The Complainant is Sarah Lonsdale & Stuart Clark t/a RocknCrystals, Australia, represented by Stuart Clark, Australia.
The Respondent is Domain Admin / This Domain is For Sale, HugeD, United States of America (the “United States” or “U.S.”), self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with DropC LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 5, 2019. On July 8, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 9, 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 July 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 31, 2019. The Response was filed with the Center on July 31, 2019.
The Center appointed Christopher J. Pibus, Philip N. Argy, and Richard G. Lyon as panelists in this matter on August 22, 2019. The Panel finds that it was properly constituted and has jurisdiction to decide this administrative proceeding. 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 is an Australian business registered on June 5, 2013. It operates as a retailer of various kinds of rocks, crystals, semi-precious, and precious stones. The Complainant filed a U.S. trademark application for the mark ROCKNCRYSTALS on June 27, 2019, under serial no. 88491105, in association with precious and semi-precious minerals and beads, and jewelry.
The Respondent is the owner of a large portfolio of generic domain names, and it operates as a reseller in the field. Respondent registered the disputed domain name on June 13, 2019. At the time the Complaint was filed, the Respondent was offering the disputed domain name for resale in the amount of USD 2,695. 5. Parties’ Contentions A. Complainant
The Complainant submits that it owns unregistered trademark rights in ROCKNCRYSTALS by virtue of use in Australia since 2013, and its pending trademark application in the United States. The disputed domain name incorporates the Complainant’s applied-for trademark in its entirety. Accordingly, the disputed domain name is confusingly similar to the Complainant’s trademark.
The Complainant contends that the Respondent has no direct business interest in the disputed domain name and that the Respondent has intentionally attempted to profiteer from the situation, by selling the disputed domain name to the Complainant “as the only legitimate owner of the name”.
Lastly, the Complainant submits that the Respondent is acting in bad faith because it is offering to sell the disputed domain name for more than out-of-pocket expenses. The Complainant contends that the Respondent took advantage of the circumstances and prevented the Complainant from obtaining the disputed domain name on back order, thereby interfering with the Complainant’s business. The Respondent’s conduct will force the Complainant “to effectively kill our company and start a new one”. B. Respondent
The Respondent submits that the Complainant does not own common law or registered trademark rights in the mark ROCKNCRYSTALS. The Complainant’s recently filed U.S. trademark application is defective, because it failed to include a filing basis, and will likely be rejected by the U.S. Patent and Trademark Office. Furthermore, the Complainant’s application for ROCKNCRYSTALS is obviously descriptive in nature because it was filed for use in association with stones and crystals.
The Respondent contends that the Complainant filed its trademark application 14 days after the Respondent registered the disputed domain name. Accordingly, at the time of registration of the disputed domain name the Complainant had no pending or registered rights in the mark ROCKNCRYSTALS in the United States, where the Respondent’s business is located.
The Respondent also submits that the Complainant does not own exclusive rights to the mark ROCKNCRYSTALS in that the mark is comprised of generic, dictionary terms for the products sold in the Complainant’s business. No probative evidence of common law rights has been provided.
Accordingly, the Respondent argues that the Complainant’s unregistered mark ROCKNCRYSTALS is insufficient to support this Complaint.
The Respondent defends its ownership of the disputed domain name as part of its business of reselling domain names comprised of generic terms. Under the Policy, the Respondent submits that this type of business has been considered a bona fide offering of goods and/or services.
The Respondent owns more than 100 domain names, which are listed for public sale with the term “RockN”, including the following:
; ; ; ; ; ; ; ; ; ; ; ; ; ; ; ; and .
Furthermore, the Respondent owns several other domain names similar to the disputed domain name, including the following:
; ; ; ; ; ; ; ; and .
Accordingly, the Respondent submits that it has legitimate rights and interests in the disputed domain name.
With respect to bad faith, the Respondent draws attention to the chronology of events, which shows that the Complainant only applied to register ROCKNCYRSTALS as a trademark after the Respondent had registered the disputed domain name. The Respondent says it had no knowledge of the Complainant’s business name or related website, and was not targeting the Complainant in an abusive manner. The Respondent is in the business of reselling domain names consisting of generic terms, including “rocks” and “crystals”, which is a bona fide offering of goods and services under the Policy.
The Respondent also submits that the Complainant has engaged in Reverse Domain Name Hijacking. It was only after the Complainant failed to obtain the disputed domain name at auction, and after the Respondent rejected the Complainant’s offer to purchase the disputed domain name for USD 1,000, that the Complainant filed the UDRP Complaint. The basis of the Complaint was fundamentally flawed as the Complainant does not own registered trademark rights in the mark ROCKNCRYSTALS and failed to provide evidence of common law rights in the mark. The accusations made by the Complainant with respect to bad faith are false and exaggerated, and therefore constitute an abuse of the UDRP process. 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 a trademark or service mark in which the Complainant has rights;
(ii) the 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. A. Identical or Confusingly Similar
When the Complaint in this matter was originally filed, the Center raised certain deficiencies, and, based on policy precedent, provided targeted guidance to the self-represented Complainant in connection with the foundation of their claims and the evidence required to support the requested relief.
Judging by the lack of relevant details and probative evidence in the Complaint as amended, the Complainant did not take advantage of the guidance it was offered. The Complaint, as it stands, could be described as a “bare bones” pleading, with its substantive section comprised of three short paragraphs. The pleaded facts with respect to the trademark rights in question are illustrative of the failings of the case as a whole.
As the threshold to establish trademark rights under the Policy is not overly burdensome, it is relatively rare for a Panel to find against a complainant on this issue. However, as set out below, the evidence and argument in this case fail to provide a satisfactory foundation for this proceeding.
In terms of registered trademarks held by the Complainant, there are none. The Complainant relies on a pending trademark application, which was filed on June 27, 2019, with the United States Patent and Trademark Office (“USPTO”). That filing was problematic for two reasons: (1) the filing date was about two weeks after the registration of the disputed domain name; and (2) the filing appears to be defective on its face. The chronology suggests that it was only after the Complainant realized that the Respondent acquired the disputed domain name that they attempted to shore up their position by a belated filing. They did so not in their primary country of operations – Australia – but in the United States where the Respondent is based. At this point, without explanation, the Complainant has never taken any steps to register their trademark in Australia.
The USPTO filing is itself problematic, because it fails to identify any grounds on which the application is based. This may be the result of inadvertence, or lack of knowledge on the part of the Complainant, and it may eventually be capable of correction. However, for the purpose of this decision, the application is the only basis of the Complainant’s Complaint and it is insufficient.
The Policy does recognize that complaints may be founded on common law rights, based on use and reputation. However, in order to succeed on this basis, certain evidentiary requirements must be met. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.3 notes as follows:
“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.”
The Complainant has failed to put forward relevant evidence in terms of facts and documents in this matter, and the Panel notes in particular the absence of proof relating to the nature of use of the mark, the amount of sales, the nature and extent of advertising, and the degree of actual public recognition, all of which are matters as to which the Complainant has ready access to proof, if any proof there be. Given the descriptive nature of the mark ROCKNCRYSTALS in the field of minerals, stones, crystals, and gemstones, it was particularly important for the Complainant to marshal convincing evidence of their reputation in the marketplace, beyond mere statements or conclusory allegations. As WIPO Overview 3.0, section 1.3, notes:
“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 all the circumstances, the Panel finds that the Complainant has failed to establish sufficient trademark rights to satisfy the first element of the Policy under paragraph 4(a)(i). Although that is sufficient to dismiss the Complaint, we will for good order deal with the other two grounds on which the Complainants must also discharge their onus. B. Rights or Legitimate Interests
In light of the absence of evidence in the Complaint, and in view of the factors enumerated below in Section 6(C), the Panel finds that the Complainant has failed to establish the absence of rights or legitimate interest on the part of the Respondent. C. Registered and Used in Bad Faith
The Complainant’s submissions and evidence with respect to bad faith are set out in six sentences, and are unsupported by any documentary exhibits or other forms of tangible evidence. The Complainant characterizes the business model of the Respondent reseller as profiteering, and concludes with a dire forecast of what will happen if they cannot secure the transfer of the disputed domain name: “We will be forced to effectively kill our company and start a new one with a different name.”
By way of response, the Respondent has provided a description of its business as a reseller, and explains that it had created a portfolio of more than 100 domain names which featured the prefix “rockn”, and a number of other names which include descriptive words related to rocks, crystals, minerals, and gems. Examples are listed in paragraph 5(B) of this decision. Respondent’s purpose in acquiring these names was to further its business model as a reseller by building a portfolio of commercially attractive descriptive combinations. The Respondent’s evidence in this regard is detailed.
In particular, the Respondent asserts that it purchased the disputed domain name “for the generic meaning of the words combined and the inherent relationship between rocks and crystals”. At the time of its registration of the disputed domain name, the Respondent rightfully argues that it was not and could not have been aware that the Complainant would thereafter file a trademark application.
Looking at the sequence of events and the totality of the evidence, there is nothing to suggest that the Respondent targeted the Complainant’s business or otherwise engaged in an abusive registration contrary to the Policy. To suggest that the Respondent’s conduct is wrongful, because the Complainant would be “forced to effectively kill our business” and “start a new one with a different name”, appears to be a gross exaggeration. In fact, it appears that the Complainant has been perfectly able to carry on business since 2013, using its current domain name to host its online platform. The Complainant’s arguments were weakened by overstatement, and the Panel is entirely unpersuaded that any finding of bad faith can be made against the Respondent.
The Panel finds that the Complainant has failed to satisfy the element of the Policy under paragraph 4(a)(iii). Reverse Domain Name Hijacking
The Respondent seeks a finding of reverse domain name hijacking based on the following factors:
(1) Complainant’s failure to bring forward evidence of a probative nature on any of the three critical elements of the Policy, including basic trademark rights, despite the flagging by the Center of certain deficiencies;
(2) The sequence of events, specifically:
(a) the Respondent’s prior registration of the disputed domain name on June 13, 2019;
(b) the subsequent enquiry about purchase made to the Respondent on June 19, 2019;
(c) the belated filing by the Complainant of its trademark application in the United States on June 27, 2019; and,
(d) the filing of the Complaint itself, which only occurred on June 29, 2019.
In the circumstances, the Panel finds that the Complainant’s conduct in bringing this Complaint does constitute an abuse of the administrative proceeding. Having failed to purchase the disputed domain name from the Respondent on June 19, 2019, it is apparent that Complainant attempted to use the Policy to accomplish its goal, through a secondary strategy and without regard to the clear foundational requirements of a complaint and the potential issues raised by the Center. As a result, the Complaint was obviously deficient, in all the respects previously outlined in this decision. Further, the Complainant completely ignores well-settled Policy precedent, most notably that buying and selling domain names is not per se illegitimate and that common law rights may be established in a Policy proceeding only with competent proof. The Panel views the Complainant’s basic theory as nothing more than that it has a greater right to the disputed domain name than the Respondent. There is no basis for this principle in the Policy.
The Panel also finds that, in their brief set of submissions on bad faith, the Complainant grossly exaggerated the impact of their inability to own the disputed domain name. The Complainant’s goal in attributing to the Respondent the intention to “kill” their business was evidently aimed at creating the impression of deliberate targeted wrongdoing, when in fact there was no evidence to support this sort of characterization. In light of these factors, the Panel finds that the Complaint was brought in bad faith, and constitutes Reverse Domain Name Hijacking under paragraph 15(e) of the UDRP Rules. 7. Decision
For the foregoing reasons, the Complaint is denied, and the Panel finds that the Complainant has engaged in Reverse Domain Name Hijacking.
Christopher J. Pibus
Presiding Panelist
Philip N. Argy
Panelist
Richard G. Lyon
Panelist
Date: September 6, 2019
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