The Complainant is FastTrak of Clermont, Florida, United States of America (“U.S.”), internally represented.
The Respondent is Tech Admin, Virtual Point of Irvine, California, U.S., represented by Lewis & Lin, LLC, U.S. 2. The Domain Name and Registrar
The disputed domain name is registered with Dynadot, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 2, 2017, 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.
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 the Respondent of the Complaint, and the proceedings commenced on April 4, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 24, 2017. On April 21, 2017, the Respondent submitted to the Center a “Notice of Court Proceeding and Request to Terminate or Suspend Proceedings,” attaching therewith a copy of a complaint the Respondent had filed against the Complainant the day before in the U.S. District Court for the Middle District of Florida (the “Federal Complaint”), seeking (1) a declaratory judgment that, among other things, the Respondent is entitled to registration, ownership and use of the disputed domain name, and (2) a finding of Reverse Domain Name Hijacking. In its Request to Terminate or Suspend Proceedings, the Respondent requested that “[t]o the extent that a response [to the UDRP Complaint] is necessary, please consider the [Federal Complaint] as Respondent’s response.” The Center notified the Parties of the commencement of the Panel appointment process on April 25, 2017.
The Center appointed Evan D. Brown as the sole panelist in this matter on May 2, 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
The Complainant provides web-based services for coaches and athletes to manage their training in the endurance sports and fitness industry. The Complainant has been registered as a partnership in the state of Florida since 2010, and owns U.S. Reg. No. 5,124,050 for the trademark FASTTRAK (and Design), which it first used in commerce on June 17, 2011.
The Respondent is an entity owned and operated by Dave Lahoti. The Complainant alleges that the Respondent first registered the domain name in late 2015, after its previous owner allowed the registration to lapse. The Respondent avers, however, that Mr. Lahoti first registered the disputed domain name in 2004, and has maintained registration of the disputed domain name either in his own name or through entities he owned or controlled since the time of registration. 5. Procedural Issue – The Respondent’s Request to Terminate or Suspend Proceedings A. Whether to Grant the Request
The Panel first considers whether to grant the Respondent’s Request to Terminate or Suspend Proceedings.
Paragraph 18(a) of the Rules provides that “[i]n the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.”
In this case, the Panel sees no appropriate reason to suspend or terminate these proceedings. The Complainant has asked for a decision in the dispute, and from a certain perspective, is entitled to an answer to the question for which it paid a filing fee to the Center. Moreover, the Respondent’s arguments – which it makes in the Federal Complaint – appear to be essentially the same arguments it would make in a formal response to the Complaint herein. Further, as another panel observed in Tiara Hotels & Resorts LLC v. John Pepin,WIPO Case No. D2009-0041, a decision in this matter may help the parties settle their dispute. “If this dispute is headed to court, there is no reason that the parties cannot continue to search for alternative methods of resolving their dispute. One popular form of alternative dispute resolution is early neutral evaluation; this decision may be able to serve that function and provide the parties with the opportunity to see how one neutral party reacts to their various claims and defenses.” Id.
In any event, the U.S. District Court for the Middle District of Florida will not be bound by the decision of this Panel. If the parties wish to continue to litigate the dispute there, this decision will not serve as no impediment.
Accordingly, the Panel denies the Request to Terminate or Suspend Proceedings. B. Considering the Respondent’s Federal Complaint as a Response
The Panel next considers the remaining procedural issue, namely, whether to accept the Respondent’s request that the Panel consider the Federal Complaint as the Respondent’s Response.
Paragraph 10(a) of the Rules provides that “the Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules,” and Paragraph 10(d) of the Rules states that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence.”
The Respondent submitted a signed, file-stamped copy of the Federal Complaint, indicating that the document had already been filed with the court. By filing the Federal Complaint, in accordance with Federal Rule of Civil Procedure (FRCP) 11, counsel for the Respondent certified, on pain of monetary and other sanctions from the court, that the factual contentions have evidentiary support.
The meeting of the FRCP 11 threshold is enough to convince this Panel that consideration of the substance of the Federal Complaint is appropriate, and should be given notable weight. Accordingly, the Panel will accept the Federal Complaint as the Respondent’s response, and proceed to a decision on the merits. 6. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s registered trademark; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith. B. Respondent
The Respondent contends, among other things, that because its owner (Mr. Lahoti) registered the disputed domain name years before the Complainant acquired any trademark rights, the disputed domain name was not registered in bad faith. The Respondent further asserts that the dispute has been brought in bad faith and constitutes Reverse Domain Name Hijacking. 7. Discussion and Findings
Generally speaking, 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. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 3.1.
Though the Complainant asserts that the Respondent first registered the disputed domain name in “late 2015”, nothing else in the record supports that contention, and in fact, the remaining evidence – including evidence submitted by the Complainant itself – contradicts the assertion. The WhoIs information for the disputed domain name (the Complainant’s Annex 1) shows a registration date of October 2, 2004, not “late 2015” as asserted in the Complaint. Moreover, the Respondent alleges – again, under the standard of FRCP 11 – that the Respondent or its owner has held the disputed domain name since 2004. On balance, the Panel finds the Respondent’s evidence of registration since 2004 creditable.
Accordingly, given the Panel’s finding that the Respondent has controlled the registration of the domain name since before the Complainant’s trademark rights arose, the Respondent could not have registered the disputed domain name in bad faith. For this reason, the Complaint fails on the third UDRP element. Since the three UDRP elements are conjunctive, i.e. the Complainant must prove all three, it is not necessary to analyze the first two elements. 8. Reverse Domain Name Hijacking
In the Federal Complaint (which, as discussed above, the Panel is treating as the Respondent’s response), Respondent has raised the assertion that the Complainant has engaged in Reverse Domain Name Hijacking (“RDNH”).
In considering RDNH, the Panel must have regard to paragraph 15(e) of the Rules, and the following passage in particular:
If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
RDNH is defined in paragraph 1 of the Rules as meaning “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
In the circumstances, also noting that the Complainant is not represented by counsel, the Panel finds that the Complaint was misdirected and generally wrongly pursued. But the Panel cannot go so far as to determine the action was taken in bad faith. The Panel will give the Complainant the benefit of the doubt, and attribute the decision to file the action to a lack of robust understanding, rather than bad faith. 9. Decision
For the foregoing reasons, the Complaint is denied.
Evan D. Brown
Sole Panelist
Date: May 16, 2017
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