The Complainant is Boxador, Inc. of Los Angeles, California, United States of America (“United States”), represented by Stradling Yocca Carlson & Rauth, United States.
The Respondent is Ruben Botn-Joergensen of Oslo, Norway, represented by Kvale Advokatfirma DA, Norway. 2. The Domain Names and Registrar
The disputed domain names, (the “First Domain Name”) and (the “Second Domain Name” (together the “Domain Names”), are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 28, 2017. On January 2, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On January 3, 2018, 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 January 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 31, 2018. The Response was filed with the Center on January 26, 2018.
The Center appointed Tony Willoughby, Gregory N. Albright and Mathias Lilleengen as panelists in this matter on February 8, 2018. 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.
On February 16, 2018 the Panel issued Procedural Order No. 1 seeking further information from each of the parties and extending the time for submission of this decision until March 1, 2018. The parties responded in timely fashion. 4. Factual Background
The Complainant is based in California, United States and operates a website connected to its domain name, . That domain name was registered on February 28, 2007.
The Complainant asserts and the Panel finds on the balance of probabilities that it is a fact that the Complainant has operated a trading website connected to its domain name since the year 2007, offering a marketplace for the sale and purchase of business names and domain names under the name “BrandBucket”. The website claims to be “The Largest Brandable Business Names Marketplace.”
The Complainant currently has no registered trade mark rights in respect of its trading name, “BrandBucket”.
Until June 3, 2016, the Complainant was the registered proprietor of United States Trademark Registration No. 3,701,626 BRANDBUCKET (standard characters) registered on October 27, 2009 (application filed April 13, 2009) in class 35 for “services relating to the analysis, evaluation, creation and brand establishment of trademarks, trade names and domain names”. That registration was cancelled on June 3, 2016 for failure to file a required declaration. It featured a first use claim of February 8, 2007.
The First Domain Name was registered on November 25, 2016.
On November 26, 2016 the Respondent sent an email to the Complainant enquiring as to whether the Complainant would be interested in purchasing the First Domain Name, which the Respondent had registered the previous day.
On November 29, 2016 the Respondent, with knowledge of the Complainant and its business, filed a trade mark application with the United States Patent and Trademark Office for BRANDBUCKET (standard characters) in class 35 for “Brand development and evaluation services in the field of trade names and domain names”. The Respondent claimed first use as of May 1, 2017. That application matured into a registration on October 3, 2017.
On December 4, 2016 the Respondent registered the domain name, , which is currently connected to a ‘domainnameshop’ parking page.
On December 5, 2016 the Respondent applied to the Norwegian Trade Mark Office for registration of BRANDBUCKET (word) as a trade mark for services in class 35. That application matured into a registration on June 21, 2017.
On December 13, 2016 the Complainant responded to the Respondent’s email of November 26, 2016 claiming that the Respondent’s website connected to the First Domain Name was a copy of the Complainant’s website and requesting the Respondent to take it down. The email acknowledged that the Complainant had that morning been made aware of the Respondent’s United States trade mark application.
On December 17, 2016 the Respondent responded denying that his website was a copy of the Complainant’s. The email continued:
“Regarding your expired trade mark, we have applied for trademark as there is a free and open process, this doesn’t mean we take advantage. Regards to your request, based on a professional respect, we have shut down the website at this stage. Same based on a professional respect, we have offer the domain for you a while ago. One thing we should have clear, as we don’t operate in the same territory or market. However, all things been said, we do respect and appreciate your business, and it may be that we could collaborate with together in the future.”
On January 20, 2017 Brandbucket Inc. of the same address as the Complainant filed an application (Serial Number 87308314) in the United States Patent and Trade Mark Office for registration of BRANDBUCKET (standard characters) as a trade mark in class 35 for the same services covered by the cancelled registration and making the same first use claim as the cancelled registration (i.e. February 8, 2007). The Complaint was silent as to the relationship between the Complainant and Brandbucket Inc., but in response to Procedural Order No. 1 the Complainant has disclosed that the Complainant is the parent company of Brandbucket Inc. The Panel treats the two companies as one for the purposes of this decision.
On April 6, 2017 the Respondent registered the domain name, , which currently resolves to a website connected to the Second Domain Name.
The Second Domain Name was registered on July 7, 2017. Both the Domain Names resolve to a website connected to the Second Domain Name, which is a website devoted to the acquisition and sale of domain names. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Names are identical to the Complainant’s unregistered trade mark, BRANDBUCKET, a brand which was registered as a trade mark until June 2016 and which has been continuously used for its business since 2007.
The Complainant contends that the Respondent has no rights in respect of the Domain Names; its contention being that the Respondent, who has no connection of any kind with the Complainant, registered the Domain Names with a view to diverting customers from the Complainant and/or to tarnish the Complainant’s trade mark. B. Respondent
The Respondent denies the Complainant’s contentions. He asserts that he has rights and legitimate interests in respect of the Domain Names, having set up a business “on selling domain names along with a specific logo”. He asserts that “The natural scope of the business is Norway and Europe as the Respondent is living in Norway”.
The Respondent claims that he investigated the trade mark rights position when setting up his business and found no registered rights in either Norway or the United States. He also noted that the Complainant’s United States registration had lapsed. He points out that the Complainant has no rights in Europe or Norway, the geographical area in which the Respondent trades. He on the other hand has trade mark rights in both Norway and the United States.
The Respondent states that he took down the website attached to the First Domain Name, as he said he would, but continued to trade through websites attached to his domain name which he registered on December 4, 2016 and, subsequently, the domain name, , which he registered on April 6, 2017, and the Second Domain Name, which he registered on July 7, 2017.
The Respondent contends that since the Complainant has no rights to the BRANDBUCKET trade mark in Norway and Europe and since the Complainant is operating in totally different territories he cannot be said to have registered the Domain Names in bad faith.
Finally, the Respondent denies that the Complainant has trade mark rights sufficient to found a complaint under the Policy. The Respondent points to the fact of the cancelled trade mark registration and the existence of a trade mark application, which of itself gives rise to no trade mark rights. The Respondent questions whether “the use of the mark BRANDBUCKET in the United States gives the Complainant rights in the trade mark or service mark in the sense that paragraph 4(a)(i) [of the Policy] is fulfilled.” 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove the following, namely that:
(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names have been registered and are being used in bad faith. B. Identical or Confusingly Similar
The Domain Names each comprise the Name, “brandbucket”, at the second level followed at the first level by a generic Top Level Domain (“gTLD”) identifier, “.org” in the case of the First Domain Name and “.shop” in the case of the Second Domain Name.
It being permissible for the purposes of paragraph 4(a)(i) of the Policy for panels to ignore the gTLD identifiers in cases such as this, where they serve no more than a technical function, the Panel finds that the Domain Names are identical to the name, “brandbucket”.
The issue is whether “brandbucket” is a trade mark in which the Complainant has rights.
As can be seen from section 4 of this Decision above, the Complainant held a United States Trade Mark Registration of the name from 2009 until June 2016, when it lapsed for failure on the part of the Complainant to file a required declaration. Since June 2016 the Complainant has had no registered trade mark rights in respect of the name. Instead, the Complainant claims unregistered or common law trade mark rights stemming from its use of the name since July 2007.
Unregistered trade mark rights are sufficient to support a complaint under the Policy. Section 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) deals with the question: “What does a complainant need to show to successfully assert unregistered or common law rights?” The first two paragraphs of the answer are as follows:
“To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.
Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.”
Further on that same section goes on to state:
“Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning.”
The Complaint incorporated 14 annexes, only one of which (Annex 6) gave any indication of the Complainant’s use of the mark BRANDBUCKET and that was a selection of screenshots of its website taken on “12/11/2017”. While it would have been possible to infer on the balance of probabilities – from inter alia the Respondent’s knowledge of the Complainant and its business when he registered the Domain Names – that the Complainant’s business was an established business of some substance, the Panel majority were reluctant to accept bare assertions of unregistered trade mark rights without any supporting evidence of the kind set out in section 1.3 of the WIPO Overview 3.0.
In response to Procedural Order No. 1 a sufficient amount of the missing evidence was supplied, including a substantial number of independent press reports speaking of the standing of the Complainant and recommending its services for businesses looking for new brand names. Enough of them pre-date the registration of the First Domain Name to satisfy the Panel that industry and media recognition of the Complainant at that time was high.
The Panel is satisfied that the Complainant has unregistered trade mark rights in respect of the name, “Brandbucket”. The Panel finds that the Domain Names are identical to a trade mark in which the Complainant has rights. C. Rights or Legitimate Interests
It was a bold move on the part of the Respondent to adopt for himself the name of a major player in the field for a similar business. His stated position is that at the outset he felt free to do it because he had conducted ‘freedom to operate’ searches “and could not find any hinders [sic] to register and use the trademark in Norway and Europe, and the trademark was also available in the US.” Moreover, as he puts it in the Response “the natural scope of business is Norway and Europe as the Respondent is living in Norway.”
The Respondent describes the inception of his business in the following terms:
“From 9 December 2016 the website was established. From the same time, the Respondent has had a working business developing and evaluating trademarks, logos and domain names from the website. However, on 17 December 2016 the Respondent decided, based on professional respect, to shut down for a short while, after a request from the Complainant. The Respondent then registered on 6 April 2017 and on 7 July 2017 and continued their business from these websites.
The Respondent also wanted to be able to direct its business directly towards the Norwegian market specifically. On December 4, 2016 the Respondent therefore registered the domain name under the affiliated company Din Bemannings Partner.”
His claim to rights and legitimate interests in respect of the Domain Names is articulated as follows:
“Based on the fact that the Respondent has legally registered the trademark BRANDBUCKET in Norway and legally has established business in Norway under the same trademark, the Respondent has rights and legitimate interests in the domain names and . These two domain names have all the time been in use in connection with a bona fide offering of brand development and evaluation services in Norway, and the use or intention to use was initiated before the Complainant contacted the Respondent for the first time in December 2016.”
He further contends that he is not acting in bad faith because “The Complainant has no legal rights to the trademark in Norway and Europe, and is operating in totally different territories and in other parts of the world.”
Clearly, the Respondent has been running a business under the Domain Names. The issue for the Panel from the perspective of paragraph 4(c)(i) of the Policy is as to whether or not that has been a bona fide offering of goods or services.
While the Respondent has been at pains to explain that his business is in Norway/Europe, which he claims is a totally different territory from that in which the Complainant operates, he is, nonetheless engaged in online business and is well aware that for the most part websites connected to gTLDs are in general terms accessible from all jurisdictions. He knew that the Complainant’s business was conducted viaits website connected to its “” website and must have been aware of the high risk of confusion and diversion of traffic.
If one then delves into the Respondent’s website one finds that it features nothing of any significance to alert visitors to the fact that it is a website competing with the Complainant’s website. It is an English language website and while the domain name prices cited on the home page are in Euros (“EUR”), if one visits the selling page one finds that the prices are in United States dollars (“USD”) e.g.
“Do all names get mobile / letterhead / website designs?
We reserve these elements for higher-value domains, at our discretion. Usually any domain below $2,500 USD would just have a logo.”
The above is enough to give the Panel pause for thought. Does the Respondent honestly and sincerely believe that this was a good faith basis upon which to build a business?
The position becomes clearer when one studies the chronology set out in section 4 above. The Respondent prudently conducted ‘freedom to operate’ searches, one of which was a search at the United States Patent and Trademark Office. From that date at least, if not before, he would have been aware of the Complainant’s business being conducted under the Respondent’s chosen name. He would have known then that the Complainant’s claimed first use was in 2007. The Complainant’s business at that time was a business, which according to his email of December 17, 2016, he respected and appreciated. Indeed, in that same email he suggested that there might be scope for collaboration between the parties.
He then decides upon a domain name through which to conduct his new business. He is aware that is not available to him as it is being used by the Complainant, so he opts for the next best thing, the “.org” equivalent, the First Domain Name. He registers it on November 25, 2016 and connects it to a website somewhat similar to the format of the Complainant’s website. The very next day he emails the Complainant enquiring as to whether the Complainant would be interested in purchasing the First Domain Name.
In the view of the Panel that was a quite extraordinary step for someone to take having just registered a domain name with a view to using it for his new business. In the Panel’s view on the balance of probabilities that was an opportunistic attempt to cash in on the fame of the Complainant’s trade mark in the Respondent’s chosen area of business.
The Respondent’s next step was to file an application for registration of BRANDBUCKET in the United States. The application was filed on November 29, 2016. The application featured the following declaration:
“The signatory believes that: …. if the applicant filed an application under 15 U.S.C. § 1051(b), § 1126(d), and/or § 1126(e), the applicant has a bona fide intention, and is entitled, to use the mark in commerce on or in connection with the goods/services in the application. The signatory believes that to the best of the signatory’s knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive. The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or any registration resulting therefrom, declares that all statements made of his/her own knowledge are true and all statements made on information and belief are believed to be true.”
The Panel is not in a position to assess the significance of that declaration, but it seems to the Panel to be a strange declaration to make if, as is the impression given by the Response, one has no intention of using the mark in the United States. In due course that application matured into a registration and the Respondent claimed first use in the United States from May 1, 2017.
Thus, while the Respondent’s case is that the parties would be trading in distinct jurisdictions, the Respondent from November 29, 2016 intended to trade in competition with the Complainant in the United States and, if the first use claim is to be believed, has indeed done so.
It was only after the Respondent had ‘secured’ his position in the United States that he registered his Norwegian domain name (December 4, 2016), currently connected to a parking page, and applied for his Norwegian trade mark (December 5, 2016).
Taking all the above into account the Panel declines to find that the Respondent’s trade mark rights are sufficient to give rise to rights or legitimate interests in respect of the Domain Names for the purposes of paragraph 4(a)(ii) of the Policy.
In relation to paragraph 4(c)(i) of the Policy the Panel finds on the evidence before it and on the balance of probabilities that the Respondent’s adoption of the name “Brandbucket” for his business was an opportunistic move to take a free ride on the back of the goodwill associated with the Complainant’s unregistered trade mark. On that basis his use of the Domain Names cannot be said to constitute use of the Domain Names in relation to a bona fide offering of goods and services for the purposes of paragraph 4(c)(i) of the Policy.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names. D. Registered and Used in Bad Faith
By the same reasoning the Panel finds that that the Domain Names have been registered and are being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy. In the case of the First Domain Name and the Respondent’s immediate offer for sale, the Panel finds on the balance of probabilities that the Respondent registered that Domain Name with a view to selling it to the Complainant at a profit (paragraph 4(b)(i) of the Policy). On the failure of the Complainant to purchase the First Domain Name, it is likely that the Respondent’s motive changed and he decided instead to trade under name “Brandbucket” to divert customers from the Complainant (paragraph 4(b)(iv) of the Policy). The Panel finds that the Respondent registered the Second Domain Name for that latter purpose. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, and , be transferred to the Complainant.
Tony Willoughby
Presiding Panelist
Gregory N. Albright
Panelist
Mathias Lilleengen
Panelist
Date: February 27, 2018
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