The Complainant is Darryl Davis Seminars, Inc. of Wading River, New York, United States of America (“United States”), represented by Carter, DeLuca, Farrell & Schmidt, LLP, United States.
The Respondent is Privacydotlink Customer 656889 of Grand Cayman, Cayman Islands / Domain Admin, Abstract Holdings International Ltd of Worthing, Barbados, represented by Muscovitch Law P.C., Canada. 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 October 2, 2018. On October 3, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 3, 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 October 5, 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 October 10, 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 October 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 1, 2018. On October 18, 2018, the Respondent requested an extension of time for filing the Response. In accordance with the Rules, paragraph 5(b), the Respondent was granted an automatic four calendar day extension for the Response, and the due date for the Response was updated to November 5, 2018. The Response was filed with the Center on November 2, 2018.
The Center appointed Luca Barbero, Martin Schwimmer, and Adam Taylor as panelists in this matter on December 14, 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 January 2, 2019, the Decision due date was postponed to January 15, 2019. 4. Factual Background
The Complainant is the owner of the United States trademark registration No. 2247697 for POWER AGENT (word mark), filed on April 3, 1998 claiming first use in January 1993 and registered on May 25, 1999, for “educational services, namely, conducting real estate agent training seminars” in International class 41.
The disputed domain name was registered on July 18, 2002 and is pointed to a parking page with generic pay-per-click links where the disputed domain name is offered for sale. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to its trademark POWER AGENT as it reproduces the trademark in its entirety.
The Complainant states that the Respondent has no rights or legitimate interests in the disputed domain name because:
- the Respondent is not affiliated with the Complainant and has not been authorized by the Complainant to register any domain name incorporating the trademark POWER AGENT;
- the Respondent has not made any reasonable and demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, as the disputed domain name resolves to a blank page and, when contacted, the Respondent offers to sell the disputed domain name at an exorbitant price;
- the Respondent has not been commonly known by the disputed domain name, even without having acquired any trademark rights;
- when the Complainant’s representative made an offer to purchase the disputed domain name from the Respondent’s broker, it received an indication that USD 70,000 was the minimum price that the Respondent would consider for the disputed domain name. Therefore, it would be clear that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the Complainant’s trademark.
The Complainant asserts that the Respondent’s registration of the disputed domain name does not amount to a mere coincidence and that the Respondent indeed knew of the Complainant and its trademark thus demonstrating bad faith since the Complainant’s registered trademark for POWER AGENT predates the registration of the disputed domain name by the Respondent and the Complainant has been actively advertising its services and providing said services under its trademark since at least as early as 1993.
In light of the request of USD 70,000 presented to the Complainant’s representative by the Respondent’s broker, the Complainant claims that the disputed domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name.
The Complainant also states that, by using the disputed domain name, the Respondent intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The Complainant concludes that, given the circumstances of the case, one cannot conceive any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate. B. Respondent
The Respondent states that it is a Barbados corporation which is in the business of selling generic and descriptive domain names primarily to new entrants in the marketplace who wish to adopt a strong descriptive domain name for their business or personal use.
The Respondent highlights that “power agent” is a longstanding and ubiquitous descriptive term referring mainly to a talent, sports, or real estate agent who is particularly well known and who is particularly powerful. It is also a common term adopted for various software applications, electronic equipment, and energy companies and has been widely and lawfully used in a descriptive manner by innumerable people all over the world, being also included in trademark registrations owned by several third parties. The Respondent also notes that a Google search for “power agent” shows 493 million results, of which only handful are related to the Complainant. Therefore, the Respondent concludes that the Complainant has no monopoly over this common descriptive term whatsoever.
The Respondent points out that it acquired the disputed domain name in 2012 at the same time as the Respondent acquired many other comparably generic and descriptive common terms. The disputed domain name would thus form part of the Respondent’s stock in trade of descriptive and generic domain names and was offered for sale to the general public.
The Respondent informs the Panel about additional correspondence exchanged with the Complainant prior to the filing of the Complaint, which has not been cited by the Complainant and is attached as Annexes A through C to the Response.
According to such correspondence, over two years ago, the Complainant contacted the Respondent’s broker and asked for a quote for the purchase of the disputed domain name, without relying upon or disclosing any trademark rights. The Respondent’s sales agent responded with a quote of USD 66,000.
On April 20, 2016, the Complainant responded to the Respondent’s quote stating that it had been “advised by his attorneys that he had a viable claim to recover the domain name via the UDRP”, and made a counter offer for USD 375, thereby, according to the Respondent, implicitly threatening to hijack the disputed domain name unless his unilaterally-set price was accepted.
On April 21, 2016, the Respondent wrote a detailed letter to the Complainant in response to the Complainant’s purported claim of entitlement to the disputed domain name and its threat of bringing a complaint under the Policy. That letter expressly laid out the factual and legal basis for the Respondent’s views on its lawful rights and interests in the disputed domain name in substantial detail, explaining why the Respondent registered the disputed domain name in its view in good faith and why any attempt to use the Policy to try to get at the disputed domain name in its view would be considered Reverse Domain Name Hijacking.
The Respondent did not receive a response to the afore-mentioned letter and, two and a half years later however, the Complainant initiated the present proceeding.
The Respondent also states that it made a final attempt to get through to the Complainant on the off chance that the Complainant had not disclosed to its counsel the existence of the Respondent’s previous warning letter and that as a result, the Complaint was brought in error as a misadventure. The Respondent called and sent an email to the Complainant’s counsel and offered the Complainant a final opportunity to withdraw the Complaint with prejudice but received no reply.
The Respondent asserts that the Complainant, other than asserting a United States trademark registration, has not provided information about the Complainant’s business, reputation, sales volumes, advertising, marketing, revenue, or any other facts which could establish that the Complainant and its mark was particularly well-known when the disputed domain name was registered, in 2012.
The Respondent contends that it has right and legitimate interests in the disputed domain name because:
- the disputed domain name is wholly comprised of two common English dictionary words that when combined, as in “power agent”, have a clearly descriptive and well-known meaning;
- the Respondent is demonstrably in the business of investing in valuable generic and descriptive terms;
- resale of legitimately purchased descriptive domain names constitutes a bona fide use;
- use of a domain name in connection with a pay-per-click website is considered a bona fide offering of goods and services and a legitimate interest under the Policy to the extent that the links are not generated to target the trademark value inherent in a domain name.
The Respondent also claims that it registered the disputed domain name in good faith purely because it corresponds to a common term and without any knowledge of the Complainant, of which it was unaware before exchanging correspondence with it prior to the start of this proceeding.
With reference to the Respondent’s offer for sale of the disputed domain name, the Respondent underlines that a general offer to sell a generic domain name is not evidence of bad faith absent any specific intent derived from exploitation of the goodwill associated with an incidental trademark, and that the Complainant’s allegation that the Respondent’s offer to sell the disputed domain name for USD 70,000 is evidence of bad faith is false and self-serving. The Respondent further notes that – via its broker – it responded to an unsolicited request to purchase which was received by the Complainant, and highlights that an offer to sell a domain name that a party otherwise has rights to, does not amount to bad faith.
The Respondent requests that the Panel issue a finding of Reverse Domain Name Hijacking since:
- the Complainant has based its case on an argument to the effect that registering a generic domain name but not using it and instead offering it for sale to the highest bidder, independently of any awareness of the Complainant, is of itself evidence of bad faith;
- the Complainant is represented by an intellectual property counsel who even on a rudimentary examination of the Policy and its application in this area should have appreciated that the Complaint could not succeed;
- the Complainant misused the Policy to get the disputed domain name for itself following its unsolicited offer to purchase which was met with a counter-offer, and as such this is a classic “Plan B” case;
- the Complainant was put on notice, twice, of the futility of its case yet proceeded anyhow. 6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has provided evidence of ownership of a United States trademark registration for POWER AGENT.
As highlighted in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the first element functions primarily as a standing requirement, and the threshold test for confusing similarity typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.
The Panel finds that the disputed domain name is identical to the Complainant’s word mark POWER AGENT, as it reproduces the mark in its entirety with the mere addition of the generic Top-Level Domain (“gTLD”) “.com”, which is commonly disregarded under the first element confusing similarity test (section 1.11 of the WIPO Overview 3.0).
Therefore, the Panel finds that the Complainant has proven that the disputed domain name is identical to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
In light of the Panel’s findings under the following section, it is not necessary to address this issue separately.
C. Registered and Used in Bad Faith
The Complainant has failed to demonstrate that the Respondent registered and is using the disputed domain name in bad faith for the following reasons.
Beyond conclusory allegations about the Respondent’s knowledge of the trademark in light of the Complainant’s asserted advertising and provision of services under the trademark POWER AGENT since 1993, the Complainant has not provided any evidence of use of its trademark and has failed to demonstrate that the Respondent was likely to have been aware of the Complainant and its trademark at the time of its registration of the disputed domain name based on the Complainant’s alleged reputation. Moreover, the Complainant has otherwise failed to prove that the Respondent registered the disputed domain name to target the Complainant’s trademark and trade on its value.
On the contrary, the Respondent has satisfied the Panel that it registered the disputed domain name for its inherent value as a domain name incorporating a common descriptive term, as part of its business as an investor in such domain names.
The Panel also finds that, in view of the circumstances of the case, in particular the common and descriptive nature of the term incorporated in the disputed domain name, the Respondent’s offer for sale of the disputed domain name does not demonstrate that it registered and is using the disputed domain name in bad faith, i.e., with a view to selling it to the Complainant. D. Reverse Domain Name Hijacking
Paragraph 15(e) of the 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 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”.
The Rules define Reverse Domain Name Hijacking as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”
The Panel also bears in mind that the Complainant in this case is represented by counsel and, therefore, it should be held to a higher standard (see section 4.16 of the WIPO Overview 3.0).
The Panel concludes that the Complainant’s actions constitute Reverse Domain Name Hijacking for the following reasons:
i) the Complainant, which is represented by counsel, should have appreciated the weakness of its case and the fact that the term “power agent” encompassed in the disputed domain name cannot be exclusively referable to the Complainant, as claimed in the Complaint without any supporting evidence;
ii) the Complainant’s case is based on the argument that using a common/descriptive domain name in connection with a pay-per-click website and offering it for sale to the highest bidder, independently of any awareness of the Complainant, is of itself evidence of bad faith. The Panel finds that the Complainant should have contemplated that it could not succeed with such an argument;
iii) the Respondent’s response to the letter received by the Complainant before the filing of the Complaint highlighted the weakness of the Complainant’s case, but the Complainant omitted to address the issues raised by the Respondent and even to disclose the existence of such correspondence; and
iv) the circumstances of the case clearly show that this is a speculative “plan B case” launched by the Complainant after its failure to purchase the domain name from the Respondent. 7. Decision
For the foregoing reasons, the Complaint is denied. The Panel further declares that the Complaint was brought in bad faith and that it constitutes an abuse of the administrative proceeding.
Luca Barbero
Presiding Panelist
Martin Schwimmer
Panelist
Adam Taylor
Panelist
Date: January 21, 2019
Full & Egal Universal Law Academy