Complainant is WowWe, Inc. of The Woodlands, Texas, United States of America, represented by Lewis & Barnes, United States of America.
Respondent is Aleris B. Altman, of Cedarhurst, New York, United States of America (“U.S.”). 2. The Domain Name and Registrar
The disputed domain name is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 29, 2013. On May 29, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 29, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 31, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 20, 2013. The Response was filed with the Center on June 18, 2013.1
The Center appointed Jeffrey M. Samuels as the sole panelist in this matter on June 25, 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 WowWe, Inc. owns U.S. Trademark Registration No. 4057342 for the mark WOWWE, as used in connection with the “provisioning of video conference services, electronic mail services, and video messaging services”. The registration issued on November 15, 2011, based on an application that was filed with the United States Patent and Trademark Office on August 23, 2010. The registration certificate indicates that the mark was first used in commerce on September 1, 2011. (See ¶13 of the Complaint referring to link to site from which information relating to the registration may be obtained.)
The disputed domain name, , was registered on August 24, 1999. 5. Parties’ Contentions A. Complainant
Complainant asserts that the disputed domain name is identical to the WOWWE mark.
Complainant further maintains that Respondent has no rights or legitimate interests in the disputed domain name. Complainant contends that there is no evidence of Respondent’s use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services. In this regard, Complainant indicates that “has been and continues to be used by the Respondent merely as an advertising placeholder, targeting keywords attributable to the Complainant’s business and related industries in a means to misleadingly divert consumers.” Annex 4 to the Complaint consists of a screenshot of the website at , taken May 21, 2013, showing what appears to be a picture of a baby girl doll on the right side of the screen and a list of related searches going down the left side of the screen. The related searches are to “Scrap a Car,” “Buying a Mattress,” “Find a Vehicle,” “A Photo Editor,” “A Chat Room,” “Carreras a Distancia,” “A Dictionary,” “Start a Business,” “Buy a Battery,” “Livret A,” and “Send a Text.”
Complainant also contends that Respondent has not been commonly known by the disputed domain name and is not making a legitimate, noncommercial or fair use of the domain name.
With respect to the issue of “bad faith” registration and use, Complainant asserts that the disputed domain name was registered for the purpose of selling the domain name registration to Complainant for valuable consideration in excess of Respondent’s out-of-pocket costs. Complainant contends that, on multiple occasions over recent months, Complainant contacted Respondent to determine the nature of the registration as well as its intended use. Complainant made offers in excess of several thousand dollars in order to obtain the disputed domain name, but all such offers were rejected.
Complainant indicates that Respondent owns other domain names, including , , and , that he does not conduct any legitimate business with. “Complainant believes such websites exist only to produce advertising revenues by attracting consumers at the expense of legitimate businesses with similar names.”
Finally, Complainant declares that Respondent has intentionally attempted to attract consumers for commercial gain to Respondent’s website, by creating a likelihood of confusion with Complainant’s mark and business trade name, services, and reputation. “Consumers, upon reaching the Respondent’s website, are not made aware of the source, sponsorship, affiliation, or endorsement of and are confused. Consumers click the randomly or deliberately generated keyword advertisements, generating revenue for the Respondent at the expense of the reputation and branding efforts of the Complainant.” B. Respondent
In the Response, Respondent notes that he has been the owner of the disputed domain name since August 24, 1999, has never set up a cybersquatting business, and has worked to create a number of sites catering to consumers since the late nineties. According to Respondent, “[t]he fact that the complainant registered a trademark for the name wowwe on August 23rd 2010 approximately 11 years after I purchased the generic term, should not give them the right to take the URL away from me, that is just daylight robbery”.
Respondent further asserts that he has never sold any names, even though he regularly receives offers, and that he agreed, when approached by those who he felt had a legitimate right to a domain name he owned, to transfer such name. The domain names and are among the domain names he has transferred.
Respondent indicates that as soon as he received the Complaint in this matter, he received two emails from Complainant’s counsel in which they apparently offered Respondent USD 4,500 to USD 7,000 “to defend me from such frivolous complaints”. Respondent asserts that he has “never solicited anyone or any corporation trying to sell them any domain name that is why in the 14 years since owning domain names no one has pursued me to claim that I have stolen their name or that I have tried to solicit monies from them to return their name”.
Respondent also points out that he never received a dime from the registrar in this case as a result of the use of the disputed domain name and that he hopes to develop each and every domain name he owns. “The fact that it takes time is testimony to the fact that I am a legitimate businessman who has tried to work with a few domains at a time as I try to develop them.” Respondent notes that he was a partner at ICES LLC in the late nineties and into early 2001, “where we owned and developed 48 web based companies” and that “each of our companies offered legitimate products and services…” 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that the disputed domain name, , for all intents and purposes, is identical to the WOWWE trademark. The disputed domain name incorporates in full the trademark, adding only the generic top-level domain “.com”.
The evidence further establishes that Complainant, through its ownership of a U.S. registration in the WOWWE mark, as well as its use of such mark, has rights in the WOWWE trademark. B. Rights or Legitimate Interests
The Panel holds that Complainant, on balance, has met its burden of establishing that Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has established a prima facie case, which the Respondent did not rebut with appropriate allegations or evidence of rights or legitimate interests in the disputed domain name. The evidence indicates that the disputed domain name, which as noted above is identical to Complainant’s mark, is used in connection with a parking page from which various searches may be conducted. Nothing in the evidence allows the Panel to conclude that the disputed domain name is used in connection with a bona fide offering of goods or services. Nor is there any evidence that Respondent is commonly known by the domain name or is making a legitimate, noncommercial or fair use of the domain name. C. Registered and Used in Bad Faith
The Panel concludes that the evidence does not support a determination that the disputed domain name was registered in bad faith. The evidence clearly indicates that the disputed domain name was registered by Respondent more than 12 years before Complainant was issued its U.S. registration for the WOWWE mark. The evidence further establishes that Complainant did not use the WOWWE mark until September 2011, which is also more than 12 years after registration of the disputed domain name. Thus, Complainant’s registration and common law trademark rights long postdate the registration of the domain name. As noted in the WIPO Overview 2.0, paragraph 3.1, and the cases cited therein, “when a domain name is registered by the respondent before the complainant’s relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant’s then non-existent right.” While there are certain exceptions to this principle, e.g., where the domain name is registered shortly before or after a merger between companies but before any new trademark rights have been created or where the potential mark is the subject of substantial media attention, there is no evidence that any of the recognized exceptions is applicable in this case.
Moreover, contrary to Complainant’s assertion, the evidence does not establish that Respondent registered the disputed domain name in order to sell it to Complainant. The evidence on this issue establishes that Complainant’s counsel first approached Respondent with offers to purchase the disputed domain name. Under the facts of this case, Respondent was perfectly within its rights in refusing to accept such offers. 7. Decision
For the foregoing reasons, the Complaint is denied.
Jeffrey M. Samuels
Sole Panelist
Date: July 9, 2013
1 On July 8, 2013, the Center forwarded to the Panel email correspondence between the parties dated July 5 and 6, 2013, as well as correspondence between Respondent and the Center, dated July 7 and 8, 2013. On July 9, 2013, Complainant objected to consideration of the email correspondence by the Panel on the basis it was privileged settlement communications, citing Rule 408 of the U.S. Federal Rules of Evidence. On the same date Respondent replied to Complainant’s objection. As noted in the Center’s July 8, 2013 email to Respondent, the Rules make no express provision for supplemental filings, except in limited circumstances, none of which is applicable in this case. Exercising its discretion under Paragraphs 10 and 12 of the Rules, the Panel declines to consider the content of the parties’ email exchange in reaching its decision in this matter. Although the admissibility of these later communications are not considered in this case, the Panel notes that the admissibility of such communications has been previously considered at length by UDRP panels, see McMullan Bros., Limited, Maxol Limited, Maxol Direct Limited Maxol Lubricants Limited, Maxol Oil Limited Maxol Direct (NI) Limited v. Web Names Ltd,WIPO Case No. D2004-0078, and paragraph 3.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
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