GXI, LLC v. Hola Domains / Hola Dominios Limitada
Claim Number: FA2111001975093
Complainant is GXI, LLC (“Complainant”), represented by Jaime Rich Vining of Friedland Vining, P.A., Florida, USA. Respondent is Hola Domains / Hola Dominios Limitada (“Respondent”), represented by Andrii Raiersky, Attorney at law, Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <oceanready.com>, which is registered with Flancrestdomains.com LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 30, 2021; the Forum received payment on November 30, 2021.
On December 2, 2021, Flancrestdomains.com LLC confirmed by e-mail message addressed to the Forum that the <oceanready.com> domain name is registered with Flancrestdomains.com LLC and that Respondent is the current registrant of the domain name. Flancrestdomains.com LLC has verified that Respondent is bound by the Flancrestdomains.com LLC registration agreement and has thereby agreed to resolve domain name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 6, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 27, 2021, 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@oceanready.com. Also on December 6, 2021, 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 December 27, 2021. Thereafter, Complainant filed an Additional Submission under date of December 29, 2021, and Respondent filed an Additional Submission in response to Complainant’s under date of January 4, 2022. Both Additional Submissions have been taken into account in reaching the Panel’s decision.
On January 4, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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
In its Complaint and Additional Submission, Complainant alleges, among other things, that:
Complainant is a wholly-owned subsidiary of Carnival Corporation, the world’s most popular cruise line and largest leisure travel company.
Complainant holds a registration for the OCEANREADY trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 5,425,348, registered March 13, 2018.
By law, registered trademarks are presumed to be inherently distinctive and to have acquired secondary meaning in the relevant marketplace.
By dint of widespread and longstanding promotional efforts and advertising expenditures, Complainant has also acquired rights in the OCEANREADY mark under the common law via the doctrine of “secondary meaning.”
Complainant employs the OCEANREADY mark to manage and market an online guest platform offering travelers highly personalized service, including easy guest-crew communications and interactive shipboard entertainment.
Respondent registered the domain name <oceanready.com> on November 4, 2021.
The domain name is substantively identical and confusingly similar to Complainant’s OCEANREADY mark.
Respondent has not been commonly known by the domain name.
Complainant has not licensed or otherwise authorized Respondent to use its OCEANREADY mark in a domain name.
Respondent does not use the domain name for either a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Instead, Respondent holds the domain name inactively and offers it for sale.
Respondent’s employment of the domain name attracts Internet users for its commercial gain.
Respondent lacks both rights to and legitimate interests in the domain name.
Respondent registered the domain name with knowledge of Complainant’s rights in the OCEANREADY mark.
Respondent has exhibited a pattern of bad faith registration and use of domain names, as demonstrated by a series of decisions issued by UDRP panels in which it was found to have registered and used domain names in bad faith.
Respondent both registered and now uses the <oceanready.com> domain name in bad faith.
B. Respondent
In its Response and Additional Submission, Respondent asserts, inter alia, the following:
Respondent is a generic domain name reseller working with over fifty domain brokers and listing sites and having a portfolio of about 5,000 domain names.
Buying and selling domain names based on common dictionary words is entirely legitimate under the Policy.
The two terms of the OCEANREADY mark are generic, and Complainant does not enjoy a monopoly on domain names incorporating those common terms.
Instead, common words and descriptive terms are available for registration as domain names on a first-come-first-served basis.
Complainant’s rights in its mark are limited to the realm of business claimed for it in its trademark registration application, namely international class 9, relating to “downloadable software application programs for use by cruise passengers on mobile phones, etc.”
Complainant has failed to prove secondary meaning in the OCEANREADY mark.
Respondent is not a business competitor of Complainant.
There is no evidence that Respondent has targeted Complainant or its business in registering the contested domain name or offering it for sale.
Respondent has rights to and legitimate interests in the <oceanready.com> domain name.
Complainant has an affirmative obligation under the Policy to prove by concrete evidence that Respondent has no rights to or legitimate interests in the domain name, and that it has registered and now uses the domain name in bad faith, both of which it has failed to do.
Respondent did not register, and does not use, the domain name in bad faith.
Respondent had never heard of Complainant before this proceeding was commenced.
Complainant has not produced any evidence that its mark is famous outside the United States.
Respondent has not offered to sell the domain name to Complainant or its competitors but has simply made it available for sale to the general public.
Complainant has failed to demonstrate proof of bad faith beyond merely conclusory allegations.
By bringing this proceeding Complainant has engaged in reverse domain name hijacking.
Complainant has failed to prove two essential elements of the Policy, viz.: that Respondent has no rights to or legitimate interests in the domain name <oceanready.com>, and that Respondent has both registered and is using that domain name in bad faith.
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."
(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 rights in the OCEANREADY trademark sufficient for purposes of demonstrating its standing to pursue its Complaint in this forum as provided in Policy ¶ 4(a)(i) by virtue of its registration of that mark with a national trademark authority, the USPTO. See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration [of a mark] is sufficient to establish these [Policy ¶ 4(a)(i)] rights ….
In light of this conclusion, it is unnecessary for us to consider whether, in the absence of qualifying registration of the mark, Complainant might also have standing to proceed with its Complaint on the strength of similar rights arising under the common law.
Turning, then, to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <oceanready.com> domain name is substantively identical and, therefore, confusingly similar, to Complainant’s OCEANREADY trademark. The domain name incorporates the mark in its entirety, with only the addition of the generic Top Level Domain (“gTLD”) “.com.” This alteration of the mark, made in forming the domain name, does not save it from the realm of confusing similarity under the standards of the Policy. See, for example, David Duchovny v. Alberta Hot Rods c/o Jeff Burgar, FA 1734414 (Forum July 4, 2017):
Respondent arrives at the … domain name by simply taking Complainant’s mark in its entirety and adding the gTLD “.com”.
This is insufficient to distinguish the … domain name from Complainant’s … trademark [under the standing requirements of Policy ¶ 4(a)(i)].
See also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent has neither rights to nor legitimate interests in the challenged <oceanready.com> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Nonetheless, we must examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the disputed <oceanready.com> domain name, and that Complainant has not licensed or otherwise authorized Respondent to use the OCEANREADY mark in a domain name. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Hola Domains / Hola Dominios Limitada,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner).
We next observe that Complainant asserts that Respondent does not make any active use of the <oceanready.com> domain name, but instead holds it passively and offers it for sale, impermissibly seeking commercial gain. Respondent counters that it is a generic domain name reseller with thousands of domain names in its portfolio, that the two terms of the OCEANREADY mark are generic, that Complainant does not enjoy a monopoly on domain names incorporating those common terms because common words and descriptive terms are available for registration as domain names on a first-come-first-served basis, and, moreover, that Complainant’s rights in its mark are limited to the realm of business claimed for it in its trademark registration application, namely international class 9, relating to “downloadable software application programs for use by cruise passengers on mobile phones, etc.,” as well as that buying and selling domain names based on common dictionary words is an entirely legitimate business under the Policy, and, finally, that Respondent is not a business competitor of Complainant.
This, then, is the fighting ground between the parties.
It is true, as Complainant contends, that both passive holding of a domain name that is identical or confusingly similar to the mark of another and offering such a domain name for sale have been cited frequently by UDRP panels as evidence that a respondent lacks both rights to and legitimate interests in such a domain name. It is also true, however, that, absent circumstances not evidently present here, one who is in the business of trading in generic domain names has often been found to have either, or both, rights to or legitimate interests in particular domain names that it buys and sells. See, for example, Platterz Inc. v. Andrew Melcher, FA 1729887 (Forum June 19, 2017):
[I]nvesting in genuinely generic terms, for purpose of resale, is a legitimate business and … 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 also Audiopoint, Inc. v. eCorp, D2001-0509 (WIPO June 14, 2001):
[S]peculation in domain names . . . may itself constitute a bona fide activity under [Policy] paragraph 4(c)(i).
Further see Incorp Services, Inc. v. RareNames, WebReg, FA 0559911 (Forum November 10, 2005):
[S]elling domain names consisting of generic or descriptive terms is a bona fide offering of goods or services pursuant to Policy¶4(c)(i).
We are satisfied from our review of the record that Complainant’s mark is comprised of two generic terms which, even in combination, retain their generic character. That this is so is perhaps exemplified by the fact that the service mark OCEAN READY, differing from Complainant’s OCEANREADY mark by the insertion of a space between its elements, has been registered with the USPTO for an enterprise devoted to offering personal concierge services for vacationers at coastal beach towns (Registration No. 6,578,957, registered December 7, 2021).
In light of this, we conclude that, Complainant’s earnest protestations to the contrary notwithstanding, Respondent has adequately demonstrated that it is a practicing generic domain name reseller and that its holding and marketing of the <oceanready.com> domain name, on the facts before us, finds in Policy ¶ 4(c)(i) a safe harbor as a “bona fide offering of goods or services,” which perforce establishes that Respondent has rights to and legitimate interests in the domain name within the compass of Policy ¶ 4(a)(ii).
It will be recalled from the beginnings of this analysis that ¶ 4(a) of the Policy requires that, to obtain an order that a domain name should be cancelled or transferred, Complainant must prove each of the following three elements:
(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 to or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Importantly, these separate proof requirements of the Policy are joined in the conjunctive (“and”). In plain terms, this means that Complainant must prove its contentions as to all of them or fail altogether. In this instance, we have found, on the evidence presented, that Complainant has rights in the OCEANREADY trademark and that the <oceanready.com> domain name is substantively identical and confusingly similar to Complainant’s mark, thus satisfying Policy ¶ 4(a)(i). However, we have also found that the evidence made available to us in the multiple submissions of the parties demonstrates that Respondent nonetheless has rights to and legitimate interests in the disputed <oceanready.com> domain name. Complainant has thus succeeded in its cause as to one branch of Policy ¶ 4(a) but failed on another, i.e.: Policy ¶ (a)(ii). Panels faced with this situation have approached the problem in one of two ways, one substantive, the other procedural, either by declaring that, if a respondent is found to have rights to or legitimate interests in a domain name, that respondent cannot be said to have registered that domain name in bad faith, or, instead, by concluding that a finding that a respondent has rights to or legitimate interests in a domain name, the question whether that respondent has registered the domain name in bad faith becomes moot. Still other panels rely upon both approaches, as in Investigo v. Domain Admin, FA 1854793 (Forum September 7, 2019):
Since the Panel has found that Respondent has rights or legitimate interests in the … Disputed Domain Name pursuant to Policy¶4(a)(ii), the issue of bad faith registration and use is moot pursuant to Policy ¶ 4(a)(iii) and need not be decided by this Panel. See Record Connect, Inc. v. Chung Kit Lam / La-Fame Corporation, FA 1693876 (Forum Nov. 3, 2016) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Sheet Labels, Inc. v. Harnett, Andy, FA 1701423 (Forum Jan. 4, 2017) (finding that because the respondent had rights and legitimate interests in the disputed domain name, its registration of the name was not in bad faith).
Whichever approach is chosen, the result is the same. Complainant must be denied the recovery it seeks.
The Panel therefore finds that Complainant has failed to meet its burden of proof under Policy ¶ 4(a)(iii), and, in any event, the question of compliance with the proof requirements of Policy ¶ 4(a)(iii) is moot.
Reverse Domain Name Hijacking
Respondent has requested that the Panel include in this decision a finding of Reverse Domain Name Hijacking, defined in the pertinent Rules as a Complainant’s “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Upon consideration of the facts before us, this is a close question. Nonetheless, we decline to do so. In so concluding, we take account of the following:
a. Complainant’s mark was registered with a national trademark authority before Respondent registered its domain name;
b. we are not persuaded that Complainant has presented false evidence or otherwise attempted to mislead the Panel; and
c. there is no indication here that Complainant filed its Complaint in the wake of a failed attempt to obtain the domain name by negotiation, sometimes described as a “Plan B” filing.
Complainant having failed to establish two of the three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, DENIED.
Accordingly, it is Ordered that the <oceanready.com> domain name REMAIN WITH Respondent.
Terry F. Peppard, Panelist
Dated: January 11, 2022
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