The Complainant is Thebuyerpool Limited of Exeter, Devon, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Fladgate LLP, United Kingdom.
The Respondent is Private Registration of Denver, Colorado, United States of America (“United States”) / Stephen Pomeroy of Phoenix, Arizona, United States, represented by Levine Samuel, LLP, United States. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with TurnCommerce, Inc. DBA NameB (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2018. On January 22, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 22, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 29, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 30, 2018.
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 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 February 1, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 21, 2018. Upon request of the Respondent, the due date for Response was automatically extended to February 25, 2018. The Response was filed with the Center on February 23, 2018.
The Center appointed John Swinson as the sole panelist in this matter on March 7, 2018. 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 is Thebuyerpool Limited of the United Kingdom. According to the Complaint, the Complainant is an online property broker which facilitates the free listing of residential and commercial properties via a mobile app.
The Complainant owns two United Kingdom registered trade marks, being:
- registered trade mark number UK00003211744 for UCADO (stylized), filed on February 9, 2017 and registered on April 28, 2017; and
- registered trade mark number UK00003211958 for UCADO (stylised), filed on February 10, 2017 and registered on May 5, 2017,
(the “Trade Mark”).
The Complainant also owns the domain name , which it registered on October 2, 2016. It commenced trading via the website at this domain name in March 2017. At present, the website states:
“Launching soon. Following our hugely successful trial; UcaDO, the mobile app which allows you to Sell or Let your property entirely for free and without ever using an estate agent will be released in early 2018..”
The Respondent is Stephen Pomeroy, an individual of the United States and the registered owner of the Disputed Domain Name. The Disputed Domain Name was registered on June 21, 2012. The Complainant asserts that the Respondent acquired the Disputed Domain Name on June 6, 2017, but this is denied by the Respondent.
At the time of this decision, the website at the Disputed Domain Name is a parking page. At the time the Complaint was filed, the Disputed Domain Name redirected to the domain name , a property listing platform which, according to the Complaint, is a direct competitor of the Complainant. Before this, the website at the Disputed Domain Name was either a holding page, contained an error message, or advertised the Disputed Domain Name for sale. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions. Identical or Confusingly Similar
The Complainant is the registered owner of the Trade Mark. The Disputed Domain Name is identical or confusingly similar to the Trade Mark. Rights or Legitimate Interests
The Respondent has not, before notice of the dispute, used or made demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services. Until recently, the website at the Disputed Domain Name was a holding page, contained an error message or advertised the Disputed Domain Name for sale.
The Respondent has not been commonly known by the Disputed Domain Name, and is not making a legitimate noncommercial or fair use of the Disputed Domain Name (or, until recently, any use at all). Registration and Use in Bad Faith
The Complainant submits that the assessment of registration in bad faith should be determined as at the date on which the Respondent acquired the Disputed Domain Name. The Complainant submits that the Disputed Domain Name was transferred from Ucado Holdings to the Respondent at some point between April 14, 2017 and June 8, 2017. Based on an “updated date” in a historical WhoIs record, the Complainant believes the Respondent acquired the Disputed Domain Name on June 6, 2017.
The Complainant submits that the following took place before the Respondent acquired the Disputed Domain Name:
- The Complainant had filed applications for the Trade Mark. These applications were a matter of public record, and would have been apparent on any search of a public trade mark database.
- The Complainant had made enquiries with the registrar of the Disputed Domain Name at the time in relation to the purchase of the Disputed Domain Name. The registrant of the Disputed Domain Name offered to sell for USD 3,000, which the Complainant rejected.
- The Complainant began operating its business at .
The Complainant submits that the following took place at the time or after the Respondent acquired the Disputed Domain Name:
- The Respondent transferred the Disputed Domain Name to the Registrar (from its previous registrar, GoDaddy, LLC).
- The Respondent used the Registrar’s privacy service to mask its identity.
- The Respondent began using the Disputed Domain Name in bad faith.
Since the Respondent acquired the Disputed Domain Name, the Respondent has been using the Disputed Domain Name in bad faith by disrupting the Complainant’s business and diverting customers away from the Complainant to the website of a direct competitor. The Respondent only stopped this redirection on January 29, 2018, which highlights the bad faith use.
The Respondent is attempting to extort the Complainant into paying extravagant sums for the Disputed Domain Name, to prevent the Complainant’s use of the Disputed Domain Name, or to sell the Disputed Domain Name to one of the Complainant’s competitors. B. Respondent
The Respondent makes the following contentions. Identical or Confusingly Similar
The Respondent acknowledges that the Disputed Domain Name is identical to the Trade Mark. However, the Respondent submits that, as the Complainant’s rights in the Trade Mark post-date the Respondent’s registration of the Disputed Domain Name, the Complainant should be found to have insufficient standing to file the Complaint.
The Respondent has continuously held the Disputed Domain Name since June 21, 2012. Rights or Legitimate Interests
The Respondent submits that he uses the Disputed Domain Name for the purpose of a business email account. The Respondent submits that he has used two email addresses associated with this account since August 2012.
Further, the Respondent’s registration of the Disputed Domain Name predates the Complainant’s registration of the Trade Mark by approximately five years. The Respondent submits that he registered the Disputed Domain Name as an attractive five-letter string which would also have a business use. Registration and Use in Bad Faith
The Respondent submits that he did not register the Disputed Domain Name in bad faith. The Respondent has provided evidence that he has owned the Disputed Domain Name continuously since 2012. Later acquired trade marks cannot prevail over earlier registered domain names. At the time the Respondent registered the Disputed Domain Name, the Respondent could not have had foresight of the Complainant’s decision to register a corresponding trade mark.
The Complainant was clearly aware of the unavailability of the corresponding “.com” domain name before it registered the Trade Mark, as it engaged GoDaddy, LLC’s brokerage service prior to filing applications for the Trade Mark.
Further, the Respondent submits that, while the Complainant states that the Respondent’s use of a privacy service to shield his identity is evidence of bad faith, the privacy service was only used for a short period of time following transfer of the Disputed Domain Name to a new registrar (as this was offered as a free service), and before this, the Respondent’s contact details were publicly available. The Respondent’s details were publicly available at the time the Complainant filed its applications for the Trade Mark.
Finally, the Respondent submits that its redirection of the Disputed Domain Name to is irrelevant as it was not aimed at the Complainant. Rather, it was set up in response to an unsolicited offer in relation to the Disputed Domain Name from an individual involved in the property industry. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed 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 Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The Panel will proceed to establish whether the Complainant has discharged the burden of proof in respect of each of these three elements.
The parties have raised many issues, and key facts are in dispute. The Panel does not need to resolve all issues in dispute to reach a decision. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Panel finds that the Disputed Domain Name is identical to the Trade Mark.
The Panel acknowledges the Respondent’s submission in relation to the Complainant’s lack of standing to file the Complaint given that the Respondent asserts that the Complainant’s registration of the Trade Mark post-dates the Respondent’s registration of the Disputed Domain Name. However, for the first element, the date of registration of the Trade Mark is not relevant. The Panel considers that the Complainant has established the matters it is required to establish under the first element of the Policy, and that the Complainant has sufficient standing to bring its Complaint.
The Complainant is successful on this element. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the Complainant has not granted the Respondent any right to use the Trade Mark, and his use does not meet any of the ways in which rights or legitimate interests can be demonstrated enumerated in paragraph 4(c) of the Policy. The Complainant also points to the Respondent’s previous passive holding of the Disputed Domain Name as evidence of its lack of rights or legitimate interests.
The Respondent has provided evidence to show that he is using the Disputed Domain Name as an email account. He has provided evidence of use of two email addresses with the Disputed Domain Name. This can be a legitimate use of a domain name under the Policy, for example, where a registrant has established a business of providing email services using the relevant domain name, or where a domain name is being used as a registrant’s primary personal or business email address. That does not appear to be the situation in this case.
Here, the Respondent has provided evidence that he has used two email addresses associated with the Disputed Domain Name, but this evidence only shows use of those email addresses in relation to domain name renewals and registrar transfers, and inquiries in relation to the possible sale of the Disputed Domain Name.
In view of the Panel’s finding below in relation to registration in bad faith, the Panel does not need to decide whether this minimal use of the Disputed Domain Name as an email address gives rise to rights or legitimate interests under the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent has registered and is using the Disputed Domain Name in bad faith. It is a requirement of this element of the Policy that the Complainant establish both that the Respondent registered the Disputed Domain Name in bad faith, and that the Respondent is using the Disputed Domain Name in bad faith. Registration in bad faith
The Complainant acknowledges that it has no evidence that the Disputed Domain Name was registered in bad faith on June 21, 2012. This is correct, because the Complainant did not exist in 2012.
However, the Complainant asserts that the Disputed Domain Name was transferred to a new registrant on or around June 6, 2017. It is well established that the date on which the current registrant acquired the relevant domain name is the date at which the panel assesses bad faith registration (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), section 3.9).
Therefore, the issue for determination is whether, in fact, such a transfer occurred. If there was no transfer to a new registrant, there is no bad faith registration, and the Complaint must fail.
To support its position, the Complainant has provided historical WhoIs registration records from April 14, 2017 and June 8, 2017. The Complainant submits that the change in the WhoIs record (the addition of a privacy service and change in registrar) is evidence of a new registrant.
In response, the Respondent has provided a signed declaration, supported by evidence, which states the following:
- The Respondent registered the Disputed Domain Name through Network Solutions on June 21, 2012 in the name of his company, Sin Nombre Holdings, LLC. The Respondent has provided evidence of this purchase, as well as evidence that he is and was the sole proprietor of Sin Nombre Holdings.
- On January 22, 2013, the Respondent renewed the registration of the Disputed Domain Name and, at this time, transferred the registrar from Network Solutions to GoDaddy. The Disputed Domain Name remained at this time in the name of Sin Nombre Holdings.
- On November 9, 2013, the Respondent added his personal name as “Registrant Name” to the registrant data for the Disputed Domain Name, and changed the listed “Registrant Organization” from Sin Nombre Holdings to “Ucado Holdings.” The Respondent notes that this change was not a true change of registrant as the Respondent remained in control of the Disputed Domain Name, and in any case, this change occurred more than three years before the Complainant acquired rights in the Trade Mark. Ucado Holdings is not a legal entity.
- In May 2015, the Respondent changed the Registrant Name from his personal name to “Private Registration”, but left the Registrant Organisation as “Ucado Holdings”.
- On June 1, 2017, the Respondent transferred the Disputed Domain Name into his account with the current Registrar. At that point, the Respondent accepted the Registrar’s offer of free privacy protection for a year, and enabled privacy protection on the Disputed Domain Name.
The Panel accepts that the Respondent’s assertions (and supporting evidence) show that he has owned the Disputed Domain Name consistently since its registration in 2012. While there may technically have been a change in registrant in 2013, when the Disputed Domain Name was transferred from Sin Nombre Holdings to “Ucado Holdings”, the Panel accepts that the Respondent remained in control of the Disputed Domain Name during this time (and in any case, this occurred well before the Trade Mark was registered and the Complainant began operating so is irrelevant to this issue).
The Respondent’s use of the name “Private Registration” as the name of the registrant may have been a breach of the relevant registration agreement (in that he has not provided proper identification information), but in light of the evidence provided by the Respondent that he continued to control the Disputed Domain Name before and after this change, that use of “Private Registration” is not relevant in respect of this issue.
The Panel finds that there was no change in registrant of the Disputed Domain Name in June 2017, that the Respondent has had control of the Disputed Domain Name continuously since 2012, and that there was no new registration of the Disputed Domain Name for the purposes of the Policy on any date after the Complainant was established. As such, there was no registration in bad faith. As previously stated, the Complainant is required to establish both registration and use in bad faith, and as such, cannot succeed on the third element of the Policy. Use in bad faith
For completeness, if the Panel had to decide this issue, it is unlikely that the Panel would find that there was bad faith use by the Respondent.
The Respondent’s signed declaration states that the first time the Respondent was made aware of the Complainant or its Trade Mark was when he received the Complaint. In view of the facts discussed below, this is a believable assertion. In such a situation, it is difficult for the Complainant, who is a recent start-up business, to demonstrate that the Respondent used the Disputed Domain Name in bad faith to take advantage of the Complainant or its trade mark rights.
The Respondent has not actively advertised the Disputed Domain Name for sale, beyond computer-generated notices that may have appeared on registrar parking pages from time to time. The Respondent has not solicited any offers from the Complainant, its competitors, or any third party in relation to the sale of the Disputed Domain Name. In fact, on the two occasions the Respondent was approached in relation to the sale of the Disputed Domain Name, he refused the offers put by the person who approached him. The Complainant’s unsolicited offer to purchase the Disputed Domain Name (anonymously, via a domain name broker, and before it had rights in the Trade Mark) is not evidence that the Respondent attempted to sell the Disputed Domain Name for an amount in excess of its out of pocket expenses, and nor is the fact that the Respondent refused the Complainant’s offer and made a higher counter-offer.
Further, although for a period of time the Disputed Domain Name redirected to , a property website which may be considered to be a competitor of the Complainant, the Panel accepts the Respondent’s submission that this redirection was not targeted at the Complainant, and that the Respondent had not heard of the Complainant at the time he set up the redirection. The Respondent provided a credible explanation as to why he implemented that redirection.
When the Respondent received the Complaint, the Respondent cancelled the redirection and undertook not to use the Disputed Domain Name in such a way in the future.
At the time of the redirection, the Complainant had been operating for only a few months. There is no reason for the Panel to believe that the Respondent, who is based in the United States, should have had prior knowledge of a start-up business based in the United Kingdom. It cannot be said that the Respondent caused this redirection to disrupt the Complainant’s business, or otherwise had the Complainant in mind, when the Complainant was not known to the Respondent at that time.
Finally, the Respondent’s use of the Disputed Domain Name is not intended to prevent the Complainant from reflecting the Trade Mark in a corresponding domain name. As submitted by the Respondent, the Complainant was aware that the “.com” generic top level domain (“gTLD”) corresponding to the Trade Mark was not available before it had rights in the Trade Mark and before it started operating. This is evidenced by the fact that the Complainant engaged a domain name broker to inquire about purchasing the Disputed Domain Name on February 2, 2017, around one week before the Complainant filed its Trade Mark applications, and around one month before the Complainant launched its website at .
In all the circumstances, it cannot be said that the Respondent was acting in bad faith.
For these reasons, the Complainant is unsuccessful in establishing the third element of the Policy. D. Reverse Domain Name Hijacking
The Respondent has asked that a finding of Reverse Domain Name Hijacking (“RDNH”) be made against the Complainant. According to paragraph 15(e) of the Rules:
“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 and 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”.
While the registrant details in respect of the Disputed Domain Name changed a number of times over the years, the Respondent has provided evidence that he remained in control of the Disputed Domain Name continuously during this time. The Complainant acknowledged that there was no bad faith registration in 2012, but inferred that there was a change in registrant in June 2017 (which was when the Respondent started to use a privacy service) because the WhoIs details between April 2017 and June 2017 changed (which was the result of the implementation of the privacy service), and when the privacy shield was lifted, the registrant was Stephen Pomeroy and not Ucado Holdings (who was the registrant in April 2017).
The Panel acknowledges that this use of a privacy service made it difficult for the Complainant to confirm the true identity of the owner of the Disputed Domain Name, and to determine whether there had been a change in registrant.
However, when the Registrar lifted the privacy service after the Complaint was filed, it should have been apparent to the Complainant that there had been no real change in registrant. In April 2017, the registrant address and registrant telephone number for the Disputed Domain Name in the WhoIs record was the same as those in the WhoIs record as at January 2018, when the privacy service was lifted as part of these proceedings. Moreover, the Respondent emailed the Complainant’s solicitors at this time stating that he registered the Disputed Domain Name in 2012.
The Complainant could have withdrawn the Complaint at that point, or simply declined to amend the Complaint.
Further, the Complainant has overstated its case, for example:
- the Respondent’s desire to sell the Disputed Domain Name for an “extravagant price”, despite the fact that the Complainant made an unsolicited offer to the Respondent (anonymous, via a domain name broker, and before the Complainant has rights in the Trade Mark); and
- that the Respondent is preventing the Complainant from reflecting the Trade Mark in a “.com” gTLD, despite the fact that the Complainant was well aware that the Disputed Domain Name was not available for registration at the time it filed applications for the Trade Mark.
The Panel considers the Complainant launched the proceedings following one or more failed attempts to purchase the Disputed Domain Name at what the Complainant considered to be a reasonable price. There is nothing in the evidence to suggest that the Respondent has been targeting the Complainant or the Trade Mark, or that would otherwise support a finding of bad faith registration. If nothing else, the Complainant is greatly overreaching with respect to its perceived rights in this name.
However, in view of the use of the privacy service by the Respondent and use of the names “Ucado Holdings” and “Private Registrant” in the WhoIs details, the Panel declines to find RDNH. 7. Decision
For the foregoing reasons, the Complaint is denied.
John Swinson
Sole Panelist
Date: March 21, 2018
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