The Complainant is Biohacks GmbH, Germany, represented by horak., Attorneys at Law, Germany.
The Respondent is Daniel Walton United States of America (“United States”)/ Wishbone Media, Inc., United States, represented by Muscovitch Law P.C., 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 January 8, 2021. On January 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 11, 2021, 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 January 13, 2021, 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 amended Complaint on January 14, 2021. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 8, 2021. The Response was filed with the Center February 8, 2021. The Center appointed Luca Barbero, Reinhard Schanda, and Adam Taylor as panelists in this matter on March 3, 2021. 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. The due date for Decision was postponed to at least March 27, 2021. 4. Factual Background The Complainant is the owner of the following trademark registrations for BIOHACKS: - German trademark registration No. 302018202051 for BIOHACKS (word mark), filed on January 19, 2018 and registered on March 2, 2018, in international classes 5, 35, and 41; The disputed domain name The Complainant contends that disputed domain name With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that the Respondent is neither commonly known by the disputed domain name, nor has it registered any trademark for the term “Biohacks”. Moreover, since according to the Complainant the disputed domain name is being passively held, the Complainant asserts that there is no evidence of the Respondent’s use of, or demonstrable preparations to use, of the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. With reference to the circumstances evidencing bad faith, the Complainant indicates that the Respondent registered the disputed domain name with the sole purpose of selling it to the Complainant for an amount well in excess of the documented out-of-pockets costs since, in response to a Complainant’s offer of USD 2,500, in October 2020, the Respondent requested a sum of USD85,000. B. Respondent The Respondent replied to the Complainant’s contentions, denying most of the Complainant’s allegations and highlighting that the Complainant relies upon two trademark registrations which post-date the registration of the disputed domain name by ten years, without attempting to explain the apparent chronological discrepancy. The Respondent also indicates that the Complainant’s allegation about the Respondent’s use of the disputed domain name in bad faith appears to be allegedly limited to the Respondent’s unwillingness to sell the disputed domain name to the Complainant for the amount offered by the Complainant through a domain broker. The Respondent also points out that, upon receipt of the Complaint, it sent out to the Complainant a letter in which it set out in detail, material facts, applicable law, and documentary evidence, demonstrating in its view that the Complainant’s chance of success would have been very low as well as demonstrating that the disputed domain dame corresponds to a descriptive term and that the Respondent’s registration long pre-dated the Complainant’s recent trademark rights. The Respondent further explains that the letter also warned the Complainant that in the Respondent’s view bringing a meritless Complaint, particularly where the disputed domain name pre-dates the Complainant’s trademark rights, would constitute Reverse Domain Name Hijacking (RDNH). The Respondent informs the Panel that Daniel Walton became the first registrant of the disputed domain name on May 27, 2008, and that, on August 25, 2012, he transferred the disputed domain name to his corporation, Wishbone Media Inc. but, as shown in the WhoIs reports, he remained the administrative and technical contact for the disputed domain name, with the same address and email address, thus corroborating the continuity of beneficial ownership and maintaining an unbroken chain of underlying ownership. With regards to the use of the disputed domain name, the Respondent highlights that there is no requirement for a registrant to use the disputed domain name, especially for a disputed domain name which at the time of registration did not correspond to any trademark in existence. The Respondent explains that it selected the disputed domain name, long before the Complainant had any trademark rights and solely because it corresponded to a common descriptive term. Indeed, the Respondent underlines that the Complainant did not obtain any trademark rights until 2018 and did not even adopt the company name Biohacks GmbH until 2017, which is years after the registration of the disputed domain name. With regards to the Complainant’s attempt to purchase the disputed domain name in 2020, the Respondent submits that the Complainant instructed a domain name broker to attempt to purchase the disputed domain name without mentioning the Complainant, and highlights that the Complainant has failed to disclose all the correspondence in the Complaint. The Respondent provides copies of such correspondence with the broker as annex J to the Response, noting that the Complainant requested the broker to make an unsolicited offer to purchase the dispute domain name 12 years after the Respondent had registered the disputed domain name. As shown in the cited exchange of correspondence, the broker made an initial offer of USD 1,500, without disclosing the Complainant’s name, to which the Respondent replied making a counteroffer of USD 85,000. The Complainant’s broker then sent a further offer of USD 25,000, to which the Respondent replied indicating that it would have been willing to transfer the disputed domain name for the amount of USD 50,000. The broker in the end replied indicating that its client was not able to increase its prior offer and, therefore, no agreement was reached. With respect to the issue of identity or confusing similarity of the disputed domain name with the Complainant’s trademark, the Respondent acknowledges that the disputed domain name is identical to the Complainant’s registered trademark. With reference to rights or legitimate interests in respect of the disputed domain name, the Respondent states that it was in fact the first person to register the disputed domain name years before the Complainant obtained its trademark rights. Moreover, the Respondent underlines that, where a domain name is descriptive or generic such as “biohacks”, the first person to register it in good faith is entitled to the domain name and has a legitimate interest in it, regardless of whether or not the Respondent has a trademark. Lastly, the Respondent asserts that it was free to lawfully use or not use the disputed domain name and that the absence of any immediate or prior use should not extinguish the Respondent’s original rights and legitimate interest in the disputed domain name. With reference to the circumstances evidencing bad faith, the Respondent indicates that the Complainant’s failure to allege bad faith registration is unsurprising since the disputed domain name was registered long before the Complainant obtained trademark rights. Lastly, the Respondent emphasizes that the Complainant’s allegation of bad faith linked to the fact that the disputed domain name was being held for the sole intention of selling to the Complainant is plainly false. In fact, the Respondent underlines that it never once solicited the Complainant. If ever, it was the other way around. Furthermore, the Respondent was under no obligation to use the disputed domain name for a website, especially in this case where bad faith registration was not an issue. In conclusion, the Respondent requests that the Panel deny the Complaint and declare that the Complaint constitutes Reverse Domain Name Hijacking. 6. Discussion and Findings According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following: (i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has provided evidence of ownership of two trademark registrations for the word mark BIOHACKS (which were both filed and registered after the registration of the disputed domain name). As highlighted in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the first element functions primarily as a standing requirement, and the threshold test for confusing similarity typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. Moreover, as stated in section 1.1.3 of the WIPO Overview 3.0, “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 first element”. In the case at hand, the Complainant’s trademark BIOHACKS is entirely reproduced in the disputed domain name, with the mere addition of the gTLD “.com”, which is commonly disregarded under the first element confusing similarity test (section 1.11 of the WIPO Overview 3.0). Therefore, the Panel finds that the Complainant has proven that the disputed domain name is identical to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests It is well established that the burden of proof lies on the complainant. However, satisfying the burden of proving a lack of the respondent’s rights or legitimate interests in respect of the domain name according to paragraph 4(a)(ii) of the Policy is potentially onerous, since proving a negative can be difficult, considering such information is often primarily within the knowledge or control of the respondent. Accordingly, in line with previous UDRP decisions, it is sufficient that the complainant shows a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to the respondent. If the respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy In the case at hand, the Complainant states that the Respondent was not authorized to use the Complainant’s trademark, has not been commonly known by the name “Biohacks” and has not been using the disputed domain name in connection with a bona fide offering of goods or services. As per the facts and arguments made by the Respondent as recorded above, the Respondent has rebutted the Complainant’s contentions, in particular noting that the disputed domain name was registered many years before the Complainant had obtained trademark rights in BIOHACKS and that it registered the disputed domain name due to the correspondence of the same with a descriptive term (“biohacks”). With regard to the issue of respondent’s rights or legitimate interests in a domain name comprised of a dictionary word, as stated in section 2.10.1 of the WIPO Overview 3.0, “Panels have recognized that merely registering a domain name comprised of a dictionary word or phrase does not by itself automatically confer rights or legitimate interests on the respondent; panels have held that mere arguments that a domain name corresponds to a dictionary term/phrase will not necessarily suffice. In order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trademark rights”. In the case at hand, the Panel notes that the disputed domain name is constituted by the dictionary term “biohacks”, which refers to the results of experiments with biological material made by biohackers. The Respondent has not provided evidence of any use or preparation to use the disputed domain name in connection with a dedicated website and stated that it registered the disputed domain name with the intention to possibly develop a website one day. Based on the screenshot submitted by the Complaint as Annex 5 to the Complaint – which has not been challenged by the Respondent – the Panel notes that the disputed domain name, currently pointed to a registrar parking page, was redirected, on December 12, 2020, to a webpage displaying general and seemingly unspecific pay-per-click links. Even so, such links do not specifically target the Complainant and its trademark. As indicated in section 2.9 of the WIPO Overview 3.0, “the use of a domain name to host a page comprising PPC links would be permissible – and therefore consistent with respondent rights or legitimate interests under the UDRP – where the domain name consists of an actual dictionary word(s) or phrase and is used to host PPC links genuinely related to the dictionary meaning of the word(s) or phrase comprising the domain name, and not to trade off the complainant’s (or its competitor’s) trademark”. All said, while there does not appear to be any targeting of the Complainant based on the evidence before the Panel, there is equally no evidence that the Respondent used the disputed domain name in connection with its claimed descriptive meaning; the Respondent cannot therefore avail itself of a claim to right or legitimate interest on this basis. Despite this fact, there is no other element from which the Panel could infer that the Respondent, which registered the disputed domain name several years before the Complainant came into existence and subsequently applied for registration of its trademark BIOHACKS, registered the disputed domain name to profit from and exploit the Complainant’s trademark. The Panel also finds that Respondent’s offer to sell the disputed domain name to the Complainant does not show a lack of a bona fide intention in light of the correspondence of the disputed domain name to a descriptive term and of the circumstance that the Respondent was first approached by Complainant to sell the disputed domain name. See, along these lines, Javier Narvaez Segura, Grupo Loading Systems S.L. v. Domain Admin, Mrs. Jello, LLC,WIPO Case No. D2016-1199. Therefore, the Panel concludes that the Complainant has failed to demonstrate that the Respondent has no rights and legitimate interests in the disputed domain name according to paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the disputed domain name was registered and is being used by the Respondent in bad faith. The evidence on records shows that the disputed domain name was originally registered in 2008 in the name of the Respondent’s sole director and shareholder, and that it was transferred to the Respondent entity in 2012. As stated in section 3.9 of the WIPO Overview 3.0, “where the respondent provides satisfactory evidence of an unbroken chain of possession, panels typically would not treat merely “formal” changes or updates to registrant contact information as a new registration”. Moreover, even considering 2012 as registration date of the disputed domain name by the Respondent, the registration of the disputed domain name would predate the Complainant’s trademark rights by about six years. Furthermore, based on the documents on record, the Complainant adopted its current company name only in 2017. In addition to the above, the Complainant has not provided any evidence of use of its trademark BIOHACKS before or after the registration date of the disputed domain name and has not even addressed the bad faith registration requirement in the Complaint. In view of the circumstances of the case, based on the documents submitted by the parties, the Panel finds that the Respondent could not have been aware of the Complainant and its trademarks at the time of the registration. Moreover, the Panel also finds that there is no element in this case that could demonstrate that the Respondent, on balance of probabilities, intended to target the Complainant and its trademark through the use of the disputed domain name, since the pay-per-click page to which the disputed domain name previously resolved according to the screenshot submitted by the Complainant did not include any reference to the Complainant and its trademark. Indeed, the circumstances of the case suggest that the Respondent registered the disputed domain name given that it corresponds to a common term. In light of above, the Panel does not find that the Respondent’s use of the disputed domain name amounts to bad faith as alleged by the Complainant. Nor can the Respondent’s bad faith can be proven by the Complainant’s attempts to purchase the disputed domain name from the Respondent. Furthermore, previous panels have found that, where a registrant has an independent right to or legitimate interest in a domain name, an offer to sell that domain name would not by itself be evidence of bad faith for purposes of the Policy, irrespective of which party solicits the prospective sale. See section 3.1.1 of the WIPO Overview 3.0. In view of the above, the Panel finds that the Complainant has failed to demonstrate that the Respondent registered and used the disputed domain name in bad faith according to paragraph 4(a)(iii) of the Policy. D. 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”. The Rules define Reverse Domain Name Hijacking as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” The Panel also bears in mind that the Complainant in this case is represented by counsel and, therefore, it should be held to a higher standard (see section 4.16 of the WIPO Overview 3.0). The Panel concludes that the Complainant’s actions constitute Reverse Domain Name Hijacking for the following reasons: i) the Complainant, through its counsel, should have appreciated the weakness of its case and the fact that the dictionary term “biohacks” encompassed in the disputed domain name could not be exclusively referable to the Complainant, as claimed in the Complaint without any supporting evidence; ii) the Complainant knew or should have known that the Respondent was not acting in bad faith, especially considering the disputed domain name was registered long before the Complainant acquired trademark rights for BIOHACKS; iii) the Complainant should have carried out a minimal due diligence that would have disclosed the fact that the Complainant would not have succeeded in any way under any fair interpretation of the available facts before the filing of the Complaint; iv) the Complaint was brought only after the Complainant failed to purchase the disputed domain name; and v) the Complainant has failed to demonstrate its use of the trademark BIOHACKS before or after the registration of the disputed domain name and has not even addressed the bad faith registration requirement. 7. Decision For the foregoing reasons, the Complaint is denied. The Panel also finds that the Complaint was brought in bad faith in an attempt at Reverse Domain Name Hijacking. Luca Barbero Reinhard Schanda Adam Taylor
- European Union trademark registration No. 017962927 for BIOHACKS (word mark), filed on September 28, 2018 and registered on August 15, 2019, in international class 35.
Presiding Panelist
Panelist
Panelist
Date: March 27, 2021
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