Complainant is FlowJo, LLC of Ashland, Oregon, United States of America ("United States"), represented by Thompson Coburn LLP, United States.
Respondent is PRIVATE REGISTRANT, A HAPPY DREAMHOST CUSTOMER of Brea, California, United States / Qianjun Zhang of Elk Grove, California, United States, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with DreamHost, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 17, 2016. On September 19, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 23, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent's contact information in the Complaint. The Center sent an email communication to Complainant on September 26, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amended Complaint. Complainant filed an amended Complaint on September 26, 2016.
The Center verified that the Complaint together with the amended 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 28, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 18, 2016. The Response was filed with the Center on October 16, 2016.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on October 26, 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
Complainant is owner of registrations for the word trademark FLOWJO on the Principal Register of the United States Patent and Trademark Office ("USPTO"), registration number 4,205,910, registration dated September 11, 2012, in International Class ("IC") 9, covering "computer software platforms for the analysis of flow cytometry data", and; registration number 4,731,268, registration dated May 5, 2015, in IC 9, covering "computer software for data analysis".
Complainant asserts that it first began using the FLOWJO trademark in commerce in the United States in 1994. Complainant operates a commercial Internet website at , where it promotes various software products under the FLOWJO trademark.
According to the Registrar's verification, Respondent is the registrant of the disputed domain name. According to that verification, the record of registration for the disputed domain name was created on May 4, 2010.
By Independent Contractor Agreement ("ICA") dated May 13, 2010,1 Complainant appoints Respondent "to act as 'Chinese Application Scientist' which duties include marketing, support and sales activity throughout the territory as may be specifically agreed to between the parties from time to time. The territory includes China Taiwan, Korea, Singapore, Malaysia, Hong Kong, Thailand and Indonesia." The ICA further provides that "Consistent with the status of independent contractor as set forth in ORS 670.000, both parties agree that FlowJo has no right to control the specific manner or means by which the work is accomplished, and that such control is therefore strictly the responsibility and right of Contractor". The ICA contains a "Confidentiality" provision in which Respondent acknowledges and agrees that "all software code and intellectual property rights connected thereto" … "are FlowJo's valuable assets" and are referred to in the ICA as "Confidential Information". Under a provision headed "Return of Documents", Respondent agreed to return all originals and copies of records containing any Confidential Information to Complainant upon termination of the ICA or at the request of Respondent. The ICA was terminable at will by either party on 90 days' written notice.
Respondent established and operated a website identified by the disputed domain name at which it offered Complainant's software products. Complainant was aware of Respondent's registration of the disputed domain name and the associated website. Complainant did not object to this prior to termination of the ICA.
By email and express courier letter, on June 3, 2015, Complainant notified Respondent of its decision to terminate the ICA, and requested Respondent to return the Confidential Information and Documents in accordance with the terms. Complainant also stated:
"In addition, please arrange for (1) the immediate removal the 'Flower Power' graphic from the FlowJo China website and (2) the immediate alteration of the 'FlowJo China Website'
to not host FlowJo for download - this page should link to FlowJo, LLC's download site […]."
The business relationship between Complainant and Respondent appears to have ended in May 2016 when payments under the ICA based on Respondent's commission sales ended.
Following some back and forth correspondence between Complainant (and its counsel) and Respondent, some time prior to June 1, 2016 Respondent "took down" the website identified by the disputed domain name. Although demanded by Complainant (through its counsel), which had agreed to pay Respondent's out-of-pocket expenses in connection with registering the disputed domain name, Respondent did not transfer the disputed domain name to Complainant.
The Registration Agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)). 5. Parties' Contentions A. Complainant
Complainant alleges that it owns rights in the trademark FLOWJO as evidenced by registration at the USPTO and by use in commerce in the United States and elsewhere. Complainant contends that the disputed domain name is identical or confusingly similar to its trademark.
Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent does not own any trademark registrations for FLOWJO and has no rights to use that trademark; (2) the term "FlowJo" does not serve as Respondent's tradename or business identity; (3) Respondent has made no fair use of the disputed domain name; (4) as a consequence of termination of the ICA, "Respondent is no longer licensed or authorized to use Complainant's" trademark or sell Complainant's trademark products, and; (5) Respondent's refusal to transfer the disputed domain name to Complainant is a bad faith attempt to capitalize on Complainant's goodwill in the China market.
Complainant alleges that Respondent registered and is using the disputed domain name in bad faith because: (1) UDRP panels "have found that bad faith registration can be deemed to have occurred even without regard to the state of mind of the registrant at the time of registration, if the domain name is subsequently used to trade on the goodwill of the trademark holder"; (2) Respondent has acknowledged she no longer has rights to use Complainant's trademark on her website, and her inexplicable refusal to transfer constitutes bad faith; (3) Respondent's passive holding of the disputed domain name constitutes bad faith because Complainant's trademark has a strong reputation, Respondent has not provided any evidence of contemplated good faith use of the disputed domain name and Respondent failed to respond to Complainant's request for transfer.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant. B. Respondent
Respondent argues that the terms of the ICA gave her the right to control the specific manner in which to perform her work, and that Complainant was fully aware of her registration of the disputed domain name and gave its consent. Respondent has paid all fees associated with the disputed domain name as well as website maintenance, and Complainant has acknowledged that Respondent paid those expenses.
Respondent indicates that Complainant requested that she remove graphics and make certain other alterations to her website, and that she complied with those requests. In addition, Respondent has followed Complainant's request not to use Complainant's trademark. Respondent indicates that Complainant was aware that Complainant did not have the right to demand transfer of the disputed domain name. Complainant alleges that she, and not Complainant, is owner of the disputed domain name, and that the disputed domain name is not the property of Complainant.
Respondent indicates that she lawfully registered the disputed domain name with Complainant's consent when she was working for Complainant, and that she shut down the website and is no longer using Complainant's trademark. In that regard, there is no risk of consumer confusion. Respondent has not undertaken any action in bad faith and does not intend to profit by simply owning the disputed domain name.
Respondent refers to a blog post regarding a 1993 dispute involving a former employee who secured a domain name with the employer's consent, which dispute was apparently settled for an undisclosed amount.
Respondent argues that Complainant has presented no evidence that she intends to make any profit from the disputed domain name and there is no evidence she has acted in bad faith. She argues that Complainant's allegations of potential future misuse are simply malicious speculation, and that the Federal Trademark Dilution Act of 1995 protects innocent registrants of domain names involving trademarks so long as they employ their websites for noncommercial use.
Respondent requests the Panel to reject Complainant's request for transfer. 6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceeding that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).
The Center formally notified the Complaint to Respondent, and Respondent filed her Response in a timely way. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements. The Panel is satisfied that Respondent was afforded a reasonable opportunity to respond to the Complaint in this proceeding.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief. A. Identical or Confusingly Similar
Complainant has provided evidence of ownership of rights in the trademark FLOWJO based on registration at the USPTO and use in commerce.2 Respondent has not challenged Complainant's ownership rights in that trademark. The Panel determines that Complainant owns rights in the trademark FLOWJO.
The disputed domain name directly incorporates Complainant's trademark and adds the geographic term "China". From the standpoint of confusing similarity, addition of the geographic term does not distinguish the disputed domain name from Complainant's trademark from the standpoint of the Policy. Respondent has not challenged Complainant's assertion that the disputed domain name is confusingly similar to its trademark. The Panel determines that the disputed domain name is confusingly similar to Complainant's trademark.
The Panel determines that Complainant has rights in the trademark FLOWJO, and that the disputed domain name is confusingly similar to that trademark. B. Rights or Legitimate Interests
As reflected in section 6.C. below, the Panel determines that Complainant has failed to demonstrate that Respondent registered the disputed domain name in bad faith. As a matter of administrative panel efficiency, the Panel does not address Complainant's contention that Respondent lacks rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
In order to demonstrate abusive domain name registration and use, a complaining party must demonstrate pursuant to paragraph 4(a)(iii) of the Policy that "the disputed domain name has been registered and is being used in bad faith".
The text of paragraph 4(a)(iii) is in the conjunctive. A prerequisite for an adverse finding is that the domain name "has been registered" in bad faith, in addition to being used in bad faith. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") notes that a "small number" of panels have chosen to overlook the conjunctive text and find bad faith notwithstanding an absence of evidence that an act of registration was undertaken in bad faith.3 That view is not, however, accepted by a preponderance of UDRP panels, and it is not accepted by this Panel.
Respondent registered the disputed domain name further to entry into a contractual arrangement (the ICA) with Complainant under which she was authorized to perform services as an independent contractor on behalf of Complainant. Those services included marketing and selling Complainant's products, which included use of its trademark name. The ICA did not expressly place limitations on Respondent's use of Complainant's trademark during the term of the agreement. Respondent indicates that Complainant was aware of and consented to her registration and use of the disputed domain name, and Complainant was certainly aware of Respondent's website identified by the disputed domain name during the term of the ICA. Complainant has not indicated that it objected to Respondent's activities with respect to the disputed domain name or website during the term of the ICA. Complainant has, in fact, argued that as a consequence of termination of the ICA, Respondent is "no longer licensed or authorized" to use its trademark or sell its products.
Complainant has expressly and by implication acknowledged that Respondent was contractually authorized to use its trademark in the disputed domain name. The evidence in this proceeding supports a finding that Respondent registered the disputed domain name in good faith.
Because the disputed domain name was not registered in bad faith, it is not registered and used in bad faith.
The Panel determines that Complainant has failed to prove that Respondent registered and is using the disputed domain name in bad faith within the meaning of paragraph 4(b) of the Policy.
The Policy addresses complaints regarding abusive domain name registration and use. Its scope is limited. Other forums are appropriate for addressing issues relating to trademark infringement if and when such infringement occurs. 7. Decision
For the foregoing reasons, the Complaint is denied.
Frederick M. Abbott
Sole Panelist
Date: November 8, 2016
1 On the executed Independent Contractor Agreement provided by Complainant, the year in the recited date line of the contract is missing. The signature of Respondent is dated June 30, 2010, and the signature of Complainant is dated July 5, 2010. Work is scheduled to commence on July 1, 2010.
2 The Panel notes that the dates of Complainant's trademark registrations at the USPTO are subsequent to the date of Respondent's registration of the disputed domain name. However, Complainant also relies on trademark rights based on prior use in commerce. The date of the ICA supports a conclusion that Complainant was using the trademark prior to registration of the disputed domain name.
3 WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, 2011 ("WIPO Overview 2.0"), at para. 3.1.
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