The Complainant is Roadcam, Inc. of Santa Clara, California, United States of America, represented by Patel & Almeida. P.C., United States of America.
The Respondent is Jon Smejkal of Pittsburg, California, United States of America, represented by Steven Rinehart, United States of America. 2. The Domain Names and Registrar
The disputed domain names , and are registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 11, 2014. On November 11, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 11, 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 on November 21, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 10, 2014. The Response was filed with the Center on December 10, 2014.
The Center appointed William R. Towns as the sole panelist in this matter on December 22, 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 is a corporation organized under the laws of the State of California in January 2014. The incorporators and co-owners are Daniel Sharp, the Complainant’s CEO, and the Respondent. The Complainant sells vehicle mounted cameras for video surveillance using the designation ROADCAM, and asserts common law rights in ROADCAM. The Respondent, who at one time was the Complainant’s Chief Technical Officer (CTO), left the Complainant in early August 2014. The Respondent since has joined Pier 28, Inc., a California based company that also sells vehicle mounted video cameras, marketed as “DashCams.”
The disputed domain names are , , and . In June 2014, at the recommendation of the Respondent, the disputed domain names and were transferred from fromGoD, Inc., where they for some time had been registered to the Complainant’s CEO, Daniel Sharp, to Namecheap.1 Shortly thereafter, the Respondent changed the WhoIs registrant information for the disputed domain names to list himself as the registrant. The Respondent previously in January 2014 had negotiated the purchase of the disputed domain name through Namecheap, and listed himself as the registrant, and the Complainant as the registrant organization. After his departure from the Complainant, the Respondent changed the registrant organization from the Complainant, “Roadcam, Inc.”, to “”.
The Complainant filed a use-based application to register ROADCAM as a trademark with the United States Patent and Trademark Office (USPTO) on July 1, 2014, claiming the first use of the mark in commerce in December 2013. The Complainant’s applied-for trademark has been refused registration by the USPTO based on descriptiveness. This is a non-final refusal.
The Respondent, following his departure from the Complainant, redirected two of the disputed domain names to the Pier 28, Inc. website, and the third disputed domain name has been directed to a page on the “” website where Pier 28 offers for sale products directly competing this those offered by the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant submits that prior to its incorporation under California law in January 2014, it had operated as Roadcam, LLC and that the development of the ROADCAM product, a vehicle mounted camera used for video surveillance, had begun as early as 2002. According to the Complainant, the first sale in the United States of products bearing the ROADCAM mark occurred as early as December 12, 2013. The Complainant asserts that since that time it has continued to sell and market its products under the ROADCAM mark, and that consumers have come to recognize ROADCAM as a source identifier for the Complainant’s products.
The Complainant notes that it filed with the USPTO on July 1, 2014, a use-based application to register the ROADCAM mark. According to the Complainant, its ROADCOM products are sold online at locations including A and eBay, and the Complainant submits evidence of its sales during 2014. The Complainant avers that as a result of many sales throughout the United States it has established common law rights in the ROADCAM mark and has built substantial goodwill. The Complainant also asserts prior use in commerce of DASHCAM.
The Complainant maintains that it had established common law trademark rights in ROADCAM prior to the registration of the disputed domain name on January 29, 2014. The Complainant asserts that the disputed domain name was registered by the Respondent solely for use by the Complainant. The Complainant maintains that it was the prior owner of the disputed domain names and , initially registered on August 31, 2002, and September 10, 2013, respectively.2 According to the Complainant, the WhoIs registrant information for these two disputed domain names was altered by the Respondent on August 2, 2014, without the Complainant’s permission or knowledge, following the Respondent’s resignation from the Complainant.3
The Complainant argues that the disputed domain names and are “practically identical” to ROADCAM and that the disputed domain is “practically identical” to DASHCAM. The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain names because there is no evidence of the Respondent’s use or demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services. The Complaint avers that the Respondent has not been commonly known by the disputed domain names, and maintains that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names, since the Respondent is redirecting the disputed domain names to the Respondent’s competing enterprise (Pier28, Inc.). According to the Complainant this evidences the Respondent’s clear intent for commercial gain to divert Internet users to the website of the Respondent’s company, in order to intentionally profit from the goodwill associated with the Complainant’s mark.
The Complainant contends that the Respondent was an officer of the Complainant and acting in said capacity when he registered the disputed domain name . According to the Complainant, this registration was made on behalf of the Complainant, notwithstanding that the Respondent registered the domain name in his own name. Additionally, the Complainant asserts that after moving the Complainant’s and domain names from GoDaddy to Namecheap (eNom), the Respondent without the permission of and unbeknownst to the Complainant changed the registrant information to list himself as the registrant, thereby misappropriating the Complainant’s property. The Complainant further alleges that after resigning from the Complainant, the Respondent changed the Registrant Organization information for from the Complainant, Roadcam, Inc., to a non-existent entity, “.”
In view of the foregoing, the Complainant contends that the Respondent registered and is using the disputed domain names in bad faith. First, the Complainant maintains that the Respondent registered the disputed domain names in order to prevent the Complainant from reflecting its ROADCAM mark in a corresponding domain name, and that the Respondent’s conduct demonstrates a pattern of such behavior. Second, the Complainant submits that the disputed domain names were registered for the primary purpose of disrupting the business of the Complainant, with whom the Respondent now directly competes. Third, the Complainant argues that in using the disputed domain names the Respondent has intentionally attempted to attract for commercial gain Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation or endorsement of the Respondent’s website or the products and services offered thereon.
The Complainant further asserts that the Respondent, while working for the Complainant, engaged in a pattern of deceit, which resulted in the Respondent locking the Complainant out of its eBay, Amazon, and email accounts, as well as the Complainant’s domains (including the additional domain names , , and ), all of which according to the Complainant, redirect to the Pier28, Inc. website. B. Respondent
The Respondent contends that this dispute presents a clear case of reverse domain name hijacking. According to the Respondent, the Complainant is abusing this administrative procedure in an attempt to rob the Respondent not just of domain names that are entirely generic or descriptive but that also are the subject of a business dispute outside the scope of the Policy. According to the Respondent, all three disputed domain names were registered by the Respondent in good faith. The Respondent maintains that Daniel Sharp is the driving force behind the Complaint.4
The Respondent submits that the Complainant has no enforceable trademark rights in ROADCAM because the term is clearly generic or descriptive with respect to the products in question. The Respondent observes that the Complainant’s trademark application has been refused by the USPTO based on descriptiveness, and points out that this was not disclosed in the Complaint. According to the Respondent, the Complainant’s application will never mature into a registration. The Respondent cites three prior refusals by the USPTO to register third-party applications for ROADCAM, all of which eventually were abandoned. Even assuming ROADCAM is not generic for the class of products in question, the Respondent contends that the Complainant has not established secondary meaning, and cannot demonstrate exclusive use of the mark because there are many other parties using the same brand, including the Respondent.
The Respondent characterizes the UDRP Complaint as a desperate attempt by the Complainant to strip the Respondent of the disputed domain names before the Complainant’s trademark application “goes dead”. The Respondent further asserts that the Complainant has presented no evidence to demonstrate that the disputed domain names are confusingly similar to its purported mark.
The Respondent submits that he has established rights or legitimate interests in the disputed domain names because the disputed domain names are comprised of generic or descriptive terms and are being used in their generic, descriptive sense. The Respondent denies bad faith registration or use. According to the Respondent, the disputed domain names were not registered for the purpose of sale to the Complaint, or disrupting the Complainant’s business, or creating a likelihood of confusion with the Complainant’s purported marks.
The Respondent maintains that the Complainant had no bona fide basis for commencing this proceeding under the UDRP, and is culpable for reverse domain name hijacking. The Respondent reiterates that ROADCAM clearly is a generic or descriptive term used by many third-parties selling products similar to those offered by the Complainant. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name are the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel initially addresses whether the Complainant has established trademark or service mark rights in ROADCAM.5 The Complainant does not have a trademark registration for ROADCAM; however, the term “trademark or service mark” as used in paragraph 4(a)(i) of the Policy encompasses both registered marks and common law marks. See, e.g., The British Broadcasting Corporation v. Jaime Renteria,WIPO Case No. D2000-0050; United Artists Theatre Circuit, Inc. v. Domains for Sale Inc.,WIPO Case No. D2002-0005; The Professional Golfers’ Association of America v. Golf Fitness Inc., a/k/a Golf Fitness Association,WIPO Case No. D2001-0218.
In the United States, common law rights in a trademark or service mark may be established by extensive or continuous use sufficient to identify particular goods or services as those of the trademark owner. See United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918). That is to say, the mark must be used such that a relevant segment of the public comes to recognize it as a symbol that distinguishes the Complainant’s goods and services from those of others.
The Respondent alleges that the Complainant cannot establish enforceable rights in ROADCAM, contending that “Roadcam” is generic for the type of product being sold by the Complainant. To the extent that ROADCAM is considered merely descriptive of the Complainant’s products, the Respondent submits that the Complainant has not demonstrated “secondary meaning” (acquired distinctiveness) and that it would be impossible for the Complainant to do so.
For purposes of United States trademark law, marks traditionally have been arranged into five generally increasing categories of consideration for protection: (1) generic, (2) descriptive, (3) suggestive, (4) arbitrary, and (5) fanciful. See, e.g., Genesee Brewing Co., Inc. v. Stroh Brewing Co., 124 F.3d 137 (2d Cir. 1997). A generic mark is one that refers or has come to be understood as referring “to the genus of which the particular product is a species.” Id.
A generic mark is not entitled to protection under United States trademark law. “[N]o matter how much money and effort the user of a generic term has poured into promoting the sale of its merchandise and what success it has achieved in securing public identification, it cannot deprive competing manufacturers of the product of the right to call an article by its name.” Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976).
The Panel has found no indication in the record of appreciable generic use of “Roadcam” by manufacturers and retailers in the relevant industry, or among the relevant segment of the purchasing public. To the contrary, the record reflects more prevalent use by manufactures and resellers of vehicle mounted video cameras of terms such “dashboard cameras”, “dashcams”, “vehicle camera driving cameras”, and “vehicle blackbox video recorders”. In light of this, the Respondent’s assertion that allowing the Complainant exclusive rights in “ROADCAM” would prevent competitors from accurately describing their products seems to be unfounded. The Panel, without expressing any view whether the more prevalent use of these other terms by manufacturers and resellers of this class of products may be generic, is not convinced that “ROADCAM” is commonly understood and used in the relevant market as the “the genus of which the particular product is a species.”
The Panel notes that the USPTO’s provisional refusal of the Complainant’s application is based on descriptiveness, i.e., that “ROADCAM” would be perceived by consumers as describing a feature of the applicant’s goods. The Panel does not necessarily disagree with this assessment. Regardless, while the Complainant’s applied-for mark has been provisionally refused registration by the USPTO, this is a non-final refusal that the Complainant may attempt to overcome by demonstrating that the mark has acquired distinctiveness through use.
For purposes of the paragraph 4(a)(i) of the Policy, and consistent with United States trademark law, in cases involving claimed common law or unregistered trademarks that are descriptive in nature, a complainant must present convincing evidence of secondary meaning or acquired distinctiveness. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.7. In this case, the Complainant has submitted two documents listing sales of its products between April and August 2014. The sales reflected during this five month time span standing alone are not in the Panel’s view sufficient to demonstrate that that a relevant segment of the public has come to recognize ROADCAM as a symbol that distinguishes the Complainant’s goods and services from those of others.
As such, for purposes of the present Policy proceeding, the Panel concludes that the Complainant has failed to establish that it currently has unregistered or common law trademark or service mark rights in ROADCAM. As noted above, demonstrating unregistered or common law rights in a descriptive mark requires proof of acquired distinctiveness or secondary meaning sufficient to show that the public has come to recognize it as a symbol that distinguishes the Complainant’s goods and services from those of others. The evidence submitted by the Complainant without more does not in the Panel’s judgment shed substantial light on how consumers are likely to perceive ROADCAM in the marketplace.
In view of the foregoing, the Panel concludes that the Complainant has not satisfied its burden under Paragraph 4(a)(i) of the Policy. As noted earlier, the USPTO’s refusal to register the Complainant’s applied-for mark is not a final determination. The Complainant may yet submit further arguments and evidence to the USPTO in an attempt to overcome this refusal, and under the USPTO’s rules the Complainant still has time in which do so. In the event the Complainant were to overcome the USPTO’s non-final refusal made on the grounds of descriptiveness, such a showing likely would serve to demonstrate common law rights in the mark as well. The evidence presented by the Complainant in this proceeding, however, does not in the Panel’s opinion demonstrate unregistered or common law rights in ROADCAM, which is descriptive in relation to the Complainant’s goods for the purposes of this Policy proceeding. C. Rights or Legitimate Interests
In view of the Panel’s determination above under Paragraph 4(a)(i) of the Policy, it is unnecessary for the Panel to address the issue of the Respondent’s rights or legitimate interests with respect to the disputed domain names under Paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
In view of the Panel’s determination above under Paragraph 4(a)(i) of the Policy, it is unnecessary for the Panel to address issues of bad faith registration and use of the disputed domain names under Paragraph 4(a)(iii) of the Policy. E. Reverse Domain Name Hijacking
Reverse Domain Name Hijacking is defined in paragraph 15(e) of the Rules as using the UDRP in bad faith to attempt to deprive a registered domain name holder of a domain name. The onus of proving complainant bad faith in such cases is generally on the respondent. The mere lack of success of the complaint is not itself sufficient for a finding of Reverse Domain Name Hijacking; rather, a respondent would typically need 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. See WIPO Overview 2.0, paragraph 4.17.
While the Complainant has failed to meet its burden of proof under paragraph 4(a)(i) of the Policy, the Panel for the reasons discussed herein does not consider this to be a case in which the Complainant clearly knew that it lacked any plausible basis for the Complaint. The Complainant asserted common law rights in ROADCAM, and submitted evidence of the use of the mark. While in the Panel’s view the Complainant’s omission respecting the USPTO’s provisional refusal to register the ROADCAM mark and the Complainant’s unsubstantiated claim of rights in DASHCAM may raise questions of clean hands and factual accuracy, the record in the Panel’s view also raises substantial questions of clean hands and factual inaccuracy on the part of the Respondent.
The Respondent registered the disputed domain name while serving as the Complainant’s CTO. The registration was made for the benefit of the Complainant, which was in fact identified as the WhoIs registrant organization. The Respondent upon his departure redirected the disputed domain name, which also reflects the Complainant’s business name, to the website of Pier28, Inc., a direct competitor of the Complainant. The Respondent’s claim to have registered the disputed domain names and in good faith also is suspect, given the undisputed evidence in the record that the Complainant’s CEO had registered these domain names before the Respondent was ever associated with the Complainant. In the Panel’s view, the Respondent’s alteration of the WhoIs registrant information of these disputed domain names, without the Complainant’s authorization or knowledge, and the subsequent use by the Respondent of all three disputed domain names in competition with the Complainant are fundamentally inconsistent with any assertion of “clean hands”.
UDRP panels have declined to find Reverse Domain Name Hijacking in circumstances where there is a question of clean hands or factual accuracy on the part of both parties. See WIPO Overview 2.0, paragraph 4.17, and panel decisions cited therein. Neither the failure of the Complainant to satisfy the requirements of paragraph 4(a)(i) of the Policy, the Complainant’s omission to inform the Panel of the USPTO’s non-final refusal of registration, nor even the Complainant’s unsubstantiated assertion of rights in DASHCAM eviscerates male fide conduct on the part of the Respondent in respect to the disputed domain names. Having regard for the totality of facts and circumstances in the record, the Panel considers that a case for Reverse Domain Name Hijacking has not been made out. 7. Decision
For the foregoing reasons, the Complaint is denied. The Respondent’s request for a determination of reverse domain name hijacking is also denied, for the reasons stated above.
William R. Towns
Sole Panelist
Date: January 5, 2015
1 eNom became the new registrar.
2 The WhoIs records submitted for these domain names reflects they were registered by the Complainant’s CEO, Daniel Sharp.
3 The Panel notes that the Complainant submitted as part of an annex to the Compliant an email from the Respondent to Daniel Sharp dated August 13, 2014, in which the Respondent advised he was going his separate way, and already had a new company set up for retail operations. The Complainant maintains that the Respondent resigned on August 2, 2014, as reflected in corporate minutes, but was allowed to remain until August 12, 2014. The Respondent claims this is untrue and that the corporate minutes were fabricated.
4 The Respondent characterizes this dispute as being one between business partners, and sets out at some length his grievances against Sharp, alleging that the Complainant was poorly managed and implying that, contrary to what is set forth in the Complaint, he was forced out of the Company. The Panel notes that these allegations have not been substantiated, and are not necessarily germane to this proceeding.
5 The Complainant has also asserted trademark rights in DASHCAM but submitted no evidence of registration or use whatsoever. For these reasons the Complainant has failed to demonstrate trademark rights in DASHCAM, and therefore cannot rely on this putative mark to satisfy its burden under paragraph 4(a)(i) of the policy.
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