Complainant is DealerX of Edgewater, New Jersey, United States of America ("United States"), represented by Phillips Ryther & Winchester, United States.
Respondent is Gurri Kahlon, ROiQ.com of Plano, Texas, United States, represented by Phillip Thomas Horton, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 9, 2017. On March 9, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 9, 2017, 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 March 16, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 5, 2017. The Response was filed with the Center on April 5, 2017. Complainant submitted an unsolicited supplemental filing on April 10, 2017.
The Center appointed Mark Partridge as the sole panelist in this matter on April 20, 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 is a software company located in New Jersey that specializes in digital marketing for automobile dealers. Complainant provides its services under multiple trademarks, including the ROIQ mark. Complainant has obtained a United States Trademark Registration for the ROIQ mark (Reg. No. 4,648,717) for business and marketing software and services, which was registered on December 2, 2014, with a claimed date of first use of November 2013. Complainant operates a website at "" and "", where Complainant advertises and sells its services under the ROIQ trademark.
Respondent is Gurri Kahlon of Plano, Texas. Respondent acquired the disputed domain name in 2009. The disputed domain name was originally registered on March 30, 1999. Respondent used the disputed domain name to advertise business operation and website development services from 2009 until about March 2016. In March 2016, Respondent revised the website to state "ROiQ is preparing for a re-launch soon. We'll return with an improved CRM and Digital Marketing Platform."
On February 6, 2016, Complainant contacted Respondent indicating an interest in purchasing the disputed domain name. The parties engaged in negotiations relating to the transfer of the disputed domain name over the following weeks, but ultimately the disputed domain name was not transferred. 5. Parties' Contentions A. Complainant
Complainant asserts that the disputed domain name is identical to its ROIQ trademark, which Complainant claims to have used since 2007. Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the domain name, has not been authorized to use the ROIQ trademark, has no connection or affiliation with Complainant, and has never made any bona fide use of the disputed domain name. Complainant contends that any use of the disputed domain name by Respondent was not a legitimate use because the services provided were merely token uses and any use was "not sufficient to establish priority in the field of digital marketing analytics." Complaint para. 30.
Complainant asserts that Respondent registered and used the disputed domain name in bad faith, as "evinced by Respondent's use of the domain name to host a website that infringes Complainant's rights." Id. at para. 35. Complainant notes that "after leaving the content of virtually unchanged for over five years, after learning of Complainant's interest in the domain name, immediately changed the content to purport to demonstrate that Respondent was operating in exactly the same field." Id. at para. 36. B. Respondent
Respondent concedes that the disputed domain name is identical to the ROIQ mark, but asserts that he had a legitimate interest in operating the disputed domain name. As early as 2009, Respondent made a bona fide attempt to operate a business via the disputed domain name including developing a consumer-facing website and accruing some sales. Respondent claims it did not intentionally attempt to divert consumers from Complainant. Respondent notes his acquisition of the domain name came four years prior to Complainant's first use in commerce, as identified on the United States trademark application.
Respondent denies purchasing or operating the disputed domain name in bad faith, noting it did not register the disputed domain name to disrupt Complainant's business, it did not intentionally attempt to attract for commercial gain Internet users from Complainant's website by creating a likelihood of confusion with Complainant, and it made a bona fide attempt to run a profitable business at the disputed domain name. 6. Discussion and Findings
Complainant alleges that it has used the ROIQ mark in interstate commerce since 2007, but provides no factual support for this claim. Instead, it contradicts the claim by submitting the only evidence relating to Complainant's use – the U.S. Registration for the ROIQ trademark – which claims first use in commerce on November 2013. Complainant also presents evidence showing that Respondent used the disputed domain name for a website advertising services from July 5, 2010, to at least the time that he was contacted by Complainant in February 2016. Complainant therefore has failed to show priority of use and undermines that necessary fact with its own evidence. Thus, it appears that Respondent's use of the disputed domain name predates Complainant's use of the ROIQ mark by more than three years.
Complainant argues that Respondent failed to make use sufficient to support unregistered trademark rights, citing the definition of bona fide use in 15 U.S.C. 1127 of the Lanham Act. That argument, however, is inapposite to the matters at issue here. The critical question is not whether Respondent has established prior trademark rights, but simply whether Respondent had prior use.
Under paragraph 4(a) of the Policy, a complainant is required to prove each of the following three elements:
(i) The disputed domain name is identical or confusingly similar to a trade mark 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 by Respondent in bad faith.
The evidence presented fails to satisfy its burden on the second and third element of Complainant's claim. A. Identical or Confusingly Similar
Complainant has rights in the ROIQ trademark as demonstrated by its United States Registration No. 4,648,717, which was registered on December 2, 2014. A trademark registration constitutes prima facie evidence of the validity of the mark. National Construction Rentals, Inc. v. T, Inc.,WIPO Case No. D2009-0147.
Where a disputed domain name includes an identical match to a complainant's mark, a complainant has satisfied the burden of proving that the domain name is identical or confusingly similar under paragraph 4(a)(i) of the Policy. See, e.g., Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163.
It is a well-established rule that the Top-Level Domain ("TLD") may be disregarded in determining whether a trademark is identical or confusingly similar to a domain name. See Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd.,WIPO Case No. D2006-0762; Gerling Beteiligungs-GmbH (GBG) v. World Space Corp,WIPO Case No. D2006-0223.
The disputed domain name incorporates Complainant's ROIQ trademark in its entirety. Accordingly, the Panel finds that the disputed domain name is identical to Complainant's ROIQ trademark and that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Under the second element of paragraph 4(a) of the Policy, a complainant is required to present a prima facie case that the respondent lacks rights of legitimate interests in the disputed domain name. After the complainant has made a prima facie case, the burden of production shifts to the respondent to present evidence demonstrating rights or legitimate interests in the disputed domain name. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455.
Paragraph 4(c) of the Policy instructs that rights and legitimate interests can be demonstrated by Respondent if:
"(i) before any notice to you 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 (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 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."
Complainant asserts that Respondent has no rights or legitimate interest in the disputed domain name because Respondent is not commonly known by the domain name, has not been authorized to use the ROIQ trademark, has no connection or affiliation Complainant, and has never made any bona fide use of the disputed domain name. Respondent rebuts this assertion by presenting evidence that beginning in 2009 it made a bona fide attempt to operate a business via the disputed domain name.
The record indicates that Respondent is making use of the disputed domain name for an offering of goods and services in commerce, and this use came before any notice of dispute. Beginning in 2009, Respondent developed a consumer-facing website and began accruing sales. Although Respondent's sales were not substantial, Respondent's use appears to have been legitimate.
Regardless, the Panel must consider whether that use is a bona fide use. To conclude otherwise would allow Respondent to rely on intentional infringement to demonstrate a legitimate interest, which would be contrary to the intent of the Policy. See American Eyewear, Inc. v. Thralow, Inc.,WIPO Case No. D2001-0991 (denying transfer of because Respondent had a legitimate interest in the disputed domain name). Here, it does not appear that Respondent adopted the disputed domain name as a deliberate infringement of Complainant's rights. As noted above, Complainant claims use dating to 2007 but provides no evidence of use prior to the date stated in its United States trademark registration. Based on the record, Complainant has failed to show that it had any use of or rights in the ROIQ trademark at the time of Respondent's acquisition of the disputed domain name. No facts have been presented that suggest a deliberate intent to infringe, and accordingly Respondent's use of the disputed domain name was bona fide.
The record is sufficient to demonstrate Respondent has used the disputed domain name for a bona fide offering of goods and services. Accordingly, Complainant has failed to show that Respondent lacks rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Although Complainant's failure to prove the second element is fatal to its claim, this Panel reviews the third element for completeness. Paragraph 4(b) of the Policy lists circumstances that shall be evidence of registration and use of a domain name in bad faith.
Complainant broadly asserts that "Respondent's bad faith registration and use is evinced by Respondent's use of the domain name to host a website that infringes Complainant's rights," focusing on Respondent's changed use of the disputed domain name in March 2016. Complaint paras. 35-36. Respondent rebuts this by asserting that the disputed domain name was not registered to disrupt Complainant's business and it did not intentionally attempt to attract Internet users to it website by creating a likelihood of confusion with Complainant.
As noted above, the record is devoid of any support for Complainant's contention that it had rights in the ROIQ trademark at the time Respondent acquired the disputed domain name in 2009. "As a general rule, when a domain name is registered before any trademark rights are established, the registration of the domain name is not in bad faith since the registrant could not have contemplated the complainant's non-existent right." MediaSpan Group, Inc. v. Raghavan Rajagopalan,WIPO Case No. D2005-1282. At the time it acquired the disputed domain name, Respondent was not infringing any rights of Complainant, intentionally or otherwise.
As discussed above, Respondent provided a bona fide offering of goods and service through the disputed domain name. Complainant's argument that Respondent's website "infringes Complainant's rights" is not supported by the record and is not a convincing basis on which to find Respondent used the disputed domain name in bad faith. Nor does Respondent's modification of its website evidence registration and use in bad faith. Although Respondent updated the website in March 2016, the character of the website and the services offered by Respondent remained the same. Notably, the modified website stated, "Existing Customers can continue to login to the system using their current credentials," demonstrating continuity from its prior use. Complaint para. 26. The modified website does not reflect an intent to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant's mark.
On the balance, this Panel find that Complainant has failed to sufficiently show that Respondent registered and used the disputed domain name in bad faith, and has not satisfied paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, the Complaint is denied.
Mark Partridge
Sole Panelist
Date: May 4, 2017
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