1.1 The Complainant is Timothy Pearson of Belvidere, Illinois, United States of America ("United States" or "US"), self‑represented.
1.2 The Respondent is Domain Admin, OYO AS of Oslo, Norway, internally-represented. 2. The Domain Name and Registrar
2.1 The disputed domain name (the "Domain Name") is registered with NameP, LLC (the "Registrar"). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 1, 2016. On February 2, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 10, 2016, 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.
3.2 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").
3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 11, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 2, 2016. The Response was filed with the Center on February 29, 2016.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on March 4, 2016. 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
4.1 The Complainant is an individual based in the United States. He has since 2009 operated a business that provides electrical and computer engineering and consultant services under the trading name "Raptor Engineering". Initially, the Complainant's primary business was specialised, low volume development hardware for machine vision, but since then it has expanded into different areas. He has operated a website promoting that business from the domain name since 2009.
4.2 The Complainant has no registered trade marks, but on October 25, 2015 he made an application for a United States trade mark (serial number 86798708) for the standard character mark "Raptor Engineering". That application would appear not to have been opposed and is due to proceed to publication on April 19, 2016.
4.3 According to publically available WhoIs details for the Domain Name, the Domain Name was registered on December 17, 2011.
4.4 The Respondent would appear to be an entity based in Norway. At some point prior to the commencement of these proceedings the Domain Name has been used to display a webpage soliciting enquiries for those seeking to purchase the Domain Name. This page continues to be displayed at the date of this decision. 5. Parties' Contentions A. Complainant
5.1 The Complainant claims unregistered trade mark rights in the phrase "Raptor Engineering" and relies upon his US trade mark application. He claims that the Domain Name is confusing similar to his trade mark.
5.2 He further contends that the Respondent has no rights or legitimate interests in the Domain Name having no trade mark rights in, and not having operated a business under, the name "Raptor Engineering".
5.3 The Complainant further claims that the fact that the Respondent has solicited interest from persons seeking to purchase the Domain Name shows that the Domain Name has been both registered and used in bad faith. He also relies upon the fact that the registration of the Domain Name postdates by over two years his use of the "Raptor Engineering" name in business.
5.4 The Complainant also appears to contend that the Respondent offered to sell the Domain Name to him for the sum of USD 2,699. B. Respondent
5.5 The Response is short and in places confusing. The Respondent has taken a pro-forma response available on the Center's website and filled in sections of this in a way that at times does not make sense. The way he has completed the "Consent to remedy" section on one reading might even be said to involve a consent to transfer of the Domain Name to the Complainant.
5.6 Nevertheless, the Panel believes the Respondent to be actively resisting the Complainant's requests in these proceedings. The reasons for this are twofold. First the Respondent contends as follows:
"1) The domain name is two commonly used generic terms. 2) We have rights to the domain name, as we have owned the domain prior to trademark from Complaintant [sic], as well as the trademark is new and not been granted. We also do not infringe on his mark, as we operate in Norway, and the mark is based in the United States. 3) The domain is not being used in bad faith, there is no reference to Complainant or any of his goods or services. There is absolutely no evidence that he has targeted the Complainant's business."
5.7 Second, the Respondent appears to be seeking a positive finding from the Panel of reverse domain name hijacking. 6. Discussion and Findings
6.1 The Complainant must make out his case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (Policy, paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (Policy, paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)). A. Identical or Confusingly Similar
6.2 The Panel is prepared to accept that the Complainant has unregistered trade mark rights in the term "Raptor Engineering". This is inherently plausible given the uncontested assertion by the Complainant that he has been in business under that name since 2009, the fact that name is not obviously generic or descriptive and the fact that the Respondent has not sought to dispute the existence of such rights.
6.3 The Complainant also appears to rely upon a trade mark application, which he contends will shortly proceed to grant. Generally a trade mark application will not constitute rights for the purposes of the Policy. Whether an application that it is credibly contended will inevitable proceed to grant, can found rights for the purposes of the Policy is an interesting question that the Panel has commented on before (see HQUK Limited v. Head Quarters,WIPO Case No. D2003-0942). But even if this is possible, the existence or non‑existence of rights may turn upon the law of the jurisdiction in which the application was filed. In the absence of submissions on this issue, the Panel is unwilling to speculate further in this respect and it is also unnecessary to do so given its finding so far as unregistered trade mark rights is concerned.
6.4 Further, the Panel accepts that the Domain Name is confusingly similar to the Complainant's trade mark rights, given that the Domain Name comprises the term "Raptor Engineering" in its entirety together with the ".com" Top-Level Domain ("TLD")
6.5 In the circumstances the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
6.6 It appears to be reasonably clear that the Domain Name has been registered and held speculatively with the possible onward sale to some other person. Although the Respondent provides no description of its business in the Response, this is the obvious inference from the Respondent's name and the way that the Domain Name has been used. Further, the Respondent describes itself on its website as follows:
"Founded in Oslo Norway, OYO is a domain name acquisition and management company. We specialize in premium generic, short, brandable, business related, and GEO specific names. The names in our portfolio represent high quality destinations across many verticals. We have recently partnered with numerous establish domain industry companies to market our domain portfolio to the general public. We will continue to add to our porftfolio as well service our clients and future clients who want to better their Internet destination."
6.7 The issue of whether a party can have a right or legitimate interest in a domain name comprising a generic term is something that is addressed in paragraph 2.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0")
"Panels have recognized that mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase (which may be generic with respect to certain goods or services), may not of itself confer rights or legitimate interests in the domain name. Normally, 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)."
6.8 Therefore, even were the Domain Name to be treated as generic, it is unlikely that this would provide the Respondent with rights or legitimate interests based on the use described above. However, the Panel does not accept that the Domain Name is generic, nor does the Respondent really claim this. Instead, it claims that the Domain Name is made up of a combination of two such terms. It is this combination that it is important here. Although in isolation both "raptor" and "engineering" are ordinary words, their combination appears to be unusual and striking. The Respondent does not claim that this combination has some sensible generic or descriptive meaning.
6.9 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
6.10 The Respondent provides no explanation in its Response as to its knowledge or intention when registering the Domain Name. Its assertion that the Domain Name comprises two generic words does not address this. The words "raptor" and "engineering" in combination appear to be unusual and striking. Why the Respondent chose to register such an unusual and striking combination cries out for an explanation and none is given.
6.11 The Respondent's assertions that the Domain Name is not infringing any mark because of its location and the Complainant's location are misconceived and not really relevant to the bad faith assessment (see paragraph 4.15 of the WIPO Overview 2.0). The test is not one of infringement but instead whether there has been bad faith registration and use.
6.12 Similarly, the Panel is unconvinced by the Respondent's claims that it owned the Domain Name before the Complainant owned any trade mark rights. The Panel has already accepted that the Complainant has unregistered trade mark rights. It also seems likely, given the fact that the name "Raptor Engineering" is not obviously descriptive and generic and the amount of time that the Complainant had used that name in business before the Respondent registered the Domain Name, that the Complainant did have such rights prior to the Respondent's registration of the Domain Name.
6.13 Even were that not the case, this would not be an answer to the Complainant's claims. The Complainant clearly used the name "Raptor Engineering" in a trade mark sense prior to the date of registration of the Domain Name. Where a complainant has used a term in a trade mark sense prior to a domain name's registration and the domain name has been registered with the intention of taking advantage of any trade mark rights that may subsequently arise in that term, there still can be bad faith registration (see, for example, United Phosphorus Limited v. Monagro Sp.z o.o.,WIPO Case No. D2014-1561).
6.14 Therefore, ultimately the striking nature of the Domain Name and the fact that it was registered after the Complainant had been in business for at least two years are sufficient in this case for the Panel to conclude on the balance of probabilities that the Domain Name was acquired and has been held with the Complainant's actual or prospective trade mark rights in mind and with the intention of selling the Domain Name to the Complainant or a competitor of the Complainant for more than the Respondent's out of pocket costs. As such the Respondent's activities fall within the scope of paragraph 4(b)(i) of the Policy.
6.15 It is the Complainant that bears the burden of proof in proceedings under the Policy. However, this is also one of those cases where the fact that the Respondent has engaged in the UDRP process but has failed to provide any real explanation or evidence as to key question as to for what purposes it registered the Domain Name, is of itself positive evidence of bad faith registration and use (see Nexans S.A. v. Mr. Edip Özdemir / MXN Kablo San. Tic. Ltd. Sti.,WIPO Case No. D2015-1056).
6.16 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.
6.17 As the Complainant has succeeded on all three elements, the Panel declines to enter a finding of reverse domain name hijacking. 7. Decision
7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.
Matthew S. Harris
Sole Panelist
Date: March 18, 2016
Full & Egal Universal Law Academy