few years.
C. Additional Submissions
While Respondent may have made a minor use of the domain name for a short period of time after it purchased the domain name, it has since abandoned the website located at the domain name, and thus has abandoned the name itself. Further, Respondent did not originally register the domain name, and only acquired rights in the domain name after it purchased it in 2013. Additionally, Respondent contacted Complainant once again on May 2, 2018 in efforts to sell the domain name to Complainant, and attempted to engage in scare tactics by threatening to commence legal action in an unknown forum with unspecified damages.
Complainant is the owner of the JEWPON mark registered with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,177,687, registered Apr. 4, 2017, filing date of January 22, 2016).
The <jewpon.com> domain name was registered on October 5, 2010.
Complainant offered to purchase the <jewpon.com> domain name, Respondent refused Complainant’s initial offer, but it expressed a willingness to sell the domain name for a significantly improved offer.
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 holds rights in the JEWPON mark through its registration of the mark with the USPTO (e.g. Reg. No. 5,177,687, registered Apr. 4, 2017), and asserts rights back to the filing date of January 22, 2016. See Compl. Ex. B. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (“There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). The relevant date for Policy ¶ 4(a)(i) can be the date a complainant filed for the trademark registration. See ADP, LLC v. Dennis Shifrin / Streamline, FA 1732114 (Forum June 13, 2017) (holding that “the relevant date for Complainant’s mark is the filing date.”). Accordingly, the Panel finds that Complainant has established rights in the JEWPON mark, dating back to the filing date of January 22, 2016, for the purposes of Policy ¶ 4(a)(i).
The Panel finds that that Respondent’s <jewpon.com> domain name is confusingly similar to Complainant’s mark under Policy ¶4(a)(i) as it fully incorporates the mark and adds the gTLD “.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), then the burden shifts to Respondent to show it does have rights or legitimate interests.
Complainant contends that Respondent has no rights or legitimate interests in the <jewpon.com> domain name. Relevant information can include the WHOIS registration information and any other information in the record. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Joshua Orbach” as the registrant. See Compl. Ex. C. Complainant asserts that there is no other indication in the WHOIS or anywhere else that indicates Respondent is commonly known by the JEWPON mark. Accordingly, the Panel agrees that Respondent is not commonly known by the <jewpon.com> domain name under Policy ¶ 4(c)(ii).
Further, Complainant contends that the disputed domain name resolves in a website that lacks any content, save for one word in the upper corner of the webpage. Failure to make active use of a confusingly similar domain name can evince a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. 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).”). Complainant provides a screenshot of the webpage associated with the domain name, as well as historical screenshots, which show that the current webpage displays the word “pageok” in the upper right hand corner, and has not displayed any substantive content since October 10, 2013. See Compl. Exs. D & F. Accordingly, the Panel finds that Respondent fails to actively use the disputed domain name and thus fails to use the domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
The Panel notes that if Respondent’s registration of the <jewpon.com> domain name predates Complainant’s first claimed rights in the JEWPON mark, Complainant generally cannot prove registration in bad faith per Policy ¶ 4(a)(iii), as the Policy requires a showing of bad faith registration and use. See Faster Faster, Inc. DBA Alta Motors v. Jeongho Yoon c/o AltaMart, FA 1708272 (Forum Feb. 6, 2017) (“Respondent registered the domain name more than a decade before Complainant introduced the ALTA MOTORS mark in commerce. Respondent therefore could not have entertained bad faith intentions respecting the mark because it could not have contemplated Complainant’s then non-existent rights in [the mark] at the moment the domain name was registered.”).
Respondent avers that while it did offer to sell the domain name to Complainant after Complainant contacted Respondent, Respondent is only attempting to recoup some of the money it lost in its failed business venture associated with the domain name, and Respondent did not register the domain name for the purpose of selling it at a later date. When a complainant initiates purchase negotiations, and when evidence does not support a finding that sale was the initial purpose for registering a domain name, a respondent may avoid a finding of bad faith under Policy ¶ 4(b)(i). See Key II, Inc. v. Confino, Vico, FA 954029 (Forum June 5, 2007) (“that Respondent never approached Complainant with an offer to sell the name; rather the Complainant sought to purchase the name for $3,000 and Respondent said that it had valued the disputed domain name on its books at $50,000. Even if this statement was an implied counter-offer to sell the name to Complainant for $50,000, in connection with a showing of bad faith it is important to note that it was Complainant who initially approached Respondent about the sale.”); see also KARACA ZÜCCACIYE TICARET VE SANAYI ANONIM SIRKETI v. Karaca Yacht LTD., FA1206001448308 (Forum July 31, 2012) ("While there is evidence that Respondent offered to sell the disputed domain name to Complainant for an amount far in excess of Respondent’s out-of-pocket costs related to the domain name, the evidence falls short of establishing that the domain name was registered “primarily” for the purpose of selling it to Complainant. As noted by Respondent, its offer to sell the domain name was made only after an initial inquiry by Complainant.") Respondent does not provide any evidence to further this assertion, however Complainant confirms that it initiated the sale negotiations. See Compl. Ex. I. As such, the Panel finds that Complainant initiated contact with Respondent in regard to the transfer of the domain name, and hold that Respondent did not register the domain name for the purpose of selling it to Complainant or another third-party.
Further, Respondent claims it could not have registered the domain name in order to prevent the Complainant from reflecting the mark because the Respondent registered the domain name long before the Complainant either (a) registered <jewpon.me> or (b) registered its trademark. When the registration of a domain name predates a complainant’s rights in a mark, a respondent generally can avoid a finding of bad faith. The domain name was registered in 2010, while Complainant acquired and claims rights in the mark in 2016. See Compl. Exs. B & C. Accordingly, the Panel finds that Respondent’s rights in the domain name predate Complainant’s rights in the JEWPON mark and holds that Respondent did not register the domain name in bad faith. The Panel notes that according to Complainant, Respondent purchased the domain name on or about August 12, 2013. As also the purchase of the domain name far predates the Complainant’s first claimed rights in the JEWPON mark, it could not be established either that the domain name was purchased by Respondent with bad faith intentions.
The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii).
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 <jewpon.com> domain name REMAIN WITH Respondent.
Katalin Szamosi, Panelist
Dated: May 22, 2018
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page