Complainants are JHO Intellectual Property Holdings, LLC and Elite IP Holdings LLC, United States of America (“United States”), represented by Vital Pharmaceuticals, Inc, United States.
Respondent is Mahad Taheri, United States, self-represented. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on December 22, 2020. On December 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 24, 2020, the Registrar transmitted by email to the Center its verification response confirming that 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 (“Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 29, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 18, 2021. The Response was filed with the Center on January 8, 2021. The Center appointed Christopher S. Gibson as the sole panelist in this matter on January 18, 2021. 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. 4. Factual Background Complainants are affiliated with one of the largest producers of energy drinks in the world, Vital Pharmaceuticals, Inc. (“VPX”). VPX recorded sales of more than USD 1 billion in 2019 directly and through third-party distributors and is the third-largest energy drink company in the United States. VPX promotes a line of beverages and clothing featuring the term “NOO” and other terms. This promotion is through traditional channels as well as social media. Complainants own more than 1,200 registered and pending trademarks throughout the world. Complainant has submitted copies of trademarks that Complainant indicates are relevant for the purposes of this proceeding, including registered trademarks for NOO FUZION and NOO-FUSION for use with energy drinks and related products (see United States reg. no. 6202151 for NOO-FUSION and United States reg. no. 6202212 for NOO FUZION, both registered on November 17, 2020). Complainants own an additional 18 pending trademark applications at the United States Patent and Trademark Office (“USPTO”) for marks that include the term NOO. These applications are all either allowed, published, or recently filed. Further, Complainants own 44 Madrid and international applications for NOO-related marks. Complainants exclusively license the marks to VPX. NOO products are sold on VPX’s website and through third-party websites, such as Amazon. These websites are evidence of the use of NOO marks to promote and sell energy drinks and clothing. The Domain Name was created on September 10, 1998, and purchased by Respondent in 2005. Respondent’s Domain Name resolves to a website at “www.noo.com” with the phrase, “What’s NOO?”, as well as webpages that are linked to (i) Identical or confusingly similar. Complainants have submitted evidence of ownership of trademarks and trademark registrations for its NOO related trademarks. Complainants contend the highly successful sales of NOO products and the related substantial promotion are evidence of the fame of the NOO marks and the significant rights that Complainants have in the marks. The Domain Name incorporates the NOO mark, which is reflected in all of the NOO products. Complainants state that the use of other terms coupled with NOO shows that Complainants are highly active in the “NOO” space and therefore have strong rights to the marks that are identical to the Domain Name. Accordingly, Complainants respectfully argue that the first ground of the Complaint is satisfied. (ii) Rights or legitimate interests Complainants submits the following facts: 1. There is no evidence that Respondent is in the business of selling any product or service under the name NOO. Upon information and belief, Complainants allege that Respondent is not involved in the energy drink business or any other relevant business that includes the name “NOO”, or a similar name. Respondent’s only current relevant activity is ownership of the Domain Name. 2. Respondent previously registered the mark NOO for use with marketing services, namely promoting the events and travel experiences of others (U.S. Reg. No. 3,088,844). That registration was cancelled in 2016 for failing to show use of the mark. 3. Respondent is not currently using the Domain Name, as the site linked to it only mentions that it is for sale as of the date of filing the Complaint. 4. According to the Internet Archive, the website linked to the Domain Name ceased showing any content (aside from a NOO logo) as early as June 17, 2013. The Domain Name has been for sale since at least as early as June 6, 2016. Complainants contend that these facts show Respondent has no interest in the Domain Name and has not conducted any activities with regard to it, nor does he have any plans to do so. Accordingly, Complainants respectfully argue that the second ground of the Complaint is satisfied. (iii) Registered and used in bad faith Complainants contend that according to section 6.8 in the UDRP case, CBS Broadcasting, Inc. v. Gaddoor Saidi, WIPO Case No. D2000-0243, an excessive asking price for a domain name is evidence of bad faith. Complainants have submitted evidence to show that Respondent previously offered to sell the Domain Name for USD 150,000. Complainants assert that an experienced, independent domain name broker valued the domain name at USD 35,000-65,000. Respondent, however, offered to sell the Domain Name for more than twice its actual value. Such an offer for sale far exceeds any costs associated with running the Domain Name, as discussed in the case cited above. Further, Complainants state that Respondent previously offered to sell the Domain Name for USD 75,000. Complainants claim the evidence submitted shows Respondent’s own broker described his response to negotiations as “nonsense” and pointed out that he “goes up and down and up and down on pricing”. Therefore, Respondent has been using the Domain Name in bad faith. Accordingly, Complainants respectfully argue that the third ground of the Complaint is satisfied B. Respondent (i) Identical or confusingly similar Respondent states that Complainants claim they are using the term NOO in their trademarks related to “beverages and clothing” and to “promote and sell energy drinks and clothing”. These applications were all filed in the year 2020 as shown in Complainants’ evidence, while Respondent has owned the Domain Name since 2005, as shown in evidence submitted by Respondent. Respondent states that the Domain Name has never been used in the business of promoting or selling beverages, energy drinks, and clothing. Instead, the Domain Name has been used for “marketing services, namely promoting the events and travel experiences of others (U.S. Reg. No. 3,088,844)” and is currently occasionally used for concept projects and tests of services unrelated to the marks registered by Complainants. Respondent highlights that Complainants confirm in the Complaint that “Respondent is not in involved in the energy drink business”. Respondent states the Domain Name also houses content at “blog.noo.com”, as indicated in evidence submitted by Respondent. Respondent argues Complainants’ position on their use of the term “NOO” – that its use coupled with other terms shows that Complainants are highly active in the “NOO space” and therefore have strong rights to the marks that are identical to the Domain Name – does not demonstrate that the Domain Name is identical or confusingly similar to Complainants’ marks. Respondent contends this is similar to arguing that because they created a popular drink and clothing product called “Apple Fusion”, that the owner of Respondent asserts that Complainants have not provided evidence that any activities from use of the Domain Name were in the past or are presently identical or confusingly similar to Complainants’ trademarks, since Complainants and Respondent are not in the same line of business. (ii) Rights or legitimate interests Respondent contends that, as acknowledged by Complainants in their Complaint, before Respondent received any notice of the dispute, there is clear evidence in connection with bona fide offerings: “2. Respondent previously registered the mark NOO for use with marketing services, namely promoting the events and travel experiences of others (U.S. Reg. No. 3,088,844).” This use was well before the registration of Complainant’s trademarks. Furthermore, Complainant is factually incorrect in the following claims: “3. Respondent is not currently using the noo.com domain”, and, “Respondent has no interest in the domain and has not conducted any activities with regard to the domain”. Respondent asserts that Complainants appear to have used a limited Internet archive tool for top-level pages and not for subdomains and webpages that are often not indexed by Internet archives, which is how the Domain Name is currently used. The Respondent provided the following URLs as examples, among others, of how the Domain Name is currently in use: http://beginnings.noo.com/2020/ – an “under construction” page used while new projects are being developed and tested for use with the Domain Name Respondent contends that even though he currently has no active registered trademark, the same unregistered trademark used since 2005 is still being used on the site, and as an individual Respondent is commonly known by this logo and name. Respondent contends that as demonstrated by previous statements and the examples provided, Respondent currently makes a noncommercial and fair use of the Domain Name without intent to divert consumers or tarnish the trademarks at issue in the beverages, energy drinks and clothing space. (iii) Registered and used in bad faith Respondent states it purchased the Domain Name in 2005. Respondent contends that because Complainants’ trademarks did not exist until 2020, the Domain Name could not have been registered or acquired primarily for the purpose of selling, renting, or otherwise transferring it to Complainants, or to a competitor of Complainants, for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the Domain Name. Respondent states that the Domain Name was not registered in order to prevent Complainants from reflecting the mark as it was used for a different service of marketing events and now for personal use and pilot projects and, in connection therewith, Respondent has not engaged in a pattern of conduct to prevent Complainant from using its marks. Complainant and Respondent are not competitors. Respondent argues that occasionally contacting domain brokers to see whether a better opportunity exists in sale of the Domain Name rather than in building it does not constitute it being used in bad faith. While Complainants state that an independent domain name broker valued the Domain Name at USD 35,000-65,000, one person’s opinion does not dictate its value nor take into consideration the investments, costs, and losses Respondent may have had to acquire, promote, and maintain the Domain Name, which would need to be recouped in consideration of a potential sale. Respondent has submitted evidence of recent comparable domain name sales, which Respondent asserts are more accurate than a single broker’s opinion, to show that three letter domain names have fair market values ranging from USD 100,000 to 3,500,000. Respondent asks the panel to make a finding of reverse domain name hijacking. Respondent states that Complainants have not presented any clear evidence for why the Domain Name is infringing on their trademarks. Moreover, Respondent asserts that Complainants’ own evidence indicates the CEO’s instruction to offer only USD 2,500 for the Domain Name, which shows no serious intention by Complainants to present a serious offer based on comparable sales, market values, or an amount to recoup Respondent’s own outlays. 6. Discussion and Findings In order to succeed on its Complaint, Complainants must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied. These elements are that: (i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainants have rights; (ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and, (iii) Respondent has registered and is using the Domain Name in bad faith. A. Identical or Confusingly Similar The Panel finds that Complainants have established rights in their NOO trademark, based on their trademark registrations and applications in the United States and elsewhere. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1 (where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case). Further, the Panel determines that the Domain Name is identical or confusingly similar to Complainants NOO marks, as the Domain Name incorporates the term “noo” in its entirety. See WIPO Overview 3.0, section 1.7 (in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing). Accordingly, the Panel finds that that the Domain Name is confusingly similar to a trademark in which Complainants have rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests and Registered and Used in Bad Faith The Panel determines that, because Complainants have failed to demonstrate the Domain Name was registered and used in bad faith, the Panel need not address the second element – whether Respondent has any rights or legitimate interests in the Doman Name. The Panel observes that Complainants’ trademarks date from the year 2020, which is approximately 15 years after Respondent purchased the Domain Name in 2005. For example, Complainants’ registered NOO-FUSION and NOO FUSION marks both indicate dates of first use in commerce in 2020. Complainants have not provided evidence to indicate accrual of goodwill or reputation in the NOO marks dating from earlier years. This evidence indicates that Respondent did not target Complainants’ NOO marks when purchasing the Domain Name in 2005. Perhaps more importantly, there is no evidence that Respondent has used the Domain Name in a manner that reflects bad faith. Respondent’s prior use of the Domain Name for various content on webpages linked to the Domain Name does not reflect any targeting of Complainants or their NOO marks. Moreover, as indicated by WIPO Overview 3.0, section 3.1.1, the practice of registering a domain name for subsequent resale (including for a profit) would not, by itself, support a claim that the respondent registered the domain name in bad faith with the primary purpose of selling it to a trademark owner (or its competitor). Instead, circumstances indicating that a domain name was registered for the bad-faith purpose of selling it to a trademark owner can be highly fact-specific. However, the facts in this case indicate that Respondent purchased the Domain Name well before Complainants acquired rights in their NOO marks and, other than Respondent’s unwillingness to sell the Domain Name to Complainants’ broker at a price agreeable to Complainants’, Respondent has done nothing to reflect a bad faith use of the Domain Name. Accordingly, Complainant has failed to establish the third element of the Policy. 7. Reverse Domain Name Hijacking In this matter, the Respondent has requested that the Panel make a finding of 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 … 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 in paragraph 1 of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” In Jazeera Space Channel TV Station v. AJ Publishing aka Aljazeera Publishing,WIPO Case No. D2005-0309, the majority of the panel stated that: “Allegations of reverse domain name hijacking have been upheld in circumstances where a respondent’s use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy.” The Panel finds that the facts in this case demonstrate Complainants knew or should have known after reasonable investigation that their claim was baseless and they could not succeed in demonstrating the required three elements of the Policy. Respondent registered the Domain Name approximately 15 years before Complainant acquired trademark rights in its NOO marks, and there is no evidence of bad faith use of the Domain Name during those 15 years, nor evidence of targeting Complainants’ marks even after Complainant acquired rights in them. Moreover, UDRP precedent indicates that entertaining and/or rejecting an offer for sale of a domain name does not, by itself, demonstrate bad faith. And that is the sole evidence Complainants relied upon in this case. For the above reasons, the Panel finds that there has been attempted RDNH in this case. 8. Decision For the foregoing reasons, the Complaint is denied. Christopher S. Gibson
http://blog.noo.com/ – a blog occasionally updated by Respondent
http://noo.com/user/mahdad-taheri/ – webpage used in 2020
http://noo.com/user/mahdad-taheri/pay/ – webpage used in 2020
Sole Panelist
Date: February 16, 2021
Full & Egal Universal Law Academy