WEX Inc. v. Tom Soulanille
Claim Number: FA2204001991413
Complainant is WEX Inc. (“Complainant”), represented by Matthew D. Stein of Pierce Atwood LLP, Maine, USA. Respondent is Tom Soulanille (“Respondent”), represented by Benjamin S. White of IPLA, LLP, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wex.com>, registered with Google 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.
The Honorable Neil Anthony Brown QC, (Chair), Professor David E. Sorkin and Mr. Gerald M. Levine as Panelists.
Complainant submitted a Complaint to the Forum electronically on April 7, 2022; the Forum received payment on April 7, 2022.
On April 7, 2022, Google LLC confirmed by e-mail to the Forum that the <wex.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 April 11, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 2, 2022 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@wex.com. Also on April 11, 2022, 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 April 28, 2022.
On May 5, 2022, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed The Honorable Neil Anthony Brown QC, (Chair), Professor David E. Sorkin and Mr. Gerald M. Levine 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
1. Complainant is a United States company engaged in the industry of providing financial technology across various industry sectors.
2. In conducting that business, it has used the WEX trademark since at least as early as 1989.
3. Complainant is the owner of several registered trademarks for WEX, notably:
(a) Trademark for WEX in the form of a word mark, registration No.2218706 registered with the United States Patent and Trademarks Office (“the USPTO”) on January 19, 1999;
(b) Trademark for WEX in the form of a word mark, registration No. 4597806 registered with the USPTO on September 2, 2014;
(c) Trademark for WEX in the form of a stylized mark for WEX & Design, registration No. 4597810 registered with the USPTO on September 2, 2014;
(d) Trademark for WEX in the form of a stylized mark for WEX & Design, registration No.5697527 registered with the USPTO on March 12, 2019;and
(e) Trademark for WEX in the form of a word mark for WEX, registration No.5697528 registered on March 12, 2019;
(hereinafter referred to as “the WEX trademarks”).
4. Complainant’s rights in the WEX trademarks predate Respondent’s registration of the disputed domain name.
5. Respondent registered the disputed domain name on June 25, 1994, five years after Complainant began using the WEX mark in 1989.
6. The domain name is confusingly similar to each of the WEX trademarks because it contains the WEX mark in its entirety, merely adding the generic top-level domain (“gTLD”) “.com” to form the disputed domain name.
7. Respondent has no rights or legitimate interests in the domain name. In particular, Respondent’s passive holding of the domain name is proof that it lacks any right or legitimate interest in the domain name.
8. Respondent also does not have rights or legitimate interests in the <wex.com> domain name because Respondent is not licensed or authorized to use Complainant’s WEX mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use and the disputed domain name does not resolve to an active webpage.
9. Moreover, Respondent’s registration of the domain name is not a nominative fair use of Complainant’s WEX mark because it asserts that the source of the website is the Complainant.
10. Respondent’s registration and use of the domain name are in bad faith. That is so, first, because Respondent registered the domain name five years after Complainant commenced use of the WEX mark. Moreover, Respondent passively held the domain name for 28 years, during which time there was no conceivable and legitimate use to which it could have put the domain name.
11. Respondent also had actual or constructive knowledge of Complainant’s rights in the distinctive WEX mark.
B. Respondent
Respondent made the following contentions.
1. Respondent registered the domain name on June 25, 1994.This was done by Respondent in his capacity as registered agent of a company named Altadena Instruments Corporation (“Altadena”) that was minded to develop a downloadable software application to improve the experience of internet users, namely a product known as WEX Net.
2. On June 26, 1997, Altadena acquired the common law rights to WEX from Dmitri Kondratiev of Russia.
3. Altadena also applied to the USPTO on July 15,1997 for a trademark for WEX.
4. On March 26, 2018, Complainant offered to buy the domain name from Respondent.
5. The domain name is not identical or confusingly similar to a trademark in which Complainant has any rights.
6. Complainant cannot rely on the registered trademark it purports to rely on, namely its registered trademark No. 2218706 for WEX registered on January 19, 1999, as that trademark was not registered by the time the disputed domain name was registered, namely on June 25,1994.
7. Moreover, Complainant’s evidence is that it did not apply for its registered trademark until November 12, 1997, which was over three years after the domain name was registered.
8. Accordingly, Complainant must show that it had common law trademark rights to WEX and that it had those rights by the time Respondent registered the domain name.
9. Complainant has not established that it had any such common law trademark rights and it has not attempted to show that it had any such rights.
10. The mere fact Complainant used WEX as a trade name at the time of the disputed domain name’s registration is insufficient to prove common-law rights because Complainant does not provide evidence of a secondary meaning of the WEX mark.
11. In addition, Respondent had a right and legitimate interest in the domain name as he was engaged on the legitimate commercial activity of developing the software application known as Wex Net, acquiring relevant common law trademark rights to it and pitching for investor support and interest in the project.
12. Respondent still has that legitimate interest in the domain name.
13. He also has a legitimate interest in any potential sale of the domain name that would not be in breach of Complainant’s registered trademarks.
14. Complainant has not proved or sought to prove that Respondent registered or used the disputed domain name in bad faith. Complainant has merely asserted as much and the known facts are to the contrary.
1. Respondent registered the disputed domain name on June 25, 1994.
2. Complainant applied for the registration of a trademark for WEX in the form of a word mark, registration No.2218706 with the United States Patent and Trademarks Office (“the USPTO”) on November 12,1997 and the USPTO registered that trademark on January 19, 1999.
3. The evidence shows that the disputed domain name is not identical nor confusingly similar to a trademark or service mark in which Complainant has rights.
4. The evidence shows that Respondent had and has a right and legitimate interest in the disputed domain name.
5. The evidence shows that Respondent did not register and did not use the disputed domain name in bad faith.
6. The Panel finds pursuant to Rule 15 (e) of the Rules for Uniform Domain Name Dispute Resolution Policy that the Complaint was brought in bad faith in an attempt at Reverse Domain Name Hijacking and declares that the complaint was brought in bad faith and constitutes an abuse of the administrative 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.
The Panel will deal with each of those elements in turn.
The first question that arises is whether the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Complainant argues that the domain name is confusingly similar to its currently registered WEX trademarks because internet users would be confused into thinking that the domain name is affiliated in some way with Complainant and its WEX trademark.
It was, of course, open to the Complainant simply to argue that it “has” rights in a trademark, i.e., that it currently “has” a trademark for WEX and that the disputed domain name is confusingly similar to that trademark. But that is not the Complainant’s argument. Nor would it have achieved anything for its case if it had been the Complainant’s argument. If all that the Complainant could establish was that it currently has a trademark for WEX, but did not have it when the domain name was registered, it would not be able to show that the domain name had been registered in bad faith. In any event, that was not the Complainant’s case.
Complainant’s case is that Respondent’s registration of the disputed domain name was “opportunistic and designed to trade on Complainant’s goodwill in the WEX marks…”. It also put it that Respondent registered the domain name “to take advantage of and capitalize on the goodwill associated with the WEX Marks, which in turn disrupts Complainant’s business.” In other words, the Complainant’s argument is that the Respondent in effect copied the Respondent’s trademark and embarked on using it for its own benefit.
It was therefore essential for Complainant to establish that it had a trademark on which to found its case and also to give it standing to bring the Complaint. As it has alleged that Respondent’s motivation in registering the domain name was to draw on the goodwill of the WEX mark that Complainant owned, it was incumbent on Complainant to establish what trademark it was that so influenced Respondent in registering the domain name on June 25, 1994 and how it is said to have achieved that objective. It is here that the Complainant’s case fails for lack of evidence, as it has not shown that it had any trademark rights at the time Respondent registered the disputed domain name. Respondent registered the domain name well before Complainant had filed for its first WEX trademark, let alone before the trademark was registered. The Panel’s assessment of the evidence as a whole is that the Respondent registered the domain name because it was preparing to use it for a legitimate business venture that it was undertaking and that it neither knew of the Complainant nor was influenced in the slightest by any association that the Complainant may have had with the word “wex”. Indeed, as will be seen, the evidence is that until 2012, 18 years after the domain name was registered, the name of the Complainant was not Wex, but Wright Express and that it changed its name to Wex only in 2012. That is not conclusive, of course, but it tends to suggest that the Complainant was not concerned with establishing its brand and trademark as WEX until well after the disputed domain name was registered.
The Complainant’s evidence of its trademarks is of a series of trademarks in various forms for WEX. The first of the registered trademarks relied on by Complainant and put in evidence is its trademark for WEX in the form of a word mark, registration No.2218706, applied for to the United States Patent and Trademarks Office (“the USPTO”) on November 12, 1997 and registered by the USPTO on January 19, 1999.
Complainant relies on other trademarks, of course, but they were all registered many years, and in fact 18 years and more, after Respondent registered the disputed domain name. After such a passage of time, none of those trademarks could conceivably have influenced the Complainant to register its domain name and the Panel finds that they did not. The Complainant is therefore driven to argue that when Respondent registered the domain name on June 25, 1994, it did so because of the trademark that was registered four and a half years later on January 19, 1999 which clearly cannot be so. The Respondent could hardly have been influenced in registering a domain name by a trademark that was not itself registered until many years after the domain name was registered.
It was of course always open to Complainant to show that, apart from its registration No.2218706 of January 19, 1999, and apart from its other registrations over subsequent years, it had common law or unregistered trademark rights that were extant at the time Respondent registered its domain name. It would then have been open to the Complainant to argue that the Complainant may have been influenced by those trademark rights when it registered its domain name. The Panel’s view is that such a contention is extremely unlikely to have occurred in view of the evidence that the Respondent and his associates were independently engaged in a legitimate business venture using the word “wex” on their own initiative. In any event, it is not alleged that the Complainant had any such common law trademark rights in WEX and there is no evidence at all of the prominence, recognition or even use of such a mark by the Complainant at any relevant time.
It is true that the Complainant started what looked as if it would be a case for showing that it had some trademark rights in WEX prior to June 25, 1994. It does this by submitting that it, the Complainant, has “continuously used the WEX mark since at least as early as 1989.” (emphasis added). The Panel therefore reasonably expected that there would then be some evidence produced to support that proposition. Complainant says that its evidence to that effect is contained in Exhibit 3 to the Complainant, but that document shows no such thing as that the Complainant has “continuously used the WEX mark since at least as early as 1989.” It shows, and says so in plain language, leaving no room for doubt, that the Complainant had promotions on its website for WEX as a trademark on April 7, 2022 as that was the date on which the screenshots were taken. The Complainant has curiously not adduced any evidence of its use of the word prior to or even close to the date when the domain name was registered. That evidence, which is the only evidence submitted of the Complainant’s actual use of the word “Wex”, does not show any use of the word as a trademark or, for that matter, in any other sense, prior to the date when the domain name was registered on June 25, 1994. It certainly shows nothing remotely like the assertion that Complainant had used the word as a trademark from 1989.
Likewise, there is no evidence at all to support the Complainant’s other contention that “Complainant’s trademark rights in the WEX marks predates Respondent’s registration of the Domain name.” The simple fact is that the domain name was registered on June 25, 1994 and there is no evidence that Complainant had trademark rights of any sort in WEX prior to that date or, indeed, prior to its, the Complainant’s, first trademark registration of January 19, 1999.
It was open to Complainant to show that it had established a common law trademark in WEX and that such a common law trademark was on foot at the time Respondent registered the domain name. Such a submission and the evidence required to support it is also widely known and understood and yet none of it has been forthcoming from the Complainant in the present case. The evidence needed to show such a right is well known and not excessively burdensome and yet no sustained case was made out or attempted to be made out by Complainant to show such a right.
As the evidence stands, Complainant has not offered any evidence of use or recognition of a WEX mark at that time, such that it can be said that Respondent was or might have been influenced by it to register the domain name.
The same defect is to be found in the remainder of the Complainant’s case as it goes on to argue that the registration of the domain name was “opportunistic and designed to trade on Complainant’s goodwill in the WEX Marks and Complainant’s domain name <wexinc.com> through the incorporation of Complainant’s WEX mark in its entirety…”. Here again, there is no attempt to produce any evidence at all that there were on, or prior to, June 25, 1994, any WEX marks, common law or otherwise, that could have influenced the Respondent to register the domain name and it seems highly unlikely that that was the case. The additional allegation that the Respondent was opportunistic and was out to trade on Complainant’s own domain name at <wexinc.com>, which Complainant did not register until 2 February 2011[i], is also impossible to have occurred.
Finally, the Panel has some doubt as to whether the Complainant had even adopted the name Wex by the time Respondent registered the disputed domain name, making it less likely that it had any trademark rights to WEX until quite recent times. The Panel is aware of the limitation on its undertaking private research. However, it cannot help but note that the Complainant has put its own domain name and website into evidence (see Complaint , p.3) and the Panel is thereof entitled to see what relevant facts are disclosed by that means. Among other facts, it is observed that Complainant has not been known as Wex until comparatively recent times. Indeed, the website contains the statement that “WEX was founded in Portland in 1983 as Wright Express Corp. It later moved to South Portland, became a publicly traded company in 2005 and took on its current name in 2012. (emphasis added).”
Accordingly, the Panel finds that Complainant has not established that the disputed domain name is identical to or confusingly similar to a trademark in which it has rights.
The Complainant has thus failed to make out the first of the three elements that it must establish.
The first obligation on Complainant under this head of the Policy is to show that it has made out a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). If that stage is reached, the burden is then on the Respondent to rebut that case and show that it does have such a right or legitimate interest.
Following that well-established path, it is very dubious whether Complainant has even established a prima facie case on this issue, let alone a conclusive one. The essence of Complainant’s case is that it applied for a trademark for WEX with the USPTO on 12 November, 1997.Unfortunately for Complainant, by that date Respondent had registered the same word as a domain name being, of course, the disputed domain name, having done so three and a half years earlier. By the time that Complainant’s trademark had issued, on 19 January, 1999, Respondent was still the owner of the domain name, as he is today. On those basic facts, Complainant has to show, prima facie, that Respondent has no right to the domain name and no legitimate interest in it. That seems to the Panel to be an impossible task; prima facie, the Respondent had every right to register the domain name as it was the first in time to come to the table and was clearly not copying another party, as no other party had registered a similar domain name. In fact, it seems to the Panel that Complainant must have been completely uninterested in a “wex” domain name until recent times, as it did not register its own “wex” domain name, <wexinc.com>, until 2 February 2011 and did not adopt the name “Wex” as its corporate name until 2012. Thus, a prima facie case against Respondent has not been made out.
But even if a prima facie case has been made out, Respondent has clearly rebutted it. The evidence, which is unchallenged, is that Respondent and a company of which he was a registered agent, Altadena, had embarked on a project to develop a downloadable software application to improve the experience of internet users, and known as WEX Net. Altadena had embarked on several pitch presentations to obtain investment in the WEX project from September 1997, which was several months before Complainant applied for its WEX trademark on 12 November 1997. The other event of significance from that era was that on 15 July 1997, a few months before Complainant applied for its WEX trademark on 12 November 1997, Altadena itself had applied to the USPTO for a trademark for WEX, (see Respondent’s Annex D) ,although it was subsequently abandoned in 1999. On 26 June 1997, Altadena acquired from Dmitri Kondratiev in Russia what purported to be “the worldwid ( sic) trademark rights to the mark WEX for use on computer software products (.)”( See, Respondent’s Annex E). The supporting paper for the investment pitch by Altadena discusses the project at length and makes frequent reference to Wex and other expressions that include the word Wex ( see Respondent’s Annex G).
Respondent has to show, not that it has a greater right to the domain name than Complainant but simply “a” right or “a” legitimate interest in it (emphasis added). Respondent has shown that the company of which he was a registered agent had a right to register a domain name to which no other party had raised a claim of right and that it did so, that it was using the domain name as a legitimate commercial means of furthering its objective and that it had taken concrete steps with authorities such as the USPTO to establish a legal foundation for its actions. The Panel therefore finds that Respondent, by virtue of its being the agent of Altadena for this project, had and has a right to register and retain the domain name and a legitimate interest in it.
Finally, Complainant expressed an interest in buying the domain name from Respondent. Respondent does not need to rely on this overture as there is virtually no case against it, but it is open to the Panel to find that it was an admission by Complainant that Respondent had a right or legitimate interest in the domain name as, to all intents and purposes, he owned the domain name. Complainant would scarcely be offering to buy something that it believed the seller had no right to sell. The offer to buy was therefore an admission that Respondent had a very real right and interest in the domain name.
Accordingly, the Panel finds that Complainant has not made out a case that Respondent has no right or legitimate interest in the disputed domain name.
The Complainant has thus failed to make out the second of the three elements that it must establish.
Complainant must show that Respondent registered the domain name in bad faith and also that it has used the domain name in bad faith.
The Policy sets out some useful examples of conduct that, if proved, will show bad faith both in the registration and the use of the domain name. Thus, it is taken to be bad faith if, to paraphrase the Policy, the registrant registered the domain name with the intent to sell it to the trademark owner. That is clearly not the present case, as all of the evidence shows that it was the intention of Respondent not to sell the domain name but to keep it and use it for a legitimate business venture and the Panel so finds.
Secondly, it is taken to be bad faith if the registrant’s intention was to prevent the trademark owner from registering its own domain name that reflected the trademark. Again, that cannot be the present case because the Respondent did not stop the Complainant from doing anything and in particular he did not prevent it from registering a domain name of its choice. Respondent registered the disputed domain name on 25 June 1994; Complainant could have registered <wex.com> at any time prior to that date and, at any time subsequent to it, Complainant could have registered a matching domain name in the “dot com” space and /or any of the top level generic domains available. Indeed, that is exactly what Complainant did, for, after waiting another leisurely 17 years, it registered <wexinc.com> on 2 February 2011. Clearly, Respondent’s registration of the disputed domain name did not stop Complainant from doing anything.
Thirdly, it is taken to be bad faith if the disputed domain name was registered primarily to disrupt the business of a competitor. The evidence shows that Respondent did not know that the Complainant ran a business and, more importantly, it shows that Respondent’s primary intention must have been to acquire the domain name for its business venture with Altadena and for no other purpose.
Fourthly and finally, it is bad faith if the registrant’s intention is to generate confusion as to any possible affiliation between the complainant’s trademark and the contents of the registrant’s website. That cannot apply in the present case as Respondent has never used the domain name to populate a website and in any case the evidence is consistent only with Respondent’s intention to acquire the domain name for its business venture with Altadena.
Accordingly, Respondent has not registered or used the domain name for any of the grounds for bad faith articulated in the Policy.
Bad faith may of course be shown by other factors not specified in the Policy. In that regard Complainant says, first, that Respondent registered the domain name to take advantage of and capitalize on the goodwill associated with the WEX marks. That argument is completely untenable on the state of the evidence as it is. Respondent registered the domain name on 25 June 1994. On that date, Complainant did not have and had not even applied for a WEX trademark and it did not apply for one until 12 November 1997, three and a half years later. How then can it be said that Respondent was motivated by the goodwill attached to a trademark that had not been applied for or granted? The other WEX trademarks were not applied for until many years later.
If Complainant is putting it that there was some sort of common law trademark for WEX generating goodwill on which Respondent wrongly tried to capitalize and that this was bad faith, then it should have said so and come forward with a factual evidentiary basis for such an argument. But it has not done so. Indeed, Complainant has specifically put its website in evidence (see Complaint, p3) which contains the statement that “WEX was founded in Portland in 1983 as Wright Express Corp. It later moved to South Portland, became a publicly traded company in 2005 and took on its current name in 2012. ( emphasis added) ” It is of course open to Complainant to prove anything by way of evidence that it wishes, but in the light of the foregoing statement, the Panel would need at least some evidence to show that Complainant had acquired common law trademark rights in WEX by the time Respondent registered the disputed domain name in 1994.That evidence has not been forthcoming.
Complaint relies heavily on a contention that Respondent engaged in passive holding of the domain name. The basis of that contention is that a domain name may be so famous that it is inconceivable that it could be held for a legitimate purpose. That is true enough, but in the present case the reality is that the WEX name and mark are not so prominent that such an inference can be drawn. That is especially so when the domain name is clearly capable of being used in many fields outside that covered by the classes of goods and services covered by its registrations. In the present case the domain name could be validly used for a wide variety of goods and services. The Panel therefore rejects this argument
Accordingly, the Panel finds that it has not been proved by evidence that Respondent registered and used the disputed domain name in bad faith.
Complainant has thus failed to make out the third element that it must establish.
Respondent has requested that the Panel make a finding of Reverse Domain Name Hijacking against the Complainant pursuant to Rule 15(e). Reverse Domain Name Hijacking is defined as using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.
The Panel will make that finding. Such a finding will not be made simply because a complainant fails to make out a case, and panelists are reluctant to make such a finding unless there is a strong case for doing so. In the present case, the Complainant not only failed to prove its case but omitted substantial matters of evidence of which it should have been aware and which it should have appreciated that it had an obligation to address. Some of its evidence was misleading. Any proper assessment of the case should have resulted in cogent evidence being assembled to establish basic issues but that was clearly not done. Instead, the Respondent was put to the time and cost of defending a case that had little if any merit. Moreover, the case is a classic Plan B case, where an overoptimistic complainant tries to buy a domain name, is rebuffed and then decides to harass the domain name holder by making unmeritorious allegations against it.
In all the circumstances, the Panel exercises its discretion by making the finding of Reverse Domain Name Hijacking.
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 <wex.com> domain name REMAIN WITH Respondent.
The Honorable Neil Anthony Brown QC, (Chair)
Mr. Gerald M. Levine
Panelists
Dated: May 16, 2022
I concur in the result reached by the majority of the Panel, and in the Panel's decision as to Rights or Legitimate Interests, Registration and Use in Bad Faith, and Reverse Domain Name Hijacking.
Professor David E. Sorkin
Panelist
Dated: May 16, 2022
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