The Complainant is RoofPro, LLC of Severn, Maryland, United States of America (“United States”), represented by Taft, Stettinius & Hollister, LLP, United States.
The Respondent is Privacydotlink Customer 774656 of Seven Mile Beach, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland / Blue Nova Inc. of The Garrison, Barbados, represented by ESQ Law Firm, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with Uniregistrar Corp (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2018. On April 20, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 24, 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 April 25, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on April 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 May 1, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 21, 2018. At the Respondent’s request, the due date for Response was extended to May 25, 2018. The Response was filed with the Center on May 25, 2018.
The Center appointed Christopher J. Pibus, Neil J. Wilkof, and The Hon Neil Brown Q.C. as panelists in this matter on June 29, 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. 4. Factual Background
The Complainant established its roofing business in 2003 and registered its business name RoofPro, LLC with the Maryland Secretary of State on December 3, 2004. Since that time, the Complainant has provided roof repair, replacement, installation, and cleaning services under the RoofPro name.
The Complainant has used the domain name to operate its principal website in association with the business. In 2016 it acquired an additional domain name which directs Internet users to the primary website at .
The Complainant operates its business in the Baltimore, Maryland and Washington D.C. area.
The disputed domain name was registered on November 25, 2001 and was acquired by the Respondent as part of a bulk domain name purchase on February 1, 2002.
The Respondent has used the disputed domain name as a parking page which provides links to third party websites through a random selection process. The Respondent has also promoted the potential leasing of the disputed domain name through a third party agency.
The Complainant contacted the Respondent on multiple occasions beginning in 2005 regarding its interest in purchasing the disputed domain name. Those discussions were not successful, and in 2016 the Complainant sent a demand letter insisting that the Respondent transfer the disputed domain name. That approach also did not yield any resolution.
Finally, in February, 2018, the Complainant contacted a third party agency in an attempt to negotiate a lease arrangement or outright purchase of the disputed domain name. Once again, no resolution was reached. 5. Parties’ Contentions A. Complainant
The Complainant asserts common law rights in the trademark ROOFPRO because of its use over a 13-year period, in the Baltimore, Maryland and Washington D.C. area in association with its business. The disputed domain name is identical to the Complainant’s common law mark except for the addition of the “.com” designation.
The Complainant submits that the Respondent is not commonly known by the name RoofPro, and that the only use of the domain name over its 17 year existence was to host links to competing services from third parties.
The Complainant further asserts that the disputed domain name was registered and used in bad faith because the Respondent acquired the disputed domain name for purposes of selling, renting or otherwise transferring the domain name to the Complainant for purposes of monetary gain. The Respondent has therefore prevented the Complainant from registering the disputed domain name and thereby interfered with its business, effectively holding the disputed domain name “hostage” by virtue of this conduct. Further, the Respondent is alleged to have intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s common law trademark.
Finally, the Complainant alleges that the Respondent has engaged in cybersquatting by registering the disputed domain name, and then seeking a lease fee of USD 6,000/year to use the disputed domain name, which is in excess of the registration fees, and therefore evidence of bad faith under the Policy. B. Respondent
The Respondent carries on a business as a domain name reseller. Through its predecessor, it obtained the disputed domain name as part of a bulk domain name purchase on February 1, 2002. The Respondent asserts that it purchased the domain name because it is a combination of generic words that are inherently valuable in the commercial marketplace.
Given the descriptive nature of the words, Respondent believed no party could claim exclusive rights in the name. The Respondent notes that the Complainant does not have a registered trademark, nor has it established common law rights in the descriptive term “roof pro” that are sufficient to support its complaint.
The Respondent did not purchase the disputed domain name with the Complainant’s business or the Complainant’s common law trademark in mind, as it was unaware of the Complainant when it acquired the disputed domain name in 2002. In fact, the acquisition of the disputed domain name precedes the Complainant’s first use of the common law ROOFPRO mark, and the Respondent therefore could not have had any intention to trade on the Complainant’s rights or disrupt its business.
The Respondent further claims that it has rights and legitimate interests in the disputed domain name. The Respondent claims that its registers simple common word combinations because they best fulfill the purpose of a domain name, which is that it is easy to remember. The Respondent further states that it has developed a business of registering domain names combining generic words and then using them in association with pay-per-click sites.
The Respondent asserts that it has registered thousands of generic word domain names, including the words “roof” or “pro”:
The Respondent hosts its domain names with parking services that pay a share of the advertising revenue they generate, which is an industry-wide accepted practice. The Respondent submits that the disputed domain name is hosted with a service which places pay-per-click advertising links based on a Google advertiser feed on hosted domain names, sharing the advertising revenue with the domain name owners. The links are not selected by the Respondent, and are auto-generated by Google and are constantly changing, based on Google’s keyword advertising inventory and user search behaviour.
The Respondent submits that it did not target the Complainant for resale of the disputed domain name. It was the Complainant which made contact with the Respondent on multiple occasions. The fact that the parties could not agree on a price for the disputed domain name is not evidence of lack of legitimate interests or bad faith.
The Respondent submits that it did not register, acquire or use the disputed domain name in bad faith. The Respondent acquired the domain name before the Complainant adopted the common law mark ROOFPRO, and accordingly the Respondent could not have known about the Complainant’s common law rights. Furthermore, the Complainant has failed to prove that the Respondent targeted its business for disruptive purposes or for resale. The Respondent has in good faith owned the disputed domain name as part of its long-established business model, and it has used the disputed domain name in association with a pay-per-click site or advertised it for lease during its ownership. All of this is consistent with its business platform as a reseller of commercially attractive business names.
Finally, the Respondent claims that the Complainant has engaged in Reverse Domain Name Hijacking. The Respondent relies on the following factors: (1) The Complainant does not own registered trademark rights, and has not made out a case for common law rights and reputation; (2) the disputed domain name was clearly registered and acquired before the Complainant adopted the name RoofPro; (3) the Complainant omits relevant facts relating to the negotiations between the parties for the purchase of the disputed domain name; and (4) the Complainant has failed to submit any facts or evidence which would support a finding of bad faith on the part of the Respondent. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(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. A. Identical or Confusingly Similar
The Complainant has founded its case on common law rights in the name RoofPro, which it has used as a business name since 2004. The Policy recognizes that a trademark or service mark need not be registered in order to support a complaint. However, it is well established that common law rights – as opposed to registered marks – are subject to more stringent requirements of proof, particularly when the constituent elements of the common law marks are ordinary descriptive words.
The evidentiary requirements for establishing common law rights under paragraph 4(a)(i) of the Policy are summarized in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), at section 1.3:
“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.
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.”
In this fact situation, it is clear that the terms “roof” and “pro” in combination are words taken from the common trade vocabulary for services related to roofing, and even in combination can only be regarded as an inherently weak mark. Accordingly, the Panel must carefully review the Complainant’s evidence in support of acquired distinctiveness and secondary meaning.
The principal failing of the Complainant’s evidence in this regard is the striking absence of anything more than a chronology combined with conclusory allegations of common law trademark rights. The Complainant shows that it registered its business name in the state of Maryland in 2004, and states that it has carried on business since that time in the Baltimore/Washington D.C. area, but it offers very little tangible evidence of how it used its alleged mark to acquire distinctiveness over that period. Aside from conclusory allegations, there is no evidence of the amount of sales or number of customers or projects under the mark, weak evidence of the nature and extent of advertising, and no evidence of actual public recognition or surveys.
The Respondent also provides some evidence to the effect that multiple unrelated users of “Roof Pro” formative marks can be identified even in the Complainant’s specific area of business. This additional factual context is relevant because it tends to confirm the analysis that the words in question belong to a commonly adopted trade vocabulary, and also tends to prove that Roof Pro is not in actuality a distinctive identifier which consumers associate with the Complainant’s roofing services.
The Complainant appears to have assumed that claiming a long period of use, without providing specific evidence of acquired distinctiveness, will be sufficient to support a claim under the Policy. That assumption was wrong, as it ignores well-established fundamental guidelines on this issue that are particularly important for putative trademarks comprised of descriptive words.
Accordingly, the Panel finds that the Complainant has failed to satisfy the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
In view of the findings under Paragraphs 6A and 6C, the Panel will not make a finding with respect to rights or legitimate interests. C. Registered and Used in Bad Faith
The Respondent acquired the disputed domain name 22 months prior to the adoption of the business name RoofPro by the Complainant. Accordingly, the Respondent has submitted that it could not have been aware of the Complainant and the Complainant’s rights in the ROOFPRO common law mark at the time it acquired the disputed domain name.
The Panel adopts the reasoning in Skyline Communications NV v. WebMagic Staff, WebMagic Ventures LLC, WIPO Case No. D2016-1667:
“…the disputed domain name was not registered in bad faith because at the time of registration of the domain name the Respondent could not have been aware of the Complainant’s trademark. It would be logically impossible for the Respondent to have acted in bad faith with respect to rights that did not exist at the time.”
The sequence of events undercuts all of the Complainant’s arguments under paragraph 4(b) of the Policy. Holding prior rights to the disputed domain name, the Respondent could not possibly have registered it for the purpose of selling it to the non-existent Complainant. Similarly, there could not be any abusive intention on the part of the Respondent (as of the date of acquisition) to prevent the non-existent owner from registering the disputed domain name, or to disrupt its non-existent business.
The Panel further notes that the Complainant actively initiated the contacts with the Respondent to attempt to purchase the disputed domain name, over a period of more than 10 years, starting in 2005. The fact that a demand letter was only sent to the Respondent in 2016 is not consistent with an honest belief that the Respondent was holding the disputed domain name in bad faith over its extended period of ownership.
In light of these factors, the Panel finds that the Complainant has not satisfied the requirements under paragraph 4(a)(iii) of the Policy. Reverse Domain Name Hijacking
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 (“RDNH”) 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 further 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.” Rules, paragraph 1.
WIPO Overview 3.0, section 4.16 provides guidance from prior UDRP decisions with respect to the principal reasons which support a finding of RDNH, including:
“facts which demonstrate 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 … such as registration of the disputed domain name well before the complainant acquired trademark rights[.]”
The Panel has described above in some detail the reasons why the claimed trademark rights are inadequate, and why the Complainant’s claim for bad faith is wholly unfounded. The Complainant’s own chronology makes it clear that the Respondent acquired the disputed domain name prior to any use by the Complainant of its business name. In the absence of extraordinary facts (such as the misappropriation of nascent trademark rights announced but not yet launched) the chronology itself presents a compelling barrier against a finding of bad faith, which should have been obvious to the Complainant and its attorney. On this basis alone, this Complaint ought never to have been launched.
The Complainant’s attempt to rely on its unsuccessful attempts to purchase or lease the disputed domain name is also wrong-headed. It is misleading to claim (as the Complainant did) that the domain name was held “hostage” by the Respondent, when there was in fact never any targeting of the Complainant; rather it was the Complainant’s initiative again and again to approach the Respondent to negotiate a purchase. The Panel notes the striking similarities between the present case and the decision with respect to (Skyline Communications NV v. WebMagic Ventures LLC,WIPO Case No. D2016-1667). In that case, complainant had approached respondent to purchase the domain name in question several times over a period of 9 years, and similarly failed to prove any tangible evidence of bad faith, faced with the registration date of the domain name prior to the registration of complainant’s trademark.
The Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. 7. Decision
For the foregoing reasons, the Complaint is denied and the Panel declares that the Complaint was brought in bad faith in an attempt at Reverse Domain Name Hijacking.
Christopher J. Pibus
Presiding Panelist
The Hon Neil Brown Q.C.
Panelist
Neil J. Wilkof
Panelist
Date: July 13, 2018
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