DECISION
Rymera Web Co Pty Ltd v. Brian Harris
Claim Number: FA2402002084506
PARTIES
Complainant is Rymera Web Co Pty Ltd ("Complainant"), represented by Matthew G. McKinney of Allen, Dyer, Doppelt and Gilchrist, P.A., Florida, USA. Respondent is Brian Harris ("Respondent"), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wholesalesuite.com>, registered with TurnCommerce, Inc. DBA NameBright.com.
PANEL
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.
Alan L. Limbury, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on February 20, 2024. Forum received payment on February 20, 2024.
On February 20, 2024, TurnCommerce, Inc. DBA NameBright.com confirmed by e-mail to Forum that the <wholesalesuite.com> domain name is registered with TurnCommerce, Inc. DBA NameBright.com and that Respondent is the current registrant of the name. TurnCommerce, Inc. DBA NameBright.com has verified that Respondent is bound by the TurnCommerce, Inc. DBA NameBright.com 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 February 20, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 11, 2024 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@wholesalesuite.com. Also on February 20, 2024, 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.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On March 12, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury as Panelist.
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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A. Complainant
Complainant, Rymera Web Co Pty Ltd, owns trademark registrations with the United States Patent and Trademark Office ("USPTO") for the WHOLESALE SUITE word and logo marks, both of which are used with its ongoing business activities of "downloadable software for managing prices and orders of products being sold on ecommerce websites."
Respondent's <wholesalesuite.com> domain name is identical or confusingly similar to Complainant's WHOLESALE SUITE mark.
Respondent should be considered as having no rights or legitimate interests in the <wholesalesuite.com> domain name. Complainant has not licensed or permitted Respondent to use the WHOLESALE SUITE mark in any respect. The WHOIS information of record does not indicate that Respondent is commonly known by "wholesalesuite".
Respondent's website at <wholesalesuite.com> does not use the term "Wholesale Suite" to identify its products and services. Instead, Respondent provides its products and services under the mark WOOSUITE. The "woo" is in reference to WooCommerce, an open-source ecommerce plugin for WordPress, designed for small to large-sized online merchants using WordPress.
The <wholesalesuite.com> domain name incorporates Complainant's registered mark without authorization, and its sole apparent use has been to promote competing services by capturing Respondent's [sic] customers who are searching for it on the Internet under "Wholesale Suite." Competing use of a disputed domain name for commercial gain and diversionary displays a lack of rights or legitimate interests as it is not a bona fide offering of goods or services or a legitimate non-commercial or fair use.
Respondent is using the <wholesalesuite.com> domain name in bad faith to promote its own downloadable software for products being sold on ecommerce websites in direct competition with Complainant.
The <wholesalesuite.com> domain name resolves to a homepage advertising ecommerce plug-ins, which is similar to Complainant's own ecommerce plug-ins homepage. Thus, Respondent has registered and used the domain name in bad faith as Respondent is merely trying to benefit from confusion by operating its website at the domain name using Complainant's mark in an attempt to attract, for commercial gain, Internet users to Respondent's website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant has failed to establish all the elements entitling it to relief.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint").
Identical and/or Confusingly Similar
Complainant has shown that it owns USPTO Registrations No. 7,289,532 for the WHOLESALE SUITE word mark, registered on January 23, 2024, disclaiming the word "suite" apart from the mark as shown and No. 7,083,300, registered on June 20, 2023, for the WHOLESALE SUITE logo mark, disclaiming the words "wholesale suite" apart from the mark as shown. Both marks were applied for on November 4, 2021, claiming first use in commerce in May 2015.
The Panel finds Respondent's <wholesalesuite.com> domain name to be identical to Complainant's WHOLESALE SUITE word mark, only differing by the addition of the inconsequential ".com" generic top-level domain ("gTLD"), which may be ignored. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Complainant has established this element.
Rights or Legitimate Interests
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.
(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has 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 Respondent has engaged in a pattern of such conduct;
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on its website or location.
The Complaint refers to the domain name's WHOIS information but does not annex a copy. The WHOIS information provided by Forum to the Panelist shows that the <wholesalesuite.com> domain name was registered on June 3, 2016, more than five years before Complainant applied to register its WHOLESALE SUITE word and logo marks with the USPTO and just over one year after Complainant's claimed first use of those marks in commerce. There is no evidence to support the conclusion that Respondent, based in the United Kingdom, was likely to have been aware in June 2016 of Complainant's use of either mark before registering the domain name. Complainant's rights in its registered marks did not accrue until, at the earliest, November 4, 2021. Accordingly, even assuming that Respondent, at the time of the filing of the Complaint, had no rights or legitimate interests in the domain name and that Respondent is presently using the domain name in bad faith, Complainant has not shown that the domain name was registered in bad faith.
Complainant contends that Respondent's use of the <wholesalesuite.com> domain name demonstrates bad faith registration and use, according to Policy ¶ 4(b)(iv). However, although bad faith use of the kind identified in Policy ¶ 4(b)(iv) is evidence of both bad faith registration and bad faith use, such evidence is not necessarily conclusive, since it may be weighed against any evidence of good faith registration. See Passion Group Inc. v. Usearch, Inc., eResolution Case No. AF-0250, followed in Viz Communications, Inc., v. Redsun dba www.animerica.com and David Penava, WIPO Case No. D2000-0905.
As stated in Yoomedia Dating Limited v. Cynthia Newcomer / Dateline BBS, WIPO Case No. D2004-1085:
"Previous decisions have considered the matter of good faith registration followed by bad faith use. The prevailing view is that the Policy was not designed to prevent such situations. In Substance Abuse Management, Inc. v. Screen Actors Modesl [sic] International, Inc. (SAMI), WIPO Case No. D2001-0782, the panel stated that "If a domain name was registered in good faith, it cannot, by changed circumstances, the passage of years, or intervening events, later be deemed to have been registered in bad faith". In Teradyne Inc. Teradyne, Inc. [sic] v. 4tel Technology, WIPO Case No. D2000-0026, the Respondent registered a domain name to reflect its own business name but subsequently sought to sell the name for profit when its business dissolved. The panel found that to decide the case on the subsequent bad faith action would "extend the Policy to cover cases clearly intended to be outside its scope." Similarly, in Telaxis Communications Corp. v. William E. Minkle, WIPO Case No. D2000-0005, the respondent registered the disputed domain name in good faith but subsequently began to use it in bad faith. It was held that because the registration was made in good faith the requirement of Paragraph 4(a)(iii) was not met".
Complainant has failed to establish this element.
Reverse Domain Name Hijacking
Reverse Domain Name Hijacking ("RDNH") is defined in Rule 1 as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name". Rule 15(e) provides, in part:
"If after considering the submissions 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 its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding."
There is no mention in the Complaint of the date of registration of the domain name, of which Complainant's Counsel must have been aware since the WHOIS information is mentioned in the Complaint. That date is fatal to the success of the Complaint, since Respondent could not have had Complainant or its marks in mind when registering the domain name. This persuades the Panel that Complainant, represented by Counsel, appreciated that its Complaint should fail. The Panel therefore finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
DECISION
Complainant 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 <wholesalesuite.com> domain name REMAIN WITH Respondent.
Alan L. Limbury, Panelist
Dated: March 13, 2024
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