The Complainant is Entertainment Technology Investments, Inc. d/b/a Gloo, LLC of Boulder, Colorado, United States of America ("United States"), represented by Bryan Cave, LLP, United States.
The Respondent is Contact Privacy Inc. Customer 011945202 of Toronto, Canada / K Blacklock of Workington, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by John Berryhill, Ph.d., Esq., United States. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with Tucows Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 27, 2017. On March 27, 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 disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 28, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Center also sent a notification informing that the Complaint was administratively deficient on the same date. The Complainant filed an amended Complaint on March 31, 2017.
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 the Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 19, 2017. On May 5, 2017, the Respondent requested an extension of the Response due date. In accordance with the Rules, paragraph 5(b), the due date for Response was extended to May 13, 2017. The Response was filed with the Center on May 12, 2017.
The Center appointed Nicholas Smith, M. Scott Donahey and Andrew D. S. Lothian as panelists in this matter on May 26, 2017. The Panel finds that it was properly constituted. Each member of 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.
In its Response, the Respondent points out that the Complaint exceeds the word limit of 5,000 words stipulated in the Supplemental Rules. Even if the word limit is intended only to cover the substantive section of the Complaint, the word count is excessive, that section on its own amounting to over 5,500 words. Manifestly, the Complaint is non-compliant in this regard. The Panel's options are (i) to reject the Complaint out of hand; (ii) to remit it back to the Complainant to render it compliant (i.e., reduce the word count); (iii) to ignore the deficiency and proceed to a decision. If (i) is to be treated as a dismissal "without prejudice", the distinction between (i) and (ii) may simply be as to whether or not a new filing fee will become payable.
The Panel understands that ordinarily issues of this kind are dealt with by the Center before the papers are passed to a panel, hence the verification by the Center (recited above) that the Complaint satisfies the various formal requirements. However, in this case, unusually, the defect passed unnoticed at the time of verification and the Complaint slipped through the net.
In this particular case the Respondent, while making objection to the deficiency, has nonetheless responded fully to the Complaint and the members of the Panel have all read the papers put before them. In these circumstances, and having regard to the Panel's unanimous view as to the outcome of this case on the merits, the Panel believes that no useful purpose would be served by the Panel in not proceeding to a decision on the merits. 4. Factual Background
The Complainant is a company that has since 2012 offered digital platforms described as "Gloo" from its website at "". The precise identity or date of registration of the Complainant is unclear, since the Complaint describes the Complainant as "Entertainment Technology Investments, Inc., a Colorado Corporation d/b/a Gloo, LLC" while the Response properly notes that Gloo LLC was not registered until December 2013.
The Complainant owns three registered trade marks that consist of the word "Gloo" (the "GLOO Mark"), each registered by the United States Patent and Trade Mark Office in October 2012 in classes 41, 42 and 9 respectively. Each of the GLOO Marks states that it was first used on March 15, 2012.
The Domain Name was created on October 30, 1998. The evidence before the Panel is that it was most likely registered by the Respondent then, was certainly registered to the Respondent by 2005 and has remained registered to the Respondent (sometimes hidden behind privacy services, the identity of which has changed twice) since then. It currently resolves to a website (the "Respondent's Website") that contains a number of links to various third party sites for which the Respondent may receive revenue, being a
pay-per-click site ("PPC site"). At various points in the past the Domain Name has been used for PPC sites in different form to the present Respondent's Website, and from 1999-2002 the Domain Name was used for a site that provided search engine services and related links. 5. Parties' Contentions A. Complainant
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant's GLOO Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the GLOO Mark having registered the GLOO Mark and has used the GLOO Mark consistently since early 2012. The GLOO Mark is identical to the Domain Name.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. Since the registration of the Domain Name, the Domain Name has been used wholly for commercial purposes being either a search portal website purporting to offer search capabilities and displaying related links to third party websites or as a PPC site. The Respondent has never made any legitimate offering of goods and services through the Domain Name nor has he ever been commonly known as "Gloo". The Domain Name has 33 distinct historical ownership records. The Respondent has also consistently tried to sell the Domain Name, including by advertising on the Respondent's Website. The Complainant has made a number of offers to purchase the Domain Name and they have been rejected by the Respondent with the Respondent making significantly higher counter-offers. By reason of those facts the Respondent holds no rights or legitimate interests in the Domain Name.
The Domain Name was registered and is being used in bad faith. The Domain Name is identical to the GLOO Mark other than the addition of the ".com" top-level domain. Notwithstanding the incorporation of the Complainant subsequent to the registration of the Domain Name, the Complainant doubts whether, given the 33 distinct historical ownership records, and the fact that the actual registrant hid itself from the public through privacy protection for eight years, the Respondent can prove that its current registration occurred prior to the establishment of Complainant's trade mark rights. Moreover, as the Respondent has been passively holding the Domain Name, the general rule that registration of a domain name prior to the establishment of trade mark rights precludes a finding of bad faith registration does not apply here. The fact that the Respondent has offered to sell the Domain Name to the Complainant for a price well in excess of the Respondent's out-of-pocket costs is evidence of bad faith registration and use under the Policy as is the Respondent's use of the Domain Name for a PPC website. This use continues to harm the Complainant in circumstances where the Respondent makes no claim to any trade or service mark connected to the Domain Name.
There have been several recent panel decisions that take the view that, once a complainant has proved use falling within paragraph 4(b)(iv) of the Policy, the complainant is not required to prove that the respondent acted in bad faith in registering the disputed domain name or alternatively that a finding of bad faith registration can be found retroactively. These decisions include Octogen Pharmacal Company Inc v. Domains by Proxy, Inc/Rich Sanders and Octogen e-Solutions,WIPO Case No. D2009-0786; City Views Limited v. Moniker Privacy Services/Xander, Jeduyu, ALGEBRALIVEI,WIPO Case No. D2009-0643; Zerospam Security Inc. v. Internet Retail Billing, Inc., Host Master,WIPO Case No. D2009-1276; and Ville de Paris v. Jeff Walter,WIPO Case No. D2009-1278 (the "Octogen cases"). The Respondent should not be able to use or intend to use a domain name to trade on the good will established by a mark holder (conduct that would otherwise be "bad faith") simply because the Respondent decides to renew or re-register the domain name registration. The Respondent knew of the Complainant's long and continuous use of the GLOO Mark at the time it renewed or re-registered its registration and that it had no right, title or interest, whatsoever, in the GLOO Mark or the Domain Name. Additionally, the Complainant owns a number of United States trade mark registrations, providing the Respondent and others with constructive notice of its rights in and to the GLOO Mark. Collectively and individually the Respondent's conduct amounts to registration and use of the Domain Name in bad faith. B. Respondent
The Complainant has not proven that the Domain Name was registered and used in bad faith because the Domain Name was registered in 1998 and neither the Complainant, nor its trade mark, existed prior to 2012. The Respondent registered the Domain Name, being a homophone of the generic word "glue" in 1998. The Domain Name has never been used for any purpose relating to the Complainant, nor has there ever been any "changed purpose" as required under the largely abandoned doctrine set out in the Octogen cases. The Complainant has engaged anonymous agents to offer the Respondent money for the Domain Name and falsely claims that the Respondent has tried to sell the Domain Name to the Complainant. The Complainant was unhappy with the negotiation to purchase the Domain Name and brought this proceeding despite the factors listed above.
The Respondent has rights and legitimate interests in the Domain Name by reason of the fact that the Respondent registered the Domain Name prior to the Complainant having any rights in the GLOO Mark. The Respondent registered the Domain Name in 1998. The earliest verifiable information from the WhoIs history record confirms that in 2005 the Respondent was the listed registrant. The Respondent has since availed himself of a privacy service since that date and the Complainant's reference to "WhoIs changes" do not change the fact that the Respondent is objectively shown to be the registrant in 2005, eight years before the Complainant established rights in the GLOO Mark. The Complainant alleges "33 distinct historical ownership records exist for the Domain Name" such as contact detail updates, changes of name servers, expiration dates, or the more recent use of privacy to deter overzealous domain purchasers. However to imply these administrative details suggest the Domain Name has ever been registered to anyone other than Respondent, is misleading.
The fact that the Respondent has used the Domain Name for paid advertising services does not result in the Respondent lacking rights and legitimate interests when the Respondent has been using the Domain Name for that purpose since before the Complainant had any rights in the GLOO Mark. Furthermore the Respondent first registered the Domain Name in 1998 as part of a broader concept to create a "glue" that would connect various Internet resources. The Respondent registered several other domain names that contained or were homophones with the word "glue" in 1999 and 2000. Absent some legal impediment, of which the Complainant has advanced none, the Respondent was entitled to register the Domain Name in 1998 and use the Domain Name since then. Accordingly the Complainant has failed to show the Respondent lacks rights or legitimate interests.
The evidence in this case is that the Respondent has held the Domain Name prior to the Complainant's existence. The Domain Name could not have been registered and used in bad faith. Furthermore the Respondent could not have registered the Domain Name to sell to the Complainant or take advantage of the Complainant's reputation as the Complainant did not exist at the time of registration.
The Octogen cases referred to by the Complainant have not been followed by UDRP panels, but in any event are predicated on some sort of "changed use" having occurred after the Respondent became aware of the Complainant. Nothing of the sort has occurred in this case. The Complainant sought to purchase the Domain Name and the Respondent made a counter-offer which does not show bad faith. Finally according to the Respondent, the Respondent located in the United Kingdom has no duty of notice of United States trade mark registrations. Accordingly the Complainant has failed to show that the Domain Name was registered and used in bad faith. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant has the burden of proof in respect of the following three elements:
- (i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- (ii) The 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
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant's trade or service mark.
The Complainant is the owner of the GLOO Mark, having registrations for GLOO as a trade mark in the United States. As the ".com" gTLD may be discarded in considering the identity or confusing similarity between a domain name and a mark, the Domain Name is identical to the GLOO Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Given the Panel's finding that the Respondent has not registered and used the Domain Name in bad faith (see below), the Panel concludes that in these circumstances it is not necessary to make a finding under this element of the Policy. C. Registered and Used in Bad Faith
The Policy, paragraph 4(b) provides that for the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owners of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) The Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website or location. (Policy, paragraph 4(b))
In this case the date at which the Respondent acquired the Domain Name is a critical question. The Respondent's evidence is that he has registered and held the Domain Name since 1998. The documentary evidence before the Panel, being past WhoIs reports annexed to the Complaint, is that the Respondent was the registrant of the Domain Name in 2005, and there is no evidence, as opposed to undocumented speculation, that a different entity has held the Domain Name either before 2005 or between 2005 and the present date.
The Panel does not accept the Complainant's submission that the existence of 33 distinct historical ownership records somehow shows that the Respondent registered the Domain Name after the first use of the GLOO Mark. The Domain Name has been registered for approximately 19 years. As noted in the Complaint itself, a new historical record is created if the Domain Name is redirected to a different name server or IP Address, or if details of the privacy service used by the Respondent change. There is no reason before the Panel not to accept the Respondent's evidence that he has registered and held the Domain Name since 1998, however if the Panel were to find that the Respondent has only held the Domain Name since 2005, that decision would make no difference to the outcome of this case.
The Panel finds on the balance of probabilities that the Domain Name was registered in 1998 by the Respondent. The GLOO Mark was first registered in October 2012 and used in March 2012. The Complainant provides no evidence that it existed in 1998 or even 2005 and the Respondent's evidence is that Gloo LLC was registered in December 2013. Even taking the Complainant's evidence at its highest, there is no possibility that the Respondent, when he registered the Domain Name in 1998, could have been aware of the Complainant or its rights in the GLOO Mark: the GLOO Mark simply did not exist. For this reason, the Domain Name was not registered in bad faith.
The Complainant has argued that bad faith registration and use can be found by the fact that the Respondent's Website redirects to what appears to be a pay-per-click webpage, and that the Respondent is seeking to sell the Domain Name and received offers from the Complainant, rejected them and made significantly higher counter-offers. These arguments are unpersuasive to this Panel.
Paragraph 4(b)(i) of the Policy specifically refers to the Respondent acquiring the Domain Name primarily for the purpose of selling the Domain Name to the Complainant or a competitor of the Complainant for valuable consideration in excess of the Respondent's out-of-pocket costs directly related to the Domain Name. The Complainant fails to explain how the Respondent could register the Domain Name for this purpose when the Complainant did not exist at the time of the registration and would not use the GLOO Mark for another fourteen years. The mere fact that the Respondent has chosen to sell the Domain Name for valuable consideration is not by itself evidence that the Respondent registered the Domain Name for the purpose of selling the Domain Name to the Complainant or a competitor of the Complainant for valuable consideration in excess of the Respondent's out-of-pocket costs directly related to the Domain Name.
Paragraph 4(b)(iv) of the Policy requires a finding that the Respondent is using or has used the Domain Name intentionally to attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's mark. There is no evidence that the Respondent has done so by creating a likelihood of confusion with the GLOO Mark. Not only does the Respondent's Website make no reference to the Complainant or its area of business, it would have been literally impossible for the Respondent to do have had any such intent in fourteen years after the Respondent registered the Domain Name prior to the first use of the GLOO Mark.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Jurisprudential Overview 3.0"), states in response to the question "Can bad faith be found where a domain name was registered before the complainant acquired trademark rights?" that:
"Subject to scenarios described in 3.8.2 below [which do not apply in the present proceeding], where a respondent registers a domain name before the complainant's trademark rights accrue, panels will not normally find bad faith on the part of the respondent."
The Complainant has referred to a number of cases, being the Octogen cases, where bad faith registration was found in circumstances where the Domain Name was registered prior to the establishment of trade mark rights. These cases are not recent (as submitted in the Complainant), the most recent having been decided in 2011. Furthermore the WIPO Jurisprudential Overview 3.0 states, in respect of the Octogen cases:
"NB, a number of cases in 2009 and 2010 (including Mummygold, Octogen, Parvi, and Jappy) explored application of registrant representations in UDRP paragraph 2 in finding so-called "retroactive" bad faith registration; while this particular concept has not been followed in subsequent cases…".
The Panel declines the Complainant's invitation to decide the Complaint in a similar manner to the Octogen cases. Even if the Panel were to consider the Octogen cases, the Complaint fails to establish that, following the Respondent becoming aware of the Complainant, he has changed the manner in which the Domain Name is used to take advantage of the Complainant's reputation in the GLOO Mark.
Finally the Complainant's argument that the Domain Name, by being passively held, was registered in bad faith is misconceived and unsupported by UDRP precedent. The concept of passive holding allows panels to find that a domain name has been used in bad faith in circumstances where there has been no active use of the domain name and the respondent has not participated in the proceeding, see paragraph 7.8-7.12 of Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. It does not operate (and the Complainant has provided no precedent to support its submission that it operates in this manner) as an exception to the "general rule that the registration of a domain name prior to the establishment of trademark rights precludes a finding of bad faith registration does not apply here". Furthermore even if the concept did operate in this manner, the evidence in this case is that the Domain Name was used as a search engine for a number of years, the Respondent responded to inquiries and the Respondent has participated in this proceeding.
While there have been cases where bad faith has been found when the registration took place prior to the acquisition of trade mark rights, such cases involve situations where, at the time of registration the respondent is aware of the complainant and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights. This is not such a matter. The Complainant did not hold any rights in the GLOO Mark at the time the Respondent registered the Domain Name. The Panel finds that the Respondent has not registered and used the Domain Name in bad faith. 7. Decision
For the foregoing reasons, the Complaint is denied.
Nicholas Smith
Presiding Panelist
M. Scott Donahey
Panelist
Andrew D. S. Lothian
Panelist
Date: May 31, 2017
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