The Complainant is Pro Quidity B.V. of Amsterdam, the Netherlands, represented by Klos Morel Vos & Schaap, the Netherlands.
The Respondents are Domains By Proxy LLC of Scottsdale, Arizona, United States of America and Nicholas Hall, Hall Attorneys, P.C. of Houston, Texas, United States of America, represented by Hall Attorneys, P.C., United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 9, 2014. On May 9, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 13, 2014, 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 Center sent an email communication to the Complainant on May 14, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 23, 2014.
The Center verified that the Complaint together with 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 May 27, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 16, 2014. Upon request from the Respondent, the Center extended the due date for Response to June 19, 2014. The Response was filed with the Center on June 19, 2014.
The Center appointed Andrew Brown Q.C. as the sole panelist in this matter on July 1, 2014. 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 Complainant company was incorporated on February 3, 2014, and is a subsidiary of the Dutch company, Transparent B.V., which operates in the field of financial data analysis.
The disputed domain name was registered by the Respondent on February 2, 2014 through a privacy proxy registration service. As a result, the true identity of the Respondent cannot be viewed publicly, and was disclosed to the Complainant in the course of this proceeding. There is no evidence of any use being made of the disputed domain name to host web content (beyond a parking page).
Evidence shows that the Respondent first registered on November 26, 2008, and that in April, May and December 2009 the Respondent used that earlier registration as an email domain in correspondence with a United States Government official and a web developer. The Respondent’s initial registration of was cancelled or lapsed on a date prior to February 8, 2011. No reason for this was given by the Respondent in its response. The Respondent then once again registered the disputed domain name some three years later. This second registration is the subject of this dispute.
Evidence shows that the Complainant wrote to the privacy proxy registration service for the disputed domain name on February 25, 2014 enquiring as to whether the disputed domain name was for sale. That enquiry was apparently communicated by the privacy proxy service to the Respondent. There is no evidence of any response by the Respondent to that email.
On April 3, 2014 the Complainant filed an application for the Benelux trademark PRO QUIDITY (954609) for services in classes 35, 36 and 45 (now registered).
There are two formal Respondents to this proceeding: Domains By Proxy LLC and Nicholas Hall. Domains By Proxy LLC is the privacy proxy registration service behind which Nicholas Hall, Hall Attorneys, P.C. registered the disputed domain name. The Panel hereafter will refer to Nicholas Hall, Hall Attorneys, P.C. as the Respondent for the purposes of this decision. 5. Parties’ Contentions A. Complainant
The Complainant states that its parent, Transparent B.V., recently developed a new service for the display and payment of invoices by way of a web portal. It says the Complainant subsidiary company was incorporated for the purposes of marketing that new service.
It further states that on dates not specified by the Complainant, but prior to February 3, 2014, Transparent B.V., after consulting a marketing strategist, decided to name the new service either “Quid Pro” or “Pro Quidity”. The names were, it is contended, circulated in Transparent B.V.’s office, and Pro Quidity was decided upon.
The Complainant asserts that it has satisfied the three elements of paragraph 4(a) of the Policy and requests that the disputed domain name be transferred to it. In respect of the first element of paragraph 4(a), it asserts that the disputed domain name is identical or at least confusingly similar to the Complainant’s Benelux registered trademark. In respect of the second element, it contends that it has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name on the following basis:
(a) The Respondent does not run any business under the name Pro Quidity;
(b) Nor is there any evidence that the Respondent is making legitimate commercial or noncommercial use of the name Pro Quidity; and
(c) The Respondent is not using the disputed domain name for the offering of bona fide goods and/or services, as the website linked to the disputed domain name is not active.
In respect of the third element of paragraph 4(a) of the Policy (registration and use in bad faith), the Complainant’s primary contentions are that:
(a) The name Pro Quidity was made known only to people directly involved with Transparent B.V. (namely employees and/or people visiting its office). Therefore, only a select group of people could have had knowledge of the name.
(b) The disputed domain name was registered immediately after the name Pro Quidity was selected as one of two options for the new service. It contends that there is no evidence of anyone other than the Complainant using the name Pro Quidity for any kind of service (including the Respondent).
(c) Numerous panels have found such circumstances to be a clear indication that the registration of a disputed domain name was made in bad faith. In this regard the Complainant relies on Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc), WIPO Case No. D2003-0320.
(d) Registration of the disputed domain name by the Respondent through a privacy proxy service further adds to the conclusion that the disputed domain name was registered in bad faith.
(e) In relation to use in bad faith, the Complaint points to lack of active use by the disputed domain name and submits that passive holding of a domain name may be sufficient to constitute bad faith, taking into account the overall context of the Respondent’s behaviour.
(f) The circumstances surrounding registration (which indicate bad faith) must lead to the conclusion that the disputed domain name is being used in bad faith as well. B. Respondent
The Respondent contends that the Complainant has not satisfied the second and third elements of paragraph 4(a) of the Policy. It contends that the Panel should not only deny the relief sought by the Complainant but also declare that it has committed reverse domain name hijacking under the terms of the UDRP.
As to the second element of paragraph 4(a) of the Policy, the Respondent contends that the Complainant has not made out a prima facie case showing that the Respondent has no rights or interests in , or if a prima facie case has been made out, the Respondent has refuted that in evidence. It relies primarily on the evidence that the Respondent used the disputed domain name as an email domain as early as May 2009 in communicating with United States government officials, and also with a web developer. The Respondent states that the communication with the web developer concerned the Respondent’s “Prolific Liquidity” venture. It states that it was in the process of developing an investor-focused trading website at the time the Complaint was filed, and that since then the disputed domain name has been frozen in escrow, so it has been unable to proceed with development.
As to the third element of paragraph 4(a) of the Policy (bad faith), the Respondent submits (broadly) that it independently arrived at the disputed domain name by contracting two commonly used terms (i.e. “prolific” and “liquidity”) and says that it first contracted these terms in 2008. It says the reason for its decision to register the disputed domain name using a privacy proxy registration service to conceal its identity was to protect its proprietary business model. It states that it wished to remain anonymous prior to officially announcing its business operations. It submits that there is nothing criminal, fraudulent, reckless or negligent about this. It points again to its use of the disputed domain name since 2008, and contends that this is valid use sufficient to refute an allegation of use in bad faith. It also states that it continues to develop a website for use together with the disputed domain name.
Finally, the Respondent contends that the Complaint amounts to reverse domain name hijacking, on the following basis:
(a) The Complainant’s actions (in filing the Complaint) were unwarranted because it did not make a good faith effort to determine the veracity of its claims prior to the initiation of the proceeding.
(b) The Respondent states its belief that the Complainant, being an entity formed by the data mining company, Transparent Group B.V. and backed by the River Rock European Opportunities Fund, is relying upon the notoriety of its backers and the expediency of this proceeding to improperly acquire .
(c) Rather than acting in good faith, the Complainant is using the UDRP as a weapon to bully, intimidate, and ostensibly steal from the Respondent. 6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the disputed domain name in order to succeed in this proceeding:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant had registered rights in the trademark PRO QUIDITY by way of its Benelux registered trademark in classes 35, 36 and 45 filed on April 3, 2014. In line with the consensus of previous Panels, the fact that this trademark was filed after the date of which the disputed domain name was registered does not prevent a finding of identity or confusing similarity, since paragraph 4(a) of the Policy makes no reference to the date on which the Complainant acquired trademark rights.
The Panel accordingly finds that the disputed domain name is identical to a trademark in which the Complainant has rights and finds that the threshold requirement in paragraph 4(a)(i) of the Policy is satisfied in favour of the Complainant. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the disputed domain name, among other circumstances, by showing any of the following elements:
(i) that before notice of the dispute, the Respondent used or made demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) that the Respondent has been commonly known by the disputed domain name, even if it had acquired no trademark or service mark rights; or
(iii) that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name lies with the Complainant.
The Panel finds that the Respondent has demonstrated legitimate interest in the disputed domain name before both registration of it and any notice of the dispute.
The Respondent has provided evidence of:
(a) emails between Mr. Nicholas Hall to the Texas Board of Law Examiners dated May 8, 2009 using the email address “[…]@”;
(b) emails from a Mr. J. Siegel and others on December 22, 2009 in which Mr. Hall uses the email address “[…]@”.
Although this evidence related to use of an earlier registration of the domain name which was cancelled or lapsed on a date prior to February 8, 2011, it nonetheless shows active use of that domain name for email purposes. Further, the domain name is identical to the disputed domain name registered on February 2, 2014.
The Respondent contends that it was in the process of developing its “investor focused trading website at the time the Complaint was filed”. No actual evidence of that assertion was provided but the Panel does note that the earlier emails provided from December 22, 2009 did concern the costs and specifications of “Nick’s website”.
Although it might be said that there was a substantial delay between 2009 and 2014 in developing the website, there is nonetheless clear evidence of both use of the disputed domain name (in its earlier incarnation) and demonstrable preparations to develop the website.
In these circumstances the Panel is satisfied that the Respondent has shown rights and legitimate interests in the disputed domain name. As a result, the Panel finds that the Complainant has not established the second element of the Policy. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, are evidence of the registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain name; or
(ii) that the Respondent has registered the disputed 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 Respondent has engaged in a pattern of such conduct; or
(iii) that the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location.
In light of its finding that the Complainant has not satisfied the burden required under the second element of paragraph 4(a) of the Policy, it is not strictly necessary for the Panel to make a determination as to the Complainant’s contentions under the third element.
However for completeness, the Panel finds that the allegation of registration and use in bad faith is not established.
In particular, the Panel notes that there is no evidence that there was any awareness by the Respondent of the Complainant or its trademark rights prior to the Respondent’s registration of the disputed domain name. Indeed, the Complainant’s registered trademark was filed after registration of the disputed domain name. Further, the Complainant’s evidence is that the process by which it arrived at the trademark PRO QUIDITY took place internally in the offices of the Complainant.
The Panel records that it does not find the decision relied on by the Complainant as supporting its allegation of bad faith of assistance. The panel in Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc), supra, made a finding of bad faith despite the registered trademark relied on post-dating the registration of the disputed domain name. However in that case:
- The disputed domain name was closely similar to the complainant company name, and the complainant company was incorporated prior to the registration of the disputed domain name.
- The complainant was a state-run casino established in Korea under a special law and the panel considered that the respondent, a Korean national allegedly in the casino business, must have known of the complainant’s reputation.
These circumstances are quite different from the present case where there is no evidence that the Respondent was aware of the Complainant or its decision to adopt the trademark PRO QUIDITY at the time of registration of the disputed domain name.
As a result, the Panel finds that the Complainant has not established the third element of the Policy. D. Reverse Domain Name Hijacking
Paragraph 15(e) of the UDRP 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 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”. Reverse Domain Name Hijacking is defined under the UDRP Rules as “using the [UDRP] in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
UDRP Panels have found that the onus of proving the complainant bad faith in such cases is generally on the respondent, whereby a mere lack of success of the complaint is not itself sufficient for a finding of reverse domain name hijacking. To establish reverse domain name hijacking, the respondent typically needs to show knowledge on the part of the complainant of the complainant’s lack of relevant trademark rights, or of the respondent’s rights or legitimate interests in, or lack of bad faith concerning, the disputed domain name.
In the present case the Panel has already found that the Complainant has trademark rights in the disputed domain name sufficient to satisfy the threshold requirement under paragraph 4(a) of the Policy.
Further, the Complainant cannot have known of the evidence on which the Respondent primarily relied to successfully satisfy the Panel that it had rights or legitimate interests in respect of the disputed domain name. That evidence amounted to emails sent between the Respondent and United States Government Officials and a web developer in 2009 is not publicly available. Furthermore, the Complainant is unlikely to have known of the Respondent’s business venture which the Respondent’s evidence shows was not publicly announced prior to the date of the Complaint, and which indeed the Respondent took steps to keep secret prior to launch by way of its use of a privacy proxy registration service.
There is no evidence that the Complainant was aware of these matters. The Panel therefore considers that the claim does not amount to reverse domain name hijacking.
For the foregoing reasons, the Complaint is denied, and the Respondent’s contention that reverse domain name hijacking has occurred, is also denied.
Andrew Brown Q.C.
Sole Panelist
Date: July 14, 2014
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