Cybernautic, Inc. v. Domain Vault / Domain Vault LLC

Claim Number: FA2408002113352

 

PARTIES

Complainant is Cybernautic, Inc. ("Complainant"), represented by David M. Van Allen, Illinois, USA. Respondent is Domain Vault / Domain Vault LLC ("Respondent"), represented by Gary Schepps of Schepps Law Offices, Texas, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <cybernautics.com> (the "Disputed Domain Name"), registered with Name.com, Inc.

 

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.

 

David H. Bernstein as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on August 29, 2024; Forum received payment on August 29, 2024.

 

On September 3, 2024, Name.com, Inc. confirmed by e-mail to Forum that the <cybernautics.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. 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 6, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 26, 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@cybernautics.com. Also on September 6, 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.

 

A timely Response was received and determined to be complete on September 26, 2024.

 

On September 30, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed David H. Bernstein 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Complainant operates a business that provides website design, website hosting, and web marketing services. It has owned a federal trademark registration for CYBERNAUTIC since October 4, 2022 for services in international classes 35 and 42, with a claimed first use date of January 1, 2006.

 

Despite that claimed date of first use, Complainant states in its Complaint that it first used the Cybernautic name at least as early as May 15, 2000 to the name "Cybernautic Design" in The Pantagraph, a local newspaper based in Bloomington, Illinois. The reference to "Cybernautic Design" appears buried in the of the third section (section C) of the newspaper, under an "RSVP" header in the "Calendar" section of the newspaper, advertising an upcoming event where Cybernautic's Chad Parker would be a guest speaker.

 

Complainant also cites a reference to its name in The Pantagraph on May 31, 2001, wherein "Cybernautic Design" is identified as the parent company of ISUTown.com, a search engine and informational website for the local Bloomington, Illinois community and Illinois State University.

 

Complainant states that it has owned the <cybernauticdesign.com> domain name since its registration on November 2, 1999.  Complainant contends that similar or identical marks were registered between 1995-2002 and 1996-2003 by two other organizations unassociated with Complainant.  Those registrations have since expired.  Complainant has not provided any evidence concerning the use of these marks or their owners.

 

Complainant alleges that the Disputed Domain Name is nearly identical or confusingly similar to Complainant's CYBERNAUTIC mark.  Specifically, Complainant contends that the Disputed Domain Name is comprised of the CYBERNAUTIC mark in its entirety with an "s" affixed to the end.

 

Complainant alleges that Respondent has no rights or legitimate interests in the Disputed Domain Name. According to Complainant, Respondent is not a licensee of Complainant and is not authorized by Complainant to use its mark or to register the Disputed Domain Name. Complainant further contends that Respondent is not commonly known by or identified with the Disputed Domain Name and that the Disputed Domain Name is not derived from the Respondent's name, personal interests, or business interests.  Complainant contends that, in addition to Respondent's allegedly infringing use of the Disputed Domain Name, Respondent registered the Disputed Domain Name to divert consumers to its website for commercial gain by creating a likelihood of confusion with the CYBERNAUTIC mark owned by Complainant and by other prior owners of the CYBERNAUTIC marks.

 

Finally, Complainant alleges that Respondent registered and is using the Disputed Domain Name in bad faith. Complainant advances as evidence of Respondent's bad faith registration and use of the Disputed Domain Name the following assertions the following arguments:

 

(1) Respondent knew, or should have known, that Complainant or other now inactive organizations had prior rights to the term CYBERNAUTIC at least through July 3, 2003;

 

(2) despite this knowledge, Respondent registered the Disputed Domain Name on April 4, 2001, after USWeb, the acquirer of Cybernautics, Inc. (one of the companies that owned a registration in "CYBERNAUTICS" in the 1990s), permitted its registration to expire; and

 

(3) Respondent has consistently either parked the Disputed Domain Name or has used it exclusively for traffic monetization and appears to have no intention of legitimate use of the Disputed Domain Name.  Complainant further asserts that, as part of this monetization, visitors to the website to which the Disputed Domain Name resolves are directed to click on links for related searches that promote services provided by the complainant.   Complainant also suggests that, in some situations, these links instructed users to download malware. Complainant asserts that this activity suggests the likelihood that Respondent trades off Complainant's reputation and goodwill or otherwise misleads consumers.

 

B. Respondent

Respondent focuses its argument solely on the bad faith factor. It argues that Complainant has failed to establish bad faith registration and use, and that the Complaint should therefore be denied.

 

In particular, Respondent alleges that its registration could not have been in bad faith because it registered the Disputed Domain Name on April 4, 2001, before Complainant's purported trademark rights accrued (based on Complainant's claimed first use of the CYBERNAUTIC mark in Complainant's trademark application). Further, Complainant did not apply to register its trademark until two decades later.

 

Respondent also asserts that there is no evidence that it was aware of Complainant or its existence when it registered the Disputed Domain Name.  Respondent additionally asserts that Complainant is not the owner of, nor is it related to the owner of, any of the other CYBERNAUTIC trademarks that were registered decades ago by other parties. Respondent also notes that Complainant has failed to offer any evidence as to any relationship between Complainant and the registrant of the other CYBERNAUTIC trademarks from decades ago. 

 

Respondent further contends that it is in the legitimate business of investing in generic terms.  Respondent argues that the Disputed Domain Name encompasses a generic term by virtue of the combination of two generic terms – CYBER and NAUTIC – and that Complainant has erroneously suggested that Respondent is in the business of "cybersquatting."

 

FINDINGS

The following facts are undisputed and are supported by the record.

 

Complainant operates a business that provides website design, website hosting, and web marketing services.

 

Complainant registered the <cybernauticdesign.com> domain name on November 2, 1999, and has used that domain name since then in connection with its web-related businesses.

 

Complainant has no association or relationship with Respondent. Respondent has no license, permission, or authorization from Complainant to own or use the Disputed Domain Name.

 

Complainant is based in Illinois, and Respondent is based in Texas.

 

Previous CYBERNAUTIC marks were registered between 1995-2002 and 1996-2003 by two different inactive organizations, each of which is unassociated with Complainant.

 

Respondent registered the domain name <cybernautics.com> on April 4, 2001.

 

The website to which the Disputed Domain Name resolves is a PPC ("pay-per-click") website.  Visitors to the website to which the Disputed Domain Name resolve are directed to click on links, including for services that promote web design services in competition with Complainant. These PPC links are provided by a third-party service that promotes itself as "the global leader in traffic monetization business." In some situations experienced by Complainant, the links on the website to which the Disputed Domain Name resolves redirected to other websites that appeared to contain malware.  None of these links are to Complainant's services. 

 

Complainant applied to register its CYBERNAUTIC trademark with the United States Patent and Trademark Office ("USPTO") on April 2, 2021; that registration was issued on October 4, 2022.

 

Complainant filed the instant Complaint on August 29, 2024.

 

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 provides that a 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 the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(2)       the 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 owns a federal trademark registration for CYBERNAUTIC. Although the Disputed Domain Name includes an "s" after the term "cybernautic," the distinctive portion of the mark remains CYBERNAUTIC, and that term is wholly incorporated within the Disputed Domain Name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Jurisprudential Overview 3.0"), section 1.7 ("[I]n cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.").  The addition of the letter "s" does not change the fact that the Disputed Domain Name is confusingly similar to Complainant's trademark for purposes of the Policy.

 

Accordingly, Complainant has satisfied its burden of showing that the Disputed Domain Name is confusingly similar to a trademark or service mark in which Complainant has rights and has therefore satisfied the first element of the Policy.

 

Rights or Legitimate Interests 

Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain Name. Complainant alleges that Respondent is not a licensee of Complainant and is not otherwise authorized to use Complainant's marks or to register the Disputed Domain Name. Complainant further contends that Respondent is not commonly known by or identified with the Disputed Domain Name and that Respondent's name ("Domain Vault") has no clear connection to the second level of the Disputed Domain Name ("cybernautics").  Complainant additionally asserts that Respondent is not making a noncommercial or fair use of the Disputed Domain Name. Rather, Complainant contends that Respondent is using the Disputed Domain Name for its own commercial gain by diverting would-be customers of Complainant to Respondent's website, which features PPC links for searches including some that promote services in competition with those provided by Complainant.  In some situations, these links may even redirect users to websites that contain malware. All of these links presumably generate advertising or click-through revenue for Respondent.

 

"[W]here a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element."  WIPO Jurisprudential Overview 3.0, section 2.1.

 

Respondent's only attempt to demonstrate its rights or legitimate interests in the Disputed Domain Name comes from its assertion that it is in the business of investing in generic terms.  Although investing in domain names comprised of generic terms can sometimes be legitimate (if the names are being registered for their value as generic or descriptive words or phrases, and not because of their value as trademarks), this principle does not apply here because Complainant has not established, at least on the record submitted, that the term "cybernautics" is a generic term.   

 

Respondent argues that the Disputed Domain Name "consists of two generic terms, 'cyber' and 'nautic.'" That, however, does not establish that the combined term, "cybernautic," is generic or descriptive. As the U.S. Supreme Court made clear in United States Pat. & Trademark Off. v. Booking.com B.V., the combination of two generic terms does not automatically create a generic term. 591 U.S. 549 (2020) (combination of generic terms "booking" and ".com" does not mean that "booking.com" is automatically generic; rather, the question is whether the combined term is understood as a generic reference for websites at which consumers can book travel). Although Respondent baldly asserts that "the term 'cybernautics' is a generic terms [sic] encompassing a large field," and that "many companies have used the term or similar terms, alone or in conjunction with additional terms," Respondent has not submitted any evidence to support those assertions or its claim that the combined term "cybernautic" is used as a generic categorical reference for the large field of computer-related navigation.

 

Because Respondent has not come forward with sufficient evidence or argument to rebut Complainant's prima facie showing, Complainant has (on the limited record submitted to the Panel) successfully established that Respondent lacks rights or legitimate interests in the Disputed Domain Name. Accordingly, Complainant has satisfied the second element of the Policy.

 

Registration and Use in Bad Faith

Respondent argues that it has not used the Disputed Domain Name in bad faith. However, its operation of a PPC parking page that includes links that redirect users to websites in competition with Complainant is (in the context of a case where Respondent has failed to come forward with evidence of its rights or legitimate interests) paradigmatic bad faith use. See WIPO Jurisprudential Overview 3.0, section 2.9, 3.5.

 

Bad faith use, however, is not enough to prevail under the UDRP.  A complainant must also establish bad faith registration. Complainant here has not carried that burden. Specifically, Complainant has not shown that, when Respondent registered the Disputed Domain Name in 2001, it did so with a bad faith intent to take advantage of Complainant and its trademarks.

 

Complainant tries to get around this problem in two ways. First, it suggests that it had trademark rights before Respondent's registration of the Disputed Domain Name in April 2001, and suggests (impliedly) that Respondent must have been aware of those rights when it registered the Disputed Domain Name. But Complainant's pre-April 2001 usage was extremely limited. Complainant has shown that it registered the domain name <cybernauticsdesign.com> in 1999, but it has not shown how it used that domain name, whether the domain name was used in a trademark-like way, and whether its use was so prominent that Respondent would likely have been aware of it. It also cites a single reference to its name in a local newspaper, but as the clipping above shows, that usage was obscure and appears more as a trade name use than as a trademark use.  In any event, even if Complainant did have some nascent trademark rights in 2000 or early 2001, Respondent credibly argues that it was not aware of Respondent or its trademark rights at the time it registered the Disputed Domain Name. The Panel thus finds that Complainant has failed to establish that Respondent registered the Disputed Domain Name in bad faith towards Respondent with knowledge of the Respondent and its trademark rights.

 

Second, Complainant claims that Respondent registered the Disputed Domain Name in bad faith because its registration was targeting third party businesses that, at the time, were using and had registered the CYBERNAUTIC mark. Those other businesses, though, are not the Complainant here. For Complainant to establish that Respondent registered the Disputed Domain Name in bad faith in 2001, Complainant must show that Respondent specifically targeted Complainant with its registration in bad faith. That is because the Policy clearly references that the bad faith required must be towards "the complainant."  See, e.g., Policy ¶¶ 4(b)(i), 4(b)(iv); see also Neurocog Pty Ltd v. Domain Administrator, CentralNic Ltd., WIPO Case No. D2024-1076 ("'[t]he Policy makes clear that the bad faith must be in relation to 'the complainant' and 'the complainant's mark,' not some unrelated third party or some third party's mark."). The WIPO Jurisprudential Overview similarly makes clear that the bad faith needs to specifically be towards the complainant. See, e.g., WIPO Jurisprudential Overview 3.0, sections 3.1, 3.1.1, 3.1.4, 3.2.1, 3.2.2, 3.3, 3.5, and 3.7, all of which specifically reference "the complainant" and/or its marks. Bad faith as to some other party or its trademarks is not sufficient to establish bad faith registration under the UDRP.  Neurocog Pty Ltd v. Domain Administrator, CentralNic Ltd., WIPO Case No. D2024-1076.

 

In sum, although Respondent may be using the Disputed Domain Name in bad faith, Complainant has failed to show by a preponderance of the evidence that Respondent registered the Disputed Domain Name in bad faith to target Complainant and its trademark rights, specifically.  As such, Complainant has failed to establish bad faith registration and use.

 

REVERSE DOMAIN NAME HIJACKING

Respondent requests a finding of reverse domain name hijacking ("RDNH"). The Rules define RDNH as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name."  Rules paragraph 1.

 

RDNH is appropriate when the complainant had or should have had "clear knowledge of a lack of respondent bad faith."  WIPO Jurisprudential Overview 3.0, section 4.16. "Allegations of reverse domain name hijacking have been upheld in circumstances where a respondent's use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy."  Rohl, LLC v. ROHL SA, WIPO Case No. D2006-0645.

 

Although Complainant now claims trademark rights dating back to the 1990s, which conveniently for Complainant is shortly before Respondent's registration of the Disputed Domain Name, that contention is questionable given the limited nature of the trade name reference in that local Illinois newspaper and Complainant's representation to the USPTO that it first used its trademark in 2006.

 

Regardless, even if the Panel credits that earlier claim of first use, any reasonable investigation of the facts would have shown that Respondent could not possibly have had knowledge of Complainant or its alleged trademark rights at the time Respondent registered the Disputed Domain Name in 2001. That finding is reinforced by Complainant's attempt to argue that Respondent registered the Disputed Domain Name in bad faith as to other, third-party trademark owners, rather than as to Complainant itself. That argument is frivolous, entirely unwarranted under the UDRP, and further evidence of Complainant's bad faith in bringing this challenge (a conclusion further reinforced by the fact that Complainant brought this challenge two decades after the Disputed Domain Name was registered, with no explanation for its lengthy delay).  Neurocog Pty Ltd v. Domain Administrator, CentralNic Ltd., WIPO Case No. D2024-1076

 

A finding of RDNH is further supported by the fact that Complainant was represented in this action by counsel. WIPO Jurisprudential Overview 3.0, section 4.16 ("Given the undertakings in paragraphs 3(b)(xiii) and (xiv) of the UDRP Rules, some panels have held that a represented complainant should be held to a higher standard.").  Counsel should have known, and advised its client, that Complainant's position in this case is not supported by any reasonable interpretation of the facts or of UDRP principles.

 

Because the arguments and evidence advanced by Complainant fall well short of those required to establish abusive registration under paragraph 4(a) of the Policy, the Panel makes a finding of reverse domain name hijacking against Complainant.

 

DECISION

Having not established all three elements required under the Policy, the Panel concludes that relief shall be DENIED. Further, in light of the frivolous nature of the Complaint, the Panel finds Complainant to have been guilty of Reverse Domain Name Hijacking.

 

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

 

 

 

 

David H. Bernstein, Panelist

Dated: October 14, 2024