Complainant is iCommand Ltd, Australia, represented by Piper Alderman, Australia.
Respondent is Johnny Gray, ArtWired, Inc., United States of America (“USA”), represented by Law Office of Howard M. Neu, PA, USA. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 4, 2020. On June 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 5, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing contact details. The Center sent an email communication to Complainant on June 5, 2020, providing the registrant and contact information disclosed by the Registrar, and informing the Complainant that the Complaint was administratively deficient. Complainant filed an amended Complaint on June 8, 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 Respondent of the Complaint, and the proceedings commenced on June 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 29, 2020. The Response was filed with the Center June 28, 2020. The Center appointed Clive L. Elliott Q.C., Andrew F. Christie, and The Hon Neil Brown Q.C. as panelists in this matter on July 16, 2020. The Panel finds that it was properly constituted. 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 Complainant is an Australian company incorporated in 2011. It owns and operates a cloud-based technology platform developed to assist in human-to-machine interaction. Complainant is the owner of the pending Australian Trade Mark Application No. 2051313: DOWNPAT filed on November 22, 2019. Complainant is also the owner of the domain name According to the Response, the Domain Name was registered on April 24, 2020. 5. Parties’ Contentions A. Complainant Complainant states that since 2006 it has spent considerable time and resources developing its voice driven technology. Complainant plans to release its next product using this technology. It will do so under the brand “Downpat”. Complainant claims that in about October 2019, after conducting extensive research and branding discussions, it decided on the trade mark “Downpat” to be used in connection with this new product. Complainant originally intended to launch the product in Australia and USA in early 2020. Due to some delays in preparing the product for market, the launch was rescheduled for June 2020. The new product is a custom “How To” voice activated video training platform, under which the user can have easy access to and use of, training manuals and “how to” tutorials on various subjects. Complainant provided a redacted copy of a PowerPoint created on October 24, 2019, which was used to present the various brand name options for Complainant’s new product, which options included “Downpat”. Complainant alleges that the brand “Downpat” was chosen as it is reflective of an individual having achieved competency in performing a given task and it also best reflected the software application Complainant was launching. Complainant explains that since October 2019, it has made preparatory use of the trade mark “Downpat” in internal marketing communications and later, in May 2020, it used the trade mark to announce its new product in a shareholder announcement. Complainant goes on to say that it had also been provided with a copy of the logo designs sent by the graphic designer on November 20, 2019. Complainant also provided a redacted copy of the shareholder announcement. The redacted information is commercial in confidence to Complainant, as it relates to promotion strategies for a product which has not yet been publicly launched. Complainant states that it was the registrant of the Domain Name from November 8, 2019 until March 20, 2020, having purchased the Domain Name in November 2019, from a domain broker for USD 3,000 in preparation for the launch of its new “Downpat” product in Australia and USA. Complainant asserts that the Domain Name is identical to “Downpat”, being a trade mark in which it claims it has rights. Complainant points out that in error it omitted to pay the required fees to continue the registration of the Domain Name before the Registrar’s deadline, and the registration lapsed on March 20, 2020. On Friday May 29, 2020, during the course of preparing a notice to its shareholders, employees of Complainant became aware that Complainant’s registration of the Domain Name had lapsed, that the Domain Name had been sold to Respondent, and was now being offered by Respondent for further resale. Since at least May 29, 2020, Respondent has listed the Domain Name for sale on the Registrant’s website for AUD 49,920.26. Complainant states that between May 31 and June 2, 2020, it attempted to engage in correspondence with Respondent’s domain broker, Afternic, in an attempt to retrieve the Domain Name, and that on June 1, 2020, it lodged a bid of USD 2,000 with Afternic to purchase the Domain Name. Further such efforts were made but it says these were to no avail. Complainant contends that a reverse WhoIs search (located at: viewdns.info/reversewhois) for the Registrant name “Artwired” indicates that Respondent is the owner of over 21,000 domain names, and thus Respondent’s lack of use of the Domain Name, together with the inflated selling price of the Domain Name, is evidence that Respondent was aware of Complainant’s rights in the Domain Name and registered the Domain Name primarily for the purpose of preventing Complainant from reflecting its trade mark in a corresponding domain name, and/or to sell the Domain Name back to Complainant for a highly inflated price. B. Respondent Respondent points out that Complainant, by its own admission, does not have a registered trade mark for the words “Down Pat”. It had applied for an Australian trade mark in November 2019, but has not yet been registered whereas Respondent claims that he obtained the Domain Name as the winning bidder at a GoDaddy.com auction in April 2020. Respondent claims that he had not heard of Complainant or its products, or its application for an Australian trade mark before receiving notice of this UDRP Action. Respondent states that he has continuously maintained the Domain Name with Aftemic.com, the auction arm of GoDaddy.com. Respondent asserts that he, through his company ArtWired, is in the business of acquiring and using for business purposes various domain names when they become available. When the Domain Name became available, Respondent purchased it for his business. From the date of acquisition until today, the Domain Name has been parked and is available for lease or email. Respondent claims that he did not acquire the Domain Name to sell it to Complainant. Respondent further asserts that there are no links to Respondent’s parked page by Afternic.com that infringe on the uses of Complainant’s alleged trade mark. ArtWired, Inc. is a domain investment company which has invested in thousands of domain names for more than a decade. These domains are available to its large pool of both past and future clients, and the company uses lander pages for each of its domains to provide notice of availability. Respondent states that he invests primarily in two-word dot com domain names as they bring a premium price from end users who wish to develop their business around an appropriate domain name. Many of these domains are purchased through a wholesale auction such as the one that GoDaddy.com runs. Respondent submits that great keyword names or common phrases such as “down pat” will always be in demand by multiple prospects as they are versatile and work for many industry verticals and are trade markable for various goods and services. Respondent further submits that he registered the Domain Name on April 24, 2020, and Complainant did not at that time have a registered trade mark for the words “down pat”. Respondent goes on to say that as there is no way that Respondent could have knowledge of Complainant’s trademark application in Australia, it would have been impossible for Respondent to have registered the domain name in bad faith. 6. Discussion and Findings A. Identical or Confusingly Similar Complainant has filed a trade mark application for DOWNPAT: Australian Trade Mark Application No. 2051313: DOWNPAT filed on November 22, 2019. This application is currently pending. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states, at section 1.1.4: “A pending trademark application would not by itself establish trademark rights within the meaning of UDRP paragraph 4(a)(i).” So, for Complainant to establish the first requirement, it needs to show that DOWNPAT is an unregistered/common law trade mark. The WIPO Overview 3.0 states, at section 1.3 : “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.” Section 1.3 continues: “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.” Complainant asserts that it has taken certain preparatory steps to use the DOWNPAT trade mark. It also relies on its pending Australian Trade Mark Application and its ownership of the domain name Without trade mark rights, Complainant cannot satisfy the first requirement of the Policy. Under the circumstances, the Complaint must fail, and it is unnecessary to address the additional grounds. B. Rights or Legitimate Interests, Registered and Used in Bad Faith Given that Complainant has failed to establish the first requirement of the Policy, it is not necessary for the Panel to address the merits of the parties’ arguments in respect of the second and third requirements. Moreover, the majority of the Panel (Mr Elliott and Mr Christie) is of the view that it is unhelpful in this case to express an opinion on the second and third requirements. Complainant has a trade mark application pending, and it is possible that this application will, in due course, proceed to acceptance and subsequently to registration. Should that occur, it appears that Complainant would be able to satisfy the first requirement of the Policy. Whether Complainant could then file a further Complaint in respect of the Domain Name would be determined by the established principles on refiling of complaints, as set out in WIPO Overview 3.0, section 4.18. If a refiling of the complaint was permitted, it would likely be because the circumstances of the case had changed (e.g., because of legally relevant developments, availability of new evidence, etc.). In such a situation, the opinions of this Panel on the circumstances of the case currently before it would have no meaningful relevance to the later Panel considering the changed circumstances. Nevertheless, the parties might feel compelled to address those opinions in their arguments, causing unnecessary expenditure of resources by them and the later Panel. Accordingly, in the particular circumstances of this case, the majority of the Panel considers it unhelpful to express a view on the second and third requirements. Concurring Opinion The panelist The Hon Neil Anthony Brown QC agrees with the conclusion of the Panel and wishes to add additional reasons for that conclusion. A UDRP proceeding will fail if the Complainant fails to make out one of the three elements required to be proved. In the present case, it is clear that Complainant has not established a trade mark either by way of registration or by acquiring common law rights. Indeed, it is difficult to see how it could be argued to the contrary and the Complaint fails for that reason. However, parties go to considerable time and expense in addressing and marshalling evidence on all three elements and in an appropriate case, of which this is one, panels should consider addressing all of those elements where the facts establish a clear principle or re-affirm an established principle. In the latter situation, such decisions can be of assistance to other parties in the making and defence of future claims under the Policy, even if they are not binding. Accordingly, it is appropriate in the present case to deal with the additional two elements. On the issue of rights and legitimate interests, Respondent has shown, beyond any doubt at all, that it does have such a right or legitimate interest. The Domain Name consists of two clearly generic words in common use in the English language and even when they are run together, as they are to make up the Domain Name, they create another generic word. That being so, Respondent has a right to register a domain name using those words and a legitimate interest in using it for the same reason, which is that they are part of the language over which Complainant has no right to limit Respondent’s or anyone else’s use of the words. Respondent’s right and interest also come from the uncontradicted evidence that it is engaged in the legitimate business of buying, developing, and selling domain names, which was the reason it acquired the Domain Name in the first place. That right and interest are subject to the important qualification that the registrant must not use the domain name to copy or undermine a complainant’s trade mark, to target or injure it or engage in any other untoward conduct. In the present case, there is no evidence that Respondent was minded to or did engage in any such behaviour. These principles are well-established and reflected in many prior decisions, including that cited by Respondent, namely Rentsch Partner AG v. Domain Hostmaster, Whois Privacy Serviced Pty Ltd Customer ID 78529104178955, Stanley Pace,WIPO Case No. D2015 -2302. The Complaint therefore fails under the second element. On the issue of bad faith, Complainant has not shown any evidence to suggest that Respondent registered and used the Domain Name in bad faith. Indeed, the Complainant has not made out either of those criteria. Complainant’s case is simply a few lines of text that assert two things, neither of which amounts to bad faith. First, it asserts that Respondent is not using the Domain Name, in the sense clearly meant by Complainant that it is not being used to support a website. Respondent is not obliged to use the Domain Name for a web site and in any event it is clearly using the Domain Name as part of its stock in trade of a business that buys, develops, and sells domain names. Secondly, Complainant takes exception to the fact that the Domain Name is for sale at what is, in its opinion, a “highly inflated” price. This again, is not a ground of bad faith and in any event, whether the price demanded by a seller of any commodity is excessive is, like beauty, in the eye of the beholder, and a panel could never determine whether a price was high or low, especially when there is no valuation evidence submitted. A domain name is worth what someone is prepared to pay for it. Finally, and over-riding all of the above considerations, if and when Complainant’s trade mark is registered, it will have been registered after Respondent registered the Domain Name. Accordingly, the Domain Name could not have been registered with the necessary bad faith directed at Complainant and its trade mark, which is a necessary ingredient of bad faith in these proceedings. Accordingly, the Complaint also fails on this element. 7. Decision For the foregoing reasons, the Complaint is denied. Clive L. Elliott Q.C. Andrew F. Christie The Hon Neil Brown Q.C.
Presiding Panelist
Panelist
Panelist (Concurring)
Date: August 11, 2020
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