Complainant is Puget Sound Software, LLC of Woodinville, Washington, United States of America represented by Graham & Dunn, PC, United States of America.
Respondent is A. Rahman of Detroit, Michigan, United States of America represented by Traverse Legal, PLC, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 1, 2011. On June 3, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the Domain Name. On June 7, 2011, GoD, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 8, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 28, 2011. The Response was filed with the Center on June 24, 2011.
Complainant filed an Additional Statement dated July 13, 2011. Respondent filed an Additional Submission on July 15, 2011.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on July 4, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Supplemental Submissions
The Rules provide for the submission of the Complaint by Complainant and the Response by Respondent. No express provision is made for Supplemental Filings by either party, except in response to a deficiency notification or if requested by the Center or the Administrative Panel. Paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of supplemental filings received from either party.
In this case the Panelist exercises his discretion to admit the supplemental filings of Complainant and Respondent. These submissions have been reviewed and considered by the Panelist in rendering this Decision. 5. Factual Background
Complainant is the founder of an online technical support company using the domain name , which was registered on September 5, 2003. Through this site, Complainant answers technical questions related to the Internet, software, and computers in general.
Complainant owns the U.S. trademark ASK LEO! with registration no. 3,721,621, a priority date of May 6, 2009, and first use in commerce date of August 10, 2003. The ASK LEO! mark is registered in relation to “[c]omputer Services, namely, providing information via a website in the field of computer technology in response to questions posted online through a global computer network.”
The Domain Name was registered on August 7, 2001. 6. Parties’ Contentions A. Complainant
(1) The Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights
Complainant explains that he began operations in 2003 in the United States using the domain name . His website depicts the words “Ask Leo” and Complainant’s photo on the top right of the page. Since that time, Complainant has spent thousands of dollars and a substantial amount of time and effort in developing, marketing and advertising the ASK LEO name and mark. In consequence, Complainant asserts he has made the ASK LEO name widely recognizable in association with answering online technical support questions, has developed strong consumer demand for such services, and has generated substantial goodwill associated with the ASK LEO mark. Complainant’s ASK LEO name and mark has acquired a strong secondary meaning in connection with answering online technical support questions. Complainant claims that through continuous use he has established common law trademark rights in the mark ASK LEO, as well as registered trademark rights as indicated above dating from 2009.
Complainant contends that the Domain Name is confusingly similar to Complainant’s ASK LEO mark because it contains the mark in its entirety.
(2) Respondent has no Rights or Legitimate Interests in respect of the Domain Name.
Complainant argues that Respondent has no rights or legitimate interests in respect of the Domain Name. Respondent is not commonly known as Ask Leo, nor is it licensed by Complainant to register or use the ASK LEO trademark or the Domain Name. Respondent is in no way connected with Complainant and has no authority, license, or permission from Complainant to use its ASK LEO mark to identify Respondent’s website or services. A Google search of “Ask Leo” results in a series of references to Complainant’s official Ask Leo sites including the main website, the archives page, and the questions answered page. The first result is Complainant’s “Ask Leo!” page at .
There is no indication that Respondent is using the Domain Name in connection with any bona fide offering of goods or services. The Domain Name directs traffic to a website that does not link to Complainant’s service, but lists links to several other sites that offer advice and help on general topics, including competitors of Complainant. Complainant urges that Respondent’s registration of the Domain Name strongly suggests that Respondent intends to use it solely to profit by redirecting traffic consisting chiefly of persons who wish to communicate with ASK LEO to have their technical questions answered by Complainant’s service. The absence of any meaningful content on Respondent’s site further underscores Respondent’s lack of legitimate business interest in the Domain Name. There is no evidence that Respondent is making legitimate noncommercial or fair use of the Domain Name without intent for commercial gain.
On July 7, 2010, Complainant contacted Respondent at Respondent’s email address of record according to the WhoIs search results, alerting Respondent to trademark infringement of Complainant’s trademark rights. Complainant offered Respondent 250 USD in exchange for the Domain Name. A response was not received from Respondent. On July 9, 2010, Complainant sent a letter to Respondent via U.S. certified mail with return receipt, requiring Respondent’s signature. The letter was returned undeliverable. Complainant then filed a report of invalid registration data with Respondent’s registrar, GoD, after which Respondent changed their telephone number of record. Complainant called Respondent’s newly listed telephone number only to reach Respondent’s voicemail. Complainant did not leave a message. On November 29, 2011, Complainant contacted their counsel to investigate Respondent. On April 25, 2011, Complainant’s counsel offered Respondent USD 500 to acquire the Domain Name through GoD’s “Domain Buy Service,” a service which provides the domain name registrant a certified binding offer by email. On May 2, 2011, Respondent responded with a counter-offer of USD $10,000. A reasonable inference from the counter-offer is that Respondent has no independent legitimate interest in the Domain Name apart from its value as an embodiment of Complainant’s trademark, and wishes to capitalize on that value by selling the Domain Name to Complainant for a price far in excess of Respondent’s reasonable out-of-pocket investment.
(3) The Domain Name was Registered and is Being Used in Bad Faith.
Complainant contends the Domain Name was registered and is being used in bad faith. Respondent does not conduct any legitimate commercial or noncommercial business activity. By registering and using the Domain Name, Respondent intended to capture and profit from the traffic of web searchers intending to use Complainant’s site, based on the fact that the Domain Name is identical to Complainant’s ASK LEO trademark. Such practices are typical of cybersquatting and further support Respondent’s lack of rights and legitimate interests in the Domain Name. Further, Respondent’s website does not immunize Respondent from being required to transfer the Domain Name. It is well-established that the mere passive holding or “parking” of a domain name can evidence bad faith. The requisite bad faith is present in this case, and the Domain Name should be transferred to Complainant.
Complainant, on the other hand, operates a successful and well-established commercial business and has longstanding rights in the ASK LEO mark. Complainant has used the ASK LEO mark in connection with its services since as early as 2003 and owns the ASK LEO U.S. trademark registration.
If Respondent should subsequently create new content for its site, any apparent “legitimate interest” indicated by that content would be pre-textual, having occurred after Complainant’s initial correspondence informing Respondent of its well-established trademark rights in the ASK LEO mark. B. Respondent’s Response
Respondent contends that Complainant’s request to transfer the Domain Name must be denied. Complainant cannot possess trademark rights in the descriptive term “Ask Leo!,” and Complainant did not possess trademark rights at the time of Respondent’s registration of the Domain Name. Respondent further asserts that it has made demonstrable preparations to use the Domain Name in association with a bona fide offering of goods and services and has not registered the Domain Name with a bad faith intent to tarnish, mislead, or divert consumers away from Complainant’s goods and services. Respondent registered the Domain Name on August 7, 2001, approximately eight years prior to Complainant’s trademark registration of the ASK LEO! mark and approximately two years prior to Complainant’s registration of its domain name.
Respondent asserts its reasons for registering and using the Domain Name was two-fold. First, Respondent purchased the Domain Name with plans to develop the website into a question and answer service for the purposes of career development and job searching. Second, Respondent registered the Domain Name because the short and memorable command, “ask Leo,” would project the image of a question-answer based service to potential customers.
(1) Complainant has No Rights to Generic Terms or Common Words
Respondent states that Complainant is required to prove its rights to the term “Ask Leo!” in order for this case to proceed. Respondent asserts that numerous decisions have determined that the relevant point in time when Complainant must establish rights in its mark is before Respondent’s registration of the Domain Name. Complainant is the holder of a registered trademark for ASK LEO! for use in association with “[c]omputer Services, namely, providing information via a website in the field of computer technology in response to questions posted online through a global computer network.” According to Respondent, previous panels have noted that ownership of a service mark does not ipso facto give Complainant the exclusive right to the descriptive name Ask Leo! in all contexts. Despite Complainant owning a registered trademark, Complainant has failed to show that the public can come to recognize this term as an indication of source. Complainant simply cannot have trademark rights in generic words or common terms. The extensive third party use of the term “Ask [Proper Name]” as it relates to question-answer, advisory services further shows that the public views the term as a description applicable to advisory services from various sources.
Further, since Complainant did not possess a registered trademark for ASK LEO! prior to Respondent’s registration of the Domain Name, Complainant must show that “Ask Leo!” acquired secondary meaning prior to Respondent’s registration of the Domain Name in order to establish the trademark rights necessary to prove that Respondent registered and used the Domain Name in bad faith pursuant to § 4(b) of the UDRP. The Complaint specifically states that Complainant registered the domain name and used the characters ASK LEO! for the first time in 2003, two years after Respondent registered the Domain Name. Complainant could not have established secondary meaning prior to Respondent’s registration in 2001. Complainant’s allegations of trademark rights in Respondent’s Domain Name defy logic, especially in light of the fact that common words and descriptive terms are legitimately subject to registration as domain names on a first come, first served basis.
(2) Respondent has Rights and Legitimate Interests in the Domain Name
Respondent states it registered the Domain Name because it would describe the service that would be offered under the Domain Name, namely, an “ask and answer” service for career development purposes. Respondent registered the Domain Name on August 7, 2001 without notice of Complainant’s trademark rights and without notice of Complainant’s domain name and website. Respondent contends it is using and has planned to use the term, “Ask Leo,” consistent with its literal meaning, “Ask Leo for tips about career development strategies and how to find a job.” This term accurately describes the services that Respondent intends to offer on its site, as well as the links that have been featured on Respondent’s site while it has been parked and awaiting development. Even assuming that Complainant can possess trademark rights to ASK LEO!, Respondent’s use of the “Ask Leo” term to describe the services that it intends to monetize through its website, as well as the links that have been listed on its site while the Domain Name has been parked, is protected by trademark law. As such, it is a legitimate use of the common and descriptive word “Ask Leo”. Simply put, Respondent has priority in right to the use of the generic or descriptive term “Ask Leo” in the Domain Name.
Respondent asserts it has made demonstrable preparations to operate a legitimate business that uses the “Ask Leo” term. Respondent’s interest in the Domain Name was, and continues to be, legitimate. The simple fact that Respondent has not yet been able to devote the time and resources to develop its Domain Name does not imply that Respondent does not have rights or legitimate interests in it. In fact, Respondent purchased the Domain Name in preparation for a later, bona fide use, which meets the perfunctory threshold necessary to establish rights and legitimate interests in the Domain Name. Further, Respondent, from time to time, has displayed contextual advertisements on its website related to question and answer-related services, which itself is enough to establish that Respondent has rights or legitimate interests in the Domain Name. Thus, Respondent purchased and prepared the Domain Name, before notice of this dispute, for use in a bona fide offering of future goods and services at the Domain Name.
In sum, Respondent claims it has rights and legitimate interests in the Domain Name. Further, Respondent registered the Domain Name approximately two years prior to Complainant began its use of the “Ask Leo!” mark, and eight years prior to Complainant’s trademark registration of the characters, ASK LEO!, without any notice of Complainant’s claim of rights. As such Respondent has rights and legitimate interests in the Domain Name.
(3) Complainant has Not Established Respondent’s Bad Faith Registration and Use of the Disputed Domain
Respondent was unaware of any trademark rights that a third party, including Complainant, might claim in the descriptive expression “ask Leo,” particularly because Complainant had not even begun using his domain name until 2003 — two years after Respondent registered the Domain Name. Furthermore, there is no evidence that Respondent had knowledge of Complainant’s mark at the time of registration, because Complainant’s mark did not exist yet. On August 7, 2001, when Respondent registered the Domain Name, Complainant lacked trademark rights in the expression “Ask Leo!,” since it was not until December 8, 2009 that Complainant received its U.S. trademark registration. In addition, at the time of Respondent’s registration of the Domain Name and to this day, Complainant’s website uses the phrase “Ask Leo!” in a descriptive way to refer to questions that can be directed to the person, Leo Notenboom.
Complainant has not established bad faith registration and bad faith use because Respondent registered the Domain Name to describe the “ask and answer” service that he intended to monetize on his website. The descriptive nature of “Ask Leo!” is made apparent by the 4,450,000 results displayed when one performs a Google search for the term. Respondent has not affirmatively attempted to sell the Domain Name back to Complainant, and Respondent only offered to sell the Domain Name after Complainant approached him with an offer, thus evidencing his good faith. Complainant’s attempt to retroactively monopolize all things related to the descriptive term “Ask Leo!” in an effort to acquire the Domain Name equates to reverse domain name hijacking. Complainant has willfully ignored the fact that Respondent registered the Domain Name prior to Complainant obtaining any trademark rights.
Paragraph 4(a)(iii) requires two things: bad faith use and bad faith registration. There is no evidence that Respondent had knowledge of Complainant’s mark when it registered the Domain Name. It was impossible for Respondent to have registered the Domain Name in bad faith since its registration predates Complainant’s trademark registration of ASK LEO! by approximately eight years, and there is no evidence that Respondent was aware of any claim of right by Complainant. To the contrary, Respondent has affirmatively stated that he was not aware of Complainant at the time of the registration of the Domain Name. Therefore, there can be no bad faith registration and the Complaint must fail.
Respondent also urges that Complainant fails to establish that Respondent registered the Domain Name primarily for the purposes of selling it to Complainant. Respondent certainly could not have registered the Domain Name primarily to sell it to Complainant, as Respondent was both unaware of Complainant and purchased it as part of a defined business plan. Complainant emphasizes the fact that Respondent provided an asking price for the Domain Name as conclusive proof of bad faith. However, a review of the correspondence between Complainant and Respondent confirms otherwise. It is critical to note that Complainant contacted Respondent regarding the Domain Name and solicited an offer to sell. In fact, Complainant’s counsel contacted Respondent in an attempt to purchase the Domain Name. Since Respondent had not yet had the time or opportunity to develop the Domain Name, Respondent at first did not respond to the offer, as he was unwilling to sell. Upon Complainant’s second solicitation for an offer to sell by Respondent, Respondent made a counteroffer that he had hoped would make Complainant go away, asking for 10,000 USD. Respondent has never attempted to approach Complainant on his own volition to sell the Domain Name, nor could Respondent do so because he did not have prior knowledge of Complainant before this dispute.
In response to Complainant’s contention that the bad faith requirement is satisfied due to Respondent’s alleged passive holding of the Domain Name, Respondent contends that registration of the Domain Name in preparation to develop a website that monetizes advisory services for the purposes of career development and his subsequent display of pay per click advertisements relating to question and answer services cuts against a finding of passive holding. Moreover, since we are dealing with a descriptive word rather than a well-known mark, Complainant’s burden is increased. The fact remains that Respondent has responded to contact emails from Complainant and has provided a credible explanation for its planned use for the Domain Name consistent with its prior business plan and intended use of the Domain Name. As such, this is not a case of passive holding or one involving the bad faith registration or use of the Domain Name.
Finally, Respondent’s planned use of the Domain Name is in good faith and not meant to trade on confusion with Complainant or disrupt its business. Respondent’s intended use of the Domain Name to offer advisory services in career development in no way competes with Complainant’s advisory services for technical computer problems and, as such, Respondent did not register and use the Domain Name in bad faith.
(4) Complainant is Attempting to Hijack Respondent’s Domain Name
Complainant is attempting to hijack Respondent’s Domain Name and the Panel should find that reverse domain name hijacking has occurred. Reverse domain name hijacking may be found if “the Complainant knew or should have known at the time that it filed the Complaint that it could not prove that the domain name was registered in bad faith.”
Complainant knew or should have known at the time of filing the Complaint that the registration date of the Domain Name preceded the date of Complainant’s trademark registration by approximately eight years. Complainant should have known that Respondent’s registration of the Domain Name preceded the date of Complainant’s trademark registration, because such information is available to the public and easily retrievable. This is a case where Complainant is represented by counsel who even on a rudimentary examination of the Policy and its application in this area should have appreciated that the Complaint could not succeed where Respondent’s Domain Name had been registered two years prior to actual use of Complainant’s mark. Filing a response under the Policy involves putting the parties to a considerable expenditure of time and in many cases cost and the Policy must not be used unless the complainant has a reasonable and credible belief that it is entitled to succeed. That reasonable and credible belief is absent in this case and, as such, the Panel should find that reverse domain hijacking has occurred. C. Complainant’s Additional Statement
Complainant asserts in its Additional Statement that Respondent offers no evidence that it has any business associated with Domain Name. Even today – now nine years and eleven months after Respondent registered the Domain Name – only links to third-party advertisers appear on the website associated with the Domain Name. According to Complainant, Respondent’s position nonetheless is the same that any cybersquatter could offer: “Trust me, I’m planning to put the domain name to legitimate use.” Its complete failure to offer any documentary evidence to support this assertion confirms that it has no legitimate rights in the Domain Name. The website associated with the Domain Name does not even state what business it is in. However, Respondent claims in his declaration that he “…intended to develop that domain name into a website that provided a question and answer service tailored towards career development and job searching.” Instead, Complainant asserts that Respondent is a classic cybersquatter.
Complainant states that Respondent’s renewal of the Domain Name in June of 2011 is evidence of bad faith because Complainant registered ASK LEO! as a trademark in December 2009. According to Complainant, a recent UDRP decision found that bad faith develops if the domain name was registered in good faith, facts change, and the domain name owner continues to hold on to it. Moreover, in Schmidheiny v. Weber, 319 F.3d 581, 59 U.S.P.Q.2d 1062 (3d Cir. 2003), a case regarding retroactive application of the Anticybersquatting Consumer Act’s (ACPA) protection and the effect of re-registration of a domain name, the Court held that while the ACPA does not apply retroactively to registrations of domain names prior to the effective date of the statute, it does apply to re-registration of domain names after the effective date.
Complainant continues to deny that Respondent has put the Domain Name to any legitimate use. Although Respondent states that it “still intends to develop his website and will do so when he has the time and means to commit himself to the project,” he conspicuously offers no documentary proof of these plans. For instance, there are no developed web pages, no emails, no business model, no notes, and no memoranda. The only published page on the site associated with the Domain Name shows random links to third-party advertisers. Thus, there really is nothing but Respondent’s say so. The Panel should not accord this self-serving statement any weight, and should reject this argument because it is devoid of any corroborating evidence. The Panel should focus on how Respondent has spent the nine years and eleven months since it registered the Domain Name: by Respondent’s own admission, it has done nothing. Interestingly, Respondent admits it is in the business of acquiring and monetizing domain names. A Reverse WhoIs record shows “A. Rahman” owns about 19,631 other domains and an Email Search shows Respondent’s email address, m---e@, is associated with about 500 domains. This indicates that despite Respondent’s claims to the contrary, it is not in the business of developing the Domain Name, but is in the business of trafficking in domain names. That is precisely the business in which it was engaged when it counter-offered to sell the Domain Name to Complainant for USD 10,000 – more than 821 times the estimated amount of the cost of domain name registration with the registrar, GoD. These are the activities of a cybersquatter, not an owner preparing to put its domain name to legitimate use.
For these reasons, Complainant respectfully requests that the Panel sustain Complainant’s Complaint and transfer the Domain Name to Complainant. D. Respondent’s Additional Submission
Respondent re-emphasizes in its Additional Submission that Complainant must establish that Respondent registered and used the Domain Name in bad faith in order to establish that Respondent cybersquatted upon Complainant’s rights. Although Complainant alleges that recent changes in UDRP case law support Complainant’s contention that registration and use in bad faith is not a conjunctive requirement, Respondent rejects this argument. Importantly, the reasoning contained in the UDRP case cited by Respondent in support of its interpretation of “registration and use in bad faith” under § 4(b) of the Policy has been expressly discredited by subsequent panels. For example, in a subsequent case the panelist found in the absence of any evidence of respondent’s advance knowledge of the complainant’s plans, the complainant is prohibited from succeeding under the Policy even through the respondent has subsequently used the domain name in bad faith. The Panel reiterated that registration and use in bad faith is a conjunctive requirement.
In Response to Complainant’s contention that Respondent has failed to submit documentary evidence (that it intends to develop a website at the domain name), Respondent argues that “Complainant’s interpretation of the UDRP, specifically, that a domain name registered over three years prior to the Complainant’s formation of even a rudimentary business plan should be transferred to the Complainant because the Complainant would make a more beneficial use of it, is as audacious as it is shocking.” Moreover, Respondent urges that Complainant is attempting to hijack Respondent’s Domain Name. Respondent cites a prior UDRP case where the panel based its finding of reverse domain name hijacking on the fact that complainant itself acknowledged it knew at the time it filed the complaint that the respondent has registered the disputed domain name 5 years before the complainant had obtained trademark rights. Here, Complainant acknowledges that Respondent registered the Domain Name in August 2001 and Complainant began using in 2003. Thus, Complainant readily admits that it did not have trademark rights at the time of Respondent’s registration of the Domain Name. 7. Discussion and Findings
The burden for Complainant under paragraph 4(a) of the Policy is to prove:
(i) that the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered is being used in bad faith. A. Identical or Confusingly Similar
The Panel must determine whether the Domain Name is “identical or confusingly similar to a trademark or service mark in which the Complainant has rights” in accordance with paragraph (4)(a)(i) of the Policy. There are two requirements that Complainant must establish under this paragraph: that it has rights in a trade or service mark, and that the Domain Name is identical or confusingly similar to the mark.
Complainant has provided the trademark registration document for its ASK LEO! mark registered in the United States. Registration for this mark postdates the Domain Name registration; however, Paragraph 4(a)(i) does not require that Complainant’s trademark be registered prior to the Domain Name, although this may be relevant to the assessment of bad faith pursuant to Paragraph 4(a)(iii), which is considered below. See generally WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 1.4 (“WIPO Overview 2.0”). I conclude therefore that Complainant has satisfied the first requirement of Paragraph 4(a)(i).
As to the second requirement, the Domain Name is identical to the ASK LEO! trademark, except for the omission of a space between the two words in the Domain Name, and the omission of the exclamation point. Since it is not possible to render spaces in the domain name system, many cases have concluded domain names to be identical to trademarks in similar circumstances. The omission of the exclamation point does not sufficiently distinguish the Domain Name from the trademark. I conclude that the second element of Paragraph 4(a)(i) is made out.
This Panel therefore finds that the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph (4)(a)(i) of the Policy. B. Rights or Legitimate Interests
A complainant is normally required to make out a prima facie case that a respondent lacks rights or legitimate interests. Once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If respondent fails to do so, a complainant is considered to have satisfied paragraph 4(a)(ii) of the Policy.
Complainant asserts that Respondent has no rights or legitimate interest in the Domain Name, as required under paragraph 4(a)(ii) of the Policy. It makes a number of specific arguments on this point. Complainant argues that Respondent is not commonly known as ASK LEO, nor is it licensed or authorized by Complainant to use the ASK LEO! mark. There is no indication that Respondent is using the Domain Name in connection with any bona fide offering of goods and services; rather, the Domain Name directs traffic to a parked website listing advertising links to several other sites that offer advice and help on general topics, including competitors of Complainant. The absence of any meaningful content on Respondent’s site underscores Respondent’s lack of legitimate business interest in the Domain Name; even today, more than nine years after Respondent registered the Domain Name, the website to which it resolves only links to third-party advertisers. Despite Respondent’s claims to be developing an “ask and answer” service for career development purposes, Respondent has offered no documentary proof of any plans for the Domain Name. Complainant thus contends that Respondent is not in the business of developing the Domain Name, but instead is in the business of trafficking in domain names as evidenced by the large number of domain names owned by Respondent and Respondent’s counter-offered to sell the Domain Name to Complainant for USD 10,000.
Respondent counters that it registered the Domain Name to describe the service that would be offered under it, namely, the “ask and answer” service for career development purposes. Respondent also asserts that it has made demonstrable preparations to operate a legitimate business that uses the “ask Leo” term. Respondent registered the Domain Name on August 7, 2001 without notice of Complainant’s trademark rights and without notice of Complainant’s domain name and website. Respondent thus has priority in right to use this generic phrase in the Domain Name. Respondent contends that it is using the term, “ask Leo,” consistent with its literal meaning. The simple fact that Respondent has not yet been able to devote the time and resources to develop its Domain Name and associated website does not imply that Respondent does not have rights or legitimate interests in it. Further, Respondent has displayed contextual advertisements on its website related to question and answer-related services, which should be sufficient in themselves to establish that Respondent has rights or legitimate interests in the Domain Name.
The Panel finds on the basis of the evidence presented that Complainant has made out a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name, and Respondent has failed to adequately rebut this case. In particular, Respondent has owned the Domain Name for more than 9 years without pursuing the plans that it claimed to have been the basis for registering the Domain Name. The Domain Name is linked to a parking page that contains advertising links, with nothing more. Despite Respondent’s claims concerning the Domain Name, it has offered no documentary evidence to support its contention that it has made demonstrable preparations to operate a legitimate business. Moreover, while Panels have recognized that use of a domain name to post parking pages may be permissible in some circumstances, this use would not of itself confer rights or legitimate interests arising from a bona fide offering of goods or services, especially where resulting in a connection to services competitive with those of the rights holder. See WIPO Overview 2.0, paragraph 2.6. In this case, there is also evidence provided by Complainant, which Respondent chose to ignore, that Respondent owns a large number of domain names, which further supports the conclusion in these circumstances that Respondent did not register the Domain Name to develop a business to offer career development services, as it claims.
Therefore, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interest to the Domain Name, which has not been answered by Respondent. The Panel thus finds that Complainant has established the second element of the Policy in accordance with paragraph 4(a)(ii). C. Registered and Used in Bad Faith
The final issue is that of bad faith registration and use by Respondent. For paragraph 4(a)(iii) to apply, Complainant must demonstrate Respondent registered and is using the Domain Name in bad faith.
Here, the Panel considers that there is evidence of bad faith use of the Domain Name, as Respondent is using it for a parking page that diverts and profits from the traffic of web searchers intending to locate Complainant’s legitimate website. As the WIPO Overview 2.0 states, a domain name registrant will normally be responsible for content appearing on a website linked to its domain name, even if using an automated parking service. Moreover, the Panel considers Respondent’s counter-offer of USD 10,000 for selling the Domain Name to be exorbitant and far in excess of any out-of-pocket costs.
However, even if the evidence points toward a degree of bad faith use, there is insufficient evidence of bad faith registration of the Domain Name. The Panel finds that despite Respondent’s disingenuous explanations for how it has been planning to use the Domain Name, it is undisputed that Respondent registered the Domain Name in 2001 before Complainant registered its own domain name in 2003 and before Complainant acquired any common law or registered trademark rights in its ASK LEO! mark. Complainant contends that the relevant time for considering bad faith registration should be the date of renewal of the Domain Name, which took place in June 2011 after Complainant had established its trademark rights. While the Panelist believes that a domain name’s date of renewal might, in an appropriate case, be relevant for purposes of assessing the bad faith registration element under the Policy (see e.g., Jappy GmbH v. Satoshi Shimoshita,WIPO Case No. D2010-1001), this is not that case. The Panelist is sympathetic to the logic expressed by the three-member panel in Jappy GmbH, where concern was raised that
“even the most damaging abuse of a trademark right through the most egregious bad faith use of a domain name would be immune from remedy under the Policy so long as the registrant was not acting in bad faith when the domain name was acquired. It would, in short, give a ‘green light’ to good faith domain name registrants to later abusively use their domain names, safe in the knowledge that any such bad faith use could not provide the basis for a successful action under the Policy.”
Here, however, the Panelist has not been provided with sufficient evidence as to the strength of Complainant’s ASK LEO! trademark from which to determine that bad faith registration can be clearly attributed to Respondent as of the date of renewal of the Domain Name’s registration. If Complainant’s trademark rights were demonstrated to be well known, a finding of targeting intent, even at the time of renewal, might be proper. However in view of all of the facts and circumstances presented in this case, the Panel determines, on balance, that the Domain Name was not registered in bad faith, even if it has been used by Respondent in a bad faith manner.
I therefore conclude that Complainant has not satisfied paragraph 4(a)(iii) of the Policy.
In view of the Panel’s decision in this case and the analysis discussed above, the Panel rejects Respondent’s claim that Complainant has engaged in reverse domain name hijacking. 8. Decision
For all the foregoing reasons, the Complaint is denied.
Christopher S. Gibson
Sole Panelist
Dated: August 2, 2011
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