The Complainant is VROOMRes, LLC, United States of America (“United States”), represented by Nelson Mullins Riley & Scarborough, L.L.P., United States.
The Respondent is Carlos Garcia, United States, represented by Dmitriy Chyrkin, Ukraine. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 18, 2020. On April 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 20, 2020, 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. The Center sent an email communication to the Complainant on April 27, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Center received an informal email communication from the Respondent on April 27, 2020. The Complainant filed an amended Complaint on May 1, 2020. 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 the Respondent of the Complaint, and the proceedings commenced on May 1, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 21, 2020. On May 15, 2020, the Respondent requested an extension of the Response due date. The Center granted the Respondent an additional four calendar days to respond, and confirmed the new Response due date was May 25, 2020. The Response was filed with the Center on May 21, 2020. On June 3, 2020, the Center received a supplemental filing from the Complainant and an email communication from the Respondent. The Center appointed Martin Schwimmer as the sole panelist in this matter on June 9, 2020. 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 June 11, 2020, the Center received a supplemental filing from the Respondent. 4. Factual Background The Complainant utilizes BOOKFULL as a trademark for a vacation property rental software platform. The Respondent utilizes BOOKFULLY as a trademark for promoting vacation property rentals. 5. Parties’ Contentions A. Complainant The Complainant, VROOMRes, LLC, operates BOOKFULL, a software platform for the vacation rental property market, providing functionality such as reservation management and booking, payment processing, and vacation rental property marketing tools. The Complainant launched its platform under the BOOKFULL trademark (“BOOKFULL Mark”) on November 1, 2018. The Complainant registered the The Complainant has filed two intent-to-use U.S. trademark applications for the BOOKFULL trademark, U.S. Serial Numbers 88032369 and 88032365. These U.S. applications serve as the bases for International Registration Nos. 1438578 and 1450268. These International Registrations have been extended to various jurisdictions such as Australia, European Union, New Zealand, the Russian Federation, and the United Kingdom, which extensions have matured into registrations. The Complainant contends that the Respondent purchased the Disputed Domain Name from a previous registrant, sometime between July 19, 2019, and November 26, 2019. The Complainant’s contention is based upon print-outs of the website at the Disputed Domain Name obtained from the Archive.org service, showing the substitution of parking pages offering the sale of the Disputed Domain Name, and print-outs of historical WhoIs records from the DomainIQ service. The Complainant’s BOOKFULL trademark and the Disputed Domain Name are similar. Previous UDRP panels have consistently held that “a mere addition or a minor misspelling of the Complainant’s trademark does not create a new or different mark in which the Respondent has legitimate rights”. Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator,WIPO Case No. D2008‑1302. Here, the Disputed Domain Name wholly contains the Complainant’s BOOKFULL Mark but for the almost imperceptible addition of the letter “y”. The Respondent has no rights or legitimate interests in the Disputed Domain Name because (i) the Respondent is not commonly known by the Disputed Domain Name; (ii) the Complainant has not authorized the Respondent to use the BOOKFULL Mark nor is the Respondent a licensee of the BOOKFULL Mark; and (iii) before notice of the dispute, the Respondent has not used the Disputed Domain Name in connection with a bona fide offering of goods or services. The Respondent launched a virtually identical vacation rental property management software platform, which the Respondent branded under the confusingly similar BOOKFULLY designation. The Complainant contends that the number of similarities between the marks and products/services offered by the respective Parties is too great to be coincidental and is evidence of the Respondent’s lack of a legitimate interest in the Disputed Domain Name. The Respondent registered the Disputed Domain Name in bad faith because it is an intentional infringer. Where the complainant and respondent are competitors, the respondent’s knowledge of the complainant’s prior use of the mark in question “gives rise to a conclusion that the [r]espondent’s use of the mark was not fair use but in bad faith”. See Salt River Community Gaming Enterprises (d/b/a Casino Arizona) v. Fort McDowell Casino,WIPO Case No. D2007-0416. According to the Complainant, where the respondent conducts business in the same market as the complainant, operates a website at the disputed domain name at which it offers competing products and knew or should have known of the complainant’s mark when registering the disputed domain name, then the respondent must have deliberately included the complainant’s trademark in the disputed domain name so as to attract business by creating a likelihood of confusion with the complainant as to the affiliation or endorsement of the respondent’s site. See The Body Shop International plc v. A-Team/ Lasse Nygaard,WIPO Case No. DAS2003-0001. B. Respondent The Respondent alleges that he has been using the BOOKFULLY trademark in commerce since May 5, 2018. The Respondent maintains the “bookfully_” Instagram account. The Respondent bought the Disputed Domain Name on February 14, 2019 for the premium price of USD 977. The website Archive.org shows that the Complainant launched its “www.bookfull.com” platform on July 17, 2019, after the Respondent launched his business and bought the Disputed Domain Name. As the Respondent previously stated he has been using “bookfully” in commerce since May 5, 2018, the Respondent is well known in the booking industry. The Respondent’s BOOKFULLY page has more than 82 thousand followers. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant has established that it owns various registrations in the BOOKFULL trademark. Its use of the trademark is depicted at the “www.bookfull.com” website. The Complainant’s trademark is wholly encompassed in the Disputed Domain Name. The addition of the letter “y” to the end of the Complainant’s trademark does not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant’s trademark. Accordingly, the Complainant has satisfied the first requirement under the Policy. B. Rights or Legitimate Interests The Complainant’s assertion that the Respondent has no rights or legitimate interests in the Dispute Domain Name is premised on an allegation that the Respondent’s use of BOOKFULLY on its vacation rental services represents an intentional infringement of the Complainant’s trademark BOOKFULL in relation to vacation rental management software. The Complainant has not provided overwhelming evidence of priority, nor overwhelming evidence of intentional infringement. It is helpful to set out the timeline of the Parties’ allegations: May 5, 2018 – The Respondent’s first post on Instagram using the “bookfully_” handle July 10, 2018 – The Complainant files its first trademark applications in any jurisdiction – two U.S. trademark applications for BOOKFULL. November 1, 2018 – The Complainant’s alleged date of first use of its BOOKFULL software platform. The discrepancy between the Complainant’s allegations and the Respondent’s allegations as they concern the Respondent’s purchase of the Disputed Domain Name is not by itself dispositive of this dispute, and in the absence of allegations relating to authenticity, the Panel relies upon the Parties’ respective exhibits as supporting those allegations. The Parties contest the significance of each other’s alleged first use of their respective trademarks. For the sake of thoroughness, the Panel notes that the Respondent disputes the Complainant’s alleged November 1, 2018 date of first use, because the Complainant has sought extensions of time in which to file Statements of Use with the U.S. Patent and Trademark Office (“USPTO”) in connection with its still-pending trademark applications. The Respondent’s assertion on this point is incorrect. As the Complainant correctly notes in its Complaint, the USPTO requires that an applicant make use of its trademark on all of the goods or services in a class before it may file a statement of use in regard to that class. Accordingly, it is USPTO practice that an extension request that contains a declaration that an applicant has not yet made use on all of the goods or services in a class is not to be deemed an admission that it has not yet made use on any of the goods or services in a class. As noted in the USPTO Trademark Manual of Examining Procedure, Section 903, “[An intent-to-use] applicant may assert dates of use that are earlier than the filing date of the application in an amendment to allege use or statement of use“. As the Respondent has provided no other arguments to rebut the Complainant’s assertion that it began use of its mark on November 1, 2018, the Panel sees no reason to doubt that allegation. However, this date is not by itself dispositive of this dispute, in large part as ultimately this dispute is not to be determined by a trademark priority contest per se. The Complainant asserts that the Respondent’s initial May 5, 2018 post in its @bookfully_ Instagram account, is not trademark use. The Complainant may well be right (and that argument may be critical to a United States civil infringement action), but, as stated above, whether or not the Respondent made use of its claimed trademark prior to the Complainant is not the sole dispositive factor here. The Complainant challenges (with what it considers supporting evidence) the Respondent’s assertion that it has controlled the “bookfully_” Instagram account since May 2018, and it asserts that the Respondent may have purchased the account subsequent to learning of this dispute. In the absence on an ability to take discovery, the Complainant makes an inferential argument based on its characterization of the evolving subject matter of the posts and its interpretation of the significance of changes in that subject matter. Had there been an abrupt change in the nature of the posts (e.g. if the posts originally concerned books, and then abruptly changed to luxury rental opportunities), then that would suggest a change of control and cast doubt on the Respondent’s claim that he was responsible for the original posts). The Complainant may be correct in its inference / assertion, but there are other plausible explanations for the evolution of the Instagram, and the Panel cannot definitively conclude that the Complainant has met its burden on this limited record. Considering the totality of the record, the Respondent appears to be offering an authentic website providing travel services under the BOOKFULLY trademark (authentic in the sense of having a real existence, and not in a trademark sense). The initial Instagram post, and approximately 200 additional posts made prior to the alleged February 2019 purchase date of the Disputed Domain Name, comprise evidence of “independent and sustained examples of secondary material such as websites or blogs” that the Panel may consider as evidence that the Respondent wished to be known under the BOOKFULLY trading name. Section 2.3, WIPO Overview 3.0. Additionally, the Respondent incorporated the business Bookfully, Inc. in Delaware on April 30, 2019, prior to the date the Complainant alleges the Respondent bought the Disputed Domain Name. The incorporation represents additional evidence that the Respondent was taking steps to be known as “Bookfully” prior to the present proceeding. Id. Here, the Panel notes that the criteria under the Policy paragraph 4(c)(i) refer to demonstrable preparations before notice of the subject UDRP dispute, and not more generally, i.e., as is stated elsewhere in this decision, the Complainant may have a claim for trademark infringement, but the present proceeding is intended to address a narrower claim of cybersquatting and the facts of the present dispute take the case away from the typical “clear-cut” case the UDRP typically deals with. Furthermore, the Respondent has established that he now utilizes the Disputed Domain Name in connection with travel services. The Panel emphasizes that it will not speculate how a civil court would rule on infringement, and notes that such a finding would not necessarily be relevant to the present analysis. To be sure, there are certain instances under the Policy where clear-cut instances of intentional infringement may rise to bad faith use of a domain name. This does not appear to be such a clear-cut case. There seems to be a debatable question about identity of trade channels. There are no identified similarities of look-and-feel between the websites (the Panel does not credit the Complainant’s conclusory allegations that the Parties’ respective websites are rife with similarities), nor is there evidence that the Respondent seeks to pass himself off as the Complainant. Additionally, there is no evidence that the Respondent’s website is the sort of sham site associated with phishing or other fraudulent schemes. Bearing in mind that the Panel evaluates the Respondent’s use of the Dispute Domain name as of the time of the Complaint, the Panel notes that by that time, the Respondent had maintained Facebook and Instagram accounts for almost two years, and had created a non-trivial working website, speaking to a level of effort consistent with an authentic effort to provide services. Again, this is not meant to pronounce a view on any potential trademark claims in a court action. Accordingly, the Panel finds that the Complainant has not shown that the Respondent does not have rights or legitimates interests in the Disputed Domain Name, mainly because the Respondent has established that his venture was commonly known by the Disputed Domain Name. Alternately, the Respondent has shown that he currently utilizes the Disputed Domain Name in connection with an actual (in Policy terms “bona fide”) offering of services. Accordingly, the Complainant has failed to establish this requirement under the Policy and the Complaint must fail. C. Registered and Used in Bad Faith Because of the Panel’s finding under Rights or Legitimate Interests, there is no need to specifically discuss bad faith. The Panel notes that it is possible that the apparent popularity of the Complainant and confusion as to the marks could have led to a surge in attention to the Respondent’s site but that is not a matter which can support a finding of bad faith registration on the present record. D. Reverse Domain Name Hijacking The Respondent asserts that the Complainant has brought this proceeding in bad faith. However, the record does not support a finding that the Complainant had no reasonable theory under which it could have prevailed. The record does not rule out a possibility that the Complainant could prevail in a U.S. civil infringement proceeding. That possibility alone would justify the Complainant’s belief that this dispute might have been meritorious. Indeed, in the Panel’s view, this is a case better suited for the courts where fuller discovery can assist the Parties’ claims (in particular the Complainant’s claim that the Respondent’s Instagram account was later acquired). The Panel declines to find that the Complainant used the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name. 7. Decision For the foregoing reasons, the Complaint is denied. Martin Schwimmer
February 14, 2019 – The date the Respondent alleged he purchased the Disputed Domain Name.
April 30, 2019 – The Respondent incorporated Bookfully Inc., a Delaware corporation.
July 19, 2019 – The date the Complainant alleges that the Respondent purchased the Disputed Domain Name.
Sole Panelist
Date: July 1, 2020
Full & Egal Universal Law Academy