The Complainant is Limited Liability Company AV 808 of St. Petersburg, Russian Federation, internally represented.
The Respondent is Brian Cury, EarthCam, Inc. of New Jersey, United States of America, represented by Michael J Brown Law Office, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with R (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 20, 2019. On March 21, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 21, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 the Respondent of the Complaint, and the proceedings commenced on March 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 14, 2019. The Response was filed with the Center on April 10, 2019.
The Center appointed Marilena Comanescu as the sole panelist in this matter on April 24, 2019. 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.
The language of the proceeding is English. 4. Factual Background
The Complainant, Limited Liability Company AV 808, was founded in 2008 in the Russian Federation. It submits that in the last ten years it has become known worldwide for digital car video recorders, dash cams, and automotive accessories. The Complainant’s main domain name, , was registered on September 10, 2010.
The Complainant owns the International Trademark Registration no. 1150989 for CARCAM, registered on January 9, 2013, across various jurisdictions worldwide for goods in class 9.
The Respondent registered the disputed domain name on July 22, 1996. Currently it does not resolve to an active website.
According to the Parties’ contentions and the evidence provided as Annex 5 to the Complaint, prior to filing the present proceeding, the Complainant sent several emails to the Respondent asking whether it could purchase the disputed domain name and, finally, on August 1, 2017, the Complainant offered to purchase the disputed domain name for USD 5,000. According to the Complainant, the Respondent refused its purchase offer by telephone. 5. Parties’ Contentions A. Complainant
The Complainant contends the following:
- the disputed domain name is identical to its trademark CARCAM;
- the Respondent has no rights or legitimate interests in the disputed domain name as the Complainant did not grant the Respondent any license or permission to use its CARCAM trademark;
- the Respondent is not well known by the name “carcam” and/or the disputed domain name, and does not produce goods, nor does it provide services under the name “carcam”, a similar name, and/or the disputed domain name; and
- the Respondent registered and is using the disputed domain name in bad faith because (i) the Respondent demonstrated the intention to sell the disputed domain name, (ii) the disputed domain name is kept inactive, and (iii) the Respondent holds more than 150 domain names, including domain names incorporating dictionary words. B. Respondent
The Respondent contends the following:
- it has no independent information regarding the Complainant’s alleged trademark rights for CARCAM;
- the claim of the CARCAM trademark’s fame is exaggerated as a Google search for “carcam” does not reveal any reference to the Complainant or its products on the first pages;
- the disputed domain name was registered on July 22, 1996, nearly sixteen years before the Complainant registered its CARCAM trademark in the Russian Federation on July 18, 2012;
- the Respondent and its predecessors have used the trademark EARTHCAM since 1996, to identify its goods (cameras, computer hardware and software) allowing the transmission of images via video and digital cameras through a global computer network;
- between 2002 and 2016, the disputed domain name was used to redirect Internet users to other websites held by the Respondent where products identified under the name “EarthCam Carcam” were offered for sale. The Respondent provided supporting evidence in Annex 2 to the Response, showing excerpts from the Internet Archive Wayback Machine dated February 4, 2002, and May 25, 2002;
- the Complainant brought the Complaint in an attempt to use the UDRP proceeding for the purposes of Reverse Domain Name Hijacking particularly because (i) the Complainant was well aware that it registered the trademark CARCAM many years after the Respondent acquired rights in the disputed domain name; (ii) the Complainant initiated the contact with the Respondent and made an offer to purchase the disputed domain name; (iii) prior to any contact from the Complainant, the Respondent had made no other attempts to sell the disputed domain name to the Complainant or third parties; (iv) when the Respondent did not agree with the Complainant’s purchase offer, the Complainant initiated the present proceeding. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:
(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 the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel will further analyze the potential concurrence of the above circumstances. A. Identical or Confusingly Similar
The Complainant holds rights in the CARCAM trademark.
The disputed domain name reproduces the Complainant’s trademark CARCAM.
It is well established in decisions under the UDRP that the generic Top-Level Domain (“gTLD”) (e.g., “.net”, “.info”, “.com”, “.org”) may typically be disregarded for the purposes of consideration of confusing similarity between a trademark and the disputed domain name.
Given the above, the Panel finds that the disputed domain name is identical to the trademark CARCAM, pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
Following the findings under 6.C below, the Panel does not find it necessary to make a finding under this element of the Policy. C. Registered and Used in Bad Faith
The Complainant holds trademark rights in CARCAM since 2013. The Complainant’s domain name, , was registered in 2010. The disputed domain name was registered in 1996.
Accordingly, the disputed domain name was registered by the Respondent many years before the Complainant acquired trademark rights in the CARCAM mark or even had an Internet presence.
In accordance with section 3.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent.
In the present matter there are 17 years between the registration of the disputed domain name and the registration of the Complainant’s trademark, the Complainant in fact was founded more than 10 years after the registration of the disputed domain name. Therefore, considering the evidence submitted in this case, the Respondent could not have been aware of the Complainant or its trademark at the time of registration of the disputed domain name.
Pursuant to paragraph 4(a)(iii) of the Policy, both registration and use in bad faith need to be established for the purposes of the third element of the Policy. See also Validas, LLC v. SMVS Consultancy Private Limited, WIPO Case No. D2009-1413; Camon S.p.A. v. Intelli-Pet, LLC, WIPO Case No. D2009-1716; Atlas Productions, LLC v. Oneandone Private Registrant / Phil McCarty, WIPO Case No. D2011-0519); or Guru Denim Inc. v. Ibrahim Ali Ibrahim Abu-Harb, WIPO Case No. D2013-1324.
In any case, the Complainant’s claims of bad faith based on passive holding, the refusal to sell the disputed domain name to it for a certain amount, and the fact that the Respondent holds several domain names (including dictionary words), per se, are not evidence of bad faith. The business of buying and selling domain names is a legitimate business as long as the domain names do not include third-party trademarks and the domain names are not acquired for their trademark value and for purposes of targeting the trademark holder. See sections 3.1.1, and 3.3 of the WIPO Overview 3.0.
For all the above the Panel finds that there is no evidence on record to conclude that the disputed domain name was registered in bad faith, thus the Complainant has failed to demonstrate this element under the UDRP. 7. Reverse Domain Name Hijacking (“RDNH”)
ln its Response, the Respondent makes a claim of Reverse Domain Name Hijacking (“RDNH”) which the Panel will address below.
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. See Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187.
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.” (see WIPO Overview 3.0, section 4.16). However, panels have consistently found that the mere lack of success of the complaint is not in itself sufficient to constitute RDNH.
Section 4.16 of the WIPO Overview 3.0 sets out a number of the circumstances which UDRP panels have considered as supporting a finding of RDNH. These include: facts which demonstrate that the complainant clearly ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint, unreasonably ignoring established Policy precedent notably as captured in the WIPO Overview 3.0, filing the complaint after an unsuccessful attempt to acquire the disputed domain name from the respondent without a plausible legal basis and basing a complaint on only the barest of allegations without any supporting evidence.
In the present case, the Complainant should have appreciated that establishing registration and use in bad faith in respect of a domain name which had first been registered seventeen years ago was likely to involve difficult considerations. 8. Decision
For the foregoing reasons, the Complaint is denied. The Panel accepts the Respondent’s request for a finding of Reverse Domain Name Hijacking.
Marilena Comanescu
Sole Panelist
Date: May 7, 2019
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