DECISION

 

Revued, LLC v. Andrew Jack

Claim Number: FA2309002061242

PARTIES

Complainant is Revued, LLC ("Complainant"), represented by Melissa Gray of Melissa H. Gray PLLC, Texas, USA. Respondent is Andrew Jack ("Respondent"), United Kingdom.

 

REGISTRAR AND DISPUTED DOMAIN NAME

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

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Steven M. Levy, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on September 11, 2023; Forum received payment on September 11, 2023.

 

On September 12, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <revued.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 September 14, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 4, 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@revued.com. Also on September 14, 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 October 4, 2023.

 

On October 4, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Steven M. Levy, Esq. as Panelist.

 

On October 9, 2023, Complainant submitted a Reply To Respondent's Response To Complainant's Domain Name Dispute Complaint.¹

 

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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Complainant is a software/technology retailer in the United States providing a website-based plug-in and video review application. The Revued plug-in is the first organic review aggregator which organically displays a company's reviews from across the Internet on one website. Complainant owns an incontestable Registration at the United States Patent and Trademark Office ("USPTO") for the REVUED mark (Reg. No. 5436160, registered on April 3, 2018). The disputed domain name was formerly owned by Complainant but was inadvertently allowed to lapse due to a problem with Complainant's email system by which it failed to receive notice of the domain name's renewal date from its Registrar, GoDaddy. Within mere days after it lapsed, the disputed domain name was purchased by Respondent who erected a false website using Complainant's intellectual property. Complainant attempted to contact Respondent directly but was unable to do so based on false contact information listed on its website. It then contacted GoDaddy who advised that Respondent is located outside of the United States. GoDaddy then communicated Complainant's concerns to the Respondent who replied, through GoDaddy, that it would sell the disputed domain name to Complainant for $15,000.

 

As the disputed domain name contains an identical copy of Complainant's REVUED mark, it is identical or confusingly similar to the mark.

 

Respondent has no rights or legitimate interests in the disputed domain name as it is used for a website that incorporates the same set up and color scheme as that formerly used by Complainant and it is not offering any goods or services. Rather, Respondent is attempting to gather valuable information from Complainant's consumers or is seeking to resell the domain name to Complainant at an exorbitant price.

 

The disputed domain name was registered and is used in bad faith as evidenced by its use of content that is similar to what formerly appeared on Complainant's site and its listing of false contact information. Respondent has no relationship with Complainant yet it is using the domain to actively misrepresent itself to consumers.

 

B. Respondent

Respondent owns a business in the United Kingdom called Revued LTD and operates a business-to-business (B2B) review site. The word "revue" is a common French word meaning "review". Respondent had never heard of Complainant and its United States trademark registration has no force in the UK. Further, proof of ongoing use has not been filed with the United States trademark office before the 6 year limit. In any event, the trademark registration is subject to cancellation for non-use as Complainant's business entity, Revued LLC, has been dissolved by the state of Texas, its app has been disabled at both the Apple App Store and the Google Play Store and there have been no sales associated with the trademark in over 3 years.

 

Within one month of purchasing the disputed domain name at a GoDaddy auction, Respondent set up a website using a template from a seller called Envito and has since been actively working on the site. Because a template was used, any similarities to the Complainant's former site are merely coincidental and changes to the site were made once Respondent learned of Complainant's existence. Over 35 original blog articles have been written and published on the site to-date and Respondent has created a YouTube channel and a LinkedIn account called Revued. This demonstrates investment and an intent to use the domain name for a legitimate offering of services.

 

Finally, at no time did Respondent contact Complainant or try to sell the domain name. Respondent received an anonymous inquiry from GoDaddy asking if the domain name is for sale. Respondent was not interested in selling the domain but replied that he "would be interested in offers $15k+" in an effort to get rid of them.

 

FINDINGS

-       Complainant has rights in the United States to the REVUED trademark and the <revued.com> domain name is identical to the mark;

-       Respondent makes a bona fide offering of goods and services in the United Kingdom and is commonly known by the disputed domain name; and

-       There is no evidence that Respondent registered or uses the disputed domain name in bad faith to target Complainant's United States trademark rights.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)       the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)       Respondent has no rights or legitimate interests in respect of the domain name; and

(3)       the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

Complainant claims rights in the REVUED mark through registration with the USPTO. Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) ("Complainant's ownership of a USPTO registration for DIRECTV demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i).").  Complainant provides a copy of its USPTO registration certificate and, based on this evidence, the Panel finds that Complainant has demonstrated rights in the mark under Policy ¶ 4(a)(i).²

 

Next, Complainant asserts that "the disputed domain name is identical to the Revued® Mark but for the addition of '.com,' which fails to distinguish the domain name from Complainant's Revued® Mark…" The Panel agrees and finds that the <revued.com> domain name is identical to the REVUED mark.

 

Rights or Legitimate Interests

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). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) ("Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests").

 

Complainant claims that Respondent is not making a bona fide use of the disputed domain name, that its website incorporates certain elements of Complainant's former website, and that "Respondent is not offering any goods or services." It submits into evidence screenshots of Respondent's website showing, at the bottom, certain text against a purple field with a green, oval button beneath it overlaid with the text "Browse B2. Also submitted is a screenshot of Respondent's page showing a "Contact Us" form using a very similar shade of purple and a green, oval button beneath it overlaid with the text "Send Message". Complainant claims that these elements use the "same color scheme and basic content set up" but it does not provide an image of its own prior website and so the Panel is unable to determine the level of any similarity that may exist. Further, Complainant claims that "the remaining content on the domain is inauthentic", that "the contact information is all false", and that "large portions of the content are nonsensical." In its defense, Respondent states that it quickly set up a website under the <revued.com> domain name, using a template, and that it is "actively working on the site, although we are working part time on this project we are moving as fast as we can…." Respondent submits more recent screenshots of its website showing that it has posted a number of articles. It also provides images of its YouTube channel titled "Revued" and its "Revued Ltd" LinkedIn page showing that it has 110 followers. Respondent states that it has used a website template that it purchased from a company called Envato and it submits into evidence a screenshot from this company's website showing the offered template.

 

Next, Complainant asserts that "no evidence exists that Respondent is commonly known by the <Revued.com> domain name, or that it is commonly known by any name incorporating the Revued® Mark." However, Respondent has submitted into evidence a copy of a Scotland Certificate of Incorporation of a Private Limited Company listing the name "REVUED LTD". Such evidence has been held to support a claim of being commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Young Innovations, Inc. v. Anjesh Tuladhar / YoungInnovations, 2037871 (Forum May 4, 2023) (rights or legitimate interests found where "Respondent has submitted the Permanent Account (PAN) Registration Certificate dated May 24, 2007, issued by the Government of Nepal").

 

Upon a review of all the submitted documents and arguments, the Panel concludes that, while Complainant has made a prima facie case, this has been rebutted by Respondent at a level sufficient under the Policy. It is worth noting that the Policy does not provide the same level of factual inquiry that is afforded to most court systems around the world and it is an open question whether a forum might reach a different result upon a more in depth analysis of the case. However, by a preponderance of the evidence presented here, the Panel finds that Respondent has demonstrated that it is making a bona fide offering of services under the <revued.com> domain name or, at a minimum, that it is making demonstrable preparations for such an offering under Policy ¶ 4(c)(i). Further, based on its submission of a business registration certificate from Scotland, the Panel finds that there is evidence to conclude that Respondent is commonly known by the name "Revued" under Policy ¶ 4(c)(ii).

 

Registration and Use in Bad Faith

Although the Panel has found in favor of Respondent in the foregoing section, for the sake of completeness it will proceed to comment on whether Respondent registered and uses the disputed domain name in bad faith, under Policy ¶ 4(a)(iii).

 

First, there is no indication that Respondent had any hand in causing the deletion of the <revued.com> domain name while it was owned by Complainant and the Complaint notes that this was inadvertent.

 

Next, while Complainant has demonstrated its current ownership of trademark rights in the United States, it has not claimed to own any such rights in the United Kingdom where Respondent operates. As trademark rights are territorial in nature, there is no indication in the record that Respondent is operating in the United States and violating Complainant's US trademark or that it has disrupted the business of a competitor or sought commercial gain based on confusion with the REVUED mark under Policy ¶¶ 4(b)(iii) or (iv).

 

On a related point, Respondent states that he was unaware that Complainant "had made any claims on the Domain in the USA, a region foreign to the UK in which I was operating and clearly something I'm not obliged to check." While there is some debate amongst UDRP Panels regarding a Respondent's duty to research any possible trademark rights attaching to a domain name that it acquires, this has typically been limited to experienced domain investors and there is no evidence that Respondent here fits that description. Compart AG v. Compart.com / Vertical Axis, Inc., D2009-0462 (WIPO July 9, 2009) (willful blindness found where Respondent is a professional domainer). Also Cloudfm Group Limited v. Barry Garner, MyMailer Ltd, D2021-3251 (WIPO Dec. 14, 2021) ("There is no suggestion arising from the facts and circumstances of this case that the Respondent ought to have been on notice of the Complainant's identity or of its trademark rights at the point when it acquired the disputed domain name. Thereafter, the Respondent notably did not approach the Complainant to initiate any discussions regarding the disputed domain name.")

 

Furthermore, Respondent asserts that "Revued LLC is no longer a company has been struck in Texas". It submits screenshots from the Texas Secretary of State website stating that "the entity has ceased to exist in the state or country of formation or has cease doing business in Texas." This calls into question the current validity of Complainant's trademark and its authority to bring the present Complaint.

 

Complainant also claims that Respondent copies some of the look-and-feel of its prior website and that "content on the domain is inauthentic", "the contact information is all false" and "large portions of the content are nonsensical." The Panel notes that Complainant has not submitted a copy of its prior site for comparison and that Respondent's claim to have used a commercially-available website template (this is supported by its submitted screenshot of the template offered on the Envato website). The contact information on the screenshot of Respondent's site submitted by Complainant does mention certain postal addresses in "Newyork" and London, as well as certain telephone numbers, but it also displays the email address of "biz@my-domain.com" which appears to signal that the address is a placeholder. Respondent's evidence that it launched its enterprise using a website template provides a reasonable explanation for Complainant's above claims and why it was unable to contact Respondent based on the information presented on the site.³ Respondent does submit a more current version of its website which displays its own content and updated contact information and, as noted above, Respondent states that it is "actively working on the site, although we are working part time on this project we are moving as fast as we can…."

 

Next, Complainant claims that "GoDaddy apparently communicated Complainant's concerns to the Respondent, who then responded through GoDaddy that it would sell the domain to Complainant for $15,000, but otherwise refused to stop its use of Complainant's intellectual property." In its defense, Respondent submits copies of its email exchange with GoDaddy and it is apparent that this inquiry was made anonymously and that the Complainant was never mentioned.⁴ Respondent states that "I was totally unaware that I was conversing with the Claimant" and the evidence does not show otherwise. A lack of intent to sell a disputed domain name was found under very similar circumstances in Simple Plan Inc. v. Michel Rog, FA 1973743 (Forum Jan. 4, 2022). The domain name, in that case, was acquired by Respondent after Complainant inadvertently let it expire. The Complainant claimed that the Respondent offered to sell the domain back to it but the Panel noted that "[i]n the present case it is clear that Respondent never 'offered' the domain name for sale but considered a possible sale only after Respondent was approached by the GoDaddy agent acting on behalf of an undisclosed buyer, which happened to be Complainant. Receiving an offer to purchase a domain name that does not correspond to a globally famous trademark does not amount to an extortionate bad faith attempt to sell the domain name to the relevant brand owner.") Id.

 

Finally, while the Panel views with some suspicion Respondent's claim that it mentioned a "$15k+" price in its exchange with GoDaddy to "get rid of them" – he could have simply replied that he is not interested in selling – this doesn't change the fact that GoDaddy did not identify the potential buyer or that Respondent's other evidence in this case undercuts Complainant's claim that it sought to sell the disputed domain name to Complainant in violation of Policy ¶ 4(b)(i).

 

For the foregoing reasons, and by a preponderance of the evidence presented, the Panel finds insufficient ground upon which to conclude that Respondent registered or uses the disputed domain name in bad faith to target Complainant's mark under any element of Policy ¶ 4(b) or otherwise under Policy ¶ 4(a)(iii).

 

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <revued.com> domain name REMAIN WITH Respondent.

 

 

 

Steven M. Levy, Esq., Panelist

Dated: October 9, 2023