Ideal Nutrition, LLC v. Khaled Alshahri / Khaled Group,LLC
Claim Number: FA2306002048379
Complainant is Ideal Nutrition, LLC (“Complainant”), represented by Michael Marcil of Gunster Yoakley & Stewart, PA, Florida, USA. Respondent is Khaled Alshahri / Khaled Group, LLC (“Respondent”), represented by Douglas M Isenberg of The GigaLaw Firm, Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <idealnutrition.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.
Scott R. Austin as Panelist, Alan L. Limbury as Panelist, and Jeffrey J. Neuman as Panelist and Chair.
Complainant submitted a Complaint to Forum electronically on June 9, 2023; Forum received payment on June 9, 2023.
On June 12, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <idealnutrition.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 June 19, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 14, 2023 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@idealnutrition.com. Also on June 19, 2023, 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 July 11, 2023.
On July 20, 2023, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, Forum appointed Scott R. Austin as Panelist, Alan L. Limbury as Panelist, and Jeffrey J. Neuman as Panelist and Chair.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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 asserts it is a healthy food manufacturer and provides fresh, properly proportional healthy meals for delivery and sale through their retail locations. Complainant has rights in the IDEAL NUTRITION mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 6,100,249, registered July 14, 2020). See Compl. Ex.1. Respondent’s <idealnutrition.com> domain name is identical or confusingly similar to Complainant’s IDEAL NUTRITION mark as it merely adds the “.com” generic top-level-domain name ("gTLD").
Respondent lacks rights or legitimate interests in the <idealnutrition.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Respondent been authorized by Complainant to use the IDEAL NUTRITION mark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent has failed to make an active use of the disputed domain name.
Respondent offered the <idealnutrition.com> domain name for sale to Complainant through a broker. Respondent’s website disrupts Complainant’s business because Respondent registered its disputed domain name that is essentially identical to Complainant’s Mark to create a likelihood of confusion so that consumer’s will mistakenly believe that Respondent is associated with Complainant. Furthermore, Respondent has failed to make an active use of the disputed domain name.
B. Respondent
Respondent Khaled Alshahri is an executive chef in Kansas. Respondent registered the <idealnutrition.com> domain name on October 30, 2002. See Resp. Annex D. Complainant did not use the IDEAL NUTRITION mark, nor even exist, when Respondent registered the disputed domain name.
Respondent can demonstrate rights or legitimate interests in the <idealnutrition.com> domain name. Respondent registered the <idealnutrition.com> domain name for the purpose of creating a website to provide ecommerce sales of products related to healthy eating and fitness. While Respondent did not continuously maintain the website associated with the disputed domain name due to his full-time career and family obligations, Respondent did create a rudimentary website and has updated the content on the site over the years. Additionally, Respondent has rights or legitimate interests in the disputed domain name because it consists entirely of two generic or descriptive words. Finally, Respondent did not initiate any attempt to sell the disputed domain name to Complainant and only responded to Complainant’s efforts.
Respondent did not register or use the <idealnutrition.com> domain name in bad faith. Respondent registered the disputed domain name almost 14 years before Complainant even existed. Complainant did not have any trademark rights until almost 18 years after Respondent registered the disputed domain name. Furthermore, Respondent argues that Respondent could not have registered the disputed domain name with the intent to sell it to Complainant because Complainant did not exist. Respondent’s website has a different look and feel than Complainant’s and does not offer the same information, goods or services. Lastly, Respondent did not passively hold the disputed domain name since Respondent created a website as early as 2003 and the requirements for establishing bad faith pursuant to the passive holding doctrine are not present.
Lastly, Respondent requests the Panel issue a finding the that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding sufficient to support a finding by the Panel of Reverse Domain Name Hijacking, pursuant to ¶ 15(e) of the Rules.
1. Respondent registered the disputed domain name, <idealnutrition.com>, on October 30, 2002.
2. Complainant has trademark rights in the mark IDEAL NUTRITION based on United States Reg. No. 6,100,249, for the words plus design mark IDEALNUTRITION, registered on June 14, 2020 for [f]ood preparation services, featuring fresh, properly proportioned, healthy meals made to order for delivery in International Class 43, claiming a first use date of August 20, 2016.
3. The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
4. Complainant has not satisfied its burden of proof to demonstrate the Respondent registered and used the disputed domain name in bad faith under Policy 4(a)(iii).
5. Under the totality of circumstances, the Panel finds Reverse Domain Name Hijacking where Complainant used the Policy in bad faith to attempt to deprive a registered domain-name holder of its 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 asserts rights in the IDEAL NUTRITION mark through registration of a design mark incorporating the words combined as “idealnutrition” in United States Reg. No. 6,100,249, registered July 14, 2020, claiming first use dates as far back as 2016. See Compl. Exhibits 1 and 2. Registering a mark with the USPTO is sufficient to establish rights in a mark for purposes of the first element of the Policy. See Recreational Equipment, Inc. v. Liu Chan Yuan, FA 1954773 (Forum Aug. 9, 2021) (“Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i)”); see also H-D Michigan, LLC v. Private Whois Service, FA 1328876 (Forum July 12, 2010) (finding that “Complainant has sufficiently registered its HARLEY-DAVIDSON mark with the USPTO to prove Complainant’s rights in the mark according to Policy ¶ 4(a)(i), regardless of the fact that Respondent lives or operates outside the United States.”). Therefore, the Panel finds Complainant has sufficiently established rights in the IDEAL NUTRITION mark.
Respondent’s <idealnutrition.com> domain name is identical to Complainant’s IDEAL NUTRITION mark. The only difference between the Complainant’s mark and the disputed domain name is the addition of the “.com” gTLD. It is well settled that the addition of a gTLD is immaterial to a panel’s inquiry regarding Policy ¶4(a)(i) since all domain names are required to have a gTLD. See SCOLA v. Wick, FA 1115109 (Forum Feb. 1, 2008) (concluding that “the domain name at issue is identical to [the] complainant’s SCOLA mark, as the only alteration to the mark is the addition of the generic top-level domain “.com.”).
In addition to demonstrating that that the Disputed Domain is identical or confusingly similar to a trademark or service mark in which Complainant has rights, the Complainant must make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the “often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Overview (“WIPO Jurisprudential Overview 3.0”) at Section 2. Therefore, in order to satisfy its prima facie case under the Policy the Complainant must proffer evidence to show that (a) the Respondent is not commonly known by the disputed domain name nor has it been authorized to use the Complaint’s mark, and (b) the Respondent is not using the disputed domain name for any bona fide offerings of goods or services, nor any legitimate noncommercial or fair uses.
The Panel finds that the Complainant has not made out the prima facie case required for the second element of the Policy.
Complainant alleges that the Respondent lacks rights or legitimate interests in the domain name based on (i) not having trademark rights in the “IDEAL NUTRITION” mark, nor being commonly known by the disputed domain name, (ii) Complainant has not authorized or licensed Respondent to use its “IDEAL NUTRITION” trademark, (iii) Respondent is willing to sell the disputed domain name, and (iv) there is no evidence that Respondent is using the disputed domain name for a bona fide offering of goods or services.
Respondent, however, claims it does have rights and legitimate interests in the disputed domain name because it originally registered it on October 30, 2002, for the purpose of creating a website to provide ecommerce sales of products related to healthy eating, fitness and other forms of “ideal nutrition.” It argues that due to Respondent Khaled Alshahri ‘s full-time career as an executive chef and family obligations, however, he has not been able to continuously maintain a website associated with the disputed domain name. In support of his position, Respondent submits screenshots of the website as it appeared in July 2003, March 2004, March 2009, November 2018, and January 17, 2021.
Although it is true that the Respondent may not be known by the disputed domain name, that “is not a pre-requisite for owning a domain name or having a right to a domain name that it reflects the owner’s name. Indeed, most domain names that are validly held do not reflect the owner’s name and there is no reason why they should. Thus, a registrant may legitimately hold a domain name even if, as is usually the case, it has no echoes of the registrant’s name at all.” See JoshCo Group, LLC d/b/a Veteran Benefits Guide v. Domain Administrator / Dot Corner Web Services, FA 2046327 (Forum June 22, 2023) (finding that the Respondent was not commonly known by the <vbg.com> domain name, but did have rights and legitimate interests in the domain name).
As in JoshCo, though the Respondent here is not commonly known by the disputed domain name, it has provided evidence that it has rights and legitimate interests in the disputed domain name. More specifically, the paragraph 4(c)(i) of the Policy states that a Respondent can demonstrate rights and legitimate interests by showing it has used, or has demonstrably prepared to use, the domain name in connection with a bona fide offering of goods or services. The Panel finds that Respondent has shown that in fact it does have a right and a legitimate interest in the disputed domain name.
Complainant is correct that when assessing whether a Respondent has rights or legitimate interests to a domain name, “Panels look to the circumstances prevailing at the time of the filing of the complaint and not to any previous conduct or circumstances which may have established a past right or legitimate interest.” DeLorean Motor Co. v. Netcom, Claim No. FA 1989283 (emphasis added). However, in that case, in which the Chair of this Panel served as the sole Panelist, the issue was whether the Respondent, who was expressly authorized to operate its reseller business, had rights or legitimate interests in the domain name after the Complainant expressly revoked the initial authorization. Thus, in Delorean, the Respondent had rights or legitimate interests in the domain name initially but lost those rights/legitimate interests once the authorization was expressly revoked.
This case is very different. The Respondent here registered the domain name more than 14 years before the Complainant was organized as a Florida limited liability compoaestablished. Respondent did not need any authorization to register and use the disputed domain name from the Complainant. The Respondent had every right to register and use the <idealnutrition.com> domain name which the Panel notes consists of two descriptive words that relate closely to the Respondent’s chosen profession.
Moreover, a Respondent does not lose its rights or legitimate interests to a domain name simply because it does not maintain a website continuously. Nor does it lose its rights or legitimate interests to the domain name by responding and making a counter-offer to sell its domain name to a third-party, including a subsequent trademark owner. In fact, even if Respondent’s only use of the domain name was to buy and sell this domain name, that would itself establish rights or legitimate interests under the Policy, provided the domain name was not registered to profit from and exploit a then-existing trademark owner. See JoshCo Group, LLC d/b/a Veteran Benefits Guide v. Domain Administrator / Dot Corner Web Services, FA 2046327 (Forum June 22, 2023), citing Limble Soltions, Inc. v. Domain Admin, Alter.com, Inc., D2022-4900 (WIPO March 8, 2023). In this case, there is no way that the Respondent could have profited or exploited Complainant’s trademark because it did not exist for another 14 years.
For all the reasons above, Complainant has not met its burden of establishing that the Respondent did not have a right or legitimate interest in and to the disputed domain name.
Paragraph 4(a)(iii) of the Policy requires the Complainant to demonstrate that the disputed domain name has been registered in bad faith, and that it is being used in bad faith. These two requirements are conjunctive and each must be proven if the Complainant is to carry its burden in connection with the third element of the Policy. See South32 Limited v. South 32, South32 is a trademarked film company, D2023-1808 (WIPO June 29, 2023).
Complainant, however, argues that under 4(b)(iv) of the Policy, Respondent need not show that the domain name was both registered and used in bad faith, but rather that it only has to demonstrate that the disputed domain name is being used intentionally to “attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service.”
In support of its position, Complainant alleges that Respondent: (a) uses the name “Ideal Nutrition” on its Website, (b) has modified its website to announce that a business identical to Complainant’s business is coming soon, (c) has stated its intention and willingness to sell the disputed domain name “but each time Complainant agreed to meet Respondent’s asking price, Respondent increased the price, and (d) renewed its registration for the disputed domain name after Complainant filed its trademark application, “so that Respondent was on notice of Complainant’s rights in the mark.”
Complainant bases its argument on several UDRP decisions that it believes established that 4(b)(iv) of the Policy does “not require a separate showing of bad faith use and registration, but suffices to establish both elements, even if the disputed domain name was registered prior to the trademark.” Complaint at p. 11. It cites several UDRP decisions, including Shirmax Retail Ltd. v. CES Marketing Group, Inc., AF-0104 (eResolution March 20, 2000) and Ville de Paris v. Jeff Walter, D-2009-1278 (WIPO November 16, 2009).
However, Complainant’s reliance on these cases is misplaced and does not represent, nor has it ever represented, the consensus view of Panelists. In fact, the Panelist who wrote the decision in Shirmax cited by Complainant clarified in Passion Group Inc. v. Usearch Inc. (AF 0250), (as set out in Viz Communications, Inc., v. Redsun dba www.animerica.com and David Penava, WIPO Case No. D2000-0905), that although providing evidence of bad faith use of the kind described in 4(b)(iv) may be taken as evidence of bad faith registration as well as evidence of bad faith use, this evidence is not necessarily conclusive. In other words, where the only evidence provided in the case as to the use of the disputed domain name is evidence of bad faith use under 4(b)(iv), then a Panel may find both registration and use in bad faith. However, where there is other relevant evidence in the record, as we have here, about how the disputed domain name was being used, including evidence that the domain name was registered for a permissible purpose, it must be weighed against any evidence of bad faith registration constituted by evidence of bad faith use within 4(b)(iv). The panel in Passion Group then concludes, “It is difficult to imagine circumstances in which, under this approach, subsequent bad faith use within 4(b)(iv) would suffice to prove that a domain name was originally registered in bad faith."
In Coolside Limited v. Get On The Web Limited, WIPO Case No. D2016-0335, the three member panel summed up the consensus view of panelists clearly by stating:
A small minority of UDRP panelists has in the past attempted to construe subsequent bad faith use of a domain name as reflecting back to bad faith registration, notwithstanding no evidence of any bad faith actually operating at the date of registration. This Panel does not adhere to that theory. The UDRP policy is clear in requiring that a complainant must show both that the domain name was registered in bad faith and that it is being used in bad faith.
Even those panelists who have advocated such an interpretation of the Policy still require there to be some evidence that the domain name has been used in bad faith in a manner which indicates a change of behaviour or other specific targeting of the complainant and its rights. The Complainant has not brought any coherent evidence even of any such bad faith use in this case.
This Panel agrees with the reasoning in Passion Group, Coolside, and South32, that the Complainant must prove that the disputed domain name was both registered and used in bad faith.
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 (see section 3.8.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). Although there are some limited exceptions where the complainant can establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent trademark rights, those exceptions do not apply here.
The undisputed facts in this matter clearly establish that although the Complainant currently has trademark rights in the IDEAL NUTRITION design mark, “such rights do not magically relate back to the time that Respondent first registered the [<idealnutrition.com>] domain name, a time well prior to the Complainant’s first use of its mark.” Riveron Consulting, L.P. v. Stanley Pace, FA 1309793 (Forum April 12, 2010) (finding that Complainant could not succeed in proving registration and use in bad faith where the Complainant only acquired trademark rights in the RIVERON mark well after the <riveron.com> domain name was registered).
Having failed to establish that the domain name was registered in bad faith, Complainant cannot satisfy the bad faith prong of the Policy), as the Policy requires a conjunctive showing of both bad faith registration and use. See Platterz v. Andrew Melcher, FA 1729887 (Forum Jun. 19, 2017) (“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.”); see also 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.”).
Reverse Domain Name Hijacking
Rule 15 (e ) states, “If after considering the submissions of 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 the decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.” See Rules at 15(e).
Respondent contends that RDNH should be found in this case based on the following: (i) Complainant did not have any trademark rights when Respondent registered the disputed domain name in October 2002, and (ii) Complainant has engaged in a “classic Plan B” (attempting to improperly obtain the disputed domain name from Respondent by engaging in an abuse of the UDRP). More specifically, it only brought this action after it failed to purchase the Disputed Domain name from Respondent.
The most instructive case on RDNH is Timbermate Products Pty Ltd v. Domains by Proxy, LLC/Barry Gork, D2013-1603 (WIPO November 3, 2013). This decision listed out the different basis upon which findings of RDNH had been made. They include cases where (i) materially false evidence was submitted, (ii) relevant evidence was omitted, (iii) Complainant misrepresented the facts, (iv) no trademark rights existed at the time of the registration of the domain name, (v) there was an ulterior purpose, namely to increase negotiating leverage in settlement discussions, (vi) Complainant knew that Complaint was doomed to failure, or where (vii) the Complainant had constructive knowledge that its Complaint would not succeed.
The Panel does not take lightly the finding of RDNH. However, after consideration of all of the evidence, the Panel is troubled by the following facts:
a) This action was taken more than 20 years after the domain name was initially acquired by the Respondent on October 30, 2002.
b) The Complainant did not have any trademark rights at the time the disputed domain name was registered. In fact, the disputed domain name was registered nearly 14 years before the Complainant alleged that it first used the Mark.
c) The Respondent never initiated contact with the Complainant to sell the domain name to the Complainant. It was the Complainant that initiated contact with the Respondent through a domain name broker. Although the Complainant was allegedly led to believe that the Respondent would sell the disputed domain name for the price that was offered by the Complainant, ultimately the offer was rejected. It was only after the Respondent rejected Complainant’s offers that it initiated this action.
d) Complainants represented by Counsel are held to a higher standard and as such should have known it could not succeed in this matter. Moreover, Complainant relies on a discredited legal theory espoused in a few cases between 2009 and 2010 on “retroactive bad faith” which does not, and has never, represented the Consensus view of UDRP Panelists.
(a) Impact of Delay
Although Panels have widely recognized that a mere delay between the registration of a domain name and the filing of a complaint does not prevent a Complainant from filing a case, nor from potentially prevailing on the merits, the Panel notes that allowing more than twenty years to lapse prior to asserting rights to the disputed domain name is a factor to consider in Respondent’s favor especially when looking at Respondent’s rights and legitimate interests in the disputed domain name and evaluating whether the disputed domain name was registered and used in bad faith. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”) At Section 4.17. Complainant alleges that Respondent’s bad faith use of the disputed domain name only started after the Complainant obtained trademark rights in the Mark, but the evidence proffered by the Respondent demonstrates that although there were certain changes to the content over the years, the overall use of the disputed domain name has not changed over the years and clearly the content did not change in response to registration of Complainant’s IDEAL NUTRITION mark .
Therefore, although there is no concept of the defense of “laches” in the UDRP context, this type of extensive delay in the enforcement of its rights is a factor that may be considered in favor of the Respondent having rights or legitimate interests in the domain name. The Panel believes it also may be considered in determining whether the Complaint was filed in bad faith.
(b) The Complainant did not have any trademark rights at the time the disputed domain name was registered.
Based on the record evidence, Complainant admits that the “Domain Name was initially registered prior to the Trademark.” See Amended Complaint at p.11, footnote 3. Complainant must also have been aware of Respondent’s use of the disputed domain name at the time when it began using the IDEAL NUTRITION mark in United States commerce, and before it filed its trademark application for the same. See Healthyr, LLC v. Jonathan Curd, D2023-1802, (WIPO June 26, 2023) (finding Reverse Domain Name Hijacking where the Complainant began using the HEALTHYR mark 16 years after the healthyr.com domain name was registered by Respondent) citing Idaho Home Realty LLC v. Michael James Ohlson / Michael Ohlson / Bob Adams, VVG, D2021-2768 (WIPO November 18, 2021) (finding Reverse Domain Name Hijacking when there was “no doubt that Complainant knew at the time it filed its Complainant that Respondent had registered the <idahomerealty.com> before Complainant began any use of if its claimed IDAHO HOME REALTY and IDAHO HOME REALTY GROUP marks.”).
(c) Plan B
It is undisputed that it was the Complainant who initiated contact with the Respondent through a domain name broker. Respondent claims that although it was approached by the domain name broker, Complainant’s name was never disclosed to the Respondent. Complainant alleges that a series of negotiations took place between the broker and the Respondent and was separately communicated to the Complainant. The Complainant believes that the broker was able to negotiate a price for the disputed domain name, but that the Respondent did not follow through on what it believed was agreed.
This is a classic “Plan B” case: a complainant that is unable to purchase a domain name through negotiation files a UDRP action in a last-ditch effort to try and acquire the domain name. Whether a Respondent backed out of what the Complainant thought was an agreed upon purchase price is not relevant in this matter. The fact is that the Complainant initiated the contact with the Respondent and made the first offer to purchase the Disputed Domain name. Not satisfied with the ultimate result of the negotiations, Complainant filed this case. This alone is indeed grounds for a finding of bad faith and abuse of the administrative proceeding by Complainant, especially in light of the lack of any showing that the Respondent registered and used the domain name in bad faith. See LaFrance Corp v. David Zhang, D2009-0415 (WIPO May 15, 2009) (Respondent argued that this was a Plan B case and justified a finding of RDNH). Ultimately the Panel in LaFrance did not find RDNH but did conclude that the Complaint was brought primarily to harass the domain name holder. See EBSCO Industries, Inc. v. WebMagic Staff / WebMagic Ventures, LLC, FA 1722095 (Forum May 25, 2017) (“Panel finds there is sufficient evidence [of using the UDRP as a Plan B to obtain the Domain Name] . . ., and therefore concludes that reverse domain name hijacking has occurred”); See also Cooper’s Hawk Intermediate Holding, LLC v. Tech Admin / Virtual Point Inc., FA 1916204 (Forum Nov. 17, 2020) (finding RDNH where Complainant only filed the UDRP action after negotiations to purchase the domain name broke down).
(d) Impact of Representation by Counsel and Reliance on Outdated Non-Consensus doctrine of Retroactive Bad Faith
Panels have traditionally held parties represented by counsel to a higher standard especially when deciding whether to make a finding of RDNH. Complainant’s counsel in this matter should have known that it was not able to demonstrate that the domain name was registered in bad fad faith because the domain name was registered by this Respondent more than 14 years prior to the existence of the Complainant, and that subject to limited exceptions, “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” See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”) at Section 3.8.1. The limited exception to this rule is where a Respondent registers a domain name to “unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trademark rights.” Id. At Section 3.8.2.
Complainant’s counsel should have known that this exception cannot apply to a domain registered more than 14 years prior to the Complainant’s existence.
In addition, Complainant’s counsel should have known that its reliance on the arguments contained in cases such as Ville de Paris and Shirmax have long been discredited and does not represent the consensus view. More specifically, the argument that the registration of the domain name in “good faith”, was renewed and transformed into a retrospective bad faith registration is in plain contradiction of what a complainant is obliged to prove under the Policy, namely bad faith registration and use.
Complainant having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED and declares that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Accordingly, it is Ordered that the <idealnutrition.com> domain name REMAIN WITH Respondent.
Scott R. Austin, Panelist
Alan L. Limbury, Panelist
Jeffrey J. Neuman, Panelist and Chair of the Panel
Dated: August 2, 2023
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