The Complainants are Voys B.V. and Voys United B.V. of Groningen, Netherlands, represented by ICTRecht, Netherlands.
The Respondent is Thomas Zou of Millbrae, California, United States of America (“United States”), represented by Lewis & Lin, LLC, United States. 2. The Domain Name and Registrar
The disputed domain name, (the “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 November 2, 2017. On November 2, 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 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 November 7, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 27, 2017. The Response was filed with the Center November 22, 2017.
The Center appointed Tony Willoughby, Wolter Wefers Bettink and Diane Cabell as panelists in this matter on December 27, 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.
While there are two Complainants, they appear to the Panel to be associated companies. The Panel treats them as a single complainant for the purposes of this decision. 4. Factual Background
The Complaint says nothing about the Complainant save that it is based in the Netherlands and is the proprietor of two trade mark registrations in classes 35 (advertising services provided by the Internet), 38 (interstate telephone services) and 42 (IT services), namely:
- Benelux trade mark registration No. 1071931 VOYS (word) registered on February 24, 2006 (application filed March 16, 2005).
- European Union trade mark registration No. 015978174 VOYS (word) registered on February 15, 2017 (application filed October 27, 2016).
The Domain Name was registered on March 29, 2000. The Respondent claims to have acquired the Domain Name in December, 2008. It is connected to a static webpage featuring the message1 :
This domain is for sale.
Please contact domains@
© 2007
The Respondent describes himself as an investor in four letter domain names. He is a United States citizen based in California holding in excess of 1000 four letter domain names.
On August 17, 2017 the Complainant’s representative sent to the Respondent by email a letter of demand drawing the Respondent’s attention to the Complainant’s trade mark rights and inter alia seeking transfer of the Domain Name “for a sum of money equal to the original registration fees”.
On August 22, 2017 the Respondent replied saying “unfortunately I won’t be able to comply with this letter.”
The correspondence continued with email exchanges in September and early October 2017 in the course of which the Complainant’s representative enquired how much the Respondent wanted for the Domain Name, the Respondent enquired how much the Complainant was prepared to offer, the Complainant’s representative offered USD 3,000, the Respondent indicated that he was looking for a much higher figure, the Complainant’s representative asked what price the Respondent had in mind and the Respondent asked the Complainant to make its best offer. The correspondence ended there. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is identical or confusingly similar to the Complainant’s VOYS registered trade mark; that the Respondent has no rights or legitimate interests in respect of the Domain Name; and that the Domain Name has been registered and is being used in bad faith.
The Complainant’s contentions are based upon the following:
(a) The Domain Name has never been used and the webpage to which it has been connected since 2007 indicates that it is for sale;
(b) The Respondent is the registered proprietor of over 2000 domain name registrations and all of them are offered for sale;
(c) It is clear that the Domain Name was registered with a view to selling it at a profit;
(d) The Respondent has refused the Complainant’s offer of USD 3000 for the Domain Name and has indicated that he is looking for a much larger sum.
The Complaint concludes: “Respondent’s registration of the domain name can therefore be regarded as ‘registration and use in bad faith’ as referred to under Article 4 of the UDRP – ICANN andWIPO Case No. D2001-0903 of the WIPO Arbitration and Mediation Center.” B. Respondent
The Respondent denies the Complainant’s contentions, save that he acknowledges that the Domain Name is similar to the Complainant’s trade mark VOYS.
The Respondent asserts that he is a domain name investor specialising in four letter domain names and has registered over 1,000 four letter domain names since he started out in 2006. A list of those names is exhibited to the Response.
The Respondent has produced evidence to show that he purchased the Domain Name in December, 2008. He states that he acquired the Domain Name for its value as an acronym. He states that he had no knowledge of the Complainant or its trade mark rights when he acquired the Domain Name and had no reason to be aware of it given that it is based in the Netherlands and he has no connection with the Netherlands.
The Respondent has produced evidence to show that four letter domain names can command very high prices running into five, six and sometimes even seven figure sums.
The Respondent contends that he has a legitimate interest in respect of the Domain Name in that it was acquired as part of his business, a legitimate business trading in four letter domain names.
The Respondent has produced evidence to show that over the years he has received several enquiries from people showing interest in purchasing the Domain Name including three people employed by or associated with the Complainant.
The Respondent summarises the case as follows:
“This is quite simply a case of a trademark owner abusing the Policy to gain ownership of a corresponding “.com” domain name that was registered for a legitimate purpose in good faith. Complainant failed to acquire the Domain Name from Respondent because it did not want to pay Respondent’s price, so it filed the instant bare bones Complaint, rife with unsupported allegations, in the hope that Respondent would default. As shown herein, Complainant’s actions warrant a finding of Reverse Domain Name Hijacking.” 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark 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.
In coming to a decision the Panel has to have regard to paragraph 15(e) of the Rules and in particular the following sentence namely:
“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.”
Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”. B. Identical or Confusingly Similar
It is not in dispute that the Complainant has trade mark rights in respect of the word mark VOYS and that the Domain Name is identical or confusingly similar to the Complainant’s trade mark and the Panel so finds. C. Rights or Legitimate Interests
The Complainant’s contentions in respect of this element, paragraph 4(a)(ii) of the Policy, are very briefly stated, namely:
“The domain name has never been used by Respondent after its registration. Since 2007, this domain name is even offered for sale. A copy of the webpage is provided as Annex 6. From this, it is evident that Respondent does not have a legitimate interest in the domain name .”
This is an extraordinary statement. It incorrectly assumes that (1) non-use of a domain name of itself prevents the registrant from acquiring a right or legitimate interest and (2) registration of a domain name for no reason other than to sell it necessarily deprives the registrant of a right or legitimate interest.
As one member of this Panel held in Allocation Network GmbH v. Steve Gregory,WIPO Case No. D2000‑0016 (“Allocation”) the use of domain names for the purpose of their sale may in certain circumstances give rise to rights or legitimate interests in respect of those domain names within the meaning of paragraph 4(c)(i) of the Policy (i.e. as a bona fide offering of goods or services).
“Respondent has registered over 400 domain names, all of which contain or are composed of common words or short phrases from the English language or misspellings of such words. In trademark terms, many of these domain names would be considered descriptive of certain goods or services, or generic. Registration of descriptive or generic terms as a domain name is possible under the .com TLD. As the commercial value of such domain names has increased, brokers like Respondent have seized the opportunity to sell such domain names to the highest bidder. In principle, such a practice may constitute use of the domain name in connection with a bona fide offering of goods or services (i.e. the sale of the domain name itself).”
In this case the Respondent’s domain names are not common words or mis-spellings of common words, but four letter domain names registered for their value as acronyms. The principle is precisely the same. While it is true that the Domain Name, comprising both vowels and consonants, is a word/name that is capable of being spoken/pronounced, it is not out of place in the Respondent’s large portfolio of four letter domain names, most of which comprise unpronounceable acronyms.
The key to whether or not the Respondent’s domain name business constitutes a bona fide offering of goods and services for the purposes of paragraphs 4(a)(ii) and 4(c)(i) of the Policy is the Respondent’s motivation in registering the domain names and, in particular, the Domain Name. Is it the case that the Respondent registered them to take advantage of their trade mark value or, as the Respondent claims, for their inherent value as four letter domain names?
The Respondent’s explanation appears to the Panel to be a credible explanation. The Complainant has not demonstrated that either its trademark VOYS or the Complainant itself was well known in the United States at the time the Respondent acquired the Domain Name, nor that there was any prior association between the Respondent and the Complainant.
The Complainant has failed to satisfy the Panel that the Respondent has no rights or legitimate interests in respect of the Domain Name. D. Registered and Used in Bad Faith
The Complainant contends that the Respondent’s registration of a large number of domain names with the “intention to resell these domain names to third parties for a higher sum of money than the original registration fees” means that “Respondent’s registration of the domain name can therefore be regarded as ‘registration and in use in bad faith’ as referred to under Article 4 of the Uniform Domain Name Dispute Resolution Policy – ICANN andWIPO Case No. D2001-0903 of the WIPO Arbitration and Mediation Center.”
As indicated above, registration of domain names with a view to selling them at a profit is not of itself objectionable under the Policy. For such an activity to constitute bad faith registration and use under the Policy, the registrant must be targeting the relevant trade mark owner. In this case, the Complainant has to have put something before the Panel to enable the Panel to, at the very least, infer that the Respondent’s acquisition of the Domain Name in 2008 was with a view to selling the Domain Name to the Complainant at a profit (paragraph 4(b)(i) of the Policy.
All of this is dealt with in some detail in Section 3.1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), which also goes on to indicate what matters panels will commonly take into account when assessing bad faith:
“If on the other hand circumstances indicate that the respondent’s intent in registering the disputed domain name was in fact to profit in some fashion from or otherwise exploit the complainant’s trademark, panels will find bad faith on the part of the respondent. While panel assessment remains fact-specific, generally speaking such circumstances, alone or together, include: (i) the respondent’s likely knowledge of the complainant’s rights, (ii) the distinctiveness of the complainant’s mark, (iii) a pattern of abusive registrations by the respondent, (iv) website content targeting the complainant’s trademark, e.g., through links to the complainant’s competitors, (v) threats to point or actually pointing the domain name to trademark-abusive content, (vi) threats to “sell to the highest bidder” or otherwise transfer the domain name to a third party, (vii) failure of a respondent to present a credible evidence-backed rationale for registering the domain name, (viii) a respondent’s request for goods or services in exchange for the domain name, (ix) a respondent’s attempt to force the complainant into an unwanted business arrangement, (x) a respondent’s past conduct or business dealings, or (xi) a respondent’s registration of additional domain names corresponding to the complainant’s mark subsequent to being put on notice of its potentially abusive activity.”
Although the Complainant’s VOYS Benelux trade mark registration predates the Respondent’s acquisition of the Domain Name by more than two years2 , the Complainant has not submitted any evidence that the Respondent (a United States citizen) was or should have been aware of its trade mark rights at the time of registration. Section 3.2.3 of WIPO Overview 3.0 observes that panels have held that domainers in particular (and the Respondent is a domainer) have an affirmative obligation to conduct inter alia trade mark searches to ensure that their domain names do not abuse third party trade mark rights. However, there is nothing before the Panel to suggest that (a) the Respondent should have conducted a search of the Benelux trade mark register3 and (b) even if he had conducted such a search, that he ought to have come to the conclusion that his use of the Domain Name breached the Complainant’s trade mark rights.
Moreover, while there is no dispute that the Respondent acquired the Domain Name with a view to selling it at a profit to someone willing to pay a high enough price, there is nothing before the Panel to suggest that he registered the Domain Name with knowledge of the Complainant and with a view to exploiting the Benelux trade mark value of the name.
The email correspondence annexed to the Complaint (see section 4 above) concerning the offer to sell the Domain Name, which was initiated by the Complainant, is of no assistance to the Complainant in this regard. As set out in section 3.1.1 of WIPO Overview 3.0 in relation to offers to sell “panels have generally found that where a registrant has an independent right to or legitimate interest in a domain name, an offer to sell that domain name would not be evidence of bad faith for purposes of the UDRP, irrespective of which party solicits the prospective sale. This also includes “generalized” offers to sell, including those on a third-party platform.”
Based on all of the above, the Panel is not persuaded that the Domain Name has been registered and is being used in bad faith. D. Reverse Domain Name Hijacking (“RDNH”)
Section 4.16 of WIPO Overview 3.0 deals with the question “In what circumstances will panels issue a finding of RDNH?”:
“Paragraph 15(e) of the UDRP Rules provides that, 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 furthermore defined under the UDRP Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Panels have also referred to paragraphs 3(b)(xiii) and (xiv) of the UDRP Rules in addressing possible RDNH scenarios.
Panels have consistently found that the mere lack of success of a complaint is not itself sufficient for a finding of RDNH. At the same time, the mere fact of a respondent default would not by itself preclude an RDNH finding as this ultimately turns on the complainant’s conduct. In either event, following some early cases to the contrary, panels have more recently clarified that, for an RDNH finding to be made, it is not necessary for a respondent to seek an RDNH finding or prove the presence of conduct constituting RDNH.
Reasons articulated by panels for finding RDNH include: (i) facts which demonstrate that the complainant knew it could not succeed as to any of the required three elements – such as the complainant’s lack of relevant trademark rights, clear knowledge of respondent rights or legitimate interests, or clear knowledge of a lack of respondent bad faith (see generally section 3.8) such as registration of the disputed domain name well before the complainant acquired trademark rights, (ii) facts which demonstrate that the complainant clearly ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint, including relevant facts on the website at the disputed domain name or readily available public sources such as the WhoIs database, (iii) unreasonably ignoring established Policy precedent notably as captured in this WIPO Overview – except in limited circumstances which prima facie justify advancing an alternative legal argument, (iv) the provision of false evidence, or otherwise attempting to mislead the panel, (v) the provision of intentionally incomplete material evidence – often clarified by the respondent, (vi) the complainant’s failure to disclose that a case is a UDRP refiling, (vii) filing the complaint after an unsuccessful attempt to acquire the disputed domain name from the respondent without a plausible legal basis, (viii) basing a complaint on only the barest of allegations without any supporting evidence.
Given the undertakings in paragraphs 3(b)(xiii) and (xiv) of the UDRP Rules, some panels have held that a represented complainant should be held to a higher standard.”
Dealing with this final paragraph first, it is to be observed that the Complainant is legally represented. Paragraph 3(b)(xiii) of the Rules provides for the closing certificate required for every complaint under the Policy. The certificate reads:
“Complainant certifies that the information contained in this Complaint is to the best of Complainant’s knowledge complete and accurate, that this Complaint is not being presented for any improper purpose, such as to harass, and that the assertions in this Complaint are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.”
The Panel is entitled to assume that a lawyer signing that certificate has undertaken the necessary research to ensure that the Complaint is properly based. Moreover, the Panel is entitled to assume that the Complaint has been seen by the Complainant and seen to be “complete and accurate” and approved by the Complainant.
The substance of the Complaint in respect of the second and third elements comprises four paragraphs taken almost word for word from the Complainant’s representative’s letter of demand of August 17, 2017. That letter contained no supporting evidence for the Complainant’s claims neither did the Complaint. In the view of the Panel the Complainant must have known that without supporting evidence the Complaint was doomed to failure from the outset.
On the above grounds alone the Panel would have made a finding of RDNH. No attention appears to have been given to the resources available on the Center’s website, a primary resource being the WIPO Overview 3.0 in the drafting of the Complaint; alternatively, they were ignored. The Complaint features one case citation, namely Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, which is probably the most cited authority in UDRP case law. However, it is a case dealing with the use of a complainant’s trade mark by an authorized distributor of the complainant’s goods. It has no obvious relevance to anything in the Complainant’s case and the Complaint contains no explanation for its inclusion. Why the Complainant chose to cite the case has mystified the Panel.
Finally, as noted above, the Respondent has produced evidence to show that between January 2014 and January 2016 at least three people associated with the Complainant, other than the Complainant’s representative, have approached the Respondent enquiring as to the price the Respondent required for the Domain Name, but the Complaint contains no reference to any of those communications. In that respect the Complaint was incomplete.
The Panel respectfully adopts the RDNH finding of the three member panel in Informa Business Information, Inc. v. Privacydotlink Customer 640040 / Domain Manager, Web D.G. Ltd.,WIPO Case No. D2017-1756:
“The Respondent submitted that this Complaint amounts to a case of reverse domain name hijacking. Although the Complainant maintains that the true date of registration of the disputed domain name was unclear (and the Panel notes the Complainant’s change of position in this regard), there is no evidence on the record that the Respondent set out to target the Complainant. With the benefit of experienced intellectual property advisors, the Complainant should have been aware that, in these circumstances, its Complaint could not succeed. However and presumably in an effort to acquire the disputed domain name with minimal cost, it proceeded with the claim regardless. This is an abuse of the Policy and the Panel therefore finds this to be a case of reverse domain name hijacking.” 7. Decision
For the foregoing reasons, the Complaint is denied and the Panel declares that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Tony Willoughby
Presiding Panelist
Wolter Wefers Bettink
Panelist
Diane Cabell
Panelist
Date: January 9, 2018
1 The 2007 date is inconsistent with the date of the Respondent’s acquisition of the Domain Name in 2008, but it appears to be a standard webpage to which the other domain names of the Respondent resolve.
2 Yet post-dates the original registration of the Domain Name by six years.
3 If there is an obligation upon domainers to conduct trade mark searches, a matter upon which there is some disagreement, it cannot sensibly be said to extend to each and every trade mark registry database around the world.
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