The Complainant is Sahil Gupta, United States of America (“United States”), internally represented.
The Respondent is Michal Lichtman, United States / Domain Admin, Mrs Jello, LLC, United States, represented by Greenberg & Lieberman, 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 July 3, 2020. On July 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 10, 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 July 10, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on July 10, 2020. 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 July 14, 2020. In accordance with the Rules, paragraph 5, the Center informed the Respondent that the due date for the Response was August 3, 2020. The Response was filed with the Center on August 4, 2020, one day after the due date, and the Center consequently issued a notice of default. The Parties were advised that the Panel on appointment would have discretion to rule on the admissibility of any belated Response if received. The Respondent included in the Response a request for the appointment of a three member panel. On August 4, 2020, the Respondent’s representative filed with the Center a submission stating that he had miscalculated the due date, requesting that the default be vacated and the proceeding be allowed to proceed with a three member panel. Subsequently, between August 8 and 11, 2020, both Parties forwarded numerous email communications to the Center. On August 13, 2020, the Complainant submitted an unsolicited supplemental filing denominated as a Reply Brief, including further attachments, to which the Respondent objected. The Center appointed William R. Towns, Knud Wallberg, and The Hon Neil Brown Q.C. as panelists in this matter on August 31, 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 The Complainant owns and operates a business converting photographs into 3D models. The Complainant’s business was incorporated as Spase, Inc. in February 2019, and trades under the name “Spase”. The Complainant submits he has established common law trademark rights in SPASE, citing media presence, twitter and podcast interviews, and the Internet presence of the Complainant’s website at “www.spase.io”. The Complainant commenced this proceeding following an unsuccessful effort to acquire the disputed domain name The Respondent is the registrant of the disputed domain name The Complainant submits that the disputed domain name The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. According to the Complainant, the Respondent has made no active use of disputed domain name for several years. The Complainant attributes this to a search of the Internet Archive (“Wayback Machine”). The Complainant asserts that the Respondent registered and is using the disputed domain name in bad faith. The Complainant contends that the Respondent has acquired a well-known and longstanding reputation of “domain squatting” for the sole purpose of hoarding domains names to extort the trademarks of business owners. The Complainant cites several UDRP decisions, including by way of example Blue Nile, Inc. v. Mrs. Jello, LLC,WIPO Case No. D2005-0639. The Complainant submits the Respondent should be recognized as a “domain squatter” for her recidivist history and bad faith, and takes issue with the Respondent’s contention that the Complainant has engaged in the bad faith practice of reverse domain name hijacking (RDNH). B. Respondent The Respondent submits this is a case of reverse domain name hijacking. The Respondent alleges that the Complainant has abused the administrative proceeding seeking to rob the Respondent of an entirely generic domain name. The Respondent has submitted an affidavit attesting to the Respondent’s registration of the disputed domain name on February 3, 2005, and claims to have been making a good faith use of the disputed domain name to generate pay-per-click (“PPC”) revenue for more than 14 years prior to the Complainant’s claim of first use of the SPASE mark on February 22, 2019. The Respondent maintains it has legitimate interests in the disputed domain name. The Respondent explains it is an Internet business that deals in selling or leasing descriptive or generic domain names. The Respondent maintains it had never heard of the Complainant prior to receiving an email from the Complainant inquiring about buying the disputed domain name. The Respondent remarks that the Complainant does not have a registered mark for SPASE and has admitted to just beginning use of the SPASE mark. The Respondent submits that Spase is a dictionary word meaning “save” in Bosnian, and that a Dunn & Bradstreet search reveals 19 companies using the word Spase in all or part of their company name in the United States alone. The Respondent also maintains that 171 people use the word Spase with their Facebook handles. The Respondent maintains that the use of a common word such as Spase constitutes use in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(1) of the Policy, and refers generally to the use of other generic or descriptive words that appropriately may be used to generate advertising revenue. The Respondent reiterates that the disputed domain name is generic and that the Respondent’s use of the dispute domain name is not associated with the Complainant’s business. According to the Respondent, the disputed domain name was not registered to prevent any owner of the SPASE trademark from reflecting the mark in a corresponding domain name, and emphasizes that the Respondent had no knowledge of the Complainant prior to the filing of the instant Complaint. The Respondent remarks that to the best of its knowledge the Complainant has made no effort to register SPASE as a mark. The Respondent disputes that the Complainant has made a prima facie case sufficient to shift the burden of persuasion to the Respondent to come forward with evidence of rights of legitimate interests in the disputed domain name. Regardless, the Respondent maintains it has satisfied its burden of proof. According to the Respondent, the Complainant has brought forth no evidence to support a claim that the Respondent has acted in bad faith. The Respondent further contends that the Complainant lacks any bona fide basis for commencing this proceeding under the Policy and is culpable for reverse domain name hijacking. The Respondent maintains that the Complainant’s case is extremely weak, and reiterates that the Complainant does not have a registered mark and that Spase is a generic term. The Respondent submits it should have been apparent to the Complainant that he could not prove any of the elements required under the Policy. 6. Preliminary Procedural Issues A. Respondent Default The Panel has broad discretion in the conduct of proceedings under the Policy, and is charged with responsibility to conduct administrative proceedings in accordance with the Policy and the Rules, ensure that the parties each are afforded a fair opportunity to present its case, and ensure that the administrative proceeding takes place with due expedition. See Rules, paragraph 10. In this case the Respondent’s due date for filing its Response was August 3, 2020; however, the Response was not received by the Center until the following day on August 4, 2020. Accordingly, a default was noted. The Respondent has acknowledged responsibility for the late filing, and as it appears from the record that that no undue prejudice or delay has either resulted or is likely to result from the Complainant’s late filing of one day, the Panel accepts the Response for filing. See Anachusa Ltd. v. Ashantiplc Limited / Ashantiplc Ltd,WIPO Case No. D2011-0005. B. Appointment of Three Member Administrative Panel As previously noted, the Respondent timely requested appointment of a three-member panel when submitting the Response. The Complainant objected to the three-member panel, which the Complainant contends should be disallowed in view of the Respondent’s default. The Panel notes pursuant to Paragraph 8 of the WIPO Supplemental Rules that a complainant timely designating a three-member panel may proceed with the three-member panel notwithstanding the respondent’s default. Having regard to the foregoing, the Panel considers that the Respondent’s timely request for appointment of a three-member panel may be allowed regardless of the entry of a provisional default arising from the Respondent’s late filing. C. Parties’ Supplemental Submissions No provision in the Policy, the Rules or the Supplemental Rules authorizes supplemental filings by either a complainant or a respondent without leave from the panel. Paragraph 12 of the Rules provides that a panel may request, in its sole discretion, further statements or documents from either of the parties. However, the Rules and relevant UDRP panel decisions demonstrate a decided preference for single submissions by the parties absent exceptional circumstances. See, e.g., Metro Sportswear Limited (trading as Canada Goose) v. Vertical Axis Inc. and Canadagoose.com c/o Whois Identity Shield,WIPO Case No. D2008-0754. Unsolicited supplemental filings are generally discouraged unless specifically requested by the panel. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 4.6 and 4.7 (and relevant decisions cited therein). UDRP panels have accepted unsolicited supplemental submissions in limited circumstances, when offered to present new, pertinent evidence not reasonably available until after the party’s initial submission (see Top Driver, Inc., v. Benefits,WIPO Case No. D2002-0972); to bring new and highly relevant legal authority not previously available to the attention of the panel (see Pet Warehouse v. Pets.Com, Inc.,WIPO Case No. D2000-0105); or to rebut arguments of the opposing party that could not reasonably have been anticipated (see Randan Corp. v. Rapazzini Winery,WIPO Case No. D2003-0353). The Panel considers that the Complainant’s unsolicited supplemental submission brings forward no new and pertinent evidence or relevant legal authority that the Complainant could not reasonably have anticipated and addressed in the Complaint. Accordingly, the Complainant’s unsolicited supplemental submission has not been considered by the Panel in reaching a decision in this case. 7. 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 Hardware,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 trademarks or service marks. 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; and (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 view is that the burden of production shifts 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 WIPO Overview 3.0, section 2.1. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar The Panel initially addresses whether the Complainant has established unregistered or common law rights in SPASE. The term “trademark or service mark” as used in paragraph 4(a)(i) of the Policy encompasses both registered marks and unregistered or common law marks. See, e.g., The British Broadcasting Corporation v. Jaime Renteria,WIPO Case No. D2000-0050; United Artists Theatre Circuit, Inc. v. Domains for Sale Inc.,WIPO Case No. D2002-0005; The Professional Golfers’ Association of America v. Golf Fitness Inc., a/k/a Golf Fitness Association,WIPO Case No. D2001-0218. In the United States, unregistered or common law rights in a trademark or service mark may be established by use sufficient to identify particular goods or services as those of the trademark owner. See United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918). That is to say, the mark must be used such that a relevant segment of the public comes to recognize it as a symbol that distinguishes the Complainant’s goods and services from those of others. To establish unregistered or common law rights for purpose of the Policy, the Complainant must demonstrate that the asserted mark serves as a distinctive identifier that consumers have come to associate with the Complainant’s goods or services. This may include the acquiring of relatively rapid recognition due to Internet presence, or other factors such as the type and scope of market activities or the nature of the Complainant’s goods or services. In cases involving unregistered or common law marks comprised of descriptive terms, further evidence of acquired distinctiveness or secondary meaning may be required. See generally WIPO Overview 3.0, section 1.3 (and relevant decisions cited therein). As noted earlier, the Complainant launched Spase, Inc. in February 2019, and submits he has established common law trademark rights in SPASE, through media presence, twitter and podcast interviews, interaction with customers, reviews, and Internet presence on his website at “www.spase.io”. In addition to the Complainant’s advertising and promotion of his SPASE 3D modeling on the Complainant’s website, the Complainant also has actively promoted his SPASE 3D modeling on other online locations, including Spotify, Twitter, Honest Commerce, Just Ask Parker, Furniture Today, and Pixels. In an interview with “Just Ask Parker” published online, the Complainant described his 3D modeling as follows: “Basically it’s in real life, it’s called augmented reality. But it really is kind of, it’s real life because it’s in your Spase, it’s in your time. It’s true to color, it’s trues to shape, and it’s true to size. . . it’s a word that I made for Spase that describes this particular kind of three D model that is meant for augmented reality.” “Augmented reality” generally is defined as a technology that superimposes a computer-generated image on a user's view of the real world, thus providing a composite view. On the basis of the evidence presented by the Complainant in this case, the Panel is persuaded that the term SPASE as used by the Complainant has come to be recognized by a relevant segment of the public as a distinctive identifier of the Complainant’s 3D modeling services. Accordingly, the Panel finds that the Complainant has established unregistered or common law trademark rights in SPASE, and has standing to assert such rights in this proceeding. The Panel finds that the disputed domain name The Complainant’s SPASE mark is clearly recognizable in the disputed domain name.2 When the relevant trademark is recognizable in the disputed domain name the addition of other terms, whether descriptive, geographical, pejorative, meaningless, or otherwise, does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.3 Top-Level Domains (“TLDs”) generally are disregarded when evaluating the identity or confusing similarity of the complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the TLD.4 The Respondent alleges that the Complainant cannot establish enforceable common law rights in SPASE, contending that the term is generic. The Panel has found no indication in the record of any appreciable generic use of “SPASE”. To the contrary, the Respondent has submitted evidence of multiple trademark registrations of SPASE and SPASE-formative marks issued by the United States Patent and Trademark Office (“USPTO”). Further, the United States Supreme Court recently issued a land mark decision in United States Patent & Trademark Office v. Booking.com B. V., No. 19-46, 2020 WL 3518365, at *3 (U.S. June 30, 2020), in which the Supreme Court held that whether a term is generic depends on how consumers perceive the term.5 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.6 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.7 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, paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Complainant has demonstrated unregistered rights in the SPASE mark, and the Panel has found that the disputed domain name is confusingly similar to the Complainant’s mark. However, the Respondent has brought forward evidence on which it relies in asserting rights or legitimate interests in the disputed domain name. The record in this case reflects that the Respondent registered the disputed domain name in February 2005, some fourteen (14) years prior the Complainant’s launch of its business and first use of SPASE in commerce in February 2019, and has used the disputed domain name primarily to generate PPC revenue. The Panel has found no indication in the record of any attempt by the Respondent to use PPC links to target or trade off the Complainant. See WIPO Overview 3.0, section 2.9. 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 presents no facts or circumstances even remotely suggesting the Complainant could have possessed nascent rights in the SPASE mark at the time the Respondent registered the disputed domain name in February 2005. Nor is there evidence of any demonstrable change in the Respondent’s use of the disputed domain name following the Complainant’s launch of its SPASE business. In short, there is nothing in the record that suggests the Respondent’s targeting of the Complainant or the Complainant’s unregistered trademark rights in SPASE. 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, however, 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 record reflects that the Respondent had used the disputed domain name primarily to generate PPC revenues for some (14) years prior the Complainant’s launch of its business in February 2019, trading under the SPASE name. The Respondent’s availment of the disputed domain name to generate PPC revenues in and of itself does not constitute bad faith registration and use, and the Complainant has brought forward no credible evidence that the Respondent registered the disputed domain name in order to exploit and profit from the Complainant’s rights or those of other third parties. Further, and as noted 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.8 There has been no demonstrable change of the Respondent’s use of the disputed domain name over a number of years, and there is no evidence of the Respondent’s targeting of the Complainant or the Complainant’s unregistered trademark rights in SPASE. 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 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 previously noted, the Respondent registered the disputed domain name 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 Knud Wallberg The Hon Neil Brown Q.C. 1 See WIPO Overview 3.0, section 1.7. 2 See WIPO Overview 3.0, section 1.8. 3 Id. 4 See WIPO Overview 3.0, section 1.11. 5 It is at this point that Panelist Brown wishes to state that the Supreme Court decision in Booking.com in effect requires an analysis of whether it can be said, on the evidence, that Complainant has made out a common law trademark on the basis that consumers would see the proposed mark as an identifier of source. Booking.com was, of course, a case of a composite “generic.com” mark, but the principles involved must influence the interpretation of all marks where genericness is an issue. Complainant has had to claim a common law trademark in the present case because for some reason it does not have a registered trademark and does not say it has ever applied for one. Respondent contends that Complainant has not and cannot show a common law trademark because the alleged trademark consists of a generic word, “spase”. As Respondent rightly points out in support, Complainant promotes itself by reference to a description of its products as “augmented reality” which is defined as “seeing other real sensed or measured information such as electromagnetic radio waves overlaid in exact alignment with where they actually are in space”. According to Complainant itself, in describing its business, customers look at the 3d illustrations of the services it provides and absorb the message that “… it’s in your spase”. In other words, Complainant sees “spase” as simply being a different spelling of “space” and invoking the generic notion of space, probably as part of its marketing. Thus, it is probably generic and the evidence does not show any other way in which consumers might see the word. Indeed, the evidence adduced by Complainant seems designed to emphasize the generic nature of the word. There is certainly nothing in the word itself or in any other evidence to show that consumers would see it as a source identifier. Other evidence, such as surveys of consumer reaction might well have produced a different result, but that evidence in not present. Accordingly, Respondent may well be right in submitting that it is questionable if Complainant would be able to obtain a registered mark for its goods and services. Thus, Panelist Brown’s position is that it is doubtful if Complainant has established a common law trademark. The outcome of the proceeding, however, will be determined by the more substantive issues involved. He therefore joins with the Panel in proceeding to consider the remaining issues and concluding that the Complaint fails for the reasons given. 6 See WIPO Overview 3.0, section 1.1.3. 7 Id. See WIPO Overview 3.0, section 3.8. 8 See WIPO Overview 3.0, section 3.8.
Presiding Panelist
Panelist
Panelist
Date: September 15, 2020
Full & Egal Universal Law Academy