Complainant is Project Box LLC, United States of America (“United States”), represented by Dearing and Hartzog, L.C., United States.
Respondent is Domains by Proxy, LLC, United States / Mark Hennings, 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 September 26, 2019. On September 27, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 30, 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 October 1, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 3, 2019. 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 Respondent of the Complaint, and the proceedings commenced on October 3, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 23, 2019. The Response was filed with the Center on October 23, 2019. The Center appointed Robert A. Badgley as the sole panelist in this matter on November 4, 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. On November 5, 2019, Complainant submitted to the Center an unsolicited Reply to Response. On November 7, 2019, Respondent submitted to the Center an unsolicited Second Response. In its discretion, the Panel has considered both Parties’ unsolicited supplemental filings and annexes thereto. On November 12, 2019, the Panel issued Procedural Order No. 1, the contents of which is discussed below in the “Factual Background” section. 4. Factual Background According to the affidavit of Complainant’s owner and principal, Timothy Garrett, Complainant has used the mark POCKETBOOTH since “at least as early as 2010” in connection with “designing game software for use in photography-based games, including designing and selling mobile apps that replicate the intimacy, spontaneity, and hilarity of a traditional photobooth.” Complainant registered with the United States Patent and Trademark Office (“USPTO”) the trademark POCKETBOOTH in connection with “game software for use in photography-based games.” The USPTO registered the mark (No. 5,766,783) on June 4, 2019, and the registration indicates a date of first use of September 13, 2010. Complainant also registered with the USPTO an earlier registration (No. 3,969,965) of the mark POCKETBOOTH in connection with “game software.” That mark was registered on May 31, 2011 (with a September 13, 2010 date of first use in commerce). According to Complainant, the registration for mark 3,969,965 was “inadvertently canceled.” Complainant annexed to the Complaint a USPTO notice to Complainant dated May 31, 2016 (five years after the date of initial registration) which advised Complainant that the POCKETBOOTH registration under Reg. No. 3,969,965 would be canceled if Complainant failed to submit a Declaration of Use and/or Excusable Nonuse of the mark by the statutory deadline. The USPTO canceled this trademark registration on January 5, 2018. Complainant, which does not claim that it never received the May 31, 2016 USPTO notice, does not explain why it took no action in response to the notice and allowed this registration to lapse. Complainant maintains a website at “www.projectbox.com” and “www.pocketboothapp.com”, where its POCKETBOOTH applications are advertised and offered for sale. Complainant annexes to the Complaint a screen shot of its web page from 2019. Complainant does not provide any evidence of actual use of the POCKETBOOTH mark prior to 2019, and does not provide any evidence regarding the extent of its advertising of the mark, the extent of its sales, the extent of consumer recognition of the mark, and other evidence that might support a claim for common law trademark rights. In its Reply to Response, Complainant asserts that it has spent more than USD 700,000 in “developing, marketing and selling its POCKETBOOTH mobile app.” There is no further breakdown of this figure, however; it is not known (even if the USD 700,000 figure is taken at face value) how much of the USD 700,000 was spent on marketing associated with the POCKETBOOTH trademark, or how much of the marketing occurred prior to the date on which Respondent acquired the Domain Name (on February 27, 2017). There is no evidence (such as unsolicited third-party media coverage) regarding the results of any such marketing, i.e., the extent to which consumers actually associated (prior to February 27, 2017) the mark POCKETBOOTH with Complainant’s offerings. In response to an assertion by Respondent that the mark POCKETBOOTH is merely descriptive (and hence would require a showing of acquired distinctiveness via secondary meaning), Complainant states in its Reply to Response: “[E]ven if the USPTO were to conclude that the Trademark [POCKETBOOTH] was descriptive, [Complainant] Project Box would have easily overcome such an objection by establishing that Project Box had developed a secondary meaning in the Trademark through at least 5 years of substantially exclusive and continuous use.” The Domain Name was first registered on August 11, 2015. According to Respondent, he acquired the Domain Name a year and a half later, on February 27, 2017. Respondent is the founder and CEO of SMPL, Inc., d/b/a Simple Booth. According to the affidavit Respondent submitted with his Second Response, he has worked in the “photobooth industry” for six years. Simple Booth manufactures and sells “pocket-sized photobooth software.” The Domain Name resolves to Simple Booth’s website, “www.simplebooth.com”. Respondent registered the Domain Name in order to market Simple Booth’s software. Beginning August 17, 2017, Simple Booth added to its website the phrase “it’s like having a photo booth in your pocket!” The Simple Booth app is advertised in the app store as “a photo booth in your pocket!” According to Respondent, he and his company registered the Domain Name because the common English terms “pocket” and “booth” describe what Simple Booth sells. Respondent states in his affidavit: “When I acquired the Domain Name, I was not aware that any company claimed to have proprietary rights in these two common dictionary words. While I was vaguely aware of Complainant in 2017, I was not aware that Complainant had any trademark rights. They didn’t use the ® or TM symbol anywhere, and PocketBooth was just two common words that describe pocket size photobooth software. When I acquired the Domain Name, I understood ‘pocket booth’ to be two common dictionary words that were free for anyone to use in a marketing campaign about mobile photobooth software.” Complainant alleges in its Reply to Response that Respondent “attempted to ransom the Domain Name to [Complainant] Project Box.” On February 22, 2018, Complainant states, [Respondent] Hennings (anonymously through [Registrar] GoDaddy) attempted to sell the Domain Name to Project Box for USD 27,000.” Complainant omits from its “ransom” narrative the fact that, the day before, February 21, 2018, the GoDaddy representative had sent Respondent an email advising that “a client of ours has a serious interest in purchasing your [Domain Name], and offered USD 500 as an “initial offer.” Other facts and allegations have been raised by the Parties, but the Panel will not go exhaustively into all such items, in part because they are not germane and in part because the Party offering the fact or allegation does not support it or, in some cases, even give it context. One such “loose thread” deserves mention, however, if only to illustrate the surfeit of loose threads and unconnected dots in this record. It is the allegation, first raised in Complainant’s Reply to Response, that Complainant and Respondent’s company Simple Box “have directly competed for clients, including Strategic Marketing & Tourism Alliance for Downtown New York in 2014.” No further detail regarding this incident was supplied by Complainant. This incident is offered by Complainant to shore up its assertion – denied by Respondent – that Complainant and Simple Booth are direct competitors. Complainant does not, however, disclose what actual product or service was being competitively vetted by the tourism alliance in question in 2014. A snack vendor and a cleaning service can both be seeking a business contract with the same entity at the same time, but it does not mean that the snack vendor and the cleaning service are competitors. Nor was any effort made to prove that this supposed competition recurred. Complainant names one entity from 2014, but, despite using the plural “clients,” does not offer any further examples. Respondent addressed this 2014 incident in his affidavit, in which he denied knowing that Simple Booth was competing with Complainant at the time: “This Tourism Alliance did not mention any competitors when it contacted me.” The foregoing account captures the relevant factual picture at the time the Panel issued Procedural Order No. 1, which stated: “Without making a determination on the substance of the matter, the Panel notes Respondent’s statements in his affidavit ‘While I was vaguely aware of Complainant in 2017, I was not aware that Complainant had any trademark rights.’ Accordingly, the Panel requests Respondent to submit a sworn affidavit stating whether, as of February 27, 2017, Respondent was aware that Complainant’s software or app was branded POCKET BOOTH. On the other hand, Complainant shall provide any evidence it has that Respondent actually knew that Complainant’s software app was branded POCKET BOOTH as of February 27, 2017. The Parties shall provide such information to the Center on or before November 18, 2019, avoiding rehashing points made in its prior submissions to the Center. The Panel reserves the right to raise additional questions. The due date for Decision is extended to November 25, 2019.” Complainant’s response to Procedural Order No. 1 included a screenshot from a Twitter post on April 21, 2016, in which someone named “Amy” asked: “Looking for advice – Which is better iPad #photobooth app for a #wedding, @pocketboothapp party or @simpleboothapp event edition?” On April 28, 2016, “Simple Booth” responded: “From a completely impartial, unbiased perspective, I would have to vote Simple Booth!” Complainant also provided six examples of media coverage of the Parties’ respective apps. Each of these articles predates Respondent’s acquisition of the Domain Name in February 2017. Each refers to Complainant’s app as POCKETBOOTH, and each mentions Respondent’s Simple Booth app as an alternative to POCKETBOOTH (and vise-versa). One representative discussion of these two apps (and sometimes others) was from Chorus Connection on April 8, 2016: “With a simple tripod and a tripod mount, our iPad transformed into a photobooth. iPad's front-facing camera and large screen provided an interactive, keepsake-making experience for our audience. Several good photobooth apps exist for iPad, ranging from very cheap to over fifty dollars. Pocketbooth ($0.99) is a good app and allows some social media and email integration, but its interface is a bit complex. SimpleBooth ($59.99) is marketed as a photobooth for professional events with corresponding branding options. Setup options are much more flexible, and can allow you to automatically tweet photos or have the user email or print them. SimpleBooth created a Do-It-Yourself guide that can be generalized for almost any photobooth app scenario.” Respondent answered Procedural Order No. 1 by stating in an affidavit: “When I acquired the Domain Name in 2017, I was not aware that any company had trademark rights in the two common dictionary words ‘Pocket’ and ‘Booth’. In 2017, I was aware that Complainant sold a product that it called ‘a photobooth in your pocket’ and that Complainant used the accompanying words ‘Pocket Booth’.” Respondent also raised arguments already made in its prior submissions to the Panel. 5. Parties’ Contentions A. Complainant Complainant asserts that it has established all three elements required under the Policy for a transfer of the Domain Name. According to Complainant, it had viable trademark rights at the time Respondent registered the Domain Name, Respondent was aware (actually or constructively) of Complainant’s mark, Respondent is a competitor of Complainant who lacks any legitimate interest in the Domain Name, and Respondent registered and used the Domain Name in bad faith by directing the Domain Name to Respondent’s competing website and by trying to “ransom” the Domain Name for USD 27,000. B. Respondent Respondent disputes that Complainant had any valid trademark rights when he registered the Domain Name in 2017. According to Respondent, the Domain Name reflects two common English words which, in combination, describe Respondent’s software. Respondent also states that he registered the Domain Name for legitimate business reasons, and not to trade off the trademark rights of Complainant. Respondent denies that his company and Complainant are direct competitors, and Respondent denies that he registered the Domain Name with the intent to sell it for a profit. 6. Discussion and Findings Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel concludes that Complainant has rights in the mark POCKETBOOTH through registration and use demonstrated in the record. For purposes of this element of the Policy, it does not matter whether such trademark rights existed before the registration of the Domain Name. The Panel also finds that the Domain Name is identical to Complainant’s registered trademark. Complainant has established Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements: (i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or (ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or (iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Panel concludes that Respondent has no rights or legitimate interests in respect of the Domain Name. The Parties’ responses to the Panel’s Procedural Order No. 1 establish that, when Respondent acquired the Domain Name in February 2017, Respondent knew that Complainant “sold a product that it called ‘a photobooth in your pocket’ and that Complainant used the accompanying words ‘Pocket Booth.’” Respondent claims he did not believe that POCKETBOOTH was a trademark of Complainant, but he certainly knew that Complainant was marketing a product under the brand POCKETBOOTH. It has also emerged from Complainant’s reply to Procedural Order No. 1 that Respondent acknowledged on Twitter, ten months before acquiring the Domain Name, that he was aware of a photobooth app called POCKETBOOTH. It is also apparent to the Panel (largely from information that Complainant should have put forward in its initial Complaint or its unsolicited supplemental filing; waiting for the Procedural Order was inexplicable) that Complainant’s photobooth app and Respondent’s photobooth app are competing products, even if differences exist between them. As noted above, Complainant provided six separate media articles discussing the Parties products, referred to Complainant’s product as POCKETBOOTH, and treated the products as alternative choices for the consumer. In these circumstances, it appears to the Panel more likely than not that Respondent knew in February 2017 that Complainant was marketing a competing photobooth product, and that Complainant was doing so under the name POCKETBOOTH. Notwithstanding Respondent’s claim to have registered and used the Domain Name in its descriptive sense, and notwithstanding Respondent’s denial of knowledge that Complainant held trademark rights in POCKETBOOTH, the preponderance of evidence and reasonable inference indicates that Respondent was aware of his competitor’s brand POCKETBOOTH and targeted that competitor’s brand. In the Panel’s view, such use of the Domain Name by Respondent does not qualify as a bona fide offering of goods or services under the Policy. Complainant has established Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”: (i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or (ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or (iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or (iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. The Panel concludes that Respondent has registered and used the Domain Name in bad faith within the meaning of the above-quoted Policy paragraph 4(b)(iii). The reasons set forth above, under the “rights or legitimate interests” rubric, apply with equal vigor to the “bad faith registration and use” issue. In sum, the record here indicates that Respondent more likely than not had Complainant’s POCKETBOOTH mark in mind when he acquired the Domain Name. Whether Respondent considered it an actual trademark is not essential; he knew it was the brand being used by another firm to sell a product in competition with his own product. Respondent also knew that other parties were referring to Complainant’s phonebooth app as POCKETBOOTH. Complainant has established Policy paragraph 4(a)(iii). 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name Robert A. Badgley
Sole Panelist
Date: November 19, 2019
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