Complainant is Greenvelope, LLC of Mercer Island, Washington, United States of America, represented by Lewis Brisbois Bisgaard & Smith LLP, United States of America.
Respondent is Virtual Services Corporation of Nassau, Bahamas. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with N, Inc. (N LLC) (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 5, 2017. On January 5, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, 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 January 13, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 2, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on February 3, 2017.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on February 10, 2017. 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 Greenvelope, LLC is a digital stationery company specializing in contemporary correspondence, allowing customers to send paperless invitations for personal and professional events. Complainant's electronic invitation service emulates the experience of opening "traditional" printed invitations while saving trees, time, and money.
Complainant owns the GREENVELOPE trademark, which was registered with the United States Patent and Trademark Office ("USPTO") on January 24, 2012 in International Class 38. The GREENVELOPE mark carries USPTO registration number 4,090,253, with a date of first use in commerce of April 4, 2009.
The Domain Name was registered on July 20, 2006. The Domain Name resolves to a landing page, with links to advertisements. 5. Parties' Contentions A. Complainant (i) Identical or Confusingly Similar
Complainant contends the Domain Name is confusingly similar to its GREENVELOPE trademark. Complainant began in 2008, and over 150,000 event hosts have used Complainant's services to send invitations. By the end of 2011, Complainant's users had sent over 1,000,000 cards. In June 2013, Business Insider named Complainant as one of the "Coolest Small Businesses in Seattle."
Complainant states that both the Domain Name and Complainant's GREENVELOPE mark combine the terms "green" and "envelope." The only difference is that Complainant's mark conjoins these terms by sharing the book-end letters "en" (thus deleting one of two occurrences of the letters "en"). Complainant's GREENVELOPE mark evokes the terms "green" and "envelope." Because the Domain Name simply combines these terms, Complainant states it is confusingly similar to Complainant's GREENVELOPE mark. The repetition of the letters "en"—precisely the letters that Complainant's mark creatively removed—has little effect in distinguishing the Domain Name from Complainant's mark. Additionally, as a matter of general impression, the look, sound, and meaning of the Domain Name is confusingly similar to that of Complainant's mark, GREENVELOPE.
Complainant contends that even if the Domain Name was registered before Complainant's GREENVELOPE mark was registered, the timing would only be relevant to assessing bad faith—it is not relevant to whether the marks are confusingly similar. (ii) Rights or Legitimate Interests
Complainant maintains that Respondent has no rights or legitimate interests in respect of the Domain Name. To the best of Complainant's knowledge, Respondent has not used the Domain Name (nor any corresponding name) in connection with any bona fide offering of goods or services. Although Respondent registered the Domain Name a decade ago, it remains linked merely to a landing page—Respondent offers no goods or services at the Domain Name or under the mark, nor is there any indication that Respondent intends to do so. (iii) Registered and Used in Bad Faith
Complainant states that Respondent in this case appears to have only used the Domain Name as a landing page, with links to advertisements. Complainant contends that according to prior UDRP decisions, bad faith has been interpreted to include using a domain name as a parking service that deliberately attracts, for commercial gain, Internet users to competing sites by trading a likelihood of confusion with the complainant's trademark. The registration is in bad faith even if the advertisements were automatically generated and the respondent had no hand in what sponsored links were chosen. Complainant refers to prior UDRP cases where panels have ruled that the respondent is responsible for the content of any webpage hosted at the disputed domain name and cannot evade this responsibility by means of its contractual relationship with the registrar; that the respondent must have known that by using a parking service, some sponsored links would be generated; that the respondent cannot infringe the complainant's rights with impunity on the basis that it is allowing a third party to reap the profits of its wrongful conduct; and that the respondent is at all times in contractual control of the content of the website at the disputed domain name, and has the power to instruct the registrar to remove the parking page.
In addition, Complainant contends that in this case, the incomplete and inaccurate information that Respondent provided to the Registrar supports Respondent's bad faith registration. The phone number listed for Respondent is "+1.0000000," an invalid phone number. Additionally, the address Respondent provided is in the Bahamas, but "Bahamas" does not appear anywhere in Respondent's address—in fact, Respondent listed "US" as the Country for the Registrant, Admin, and Tech addresses. Moreover, the addresses of Respondent and a third-party, the "Winterbotham Trust Company Limited," are nearly identical (except that the latter explicitly indicates the address is in the Bahamas), including the inclusion of "Winterbotham Place" and the same P.O. box number. The Winterbotham Trust Company Limited appears to be an organization that provides services such as banking, trust, outsourcing, and fiduciary services.
Last, Complainant states that Respondent Virtual Services Corporation has been named as a respondent in at least three other UDRP decisions. Complainant claims that a respondent's prior involvement in UDRP cases is relevant to bad faith. For example, in Ustream.TV, Inc. v. Vertical Axis, Inc.,WIPO Case No. D2008-0598, the panel took "notice of the Respondent's reputation as a serial registrant of domain names that cybersquat on others' trademarks," and stated that while "this is not conclusive, and ... each case must be assessed on its own facts, the Respondent's pattern of cybersquatting in other cases can be considered as an additional factor in determining whether the Respondent's factual assertions and protestations of good faith are credible, and whether the Respondent's conduct in this case also constitutes abusive cybersquatting." Complainant contends that as in Ustream.TV, Inc. v. Vertical Axis, Inc.,supra, Respondent's reputation as a serial cybersquatter should weigh in favor of finding bad faith. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
In order to succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith.
Respondent's failure to file a response does not automatically result in a decision in favor of Complainant. A. Identical or Confusingly Similar
The Panel must first determine whether the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights. Complainant has submitted evidence to show that it owns the GREENVELOPE trademark, with a United States registration dating from 2012 and a date of first use in commerce dating from April 2009. Complainant has also provided evidence to show that it has promoted its mark and achieved significant recognition following the commencement of its business. The Panel observes that the Domain Name was registered in July 2006, predating Complainant's trademark. However, for purposes of the first element under paragraph 4(a) of the Policy, the "UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired rights." WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") (noting also that in circumstances where the complainant acquired trademark rights after registration of a domain name, it may be difficult to prove that the domain name was registered in bad faith under the third element of the UDRP).
Complainant's GREENVELOPE trademark combines the words "green" and "envelope," while creatively conjoining the book-end letters "en" shared by both words. The Domain Name, in contrast, is comprised of the complete version of the words "green" and "envelope." The Panel finds that Complainant's GREENVELOPE mark, nevertheless, evokes the terms "green" and "envelope." Moreover, the general impression, look, sound, and meaning of the Domain Name is very similar to that of Complainant's GREENVELOPE mark.
Accordingly, the Panel concludes that the Domain Name is confusingly similar to Complainant's mark and that Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the Domain Name. A complainant is normally required to make out a prima facie case that a respondent lacks rights or legitimate interests in a domain name. Once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
Here, Complainant has indicated that Respondent has no rights or legitimate interests in respect of the Domain Name because it has not been used in connection with any bona fide offering of goods or services, but instead has been used merely for a landing page, with links to advertisements. Based on the record, the Panel also observes that there is no indication that Respondent, Virtual Services Corporation, has been commonly known by the name "Green Envelope." Further, there is no evidence that the Domain Name has ever been used for any fair use or noncommercial purposes, or for any use other than as a landing page.
Respondent has failed to submit a response in this case to challenge any of Complainant's allegations.
In view of Complainant's submissions and the Panel's own review of the record, the Panel determines that Respondent has no rights or legitimate interests in the Domain Name.
Accordingly, the Panel concludes that Complainant has established the second element of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
As to the final element under paragraph 4(a) of the Policy, the Panel finds that Complainant has failed to establish that Respondent registered and is using the Domain Name in bad faith.
As noted above, Respondent registered the Domain Name in 2006, more than five years before Complainant registered its GREENVELOPE trademark in 2012, and approximately three years before Complainant first commenced use of its GREENVELOPE mark in commerce in April 2009. In this regard, WIPO Overview 2.0, paragraph 3.1, raises and answers the question, "[c]an bad faith be found if the domain name was registered before the trademark was registered or before unregistered trademark rights were acquired?" In response, the Overview provides the consensus view:
"Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date…, when a domain name is registered by the respondent before the complainant's relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right."
In this case, even in the absence of a response from Respondent, there is simply no evidence provided by Complainant that Respondent registered the Domain Name to intentionally target a trademark owner including Complainant and its GREENVELOPE mark, or the trademark of any third-party for that matter. Instead, the Domain Name corresponds to the dictionary words "green" and "envelope," and was registered years before Complainant first started using its trademark.
Despite these circumstances, of which Complainant was presumably aware, Complainant contends nonetheless that the Domain Name was registered in bad faith because Respondent provided false registrant information. Even assuming this is true, this conduct, without any evidence of targeting of a trademark, does not alone amount to bad faith registration in this case for purposes of the Policy. A review of UDRP cases reveals that providing false registration information is sometimes considered as one of several elements, which on a cumulative basis (e.g., in combination with the targeting of a complainant's trademark), can result in a finding of bad faith registration. The Panel agrees with the decisions on this point. Here, however, there is no evidence that Respondent targeted Complainant and its marks at the time of registration, when it created the Domain Name comprised of the two dictionary words "green" and "envelope" before Complainant's mark even existed. Nor is this a case of typo-squatting, as one UDRP panel found in a previous case involving Respondent, where the disputed domain name clearly targeted the pre-existing trademark of the complainant in that case. Cf. Supermarch's Match v. Virtual Services Corporation,WIPO Case No. D2007-1075 ("the disputed domain name is an example of 'typosquatting' designed to be confusing and profit by confusion"). In addition, the subsequent use of the Domain Name as a landing page with links to advertisements for which Respondent is responsible, while sometimes evidencing bad faith use of a disputed domain name, is insufficient in this case to overcome the lack of bad faith registration under the Policy.
Finally, to the extent Complainant considers that the current use of the Domain Name infringes on its trademark rights, the decision in this case is without prejudice to any other means, besides the UDRP, that Complainant might pursue to protect its rights.
Accordingly, the Panel finds that, in view of all of the above circumstances in this case, Complainant has failed to establish Respondent's bad faith. 7. Decision
For the foregoing reasons, the Complaint is denied.
Christopher S. Gibson
Sole Panelist
Date: February 25, 2017
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