The Complainant is Wall-S, LLC of Florida, United States of America (the “United States” or “US”), represented by Flint IP Law, United States.
The Respondents are Marcus Kocak of Copenhagen, Denmark / Internet Opportunity Entertainment (Sports) Limited of St. Johns, Antigua and Barbuda, and Sportingbet PLC of London, United Kingdom of Great Britain and Northern Ireland, represented by Baker & McKenzie LLP, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with Ascio Technologies Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 12, 2012. On June 13, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 14, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Complainant transmitted an email communication on June 14, 2012.
The Center requested clarification of the Registrar on June 15 and 19, 2012. The Registrar replied on June 19, 2012. The Center sent an email communication to the Complainant on June 20, 2012, providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Center, on the same date, informed the parties that the Complaint was administratively deficient. The Complainant filed an amended Complaint on June 25, 2012.
The Center verified that the Amended 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 the Respondent of the Complaint, and the proceedings commenced on June 27, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 17, 2012. The Response was filed with the Center on July 17, 2012.
The Respondent transmitted a Supplemental Filing to the Center on July 31, 2012.
The Complainant had requested a single-member panel. Exercising its right under paragraph 5(b)(iv) of the Rules, the Respondent requested a three-member panel. The Center appointed Charné Le Roux, Richard G. Lyon and W. Scott Blackmer as panelists in this matter on August 17, 2012. The Panel finds that it was properly constituted and has jurisdiction to decide this administrative proceeding. Each member of 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.
Due to exceptional circumstances, the Decision due date has been extended form August 31, 2012 to September 3, 2012. 4. Factual Background
The Complainant is a US company and owner of the trade mark WALL-STREET.COM, that it uses to provide financial information to investors through a global computer network. The Complainant is the owner of a US trade mark registration WALL-STREET.COM, registered originally on the Supplemental Register of the United States Patent & Trademark Office (USPTO) in September 2001 and on the Principal Register in November 2005. The Complainant also applied to register additional WALLSTREET.COM trade marks with the USPTO, but these have not yet matured to registration. The Complainant has, since November 1998, used the WALL-STREET.COM trade mark either through its predecessor in interest, or directly. It also owns the domain name , registered in April 1995.
The Disputed Domain Name was originally registered in 1994 and was owned by Oak Ventures Corporation (OVC) from July 2001 to October 2006. The Disputed Domain Name was transferred to Jazette Enterprises Limited (Jazette) during October 2006, then to the Respondent Internet Opportunity Entertainment (Sports) Limited (IOE) in January/February 2007, then to the Respondent Marcus Kocak (Kocak) in July 2007 and back to the Respondent IOE in June 2012 (immediately after the Center transmitted to the Registrar a request for registrar verification). Since 2007, the website attached to the Disputed Domain Name reverted to a pay-per-click (PPC) website with links to providers of financial related information and services prior to the lodging of the Complaint, but, shortly afterwards, resolved to a placeholder site.
The Respondent IOE is a subsidiary of Sportingbet PLC, and an affiliate of OVC, both of which were acquired by Sportingbet PLC in 2001. Sportingbet PLC is an online sports betting operator and is currently listed on the London Stock Exchange. After the acquisition of the two companies mentioned above (which acquisition included the Disputed Domain Name) the Disputed Domain Name was put in use in connection with online gaming services and the Respondent IOE registered the trade marks WALLSTREET.COM and WALLSTREET with the USPTO in December 2004 and April 2006 respectively and obtained two Community Trade Mark registrations, one in March 2004 for WALLSTREET.COM and one in November 2005 for WALLSTREET. The USPTO registration for WALLSTREET.COM expired in 2011. Following the passing of the Unlawful Internet Gambling Enforcement Act in the US in September 2006, which prohibited online gambling in the United States, Sportingbet PLC sold certain of its US businesses to Jazette. The Disputed Domain Name was not included in this sale. The Disputed Domain Name was placed on auction for sale in 2006 and again in 2011 by the Respondent IOE, using its agent the Respondent Kocak. 5. Parties’ Contentions A. Complainant
The Complainant submits that it has acquired rights in the WALL-STREET.COM trade mark as a consequence of:
a) its own use and that of its predecessor in title as of 1998;
b) the registration of its trade mark on the USPTO Supplemental and Principal Registers in 2001 and 2005 respectively; and
c) the registration of its domain name in 1995.
The Complainant contends that the Disputed Domain Name is confusingly similar to its WALL-STREET.COM trade mark, both in relation to its spelling and with reference to the commercial meaning that it conveys. The Complainant submits that the only difference between the Disputed Domain Name and the Complainant’s trade mark is that the Disputed Domain Name does not include a hyphen between the words “wall” and “street”.
The Complainant also contends that the Respondents lack rights or legitimate interests in the Disputed Domain Name in that:
a) the Complainant has not licensed or authorised the Respondents to use the Disputed Domain Name, which is virtually identical to the Complainant’s trade mark;
b) the relevant date for purposes of determining the Respondents’ interest is 2007, being the date that the Disputed Domain Name transferred to the Respondent IOE from Jazette, and that neither of the Respondents was commonly known by the Disputed Domain Name since that date. The Complainant bases its assertion regarding the relevant date on a contention that each of the Disputed Domain Name registrations by the parties OVC, Jazette (a third party not affiliated with either Respondent) and the Respondents IOE and Kocak, as referred to above, constitute new domain name registrations, that there is no commercial connection between them and therefore that there has not been common control of the Disputed Domain Name;
c) there is no evidence of the Respondents’ use of the Disputed Domain Name in connection with a bona fide offering of goods and services since 2007, but rather that the Disputed Domain Name is used in connection with a PPC website with links to a variety of providers of financial information and service, in competition with the Complainant;
d) the Respondents are not making legitimate, noncommercial or fair use of the Disputed Domain Name without the intent for commercial gain misleadingly to divert consumers, because the Disputed Domain Name is connected to a PPC website offering competing services, and that such use is designed to capitalize on the Complainant’s goodwill in its registered trade mark. The Complainant contends that the Respondents are not in the business of providing financial information and that the Respondent Kocak is in the domain name business and the Respondent IOE in the online gambling services business.
The Complainant further contends that the Disputed Domain Name was registered and is being used in bad faith. According to the Complainant, each of the transfers to the Respondents, namely to IOE in January 2007, to Kocak in July 2007 and then back to IOE in June 2012 constitutes a new registration from which bad faith registration and use is measured. The Complainant contends that the Respondents made no legitimate use of the Disputed Domain Name and had no interest in it as at the time of each new registration.
The Complainant contends that the Respondents registered the Disputed Domain Name primarily for the purpose of selling it for a consideration in excess of their out of pocket costs. It bases its contention on the fact that the Respondents indicated to the Complainant that the Disputed Domain Name could be purchased for USD 1.8 million.
The Complainant also contends that the Respondents intentionally attempt to attract, for commercial gain, Internet users to the Respondents’ website by creating a likelihood of confusion with the Complainant’s trade mark. The Complainant refers, in this regard, to the PPC advertising website with links to websites competing with the Complainant and the Respondents’ registration of the Disputed Domain Name after the registration of the Complainant’s mark on the USPTO Principal Register, with knowledge of the Complainant’s trade mark rights.
The Complainant also relies on the following actions of the Respondents in support of its claim of bad faith registration and use, namely that they shielded the true identity of the Disputed Domain Name owner by proxy registration, that they provided inaccurate contact information on the WhoIs record regarding the physical address of the Respondent Kocak, that they changed the name of the registrant shortly after receipt of the Complaint, that they took down the PPC website immediately upon receipt of the Complaint and that they used mechanisms to prevent the recordal of historical archives of the website.
The Complainant requests that the Disputed Domain name be transferred to it. B. Respondent
The Respondents deny that the Respondent Kocak has any interest in the Disputed Domain Name and consequently that he is an appropriate Respondent. They assert that Kocak has been acting as agent/proxy in terms of a proxy arrangement under which Kocak, an experienced professional in the domain name field, was engaged to assist in a possible sale of the Disputed Domain Name. They referred in this regard to a statement that the Registrar made to the Center to confirm this fact and also to an administration agreement between Sportingbet PLC and Kocak that they provided in their Response, confirming that the Disputed Domain Name was being held under such proxy arrangement and that any registrant rights remain with the Respondent IOE.
The Respondents also assert in connection with the relationships between the parties that, since Sportingbet PLC owned both OVC and the Respondent IOE, and Kocak was merely a proxy, a common control in the Disputed Domain Name was retained at all times since 2001. They submit that the respective transfers that took place of the Disputed Domain Name among affiliated companies (OVC and IOE) and their agent Kocak did not change the common control. The Respondents contend that the transfer to Jazette of the Disputed Domain Name was an administrative error that occurred during the extensive activity taking place following the aforesaid transaction; in connection with a sale to Jazette of some of Sportingbet PLC’s US operations the Disputed Domain Name was inadvertently transferred to Jazette. The Respondents provided a copy of an announcement made to the London Stock Exchange as well as assignment records of the USPTO in support of the contention that the Disputed Domain Name was never included in the sale to Jazette. As soon as this error was discovered the Disputed Domain Name was transferred back to the Respondent IOE, a few months after the inadvertent transfer to Jazette. The Respondents further support these contentions with the declaration made on personal knowledge by IOE’s general counsel, who states he was personally involved in the Jazette transaction.
The Respondents deny that the rights acquired by the Complainant in its trade mark provide a basis for bringing a Complaint in terms of the Policy. They contend that the term “wall street” is a well-known geographic location, that it is generic and descriptive in nature and that there are at least 263 trade mark registrations and applications in trade mark registers worldwide, including in the United States, that incorporate the term “wall street”, and over 100 US companies with the term “wall street” incorporated in their names. The Respondents contend that the scope of the Complainant’s US registration rights must be construed very narrowly against this background.
The Respondents submit that they do have a legitimate and longstanding right in respect of the Disputed Domain Name. They contend that the Disputed Domain Name has been under common control as of 2001. The Respondents also refer in support of their legitimate rights and interests to the trade mark registrations obtained for the trade marks WALLSTREET.COM and WALLSTREET in the US and in the European Union (“EU”) in December 2004, March 2004, November 2005 and April 2006 respectively. The Respondents explain that following the passing of the Unlawful Internet Gambling Enforcement Act, their legitimate interests continued despite the undertaking of a strategic review and subsequent sale of a number of the US businesses of Sportingbet PLC, and even though the Disputed Domain Name could not be used in connection with the operation of online gambling activities in the US. The Respondents admit that as of 2007 the Disputed Domain Name was used for a PPC website, but contend that the links that appeared on the website were in connection with the generic meaning of the term “wall street”, which is linked to the American financial industry, and that there was no attempt to derive a commercial gain from the Complainant’s mark. The Respondents also submit that they are making demonstrable preparations for future use of the Disputed Domain Name as the prohibition on Internet gaming is reconsidered in the US.
The Respondents deny that they registered and used the Disputed Domain Name in bad faith and submit that they had no knowledge of the Complainant’s existence or trade mark at the time of registration of the Disputed Domain Name. They submit that any questions of bad faith registration and use must be assessed as of 2001, which is the date when the Disputed Domain Name came into common control of the Respondents through Sportingbet PLC. This date is several years prior to the Complainant’s trade mark registration.
The Respondents state in connection with the auctioning of the Disputed Domain Name both in 2008 and 2011, that the Disputed Domain Name was considered by them to be a valuable asset both due to their longstanding ownership of the Disputed Domain Name and the corresponding registered trade marks. The Respondents also argue that it was the Complainant who contacted the Respondent Kocak in connection with the sale of the Disputed Domain Name and also that it made a business proposal to the Respondent Kocak in this regard, which was ultimately rejected by Sportingbet PLC. The Respondents deny that they intended to divert traffic from the Complainant’s website. The Respondents submit that their action subsequent to changes in US legislation were legitimate commercial actions.
The Respondents request for the Complaint to be denied and also for a finding of reverse domain name hi-jacking. They submit that the Complainant is using the UDRP to deprive the Respondents of their legitimate ownership in the Disputed Domain Name. They refer to the following actions of the Complainant in support of this argument:
a) That the Complainant is using the UDRP to circumvent a legitimate process whereby the Respondents can dispose of the Disputed Domain Name through a sale or auction;
b) That the Complainant had knowledge of the Respondents’ legitimate rights in the Disputed Domain name since July 2011, when it approached the Respondents to try and purchase the Disputed Domain Name;
c) That the Complainant knew that the Disputed Domain Name could not have been registered in bad faith as the registration of the Disputed Domain Name predates the date of the trade mark registration that the Complainant is relying on;
d) That the Complainant took ten years to bring this Complaint following the registration of the Disputed Domain Name by the Respondents; and
e) That an effort was made by the Complainant to obtain transfer of the Disputed Domain Name on the basis of alleging cybersquatting of a generic word. C. Supplemental Filing
The Respondents filed a Supplemental Filing including two emails sent by the Complainant to the Respondents’ administrative agents after the filing of the Response, which were not copied to the Panel. The emails refer to an approach by the Complainant to the Respondents to work together and to collaborate on a project that will include the possible sale of both parties’ domain name and trade mark registrations for WALLSTREET.COM and WALL-STREET.COM respectively. The Respondents submit that it is clear from these communications that the Complainant’s true intention for the Complaint was to use the UDRP process to circumvent the legitimate ownership by the Respondent of the Disputed Domain Name. Reference was made by the Respondents to the following statement that the Complainant made in one of the emails:
“It was a joint decision to file the UDRP on behalf of Wall-S. The reason for the filing is simple, we needed to accelerate the process of coming to a settlement on how we can work together on the Wall Street Package.”
The Respondents contend that these communications contain a threat designed to pressure the Respondents to sell the Disputed Domain Name to the Complainant. 6. Discussion and Findings
The Complainant bears the burden of proof, by a preponderance of the evidence, to demonstrate each of the following Policy elements:
(i) the Disputed Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect to the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
In this case the Panel must also consider whether to accept the Respondent’s Supplemental Filing and which of IOE or Kocak is the proper Respondent. A. The Supplemental Filing
The Respondents’ Supplemental Filing consists of three emails between the representatives of the parties dated July 24, 25, and 26, 2012, several days after the Response was submitted, and related argument regarding (among other things) the content of these emails. Briefly to summarize what the Panel discusses in greater detail in part F below, the Complainant initiated these emails to re-start its earlier efforts to persuade the Respondent to sell the Disputed Domain Name to it. The Respondents base their Supplemental Filing on paragraph 2(h)(iii) of the Rules, which provides “(h) Any communication by . . . (iii) a Party shall be copied to the other Party, the Panel and the Provider, as the case may be.” The Respondents assert that the Complainant failed to comply with this Rule.
It is now well settled that, consistent with the Policy’s stated objective of prompt and efficient resolution of a limited class of disputes, unsolicited supplemental filings (i.e., those not expressly requested by the panel) will be allowed only in exceptional circumstances. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.2. With very limited exceptions the “exceptional circumstances” involve matters that arise after the initial pleading was filed and which could not reasonably have been anticipated at that time. See, e.g., Digital Ceramic Systems Limited v. Baltea SRL,WIPO Case No. D2012-1198 (“ the supplemental filings should address relevant issues which were not known by the filing party at the time that it filed its documents”); Mani Brothers, LLC v. Lincoln Gasking,WIPO Case No. D2008-0097 (“[p]anels that have allowed additional pleadings generally do so only when the response includes a matter that the complainant could not reasonably have anticipated when the complaint was filed”).
The emails submitted with the Supplemental Filing postdate the Response, so they meet the first criterion for admission. The Panel deems the Complainant’s acknowledgment that its “simple” reason for filing the Complaint was “to accelerate the process of coming to a settlement on how we can work together,” discussed further in part F, to be a matter that no respondent could or should reasonably anticipate, so the Panel admits the email string annexed to the Supplemental Filing. The balance of the Supplemental Filing, consisting primarily of re-argument of matters included in the Response, is not admitted and will not be considered by the Panel in rendering its Decision. B. Identity of the Respondent
Paragraph 1 of the Rules defines respondent as “the holder of a domain-name registration against which a complaint is initiated.” As the WhoIs database listed Kocak as the registrant, the Complainant cannot be faulted for naming him as the Respondent in the initial Complaint. Upon receipt of the Center’s notice of the Complaint, however, the Registrar identified IOE as the “actual registrant” since 2007 and that “The domain name has been under the ownership of a Sportingbet PLC company since 1999.” With this information, the Center, following its customary practice (see WIPO Overview 2.0, paragraph 4.9), so notified the Complainant and invited the Complainant to amend its Complaint to take account of the registrant indicated by the Registrar. The Complainant did so, naming both IOE and Kocak as the Respondents.1
UDRP panels in cases involving nominee registration ordinarily deem the principal registrant rather than the agent as the “real party in interest” and therefore the proper respondent. That is what the Panel shall do here. Not only has the Registrar identified IOE as the registrant, IOE itself has provided documentary evidence of the nominee relationship – the agency agreement and an officer’s declaration upon personal knowledge of the agency arrangement and the reasons for it. The Amended Complaint addresses IOE as the real party in interest and the Panel does the same. C. Identical or Confusingly Similar to a Mark in which the Complainant has Rights
The Complainant has furnished evidence, not seriously contested by the Respondent, of a trade mark for WALL-STREET.COM registered on the Principal Register of the USPTO, and of longtime use of that mark in commerce. Either suffices to establish “rights” in the mark for Policy purposes. The former is well-nigh conclusive for purposes of paragraph 4(a)(i) of the Policy; the Panel may not question the USPTO’s determination. WIPO Overview 2.0, paragraph 1.1, and cases there cited. The strength of the mark, how many others have similar marks, or any priority between the rights of the parties in similar marks, though of obvious relevance under paragraphs 4(a)(ii) and 4(a)(iii), are not taken into account under this threshold requirement. The Disputed Domain Name differs from the mark solely by the absence of a hyphen between the two principal words and is thus confusingly similar.
The Complainant has satisfied this Policy requirement. D. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove a negative, that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. This is accomplished as follows: “Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.” WIPO Overview 2.0, paragraph 2.1.
If, as the Respondents contend, the Panel should look to IOE’s acquisition of Oak Ventures in 2001 as the date for the Respondents’ registration of the Disputed Domain Name, the Complainant fails even to make its prima facie case, as it acknowledges in the Amended Complaint that IOE held a USPTO-registered trade mark for WALLSTREET.COM and that one of its controlled affiliates operated an online gambling business at the Disputed Domain Name. Holding a valid, nationally registered trade mark unquestionably qualifies as virtually incontrovertible evidence that the Respondent was “commonly known by the domain name,” Policy, paragraph 4(c)(ii), and there is no suggestion (nor could there be) that the gambling site was not a bona fide service offering, Policy, paragraph 4(c)(i).
The Complainant appears to recognize this. It points to the 2006 transfer of the Disputed Domain Name to an unrelated third party, Jazette, followed some months later by a re-transfer to IOE in early 2007, and argues that this latter date is the date of registration.2 All use of the Disputed Domain Name subsequently to that date, according to the Complainant, was illegitimate for Policy purposes and during that time period neither Respondent was commonly known by WALLSTREET.COM.
IOE or an affiliate still held its USPTO- and EU-registered trade marks for WALLSTREET.COM in 2007, and so may be said still to have been commonly known by that term at that date. But even if the Panel accepts 2007 as the date of registration and discounts the Respondent IOE’s trade mark ownership because of inactivity after that date, the Respondent has submitted credible documentary evidence of other legitimate use of the Disputed Domain Name after 2007 and prior to commencement of this proceeding. As stated in sections 4 and 5 above, after being prevented by law from continuing its gambling business in the United States the Respondents explored other means of maximizing the value of the Disputed Domain Name, among them a possible sale by auction or otherwise. Sale of domain names generally is considered legitimate unless taking advantage of another’s mark is involved, or, as stated in Media General Communications, Inc. v. Rarenames WebReg,WIPO Case No. D2006-0964, “In the absence of evidence suggesting name selection because of correspondence to a trademark, domain resale and the use of a domain to publish advertising links are both normally legitimate business enterprises.”
In this proceeding there is no allegation, let alone evidence, that a possible sale by the Respondents prior to commencement of this proceeding involved taking advantage of whatever goodwill attached to the Complainant’s marks or otherwise targeted the Complainant. Rather, as the Complainant certainly cannot deny,3 a domain name (a “.com” one at that) consisting of an international symbol of high finance and capitalism holds considerable inherent value. Offering such a domain name for sale by an entity that itself holds a registered trade mark for the term is in the circumstances legitimate.
Complainant has not carried its burden of proof under this Policy head. E. Registered in Bad Faith
The lack of any evidence of the Respondents’ targeting the Complainant or its mark also precludes any finding that the Respondents, either in 2001 or 2007, selected and registered the Disputed Domain Name to take advantage of the Complainant or its mark. Such a finding is ordinarily required for establishing bad faith registration, see e.g., Forest Laboratories, Inc. v. Clark Grace,WIPO Case No. D2011-1006. Registration and use must each be proven separately, so regardless of the legitimacy of the longtime PPC use the Complainant has not carried its burden of proof under this Policy head. F. Reverse Domain Name Hijacking
The Respondent asks the panel to rule that the Complaint represents an attempt at Reverse Domain Name Hijacking (“RDNH”). This is defined in the Definitions section of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
Paragraph 15(e) of the Rules provides as follows:
“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 its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
The Rules do not provide for monetary remedies or specific relief in such a case.
It is a close question whether the Complaint was brought in bad faith for purposes of the Rules, paragraph 15(e). The post-Complaint emails included in the Respondent’s Supplemental Filing strongly suggest that the Complainant was not overly concerned with the strength of its UDRP position but used the UDRP filing as leverage for a settlement – a highly improper purpose:4
“The reason for the filing is simple, we needed to accelerate the process of coming to a settlement on how we can work together on the Wall Street Package.”
Still, this attempt to “accelerate” a settlement would not necessarily amount to bad faith as long as the Complainant had a legitimate case under the UDRP based on the information available to it when the Complaint was filed. The evident weakness of the Complainant’s UDRP claim is one of timing: the Disputed Domain Name came into the control of the Respondent’s group in 2001, yet the Complainant’s mark was not registered on the Principal Register of the US Patent and Trademark Office (USPTO) until 2005. Its registration on the Supplemental Register from September 2001 is not particularly helpful for the Complainant’s UDRP case, since that register is used precisely for marks currently ineligible for registration on the Principal Register because, for example, they are descriptive or geographic and have not yet acquired distinctiveness. See 15 U.S.C. sections 1091-1096; USPTO Trademark Manual of Examining Procedure (TMEP) section 801.02(b); WIPO Overview 2.0, section1.1. Moreover, the Complainant does not make a persuasive argument that the Respondent was likely aware of the Complainant’s unregistered mark in 2001.
Nevertheless, the Complainant could reasonably have believed, as it argues in the Complaint, that the relevant date for determining bad faith for UDRP purposes was 2007, when the Domain Name registration was transferred to the Respondent from an apparently unrelated party. The relationships among the successive registrants were only clarified in the Response, along with an explanation of the inadvertent transfer of the Disputed Domain Name registration to an unrelated third party (Jazette) in October 2006 (which was later re-transferred to the Respondent IOE). The transfer to Jazette in 2006 does furnish a reasonable basis for claiming 2007 as the applicable date, as the Complainant does. See BME, LLC. v. Gregory Ricks / Gee Whiz Domains Privacy Service,WIPO Case No. D2008-0882. The Respondents argue that the Complainant was apprised of the Respondents’ legitimate interests in 2011, when the Complainant approached the Respondents about purchasing the Disputed Domain Name, but the Respondents do not indicate that it furnished proof to the Complainant at that time of a common interest in the Disputed Domain Name dating from 2001.
Of greater concern is the Complainant’s admitted knowledge that the Respondent IOE held USPTO-registered trade marks for WALLSTREET and WALLSTREET.COM in 2007, the date that the Complainant deems appropriate for registration. This fact is pleaded in the Amended Complaint. The Complainant offers no reason why such ownership fails to bring the Respondent IOE within the safe harbor of paragraph 4(c)(i) of the Policy, despite its undertaking “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.” Rules, paragraph 3(b)(xiv); Amended Complaint, paragraph 22. While the subsequent transfer to the Respondent Kocak might excuse the filing of the original Complaint, once the Complainant was informed that the Respondent IOE was the domain name owner the Complainant had an obligation under this Rule to explain to the Panel why it believed that IOE’s registered trade marks did not confer upon it a legitimate interest in a domain name that mirrored one of the trade marks exactly. This inexcusable omission, coupled with the Complainant’s admitted corollary purpose of using this Policy proceeding to force a settlement, justifies a finding of Reverse Domain Name Hijacking against the Complainant. 7. Decision
For the foregoing reasons the Complaint is denied.
Charné Le Roux
Presiding Panelist
Richard G. Lyon
Panelist
W. Scott Blackmer
Panelist
Dated: September 12, 2012
1 The Registrar apparently also listed IOE as the registrant in its WhoIs database immediately after transmitting its reply to the Center. This almost certainly was comparable to a practice followed by many ICANN-accredited registrars in cases involving proxy or nominee registrations of disclosing the underlying principal registrant upon receipt of a UDRP complaint. See Asbach GmbH v. Econsult Ltd., d.b.a. Asbach Communities and Whois-Privacy Services,WIPO Case No. D2012-1225, and cases cited at fn. 3.
2 While it is true, as the Complainant contends, that even transfers among related parties normally constitute new registrations for Policy purposes, this rule is not absolute. See e.g., BME, LLC. v. Gregory Ricks / Gee Whiz Domains Privacy Service,WIPO Case No. D2008-0882 fn. 7 (“A panel might ignore a transfer from one subsidiary to another within a conglomerate not timed coincidentally or otherwise with an event pertinent to the matters claimed to constitute bad faith, for example.”) While as the accompanying text indicates this matter is not essential to its Decision, the Panel notes that the Respondent has presented persuasive evidence of continuing control of the Disputed Domain Name since 2001 and of a reasonable explanation, supported by evidence, for the transfers involving Jazette.
3 In its recent email communication with the Respondent the Complainant referred to sale of the Disputed Domain Name as follows: “We can all make money, and gain a little fame along the way by putting Wall Street in its proper place as a financial concern on the internet.”
4 It should be noted that the reason set forth in the email is contrary to the Complainant’s certification in paragraph 22 of the Amended Complaint and required by paragraph 3(b)(xiv) of the Rules “that this Amended Complaint is not being presented for any improper purpose”.
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