Complainant is Talage, Inc., United States of America (“United States”), represented internally.
Respondent is Registration Private, Domains By Proxy, LLC, United States / Joseph Patrick, United States, represented by Morningstar Law Group, United States. 2. The Domain Name and Registrar
The disputed domain name (the “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 March 6, 2019. On March 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 8, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on March 11, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant did not file an amendment. On March 11 and March 16, 2019, the Center received two email communications from Respondent.
The Center verified that the 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 March 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 17, 2019. On April 11, 2019, Respondent requested an automatic four-day extension in which to submit a Response pursuant to paragraph 5(b) of the Rules. The Response was filed with the Center on April 21, 2019.
The Center appointed Christopher S. Gibson, Robert A. Badgley, and Andrew F. Christie as panelists in this matter on June 4, 2019. 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 registered the standard character trademark TALAGE, No. 5280844, with the United States Patent and Trademark Office (“USPTO”) on September 5, 2017. The mark was first used in commerce in 2016 in the insurance industry. Complainant holds insurance licensing in all 50 states of the United States and Washington, D.C.
The Domain Name was registered by Respondent on April 20, 2006. The Domain Name has been used periodically by Respondent to host a personal website. 5. Parties’ Contentions A. Complainant
(i) Identical or Confusingly Similar
Complainant states that its TALAGE trademark satisfies the threshold requirement of having trademark rights to qualify for standing to file a UDRP case. The Domain Name takes the form of Complainant's TALAGE word mark in its entirety and the “.com” top-level domain (“TLD”). While the trademark and Domain Name are not formally identical due to the addition of the TLD, in practical terms that is of no significant difference.
(ii) Rights or Legitimate Interests
Complainant states that none of the examples of rights or legitimate interests set out in the Policy apply to Respondent.
(iii) Registered and Used in Bad Faith
Complainant contends that although Respondent may have purchased the Domain Name prior to Complainant’s trademark rights accruing (assuming the Domain Name was not transferred to Respondent at a later date), this does not mean that Respondent cannot be found to have registered the Domain Name in bad faith.
Complainant further claims that Respondent is currently engaging in passive holding of the Domain Name in an effort to ransom it for an unreasonable sum to Complainant. Complainant argues that there are four factors the Panel may use to determine Respondent’s bad faith when applying the doctrine of passive holding – Respondent fits at least two of these criteria:
(i) the degree of distinctiveness or reputation of Complainant’s mark. The Domain Name matches Complainant’s TALAGE mark exactly and is highly unique. The name “Talage” claimed by Complainant is not a standard term and is not used in any other industry or by any other business. Talage is a made up word that is not confused with any other. The name was derived from “Digital Agency” (i.e., “tal” from digital and “age” from agency), which directly describes the business Talage conducts.
(ii) the implausibility of any good faith use to which the Domain Name may be put. Complainant states that Respondent has demonstrated a long history of not using the Domain Name for a good faith purpose. Respondent has not established any commercial or noncommercial use for the Domain Name. As of the date of the filing of the Complaint, the Domain Name has been unused since approximately October 11, 2016 and it is only displaying GoDaddy’s default language, “Future home of something quite cool” page. One can see Respondent’s non-use of the Domain Name by reviewing snapshots that show the GoDaddy default page as of May 16, 2017, September 12, 2017, March 7, 2018, August 8, 2018, and November 5, 2018. In fact, at the time of this filing, the Domain Name remains unused.
Finally, Complainant claims that by utilizing a domain name identical to Complainant’s trademark, Respondent has the ability to cause confusion for Complainant’s customers that would result in direct damages to Complainant. B. Respondent
(i) Identical or Confusingly Similar
Respondent states that Complainant registered the TALAGE trademark with the USPTO more than ten years after Respondent registered the Domain Name. Nevertheless, Respondent does not dispute that the Domain Name consists wholly of Complainant’s mark and the “.com” TLD.
(ii) Rights or Legitimate Interests
Respondent claims that he has rights and a legitimate interest in the Domain Name and there is no evidence of bad faith with respect to Respondent’s purchase or use of the Domain Name.
Respondent states that he registered the Domain Name in April 2006, after having long been referred to by his friends by the nickname “Talage” and after establishing an online identity with the same name on various online message boards. Respondent contends that the registration of a domain name that consists of a Respondent’s nickname has repeatedly been held as a good faith reason to register a domain name. Further, Respondent’s registration occurred more than ten years before Complainant received rights in the term “talage” – and almost ten years before Complainant even existed – meaning Respondent could not have anticipated the existence of Complainant at the time of the Domain Name’s registration and there could be no bad faith at that time. Respondent urges that for these and the reasons set forth below, Complainant’s request for relief should be denied.
In the late 1990’s, Respondent’s friends and classmates began referring to him as “Talage,” a slight modification of his middle name, “Talmage.” Respondent continues to be known by this nickname to this day. In 2005, when Respondent registered for an online message board associated with his university, The Wolf Web, he selected the online identity of “talage” because he had long been known by that nickname. Through the years, Respondent has continued to use his “Talage” identity to post online messages to The Wolf Web. In total, Respondent has made over 5,000 posts on The Wolf Web under the online identity “Talage” and is known in the online community by that name. In 2006, given Respondent’s long use of Talage, both as a nickname and an online identity, Respondent purchased the Domain Name to host a personal website. Throughout the years, Respondent has hosted various personal websites at the Domain Name. During certain periods, Respondent may have temporarily let the Domain Name sit idle, but during that time, Respondent never had any intention to sell it.
In October 2015, Respondent received a message from a Mr. Donovan, who Respondent now understands to be one of the co-founders of Complainant. Complainant’s co-founder offered to purchase the Domain Name from Respondent for US$100. Respondent evaluated Complainant’s offer, but did not want to sell the Domain Name that he had been using personally for almost ten years at that time. Subsequently, Complainant made additional offers to purchase the Domain Name from Respondent, but Respondent decided to retain control of the Domain Name.
Respondent states that he had never heard of Complainant prior to Complainant’s attempt to purchase the Domain Name. Respondent clearly was unaware of Complainant when Respondent registered the Domain Name nearly ten years before Complainant existed. Even after learning of Complainant, Respondent has made no efforts to create confusion between Respondent’s personal website and the website of Complainant, and Respondent has no intention to ever do so. Respondent simply wishes to continue hosting his personal website at the Domain Name that contains his nickname and online identity, and is filing this Response in an effort to allow that to happen.
In its Complaint, Complainant makes no attempt to refute Respondent’s long standing use of the Domain Name, instead simply declaring, without support, that “[n]one of the example rights or legitimate interests set out in the Policy apply to Respondent”. As explained above, however, Respondent purchased the Domain Name based on his personal nickname, which Respondent claims establishes rights under paragraph 4(c)(ii) of the Policy. Complainant has provided no evidence to refute Respondent’s rights.
In summary, Respondent purchased the Domain Name, which consists of his long-used, personal nickname, to use for his personal website, and did so nearly ten years prior to the existence of Complainant and over ten years before Complainant registered its TALAGE mark. It is well established that this use of a nickname satisfies the requirements of paragraph 4(c)(ii) of the Policy and demonstrates that Respondent has rights and legitimate interests in the Domain Name. Consequently, because Respondent has rights and legitimate interests in the Domain Name, Complainant’s request for relief should be denied.
(iii) Registered and Used in Bad Faith
Respondent states that he purchased the Domain Name that contains his personal nickname to use for his personal website nearly ten years prior to the existence of Complainant. Such use of a personal nickname in a domain name is well established as way to show there was no bad faith intent when purchasing a domain name.
Further, given that Respondent purchased the Domain Name nearly ten years prior to the existence of Complainant and more than ten years before Complainant registered its TALAGE mark, it is clear that Respondent did not purchase the Domain Name “primarily for the purpose of selling, renting, or otherwise transferring the domain name registration(s) to the Complainant”; to “prevent the Complainant from reflecting the mark in a corresponding domain name”; or “to prevent the Complainant from reflecting the mark in a corresponding domain name”. Given the chronology of the Domain Name purchase as compared to the creation of Complainant, any suggestion that Respondent had a bad faith intent when registering the Domain Name lacks credibility.
Respondent also contends that there is no evidence that he is currently using the Domain Name in bad faith. Respondent and Complainant are not competitors. Respondent is an individual software engineer, while Complainant is an online insurance agency. Respondent registered the Domain Name because it was his nickname, not to “disrupt Complainant’s business”, a business that did not even exist at the time of the Domain Name’s registration. Further, Respondent wishes to retain control of the Domain Name so that he can continue to use it for his personal use, and he has no intention of taking any action that is likely to cause confusion with Complainant.
Respondent contends that where a respondent registers a domain name before the complainant’s trademark rights accrue, UDRP panels will normally find no bad faith on the part of the respondent – this is the exact situation here. Respondent registered the Domain Name because it consisted of his personal and long-used nickname nearly ten years prior to the existence of Complainant, and more than ten years before Complainant acquired the TALAGE trademark. These facts clearly show that there was no bad faith intent when Respondent registered the Domain Name. Consequently, Respondent requests that the Panel should find that Respondent did not purchase the Domain Name in bad faith.
Complainant’s other arguments also do not withstand scrutiny. Respondent is not claiming that the Domain Name does not closely resemble Complainant’s trademark; rather, Respondent is claiming that he owned the Domain Name nearly ten years before Complainant existed, let alone had any trademark rights. Similarly, Respondent is not required to actively develop the website he hosts at the Domain Name – a website that he maintains for his own personal use – even though he has done so periodically throughout the years.
Finally, Respondent had never even heard of Complainant prior to Complainant attempting to purchase the Domain Name. Thus, to suggest that Respondent purchased the Domain Name to “passively hold” it for “ransom” from a company of which he was unaware, and that did not even exist for almost ten years after Respondent registered the Domain Name, borders on ridiculous.
In summary, Respondent claims he has rights and legitimate interests in the Domain Name and that there is no evidence of bad faith intent related to the registration of the Domain Name. Further, given that Complainant was aware that Respondent owned the Domain Name almost ten years prior to Complainant even starting its business, and given the other evidence described above concerning Complainant’s attempts to purchase the Domain Name from Respondent, Respondent respectfully requests that the Panel make a finding of reverse domain name hijacking. 6. Discussion and Findings
In order to succeed on its Complaint, Complainant must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith. A. Identical or Confusingly Similar
The Panel finds that Complainant has established rights in its TALAGE trademark based on ownership of the mark’s registration in the United States. Respondent does not dispute that the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights.
Accordingly, the Panel finds that Complainant has satisfied the first element of the Policy, in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Panel observes that Complainant has provided no prima facie showing that Respondent lacks rights or legitimate interests in the Domain Name. Instead, Complainant put forward in the Complaint only the bare averment that “[n]one of the example rights or legitimate interests set out in the Policy apply to Respondent”.
By contrast, Respondent has provided evidence to establish his right and legitimate interest in the Domain Name. Respondent has demonstrated that he registered the Domain Name approximately ten years before Complainant existed and had acquired any rights in the TALAGE trademark. Further, Respondent has shown that he registered the Domain Name because it is uses the term “Talage”, which is identical to a nickname that Respondent has used, both offline and online, for many years and even before he had registered the Domain Name. Respondent’s nickname, Talage, stems from a slight modification of Respondent’s actual middle name, “Talmage”. Respondent has also periodically and legitimately used the Domain Name to host a personal website.
In support of these points, Respondent provided a sworn affidavit, along with the sworn affidavit of a friend, indicating that from the late 1990s, Respondent’s friends started calling him by the nickname, Talage. Further, Respondent provided screen shots showing the use of his nickname and online identity, Talage, from three sources: (i) Facebook, with postings dating from as early as 2007; (ii) “The Wolf Web”, a message board associated with students of North Carolina State University, with postings dating from 2007 and with posts by Respondent as recent as 2018-2019; and (iii) his personal website linked to the Domain Name, dating from January 2011 and March 2016.
For these reasons, the Panel finds that Respondent has established that he has rights or legitimate interests in the Domain Name. See e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.3 (when a respondent is “ ‘commonly known’…by the relevant moniker (e.g., a personal name, nickname, corporate identifier), apart from the domain name,” such rights “would prima facie support a finding of rights or legitimate interests under the UDRP”); Fendi Adele S.r.l v. Manfred Fandl,WIPO Case No. D2007-1432 (“a nickname can also satisfy the requirement of paragraph 4(c)(ii) of the Policy if it can be proven that the Respondent has verifiably used such name over a longer period of time”).
Accordingly, the Panel finds that Complainant has failed to show that Respondent has no rights or legitimate interests in respect of the Domain Name. The Panel therefore concludes that Complainant has not established the second element of the Policy in accordance with paragraph 4(a)(ii). C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Name in bad faith. WIPO Overview 3.0, section 3.1, states that “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”.
Here, Complainant has alleged that Respondent is engaging in passive holding of the Domain Name in an effort to ransom it for an unreasonable sum. In particular, Complainant alleges that the Domain Name matches exactly Complainant’s TALAGE mark, which is highly unique and comprised of a made-up word, and that in view of this distinctiveness, it is implausible that the Domain Name can be put to any good faith use. Complainant also alleges that Respondent has not used the Domain Name (other than linking it to GoDaddy’s default page) since October 2016, and that Respondent poses the risk of using the Domain Name to cause confusion for Complainant’s customers that would result in damages.
The Panel rejects Complainant’s allegations. The Panel determines that there is no evidence that Respondent registered or has used the Domain Name in bad faith. First, as discussed above, the Domain Name was registered by Respondent approximately 10 years both before Complainant’s business existed and Complainant had acquired any rights in its TALAGE trademark. See ClearBank Limited v. Curtiss Pope,WIPO Case No. DCO2018-0038 (“The chronology in this matter makes it clear that the disputed domain name could not have been registered in bad faith, because no relevant trademark rights yet existed when the original registration took place”). Moreover, the evidence shows that Respondent registered the Domain Name because it its identical (except for the “.com” TLD) to a nickname that he has used for many years.
Although Complainant argues that Respondent might potentially use the Domain Name in the future to cause confusion, the record reveals that since the Domain Name’s registration in April 2006, and even after Complainant commenced its insurance operations and began using the TALAGE mark in 2016, Respondent has not used the Domain Name in a manner that seeks to take advantage of Complainant’s mark. Instead, Respondent states that he wants to retain the Domain Name so that he can continue to use it for his personal use. This claim is credible in light of the history of prior use of the Domain Name as a reference for Respondent’s nickname and for a personal website, and the lack of any evidence of Respondent attempting to use the Domain Name to interfere with Complainant or its trademark rights.
Moreover, the Panel finds that the gap in use of the Domain Name by Respondent is not passive holding amounting to bad faith; instead, as discussed above, Respondent has provided a plausible explanation for registration of the Domain Name and a plausible good faith use to which he can put it – e.g., consistent with the way in which it has been used previously to host Respondent’s personal website.
In conclusion, the Panel determines that, for all of the above reasons, Complainant has failed to show that the Domain Name was registered and is being used in bad faith by Respondent. Accordingly, Complainant has failed to satisfy the third element of the Policy. D. Reverse Domain Name Hijacking
Respondent has requested that the Panel enter a finding of reverse domain name hijacking (“RDNH”) against Complainant. 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”. RDNH is defined under the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain name holder of a domain name”.
Section 4.16 of WIPO Overview 3.0 sets out a number of circumstances that UDRP panels have considered as supporting a finding of RDNH. Several of these that may be relevant to the case at hand include: (i) facts demonstrating that the complainant knew it could not succeed as to any of the required three elements – such as, among other things, clear knowledge of a lack of a respondent’s bad faith due to registration of the disputed domain name well before the complainant acquired trademark rights; (ii) facts demonstrating that the complainant ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint; (iii) the provision of intentionally incomplete material evidence – often clarified by the respondent; (iv) the filing of the complaint after an unsuccessful attempt to acquire the disputed domain name from the respondent without a plausible legal basis; and (v) basing the complaint on only the barest of allegations without any supporting evidence. Moreover, section 4.16 explains that some panels have held that a complainant represented by legal counsel should be held to a higher standard.
In this case, the Complaint is particularly brief. In the absence of any evidence, or even argument, as to the second element of the Policy (showing a lack of rights or legitimate interests on the part of Respondent), it was highly likely to fail. Complainant could have seen that Respondent had registered the Domain Name approximately 10 years before Complainant commenced its business operations. Moreover, Complainant did not disclose the relevant fact that one of its co-founders had been in communication with Respondent about purchasing the Domain Name in 2015.
On the other hand, from the record it seems that Respondent did not reply to that (or to any other) approach by Complainant explaining his bona fides concerning the Domain Name. In the absence of a reply setting out the claims that Respondent has made (and established) in the Response, it is possible that Complainant had no reason to believe that Respondent had a plausible good faith use to which the Domain Name could be put. Complainant also appears to have submitted its Complaint without the assistance of legal counsel.
On balance, the Panel doubts that the Complaint was brought in bad faith. Although Complainant has not succeeded in its Complaint, there is insufficient information in the record to suggest that its conduct amounted to RDNH. 7. Decision
For the foregoing reasons, the Complaint is denied.
Christopher S. Gibson
Presiding Panelist
Robert A. Badgley
Panelist
Andrew F. Christie
Panelist
Date: June 12, 2019
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