Simple Plan Inc. v. Michel Rog
Claim Number: FA2111001973743
Complainant is Simple Plan Inc. (“Complainant”), represented by Ronald S. Bienstock of Scarinci Hollenbeck, New Jersey, USA. Respondent is Michel Rog (“Respondent”), represented by Howard Neu of Law Office of Howard Neu, P.A., Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <simpleplan.com>, registered with GoDaddy.com, LLC.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Steven M. Levy, Terry F. Peppard and Alan L. Limbury, as Panelists.
Complainant submitted a Complaint to the Forum electronically on November 17, 2021. The Forum received payment on November 17, 2021.
On November 18, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <simpleplan.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 November 22, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 17, 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@simpleplan.com. Also on November 22, 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 December 15, 2021.
On December 20, 2021, the Forum received from Complainant an Additional Submission. On December 23, 2021, the Forum received from Respondent a Response to Complainant’s Additional Submission. On December 23, 2021, the Forum received from Complainant a Second Additional Submission. On December 24, 2021, the Forum received from Respondent a Response to Complainant’s Second Additional Submission. On December 29, 2021, the Forum received from Complainant a Response to Respondent’s Additional Submission of December 24, 2021. On December 30, 2021, the Forum received from Respondent a Response to Complainant’s Third Additional Submission. All Additional Submissions and Responses were unsolicited and complied with the Forum’s Supplemental Rule 7. On December 30, 2021, the Panel issued a procedural order that no further unsolicited submissions are to be made by either party.
On December 22, 2021, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed Steven M. Levy, Terry F. Peppard and Alan L. Limbury as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: PARTIES’ ADDITIONAL SUBMISSIONS
Forum Supplemental Rule 7 provides:
“If a party requests an additional written submission be considered by the Panel, the additional submission must be sent to 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.
The Panel has considered the parties’ unsolicited Additional Submissions but has not found them particularly helpful in reaching its determination. Much of what is contained in Complainant’s Additional Submissions could and should have been included in its Complaint.
A. Complainant
Complainant, Simple Plan Inc., is a world-renowned company that oversees, through its band name and trade name, Simple Plan, a multiplatinum and multi-gold Canadian pop/rock band from Montreal, Quebec formed in 1999. Complainant has rights in the SIMPLE PLAN mark based on registrations of the mark with the United States Patent and Trademark Office (“USPTO”) and the Canadian Intellectual Property Office (“CIPO”).
Complainant registered the <simpleplan.com> domain name on September 12, 1999 with a registrar called “Weblaunching.net” and used the domain name during the years 2001-2021 for a website to sell and promote its concerts, DVDs, CDs and LPs, clothing and merchandise. When the domain name renewal date came up in 2021, the Weblaunching.net company, website and email addresses had disappeared. It proved impossible to get in touch with anyone at that registrar. Complainant tried to use its credentials to login and move the domain somewhere else, but the website was unresponsive and offline, and it was thus impossible to do so. Complainant tried to correspond with Tucows Domains Inc. (“Tucows”) since it appeared that Weblaunching.net was acquired by Tucows or that their clients were transferred to Tucows. Being unable to get a response from Tucows and Weblaunching.net, Complainant was unable to renew its registration for the <simpleplan.com> domain name and the registration lapsed through no fault of its own. It was acquired by Respondent on October 21, 2021.
Complainant owned and used the <simpleplan.com> domain name for 20 years until it was misappropriated by unscrupulous entities and transferred to Respondent who, acting anonymously through GoDaddy, is now demanding $35,000.00, plus 20% commission to GoDaddy, to transfer it back to Complainant. This is extortion. Complainant’s firm position is that it should not be extorted by these entities by paying large sums of money to regain the <simpleplan.com> domain name it originally registered, used and owned for 20 years.
The <simpleplan.com> domain name is identical to Complainant’s SIMPLE PLAN mark.
Respondent does not have rights or legitimate interests in the <simpleplan.com> domain name. Respondent is not commonly known by the domain name and Complainant has not authorized Respondent to use the SIMPLE PLAN mark. Respondent does not use the domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent merely diverts users seeking Complainant to a travel services website. The domain name is also being offered for sale back to Complainant on GoDaddy for $35,000 plus 20 percent commission!
The domain name <simpleplan.com> instantly redirects to tryp.com, a website that purports to offer travel services. Except for this instant redirection, no use is made of the domain name. Respondent offers no goods or services in connection with the domain name. By contrast, Complainant owned and used the domain name for 20 years for its “www.simpleplan.com” website -- decades until it was misappropriated by unscrupulous registrars who designed to let the domain name recently lapse, despite Complainant’s repeated and fair attempts to maintain it, and they then transferred it to Respondent. This amounts to the use of the SIMPLE PLAN mark to misdirect Internet traffic away from Complainant. Respondent’s use of Complainant’s trademark and service mark and domain name for the purpose of diverting Internet traffic away from Complainant’s site, without Complainant’s permission or authorization, is not a bona fide offer for the sale of goods, nor is it a legitimate fair use of Complaint’s trademark and registrations.
Complaint owned and used the <simpleplan.com> domain for 20 years, until it has been stolen from it, ultimately by Respondent.
There are several acts of bad faith made by Respondent in this matter. Respondent’s bad faith is also demonstrated by its affirmative acts of taking away and letting lapse Complainant’s domain name and then demanding 35,000 (USD) plus 20% interest to get it back. Respondent registered the <simpleplan.com> domain name in bad faith with actual knowledge of Complainant’s rights in the SIMPLE PLAN mark, based on the registration of a domain name identical to the mark and the fame of the mark. Acting anonymously through GoDaddy, the Respondent is demanding 35,000.00 (USD) to sell the domain name Complainant owned for 20 years back to Complainant. What is more, GoDaddy itself is demanding a 20 percent commission on top of the 35,000.00 in order to transfer the domain name back to Complainant – demanding approximately 50,000 to get the domain name back.
Respondent also uses the domain name in bad faith to divert users to a travel services website. Furthermore, Respondent provided misleading WHOIS information as some information is missing.
Under the facts and circumstances of this case, Respondent’s intent is, and outrageous actions are, to unfairly and fraudulently hijack Complainant’s <simpleplan.com> domain name and sell it back to Complainant at a highly inflated cost.
B. Respondent
This Complaint is not properly brought under the UDRP Rules and should be dismissed. By Complainant’s own admission, its problem was created by the Registrar Weblaunching.net, which either went out of business or was acquired by Tucows.com, wherein neither Registrar was responsive to Complainant’s requests to renew the domain name. Apparently, this lack of communication between the Registrars and the Complainant caused the domain name to be dropped and subsequently transferred to GoDaddy for auction. It went up for bids and Respondent turned out to be the highest bidder. Thus, Respondent was an innocent purchaser for value of a publicly auctioned domain name.
Respondent, Michel Rog, a native of the Netherlands and a resident of Montenegro, owns a travel company and was looking for an easy to remember domain name for the travel company on the GoDaddy domain auctions web site. He had never heard of Complainant’s music group. Having won the auction, he immediately forwarded the domain name to his active travel portal web site “www.tryp.com” until he had a chance to register a holding company under the same name, as his plan was to use the domain name for the holding company for his travel business. The domain name was transferred to his GoDaddy account on October 21, 2021, and exactly one week later he received an email from a GoDaddy agent for an unnamed client, who transmitted to Respondent an offer of $5,000 for the domain name, which Respondent rejected, stating to GoDaddy that the domain name was not for sale, but for financial purposes, Respondent would consider offers in excess of $35,000.00.
Respondent admits that the <simpleplan.com> domain name is identical to Complainant’s mark, which consists of generic terms.
Respondent has rights and legitimate interests in the <simpleplan.com> domain name because Respondent uses it in connection with a bona fide travel business.
Respondent did not register the <simpleplan.com> domain name in bad faith. Respondent innocently acquired the domain name via auction and has made no offer to sell it to Complainant. Respondent had never heard of Complainant’s music group. The domain name is being developed as a working website.
Respondent is a legitimate businessman entitled to use his “property” in whatever way he sees fit and sell it for whatever amount he believes the domain names are worth. He has not targeted Complainant or Complainant’s trademarks and has a bona fide use of the domain name.
Complainant is engaging in Reverse Domain Name Hijacking.
C. Additional Submissions
Complainant’s First Additional Submission
Respondent’s defence that what was done to misappropriate the domain name was not his fault is beside the point. The three elements for transfer of the domain name back from Respondent to Complainant are met.
Bad faith has been shown by Respondent’s offering of the domain name at a price in excess of its acquisition costs. Respondent admits that he would sell the domain name for $35,000 but not at a lower price, plus GoDaddy’s 20% commission. He says that he is “entitled” to sell the domain name at any price. This is simply not the law: See Tumblr, Inc. ν. Paul LaFontaine, FA1579350 (Forum Oct. 14,2014); Freeport McMoran Inc. ν. Francis Broaddus, F Α 1802565 (Forum Sept. 18, 2018); and Solar Turbines Inc. ν. cunshuo zhang/Carolina Rodrigues/Fundacion Comercio Electronico, FA1820508, (Forum Jan. 18, 2019).
Complainant does not have to prove that Respondent directly contacted Complainant to demonstrate bad faith. Respondent communicated its demands through its agent, GoDaddy, the broker and registrar. Since GoDaddy was Respondent’s agent, the 20% commission demanded of Complainant was in fact made on behalf of Respondent to add to the already excessive price. This point is conceded in the Response and these facts prove bad faith.
SIMPLE PLAN is not generic for the music business nor for the goods and services at issue. Had Respondent bothered to do a trademark search he would have learned that he was treading on Complainant’s registered trademark rights.
The Policy does not require evidence of actual confusion. In any event, the Simple Plan band has millions of followers around the world, so it is not unreasonable for an Internet user to be greatly confused when being redirected to Respondent’s nascent or fake travel site upon entry of “simpleplan” into an address bar.
Respondent argues that he is developing a website for use of Complainant’s domain name and that this is bona fide use. Not true. Respondent registered <tryp.com> in 1996. It is a barely functioning site showing no actual use. Nor is there any evidence that Respondent was developing the <simpleplan.com> domain name. His use was simply to redirect it instantly to tryp.com. The domain name was purchased for just this purpose – a front for redirection. 25 years of non-use amounts to cybersquatting – not web development.
Respondent’s allegation of Reverse Domain Name Hijacking is meritless. Complainant was well within its rights to bring this case against Respondent because Respondent is holding Complainant’s “simpleplan” domain name that Complainant has used for its business for decades, hijacked it himself and demands exorbitant monies to return it to Complainant, who held it for 20 years. There is a wealth of undisputed evidence of confusing similarity, lack of rights and legitimate interests and bad faith.
Respondent’s Response to Complainant’s First Additional Submission
There is nothing in the Complainant’s Additional Submission that was not included or should have been included in the original Complaint. The same claims that somehow Respondent was in league with GoDaddy, Tucows and weblaunching.net, or conspired with them to steal Complainant’s domain name is
without proof and is defamatory.
Complainant agrees that “what was done to misappropriate the domain was not his (Respondent’s) fault”, yet continues to claim that Respondent registered and is using the domain name in bad faith. Respondent was the successful winning bidder at a GoDaddy auction. The words “simple plan” are generic and Respondent intended and, in fact, uses the domain name in its generic sense, forwarding it to a travel site which is partially owned by him. To imply that either GoDaddy or every bidder at a GoDaddy auction must determine whether every domain that is included in the auction must be researched to determine if there is an active trademark for which it may be infringing, puts an undue burden on GoDaddy, any other legitimate domain auction house and the bidders.
In the recently decided case of Gridiron Fiber Corp. and Lumos Telephone
LLC d/b/a Lumos Networks v. Yui Quan, FA1970005, (Forum Dec. 20, 2021) (“Lumos Decision"), the Panel held:
“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 problem with Complainant’s statement: “Bad faith has been shown by Respondent’s offering the domain at a price in excess of costs to acquire the domain” is that Respondent did not offer the domain name to Complainant. Complainant offered to purchase the domain name through GoDaddy. The offer was transmitted by GoDaddy to Respondent who replied that it was not for sale, but he would consider offers in excess of $34,000 [sic]. Respondent never tried to sell the domain name to Complainant, and did not even know who had made the $5,000 offer. GoDaddy then took it upon itself to demand $35,000 plus a 20% commission from Complainant. Respondent had no knowledge of such a demand and did not approve it.
Respondent has never targeted Complainant or its trademark and did not even know of the musical group Simple Plan until this UDRP action.
Complainant admits that SIMPLE PLAN is not specific to the music business, and “not descriptive of the goods and services at issue”, while Respondent is using it in its generic sense for the travel business. Complainant alleges that the domain name is forwarded to “Respondent’s nascent or fake travel service.” However, “www.tryp.com” is an AI based online travel portal. The user has to choose his place of origin, number of travelers and the date and it will search and suggest the cheapest possible holiday packages based on AI recommendations. Thus, SimplePlan.com makes perfect sense in forwarding it to “www.tryp.com”. Respondent is both an investor and a shareholder in the company that owns the web site.
Complainant alleges that there is no evidence that Respondent is developing a web site for the domain name. However, the domain name was acquired in October, 2021, and this Complaint was brought just a few weeks later. Complainant confuses <simpleplan.com> with <tryp.com> which was registered in 1996 and has become a working travel site. Though Respondent has a partial ownership in the company that is the registrant of <tryp.com>, the development of that domain name has nothing to do with the development of the newly-acquired <simpleplan.com> domain name.
Finally, Complainant has failed to show that the domain name was acquired and used in bad faith. It was acquired at a GoDaddy auction and has been used in 2 short months to forward to a travel site. It has not targeted Complainant nor any competitor of Complainant. This is a bald Plan B attempt to obtain the domain name, when Respondent refused to sell it for $5,000. In today’s market, $35,000 is not an exorbitant sum for a two-word dot com generic domain name and is not indicative of bad faith.
Complainant’s Second Additional Submission
Respondent’s assertion that he has a travel website is untrue. A recent screen shot of Respondent’s site (Exhibit J) outrageously uses simpleplan.com on a turkey, pay per click hyperlinks for Christmas gifts and false claims to “copyright” of Uniregistry Corp. 2021.
Clearly, in bad faith, Respondent is thumbing his nose at the Forum and Complainant in a wholly undisciplined and venal manner consistent with his attempt to profit from his cybersquatting.
Further, Respondent lacks, in all shape and form, legitimate rights and interests in SIMPLE PLAN.
Respondent uses his site solely to extort, ridicule and disparage Complainant and the Panel. Respondent apparently believes that these proceedings are for his sophomoric amusement.
Respondent’s Response to Complainant’s Second Additional Submission
How may bites of the apple does Complainant intend to take? Exhibit J is from some unknown source as no URL appears on it. Assuming that it may be authentic, which it is not, there is nothing to indicate that this is a screen shot of Respondent’s web site. In fact, it is a screen shot of the domain name when it was still with GoDaddy before the auction. Upon obtaining the domain name, Respondent immediately forwarded it to tryp.com.
This is a clear abuse of the UDRP Rules and a prime example of Reverse Domain Name Hijacking. See Electrosoft Services, Inc. v. TechOps / SyncPoint. FA1969515 (Forum Dec. 9, 2021).
Even if Exhibit J were a genuine screen shot of Respondent’s web site (which it is not) there is nothing to suggest that Respondent was targeting Complainant’s trademark as all of the links are for Christmas.
Complainant’s Reply to Respondent’s Response to Complainant’s Second Additional Submission (omitting some repetitious material contained in the Complaint or earlier submissions by Complainant).
The domain name <simpleplan.com> is not a generic or common term as described in the Lumos Decision since the word “lumos” was commonly known as it was featured in J.K. Rowling’s HARRY POTTER books, read by millions of readers. Hence “lumos” entered into the popular lexicon and had no unique nexus to Complainant.
Here, SIMPLE PLAN is associated with only one source, Complainant’s band, and has been for 21 years. The Simple Plan movie was released in 1998. Since then, the band’s name has become the world’s predominant usage of that term. In the Lumos Decision, complainant used the mark LUMOS only regionally in a small part of the U.S. and only in a niche business. That is the opposite of the case here.
A simple Google search using “simpleplan” immediately returns, as a first result, consecutive pages the SIMPLE PLAN band. See Exhibit K hereto.
Respondent states that he did not know about SIMPLE PLAN, but now says the phrase is generic. None of this makes any sense. Why would Respondent pay for a domain unless it had great value? Moreover, he claims he bid on it, and he paid for it, and yet at the same time Respondent says he did not do a one second Google search to see who and what SIMPLE PLAN was. (It should be noted that he failed to provide a certification in these proceedings). If Respondent took a second to do an Internet search, he would have found that millions of people worldwide do know SIMPLE PLAN as had been performing live concerts worldwide and releasing records worldwide as well, as described above. Respondent can simply not be believed. Who would adopt a domain sight unseen and have it as a feeder to his core business and not know what it means or who was using it? This defies all logic and normal business practices. Respondent was simply trying to trade off Complainant’s goodwill and domain name when he purchased the domain name and to drive traffic to his site.
Respondent is using <simpleplan> to divert Internet traffic away from Complainant’s famous site and to his alleged travel site. In addition, Respondent substituted his fake travel site with site displaying a turkey with SIMPLE PLAN emblazoned on it to taunt Complainant. Respondent says this is not true. However, Complainant monitored Respondent’s site for about a week in November, and saw it there. Clearly, this is evidence of bad faith.
Respondent argues that because he went through his registrar and agent Go Daddy to offer for sale the domain name <simpleplan.com> back to Complainant by Respondent for $35,000, plus a 20 percent commission for GoDaddy -- $52,500, an amount far in excess of the out-of-pocket costs for a domain name, he lacks bad faith. This argument is fallacious. Respondent’s own evidence shows communications between him and GoDaddy wherein Respondent expressly authorized GoDaddy to sell <simpleplan.com> back to Complainant for this exorbitant amount This shows bad faith use of Complainant’s SIMPLE PLAN mark.
Respondent argues that $52,000 is not an exorbitant sum. It is indeed exorbitant under these circumstances because it is far in excess of the amount Respondent paid for it.
Complainant certifies that the information contained in this Submission is to the best of Complainant's knowledge complete and accurate, that this Complaint is not being presented for any improper purpose, such as to harass, and that the assertions in this Complaint are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.
Respondent’s Response to Complainant’s Third Additional Submission
Complainant says SIMPLE PLAN is associated with only one source, Complainant’s band. However, a search on LinkedIn reveals over 19 different entities titled Simple Plan (Respondent Exhibit C).
There were 48 bidders for the domain name at the GoDaddy auction for the <simpleplan.com> domain name, a two-word generic domain name that fits right in to Respondent’s travel business and could have other uses, such as to design homes or put a conference together.
The bottom line is that Complainant lost its domain name through failure to control its registration and is blaming Respondent for its loss. Respondent is not a Domain Investor who may be held to a higher standard of researching a domain name before acquiring it but is a businessman who bought the domain name to use in his business. At no time has Respondent targeted Complainant’s trademark; sought out Complainant to sell the domain name to Complainant; or used the domain name for any competitors of Complainant.
This is a bald attempt to use the UDRP to acquire the domain name under Plan B. Both Complainant and its attorneys should know better.
Complainant has failed to establish two of the three elements required to obtain the relief requested in this proceeding.
Paragraph 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."
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.
Complainant has shown that it has rights in the SIMPLE PLAN mark based on registrations of the mark in relation to entertainment and clothing with the USPTO (Nos. 2,678,179 registered on January 21, 2003 and 3,484,673 registered on August 12, 2008) and the CIPO (No. TMA752678, registered on November 10, 2008). The Panel finds Respondent’s <simpleplan.com> domain name to be identical to Complainant’s SIMPLE PLAN mark, differing only by the inconsequential gTLD “.com”, which may be ignored.
Complainant has established this element.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <simpleplan.com> domain name was registered by Complainant on September 12, 1999. Tragically, despite its best endeavours and through no fault of its own, Complainant was unable to renew the registration in 2021.
There is no evidence that Respondent, who acquired the domain name on October 21, 2021 as the highest bidder at a GoDaddy auction, played any role in the failure of the renewal process. Respondent immediately directed the domain name to his part-owned active travel website “www.tryps.com”, pending formation of a holding company for his travel business.
The words “simple” and “plan” are generic, both separately and together. They also comprise Complainant’s SIMPLEPLAN trademark, registered in relation to entertainment and clothing. Those trademark registrations do not confer upon Complainant a monopoly on the use of those words in fields other than entertainment and clothing. The Panel finds their use in the <simpleplan.com> domain name in relation to a travel-related website operating in the way described by Respondent is entirely legitimate. The Panel therefore finds that, before any notice to Respondent of the dispute, Respondent has used the domain name in connection with a bona fide offering of travel-related services.
Complainant has failed to establish this element.
(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.
Complainant cites three cases as authority for the proposition that it is simply not the law that a registrant is “entitled” to sell the domain name at any price. These cases are not applicable in the present fact situation because each involved some other indicia of bad faith. In Tumblr, Inc. ν. Paul LaFontaine, FA1579350 (Forum Oct. 14,2014), a default case, the domain name was a typosquatted version of the complainant’s TUMBLR trademark, a coined word with no inherent meaning. The domain name was used in a phishing scheme mimicking the complainant’s login page. The respondent valued the <tunnblr.com> domain name at $890.00+ “due to the similarity it has with the name Tumblr”.
In Freeport McMoran Inc. ν. Francis Broaddus, FΑ 1802565 (Forum Sept. 18, 2018), a default case, the respondent engaged in a pattern of bad faith conduct by registering 14 domain names copying the complainant’s trademark, which indicated that confusing similarity was the respondent’s goal for each of the domain names. They all resolved to auction sites listing them for sale. The Panel found it more likely than not that the respondent had actual knowledge of the complainant’s mark when the domain names were registered.
In Solar Turbines Inc. ν. cunshuo zhang/Carolina Rodrigues/Fundacion Comercio Electronico, FA1820508, (Forum Jan. 18, 2019), three typosquatted domain names resolved to pay-per-click advertisements. The respondent offered to sell one of them at an auction site. The respondent had been found to be a serial cybersquatter with prior adverse UDRP decisions against it.
In the present case, the Panel considers there is insufficient evidence to demonstrate that Respondent had any hand in preventing Complainant’s renewal of the <simpleplan.com> domain name or that he should have known of Complainant’s mark at the time when he purchased the domain name at auction. While Complainant appears to be a successful music band, it has not submitted any evidence of its reputation in the countries where Respondent lives or conducts business, nor that Complainant and its mark have achieved a global level of fame and reputation such that awareness by Respondent may be presumed. Thus, Complainant has not shown, by a preponderance of the evidence, that Respondent was targeting its mark.
“The Panel accepts the Complainant’s contention that the Respondent could potentially have investigated the past use of the disputed domain name and/or the identity of its previous registrant. However, the Panel asks itself why the Respondent would have had any particular reason to do so… It is entirely feasible, from the Panel’s perspective, that the Respondent may only have known that the disputed domain name had expired in the hands of its original registrant and was now being auctioned by the Registrar. There is no suggestion arising from the facts and circumstances of this case that the Respondent ought to have been on notice of the Complainant’s identity or of its trademark rights at the point when it acquired the disputed domain name. Thereafter, the Respondent notably did not approach the Complainant to initiate any discussions regarding the disputed domain name.”
In the present case it is clear that Respondent never “offered” the domain name for sale but considered a possible sale only after Respondent was approached by the GoDaddy agent acting on behalf of an undisclosed buyer, which happened to be Complainant. Receiving an offer to purchase a domain name that does not correspond to a globally famous trademark does not amount to an extortionate bad faith attempt to sell the domain name to the relevant brand owner.
Complainant’s recently filed Exhibit J bears no date showing when it was viewed, so there is nothing that ties it to the period since Respondent acquired the domain name.
Complainant has failed to show that Respondent has not, as Respondent asserts, registered the domain name primarily for the purpose of using it in connection with a legitimate business. Nor has Complainant shown that Respondent registered or is using the domain name in any of the circumstances set out in paragraph 4(b) of the Policy, nor that there are any other circumstances which would justify a finding of either bad faith registration or bad faith use.
Complainant has failed to establish this element.
Reverse domain name hijacking
Rule 15(e) provides:
“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 the decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
As stated in Electrosoft Services, Inc. v. TechOps / SyncPoint, FA1969515 (Forum Dec. 9, 2021):
“The most instructive case on RDNH is Timbermate Products Pty Ltd v. Domains by Proxy, LLC/Barry Gork, D2013-1603 (WIPO November 3, 2013). This decision listed out the different basis upon which findings of RDNH had been made. They include cases where (i) materially false evidence was submitted, (ii) relevant evidence was omitted, (iii) Complainant misrepresented the facts, (iv) no trademark rights existed at the time of the registration of the domain name, (v) there was an ulterior purpose, namely to increase negotiating leverage in settlement discussions, (vi) Complainant knew that Complaint was doomed to failure, or where (vii) the Complainant had constructive knowledge that its Complaint would not succeed.”
The Panel finds that Complainant and its counsel have repeatedly misrepresented the facts in the present case, in particular by asserting, without supporting evidence, that Respondent was somehow responsible for Complainant’s inability to renew the <simpleplan.com> domain name and that he subsequently initiated an offer to sell the domain name back to Complainant.
The facts are that on October 28, 2021, one week after Respondent acquired the domain name at auction, GoDaddy emailed to Respondent, on behalf of an unidentified client of GoDaddy.com, an offer to buy the domain name for $5,000. Respondent replied:
“The name is not actually for sale unless someone is willing to offer at least $35,000. So if they can make an offer for that amount then I would be willing to part with the name”. (Response Exhibit A).
GoDaddy that day reported to Complainant:
“I heard back from the domain owner and they are willing to sell which is great news. However, they are looking for $35,000 USD for the name.
The context is that they recently purchased the domain name to use themselves, so while they are not highly motivated to sell they would agree to accept this amount.” (Complaint Exhibit G).
The timing of these communications leads the Panel to conclude that Complainant then knew that Respondent had acquired the domain name at a GoDaddy auction held a week earlier and was accordingly not involved in any of the failings which led to the Complainant being unable to renew its registration of the domain name that it had held for 20 years.
It is also clear that, before filing its Complaint, Complainant and its counsel knew that Complainant was GoDaddy’s client and that GoDaddy was acting as Complainant’s agent. It is also clear that, once they had seen Respondent’s Exhibit A, if not before, Complainant and its counsel knew that the identity of GoDaddy’s client had not been disclosed to Respondent by GoDaddy. Despite this, the Complaint and subsequent unsolicited submissions by Complainant repeatedly made false statements, including:
“Respondent who, acting anonymously through GoDaddy, is now demanding $35,000.00, plus 20% commission to GoDaddy, to transfer it back to Complainant.”
“The domain name is also being offered for sale back to Complainant on GoDaddy for $35,000 plus 20 percent commission!”
“Acting anonymously through GoDaddy, the Respondent is demanding 35,000.00 (USD) to sell the domain name Complainant owned for 20 years back to Complainant.”
“Respondent’s bad faith is also demonstrated by its affirmative acts of taking away and letting lapse Complainant’s domain name and then demanding 35,000 (USD) plus 20% interest to get it back.”
“Under the facts and circumstances of this case, Respondent’s intent is, and outrageous actions are, to unfairly and fraudulently hijack Complainant’s <simpleplan.com> domain name and sell it back to Complainant at a highly inflated cost.”
“Respondent communicated its demands through its agent, GoDaddy, the broker and registrar. Since GoDaddy was Respondent’s agent, the 20% commission demanded of Complainant was in fact made on behalf of Respondent to add to the already excessive price.”
“Respondent is holding Complainant’s “simpleplan” domain name that Complainant has used for its business for decades, hijacked it himself and demands exorbitant monies to return it to Complainant, who held it for 20 years.”
“Respondent argues that because he went through his registrar and agent Go Daddy to offer for sale the domain name <simpleplan.com> back to Complainant by Respondent for $35,000, plus a 20 percent commission for GoDaddy -- $52,500 [sic], an amount far in excess of the out-of-pocket costs for a domain name, he lacks bad faith. This argument is fallacious. Respondent’s own evidence shows communications between him and GoDaddy wherein Respondent expressly authorized GoDaddy to sell <simpleplan.com> back to Complainant for this exorbitant amount. This shows bad faith use of Complainant’s SIMPLE PLAN mark.”
“Complaint owned and used the <simpleplan.com> domain for 20 years, until it has been stolen from it, ultimately by Respondent.”
The Panel notes that despite these numerous, knowingly false statements, Complainant certified:
“that the information contained in this Submission is to the best of Complainant's knowledge complete and accurate.”
Taking all the circumstances into account, the Panel finds that, despite the most unfortunate difficulties that prevented Complainant from renewing its registration of the domain name that it had possessed for 20 years, this Complaint was brought in bad faith in an attempt at Reverse Domain Name Hijacking.
Complainant having not established two of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED and Declares that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Accordingly, it is Ordered that the <simpleplan.com> domain name REMAIN WITH Respondent.
Steven M. Levy, Terry F. Peppard and Alan L. Limbury, Panelists
Dated: January 4, 2022
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