The Complainants are True North Media, LLC and Good Universe Media, LLC, both of Santa Monica, California, United States of America, represented jointly and internally.
The Respondent is 1soft Corporation, Greg Thorne of Vida, Oregon, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name””) is registered with D, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 18, 2012. On July 18, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 18, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the Domain Name.
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 the Respondent of the Complaint, and the proceedings commenced on August 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 5, 2012. The Response was filed with the Center on September 5, 2012.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on September 17, 2012. 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. Factual Background
The Complaint names two Complainants, True North Media, LLC (“True North”) and Good Universe, LLC (“Good Universe”), both apparently California limited liability companies, but thereafter refers to the "Complainant" in the singular. The Complaint does not explain the relationship between the Complainants. The same postal address in Santa Monica, California, United States is given for both entities, and they are represented internally by the same person.
On April 27, 2012, the Complainant True North applied to the United States Patent and Trademark Office (“USPTO”) to register GOOD UNIVERSE as a trademark, on the basis of the Complainant’s intent to use the mark in connection with audiovisual productions. This application is pending.
The Complaint states that on May 1, 2012, Mandate Pictures (not further identified in the Complaint) launched the Complainant Good Universe as a film production, financing, and sales company. According to the Complaint, the Complainants have since used GOOD UNIVERSE as an unregistered service mark. The Complaint attaches two media articles concerning the launch of the company but attaches no evidence that GOOD UNIVERSE has ever been used as a mark in advertising, sales, or labeling. The Complaint does not refer to a website for either company, and the Panel did not find one through search engine queries.
The Respondent is an Oregon business corporation based in Vida, Oregon. The Response identifies Greg Thorne as the president of the company. According to the Response, Mr. Thorne has created thousands of domain names for business or charity use over the past fifteen years. The Response states that the Respondent registered the Domain Name in 1999, and again in October 2004, but has lacked the resources to develop an associated website devoted to healing and forgiveness. According to the Response, the Respondent develops websites for some of its domains but offers others for sale and uses them in the interim for "sponsored search" (pay-per-click or "PPC" advertising), as has been the case with the Domain Name.
The Parties exchanged emails in the course of a negotiation for the Complainant Good Universe to purchase the Domain Name from the Respondent. This UDRP Complaint followed when the parties failed to agree on a price. 5. Parties’ Contentions A. Complainant
The Complainants argue that the Domain Name is identical or confusingly similar to the unregistered service mark GOOD UNIVERSE, and that the Respondent has no rights or legitimate interests in the Domain Name.
The Complainants acknowledge that the asserted mark did not exist when the Respondent registered the Domain Name. Nevertheless, they argue that it is bad faith within the meaning of the Policy for the Respondent to register as domain names "meaningful combinations of commonly used words" that are likely to become trademarks at some time in the future, in the hope of selling the domain names to future trademark holders for a price in excess of registration expenses. B. Respondent
The Respondent asserts legitimate interests in registering the Domain Name for a planned website and then using it for PPC advertising while offering it publicly for sale.
The Respondent contends that the UDRP Complaint was filed in bad faith, as the Complainants were fully aware that the Respondent registered the Domain Name more than seven years before the Complainant filed an intent-to-use application for the GOOD UNIVERSE mark. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that, in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the domain name 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 of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” A. Identical or Confusingly Similar
The Policy requires the Complainants to demonstrate first that they have rights in a relevant mark. This may be deemed a low-threshold standing requirement. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2, and cases cited therein. Nevertheless, the Panel finds that the Complainants have not met even this standard. One of the Complainants applied to register the mark (comprised of two common English words) just a few months before this Complaint was filed, on the basis of a declared intent to use the mark in the future. The Complaint does not include evidence that the unregistered mark has in fact been used in commerce since then, much less that it has acquired distinctiveness in the marketplace such that is has become an enforceable, common law mark.
The Complaint cites Phone-N-Phone Services (Bermuda) Ltd. v. Shlomi (Salomon) Levi,WIPO Case No. D2000-0040, for the proposition that pending applications to register a mark on an intent-to-use basis suffice to establish the first element of a UDRP complaint. The Panel notes that the complainant in that proceeding also alleged a current trade name and actual use of an unregistered service mark, in addition to pending registration applications in several countries based on intent to use the mark. In any event, the Policy calls for proof of the Complainants’ “rights” (not merely interests) in a relevant trademark or service mark, which suggests that the Complainants must have enforceable legal rights in a mark to ground a UDRP complaint. For unregistered marks, especially those composed of common words or phrases, this is usually held to require a factual demonstration that the mark has acquired a distinctive “secondary meaning” associated with the mark holder in a relevant market, thus meriting protection under common law or statutory doctrines such as “passing off” and fair trading. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), section 1.7 (and cases cited therein). The record here is devoid of such evidence.
The Panel concludes that the first element of the Complaint has not been established, which is sufficient to dismiss the Complaint. While consideration of the second and third elements is not necessary to the outcome of this case, the Panel will nevertheless address these issues. B. Rights or Legitimate Interests
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of the Respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the Respondent to come forward with evidence of a right or legitimate interest in the Domain Name, once the Complainant has made a prima facie showing. See WIPO Overview 2.0, paragraph 2.1 (and cases cited therein). The prima facie showing in this case is questionable, as indicated in the discussion herein of the first and third elements of the Complaint, but in the interest of completeness the Panel will address the Respondent’s claims to rights or legitimate interests in the Domain Name.
The Policy, paragraph 4(c), includes a non-exhaustive list of circumstances demonstrating rights or legitimate interests in a domain name, including the following:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights . . .”
The Respondent cites indefinite plans to create a website focused on healing and forgiveness, for which the Domain Name is arguably relevant. However, these unsupported statements in the Response do not rise to the level of evidence of "demonstrable preparations" to use the Domain Name in this manner.
Merely offering the Domain Name for sale, and parking it with a PPC advertising service in the interim, as the Respondent has done, could represent a lawful commercial activity. UDRP panels, however, do not typically find domain name brokering or PPC advertising sufficient in themselves to establish rights or legitimate interests in a domain name within the meaning of the Policy, paragraph 4(c)(i) as use “in connection with a bona fide offering of goods or services”. (See WIPO Overview 2.0, paragraph 2.6). However, these decisions usually reflect facts indicating the likelihood that the disputed domain name was chosen in contemplation of a complainant’s mark, rather than for its generic value. This is not the case here. Because the Complaint in this instance so clearly fails to establish bad faith, as discussed below, the Panel finds it unnecessary to rule whether domain name brokering or PPC advertising, absent a targeted trademark, can represent legitimate interests for purposes of the second element of a UDRP complaint. C. Registered and Used in Bad Faith
The Policy also requires a demonstration that the Domain Name was registered and used in bad faith. This was considered integral to the anti-cybersquatting purpose of the Policy, as described in the Final Report, supra (see paragraphs 169-77 and footnote 135).
The Policy, paragraph 4(b), includes a non-exclusive list of circumstances that are considered evidence of bad faith in the registration and use of a domain name:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Complainants acknowledge that the Respondent could not actually have registered the Domain Name in an effort to exploit the Complainants’ mark or extract an extortionate price from the Complainants or their competitors. This is because the Domain Name was admittedly registered some seven years before one of the Complainants (Good Universe) came into existence and before either of the Complainants asserted any intent to establish a GOOD UNIVERSE mark.
Instead, the Complaint advances the novel theory that the Respondent’s public advertisement of the Domain Name for sale, and its subsequent response to the Complainants’ attempts to purchase the Domain Name, demonstrate bad faith because the Respondent must have realized from the outset that the Domain Name was likely to correspond to a trademark that some party would ultimately pursue in the future, and that this unknown party could be induced to pay a high price for the Domain Name. The Complainants expressly seek a ruling to the effect that “registration of a domain name containing meaningful combinations of commonly used words, which would likely have its rights acquired in the future, solely for the purpose of gaining commercially from confusion or from selling it to the future rights holder for a profit constitutes bad faith registration and use.” (Complaint, page 9).
Generally, UDRP panels dismiss complaints where the mark in question was established after the disputed domain name was registered, because “the registrant could not have contemplated the complainant's then non-existent right.” (WIPO Overview 2.0, paragraph 3.1). In exceptional cases, bad faith is nevertheless found “when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights.” (Id.). Such cases have involved, for example, a publicized merger between companies, a publicly announced new product or event, or insider knowledge of a former employee or business partner, where the disputed domain name was registered in a relatively short time between the announcement or disclosure and the complainant’s first use of the mark or filing of a trademark application. (See Id. and cases cited therein.) The Complainants cite Madrid 2012, S.A. v. Scott Martin-MadridMan Websites,WIPO Case No. D2003-0598, where the panel found bad faith in the respondent registering the domain name after the complainant Madrid announced its bid for the 2012 Summer Olympics and before the entity established to pursue the bid applied for a similar trademark.
These cases, however, involved relatively distinctive marks, where the respondent had prior knowledge of the complainant and its plans (or assumed plans) to establish the mark, and where the disputed domain name was registered shortly after that specific information was announced or disclosed. In such cases, it may reasonably be concluded that the respondent targeted the complainant, which subsequently established legal protection for the mark, in a bad faith effort to create confusion in the marketplace or extort a disproportionate price for the domain name.
Nothing in these precedents, in the text of the Policy itself, or in trademark law suggests that it is bad faith to register a domain name comprised of common words or phrases when it is possible that some unknown party in the future may decide to use those words as a trademark. The generic words used for the Domain Name in this case, “Good Universe”, could reasonably be considered relevant for a great many potential applications. It is always possible that someone will attempt to use virtually any word or phrase as a trademark. But speculating on the future commercial value of a domain name based on common words is simply a business risk, not an act in bad faith, unless the registrant has reason to know that a particular party has plans to use those words as a mark. The Complainants’ proposed approach to bad faith registration strays very far from the definition of cybersquatting in the Final Report (supra), UDRP decisions since 1999, and United States trademark and anti-cybersquatting law, which is relevant because all the parties are located in the United States.
The Panel concludes that the third element of the Complaint has not been established. D. Reverse Domain Name Hijacking
The Respondent, which is not represented by counsel, contends that the Complaint was filed in bad faith. The Panel construes this remark as a request for a ruling 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.
The Complaint concedes that UDRP complaints rarely succeed when a disputed domain name was registered prior to the establishment of a mark. The exceptions cited in the Complaint, as discussed above, do not stand for such a broad proposition as the Complainants urge, that it is bad faith to register domain names based on any "meaningful combinations of words" that might become trademarks in the future. Such an interpretation of the UDRP would effectively eliminate, in most cases, the Policy’s requirement for bad faith registration. The Complaint is forthright, however, in presenting the factual chronology and arguing for an extension of existing interpretations of the Policy. Therefore, the Panel does not conclude on this record that the Complaint was brought in bad faith or primarily to harass the Respondent.
The Panel, therefore, declines to enter a finding of reverse domain name hijacking. 7. Decision
For the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Sole Panelist
Dated: September 28, 2012
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