The Complainant is Dribbble Holdings Ltd. of Victoria, Canada, represented by IdeaLegal LLC, United States of America (“US”).
The Respondent is Domain Administrator of Eden Prairie, Minnesota, US / Hitsville LLC of St. Paul, Minnesota, US, self-represented. 2. The Domain Name and Registrar
The disputed 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 February 22, 2018. On February 23, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 26, 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 March 2, 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 March 5, 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 March 7, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 27, 2018. The Respondent submitted a request for a four day extension of the response due date on March 23, 2018, and the due date for Response was subsequently extended by the Center to March 31, 2018. The Response was filed with the Center on March 31, 2018.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on April 11, 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
It appears that the Complainant commenced using the trademark DRIBBBLE in July 2009. Under that trademark, it operates an Internet platform through which graphic designers, web designers, illustrators, photographers and other creative professionals may demonstrate and promote their works.
According to the Complaint, the Complainant’s DRIBBBLE website has had an estimated 124 million users and shared over 2.7 million designs since then.
The Complainant also has a trademark application pending in the United States of America, Trademark Application No. 8747953, DRIBBBLE, for a range of goods and services in International Classes 9, 35, 41 and 42. The application was filed on June 20, 2017 and claims first use in commerce in the United States of America in July 2009.
The Respondent registered the disputed domain name on October 13, 1997.
When the Complaint was filed, the disputed domain name resolved to a website which essentially consisted of pay-per-click links for services such as logo design, website design, illustration design, flyer design, graphic design and the like. 5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical or confusingly similar to the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant’s pending trademark application does not by itself satisfy the requirement of trademark rights under the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.1.4. The information about its use of the trademark supplied by the Complainant, however, demonstrates that it is likely to have acquired common law rights in DRIBBBLE as an unregistered trademark sufficient to confer standing under the Policy.
The second stage of this inquiry requires a visual and aural comparison of the disputed domain name to the proven trademarks: see WIPO Overview 3.0, section 1.7. In making this comparison, it is permissible to disregard the generic Top-Level Domain (“gTLD”) included in the domain name as a functional requirement of the domain name system. Further, questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
Disregarding the gTLD, “.shop”, the disputed domain name differs from the Complainant’s trademark only by the omission of a single letter “b”. As the Respondent points out, this is because the disputed domain name consists of an ordinary English word, “dribble”. As discussed above by reference to WIPO Overview 3.0 section 1.7, however, the fact that it is an ordinary English word is not relevant at this stage of the inquiry. As the “typosquatting” cases show, the minimal difference between the Complainant’s trademark and the disputed domain name constitutes confusing similarity under the Policy. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. B. Registered and Used in Bad Faith
In the circumstances of this case, it is appropriate to consider next the requirement of registration and use in bad faith.
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see, e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470.
Generally, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
In the present case, it appears that the Respondent registered the disputed domain name in 1997; that is, some 12 years before the Complainant adopted its trademark. There is no suggestion in the record in this case that the Respondent had any notice of the Complainant’s plans. And, as the Respondent notes, the word “dribble” is an ordinary English word. In these circumstances and notwithstanding the manner of use of the disputed domain name made by the Respondent now, a conclusion that the Respondent registered the disputed domain name in bad faith is not feasible. WIPO Overview 3.0, section 3.8.1.
Accordingly, the Complainant has not established the third requirement under the Policy and the Complaint must fail. C. Rights or Legitimate Interests
Having regard to the conclusion reached in section 5B above, no good purpose would be achieved by addressing the second requirement under the Policy. D. Reverse Domain Name Hijacking
The Respondent states that the Complaint was filed without any prior notification to it of the Complainant’s complaints and contends that the Complaint has caused it undue expense in both time and costs “when even the briefest of phone calls or email would have succeeded in immediate remedy.” The Respondent further contends that the “unspoken motivation” for the Complaint has been to shore up the position of “what has always been a confusing mark and domain name address”. The Respondent therefore contends that the Panel should make a finding of reverse domain name hijacking.
Paragraph 15(e) of the Rules provides, in part:
“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.”
Paragraph 1 of the Rules defines “Reverse Domain Name Hijacking” to be “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”.
As noted above, the Respondent has pointed out that the disputed domain name consists of an ordinary English word which could be desirable to many different businesses and people for many different reasons. However, the only evidence of how the Respondent has been using the disputed domain name is the evidence that the disputed domain name resolves to a pay-per-click website with links to a range of graphic and other design offerings. The word “dribble” does not appear apt to describe the type of service being provided from the Respondent’s website. There is no evidence in this proceeding to indicate the form the Respondent’s website took before the Complainant adopted its trademark and launched its service. Instead, as the Complainant contends, the links appear to be an attempt to take advantage of the use of the Complainant’s trademark to provide a service promoting graphic and other design services, albeit in a rather more elemental form.
In these circumstances, the Panel is not willing to find that the Complainant has engaged in reverse domain name hijacking. 6. Decision
For the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Sole Panelist
Date: April 25, 2018
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