Complainant is Squirrels LLC of North Canton, Ohio, United States of America, represented by Walker & Jocke, United States of America.
Respondent is Giorgio Uzonian of Los Angeles, California, 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 is registered with eNom (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 21, 2014. On August 21, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 22, 2014, 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 proceeding commenced on August 28, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 17, 2014. The Response was filed with the Center on September 17, and received by the Center on September 18, 2014.
The Center appointed Gary J. Nelson, David H. Bernstein and Lorelei Ritchie as panelists in this matter on October 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
Complainant is the provider of a website in the field of computer software and related technology. To this end, in 2014, Complainant registered a United States trademark for SQUIRRELS, Registration No. 4554892 (registered June 24, 2014). Complainant also owns a United States trademark for SQUIRRELS, and design, Registration No. 4554893 (registered June 24, 2014). These registrations were both filed in 2012.
Complainant additionally owns the registration for a domain name that includes the registered SQUIRRELS mark, (registered March 19, 2012). Complainant uses the URL associated with this domain name to inform web users of its products and services. Complainant also introduced into the record evidence of various other marks for the term SQUIRREL or SQUIRRELS owned by third parties and registered with the United States Patent and Trademark Office for various goods and services.
The disputed domain name was registered with the Registrar on June 24, 1998. Respondent has no affiliation with Complainant. Respondent has a parked web page with sponsored links from the URL associated with the disputed domain name to websites that describe or advertise goods or services that are unaffiliated with Complainant or Complainant's services and that largely relate in various ways to the topic of the animals referred to as squirrels.
The Parties exchanged correspondence regarding the disputed domain name whereby Complainant expressed "interest" and inquired as to how much Respondent was asking for it. Respondent replied with the number USD "300K." When Complainant stated that it may be willing to pay USD 25,000, Respondent declined. In the exchange, as put into the record by Complainant, Respondent noted the value of the domain name as a "generic" term, and no mention was made of any trademark rights. Respondent mentioned that he owns as many as "5,000" other domain names. Complainant put in evidence of some of these in the record, all of which appear to be dictionary words or descriptive terms. 5. Parties' Contentions A. Complainant
Complainant contends that (i) is identical or confusingly similar to Complainant's trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.
Specifically, Complainant contends that the disputed domain name directly incorporates the mark owned by Complainant, SQUIRRELS, and that therefore it is identical or confusingly similar to a mark in which Complainant has rights. Complainant further contends that Respondent has no rights or legitimate interests in the disputed domain name since he neither appears to be one of the various holders of marks for the term "squirrels" nor is he using the URL associated with the disputed domain name to host an active webpage. Rather, he has a parked web page with sponsored links. Finally, for these reasons, because he appears to be holding the domain name for the purpose of capitalizing on its value, Complainant alleges that Respondent registered and is using the domain name in bad faith. In this regard, Complainant alleges that Respondent acted in bad faith, allegedly by engaging in a business of owning and selling domain names. B. Respondent
Respondent asserts that, as noted by the Registrar, Respondent has owned the registration for the disputed domain name for at least 14 years prior to the time that Complainant registered its SQUIRRELS and SQUIRRELS, and design marks. Accordingly, Complainant cannot claim senior rights or that Respondent registered the disputed domain name in bad faith. Respondent further asserts that the term "squirrels," the sole term in the disputed domain name , is a "dictionary term" which Respondent does, in fact, use in its normal dictionary fashion. Specifically, although Respondent uses the disputed domain name to host sponsored links, many of these relate in various ways to squirrels, which shows that Respondent in fact is using the term in its dictionary sense. Finally, Respondent notes that there are various UDRP decisions upholding rights by respondents in dictionary words, particularly where they are registered before a mark is obtained by Complainant, and that negotiations on such registrations may indeed exceed registration costs. 6. Discussion and Findings A. Identical or Confusingly Similar
This Panel must first determine whether is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name incorporates in its entirety Complainant's registered trademark SQUIRRELS, with no additional matter, merely adding the top level domain name, ".com". Panels have found for complainants on this first element where they demonstrate rights in the exact term shown in the disputed domain name, even where the term is a dictionary or descriptive word. See Libro AG v. NA Global Link Limited,WIPO Case No. D2000-0186 (discussed below); Newstoday Printers and Publishers (P) Ltd. v. InetU, Inc.,WIPO Case No. D2001-0085 (discussed below).
This Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Panel next considers whether Complainant has shown that Respondent has no "rights or legitimate interests" as must be proven to succeed in a UDRP dispute. Paragraph 4(c) of the Policy gives examples that may show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name "in connection with a bona fide offering of goods or services"; (ii) demonstration that respondent has been "commonly known by the domain name"; or (iii) "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".
Respondent uses the URL associated with the disputed domain name to resolve to a parked web page with sponsored links. Many of these links are for goods and services specifically related to "squirrels," as that word is used in its dictionary sense. Respondent has provided evidence dating back several years to show such links including examples such as "Stop Squirrels", "Squirrel Control", "Baby Squirrels" and "How to Get Rid of Squirrels." UDRP panels in cases with similar fact patterns have found for respondents on the second element, finding that "[i]t is well settled that a respondent may have a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive phrase, even where the domain name is identical or confusingly similar to the trade mark of a complainant, provided it has not been registered with the [c]omplainant's trade mark in mind." See Admiral Insurance Services Limited v. Mr. Adam Dicker, WIPO Case. No. D2005-0241 (denying transfer of ); Limited v. Alton L. Flanders,WIPO Case No. 2004-0047 (denying transfer of and finding respondent's warehousing of domain names to constitute a legitimate business interest). For the same reasons, and because the Panel expressly finds that Respondent has used the disputed domain name in ways that takes advantage of its dictionary meaning rather than Complainant's trademark, the Panel finds that Complainant has failed to show that Respondent lacks rights or legitimate interests in the disputed domain name.
Therefore, this Panel finds for Respondent on the second element regarding "rights and legitimate interests" in accordance with paragraph (4)(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Although the Panel's finding for Respondent on the second element precludes Complainant from prevailing in this proceeding, the Panel finds it appropriate to discuss the issue of bad faith because it is relevant to the Panel's assessment of Reverse Domain Name Hijacking.
Complainant alleges that Respondent registered and used the domain name in bad faith, citing paragraph 4(b)(iv) of the Policy. It claims, for example, that Respondent owns multiple domain registrations and that Respondent "registered or . . . acquired the domain name primarily for the purpose of selling . . . for valuable consideration in excess of . . . documented out-of-pocket costs," in a showing of bad faith as contemplated by paragraph (4)(b)(i) of the Policy.
However, as pointed out by Respondent, Respondent registered the disputed domain name more than a decade prior to Complainant's registration of its marks, and more than a decade prior to its allegation of common law use. In similar cases, UDRP panels have found no bad faith registration where a respondent registered the disputed domain name prior to the time that complainant acquired rights to a mark. See Libro AG v. NA Global Link Limited, supra, (denying transfer of finding "it is not likely that that [r]espondent has chosen the domain name with the intent to profit or otherwise abuse complainant's trademarks"). In such cases, panels have also found that, where a respondent owned a domain name in which it had a legitimate interest, since it registered the domain name prior to the creation of trademark rights, and where it consistently used the domain name for its value as a common dictionary word and not for its value as a trademark, the offer by a respondent to sell such a domain name is not by itself evidence of bad faith use. See Newstoday Printers and Publishers (P) Ltd. v. InetU, Inc., supra,(denying transfer of noting that the respondent has a legitimate business "[e]ven if that business, in the relevant context here, were to comprise the registration, for sale, of generic domain names, either generally or to its customers, that would not be an illegitimate use of the domain name").
The case here is analogous to those cited. Respondent's ownership and offer to sell the disputed domain name which it used to offer links to ads related to squirrels in the dictionary sense is not an illegitimate use and does not constitute bad faith use. Further, the fact that Respondent registered the disputed domain name at least 14 years prior to Complainant's trademark registration of the term demonstrates that he did not register the domain name in bad faith. Nor is there evidence to the effect that Respondent renewed the domain name registration and thereafter changed its use of the domain name to take advantage of the trademark value of the domain name, in which case Policy, paragraph 4(b)(iv) may have found application. Cf. Big 5 Corp. v. EyeA / Roy Fang, NAF Claim No. 1513704 (Oct. 11, 2013); Eastman Sporto Group LLC v. Jim and Kenny,WIPO Case No. D2009-1688 (March 1, 2010). Therefore, this Panel finds for Respondent on the third element, finding that Complainant has failed to demonstrate bad faith registration or use in accordance with paragraph 4(a)(iii) of the Policy. D. Reverse Domain Name Hijacking
Paragraph 15(e) of the Rules instructs panels to make findings on bad faith and reverse domain name hijacking where appropriate, even in the absence of a request from the respondent:
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.
As stated previously, there is no dispute that Respondent registered the disputed domain name at least 14 years prior to the time Complainant registered its SQUIRRELS marks. As further noted, it is therefore implausible that Respondent could have had intent to profit from Complainant's trademark rights at the time he registered the disputed domain name. Rather, we find that bad faith was shown by Complainant, who brought this UDRP proceeding with the knowledge that Respondent's rights in the disputed domain name registration for this common dictionary term preceded its own trademark rights. See Admiral Insurance Services Limited v. Mr. Adam Dicker, supra; Dreamgirls, Inc. v. Dreamgirls Entertainment,WIPO Case No. D2006-0609 (denying transfer of ); Limited v. Alton L. Flanders, supra (stating, regarding reverse domain name hijacking, "[i]n the [p]anel's view, such a finding is particularly appropriate where the respondent's registration of the domain name predates the very creation of the complaint's trademark"). As the panel further noted in the latter case, "[i]n the [p]anel's view, the [c]omplainant's actions must have inevitably imposed burdens and costs upon the [r]espondent," who in this case went through the trouble and expense of hiring legal counsel.
We find that Complainant acted in bad faith in initiating this UDRP proceeding and engaged in reverse domain name hijacking. 7. Decision
The Panel dismisses the Complaint and declines to order transfer of the disputed domain name as requested by Complainant. The Panel also makes a finding of reverse domain name hijacking against Complainant.
Lorelei Ritchie
Presiding Panelist
David H. Bernstein
Panelist
Gary J. Nelson
Panelist
Dated: October 28, 2014
Full & Egal Universal Law Academy