Gridiron Fiber Corp. and Lumos Telephone LLC d/b/a Lumos Networks v. Yui Quan
Claim Number: FA2110001970005
Complainant is Gridiron Fiber Corp. and Lumos Telephone LLC d/b/a Lumos Networks (“Complainant”), represented by Michael J. Hertz of Woods Rogers PLC, Virginia, USA. Respondent is Yui Quan (“Respondent”), represented by Jason Schaeffer of ESQwire.com, P.C. The Domain Name Law Firm, New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lumos.com>, registered with GoDaddy.com, LLC. (the “Disputed Domain Name”[i]).
The undersigned certify that each has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Eleni Lappa, Gerald M. Levine, and Kendall C. Reed as Panelist, the latter as Panel Chair.
Complainant submitted a Complaint to the Forum electronically on October 21, 2021; the Forum received payment on October 21, 2021.
On October 22, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <lumos.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 October 25, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 19, 2021 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@lumos.com. Also on October 25, 2021, 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 November 19, 2021.
An Additional Submission was received from Complainant on or about or about November 29, 2021, and this Additional Submission has been accepted and considered by the Panel.
An Additional Submission was received from Respondent on or about December 2, 2021, and this Additional Submission has been accepted and considered by the Panel.
On November 29, 202, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed Eleni Lappa, Gerald M. Levine, and Kendall C. Reed as Panelists.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
A. Complainant
Gridiron Fiber Corp. (“Gridiron”) is a company that, through its subsidiary Lumos Telephone LLC d/b/a Lumos Networks (“Lumos” and collectively with Gridiron, “Complainant”), offers high speed fiber broadband internet, Wi-Fi voice, and streaming television services in regions of Virginia and North Carolina with headquarters in Waynesboro, Virginia. Lumos provides a full range of its broadband services to approximately 200,0000 subscribers and has developed substantial goodwill over the many years of its existence.
Identical or Confusingly Similar
Complainant’s complaint is based on the registered trademark “Lumos Networks” (“the Lumos Mark”[ii]). The Lumos Mark is, and at all times has been, registered in connection with the following services in International Class 38 “Telecommunication services, namely, local and long distance transmission of voice, data, graphics and video by means of broadband optical or wireless networks; Telecommunication services, namely, local and long distance transmission of voice, data, graphics by means of telephone, telegraphic, cable, and satellite transmissions; Telecommunications services, namely, providing fiber optic network services.”
The Lumos Mark has been continuously used in United States commerce since September of 2011. The Lumos Mark was originally registered by Lumos Networks Inc. (f/k/a nTelos Network Inc.) on the United States Patent and Trademark Office’s Principal Register on January 17, 2012 bearing Registration Number 4,087,322.
Since the date of its registration, the Lumos Mark has attained incontestable status and was most recently renewed on April 15, 2017. Gridiron is the current owner of the Lumos Mark, having acquired ownership from Lumos Networks Inc. as part of a larger corporate restructuring transaction which occurred effective October 4, 2021.
The domain name lumos.com (the “Infringing Domain Name”[iii]) is identical and/or confusingly similar to the Lumos Mark. The entirety of the Infringing Domain Name is “Lumos”, which is also the entirety of the Lumos Mark with the only distinction being the addition of the generic or descriptive word “Networks” in the Lumos Mark. In addition, the Infringing Domain Name and the Lumos Domain Name end with the same top level domain name of “.com”.
Rights or Legitimate Interests
Respondent has no rights or legitimate interests in respect to the Infringing Domain Name because: Respondent is not commonly known by “Lumos” or any other name similar to it; Complainant has not granted Respondent the right to use the Lumos Mark; and the Infringing Domain Name itself is currently and, upon information and belief, has at all times since at least November 27, 2020, been functionally blank.
Bad Faith
The Infringing Domain Name currently, and upon information and belief has at all times since the date of its acquisition by Respondent, resolved to an inactive, functionally blank webpage. This is strong evidence that Respondent’s acquisition and use of the Infringing Domain Name is not the result of legitimate business interests, but rather for bad faith purposes
As such, the Infringing Domain Name is being used primarily for the purpose of disrupting Lumos’ business; (b) by using the Infringing Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Infringing Domain Name or other online location, by creating a likelihood of confusion with the Lumos Mark as to the source, sponsorship, affiliation, or endorsement of the Infringing Domain Name or of a product or service on the Infringing Domain Name; and (c) there are circumstances indicating that Respondent has registered or acquired the Infringing Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Infringing Domain Name to Complainant or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the Infringing Domain Name.
In fact, this is not the first time that Respondent has registered a domain name in bad faith. In the case of BCR, Inc. v. None, a/k/a YM Quan, FA0512000615308 (Forum February 14, 2006) the panel found respondent registered d impra.com in bad faith and ordered it transferred.
B. Respondent
“Complainant’s Trademark is Identical or Confusingly Similar to the Disputed Domain”
Respondent accepts the validity of Complainant’s trademark.
Rights or Legitimate Interests
The Domain Name was initially registered in 1996 by its first owner Lumos Technologies, Inc., which appears to have owned and used the Disputed Domain until 2013 when it may have changed ownership to the Lumos Foundation, a charity founded by J.K. Rawlings. This foundation allowed the registration to lapse, and in 2020 NameJet placed the Disputed Domain into an expired domain name auction that was held on October 18, 2020.
Respondent acquired the Disputed Domain in this auction, being the winning bidder in competition against some 140 other participating parties and 175 bids. The price was $22,722.
Respondent made this purchase as an investment, believing the Disputed Domain was descriptive and brandable. In making this purchase, Respondent did not target Complainant or Complainant’s trademark; at the time, Respondent was not aware of either. Further, Complainant’s trademark was not distinctive to Complainant, but was (and is) generic and available for anyone to register as a domain name so long Complainant was not targeted, which Respondent did not do.
Respondent’s declaration demonstrates (among other things) that she was not aware of Complainant or Complainant’s trademark, thus making targeting impossible.
The term “lumos” is generic because it has been widely used by third-parties. In addition to the previous owners of the Domain Name, the USPTO has on record 100+ registrations for LUMOS. Further, a Google search returns many hundreds of uses for the term without any connection to Complainant.
Bad Faith
Respondent did not act in bad faith because she did not target Complainant or Complainant’s trademark, and such is a sin qua non of bad faith.
Further, Respondent’s responses to purchase inquiries from a GoDaddy broker does not establish bad faith. Two inquiries were made, and in each instance, Respondent was unaware of the identity of the principle, did not make a counter-offer, and did not pursue the discussion. Respondent’s declaration establishes that Respondent never offered the Domain Name for sale generally or to anyone specifically.
Reverse Domain Name Hijacking
Complainant rushed to file the Complaint a mere five days after Respondent said to the GoDaddy broker that she was not interested in selling the Disputed Domain, and as such this UDRP action is Complaint’s “Plan B.” This, in itself, could be evidence of reverse domain name hijacking.
C. Additional Submissions
C.1. Complainant’s Additional Submission
Rights or Legitimate Interests
The Respondent argues that the Infringing Domain Name consists of a generic or descriptive term and for that reason is available for registration as a domain name notwithstanding Complainant’s trademark; this is wrong. In fact, the Infringing Domain Name does not include a generic or descriptive term; “lumos” is neither generic nor descriptive. If it were, then the point would have been raised by the USPTO during the application process for the Lumos Mark (which does include the term “lumos”), and it was not raised in that context. This is not surprising given that that the word “lumos” cannot be found in Merriam Webster, Cambridge, or dictionary.com dictionaries. Further, the Lumos Mark has become incontestable and pursuant to US trademark law (both parties being US residents) the argument of descriptiveness can no longer be asserted against it.
Respondent’s argument that it has filed other domain name registrations for many other brandable domain names does not help Respondent and in fact helps Complainant. These other domain names do not include trademarked elements, whereas the Infringing Domain Name does include a trademarked term. Further, these other non-trademarks noted by Respondent are in no way generic or descriptive, and as such, Respondent’s argument falls flat.
Respondent’s argument that it has rights and legitimate interests in the Infringing Domain Name because Respondent purchased the Infringing Domain Name at auction and the Lumos Mark is generic does not work because the Infringing Domain Name does not in fact contain a generic term, and as such all of the cases cited by Respondent on this point are inapposite.
Respondent’s argument that it has rights and legitimate interests because Respondent is a legitimate domain name reseller is off point. The issue here is not whether domain name reselling is a legitimate enterprise or that Respondent is a legitimate purveyor of domain names, but rather whether in this instance Respondent has rights or legitimate interests in the Infringing Domain Name, which she does not.
Finally, Respondent admits that she has not been using the Infringing Domain Name since she acquired it, which was over a year ago. Numerous panels have found that passive holding of an inactive website “fails to establish any sort of rights or legitimate interests in the disputed domain name.”
Bad Faith
Respondent’s argument is wrong that her acquisition of the Infringing Domain Name at auction is evidence of her good faith. There is no basis for absolving Respondent’s actions merely because she purchased the Infringing Domain Name at auction. Rather, it is well settled that when a Respondent purchases a domain name after its initial registration, the focus of inquiry is the date of purchase and not the initial date of registration, especially with respect to the dates the parties acquired their respective interests. Here Complaint obtained registration of the Lumos Mark years before Respondent registered the Infringing Domain Name, which is sufficient to avoid the general rule that bad faith cannot exist where the acquisition of the involved trademark rights post-dates the registration of the involved domain name.
Respondent’s assertion that she could not have acted in bad faith because she did not know about the Lumos Mark is wrong. Complainant has demonstrated that Respondent likely did, in fact, know about the Lumos Mark given Complainant’s decade-long registration of the Lumos Mark, use across multiple states for hundreds of thousands of subscribers, and number one search result on Google.
Nevertheless, and as a totally independent and sufficient basis, Respondent’s use of the Infringing Domain Name can satisfy the bad faith element under Policy 4(b)(iv). Passive ownership of an inactive website, particularly when such ownership has continued for over a year, is not just evidence of a registrant’s lack of legitimate interest or rights in a domain name, it is also evidence of bad faith. Respondent is in fact well aware that passive holding of a domain that is the same or confusingly similar to another’s registered trademark constitutes bad faith, even if that mark is only well-known in a niche market.
Additionally, non-use of a domain name is an independent basis for bad faith because it gives the impression that interested individuals will receive information regarding Complainant, while in fact consumers are sent to an error page with no other content. This disrupts Complainant’s business and attempts to attract Internet users to Respondent’s website for commercial gain.
Lastly, panels have held that only in cases in which both complainant and respondent are located in the United States, that the mere registration of the Lumos Mark supports a finding of bad faith by Respondent because the federal registration of a trademark puts everyone in the United States on constructive notice of Complainant’s rights in the Lumos Mark.
Reverse Domain Name Hijacking
Complainant has done what any owner of a registered non-descriptive or generic trademark should do when a domain name that is confusingly similar to its trademark has been obtained and/or used in bad faith after the date on which Complainant attained rights in the trademark by someone who has no legitimate rights or interests in that trademark.
C. 2. Respondent’s Additional Submission
Complainant’s Additional Submission should be disregarded because it is in the nature of a rebuttal, which is not allowed under the Rules.
Setting this issue aside, It is not correct that a holder of an incontestable trademark registration that includes a word not found in the dictionary automatically prevails on the issues of legitimate interests and bad faith. The is no such Rule under the UDRP and the Respondent is not aware of any prior case that has so held.
The term “lumos” is not exclusive to Complainant for purposes of the UDRP. Firstly, it is to be noted that Complainant’s trademark is LUMOS TECHNOLOGIES, not the stronger LUMOS. Whereas Complainant’s trademark may pass muster under the UDRP with respect to the first element, it is necessarily weaker. Further, there are numerous third party uses of the term “lumos,” including at least 100 US trademark registrations for the mark LUMOS standing alone as well as hundreds more uses shown by a simple Google search, many of which involve reference to the concepts of lumens and light, including by hundreds of millions of fans of the Harry Potter franchise.
The proofs presented in the Response regarding the legitimate interest of domain name investors and the ample evidence of third party use of the term demonstrate that Respondent is free to register and use the Disputed Domain as she sees fit, provided she is not targeting Complainant in any manner. Complainant should be aware that its “incontestable” trademark is limited to Class 38, thus its protections are limited to those goods and services – not a trump card to stop any party from using the term.
Complainant is the owner of the trademark LUMOS NETWORKS (Complainant’s Mark).
Respondent acquired the domain name <lumos.com> (the Disputed Domain Name).
At the time Respondent acquired the Disputed Domain Name, she was unaware of Complainant and Complainant’s Mark.
The Complainant’s Mark is not famous.
Policy ¶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."
Policy ¶ 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.
The Complaint is brought in the name of both Gridiron Fiber Corp. and Lumos Telephone LLC d/b/a Lumos Networks. Ordinarily, only one entity can be a complainant. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.” With respect to this latter point, See Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006) ( “It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.”). See also Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004) (A sufficient link existed between the complainants where there was a license in place between them regarding the use of the TOUGHLOVE mark.)
Complainant asserts that: “…there is an unbroken, continuous chain of title, ownership, and use of the Lumos Mark from Lumos Networks Inc. to Gridiron, Gridiron is the successor in interest to all right, title, and interest in the Lumos Mark since at least as early as the date of its original registration in January of 2012. Currently, the Lumos Mark is continuously and exclusively used in commerce by Complainant Lumos via license with its corporate parent, Gridiron.
Seeing no practical negative consequence that might result, and in the absence of any objection or counter-argument from the Respondent, the Panel accepts Complainant’s assertions, and as such, the Panel accepts that there is a sufficient nexus between these two entities to allow them to proceed herein as a single complainant,
In its Additional Submission, Respondent objects to Complaint’s Additional Submission as an improper “rebuttal” that goes beyond the scope of issues raised by Respondent in its response. An additional submission in the form of a rebuttal is not provided for under the Rules or the Forum Supplemental Rules.
The Panel notes that Forum Supplemental Rule 7 reads as follows: “If a party request an additional written submission be considered by the Panel, the additional submission must be sent to the Forum along with proof of service on the opposing party(s). Forum will forward all additional submissions to the Panel. It is within the discretion of the Panel to accept or consider additional unsolicited submission(s).” This rule does not define what is, or more importantly, is not an acceptable additional submission.
To the extent that the Additional Submissions develop the parties’ contentions more fully the Panel has found them helpful in reaching its determination. Accordingly, the Panel accepts the Additional Submissions filed by both parties.
Complainant is the rights holder of the trademark LUMOS NETWORKS which it acquired from Lumos Networks Inc. as part of a larger corporate restructuring transaction which occurred effective October 4, 2021. Respondent does not dispute Complainant’s rights to the trademark or that the Disputed Domain Name is identical or confusingly similar to it. As no issue has been raised as to Complainant’s standing to maintain this proceeding it is unnecessary to examine the matter further. Accordingly, this element is established in favor of Complaint.
Pursuant to Policy ¶ 4(a)(ii), the Complainant has the burden of demonstrating a prima facie case. If Complainant is successful in this, then the burden shifts to Respondent to offer proof that it does have rights or legitimate interests. It does this by demonstrating that its conduct falls within one of the three nonexclusive circumstances of Policy ¶ 4(c).
Complainant has established its prima facia case. It has demonstrated that: 1) Respondent is not commonly known by the Disputed Domain Name; 2) Complainant has not given its permission to Respondent to use Complainant’s Mark; and 3) has demonstrated that the Disputed Domain Name resolves to a functionally blank webpage, which is inconsistent with a claim of rights and legitimate interests.
The burden thereby shifts to Respondent to rebut Complainant’s contentions. For all the reasons set forth below, the Panel finds that Respondent has met its burden.
Respondent states in her declaration filed with her Response that she is engaged in the business of buying and selling domain names, and that she acquired the Disputed Domain Name in connection with this business activity as it was a generic word. She believed that “lumos” was easy to remember and a good candidate for a brandable domain name.
Respondent has established that the dominant element of the Disputed Domain Name, “lumos,” is generic in the sense of its being commonly used and its meaning easily comprehended. This commonness is established principally by the fact that the term is widely employed as a trademark or service mark by numerous persons offering a variety of goods and services in the US and around the world. Additionally, Respondent provides evidence that a Google search on the term shows many third-party users, mostly in connection with the concept of light or illumination. Respondent also points out that the term is used in the Harry Potter books by J.K. Rowling, where it is used as the incantation for causing a wand to generate light. This use alone has injected the term into the popular lexicon, notwithstanding that the word is not in the dictionary.
As “lumos” is neither used exclusively by nor is it so closely or solely associated with Complainant no one party’s claim to the Disputed Domain Name can be any better than Respondent’s.
Respondent has established that until the filing of the complaint she had no actual knowledge of Complainant and did not acquire the Disputed Domain Name with any one mark holder in mind, let alone Complainant. Rather, Respondent acquired the Disputed Domain Name because she believed it presented a good business opportunity to add to her portfolio of domain names.
Respondent has demonstrated that she acquired the Disputed Domain Name ‘in connection with a bona fide offering of goods or service”, paragraph 4(c)(i) of the Policy. Under these facts the Panel finds that Respondent has a legitimate interest in respect to the Disputed Domain Name. See Platterz Inc. v. Andrew Melcher, FA 1729887 (Forum June 19, 2017) (holding that “investing in genuinely generic terms, for purpose of resale, is a legitimate business and that the acquisition of domain names consisting of common, dictionary terms for resale can confer rights and legitimate interests upon entrepreneurs who engage in this activity.”). See X6D Limited v. Telepathy, Inc., Case No. D2010-1519 (Nov. 16, 2010) (given “the commercial value of descriptive or generic domain names it has become a business model to register and sell such domain names to the highest potential bidder.”); also Audiopoint, Inc. v. eCorp, D2001-0509 (WIPO June 14, 2001)(“speculation in domain names . . . may itself constitute a bona fide activity under paragraph 4(c)(i)”); see also Incorp Services, Inc. v. RareNames, WebReg, 559911 (Forum Nov. 10, 2005)(“selling domain names consisting of generic or descriptive terms is a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)”). See also General Machine Products Company, Inc. v. Prime Domains (a/k/a Telepathy, Inc.), FA92531 (Forum Mar. 16, 2000)(finding that Respondent established legitimate interests in selling generic and descriptive domain names).
Complainant contends that the term “lumos” is not generic or descriptive. It points out that during “the registration process the USPTO never issued an office action or other refusal to register the Lumos Mark on the ground that ‘Lumos’ was descriptive or generic.” It contends that this silence makes perfect sense given that the term is not found in the dictionary. Further, Complaint’s Mark has become incontestable, and under US trademark law (both parties being US residents) the issue of descriptiveness cannot now be raised.
Neither argument is persuasive. The USPTO application process occurs in a wholly different environment with its own set of rules, requirements, goals, and incentives. Whereas it is impossible to say that events occurring during the prosecution process or determinations therein made could never be relevant, the Panel does not believe the purported silence of the USPTO on this issue is relevant to this case. The same is true about incontestability. The incontestability of any particular mark does not address its distinctiveness or wide-spread use by others in the market. The greater the number of users of a particular sign, the lesser its strength. It is in this environment that a respondent’s acquisition in connection with its domain name business is to be considered.
Complainant contends that the term “lumos” is directly and dominantly related to itself because the first response to a Google search for the term is to Complainant. While it may be true of the Google entry, Complainant is nevertheless one of many other mark holders as already noted, Complainant cites Greencraft LLC v. Kim, James / Mediablue, FA1509001636762 (Forum November 4, 2015) (<greencraft.com>) in support of this proposition. However, in that case the “Panel does not find any compelling evidence that either ‘greencraft’ or ‘green craft’ are a commonly used descriptive word or phrase.” Here, the evidence of common use by others is compelling, and it is in that sense it differs from unexpected combinations or coinages of words. If there was only one mark holder of “lumos” or it was famous and associated solely with Complainant the outcome would, of course, be different.
The Complainant further contends that Respondent’s claim that she was unaware of Complaint is not credible given Complaint’s extensive use of the Complainant’s Mark in commerce. The Panel accepts Complainant’s evidence with respect to its use of the Complainant’s Mark in commerce, but the Panel does not believe that this level of use rises to the level necessary to draw the inference it wishes the Panel to make. The Panel also notes that this usage appears to be both regional and with a business in a niche industry. There is no evidence that Respondent lives within the region covered by Complainant’s activities or that she is in any way connected with the telecommunications industry such that Complainant or its mark would have been brought to her attention. See Dextra Asia Co., Ltd. v. Lakeside Enterprises Limited, D2012-0403 (April 19, 2012):
“There appears to be no other reason why the Respondent should have known of the Complainant’s business and DEXTRA mark. The Respondent does not operate in a competing field. Also, it appears from the Respondent’s evidence that the Complainant admitted in a submission to the United States Patent and Trademark Office in connection with its United States trade mark registration for DEXTRA, that its business and products were not to be marketed to the general public, but were targeted at a specialised client base in the construction sector. On this basis the Panel sees no reason why the Respondent should have known of the DEXTRA mark at the date of registration of the Disputed Domain Name.”
Complainant might have a point in this regard if its use of the Complainant’s Mark were such as to support a claim that the Mark is famous. No one could reasonably be unaware of DISNEY, FORD, BBC, ALIBABA, HUAWEI, COKE, etc. However, the Panel is not convinced that Complaint’s use of Complainant’s Mark in commerce is sufficient to raise it to this level. See Compagnie Générale des Etablissements Michelin v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, D2021-2894 (October 29, 2021)(“The Panel infers from the documents and material before it that the Respondent was aware or should have been aware of the Complainant’s well known MICHELIN trademark, which was both used and registered well before the registration of the Disputed Domain Name in March 2021. It is well established from previous Panel Decisions that the mere registration of a domain name that is confusingly similar to a well-known trademark by a non-affiliated or unauthorized entity as here can of itself create a presumption of bad faith.”)
Complainant contends that Respondent should be deemed to have had constructive knowledge of Complainant’s Mark because it is federally registered. Some panelists have suggested that a pre-registration trademark search is required, at least for those whose who are professional domainers. See dissent of Donahey in Bacchus Gate Corporation d/b/a International Wine Accessories v. CKV and Port Media, Inc. D2008-0321 (May 20, 2008).
However, most panels take the opposite view. The limited circumstances under which it may be applied are not present in this case. WIPO Overview, section 3.2.2., i.e. “strength or distinctiveness of the mark, or facts that corroborate an awareness of the complainant’s mark.” See The Way International Inc. v. Diamond Peters, D2003-0264 (July 22, 2005) (“As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy. The essence of the Complaint is an allegation of bad faith, bad faith targeted at the Complainant. For that bad faith to be present the cybersquatter must have actual knowledge of the existence of the trade mark owner. If the registrant is unaware of the existence of the trademark owner, how can he sensibly be regarded as having any bad faith intentions directed at the Complainant? If the existence of a trade mark registration was sufficient to give the Respondent knowledge, thousands of innocent domain name registrants would, in the view of the Panel, be brought into the frame quite wrongly.”).
This Panel believes that the correct approach does not impute to Respondent constructive knowledge of Complainant and Complainant’s Mark.
As noted above with respect to Complaint’s prima facie case, Complainant argues that Respondent has been passively holding the Disputed Domain Name because it directs to a functionally blank webpage. Complainant cites two cases in support of the proposition that passive holding is, in itself, incompatible with a claim for legitimate interests. The first of these citations is L-com, Inc. v. WhoisGuard Protected / WhoisGuard, Inc., FA1704001725239 (May 3, 2017). The panel in that case stated: “Respondent’s <l-com-signin-lang-de.info> and <l-com-signin-lang-ger.info>domain names each address a mainly blank webpage without any demonstrable preparations for use. Using the domain names in this manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).” However, in that case the respondent did not file a response, and given the burden shifting rule with respect to the issue of rights and legitimate interests, the application of that case should be restricted to such situations. In the present case Respondent did file a response, and as such, that case is inapposite.
The second citation is T.R. World Gym-IP, LLC v. William D'Addio, FA0704000 956501(May 22, 2007). The panel in that case stated: “The evidence indicates that Respondent’s domain name resolves to a website featuring no substantive content other than the words “coming soon” and a picture of a person working out with gym equipment. Under such circumstances, the Panel finds that Complainant has met its burden of establishing that Respondent is not using the domain name in connection with a bona fide offering of goods or services or in a noncommercial or fair manner.” However, the panel also said in that case: “The evidence indicates that, up until recently, the domain name was offered for sale and that Respondent recognized that the domain name incorporates “one of the most popular names and website in the fitness industry.” As such, that case does not stand for the proposition that passive holding is in itself fatal to a claim of legitimate interests, but rather that passive holding in combination with clear evidence of bad faith justifies a transfer. Further, this is not a case in which “ it is . . . [im]possible to conceive of any plausible actual or contemplated active use of the Domain Name by respondent,” Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000).
For the above reasons the Panel finds that Complainant has not established the second element of the Policy.
Bad faith exists when a panel finds that a respondent has engaged in any of the four types of conduct specified in Policy ¶ 4(b). Complainant specifically argues that Respondent’s registration of the Disputed Domain Name violates subparagraphs 4(b)(i) (that it acquired <lumos.com> “primarily for the purpose of selling [it] . . . to Complainant”), 4(b)(iii) (that it acquired <lumos.com> “primarily for the purpose of disrupting” Complainant’s business), and 4(b)(iv) (that in using <lumos.com> it has “intentionally attempted to attract, for commercial gain, Internet users to the Infringing Domain Name or other online location.”).
Implicit in each of these categories of conduct is the requirement that a respondent had actual knowledge of and is intentionally attempting to benefit from the involved complaint’s good will in the involved complainant’s mark, or said another way, targeting. See T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Forum May 22, 2007)(“ The evidence indicates that, up until recently, the domain name was offered for sale and that Respondent recognized that the domain name incorporates “one of the most popular names and website in the fitness industry… Such activity and knowledge on the part of Respondent evinces registration and use in bad faith under paragraph 4(b)(i) of the Policy.”)
In the absence of evidence of targeting, there can be no finding of bad faith. See Bacchus Gate Corporation d/b/a International Wine Accessories v. CKV and Port Media, Inc., D2008-0321 (May 20, 2008) (If these claims by the Respondent that it did not register the Domain Name with the Complainant in mind are correct, then the Domain Name cannot have been registered in bad faith and the Complainant’s case inevitably fails.)
Complainant has not demonstrated that Respondent was targeting Complaint or Complainant’s Mark at the time she acquired the Disputed Domain Name. Rather, Respondent has established that at the time, she was unaware of Complainant and Complainant’s Mark.
Further, the registration of a generic or common term as domain name does not, by itself, give rise to an implication of bad faith. See Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) ("Common words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis."); see also Target Brands, Inc. v. Eastwind Group, FA 267475 (Forum July 9, 2004) (holding that the respondent’s registration and use of the <target.org> domain name was not in bad faith because the complainant’s TARGET mark is a generic term); see also Miller Brewing Co. v. Hong, FA 192732 (Forum Dec. 8, 2003) (finding that because the respondent was using the <highlife.com> domain name, a generic phrase, in connection with a search engine, the respondent did not register and was not using the disputed domain name in bad faith).
The fact that a term is not found in a dictionary is not conclusive that it does not exist. It is clear from the evidence that “lumos” is a word circulating in a number of different language communities. It is also evident from the many trademark and service mark registrations of “lumos” that it has a well-established intrinsic meaning. Why else would numerous merchants in the US and around the world coopt “lumos” if it had no attractive power?
For all the above reasons, Complainant’s contentions do not support that the Disputed Domain Name was registered or used in bad faith. As such, Complainant has not established the third element of the Policy.
The principal of RDNH is defined in UDRP Rules (Paragraph 1, Definitions) as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.” Rule 15(e) states: “If after considering the submission 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 its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
With specific reference to RDNH, what type of conduct calls for censure, for it is well-established that mere lack of success, offering weak arguments, or even having misguided beliefs are not in themselves sufficient causes for finding RDNH? See WIPO Overview 3.0, section 4.16.
The WIPO Overview in the same section also lists the consensus views on the specific types of sanctionable conduct. In Timbermate Products Pty Ltd v. Domains by Proxy, LLC / Barry Gork, D2013-1603 (November 3, 2013) the Panel surveyed earlier cases that had found bad faith conduct on the part of a complainant, identifying different patterns that give rise to such a finding:
(i) Complainant submitted materially false evidence,
(ii) Complainant omitted relevant evidence,
(iii) Complainant Misrepresented the facts,
(iv) The Domain Name was registered before the trademark rights came into existence,
(v) Complainant’s purpose was to improve its negotiating leverage with the respondent,
(vi) Complainant knew that the complaint was doomed to failure, and
(vii) Complainant had constructive knowledge its complaint would not succeed,
The last three of these relate to some form of attempt by the complainant to use the UDRP to obtain from the respondent what it could not, or did not want, to buy from the respondent, at least for the price demanded by the respondent.
The Panel in Dextra Asia Co., Ltd., supra. (cited by Timbermate, supra.) states with respect to point “(vii)” above:
“Overall, it appears to the Panel that the Complainant has simply embarked on a course to obtain the Disputed Domain Name, if not by negotiation, then by launching this Complaint, but knowing that there was no real prospect of being able to demonstration registration and use in bad faith. In this regard the Panel finds support for its view in the Complainant’s wholly unsupported and, at best, disingenuous submission that it has been operating under the name DEXTRA for almost 30 years in the ‘geographical area’ of the Seychelles Islands. This submission was the sole basis for the Complainant’s allegations of bad faith registration and use. The Panel is in this instance prepared to make a finding of reverse domain name hijacking.” (Emphasis supplied)
This conduct is sometimes referred to in UDRP cases as a “Plan B”; rather than negotiate with the respondent the complainant initiates a UDRP proceeding for the involved domain name.
The Panel notes that Complainant is represented by counsel. Id., WIPO Overview. “Given the undertaking 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.” See Color Image Apparel, Inc. v. Whois Privacy Services by DOMAINCA / unitedeurope consulting, D2017-0650 (WIPO June 19, 2017) (“Complainant ought to have known that it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the Complaint”); also Deutsche Post AG v. NJDomains, D2006-0001 (WIPO March 1, 2006) (“[Panel] wishes to place on record its firm view that a complainant should not commence UDRP proceedings unless believing on reasonable ground that the Complaint is justified and that the allegations made against the respondent are legitimate and based on fact.”). While no inference of overreaching by a complainant can be drawn from protecting the integrity of its mark where the evidence supports the argument, an inference does arise in the context of the UDRP when the involved complaint is so weak as to leave no other rational explanation.
In the present case, the critical considerations are: 1) whether the term “lumos” is generic or common, and 2) whether Respondent targeted Complainant or Complainant’s Mark. These issues are critical to the analysis of this case because, as it noted above in the section of this decision concerning rights or legitimate interests, if both are true, then Respondent must prevail (as she does) and conversely, if both are not true, Complainant must prevail (which it does not).
As such, the questions then become what did Complainant know or what should it have known about these issues, and based on this, was Complainant’s filing so weak as to leave no other rational explanation than in initiating the UDRP Complaint was impermissibly exercising its “Plan B.”
With respect to the term ”lumos,” Complainant reasonably can be charged with knowing that the term is generic or common. It could not reasonably have missed the prior uses by the original domain name registrant in 1996 and the subsequent use by the Lumos charity. It knew or should have known about the extensive use of the term by other trademark registrants. It knew or should have known about the many other third-party uses revealed by a Google search, and the extensive use (in terms of the number of readers) in the Harry Potter books.
With respect to targeting, Complainant knew, again, everything that gives rise to the Panel’s conclusion that the Respondent did not target Complainant or Complainant’s Mark, as it offered no concrete evidence that it did. The Panel observes that while Complainant did use the Complainant’s Mark in commerce, its use is relatively modest and, in any event, localized to Virginia and North Carolina and related to the telecommunications industry. Complainant gives no reasonable explanation as to how or why Respondent could have come into contact with Complainant or Complainant’s Mark. To the contrary, Complainant notes in the Complaint that Respondent is a resident of California, strongly suggesting that she would have had no contact with either.
Complainant sought to deal with the problem of Respondent’s likely lack of actual knowledge by invoking the doctrine of constructive knowledge. Far from helping its cause, this argument strengthens the likelihood that Complainant knew Respondent did not have the requisite knowledge to support a finding of targeting.
Based upon these facts, the Panel concludes that at the time the Complainant initiated this UDRP proceeding it knew or should have known that it had no real prospect of being able to demonstrate Respondent’s lack of rights or legitimate interests or / bad faith.
Accordingly, the Panel declares that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
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 <lumos.com> domain name REMAIN WITH Respondent.
Eleni Lappa, Gerald M. Levine, and Kendall C. Reed, Panelists
Dated: December 20, 2021
[i] Complainant refers to the domain name that is the subject of this case as the “Infringing Domain Name.” Respondent refers to it as the “Disputed Domain” and sometimes as the “Disputed Name.” The Panel has retained these usages for purposes of presenting the parties’ contentions, but otherwise employs the term “Disputed Domain Name.”
[ii] Complainant refers to its involved trademark as the “Lumos Mark.” Respondent refers to it sometimes as “Complainant’s purported trademark” and sometimes as “Complainant’s trademark.” The Panel retains these usages for purposes of presenting the respective parties’ contentions, but otherwise refers to it as “Complainant’s Mark”.
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