The Complainants are Verb Products Inc. of New York, New York, United States of America; Verb Hair Products Canada Inc. of Quebec, Canada; and Moroccanoil Israel Ltd. of Rishon Lezion, Israel (collectively referred to as the “Complainant”), represented by Conkle, Kremer & Engel, PLC, United States of America.
The Respondent is Richard Bloxham of Pocatello, Idaho, United States of America, represented by John Berryhill, Ph.D., Esq., United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2014. On June 16, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 16, 2014, 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.
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 June 25, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 15, 2014. The Response was filed with the Center on July 15, 2014.
The Center appointed Dana Haviland, Robert A. Badgley and M. Scott Donahey as panelists in this matter on August 15, 2014. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The word “verb” included in the Respondent’s Domain Name and in the Complainant’s asserted VERB trademark is a dictionary term, whose principal meaning is as a grammatical term for a word or part of speech expressing an action, occurrence or state of being. See, e.g., the Merriam-Webster Online Dictionary definition of “verb” at “”: “grammar: a word (such as jump, think, happen, or exist ) that is usually one of the main parts of a sentence and that expresses an action, an occurrence, or a state of being”).
The Domain Name registration was created on April 29, 2002 and was transferred from the original owner to the Respondent in November 2002, according to the WhoIs records. As alleged in the Complaint and acknowledged by the Respondent, the Respondent owns many domain names from which he receives revenues from advertising links and domain name sales.
The Domain Name website has been used by the Respondent for pay-per-click (PPC) advertising links, from which the Respondent earns revenue, but these PPC links do not include links related to hair care products of the Complainant or its competitors, as evidenced by the screenshot submitted by the Complainant as an exhibit to the Complaint, and as confirmed by the Respondent in the Response.1 There is no allegation by the Complainant, nor any evidence, that the Respondent has ever used the Domain Name for PPC links related to the Complainant’s Verb hair care products or those of competitors.
The Complainant, a group of three companies in the United States, Canada and Israel, sells hair care products worldwide, principally through hairstylists in hair salons around the world. It is clear that the Complainant had no registered or unregistered trademark rights with respect to the word “verb” at the time of registration of the Domain Name in 2002 or for nine years thereafter.
Since 2011, the Complainant has used the word “verb” in its business names and product names in connection with the marketing and sale of its hair care products in the United States and Canada, and online on its “” website. The Complainant has submitted a list (but no documentation) purporting to show pending trademark applications for the word mark VERB in many countries, all filed in December 2013 or thereafter and listed as owned by one of the three companies listed as individual Complainants in the Complaint. This list also includes (again without any documentation) a reference to a United States trademark registration, No. 3986622, for a VERB word mark issued on June 28, 2011, and listed as owned by Verb Products LLC, which is not one of the three companies listed as Complainants in this proceeding. 5. Parties’ Contentions A. Complainant
The Complainant asserts that the Domain Name is identical or confusingly similar to a trademark in which it has rights, that the Respondent has no rights or legitimate interests in the Domain Name, and that the Respondent registered and used the Domain Name in bad faith. The Complainant requests transfer of the Domain Name. B. Respondent
The Respondent contends that the Complainant has not shown evidence sufficient to prove any of the three elements of its claim for transfer of the Domain Name. The Respondent requests that the Complaint be denied and that the Panel find that the Complaint was brought in bad faith and constitutes Reverse Domain Name Hijacking. 6. Discussion and Findings
Under the Policy, paragraph 4(a), in order to prevail, a complainant must prove the following three elements of a claim for transfer or cancellation of a respondent’s domain name:
(i) that the 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 the domain name; and
(iii) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complaint does not allege or show that the Complainant used the alleged VERB mark (hereinafter the “alleged VERB Mark”) in any fashion at the time of registration of the Domain Name in 2002 or for nine years thereafter. Unquestionably the Complainant had no registered or unregistered rights in a VERB trademark at the time of registration of the Domain Name of which the Complainant could have been aware of or upon which he could have intended to capitalize.
Whether or not Johnny-come-lately trademark owners like the Complainant may be able to show rights sufficient to establish the first element of a UDRP claim under paragraph 4(a)(i) of the policy, i.e., at the time of filing of the Complaint, the bad faith registration and use requirements of paragraph 4(a)(iii) of the Policy are generally fatal to their belated claims against prior domain name registrants. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 3.1, cases cited there, and Wildfire, Inc. v. Namebase,WIPO Case No. D2007-1611.
In this case, the Panel considers that the allegations of the Complaint and the evidence submitted by the Complainant are insufficient even to meet the low bar of proving that the Complainant had acquired any unregistered or registered trademark rights in a trademark for the word “verb” by the time of filing of the Complaint on June 14, 2014, as required by paragraph 4(a)(i) of the Policy.
The Complainant alleges that it currently has unregistered and registered trademark rights in the word “verb” for use with its hair care products. According to the Complaint, since 2011, the Complainant has conducted its hair care product business under business names and product names incorporating its alleged VERB Mark, has sold hundreds of thousands of dollars of its Verb products worldwide, and owns numerous trademark applications worldwide for its alleged VERB Mark. An annex to the Complaint sets out a three page list of numerous pending trademark applications for a VERB word mark, purportedly filed in various countries by one or another of the three individual Complainants, beginning in December 2013. The annex does not include any information or evidence as to the use in commerce or the class of goods and services with respect to any of these trademark applications. The list of pending trademark applications also includes a reference to a United States trademark registration, No. 3986622, for a VERB word mark issued on June 28, 2011, and owned by Verb Products LLC, which is not one of the three companies listed as Complainants in this proceeding.
The problem with all these alleged facts, however, is that the Complainant has not submitted any actual evidence proving its acquisition of any unregistered or registered trademark rights in the alleged VERB Mark at any time. No documentation of actual product sales or revenues, the numerous trademark applications, or the sole trademark registration referenced in the Complaint has been submitted.
The Panel therefore finds that the Complainant has failed to prove that it has or had any unregistered or registered rights to a VERB trademark at any time and has thus failed to establish the first element of its claim for transfer of the Domain Name under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following non-exclusive list of circumstances:
(i) before any notice to the respondent of the dispute, the respondent used, or made 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has not acquired trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant asserts that the Respondent is not affiliated with the Complainant in any way, has not been authorized or licensed to use Complainant’s alleged VERB Mark in a domain name or otherwise, is not commonly known by the Domain Name, has not used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods and services, and has not made any legitimate noncommercial or fair use of the Domain Name.
In this regard, the Complainant has alleged, and submitted evidence to show, that the Domain Name is being used as a parking page displaying commercial links, but has not shown that the links are related to hair care products and services, including either the Complainant’s products or those of its competitors. The Complainant argues that the mere fact that the Respondent uses the Domain Name website for pay-per-click links for commercial revenue establishes that the Respondent’s use of the Domain Name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name for purposes of establishing any right or legitimate interest in the Domain Name under paragraph 4(c) of the Policy. The Complaint here cites Lowen Corporation d/b/a Lowen Sign Company v. Henry Chan,WIPO Case No. D2004-0430 (finding bad faith use because respondent used the domain name for sponsored links for businesses in the same field as complainant, i.e., signs); Champagne Lanson v. Development Services/MallP, Inc.,WIPO Case No. D2006-0006 (bad faith use where PPC links on respondent’s domain name website included ads for champagne products from complainant's competitors); and The Knot, Inc. v. In Knot We Trust, LTD., WIPO Case No. D2006-0340 (bad faith use of links because respondent’s PPC links were not related to the dictionary meaning of “knot” but to complainant’s business, marriage). The Complainant further alleges that “the Respondent has failed to develop the website parked at the domain name to serve any legitimate business purpose.”
The cases cited by the Complainant are not on point here, because in each case, as noted above, the panel found that the respondent was using the parking page for links to products like those of the complainant. In this case, the evidence submitted by the Complainant shows that the Respondent is using the Domain Name website for PPC links related to the dictionary meaning of the word in question and not related to the hair care products of the Complainant.
The importance of this distinction was addressed by the panel in The Knot, Inc. v. In Knot we Trust, supra:
“Respondent correctly asserts that it may be legitimate for a respondent to register a domain name consisting of a dictionary word that is not a well-known trademark and use that website to post links that are relevant to the common meaning of the dictionary word. See, e.g., Landmark Group v. DigiM, L.P., [NAF Claim No. 285459]; see also National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424; WIPO Overview 2.0 [paragraph] 2.2. As the Panel explained in the Landmark Group case, though, this business model is legitimate only if ‘the domain names have been registered because of their attraction as dictionary words, and not because of their value as trademarks.’”
Use of a domain name to post pay-per-click links not only may be a permissible good faith use of a domain name in some circumstances; it may even create rights or legitimate interests under the UDRP.
“As an example of such permissible use, where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP, provided there is no capitalization on trademark value... .” WIPO Overview 2.0, paragraph 2.6 and cases cited. See also WIPO Overview 2.0, paragraph 2.2 (“[n]ormally, in order to find rights or legitimate interests in a domain name based on the generic or dictionary meaning of a word or phrase contained therein, the domain name would need to be genuinely used or at least demonstrably intended for such use in connection with the relied-upon meaning (and not, for example, to trade off third-party rights in such word or phrase”). See, e.g., ELK Accessories Pty Ltd. v. Parnaz Farahani / E,WIPO Case No. D2012-0455; Trade Me Limited v. Vertical Axis Inc,WIPO Case No. D2009-0093; CNR Music B.V. v. High Performance Networks, Inc.,WIPO Case No. D2005-1116.
The use of a domain name for third-party advertising is not per se illegitimate under the Policy, provided that the registration was not seeking to take advantage of the complainant’s rights. In The Landmark Group v. DigiM, L.P., NAF Claim No. 285459, the panel held that the complainant had failed to prove that the respondent had no legitimate interest in the domain name in question:
“Respondent alleges that its business model is the registration of large numbers of dictionary words commonly searched by Internet users, and that it generates revenue by providing pay-per-click advertising links related to the generic nature of each site’s domain name. For example, in addition to the generic domain name , Respondent also owns and operates websites such as , , and . As long as the domain names have been registered because of their attraction as dictionary words, and not because of their value as trademarks, this is a business model that is permitted under the Policy.”
The panel in ELK Accessories Pty Ltd. v. Parnaz Farahani / E, supra, held that the evidence established that the respondent had a right or legitimate interest in the domain name, on the following grounds:
“It is well established that a respondent may well have a right to register and use a domain name to attract Internet traffic based solely on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of a complainant (see National Trust for Historic Preservation v. Barry Preston,WIPO Case No. D2005-0424; Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc.,WIPO Case No. D2004-0843; T. Rowe Price Associates, Inc. v. J A Rich,WIPO Case No. D2001-1044; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp.,WIPO Case No. D2001-0031; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047). However, this business model is generally recognized under the Policy as legitimate only if the domain name was registered because of its attraction as a descriptive phrase comprising dictionary words and not because of its value as a trademark and if the website to which the domain name resolves is then used to post links that are relevant only to the common meaning of the phrase comprising dictionary words.”
In Personally Cool Inc. v. Name Administration Inc. (BVI), NAF Claim No. 1474325, the panel held that the respondent had established a bona fide use and legitimate interests in a domain name being offered for sale and being used for PPC advertising links related to the generic meaning of the domain name:
“The Panel finds that the bona fide nature of the Respondent’s use of the disputed domain name is not affected by whether or not the Respondent is interested in selling the disputed domain name or the preferred price. If the Respondent has legitimate interests in the domain name, it has the right to sell that domain name for whatever price it deems appropriate regardless of the value that appraisers may ascribe to the domain name. Nor does the amount of traffic on the site matter; if Respondent chooses to use the domain name for a website with pay-per-click advertising that is related to the generic meaning of the domain name, that is the Respondent’s prerogative; such use is legitimate regardless of whether it is successful. All in all, the Respondent has established its legitimate interests in the disputed domain name pursuant to Policy 4(a)(ii).”
In the instant case, the use of the Domain Name as reflected in the Complainant’s own exhibit of a screenshot of the Domain Name website confirms that the Domain Name is genuinely being used by Respondent in connection with the relied-upon meaning of the dictionary word “verb” and not to trade off any rights of the Complainant in such word, as there are no links shown to hair care products of the Complainant or other third parties.
The Panel therefore finds that the evidence in the record shows that the Respondent has a right or legitimate interest in the Domain Name, and that the Complainant has failed to satisfy the second element of its claim for transfer of the Domain Name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out, by way of example, four circumstances, each of which, if proven, shall be evidence of the registration and use of a domain name in bad faith for the purpose of paragraph 4(a)(iii) 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.
The Complaint sets forth no evidence of bad faith registration of the Domain Name incorporating Complainant’s alleged VERB Mark, because Complainant did not have any registered or unregistered rights in the alleged VERB Mark at the time of registration of the Domain Name, and thus the Respondent could not have known of or intended to trade upon any trademark rights of the Complainant. On the facts of this case, there is zero basis for a finding of bad faith registration of the Domain Name. See WIPO Overview 2.0, paragraph 3.1; Wildfire, Inc. v. Namebase, supra. See also CNR Music B.V. v. High Performance Networks, Inc., supra, where the panel found that the complainant had not established bad faith registration, because “[t]he registration of the domain name appears to have been aimed at exploiting the ability of the word itself to attract Internet users, and not aimed at taking advantage of the Complainant’s reputation or trademark”.
Nor has the Complainant in this case established any bad faith use of the Domain Name by the Respondent. Although the Respondent uses the Domain Name website for a variety of PPC links providing revenue to the Respondent, this use does not include any links to hair care products of either the Complainant or third parties who might be in competition with the Complainant, as the Complainant’s own evidence has established. The Respondent’s use of the Domain Name for a pay-per-click website diverting Internet users to sponsored links for products and services that are not offered by the Complainant or the Complainant’s competitors, in order to generate income for the Respondent, does not constitute evidence of bad faith use of the Domain Name under paragraph 4(b)(iv) of the Policy.
With respect to bad faith registration and use, the Complaint further alleges that “the Respondent has registered approximately 1,660 domain names, as shown in Annex N, which strongly suggests the Respondent has established a pattern of registering domain names for the purpose of generating revenue through similar pay-per-click advertising or by reselling domain names to the owners of corresponding trademarks.”
The Respondent acknowledges in the Response that he has hundreds of domain names from which he derives commercial gain through PPC advertising links and presumably sales revenues. There is no evidence, however, that the Respondent is a serial cybersquatter. The list of domain names submitted by the Complainant as evidence of the Respondent’s alleged ownership of over 1,660 domain names incorporating others’ trademarks, does not help the Complainant since only 50 domain names are included in the list, and the actual domain names are represented by a series of blanks followed by one of the “.com”, “.net”, “.org”, “.us”, “.biz”, or “.info” generic Top-Level Domains (“gTLDs”).
In what appears to be the only prior UDRP case filed against the Respondent, Medis Medical Imaging Systems BV v. Mr. R. Bloxham,WIPO Case No. D2007-1059, in which the Respondent prevailed and the complaint was denied, the panel addressed a similar argument by the complainant in that case:
“The Complainant argued that the Respondent has a pattern of registering numerous domain names which are identical or very similar to the marks of other companies. The Complainant provided evidence of those registrations, as well as evidence of websites of companies with identical or similar marks. However, an inspection of those domain names indicates that most of them incorporate only short, generic terms (e.g. , ) or three-letter combinations that may or may not have a particular association (e.g. ). While the Complainant provides evidence of domains the Respondent has registered that correspond to the marks of another, more than mere correspondence is needed to establish prior bad faith. The Panel also notes that bad faith does not appear to have been established against the Respondent in prior proceedings under the Policy. Even if such a pattern was demonstrated, while certainly a relevant consideration, this by itself would not be sufficient evidence of bad faith in this case.”
In conclusion, the Panel finds that the Complainant has failed to establish bad faith registration and use under paragraph 4(b) of the Policy, and has therefore failed to satisfy the third element of its claim for transfer of the Domain Name under paragraph 4(a)(iii) of the Policy. D. Reverse Domain Name Hijacking
The Rules define Reverse Domain Name Hijacking as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Rules, paragraph 1. The allegations of the Complaint in this case are clearly insufficient to set forth a claim of abusive registration of the Domain Name by the Respondent. Indeed, the Complainant has failed to establish any of the three elements of its claim required by the Policy.
In the Panel’s view, the Complainant (represented by counsel) should never have filed this baseless Complaint. The Panel finds itself in agreement with the very first sentence in the Respondent’s Response: “This Proceeding is a foolish waste of time involving a dictionary word in which the Respondent has a decade of seniority over the Complainant’s junior claim in hair care products.” In view of this remarkably insufficient Complaint, the Panel is compelled to find that it was brought in bad faith by the Complainant and constitutes Reverse Domain Name Hijacking. See Dreamgirls, Inc. v. Dreamgirls Entertainment,WIPO Case No. D2006-0609; Tarheel Take-Out, LLC v. Versimedia, Inc.,WIPO Case No. D2012-1668; Frank Michael Weyer v. DomainS, Inc.,WIPO Case No. D2013-0510; MYUNiDAYS Limited v. Ashantiplc Ltd / Customer _102764977,WIPO Case No. D2013-1865. 7. Decision
For the foregoing reasons, the Complaint is denied.
Dana Haviland
Presiding Panelist
Robert A. Badgley
Panelist
M. Scott Donahey
Panelist
Date: September 2, 2014
1 The screenshot of the Domain Name website submitted by the Complainant shows the related links then appearing on the website – “Verbs, English Verb, What is a Verb, Verb, Communication, Be, Distance Learning Schools, Distance Learning Courses In, Online Summer School Courses, and Chinese Language School.” The screenshot also shows sponsored links on the website, mostly relating to verbs, grammar, and English lessons, with one for nonfiction books on eBay, another for digital reverb pedals for guitars, and none for hair care products.
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