The Complainant is DSPA B.V., Netherlands, represented by NLO Shieldmark B.V., Netherlands.
The Respondent is Bill Patterson, Reserved Media LLC, United States of America (“United States”), represented by John Berryhill, Ph.d. Esq., 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 June 5, 2020. On June 5, 2020, the Center transmitted by email to the Registrar a request for Registrar verification in connection with the Disputed Domain Name. On June 8, 2020, 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 June 10, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 30, 2020. On June 23, 2020, the Respondent sent an email communication to the Center requesting an extension of the Response due date. An automatic extension of the Response due date was granted until July 4, 2020, under paragraph 5(b) of the Rules. The Response was filed with the Center July 3, 2020. The Complainant submitted a Supplemental Filing on July 7, 2020. The Center appointed John V. Swinson, Warwick A. Rothnie, and Richard G. Lyon as panelists in this matter on July 30, 2020. 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 DSPA B.V., a company incorporated in the Netherlands. According to the Complaint, the Complainant is a leading manufacturer of highly innovative aerosol generators which can be used for fire extinguishing and suppression purposes. The Complainant is the owner of several registered trade marks for DSPA, the earliest of which is Benelux registered trade mark number 804422, registered on October 5, 2006 (the “Trade Mark”). The Complainant has also owned the domain name The Complainant was the previous registrant of the Disputed Domain Name from September 29, 2010 to 2015, during which time the Disputed Domain Name redirected to the Complainant’s website “www.dspa.nl”. The Complainant says the Disputed Domain Name lapsed due to inadvertent non-renewal. The Complainant also says that the billing through Argeweb continued for the Disputed Domain Name after the non-renewal date, and thus the Complainant was not aware that the Disputed Domain Name was no longer owned by the Complainant. The Respondent is Bill Patterson (Reserved Media LLC), an individual from Texas, United States. According to the Response, the Respondent acquired the Disputed Domain Name at auction on December 21, 2017. The Disputed Domain Name currently resolves to a website offering it for sale and includes the heading “A great domain can be the key to your success”. 5. Parties’ Contentions A. Complainant The Complainant makes the following submissions: Identical or confusingly similar The Complaint is based on the Trade Mark, registered in several jurisdictions worldwide. The Disputed Domain Name is identical to the registered Trade Mark. Rights or legitimate interests The business name under which the Respondent registered the Disputed Domain Name is Reserved Media LLC. A trade mark search into trade mark registrations for Reserved Media LLC does not reveal any applications or registrations for DSPA as a trade mark. The Disputed Domain Name is currently parked with no active website. The Disputed Domain Name is for sale. The Complainant has approached the Respondent and the Respondent offered the Disputed Domain Name for sale for an exorbitant amount, being USD 89,000. The Complainant notes that, while the overall burden of proof in UDRP proceedings is on the complainant, previous UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. Registered and used in bad faith Although UDRP panels have accepted that aggregating and holding domain names (usually for resale) consisting of acronyms, dictionary words, or common phrases can be bona fide and is not per se illegitimate under the UDRP, the Disputed Domain Name does not concern an acronym, dictionary word, or a common phrase. The Disputed Domain Name is currently parked with no active website. The Disputed Domain Name is for sale. The Complainant alleges that it has approached the Respondent to buy the Disputed Domain Name and been given an asking price of USD 89,000. Citing paragraph 4(b)(i) of the Policy, the Complainant alleges that the fact that the Disputed Domain Name was registered after being registered by the Complainant for more than five years demonstrates that the Respondent registered the Disputed Domain Name in bad faith. In Commission for Art Recovery, Inc. v. Alexandr Zaharov,WIPO Case No. D2008-1591, with similar fact situations, the panel found that: “The actions of the Respondent in acquiring the disputed domain name after it had lapsed and after it had been used by the Complainant for 7 years was clearly an opportunistic acquisition of the sort discussed in the Rug Doctor case cited earlier. It would be hard to find a more obvious case where there has been an opportunistic capitalization by the Respondent of the Complainant’s error in allowing the disputed domain name to lapse.” B. Respondent The Respondent makes the following submissions: Introduction This case involves a non-exclusive acronymic four-letter domain name which was publicly auctioned upon its abandonment by a prior registrant, Tucows.com, in 2017. The Complaint is largely premised on factually false statements intended to support a narrative that the Complainant did not notice for nearly five years that its domain name expired in 2015. The Complainant’s claim that the Disputed Domain Name resolved to the Complainant’s webpage after its expiration in 2015, for example, is a straightforward falsehood. Neither the nameservers nor the content associated with the Disputed Domain Name have been that of the Complainant for nearly five years. The Complainant’s claim that the Respondent acquired the Disputed Domain Name in 2015 after the Complainant abandoned it is a demonstrable falsehood. In fact, the Respondent acquired the Disputed Domain Name at the Tucows auction in 2017. Identical or confusingly similar The Complainant demonstrates it owns several trade mark registrations for DSPA for fire suppression systems. The Complainant’s trade mark for DSPA primarily indicates “Dry Sprinkler Powdered Aerosol”. DSPA also has many other generic meanings. The Complainant has demonstrated it owns rights in DSPA trade mark for a narrow class of goods in the specialized field of fire suppression systems. Rights or legitimate interests The Complainant and the Respondent both agree that holding acronymic names for resale is not illegitimate. The Complainant acknowledges and admits that a speculative interest in such things as nonexclusive acronyms is indeed legitimate and has been recognized as such. Certainly, if the four letters in question were “HSBC”, “DIOR”, “SONY” or another immediately-recognizable and well-known mark; or if the four letters in question solely designated a particular mark, as opposed to a range of actual and potential meanings, that would be a “no plausible non-infringing use” situation. Such circumstances are not present here. The Complainant makes the remarkable assertion that the Disputed Domain Name “does not concern an acronym”. The Respondent has provided a detailed list of examples of the use of DSPA as an acronym or common word combination. Such short, non-exclusive acronymic domain names have value precisely because they may be used for any of various existing uses, or be of interest to an entirely new venture seeking to use such an acronym for a new purpose, and who may desire to acquire a short, easily-used “.com” domain name on the secondary market. As the Complainant notes, the Disputed Domain Name resolves to a sales inquiry page, and the Respondent does not use the Disputed Domain Name for any purpose relating to fire extinguishers. Accordingly, the Respondent’s use of the Disputed Domain Name is not premised on the Complainant’s rights in connection with fire extinguishers but is premised on the general value of short four-letter domain names. The Respondent has many domain names with four letters. These domain names demonstrate the Respondent clearly has a general interest in short acronymic names, and the Respondent’s acquisition of this Disputed Domain Name is consistent with the Respondent’s portfolio in that regard. Registered and used in bad faith The Disputed Domain Name has expired twice, once in January 2009, and the second time was in December 2017. The bidding record of a December 2017 auction shows that the winning bidder – “billp3” – prevailed over a number of others seeking to obtain the Disputed Domain Name in that 2017 auction. Accordingly, the Complainant’s claim that the Respondent obtained the Disputed Domain Name when the Complainant failed to renew it in 2015 is a pure fabrication. The Respondent has provided a chronology of critical dates and changes to the WhoIs data over the years. According to the Respondent, the chronology demonstrates that the Disputed Domain Name expired in 2015. In December 2016 the Disputed Domain Name was registered to “Yummynames.com” and then on December 21, 2017 the Disputed Domain Name was registered to the Respondent. This examination of the historical WhoIs data, nameservers, and screenshots shows that many of the factual allegations of the Complainant are simply not true. The Respondent is not responsible for the Complainant’s 2015 mismanagement of its financial and technical affairs, and the Respondent did not exploit the Complainant’s failure to renew the Disputed Domain Name. The Disputed Domain Name was not redirecting to the Complainant’s website after the Complainant’s registration expired in 2015. The Complainant’s screenshots from “archive.org” for the domain name Further, the fact that some third-party service providers continued billing the Complainant has nothing to do with any action by the Respondent. If the Complainant’s claim is that Argeweb fraudulently billed the Complainant and lost the Disputed Domain Name, then the Complainant can bring an appropriate civil action against Argeweb in the amount needed to resolve the negligence of which Argeweb stands accused. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely: (i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. The onus of proving these elements is on the Complainant. A. Procedural Issue Supplemental Filing This is a three-member panel case. The Respondent requested a three-member panel in its Response of July 3, 2020, and in the Response nominated proposed panelists as required under the Rules. On July 7, 2020, following its standard procedure the Complainant sent an email to the Center, agreeing to the panelists proposed by the Respondent, but also making substantive comments in reply to the Response. Paragraph 10 of the Rules vests the Panel with the authority to determine the admissibility, relevance, materiality and weight of the evidence, and also to conduct the proceedings with due expedition. Paragraph 12 of the Rules provides that the Panel may request, in its sole discretion, further statements or documents from either of the Parties. There is no provision in the Rules for a party to file additional unsolicited submissions. Unsolicited supplemental filings are generally discouraged. A party submitting an unsolicited supplemental filing must show some exceptional circumstances as to why it was unable to provide the information contained therein in its complaint or response (see section 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The Panel has reviewed the supplemental submission by the Complainant and has decided to not to admit it. This additional material could have been submitted with the Complaint. Having said this, even if admitted, the supplemental filing would not change the Panel’s decision. A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights. The Complainant has demonstrated trade mark rights in the term DSPA. The Disputed Domain Name incorporates the entirety of the Trade Mark with no additional terms. The Panel considers that the Disputed Domain Name is identical to the Trade Mark. The Complainant succeeds on the first element of the Policy. B. Rights or Legitimate Interests Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests. In this case, the Respondent has registered a four-letter Disputed Domain Name that coincides with the Complainant’s four-letter Trade Mark. In the Complaint, the Complainant makes a number of general statements that the Respondent is not commonly known by the Disputed Domain Name and does not have any trade mark rights in the Disputed Domain Name. UDRP panels have accepted that aggregating and holding domain names consisting of acronyms, letter strings, dictionary words, or common phrases can be bona fide and is not per se illegitimate under the Policy (see section 2.10 of the WIPO Overview 3.0). There are a number of considerations to take into account when looking at whether the Respondent has rights or legitimate interests in a domain name consisting of a dictionary term, letter string, or acronym. As a starting point, the Complainant should be able to (a) prove general association of the mark with the Complainant and (b) prove either targeting or intention at the time of registration to sell the domain to the Complainant or a competitor. Both (a) and (b) require proof that the Respondent knew or should have known of the Complainant and its mark. There is no such proof in this Complaint, and similarly no proof of any fact that might support an inference of such knowledge. The Complainant offers no information at all of sales or of any reason why someone in the United States should know about the Complainant or its marks. The Complainant has not offered any evidence that the Disputed Domain Name has been used by the Respondent to target the Complainant or to compete with the Complainant’s fire extinguisher and suppression business. There is no evidence to suggest that the Respondent was aware of the Complainant, or was likely to be aware of the Complainant, when the Respondent acquired the Disputed Domain Name two years after it was last used and owned by the Complainant. (There is not even an allegation that the Respondent had any hand in the Complainant’s failure to renew the Disputed Domain Name in 2015.) The Complainant has not made out a prima facie case that the Respondent lacks rights or legitimate interests in the acronym “dspa”. However, even if the Complainant had done so, the Panel finds that the Respondent has rebutted the Complainant’s prima facie case. In this case, the Respondent has purchased the Disputed Domain Name from auction as a bona fide purchaser. There is no evidence that the Respondent acquired the Disputed Domain Name because of the Complainant. Based on the evidence before the Panel, the Complainant has not demonstrated a particular reputation in the Disputed Domain Name or that the four-letter string DSPA is uniquely associated with the Complainant. In fact the Respondent has, with dictionary evidence, demonstrated the contrary. The Respondent has a portfolio of “four-letter” domain names. It appears that the Respondent is in the business of investing in and reselling four-letter domain names. A number of previous UDRP panels have found that as long as this kind of business is not infringing on a complainant’s rights in a mark, the Policy allows registration and use of domain names for this purpose. For example, in the case of R.V. Kuhns & Associates, Inc. v. Gregory Ricks / Whois Privacy Corp. / Domain Administrator,WIPO Case No. D2014-2041: “Three-letter domain names are well known to have particular value. They have often been the subject of domain name sales at substantial prices (a fact for which Respondent provided evidence in the Annexes to his Response). As long as Respondent did not register the disputed domain name in bad faith or in an attempt to trade on the goodwill associated with Complainant’s mark (as discussed below), his contention is plausible that he has frequently engaged in the purchase and/or sale of three-letter domain names as part of his business and considers the acquisition of such domain names to be a legitimate enterprise.” See also Dumankaya Yapi Malzemeleri SAN. VE TIC. A.S v. Domain Administrator, Name Administration Inc. (BVI),WIPO Case No. D2015-1757. The Respondent also provides a number of examples of other UDRP decisions where four letter domain name registrations have been held to be legitimate (e.g., SK Lubricants Americas v. Andrea Sabatini, Webservice Limited, WIPO Case No. D2015-1566). Not all instances of acquiring a “four-letter” acronym domain name would confer rights or legitimate interests on the Respondent. As the Respondent has noted, if the Respondent were to acquire domain names consisting of “SONY” or “DIOR”, the circumstances would be different. However, with the case at hand, the Complainant has not demonstrated that the Respondent was attempting to capitalize on the reputation and goodwill inherent in the Trade Mark. On the other hand, the Respondent has shown that DSPA could have numerous different meanings and the Complainant does not have a monopoly over the acronym. The Panel disagrees with the Complainant that “DSPA” is “not an acronym”. Based on the evidence before the Panel, the Panel concludes that the Respondent has demonstrated a legitimate interest in using the Disputed Domain Name. The Panel finds that the Complainant has failed to make out a prima facie case and fails on the second element. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and used the Disputed Domain Name in bad faith. The Complainant submits that the Respondent has registered the Disputed Domain Name primarily for the purpose of selling the Disputed Domain Name back to the Complainant. The evidence does not support this claim. As stated above, the Panel concludes that the Respondent registered the four-letter Disputed Domain Name because of its inherent value, and not because of the Complainant or the Trade Mark (see Instrumentation Northwest, Inc. v. INW.COM c/o Telepathy, Inc.,WIPO Case No. D2012-0454). In such circumstances, it is difficult for the Complainant to demonstrate bad faith registration by the Respondent. The Complainant says that when the Complainant approached the Respondent, the Respondent offered the Disputed Domain Name for sale for USD 89,000. If the Respondent did request USD 89,000 from the Complainant, it was in response to a request for an offer from the Complainant. Such a response to a request for an offer does not, in this case, demonstrates bad faith registration or bad faith use. The Respondent acquired the Disputed Domain Name at auction two years after the Complainant let the Disputed Domain Name lapse, and has owned the Disputed Domain Name for over two years without ever contacting the Complainant to try to sell the Disputed Domain Name to the Complainant. The Complainant has not provided any evidence that the Complainant or its Trade Mark is well known internationally or in the United States or demonstrated that the Respondent’s intention was to trade off of the Complainant’s reputation. In short, there is nothing to suggest that the Respondent registered the Disputed Domain Name to target or take advantage of the Complainant. The Complainant also states that the Disputed Domain Name was lapsed due to inadvertent non-renewal. There is no evidence to suggest that the Respondent had anything to do with this non-renewal or that the Respondent took advantage of this situation. The Panel finds that the Complainant has failed to prove that the Respondent registered and used the Disputed Domain Name in bad faith. 7. Reverse Domain Name Hijacking Paragraph 15(e) of the Rules states: “… 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.” The Panel is prepared to make a finding of Reverse Domain Name Hijacking (“RDNH”) without even considering the Respondent’s argument or the evidence of false statements. The Panel finds that the Complaint is deficient, and that the Complainant has provided no evidence that the Respondent should have known of the Complainant. Further, the Complainant has ignored prior decisions under the Policy that clearly demonstrate the hopelessness of the Complainant’s position. Previous UDRP panels have found that “ordinarily if the face of the complaint itself demonstrates a settled reason why the complaint must be denied, a panel may make a finding of RDNH” Tarheel Take-Out, LLC v. Versimedia, Inc.,WIPO Case No. D2012-1668, citing Liquid Nutrition Inc. v. liquidnutrition.com/Vertical Axis Inc.,WIPO Case No. D2007-1598. In the view of the Panel, this is a complaint which should never have been filed. The Complainant should have appreciated that establishing registration and use in bad faith in respect of a domain name which was a four-letter acronym acquired by a domain name investor two years after the Complainant let the registration lapse, and where there is no evidence of targeting, was likely to involve difficult considerations. The Complainant appears to have ignored any such considerations. See SK Lubricants Americas v. Andrea Sabatini, supra; and Dumankaya Yapi Malzemeleri SAN. VE TIC. A.S v. Domain Administrator, Name Administration Inc. (BVI), supra. When considering the Response, the case for RDNH is even stronger. The Panel would make a finding of RDNH on the basis that the Respondent has proven that the Complainant omitted evidence from the Complaint, as set out in the fourth paragraph of the concurring opinion below. Additionally, the Complainant either knew or should have known that the Respondent did not acquire the Disputed Domain Name until two years after the Complainant failed to renew it. Further, the Complainant either knew or should have known that they were no longer the registrant of the Disputed Domain Name in 2015. The Panel’s view is that the Complainant has omitted material from the Complaint and provided no basis as to why the Respondent knew or should have known of the Complainant or its trade marks. In the circumstances, the Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. 8. Decision For the foregoing reasons, the Complaint is denied. John Swinson Warwick A. Rothnie Richard G. Lyon I concur in the Panel’s conclusions that the Complainant has failed to establish the Respondent (a) did not have rights or legitimate interests in the Disputed Domain Name and (b) registered and used the Disputed Domain Name in bad faith. I also concur in the Panel’s finding of RDNH. UDRP panels have typically accepted that mere registration of a domain name consisting of an acronym or generic or descriptive word does not enough in itself constitute rights or legitimate interests in a domain name. See e.g., WIPO Overview 3.0, section 2.10. In the present case, this member of the Panel considers it is significant that the Respondent has demonstrated a business in registering such domain names and has not sought to exploit the significance of the Disputed Domain Name as the Complainant’s trademark. The Complainant sought to present this case as an opportunistic case of “drop catching”. As the opinion of the majority states, however, the Complainant knew or should have known that the Respondent did not obtain the Disputed Domain Name until two years after the Complainant lost the registration through non-renewal – however inadvertently. This member of the Panel does not think, in circumstances where the Complainant was paying its agent the renewal fees and was merely using (or thought it was using) the Disputed Domain Name to redirect to its website at “www.dspa.nl”, necessarily means the Complainant knew or should have known it had lost the registration in 2015. The Complainant did know, however, that it had lost the registration by the time it filed the Complaint. Moreover, the Complainant omitted to disclose that the Respondent did not register the Disputed Domain Name until two years after the Complainant’s registration had lapsed in fact. That omission is very serious and, if the Respondent had not defended the Complaint strenuously, could have misled the Panel. Once that information is known, it could be argued (as the majority of the Panel has accepted here) that the Complaint should never have been brought in the circumstances of this case. This member of the Panel would not attribute weight to the non-involvement of the Respondent in the Complainant’s failure to renew the Disputed Domain Name. If there had been such involvement, that would be significant. However, the vice in “drop catching” cases is the opportunistic taking advantage of a domain name confusingly similar to (usually) the Complainant’s trade mark. It does not turn on the Respondent’s involvement in the lapsing of the registration. It does not affect the outcome but, for my part, this member of the Panel would have admitted the proposed supplemental filing. It was not submitted in an appropriate form as a separate supplemental filing, but as a supposed addition to a request to nominate panelists for a three member Panel. However, it did respond to information submitted in the Response which could not on its face have been reasonably anticipated. Nonetheless, even if admitted, it would not have affected the outcome. Accordingly, I concur in the Panel’s dismissal of the Complaint and the finding of RDNH. Warwick A. Rothnie
Presiding Panelist
Panelist (Concurring)
Panelist
Date: August 13, 2020 Concurring Opinion
Panelist (Concurring)
Date: August 13, 2020
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