Betco Corporation, Ltd. v. R. Zimmerman / envirozymes
Claim Number: FA1805001787028
Complainant is Betco Corporation, Ltd. (“Complainant”), represented by Carrie A. Johnson of MacMillan, Sobanski & Todd, LLC, Ohio, USA. Respondent is R Zimmerman / envirozymes (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <envirozymes.com>, registered with Tucows Domains Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on May 16, 2018; the Forum received payment on May 16, 2018.
On May 16, 2018, Tucows Domains Inc. confirmed by e-mail to the Forum that the <envirozymes.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 22, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of June 15, 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@envirozymes.com. Also on May 22, 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 June 15, 2018.
On June 21, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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 offers enzymes for residential, industrial and institutional wastewater applications under its ENVIRO-ZYME mark. It is the assignee of that mark, which was registered with the United States Patent Office (“USPTO”) (Reg. No. 2,713,467) on May 6, 2003. Respondent’s <envirozymes.com> domain name (the “Domain Name”) is identical or confusingly similar to Complainant’s ENVIRO-ZYME mark as it fully incorporates that mark, merely deleting the hyphen, and adding the letter “s” and the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the Domain Name. Complainant has not authorized or licensed him to use the ENVIRO-ZYMES mark and he is not commonly known by the Domain Name. Respondent is not using the Domain Name in connection with a bona fide offering of goods or services or for a legitimate non-commercial or fair use. He is not presently making any use of it, as the web site resolving from it is inactive. Further, he has offered the Domain Name for sale at an unreasonable price.
Respondent has registered and uses the Domain Name in bad faith. He fails to make any active use of it, and he has offered to sell it to Complainant for $10,000.00, a price far in excess of his out-of-pocket costs. Further, Complainant’s mark is sufficiently unique and arbitrary that it is unlikely that Respondent could have devised the Domain Name on his own. Respondent registered the Domain Name on August 15, 2015.
B. Respondent
The Domain Name is similar but not identical. It is not confusingly similar because since his web site is only in the construction phase and since he is not actually selling any products yet, consumer confusion is non-existent.
The Domain Name became available in August of 2015. At that time Respondent was trying to win a contract to supply products to a large water treatment facility. He came up with the Domain Name at that time, shortening “Environmental Enzymes” to “Envirozymes.” He worked diligently on that project but the contract fell through and he put the web site on hold. He is again working on creating a web site to sell cleaning supplies to local businesses. Respondent had never heard of Complainant or its companies until he received correspondence from Complainant in January 2018.
Respondent has never attempted to sell or advertise the Domain Name. It has never been for sale. Complainant contacted Respondent in January 2018 suggesting that it purchase the Domain Name and asking Respondent for a price. Respondent communicated his asking price on the assumption that negotiations would occur, but Complainant made one lowball offer and threatened a UDRP complaint if Respondent did not accept it.
The Domain Name was not registered in bad faith because Respondent registered it more than two years, five (5) months before he knew the Complainant even existed. Respondent is working on making the Domain Name active to sell cleaning products. Finally, he did come up with the <envirozymes.com> Domain Name on his own and knew nothing of the existence of the Complainant or its companies before doing so.
Complainant filed this UDRP proceeding only after its efforts to buy the Domain Name from Respondent failed. This filing is its “Plan B” to acquire it, and this is an abuse of the administrative proceeding. Respondent requests a finding of reverse domain name hijacking.
C. Additional Submission--Complainant
Complainant did not engage in reverse domain name hijacking. It was reasonable to believe Respondent registered the Domain Name in bad faith when he offered to sell it for $10,000.00. Additionally, there does not appear to be any evidence of Respondent’s alleged rights or legitimate interests in the Domain Name. Complainant had a good faith basis for believing it could establish all three elements required under the ICANN Policy. Even if the Panel should find that Complainant has failed to satisfy its burden under the Policy, this does not necessarily support a finding of reverse domain name hijacking.
The Panel makes the findings set forth below with respect to the Domain Name.
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’s ENVIRO-ZYME mark was registered with the USPTO (Reg. No. 2,713,467) on May 6, 2003. See, Complaint Exhibit 4. It was subsequently assigned to Complainant by its predecessors (See, Complaint Exhibits 5 and 6) and Complainant is presently the registered holder of that mark. This registration is sufficient to demonstrate Complainant’s rights in that mark for the purposes of CDRP Policy ¶ 4(a)(i). Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
Respondent admits that the Domain Name is similar to that mark but argues that it is not confusingly so because his web site is still in the construction phase and is not being used to sell products yet. This misses the point. In evaluating whether a domain name is confusingly similar to a complainant’s mark, the Panel looks at two things: The Complainant’s Mark, in this case ENVIRO-ZYME, and the Domain Name, <envirozymes.com>. The content of any website resolving from the Domain Name is irrelevant in determining the matter of confusing similarity. Caterpillar Inc. v, Ron Feimer, FA 1008998 (Forum July 28, 2007). In addressing this issue, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) first confirms that one compares the domain name to the complainant’s mark and then explains the substance of the test, as follows:
This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. Id., Sec. 1.7. See, also SoftCom Technology Consulting, Inc. v. Olariu Romero/Orv Fin Group S.L., WIPO Case No. D2008-0792, Wal-mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662,
This standard contemplates a threshold, standing-oriented test, in which a complainant would need to show only that its trademark is present and recognizable as such in the domain name in order to meet the requirements of Policy ¶ 4(a)(i). This standard serves essentially as a standing requirement and is easily met. See, Project Management Institute v. CMN.com, WIPO Case No. D2013-2035. Applying this test to the instant case, the Panel notes that Complainant’s mark is present and easily recognizable as such within the Domain Name. Misspelling a mark or adding letters does not distinguish the domain name from the mark for the purposes of Policy ¶ 4(a)(i). Paperless Inc. v. ICS Inc, FA 1629515 (Forum Aug. 17, 2015) (establishing a confusing similarity between the <paperlessspost.com> domain name and the PAPERLESS POST trademark in part because the domain name contained the entire mark and added an additional “s”). Similarly, omitting the hyphen and adding a gTLD is irrelevant in determining whether the disputed domain name is confusingly similar for the purposes of Policy ¶ 4(a)(i). Albertson’s, Inc. v. Bennett, FA 117013 (Forum Sept. 5, 2002) (“[T]he absence of a space and the hyphen between the words of the mark are not changes that are capable of overcoming a Policy ¶ 4(a)(i) identical analysis.”); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Domain Name at issue here does not contain changes that would sufficiently distinguish it from the ENVIRO-ZYMES mark for the purposes of Policy ¶ 4(a)(i).
Based upon the forgoing, the Panel finds that the Domain Name is confusingly similar to the ENVIRO-ZYME mark, which Complainant has substantial and demonstrated 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 it. 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 interests. If 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 Overview 3.0 at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven 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 or commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names because (i) Complainant has not licensed or authorized Respondent to use its mark for any purpose, (ii) Respondent is not commonly known by the Domain Name, (iii) Respondent attempted to sell the Domain Name to complainant for a price in excess of his out-of-pocket costs, and (iv) Respondent is not using the Domain Name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or other fair use because the web site resolving from it is inactive. These allegations are supported by competent evidence. According to the WHOIS information submitted with the Complaint and the Amended Complaint, the Domain Name is registered to “Contact Privacy, Inc” (Complaint Exhibit 1), and “Robert K. Zimmerman” (Amended Complaint Exhibit 1), neither of which names bears any resemblance to the Domain Name. This is competent evidence that Respondent is not commonly known by the Domain Name. Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Further, Complainant states that it has never authorized Respondent to use its ENVIRO-ZYME mark. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel.
Additionally, the Domain Name resolves to Respondent’s web site which bears the words “This site is under construction.” See, Complaint Exhibit 10. Failure to make an active use of a confusingly similar domain name has been held to demonstrate a lack of legitimate rights or interests for the purposes of per Policy ¶¶ 4(c)(i) or (iii). Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”).
Complainant also argues that Respondent’s offer to sell the Domain Name to it for a price in excess of his out-of-pocket costs, in addition to being evidence of bad faith registration and use under Policy ¶ 4(b)(i), is also evidence of a lack of rights or legitimate interests in the Domain Name. Prior panels have so held. University of Rochester v. Park HyungJin, FA1410001587458 (Forum Dec. 9, 2014) (“The Panel finds Respondent’s willingness to sell this <perifacts.com> domain name in excess of out-of-pocket registration costs weighs against Respondent’s case for rights or legitimate interests in the domain name.”).
The correspondence submitted by both parties, Complaint Exhibit 2 and Response Exhibit A, sets forth the substance of the parties’ discussions about a sale. On January 22, 2018 Complainant emailed Respondent inquiring whether he was interested in selling the Domain Name. Later that same day, Respondent answered, explaining that his company has many facets—they own a screen-printing/embroidery company, a vinyl wrap/banner company, an online retail store and a real estate company. He stated that they bought the Domain Name for a project they were working on, being an environmentally-friendly product to sell to local cleaning companies that they decided to call “enviroenzymes.” He then stated that he and his associates would be willing to halt this business plan or rebrand it completely “if the price is right.” He then asked Complainant to make an offer. Complainant responded by having its IP counsel send a letter, dated April 5, 2018, to Respondent warning against infringement with the Domain Name and inviting Respondent to suggest a price. On April 18, 2018, Respondent sent counsel a long email explaining again the structure, activities and plans of his company. He also explained that if they were Complainant, had “hundreds of millions of dollars in sales each year,” and wanted a domain name like the one at issue here that would help Complainant market its products, they “would pay $10,000.00 for it to prevent further losses from not having it. We concluded that this is a reasonable price to pay.” Later that same day, Complainant’s counsel responded by email, saying that Complainant declined Respondent’s offer but would pay $1,000.00 for the Domain Name. Counsel then stated that if Respondent did not accept this offer he would file a UDRP complaint to force cancellation of the Domain Name. There is no evidence of further communication between the parties after that.
It is clear from the correspondence that Respondent’s price of $10,000.00 had no relationship whatever to his out-of-pocket costs associated with the Domain Name but was instead based upon his sense of how much it might be worth to Complainant as a marketing tool. As noted by the Panel in University of Rochester v. Park HyungJin, cited above, this raises question about whether Respondent has rights or legitimate interests in the Domain Name.
Based upon the forgoing factors, the Panel finds that Complainant has made its prima facie case. It is thus incumbent upon Respondent to produce evidence showing that he does have rights or legitimate interests in the Domain Name.
To that end, Respondent asserts that in 2015, before he ever knew of Complainant or its ENVIRO-ZYME mark, he began preparations to use the Domain Name in connection with a business he was attempting to start that would sell “products” to a large water treatment facility. He says he came up with the Domain Name by shortening the words “environmental” and “enzyme” to “envirozymes.” He says that he worked diligently on that project but after the contract fell through he put the web site on hold. He says also that he will “make sure that he doesn’t infringe on the Complainants [sic] trademark” in any future use of the Domain Name, and that he has the right to determine when he will open a web site at <envirozymes.com>, that there is no time limit for building a web site after purchasing a domain name for it.
Respondent’s claims of having made preparations to use the Domain Name for a bona fide offering of goods as services might well have been sufficient to confer rights or legitimate interests in the Domain Name upon him, but he submitted no evidence to support those claims. He says that in 2015 he was working on a contract to supply a water treatment facility with bio augmentation products (See, Respondent Exhibit A), but he did not name the treatment facility or submit copies of any correspondence between himself and that facility, nor did he offer any evidence demonstrating the nature or extent of his preparations or other efforts he might have put into the undertaking. There is no evidence that he ever took any steps to register “Envirozymes” as a trade name or promote a business under that name. Also, he seems to say that he let the entire matter drop when the contract with the water treatment facility “fell through” and has not taken further steps to develop a web site or a business that it might support. He says that he and his associates are working on a project to sell environmentally-friendly supplies to local cleaning companies but there is no evidence of that either. His statements about the other business activities he says he was involved in in 2015 and since lead the Panel to conclude that he has been involved primarily if not exclusively with them and that there really are no demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods and services within the meaning of Policy ¶ 4(c)(i). His claim of rights or legitimate interests based upon Policy ¶ 4(c)(i) is not sustained.
Respondent asserts no other basis for rights or legitimate interests in the Domain Name. On the evidence before the Panel it appears that Respondent is not commonly known by the Domain Name, has not been authorized by Complainant to use its ENVRO-ZYME mark, and is making no active use of the Domain Name. This is sufficient to sustain a finding of no rights or legitimate interests, and the Panel so finds.
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which 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; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of your web site or location or of a product of service on your web site or location.
Complainant argues that Respondent’s offer to sell the Domain Name for a price in excess of his out-of-pocket costs directly related to it is also evidence of bad faith. It also alleges, and Policy ¶ 4(b)(i) requires, that Respondent acquired the Domain Name primarily for the purpose of selling it. In this case, the Respondent did not initiate discussions about selling the name but only responded to an inquiry from Complainant. Further, this discussion did not take place until some three years after Respondent acquired the Domain Name, and while there was no independent evidence of this presented, the Respondent at least alleges that at the time of registration he was and still is thinking about using it in connection with a business venture. The burden of persuasion as to this claim is upon Complainant, and on balance the Panel is not satisfied that Respondent’s purpose in acquiring the Domain Name was to sell it to Complainant.
Complainant also alleges that the mark ENVIRO-ENZYME is sufficiently unique and arbitrary that it is unlikely that Respondent devised the Domain Name on his own. Complainant does not specifically allege that Respondent had actual knowledge of Complainant and its right in that mark when he acquired the Domain Name, but that is the clear implication of what it did allege. As noted by another panel several years ago, given the human capacity for mischief in all its forms, the Policy sensibly takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldwcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name is evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
The Panel recognizes that it is easy for a respondent to say that it had no knowledge of a complainant’s business or trade name when it registered its domain name. The plausibility of such denial, however, diminishes as the fame or notoriety of the complainant increases. Certainly, Complainant’s marks may not be famous to a general audience. Respondent says he was involved in the same line of business as Complainant, but as discussed above the extent to which he actually was is subject to question. The close similarity of the mark and the Domain Name strongly suggests prior knowledge but at the same time, the two words involved, “environmental” and “enzymes” are common dictionary terms, and it is not difficult to imagine how they might work together in the name of a product or a business involved in the water or wastewater treatment industry. The question of Respondent’s actual awareness of Complainant and its marks naturally arises, but Respondent vehemently denies prior knowledge. Complainant has the burden of proof, and it submitted no evidence of its standing or presence in the wastewater treatment enzymes market. It might have provided data about its marketing, advertising, gross receipts, hit rates on its web sites, or any other factors that might tend to demonstrate a notable, well-known presence in this field of endeavor, but it did not. On the evidence available, the Panel concludes that Complainant has failed to prove that Respondent knew of Complainant’s marks when it registered the Domain Name, or that Respondent has intended to trade off the goodwill and reputation of Complainant by registering and using the Domain Name as it has.
However, the evidence discussed above in connection with the rights or legitimate interests analysis to the effect that the Domain Name resolves to a page saying “This site is under construction” and is not being actively used is also evidence of bad faith registration and use. Again, considering the non-exclusive nature of the Policy ¶ 4(b) list, using a domain name for an inactive web site has often been held to be evidence of bad faith under the Policy. Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith), VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”), Wells Fargo & Co. v. WhoisGuard c/o WhoisGuard Protected, FA 1103650 (Forum December 13, 2007) (“The failure to make an active use of the disputed domain name also evidences bad faith registration and use under Policy ¶ 4(a)(iii)”). Respondent’s confusingly similar Domain Name has never been and is clearly not now being actively used, and that is evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Names in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <envirozymes.com> Domain Name be TRANSFERRED from Respondent to Complainant.
REVERSE DOMAIN NAME HIJACKING
In light of the Findings and Decision with respect to the Domain Name set forth above, the Panel finds that the Complaint was not brought in bad faith or for purposes of harassment, and that no reverse domain name hijacking has occurred with respect to the filing thereof.
Charles A. Kuechenmeister, Panelist
Dated: June 25, 2018
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