DECISION

 

Work In Progress Creative Solutions Ltd v. TOM MOBERG / WIP Systems

Claim Number: FA2407002105376

 

PARTIES

Complainant is Work In Progress Creative Solutions Ltd ("Complainant"), represented by Martin Saker, Australia. Respondent is TOM MOBERG / WIP Systems ("Respondent"), Washington, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <wipsystems.com>, registered with Network Solutions, LLC.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on July 8, 2024; Forum received payment on July 8, 2024.

 

On July 9, 2024, Network Solutions, LLC confirmed by e-mail to Forum that the <wipsystems.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 July 12, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 1, 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 the attention of postmaster@wipsystems.com. Also on July 12, 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 August 2, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

 

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 is a United Kingdom-based company specializing in the provision of software-as-a-service ("SaaS") cloud-hosted software products for businesses and other organizations.

 

Complainant does business online at the addresses <wipsystems.co.uk> (since 2007) and <wipsystems.com.au> (since 2018).

 

Complainant alleges that it has held rights in the service mark WIP SYSTEMS for over twenty years, but offers no proof for this claim either as to protection under the common law or by dint of its registration with a national or international trademark authority.

 

The pertinent WHOIS record reflects that Respondent registered the domain name <wipsystems.com> on October 2, 2000.

 

The domain name is substantively identical to Complainant's WIP SYSTEMS mark.

 

Between 2003 and 2005, Complainant attempted to purchase the domain name from Respondent for 3,000 USD, but that offer was refused.

 

Respondent countered Complainant's offer with a demand for 10,000 USD, which Complainant rejected.  

 

Between 2004 and June of 2024, Complainant has made additional attempts to buy the domain name from Respondent, but has received no response to those overtures. 

 

Respondent registered a limited liability company in the US state of Washington in 2017, which registration was administratively dissolved in 2018.

 

The domain name currently resolves to a web page labeled "under construction."

 

The domain name has never been employed in connection with an active business enterprise.

 

Respondent has neither any rights to nor any legitimate interests in the domain name.

 

Respondent's continued inactive holding of the domain name disrupts Complainant's business.

 

Respondent has registered and now uses the domain name in bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has failed to prove that Respondent registered the contested domain name in bad faith.

 

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, to obtain an order that a domain name should be cancelled or transferred, Complainant must prove each of the following three propositions:

 

(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 was registered and is being used by Respondent in bad faith.

 

In view of Respondent's failure to submit a response, the Panel may, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate.  The Panel is entitled to accept all reasonable allegations set out in the Complaint.  However, the Panel may deny relief if the 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.

 

In the ordinary course, we would address the elements of Policy ¶ 4(a) in the order in which they are presented above. In this instance, however, we find it best to consider first, and exclusively, the question of bad faith registration of the contested domain name, because, in the particular circumstances of this proceeding, determination of that issue resolves the entire controversy.

 

The reason for this is that the Policy requires Complainant to prevail on each of the three elements of Policy ¶ 4(a) in order to prevail in the proceeding as a whole. If, therefore, Complainant fails as to any of them, it fails altogether.  And, in that event, consideration of the Complaint may begin and end with examination of the element as to which Complainant has failed to provide proof upon which it can prevail.  See, for example, Post.Com Limited v. Peter Neilson, D2002-0690 (WIPO Sept. 17, 2002):

 

In this Panel's view, the Complainant has not established … that the Domain Name was registered by the Respondent in bad faith.... In the light of this finding the Panel does not need to consider paragraphs 4(a)(i) and (ii) of the Policy.

 

To the same effect, see also Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd., D2010-0470 (WIPO May 19, 2010).

 

Registration and Use in Bad Faith

In this case, the public record reflects that Respondent registered the <wipsystems.com> domain name more than twenty-three years ago, on October 2, 2000. For its part, Complainant concedes that it has held rights in its claimed WIP SYSTEMS service mark "for over twenty years," but offers no proof for any aspect of this claim either as to protection under the common law or by dint of its registration with any national or international trademark authority. Complainant's exceptionally spare Complaint thus leaves open the possibility that Complainant acquired rights in its claimed mark sometime in the gap between the fall of 2000 and an unidentified date in the succeeding three or more years. In that event, Respondent's domain name registration predates Complainant's rights in the mark. On these facts, we conclude that Complainant has failed to prove that Respondent registered the disputed domain name in bad faith within the meaning of Policy ¶ 4(a)(iii) because Complainant had no rights to the mark at the moment of domain name registration, or, for that matter, for perhaps three years or more afterward. See, for example, Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where a respondent registered a contested domain name prior to a UDRP complainant's first use of a mark).  See also Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith registration where a respondent registered the domain name there in question before the filing of an application for registration and commencement of use of a trademark by a UDRP complainant).

 

The Panel therefore finds that the proof requirements of Policy ¶ 4(a)(iii) has not been satisfied by Complainant.

 

Complainant having failed to carry its burden on the point of bad faith registration of the contested domain name, it is unnecessary for the Panel to consider or decide the remaining issues presented in the Complaint. We therefore decline to examine those issues.

 

REVERSE DOMAIN NAME HIJACKING

In view of the circumstances revealed in the Complaint, we are obliged to consider whether, in filing and prosecuting its Complaint in this proceeding, Complainant has attempted to commit "Reverse Domain Name Hijacking," ("RDNH"), defined in UDRP Rule 1 as:  "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name." 

 

In order to justify a finding of RDNH, we must be persuaded both that the Complaint has no merit and that Complainant has proceeded under the UDRP in bad faith.  On the record before us, the salient facts on this question include that:

 

1.                      the record demonstrates that Complainant filed its Complaint in this proceeding out of frustration over a lengthy effort to acquire the challenged domain name through a series of unsuccessful purchase negotiations;

 

2.  when it filed its Complaint, Complainant must have known from available public records that Respondent had acquired its domain name before Complainant established, by registration or otherwise, rights in the mark upon which it relies; and

3.  Complainant has offered no evidence showing that Respondent procured its domain name registration in bad faith anticipation of Complainant's acquisition of rights in its claimed mark.

 

On these facts, we find both that the Complaint lacks merit, as detailed above, and that Complainant's submissions show that, in filing and prosecuting this proceeding, it has attempted in bad faith to obtain a domain name which it has failed to prove is other than the rightful property of Respondent, as well as that its motivation in pursuing this proceeding was to obtain by abuse of the processes of the Policy what it could not obtain by commercial negotiation.  As a result, Complainant has attempted to commit Reverse Domain Name Hijacking as defined in the Rules.  See, for example, The Guitammer Company v. Herschel Thompson, FA 1958918 (Forum Sept. 13, 2021):

 

The Panel finds that Complainant knew or should have known that it was unable to prove … that … Respondent registered and is using the disputed domain name in bad faith. The most glaring evidence for this conclusion is that the Domain Name was registered … before Complainant's trademark rights came into existence.  It is logically impossible for the registration to have been made with the intent to infringe on trademark rights that did not yet exist.  Accordingly, the Panel finds that reverse domain name hijacking has occurred.  See Labrada Bodybuilding Nutrition, Inc. v. Glisson, FA 250232 (Forum May 28, 2004) (finding that [a UDRP] complainant engaged in …[RDNH]… where it used "the Policy as a tool to simply wrest the disputed domain name [from Respondent] in spite of its knowledge that … Complainant was not entitled to that name and hence had no colorable claim under the Policy.").

 

DECISION

Complainant having failed to establish one of the three essential 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 Complaint herein, seeking transfer of the domain name <wipsystems.com> from Respondent to Complainant, must be, and it is hereby, dismissed.

 

 

 

________________________________

Terry F. Peppard, Panelist

Dated: August 12, 2024