The Complainant is TPG Sixth Street Partners, LLC, United States of America (“United States” or “U.S.”), represented by Dilworth Paxson LLP, United States.
The Respondent is David Frieze, United States, represented by Melford Law, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 21, 2019. On August 22, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 23, 2019, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 10, 2019. The Center verified that the Complaint together with the amendment to 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 September 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 2, 2019. The Response was filed with the Center on October 1, 2019. The Center appointed William R. Towns as the sole panelist in this matter on October 15, 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. 4. Factual Background The Complainant, headquartered in Dallas, Texas, is an International investment and finance company. The Complainant is the holder of trademark registrations issued by the United States Patent and Trademark Office (“USPTO”) as follows: TPG SIXTH STREET PARTNERS, U.S. Reg. No. 5675929, applied for May 11, 2017, and registered February 12, 2019 (first use September 7, 2018); TPG SIXTH STREET PARTNERS (design plus words), U.S. Reg. No. 5675974, applied for May 31, 2017, and registered February 12, 2019 (first use September 7, 2018); TPG SIXTH STREET PARTNERS (design plus words), U.S. Reg No. 5675973, applied for May 31, 2017, and registered February 12, 2019 (first use Sept. 7, 2018). The Complainant’s TPG SIXTH STREET PARTNERS marks are registered in International Class 35 (“Class 35”) for business development, business risk management, investment, and insurance compliance. The Complainant also has a pending application to register the mark SIXTH STREET PARTNERS, U.S. Ser. No. 87446879, claiming additional services in Class 35, including tax consultation for risk management, and financial services in Class 36. The Complainant has disclaimed the right to use “PARTNERS” apart from the mark as a shown in each of the Complainant’s registered marks and pending application. The Respondent is the current register of the disputed domain name The Complainant submits that the disputed domain name The Complainant asserts that the Respondent has no rights of legitimate interests in respect of the disputed domain name. The Complainant avers that the Respondent has not been authorized, licensed or otherwise permitted to us the Complainant’s marks, and that the Respondent has not been commonly known by the disputed domain name. According to the Complainant, the disputed domain name incorporates the dominant portion of the Complainant’s marks, suggesting that the Complainant is endorsing the Respondent’s site. The Complainant contends that the disputed domain name does not resolve to and active, relevant website, and operates only as a vehicle to generate pay-per-click revenue. The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Complainant submits it is an international investment firm known throughout the world, and as such that the Respondent knew or should have known of the Complainant’s mark prior to registering the disputed domain name. The Complainant alternatively maintains that the Respondent has constructive knowledge of the Complainant’s marks as evidenced through the wide-spread awareness of the Complainant’s name. The Complainant submits it would be disingenuous for the Respondent to claim to have been unaware that the disputed domain name would interfere with the Complainant’s rights, citing Expedia, Inc. v. European Travel Network,WIPO Case No. D2000-0137. The Complainant, while acknowledging that the Respondent’s use of a pay-per-click parking page does not per se establish bad faith, contends this does not preclude a finding of bad faith under the doctrine of passive holding, citing Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. B. Respondent The Respondent submits that none of the Complainant’s registered TPG SIXTH STREET PARTNERS marks should be considered identical or confusingly similar to the disputed domain name, and that the Complainant’s application to register SIXTH STREET PARTNERS for use as a mark is still pending before the USPTO. The Respondent observes that the Complainant’s registered TPG SIXTH STREET PARTNERS marks recite services in International Class 35, and that the Complainant’s pending SIXTH STREET PARTNERS mark recites additional services in Class 35, including tax consultation for risk management, and financial services in Class 36. The Respondent also calls to attention the registration of the mark SIXTH STREET by Dime Box Distillery for use with “distilled spirits” in Class 33 (U.S. Reg. No. 4777494, applied for May 4, 2012, and registered July 21, 2015. First use in commerce in April 2015). The Respondent maintains that he uses the disputed domain name for email in connection with his real estate company, Sixth Street Properties, LLC, a registered Massachusetts limited liability company. According to the Respondent, the disputed domain name was registered on or about December 23, 2015, and has been used by the Respondent in an email address since January 7, 2016. The Respondent refers to an email announcement sent to business correspondents on January 7, 2016, advising of new contact information using the email address “[...]@sixthstreet.com.” The Respondent observes that the Complainant’s applications to register their TPG SIXTH STREET PARTNERS marks were filed on May 11 and 31, 2017, and postdate the Respondent’s registration and use of the disputed domain name. The Respondent states that he owns industrial, commercial and residential properties in Texas and Massachusetts. The Respondent represents that he chose his business name “Sixth Street Properties” out of fondness for Sixth Street in Austin, Texas, which the Respondent identifies as a well-known and historic street in the entertainment district. The Respondent further remarks that he previously lived in Austin for more than a decade. The Respondent argues that the disputed domain name is not confusingly similar to the Complainant’s marks. The Respondent submits that the Complainant and the Respondent are not competitors, and that in light of the foregoing there is no likelihood of confusion between the disputed domain name and the Complainant’s marks. The Respondent maintains that the Complainant has failed to make out a prima facie case that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. The Respondent submits that the Complainant’s marks are registered for use in connection with the business and financial services described above, none of which reference real estate, whereas real estate is the Respondent’s only business. The Respondent further observes that the dominant element of the Complainant’s marks - “Sixth Street” - is hardly unique to the Complainant, and that a name search discloses hundreds of businesses with names that include “Sixth Street.” The Respondent maintains that mere inclusion of “Sixth Street” in a name or mark is not enough to distinguish one company or its brands from another, and that the Complainant has no greater right to “sixth street” as a second-level domain name than other businesses using these words in their business names or trademarks. The Respondent submits based on uncontradicted evidence that the Respondent, having registered the disputed domain name on December 23, 2015, began using the disputed domain name as early as January 7, 2016, in connection with a bona fide offering of real estate services, operating as Sixth Street Properties, LLC, all of which took place prior to receiving any notice of dispute from the Complainant. The Respondent explains that while not using the disputed domain name with an active website, he has thousands of business contacts that he communicates with using the disputed domain name with his email address “[...]@sixthstreet.com”. The Respondent provides a graph from the Respondent’s email utility, which according to the Respondent documents that during the 180-day period ending September 26, 2019, the Respondent’s “[...]@sixthstreet.com” received 21,427 email messages, 12,485 of which were read, and 1,440 of which were sent. The Respondent thus contends pursuant to paragraph 4(c)(i) of the Policy that the Respondent has demonstrated rights or legitimate interests to the disputed domain name. In light of all of the foregoing, the Respondent submits that the Respondent registered and is using the disputed domain name in good faith. The Respondent submits that the Complainant’s allegations of bad faith are untrue. The Respondent submits that as he does not use the disputed domain name with an active website, the Complainant assertions of bad faith under paragraph 4(b) of the Policy are unfounded. 6. Discussion and Findings A. Scope of the Policy The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. 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 Hardwis,WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademark or service mark. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable. Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred: (i) the 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 interests with respect to the domain name; and (iii) the domain name has been registered and is being used in bad faith. Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i). Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations. Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar The Panel finds that the disputed domain name In this case, the Complainant’s marks are recognizable in the disputed domain name.2 The gTLDs, in this case “.com”, generally are disregarded in determining identity or confusing similarity under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the gTLD.3 While the Policy makes no specific reference to the date on which the holder of the trademark or service mark acquired its rights, such rights must be in existence at the time the complaint is filed. Accordingly, the fact that a domain name may have been registered before a complainant has acquired trademark rights does not by itself preclude a complainant’s standing to file a UDRP case, nor a panel’s finding of identity or confusing similarity under the paragraph 4(a)(i) of the Policy.4 However, when a domain name has been registered before a complainant has acquired trademark rights, only in exceptional cases would a complainant likely be able to prove a respondent’s bad faith.5 Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Complainant has demonstrated rights in its TPG SIXTH STREET PARTNERS marks, and the Panel has found that the disputed domain name is confusingly similar to the Complainant’s marks. However, the Respondent has brought forward evidence on which he relies in asserting rights or legitimate interests in the disputed domain name. The record in this case reflects that the Respondent registered and began using the disputed domain name with an email address nearly one and one-half years before the Complainant applied to register its TPG SIXTH STREET PARTNERS marks; more than two and one-half years before the Complainant’s first use of its marks in commerce; and more than three years before the Complainant’s marks were registered by the USPTO. As previously noted, when a domain name has been registered before a complainant has acquired trademark rights, only in exceptional cases would a complainant likely be able to prove a respondent’s bad faith. The Complainant has offered no facts or circumstances that even remotely suggest the Complainant possessed nascent rights in the TPG SIXTH STREET PARTNERS marks at the time the Respondent registered the disputed domain name. Nor is there evidence of any demonstrable change in the Respondent’s use of the disputed domain name following the Complainant’s registration of its marks. In short, there is nothing in the record that suggests the Respondent’s targeting of the Complainant or the Complainant’s marks, now or at any time. See Squirrels LLC v. Giorgio Uzonian,WIPO Case No. D2014-1434; Avenue 81, Inc. v. Karl Payne,WIPO Case No. D2014-1825. As noted earlier, the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy. In view of the Panel’s determination under paragraph 4(a)(iii) of the Policy, it is unnecessary for the Panel to address the issue of the Respondent’s rights or legitimate interests with respect to the disputed domain name under paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or (iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 its website or location. The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230. For the reasons discussed under this and the preceding heading, the Panel concludes that the Complainant has failed to carry its burden of demonstrating bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Respondent registered and began using the disputed domain name with an email address for his real estate business more than a year before the Complainant applied to register its TPG SIXTH STREET PARTNERS marks. It was two and a half years after filing before to the Complainant first made any use of the marks in commerce, and three years in total before the Complainant’s marks were registered by the USPTO. As discussed earlier, while the registration of a domain name before a complainant has acquired trademark rights does not preclude a complainant’s standing to file a UDRP case, only in exceptional circumstances will a complainant likely be able to establish a respondent’s bad faith. Such exceptional circumstances simply are not present in this case.6 There has been no demonstrable change of the Respondent’s use of the disputed domain name, and as noted earlier, there is no evidence of the Respondent’s targeting of the Complainant or the Complainant’s mark, now or at any time. Accordingly, the Panel finds that the Complainant has failed to satisfy the requirements of paragraph 4(a)(iii) of the Policy. E. 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”. Reverse Domain Name Hijacking (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”. The mere lack of success of the complaint is not itself sufficient for a finding of Reverse Domain Name Hijacking; rather, the record typically should reflect knowledge on the part of the complainant of the complainant’s lack of relevant trademark rights, or of the respondent’s rights or legitimate interests in, or lack of bad faith concerning, the disputed domain name. Paragraph 15(e) of the Rules does not on its face restrict a panel’s consideration of Reverse Domain Name Hijacking to cases in which a respondent has asserted that a complainant has been brought in bad faith, and recent WIPO panel decisions have clarified that it is not necessary for the respondent to seek an RDNH finding or prove the presence of conduct constituting RDNH in order for a RDNH finding to be made. See WIPO Overview 3.0, paragraph 4.16, and relevant panel decisions cited therein. In the Panel’s view, the record in this case evinces that the Complaint was brought in bad faith within the meaning of the applicable provisions of the Policy and Rules. As discussed above, the Respondent registered and began using the disputed domain name with an email address for his real estate business more than a year before the Complainant first applied to register its TPG SIXTH STREET PARTNERS marks, two and a half years prior to the Complainant first use of the marks in commerce, and three years prior to the USPTO’s registration of the Complainant’s marks. The Panel refers to a footnote in the original Complaint, wherein the Complainant acknowledges having previously been aware of the Respondent as a result of a WhoIs search in June 2019, which the Complainant emphasizes included a database providing a detailed registration address and other contact information. The WhoIs record obtained by the Complaint as of June 2019 would have reflected a “Creation Date” of August 6, 2001, and an “Update Date” of May 9, 2016. Thus, the Complainant knew or clearly should have known when submitting the Complaint that the Respondent had registered the disputed domain name well before the Complainant submitted applications to register the TPG SIXTH STREET PARTNERS marks, first used the marks in commerce, and registered the trademarks with the USPTO. The Complaint contains no evidence that even remotely suggests otherwise. Insofar as the record reflects the Complainant made no effort to contact the Respondent before filing the Complaint, even though the Complainant stated that it possessed a “database listing a detailed registration address and other contact information for the Respondent.” Given the circumstances, the Complainant could and should have done so before filing an otherwise groundless Complaint. See, e.g., GIGS United S.L. v. SIE MANTIC,WIPO Case No. D2014-1689; Personal Communication Systems, Inc. v. CDN Properties Incorporated,WIPO Case No. D2014-0664. 7. Decision For the foregoing reasons, the Complaint is denied. The Panel further finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. William R. Towns 1 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7 . 2 Id. When the relevant trademark is recognizable in the disputed domain name, the domain name normally will be considered confusingly similar to the mark for purposes of paragraph 4(a)(i) of the Policy. 3 See WIPO Overview 3.0 , section 1.11.2 and cases cited therein. 4 See WIPO Overview 3.0, section 1.1.3 and cases cited therein. 5 Id. See generally WIPO Overview 3.0, sections 3.1, 3.2.1, and 3.8. 6 See WIPO Overview 3.0, section 3.8.
Sole Panelist
Date: October 29, 2019
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