Complainant is Movius Interactive Corporation of Johns Creek, Georgia, United States of America ("United States"), represented by Smith Risley Tempel Santos LLC, United States.
Respondent is D of Austin, Texas, United States, internally represented. 2. The Domain Name and Registrar
The disputed domain name (the "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 September 25, 2015. On September 28, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 28, 2015, 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 30, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 20, 2015. The Response was filed with the Center on October 20, 2015.
The Center appointed Robert A. Badgley as the sole panelist in this matter on October 27, 2015. 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 describes itself as "a leading provider of converged messaging and call completion solutions for telecommunication providers around the world." Complainant (or its predecessors in interest) has been using the mark MOVIUS since "at least 2010" to identify and distinguish its goods and services. Complainant holds several registrations of the MOVIUS mark with the United States Patent and Trademark Office ("USPTO"). The earliest such registration put into the record of this case was June 8, 2010. (The USPTO registrations refer to June 2008 as the first use in commerce.)
Respondent registered the Domain Name on July 4, 2001. The Domain Name resolves to a blank web page, and there is no evidence in the record that it has ever resolved to an active website.
Respondent has registered more than 5,000 domain names. According to Respondent, it "executes name conception, logos and brand graphics, trademark research, and promotional copy for new startups and for corporations including Intel, Samsung, Procter and Gamble, Netflix, and Time Warner, Inc." Respondent asserts that it "holds generic and coined domains from and for use in its business." There are, according to Respondent, "hundreds of companies in the [United States] alone which offer the services of coining and locating names which are viable for a new use mark."
There were negotiations – initiated by Complainant's representative – in July and August 2015 about a possible sale of the Domain Name to Complainant. 5. Parties' Contentions A. Complainant
The crux of Complainant's case is captured in the following passage from the Complaint: "Precluding a finding of bad faith on the part of the Respondent simply because the Complainant began using its trademarks after the original registration of the disputed domain by the Respondent enables purveyors of cybersquatting models to scrape the valuable .com top level domain for as yet unused domains and stockpile them for little investment in the hopes that one or more of the domains will result in a windfall sale sometime in the future. Such speculative registration efforts are abusive and run counter to the spirit of the Policy, if not in direct violation of it."
Complainant claims to have satisfied all three elements of the Policy and seeks a transfer of the Domain Name. B. Respondent
Respondent asserts that it operates a legitimate business and its registration of the Domain Name was not done in bad faith. It is impossible, Respondent asserts, to be in bad faith when Complainant's mark did not even come into use for seven years after Respondent's registration of the Domain Name. Respondent also asserts that "movius" is a "generic word" inasmuch as it is "a common family name." Respondent points to the fact that a Google search of "movius" yields more than 226,000 results not related to Complainant. Respondent also asks the Panel to find Complainant culpable of Reverse Domain Name Highjacking. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name at issue in this case:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant holds rights, through registration and use, in the mark MOVIUS. Further, the Panel concludes that the Domain Name is identical to that mark.
The Panel concludes that Complainant has established paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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 Panel need not discuss this element, since it is not necessary in order to dispose of this case given the findings below. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, "in particular but without limitation," are evidence of the registration and use of the Domain Name in "bad faith":
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out‑of‑pocket costs directly related to the Domain Name; or
(ii) that Respondent 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other on line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location.
Respondent clearly was not in bad faith in this case. There is no evidence in this record that Complainant – or anyone else in the world for that matter – held the slightest trademark rights in the term "movius" at the time Respondent registered the Domain Name back in July 2001. The record suggests that Respondent had the good sense or good fortune to register a short, catchy domain name in the ".com" space well before anyone else thought to register it as a domain name, or to use it as a trademark. As such, even those ardent adherents to the principle that a domain name registrant is under some type of affirmative duty to ensure that a prospective domain name would not violate another's trademark rights could not quarrel with Respondent's conduct in this case.
Nor, for the sake of completeness, can it be said that Respondent has done anything untoward with the Domain Name since the initial registration back in 2001 such that a more holistic reading of paragraph 4(a)(iii) would support divesting Respondent of the Domain Name. In this vein, Complainant's attempt to liken this case to the seminal decision in Telstra v. Nuclear Marshmallows,WIPO Case No. D2000-0003, borders on the risible. Although the Telstra case, like this case, involved "passive use" of a domain name, Telstra is so distinguishable from the instant case that it is should be obvious. For starters, the TELSTRA mark was established before the subject domain name was registered. Further, the TELSTRA mark was undoubtedly famous, whereas the record in this case is devoid of any attempt to show, much less an actual showing, that the MOVIUS mark is famous.
In sum, the Complaint fails because Respondent did not register and has not been using the Domain Name in bad faith.
The Panel declines to find that this misconceived Complaint was brought in bad faith, and hence the Panel makes no finding of Reverse Domain Name Hijacking. 7. Decision
For the foregoing reasons, the Complaint is denied.
Robert A. Badgley
Sole Panelist
Date: November 4, 2015
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