Complainant is Andrew Etemadi, Founder and Chief Technology Officer for Eyemagine Technology LLC of Irvine, California, United States of America (“United States” or “US”), represented by The Law Office of Darius Gleason, United States.
Respondents are Clough Construction and Deanne Clough of San Rafael, California, United States, represented by Perry IP Group A.L.C., United States. 2. The Domain Names and Registrar
The disputed domain names and (“Domain Names”) are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2012. On December 14, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed Domain Names. On the same date, the Registrar transmitted by email to the Center its verification response confirming that Respondents are listed as the registrants 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”).
On December 21, 2012, the Center sent an email communication to the parties, to inform them that it had been brought to the Center’s attention in the Complaint that a court proceeding was pending between the parties. The parties were requested to keep the Center timely advised of any developments in these referred-to court proceedings which are (or may be) of relevance to the present UDRP dispute.
On December 21, 2012, the Center sent an email communication to the parties about the consolidation of Respondents.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondents of the Complaint, and the proceedings commenced on December 21, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 10, 2013. The Response was filed with the Center on January 10, 2013.
The Center appointed Michael A. Albert as the sole panelist in this matter on January 21, 2013. 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
Complainant is owner of the following trademark registration:
EYEMAGINE, a design mark, US Reg. No. 3721736, filed May 8, 2009 and registered on December 8, 2009.
Complainant is founder and chief technology officer of Eyemagine Technology LLC, which is the owner of the following trademark registration:
EYEMAGINE, a character mark, US Reg. No. 4241070, filed February 21, 2012 and registered on November 13, 2012.
The disputed domain name was created in February 1996 and registered to the current registrant on July 6, 2012. The disputed domain name was created in April 2010 and registered to the current registrant on August 23, 2010. 5. Parties’ Contentions A. Complainant
In its Complaint, Complainant alleges:
(i) The Domain Names are identical or confusingly similar to marks in which Complainant has rights.
(a) Complainant asserts rights in two US trademark registrations directed to the EYEMAGINE mark (US Reg. No. 3721736 and 4241070), both used in connection with the sale of goods and services comprising computer services, namely, designing, creating, implementing, managing and maintaining websites for others. Complainant also asserts rights in two applications for US trademark registration directed toward the EYEMAGINE mark (US Ser. Nos. 85792272 and 85792281), and one application for US trademark registration for a different mark, MOBILE | AD | WORLD (US Ser. No. 85578861).
(b) Complainant alleges that it had rights in a common law trademark since 2003, and asserts that Eyemagine Technology LLC has continuously and exclusively used the EYEMAGINE mark for the sale of computer, Internet, ecommerce, social media and game services since 2003, when Complainant registered the domain name , filed a “Doing Business As” statement in California, US, and began using the mark in commerce. Complainant asserts that the “mark has acquired secondary meaning for Complainant and its services.”
(c) Complainant alleges: it has invested USD 21,078 in advertising the EYEMAGINE brand; it has increased its clientele since 2008 by 500%1; and its use of the mark “has been prominent, is famous, [and] embodies substantial good will toward Complainant.” In support of this final contention, Complainant provides a screenshot of the “Brands We Work With” webpage on Eyemagine Technology LLC’s website.
(d) Complainant provides one letter dated November 15, 2012 that indicates one of its clients has unsuccessfully attempted to refer customers to Eyemagine Technology LLC. The client further claims that it itself has experienced confusion when looking for Eyemagine Technology LLC’s business website on the Internet.
(e) Complainant provides various data indicating the current popularity and prominence of Complainant’s domain name.
(ii) Respondents have no rights or legitimate interests in the Domain Names.
(a) Complainant asserts that Respondents have never used the Domain Names in connection with a bona fide offering of goods and services. Complainant notes that Respondents, despite owning for 16 years, have never registered a trade or service mark and have “done nothing to develop secondary meaning of the mark in association with Respondent.” Complainant alleges that has been in existence for only two years and is substantially unused.
(b) Regarding the EYEMAGINE mark, Complainant asserts that Respondents “abandoned” the mark in August 2002 when they registered the domain name and that the mark was last used by Respondents at “www.” in March 2003. Complainant alleges that the mark has not been used on “www.” at any point. Complainant also argues that Respondents have attempted to “increase their affiliation” with the mark through registration and use of , purportedly in response to becoming aware of Complainant.
(c) Complainant alleges that Respondents never had any real intent to use the mark as a brand or sales tool for Clough Construction and never attempted to affiliate the Domain Names with Clough Construction. Complainant further asserts that the mark is not part of Clough Construction’s marketing plan. In support, Complainant notes that the registrant of is Respondent Deanne Clough. Complainant asserts that “Deanne Clough is the real party with an interest in the mark and registration in the name of Clough Construction is misleading.” Complainant cites two “Youtube” videos from 2011 of Respondent Clough and her husband discussing their company, noting that neither mentions the mark.
(d) Complainant provides a timeline of Respondents’ use of from between 1996 to 2011, utilizing the WaybackMachine Internet Archive. Complainant provides two examples of Respondents’ use of the EYEMAGINE mark prior to 2001. Complainant alleges that after this period, the mark is unused by Respondent except as in the Domain Name. Per Complainant, this is the interval of time—late 2002 to 2011—in which Complainant adopted and invested in the mark.
(e) Complainant alleges that Respondents had actual notice of this dispute on September 16, 2010. Complainant argues that Respondents “had constructive notice” of the dispute on September 22, 2009 (when Complainant’s now-registered mark, US Reg. No. 3721736, was published for opposition). Complainant also argues that Respondents had numerous opportunities to have notice of Complainant and Complainant’s use of the mark since 2003.
(f) Complainant argues that the “average reasonable person […] would not use the search term ‘eyemagine’ since there is no reason to expect this search would produce construction company webpages.”
(g) Complainant argues that the “use of ads that may be revenue generating and of clickable links does not confer rights arising from bona fide use” and notes that “only 3 of the links from which Respondent may derive click-through revenue are live.”
(h) Complainant asserts that Respondents have been largely unwilling to discuss sale or settlement with Complainant and that “[h]olding onto a domain after an obviously expired use does not confer rights or legitimate interests in the domain.”
(i) Complainant argues that Respondent Clough does not have rights or legitimate interests in , which Complainant contends is an “elaborate parking page” that has been under construction from its inception in 2010. Complainant alleges that the resolving webpage plays a John Lennon song “apparently without any copyright acknowledgement or other basis for fair use.” Complainant asserts that Respondent registered the Domain Name on April 8, 2010, “after having knowledge of this dispute.”
(j) Complainant argues that the webpages to which and resolve are not noncommercial use or fair use.
(k) Complainant alleges that Respondent is “intentionally misleading and diverting consumers to dilute Complainant’s service mark rights.” In particular, Complainant points to Respondents’ use of an “icon of a human eye adjacent” to the mark, which is “confusingly similar” to Complainant’s design mark, US Reg. No. 3721736.
(iii) The Domain Names were registered and are being used in bad faith.
(a) Complainant alleges the registration of in 1996 was in bad faith because: Respondent Clough Construction never had any intention of using the mark for the purpose of marketing or branding Clough Construction; it “was reasonable in 1996 to identify a domain name that one predicts will increase in value for an unidentified 3rd party and to register the domain name for the purpose of future sale”; Respondents’ later registration of in the name of Deanne Clough and not Clough Construction demonstrates that the name of the true registrant was not used in the 1996 registration; and finally, Respondents’ “abandonment” of between 2002 and 2011 and revival of interest after allegedly having notice of this dispute (accompanied by Respondents’ registration of ) demonstrates Respondent’s intention at the time of registration of was to sell the Domain Name.
(b) Complainant asserts that Respondent’s registration and use of is “intentional interference with and dilution of Complainant’s rights and is registration in bad faith.” It argues that bad faith is demonstrated because: it is “highly likely” that Respondent had notice of this dispute at the time of registering (given the fact that the webpage was displayed 4 months after Complainant’s first service mark was issued); Respondent’s use an “icon of a human eye adjacent to the word,” purportedly similar to Complainant’s design mark; Respondent’s use as a “social network” webpage, which constitutes commercial activity that is “substantially closer to Complainant’s eCommerce business”; and finally, Respondents are infringing copyrights through use of John Lennon’s song.
(c) Complainant asserts that Respondents’ registration and use of should be viewed in context of its registration and use of since the latter Domain Name was purportedly registered for the purpose of gaining leverage in the sale of the former.
(d) As further evidence of bad faith registration and use, Complainant describes its attempts to negotiate purchase of the Domain Names starting on September 16, 2010, which consist of three separate offers to buy for USD 2,000 and an offer to pay Respondents with professional services to build a webpage. Complainant notes that the actual costs for registering and renewing both Domain Names could not have been more than USD 600. These offers were not accepted by Respondents for various reasons, including “emotional attachment” to the Domain Names and a belief that the repeated price offered was unsatisfactory.
(e) Complainant asserts that Respondents filed suit in a Superior Court of California, US, to enjoin Complainant company’s use of the mark in the San Francisco area, US, and that given Complainant’s status as an Internet company, this is unreasonable.
(f) Complainant repeats prior allegations in support of its bad faith arguments, including: the assertion that Respondents have no businesses registered using the mark; the assertion that that registration of was eight years after “abandoning the mark”; and the assertion that Respondents’ purpose in acquiring was to gain leverage over Complainant in relation to .
(g) As further evidence of bad faith registration, Complainant asserts that Respondent Clough is now a competitor of Complainant since social media and eCommerce business on the Internet are intimately linked and are both pure Internet Businesses. Complainant points to Respondents’ willingness to register the Domain Name despite not having ever used and without any real prospect of business success.
(h) As further evidence of bad faith use, Complainant asserts that Respondents are infringing and diluting Complainant’s brand identity through their use of the eye icon and mark, thus exhibiting clear intent to create a likelihood of confusion with Complainant. Complainant points to the “www.” webpage’s “indundat[ion] by web bots and fake linking webpages.”
(i) Complainant alleges that Respondents’ “reaction to the start of this UDRP proceeding indicates bad faith.”
(j) Complainant argues that a growing number of panels are finding cause to depart from requiring bad faith conjunctively because it lends itself to abuse by those who may have registered in good faith in the past but now rely upon this to use domain names in bad faith with impunity. B. Respondents
In their Response, Respondents allege that Complainant knew Respondents retained attorneys but did not send a copy of the Complaint or notice of the Complaint to either of Respondents’ attorneys, contrary to Complainant’s attestation and in contravention of paragraph 3(xii) of the Rules. Further, Respondents note Complainant’s refusal to agree to an extension to respond to the Complaint despite (1) requesting its own extension due to the holidays, (2) its knowledge of the Domain Names for at least two years (and probably eight years), and (3) Complainant’s purported attempt to “dragoon Respondent” by filing the Complaint prior to the holidays without notifying Respondents’ attorneys.
Respondents further allege:
(i) Complainant’s trademark registrations do not support claims regarding whether the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights.
(a) Complainant’s various trademark applications, labeled “registered” by Complainant, are not registrations.
(b) Complainant’s design mark, US Reg. No. 3721736, is for a design mark that is no longer in use. Per Respondents, Complainant “actually uses an entirely different logo and has for years.” Respondents allege that Complainant’s current logo is a material alteration of the subject mark, and the registration cannot be amended. Further, Respondents argue that the registration is vulnerable to cancellation on the basis of abandonment; because the registration is not supported by use, it cannot be asserted against Respondents.
(c) Complainant’s application for trademark registration, US Ser. No. 85578861, is irrelevant because it covers MOBILE | AD | WORLD.
(d) Complainant’s recent trademark registration for EYEMAGINE, US Reg. No. 4241070, was applied for and granted years after Respondents purportedly registered for the Domain Name, and thus cannot be asserted against Respondents.
(e) For the reasons above, Complainant has no rights superior to Respondents’ rights.
(ii) Respondents have rights and legitimate interests respecting the Domain Names.
(a) Respondents registered the Domain Name seven years before Complainant claims to have started its company and many years before Respondent knew or could have known about Complainant, its claim of rights, or its business (because its business is of a completely different nature).
(b) Respondents allege that they have not read about Complainant or its activities.
(c) Respondents allege that they have used the Domain Name in the offering of goods and services since 1996; the Domain Name resolves to Clough Construction, an active commercial website.
(d) Respondents allege that the Domain Name is of considerable value. Per Respondents, the mark has appeared “[f]rom time to time” on the website, and the mark and Domain Name have been used in connection with their business for seventeen (17) years. This includes sharing with customers “the business concept of ‘eyemagine’ which is to ‘envision this deck or fence in your home’ by using our website with photos, showroom with displays, thousands of customers homes to visit, and photo albums at their place of business.” Respondents further allege that they have used email accounts that end with the suffix “@” for over seventeen (17) years, and that their “fleet” of trucks and advertising use the Domain Name as referral to their website.
(e) Respondents allege that the Domain Name was registered in April 2010, before Respondents were familiar with Complainant or its claims. The Domain Name resolves to a website in its development stages. Respondents allegedly have a business plan for the website that involves developing the site into “an international spiritual directory and eCommerce site.”
(f) Respondents allege that Complainant deceived Respondent Clough into disclosing confidential details regarding her plan.
(g) Respondents allege that Complainant has recognized Respondents’ prior rights by its offers to purchase the Domain Names.
(h) Respondents allege that Complainant has not demonstrated that its delay in bringing this action is justified, and that the delay undercuts Complainant’s allegations that Respondents lack rights and legitimate interests and registered and used the Domain Names in bad faith.
(i) Respondents assert that Complainant waited until November 13, 2012—the date its federal registration issued—to send a demand letter and bring this Complaint.
(iii) Respondents registered and are using the Domain Names in good faith.
(a) Respondents repeat assertions that was registered in 1996, seven years prior to when Complainant allegedly started its company, and was registered before Respondents had any familiarity with Complainant.
(b) Respondents deny allegations that the Domain Names were registered for the purpose of selling, renting, or otherwise transferring to Complainant or its competitors. Respondents further deny that the Domain Names were registered to keep Complainant from registering the Domain Name.
(c) Respondents argue that Complainant’s allegations regarding Respondents’ lack of trademark registrations and alleged lack of action with respect to developing any secondary meaning of the mark are irrelevant because Respondents are not required to use the term as a mark at all.
(d) Respondents argue that Complainant’s attempt to meet its burden by constructing a claim of abandonment is unsupported and spurious. Respondents re-assert that they have provided evidence of their rights in and continued use of the Domain Names and the mark, and that they have not abandoned such use.
(e) Respondents assert that Complainant “advances the sham argument” that Respondents’ registration of was in bad faith without citing any authority, and further notes that Complainant characterized Respondents’ registration in 1996 as being “reasonable.”
(f) Respondents assert that they have not engaged in a pattern of holding domain names to prevent others from using them.
(g) Respondents assert that the parties are not competitors—Respondents’ business is construction of patios and decks, while Complainant builds and runs websites and “apps.” Further, Respondents assert that the parties never had any direct dealings aside from Complainant’s solicitations to purchase the Domain Names.
(h) Respondents argue that there has been no customer confusion between Clough Construction and Complainant, and assert that Complainant’s alleged evidence of confusion (the client letter) is not actually reflective of customer confusion.
(i) Respondents allege that Complainant’s mark is neither famous nor very strong, and note that Complainant has not established secondary meaning, has spent “paltry” amounts on advertising, and has provided insufficient basis to show that its new client growth is significant. Respondents further dispute Complainant’s various exhibits purporting to have current web presence and fame.
(j) Respondents assert that: Complainant must prove that the Domain Names were both registered in bad faith and used in bad faith; Complainant’s argument regarding registration of the Domain Names in “personal capacity” is illogical and inconsistent, pointing to Complainant’s own registration of under the personal name of Andrew Etemadi; Complainant’s argument regarding confusing similarity between Respondents’ use of an eye icon on and Complainant’s design mark must fail, both because Complainant abandoned its design mark and because the designs are neither similar nor confusingly similar; Complainant has offered no evidence that it provides social networking services, as claimed; and there are many instances of third party use of the identical or nearly identical mark, as well as domain names using the mark.
(iv) Respondents urge the Panel to find Reverse Domain Name Hijacking (RDNH), citing Complainant’s falsely claimed federal registrations, Complainant’s failure to send notice or copy of the Complaint to either of Respondents’ attorneys, Complainant’s refusal to agree to an extension to respond to this Complaint, and the alleged general weakness of Complainant’s evidence. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; (2) the respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Applications by themselves do not confer any enforceable trademark rights. See Edible Brands, Inc. v. Stefan Schinzinger c/o Schinzinger Kellman, NAF Claim No. 1246518. The Panel therefore declines to hold that Complainant’s applications confer any rights as against Respondents.
It is well established that registering a mark with a trademark authority is one way to demonstrate having rights in said mark under Policy paragraph 4(a)(i). See Metropolitan Life Insurance Company v. Robert Bonds, NAF Claim No. 0873143. Here, Complainant is owner of the EYEMAGINE trademark registration, US Reg. No. 3721736, a design mark, filed May 8, 2009 and registered on December 8, 2009.2
Respondents argue that Complainant’s design mark has been abandoned. The Panel declines to so hold in this case. While the evidence provided by Respondent does demonstrate that Complainant has been using a logo that may be materially different from the registered design mark, this is insufficient to establish that Complainant abandoned the prior mark. The Panel thus finds that Complainant has demonstrated that it has rights in the mark for purposes of these Policy proceedings.
The Domain Name combines two elements—(1) Complainant’s EYEMAGINE mark and (2) the generic top-level domain (“gTLD”) “.com.” Similarly, the Domain Name combines two elements—(1) Complainant’s EYEMAGINE mark and (2) the gTLD “.info.”
Both Domain Names are identical to Complainant’s mark, because the gTLDs “.com” and “.info” are irrelevant for the purposes of a Policy paragraph 4(a)(i) analysis and insufficient to distinguish the domain name from a trademark. See Pomellato S.p.A v. Richard Tonetti,WIPO Case No. D2000-0493 (finding identical to the complainant’s mark because the generic top-level domain “.com” after the name POMELLATO is not relevant); The Federation of Gay Games, Inc. v. Cary H. Hodgson and Gary Scanlon,WIPO Case No. D2000-0432 (finding that the domain name is identical to the complainant’s registered trademark GAY GAMES). B. Rights or Legitimate Interests
Complainant must first make a prima facie case that Respondents lack rights or legitimate interests in the domain name under Policy paragraph 4(a)(ii), and then the burden shifts to Respondents to show they have rights or legitimate interests in the Domain Names. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Claim No. 0741828. Under Policy paragraph 4(c), legitimate interests in domain names may be demonstrated by showing that: (i) before any notice of this dispute, respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; (ii) respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or (iii) respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue.
Here, Complainant cursorily alleges that Respondents have never used the Domain Names in connection with a bona fide offering of goods and services. The evidence Complainant offers is scant or irrelevant.
With respect to , Complainant argues that Respondents failed to register a mark or “develop secondary meaning of the mark in association with Respondent.” However, Complainant offers no legal basis from which to conclude that Respondents must use the Domain Name as a mark. Complainant also asserts without apparent legal basis that Respondents “abandoned” the Domain Name. Complainant attempts to construct its abandonment argument by first admitting that Respondents used the mark in conjunction with their construction business as late as March 2003, and then attempting to establish that the mark was never again used on the Domain Name. To do so, Complainant offers a limited number of historical screenshots from the WaybackMachine Internet Archive in the attempt to suggest a comprehensive timeline. Even if there were some legal basis for Complainant’s abandonment arguments, the Panel notes that such evidence—due to its inherent incompleteness—would likely be insufficient.
With respect to , Complainant argues that the Domain Name has been in existence for only two years and is substantially unused, amounting to nothing more than an “elaborate parking page.” The evidence that Complainant provides to the Panel, however, indicates that Respondents made preparations to develop a business that could logically be marketed under the Domain Name—in this case, an “international spiritual directory and eCommerce site” as termed by the Respondents. This supports a finding that Respondents have a legitimate interest in the Domain Name. See PRIMEDIA Special Interest Publications Inc. v. John L. Treadway, WIPO Case No. D2000-0752 (making “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” is sufficient to constitute a legitimate interest).
All remaining evidence Complainant provides on Respondents’ lack of legitimate interests—a purported inconsistency between registrants for and , unsupported assumptions about Respondents’ business or marketing plan, the unsupported assertion that “the average reasonable person […] would not use the search term ‘eyemagine’” to locate construction company webpages, the alleged absence of any mention of the mark in “Youtube” videos where Respondent Clough and her husband discuss Clough Construction, the inclusion of a John Lennon song “apparently without any copyright acknowledgement or other basis of fair use,” etc.—is circumstantial at best, and not persuasive.
The Panel thus holds that Complainant has not established a prima facie case under paragraph 4(a)(ii) of the Policy.
Even if the Panel were to hold that Complainant established a prima facie case, the Panel notes that Respondents have provided sufficient evidence to establish that before any notice of this dispute, Respondents used (in the case of ), or demonstrably prepared to use (in the case of ), the Domain Names in conjunction with a bona fide offering of goods or services. As noted supra, Respondents began using (and the EYEMAGINE mark) in conjunction with its patio and deck construction business in 1996—an assertion that was initially established by Complainant (Complaint at pages 6-7). This is seven years prior to any rights in the mark claimed by Complainant, and thus well before notice of the dispute.
The same can be established for the Domain Name. As noted supra, Respondents and Complainant alike have provided evidence that Respondents “demonstrably prepared to use” the domain name for a social networking website. Complainant and Respondents agree that the Domain Name was registered and set up as an under-construction website in April 2010, prior to any actual contact between the parties (which appears to have taken place in September 2010). Despite Complainant’s unsupported allegations to the contrary, the Panel finds persuasive Respondents’ declaration that the Domain Name was registered prior to Respondents’ familiarity with Complainant or Complainant’s claims.
Therefore, the Panel holds that Respondent has demonstrated a legitimate interest in the Domain Names under Policy paragraph 4(c)(i). C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith may be determined by evaluating four (non-exhaustive) factors set forth in paragraph 4(b) of the Policy: (i) circumstances indicating that the registrant has registered or 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 the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location.
With respect to the Domain Name, Complainant is unable to establish the first factor (as Complainant did not exist at the time of registration), second factor (for the same reason), or third factor (for the same reason). To the extent Complainant attempts to establish bad faith registration and use through the fourth factor, the Panel finds the offered evidence unpersuasive. The Panel in particular notes that the Domain Name is used for Respondents’ patio and deck construction business. Complainants’ website and application development business is wholly different, and notwithstanding Complainant’s single item of evidence purportedly establishing customer confusion—a client letter that only suggests that Internet users may mistakenly arrive at the Domain Names in a search for Complainant—there is no indication that customers are actually confused with respect to the website’s affiliation with Complainant, nor is there any indication that Respondents are attempting to take advantage of this mistake under Policy paragraph 4(b)(iv). See Mule Lighting, Inc. v. CPA, NAF Claim No. 0095558 (finding no bad faith where the respondent has an active website that has been in use for two years and where there was no intent to cause confusion with the complainant’s website and business).
With respect to the Domain Name, Complainant’s arguments shift to loosely orbit the contention that Respondents’ purpose in acquiring was to gain leverage over Complainant in relation to . In particular, Complainant argues that bad faith is demonstrated because: (1) it is “highly likely” that Respondents had notice of this dispute at the time of registering ; (2) Respondents use an “icon of a human eye adjacent to the word,” purportedly similar to Complainant’s design mark; (3) Respondents use as a “social network” webpage, which constitutes commercial activity that is “substantially closer to Complainant’s eCommerce business” and renders Respondents’ company as a competitor to Complainant.
The Panel declines to hold that Respondents had notice of the dispute at the time of registering the Domain Name. In response to Complainant’s argument that Respondents had constructive notice of its marks due to its pending trademark registrations, the Panel notes that constructive notice without any indication of actual knowledge has been held to be insufficient for a finding of bad faith, at least without more evidence suggesting that the mark is famous. See National Patent Services Inc. v Jay Bean c/o MDNH, Inc., NAF Claim No. 1071869 (“[C]onstructive notice does not support a finding of bad faith registration”). And, again, the evidence that Complainant provides to characterize Respondents’ registration of as suspicious—repeated references to a purportedly years-long hiatus from using the mark and the fact that registration of took place four months after Complainant’s first service mark issued—is circumstantial at best, and unpersuasive. The Panel is similarly not persuaded by Complainant’s claims of having a prominent and famous mark, given the evidence offered. Thus Respondents’ contention that it was not familiar with Complainant because it operated in a different field of business is plausible, and indeed convincing.
Accordingly, the Panel holds the following: Complainant is unable to establish the first factor (as Respondents did not have actual notice of Complainant or Complainant’s claims at the time of registration), second factor (for the same reason), or third factor (for the same reason). To the extent Complainant attempts to establish bad faith registration and use through the fourth factor, the Panel again finds the offered evidence unpersuasive. In particular, the Panel notes that (1) Respondents’ “social network” webpage is easily distinguishable from Complainant’s web development services and thus customer confusion is unlikely, (2) Complainant’s claims that Respondents are now competitors to web and mobile application development companies is at best a logical stretch, and (3) Complainant’s objections to Respondents’ use of an “icon of a human eye” adjacent to the mark seem, at face value, disingenuous, as both Complainant’s design mark and the distinct logo prominently featured on Complainant’s current website are easily differentiable from Respondents’ use of the “icon of a human eye.”
Accordingly, the Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy paragraph 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, NAF Claim No. 0406512 (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy paragraph 4(a)(iii)); see also Graman USA Inc. v. Shenzhen Graman Industrial Co., NAF Claim No. 0133676 (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Because the Panel finds that the Respondents have not violated any of the factors listed in Policy paragraph 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy paragraph 4(a)(iii), the Panel finds that Respondents have not registered or used the Domain Names in bad faith. See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG,WIPO Case No. D2001-0916 (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech. Ltd, supra. D. Reverse Domain Name Hijacking
Respondents have requested a finding of Reverse Domain Name Hijacking (“RDNH”).
Paragraph 15(e) of the Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at [RDNH] 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.” RDNH is defined under the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name.” See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) paragraph 4.17. The respondent bears the burden of demonstrating that a complainant brought a complaint in bad faith. Id. “WIPO panels have declined to find [RDNH] in circumstances including where: . . . the complainant’s argument under a required element of the UDRP fails, but not by such an obvious margin that the complainant must have appreciated that this would be the case at the time of filing the complaint.” Id.
“[A] finding of [RDNH] is warranted if the Complainant knew or should have known at the time it filed the Complaint that it could not prove one of the essential elements required by the Policy. . . . [S]uch a finding is particularly appropriate where the Respondent’s registration of the domain name predates the very creation of the Complainant’s trademark.” Limited v. Alton L. Flanders,WIPO Case No. D2004-0047 citing Futureworld Consultancy (Pty) Limited v. On-line Advice,WIPO Case No. D2003-0297. Ordinarily if the face of the complaint itself demonstrates a settled reason why the complaint must be denied, a panel may make a finding of RDNH. See Liquid Nutrition Inc. v./Vertical Axis Inc.,WIPO Case No. D2007-1598 (finding RDNH where the complainant alleged its first use of the mark was four years after the domain name had been registered). However, a finding of RDNH is always within the panel’s discretion. See Rudy Rojas v. Gary Davis,WIPO Case No. D2004-1081 (finding that the facts justified RDNH but panel determined “to leave the parties as it found them” because both parties made misrepresentations to the panel).
In this case, there are several indications that Complainant was acting in bad faith. Given the record, it strains credulity that Complainant did not know or should not have known that it could not establish Respondents’ lack of legitimate interests or Respondents’ bad faith registration and use for at least one of the Domain Names. The Panel, in particular, notes:
(1) For the Domain Name, the several-year gap between Respondents’ domain name registration year (1996), Complainant’s earliest filing year for its mark registrations (2009), Complainant’s earliest “use in commerce” year for its mark registrations (2003), and the year in which Complainant allegedly acquired common law rights in the mark (2003)—Complainant clearly should have known that Respondents’ registration of pre-dated any claims in the mark Complainant might have had.
(2) For the Domain Name, Complainant itself cited Respondents’ use of the mark and Domain Name in conjunction with the deck and patio construction business several years prior to any rights that Complainant purports to have acquired.
(3) To the extent that Complainant believed it might establish registration in bad faith for the Domain Name on a constructive notice theory, Complainant should have known that UDRP panels have required that bad faith be predicated on actual notice by respondent absent more evidence that the mark is famous (see WIPO Overview 2.0, paragraph 3.4).
(4) To the extent that Complainant believed it could convince the Panel to depart from requiring bad faith registration and use conjunctively—on the theory that Respondents were relying upon an initial good faith registration to use a domain name in bad faith with impunity—Complainant clearly should have known that, at minimum, it would need to bring evidence of Respondents’ abuse. The sole evidence Complainant appears to have brought is Respondents’ general unresponsiveness to the bargaining tactic of offering the same amount of money to purchase the Domain Names three times.
It is no excuse that Complainant may not be familiar with clear Policy precedent, the Policy, or the Rules. 7. Decision
For the foregoing reasons, the Complaint is denied. Additionally, for the foregoing reasons, the Panel finds that Complainant engaged in Reverse Domain Name Hijacking.
Michael A. Albert
Sole Panelist
Date: February 14, 2013
1 The evidence provided for this assertion is an unpublished bar graph with no label for either axis. It appears that Eyemagine Technology LLC has expanded its clientele from ~10 to ~120 since 2008.
2 The Panel notes that the character mark EYEMAGINE, US Reg. No. 4241070, does not appear to be owned by Complainant; per the Annexes of both Complainant and Respondent, the owner and registrant of the mark is listed as Eyemagine Technology LLC, the company for which, per the filed Complaint, Complainant is founder and chief technology officer.
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