Complainant is DealMaker, LLC of Watertown, New York, United States of America (“United States”), represented by K&L Gates LLP, United States.
Respondent is Brian Dillon-Ferris of Dorking, Surrey, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by UDRP Legal, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name is registered with Register.IT SPA (the “Registrar”). 3. Procedural History
Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2018. On August 31, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 4, 2018, the Registrar transmitted by email to the Center its verification response providing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amended Complaint on September 12, 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 Respondent of the Complaint, and the proceedings commenced on September 13, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 3, 2018. The Response was filed with the Center October 1, 2018. On October 30, 2018, Complainant requested the suspension of the proceeding for 30 days to explore settlement options. On October 31, 2018, the Center suspended the administrative proceeding until November 30, 2018. On November 14, 2018, the Respondent informed that the Parties have been unable to settle and requested the reinstitution of the proceeding. On November 21, 2018, the Center reinstituted the administrative proceeding.
The Center appointed Christopher J. Pibus, Tony Willoughby, and David W. Quinto as panelists in this matter on November 21, 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
Complainant has operated automobile dealerships in New York, United States since 2000 using the trademark DEALMAKER, and it owns a United States trademark registration for the word mark (No. 2,600,589), which was registered on July 30, 2002.
Complainant also owns the domain name , which reverts to a website featuring the Complainant’s trademark and services.
Respondent is located in Surrey, England, and he acquired the disputed domain name in 2005 via public auction for USD 13,000. Since that time, the Respondent has been developing technology to support purchase and sales activities particularly in the field of computers and automobiles, but the related business remains at an early stage.
Respondent initially contacted Complainant in April 2008, inquiring whether there was interest by Complainant in a business arrangement between the parties. No agreement was reached that time or subsequently when discussions took place over the possible sale of the disputed domain name to Complainant. 5. Parties’ Contentions A. Complainant
Complainant submits that it owns a registered trademark for the mark DEALMAKER under United States Registration No. 2,600,589, and has used the mark in association with its automobile dealership services since March, 2000. Complainant claims that Respondent registered the disputed domain name on August 7, 2018. As the disputed domain name incorporates Complainant’s trademark in its entirety it is therefore confusingly similar under the Policy.
Complainant also contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent was not authorized or licensed by Complainant to use Complainant’s trademark, was not affiliated in any way with Complainant and is not commonly known by the disputed domain name.
Further, Complainant submits that Respondent is not using the disputed domain name in association with a bona fide offering of goods or services. Complainant claims that the Respondent has since at least December 2017 redirected the disputed domain to an out-of-date YouTube video that was posted in 2015. That video relates to the future launch of a sales platform for “Autos & Vehicles”, and further claims that “there is only one real DealMaker, and that’s at DealM”.
Complainant also submits that Respondent registered and is using the confusingly similar disputed domain name in bad faith. In its first contact in April 2008, Respondent is alleged to have admitted that many consumers were attracted to the disputed domain name because they lived in upstate New York where Complainant’s brick and mortar operations were located, and were presumably aware of Complainant’s local reputation. Subsequently, Respondent also asked for an amount significantly higher than his out-of-pocket expenses for purchase of the disputed domain. Complainant further contends that upon repeated attempts to contact Respondent in 2018, Respondent failed to respond to any of Complainant’s demands for transfer of the disputed domain name , all of which is alleged to be evidence of bad faith under the Policy. B. Respondent
Respondent has filed evidence in these proceedings, contesting many of the facts and arguments made by Complainant. Respondent bases its position on the fact that it acquired the disputed domain name in 2005, not 2018 as Complainant states. Respondent claims that for 17 years he has worked on the development of an electronic marketplace technology called MACDAX, an acronym for Multi Attribute Continuous Double Auction eXchange. Respondent obtained a patent for the technology in March, 2007, and has been working on launching this platform in association with the disputed domain name, for the sale of computers and automobiles, among other products. Respondent has submitted evidence in the form of screenshots of early forms of the website to support this claim, along with a copy of the MACDAX patent.
Respondent further submits that the mark DEALMAKER is comprised of a generic term and is descriptive of a person who makes a deal or deals. Complainant’s rights in the trademark DEALMAKER are limited in scope because of the nature of the mark, and the fact that Complainant has not used its mark for a number of years, and the fact that there are other owners of the DEALMAKER trademark for other wares and services.
The Respondent submits that it has rights and a legitimate interest in the disputed domain and maintains a good faith intention to use the disputed domain name in association with the MACDAX business.
With respect to bad faith, Respondent argues that his letter dated April, 2008 was not an attempt to target Complainant, but rather was intended to promote Respondent’s new platform to a potential new partner in the relevant field. Respondent claims that he has never targeted Complainant for monetary gain and when he registered the disputed domain name he was not aware of Complainant’s business or that Complainant could possibly own trademark rights in such a generic term as “dealmaker”.
Respondent seeks a finding of Reverse Domain Name Hijacking (“RDNH”) on the basis that Complainant knew or should have known at the time it filed the Complaint that it could not prove that the disputed domain name was registered in bad faith and knew or should have known that the filing of the Complaint was unjustified. 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) Respondent has no rights or legitimate interest in respect of the disputed domain name; and
(iii) The disputed 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 passage, 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”.
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”. A. Identical or Confusingly Similar
Complainant has brought forward evidence that it owns a registered trademark for DEALMAKER (No. 2,600,589), in the United States, based on its use in New York State since 2000. The disputed domain name incorporates the entire trademark and is therefore clearly confusingly similar.
Respondent’s evidence attempts to cast doubt on the distinctiveness of Complainant’s trademark and on its continued existence. The Panel accepts that the mark in question has a relatively low level of inherent distinctiveness when employed in the field of car dealerships, and notes that there is little evidence of acquired distinctiveness even in northern New York State where Complainant is based. However, the paramount fact is that Complainant continues to hold a registered mark in its home territory, and under the threshold which governs this element under the Policy, the subsisting registration is sufficient to support the Complaint.
Respondent has also argued that the Complainant has abandoned its trademarks pointing to a history of legal disputes which show that Complainant’s business has undergone significant financial challenges. The Panel notes the absence of recent evidence of use of the mark by the Complainant, which is not explained. However, the Panel is not persuaded that there is nearly enough cogent evidence to make a finding of abandonment, which would typically require proof of an intention to abandon accompanied by clear proof that use has actually come to an end.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Complainant maintains that the Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services. Its primary evidence on this issue relates to the fact that Respondent’s current website redirects the user to “an out-of-date YouTube video posted in 2015”. Complainant then goes on to describe in detail certain efforts to contact Respondent in 2018, to which Respondent did not reply.
Complainant’s arguments on these points are not well-founded, and for the reasons set out below, the Panel finds that Respondent has established sufficient rights and legitimate interests under the Policy to prevail on this issue.
In particular, the Panel notes that Respondent has provided tangible evidence that he made demonstrable and continuing preparations to use the disputed domain name in connection with bona fide services, namely the provision of a trading platform using his patented MACDAX technology. In Annexes I through J, Respondent provided examples of his platform, supported by early screenshots of the associated website, and a copy of the related patent which was issued in 2007. These preparations all occurred prior to the moment when Respondent became aware of Complainant’s business or trademark in April 2008. Respondent admits that the process involved in launching a commercially viable platform has taken many years, but the mere fact of this delay does not mean, in the circumstances of this case, that Respondent’s legitimate interests in the disputed domain have been significantly diminished or lost.
Accordingly, the Panel finds that the Complainant has failed to satisfy the requirements under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
As is frequently the case for bad faith considerations, the overall chronology respecting the disputed name is of critical importance. As framed, the sequence of events set out in the Complaint is inconsistent on its face. Complainant asserts that Respondent registered the disputed domain name in August 2018. Relying on that date, Complainant then argues that Respondent was fully aware of Complainant’s registered trademark rights in 2017, because of a dispute at the USPTO where actual notice was given. In this scenario, Respondent’s act of registering the disputed domain occurred after he received actual notice of Complainant’s prior rights.
However, according to Respondent’s evidence, this chronology is clearly wrong. There is no reason to doubt Respondent’s assertions that he purchased the domain at auction in 2005 for USD 13,000, and only subsequently discovered Complainant’s existence in 2008, when first attempting to promote his platform. In addition, Complainant itself admits that it was first contacted by Respondent in 2008, with respect to the disputed domain name. These inconsistencies significantly undermine the validity of the chronology put forward by the Complainant.
Complainant goes on to claim that Respondent “has held the domain name for ransom”. The support for this bold characterization is twofold: (1) the first contact with Respondent in 2008, when Respondent drew attention to traffic attracted to the disputed domain name originating in Complainant’s home territory in upstate New York, and then suggested that some form of shared interest in the “Dealm Internet brand” should be considered; and (2) the Respondent’s eventual “demands” to transfer the disputed domain name called for payment in the range of USD 50,000 to 75,000, between 2016 and 2018.
Respondent gives detailed responses on both counts. He explains that the early approach in 2008 was part of his widespread promotional effort to recruit businesses who could participate in his trading platform. In the Panel’s view this first contact looks more like an attempt at promotion than a shakedown. It is noted that Complainant did not object to the initial communication, and in fact did not assert its putative rights for more than 9 years, a stance that is not consistent with the more strident tone it has recently adopted.
With respect to the Respondent’s so-called demands for compensation, it appears that the chronology of purchase discussions between the parties were not fully disclosed by Complainant. It turns out that Complainant itself initiated the discussions in 2016, with considerable back and forth between the parties and various offers and counter-offers ultimately leading to an informal arrangement to sell at USD 50,000. An agreement was never concluded, but the actual stages and process of the negotiations resemble a typical attempt at dispute resolution characterized by some tough bargaining but nothing that could be called abusive or holding a party up for ransom.
In all the circumstances, Respondent’s conduct does not constitute bad faith, and accordingly the Panel finds that Complainant has failed to satisfy the requirements under paragraph 4(a)(iii). D. RDNH
The Respondent correctly draws attention to shortcomings in the Complaint, but the Panel is not satisfied that the filing of the Complaint was motivated by bad faith and declines to make a finding of RDNH. 7. Decision
For the foregoing reasons, the Complaint is denied.
Christopher J. Pibus
Presiding Panelist
Tony Willoughby
Panelist
David, W. Quinto
Panelist
Date: December 13, 2018
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