The Complainant is GSL Networks Pty Ltd., Australia, represented by Dowd & Company, Australia.
The Respondent is Domains By Proxy, LLC / Alex Alvanos, Bobservers, United States of America (“United States”), represented by Lewis & Lin, LLC, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2021. On July 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 14, 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 July 18, 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 July 19, 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 July 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 9, 2021. The Respondent did not submit any formal response. The Center received the Respondent’s communications by email on September 5, 2021, September 6, 2021, September 8, 2021 and September 10, 2021. A late Response was filed on September 15, 2021.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on September 13, 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 BackgroundThe Complainant is an Australian company. It appears to have been incorporated on August 4, 2017.1 The Complainant claims, without providing supporting evidence, to have used the name “Streamline Servers” or variants thereof across various businesses since 2009. The Complainant adds that it purchased the domain name
The Complainant describes itself as providing high performance server hosting services through a website operated under the domain name
The Complainant is the owner of Australian Trademark No. 2028274 in respect of the figurative mark S STREAMLINE SERVERS,2 registered on March 20, 2020 in classes 38 and 42. The Complainant is also the owner of United States Registered Trademark No. 6208652 for the word and design mark STREAMLINE SERVERS, registered on December 1, 2020 in classes 38 and 42. Said mark claims a “first use in commerce” date of April 1, 2016 and includes a disclaimer in respect of the exclusive right to use the word “servers” apart from the mark as shown.
The disputed domain name was registered on June 24, 2004. The website associated with the disputed domain name has the appearance of an unconfigured server page. The Complainant provides evidence of a screenshot taken on April 29, 2021 indicating that the disputed domain name at one time redirected, with an affiliate tag, to a website at “www.gameservers.com”, which the Complainant states is one of its competitors. The Respondent provides screenshots taken from the Internet Archive “Wayback Machine” dating from 2004, 2005 and 2010 demonstrating that, as at those dates, the Respondent operated a game server hosting business from the disputed domain name.
5. Parties’ Contentions A. ComplainantThe Complainant contends as follows:
Identical or confusingly similarThe Complainant has rights in the STREAMLINE SERVERS trademark in both Australia and the United States and has conducted business thereunder for approximately 12 years. The Complainant has conducted business from
The Respondent has no rights or legitimate interests in the disputed domain name. There is no connection or relationship between the Parties. There has been no communication between the Parties and no grant of permission to use the Complainant’s mark or the disputed domain name. The Respondent does not own the STREAMLINE SERVERS mark and conducts no business under such name. The Respondent has never used the Complainant’s mark and does not conduct any business under the name “Streamline Servers”. There is no evidence that the Respondent has used the disputed domain name in connection with a bona fide offering of goods and services, nor has it been commonly known thereby. In a similar case under the Policy where the complainant submitted that the respondent was not using the domain name concerned with a bona fide intent and was not making a legitimate noncommercial or fair use of such domain name, the panel found that the complainant had satisfied the relevant requirements of the Policy.
Registered and used in bad faithThe Respondent has registered the disputed domain name in order to prevent the Complainant and owner of the trademark from reflecting its mark in a corresponding domain name. The disputed domain name was being used to redirect traffic to a website of the Complainant’s competitor, which caused disruption to the Complainant’s business, which conduct has since ceased. The Respondent is knowingly holding the disputed domain name and not using it for any purpose whatsoever, and there is therefore an absence of any conceivable good faith use. The non-use of the disputed domain name and previous redirection to a competitor of the Complainant supports a finding of bad faith. There is a clear absence of rights or legitimate interest, coupled with no credible explanation for the Respondent’s choice of the disputed domain name. The Respondent has taken active steps to conceal its identity by hiding its private information and using an anonymous hosting service. The Respondent’s passive holding of the disputed domain name would not prevent a finding of registration and use in bad faith.
B. RespondentIn the late-filed Response, the Respondent contends as follows:
The Complaint should be denied.
The Respondent first became aware of the Complaint when it received the Notification of Respondent Default on September 5, 2021 and immediately sent an email to the Center and retained legal counsel to respond. As a lay person unfamiliar with the Policy, the Respondent misunderstood the USD 1,000 refund to the Complainant if the Parties settle (as stated in an email from the Center) as an offer to purchase the disputed domain name for that amount. The Respondent registered the disputed domain name over 17 years ago and this is not in dispute as the Complainant admits in the Complaint that the Respondent registered the disputed domain name on its creation date.
The Complainant alleges use of “Streamline Servers” from 2009, which is over 5 years after the Respondent registered the disputed domain name. The Complainant’s trademark was registered nearly 16 years after the Respondent registered the disputed domain name. The Respondent could not have contemplated the Complainant’s trademark when it registered the disputed domain name because the Complainant and such mark had not come into existence. The Complainant nevertheless claims that the Respondent is a cybersquatter. The Complainant had no prior knowledge of the Respondent. This is a frivolous case filed by a Complainant that is represented by counsel and should have known better. The Complaint is an abuse of the UDRP process and the Complainant has engaged in reverse domain name hijacking.
Identical or confusingly similarThe Respondent does not dispute that the disputed domain name is comprised of wording similar to the Complainant’s alleged trademark rights. Said similarity is unintentional.
Rights and legitimate interestsThe Respondent registered the disputed domain name because it contains the two dictionary words “streamline” and “server”, aligning with its interest in developing a website and business that facilitates owning a server for gamers. The Complainant’s trademark did not exist at this time. A respondent need not make use of a domain name in order to have rights or legitimate interests therein. The fact that the disputed domain name describes the Respondent’s intended purpose is only further strong evidence of its intent to use the disputed domain name for a bona fide purpose. The Respondent actually used the disputed domain name for such purpose. The Complainant’s unsupported conjecture is of no force and effect under the Policy.
Registered and used in bad faithUnder the facts, the Respondent cannot conceivably have been aware of the existence, or even potential existence, of the Complainant or of any rights that might subsequently accrue to it at the time of registration. The disputed domain name cannot conceivably have been registered in bad faith. The Respondent has never offered to sell the disputed domain name to the Complainant and never targeted the Complainant as a potential purchaser, nor could it have done so. When a domain name is registered before a complainant accrues trademark rights, the complainant generally cannot prove registration in bad faith under the Policy, which requires a showing of bad faith registration and use.
The Complainant has made conclusory allegations of bad faith without adducing specific evidence. Mere assertions do not prove bad faith. The Complaint supports the Respondent’s position that it is an abusive filing because it admits that the disputed domain name was registered before the Complainant existed and claims without supporting evidence that the Respondent registered the domain name in order to prevent the Complainant and owner of the trademark from reflecting the mark in a corresponding domain name.
Without bad faith registration, the claim that the Respondent used a “server” formative domain name, once used with a game server business, to target the Complainant by redirecting it to another game server website, fails to establish intentional targeting of an Australian trademark holder’s business, some seventeen years after the Respondent registered the disputed domain name. There is no evidence here of, nor any basis on which to find, bad faith registration or use.
This is not a case where the doctrine of passive holding is applicable. Other aggravating factors are required which are not present here. Despite having priority of use over the Complainant, the Respondent used the disputed domain name for a number of years in connection with a bona fide game server business. The Complainant’s arguments suggest a trademark holder hoping for a ruling on default.
Reverse domain name hijackingPanels under the Policy have found reverse domain name hijacking on facts similar to those here, where a domain name was registered long before the complainant’s trademark came into existence and the complaint was doomed to fail. The Complainant should have known that its case was fatally weak and thus never should have been filed. The Complainant is a corporate entity represented by experienced counsel. It is reasonable to infer that the Complainant’s counsel conducted research into the Respondent and had access to much of the same exculpatory information provided to this Panel in the Response, but chose to omit that information from its Complaint. If not, the Complainant was, at best, reckless in filing the Complaint without first conducting research into the facts. The Respondent has been forced to spend resources and energy on this and the Complainant has at minimum earned a finding of reverse domain name hijacking.
6. Discussion and FindingsTo succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed 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 in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Preliminary Matter – Late ResponseAs noted above, the due date for Response was August 9, 2021. The Respondent did not submit any formal response ahead of the deadline and the Center notified the Respondent’s default on September 5, 2021. The Center received an email communication from the Respondent on September 5, 2021 in which the Respondent claimed that the Center had no jurisdiction and indicating that the Complainant should file a complaint in a court of competent jurisdiction or an in rem action concerning the disputed domain name. On September 6, 2021, the Respondent’s further email to the Center stated that the disputed domain name was still for sale. On September 8, 2021, the Center received a further email from the Respondent in which the Respondent stated that it now understood the importance of the administrative proceeding and would be filing a Response. Accordingly, it withdrew the offer to sell the disputed domain name pending consultation with its counsel.
On September 10, 2021, the Respondent’s counsel emailed the Center to indicate that it had just been retained by the Respondent and that the Respondent had been dealing with a family medical emergency in July and August involving taking a close family member for treatment multiple times per day. The Respondent’s counsel added that the Respondent had overlooked the Center’s notification of the Complaint in time to make a Response ahead of the due date and requested a formal extension of such date to September 15, 2021, or in the absence of such, an assurance that any Response filed by that date would be forwarded to the Panel for consideration in its discretion. As noted above, the Panel was appointed on September 13, 2021 and the Response was filed on September 15, 2021.
Paragraph 14(a) of the Rules provides that in the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint. The Panel may therefore consider the Respondent’s late Response in its discretion if it finds that exceptional circumstances are present. Furthermore, paragraph 10(b) of the Rules provides that in all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case. Paragraph 10(c) of the Rules notes that the Panel shall ensure that the administrative proceeding takes place with due expedition, although it may, at the request of a Party or on its own motion, extend, in exceptional cases, a period of time fixed by the Rules or by the Panel.
In the Respondent’s formal declaration, which was produced with the Response, the Respondent explains that at the time the proceeding commenced, it was traveling multiple days for four to six hours and spending six to eight hours each day at a hospital for the aforementioned reasons. The Respondent adds that at this time it was also working full-time in cyber-security and had fallen behind on checking personal emails, and that it did not become aware of the Complaint until after the due date. There is evidence before the Panel that the Center notified the Complaint by email to the Respondent’s email address (among others). There is no evidence that the written notification issued by courier reached the Respondent directly.
The question for the Panel is whether the Respondent’s explanation for its delay of over a month in filing the Response constitutes “exceptional circumstances” as provided in paragraph 14(a) of the Rules. Many panels have disregarded late-filed responses making clear that it is important to apply the Rules as written, absent a good reason, otherwise parties will feel free to disregard deadlines and respondents will regularly submit late responses (see Museum of Science v. Jason Dare,WIPO Case No. D2004-0614). In the present case, the Panel considers that the Respondent has established such a good reason, due to its dealing with a medical emergency which took up much of its time over the period concerned. It can also be a relevant factor that once it became aware of the deadline, the Respondent took the matter seriously enough to hire legal counsel to draft and file a Response, even a late one (see, for example, Uber Technologies, Inc. v. Paul Svensen,WIPO Case No. D2020-3210).
Furthermore, the Panel notes that although the delay between the due date for the Response of August 9, 2021 and the late filing of same on September 15, 2021 is comparatively lengthy, the Respondent in fact reacted swiftly following receipt of the notification of its default, which was issued on September 5, 2021, and the late Response was filed within ten days thereafter. It is worthy of note that such Response was available within two days of the Panel’s appointment, meaning that there was ample time for the Parties’ respective cases to be considered by the Panel within the usual time period of fourteen days in terms of paragraph 15(a) of the Rules. Finally, the Panel can identify no apparent prejudice to the Complainant in allowing a late Response in the circumstances of this case. In particular, there has also been sufficient time for the Complainant to make a supplemental filing, for example, seeking to answer the allegation of reverse domain name hijacking in the Response. If such filing had been made during the period of its deliberations, the Panel would have taken it under consideration in light of its decision to admit the late-filed Response.
The Panel therefore allows the Response to be received, although late, and will consider this in its deliberations.
B. Identical or Confusingly SimilarThe Parties are agreed that the Complainant has rights in its STREAMLINE SERVERS registered trademark. The fact that the Respondent’s registration of the disputed domain name pre-dates the date of registration of the Complainant’s trademark is not relevant to the first element test. However, this may be relevant to the second and third element tests (see section 1.1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The Second-Level of the disputed domain name is alphanumerically identical to the Complainant’s United States trademark, disregarding the space in the latter, which cannot be reproduced in a domain name for technical reasons. The generic Top-Level Domain (“gTLD”), in this case “.com”, is typically disregarded during the comparison process as it is only required for technical reasons.
In these circumstances, the Panel finds that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights and thus that the Complainant has carried its burden with regard to paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate InterestsThe requirements of paragraph 4(a) of the Policy are conjunctive. A consequence of this is that failure on the part of a complainant to demonstrate one element of the Policy will result in failure of the complaint in its entirety. Accordingly, in light of the Panel’s finding in connection with registration and use in bad faith, discussed below, it is unnecessary for the Panel to address the issue of the Respondent’s rights or legitimate interests in the disputed domain name.
D. Registered and Used in Bad FaithUnder the third element of the Policy the Complainant must prove, on the balance of probabilities, (a) that the disputed domain name has been registered in bad faith and (b) that the disputed domain name is being used in bad faith. The requirement is conjunctive in that both of these two components must be proved for the Complainant to carry its burden in terms of paragraph 4(a)(iii) of the Policy. Accordingly, should the Panel determine that only one, or neither, of these components are proved, the Complaint will fail.
Taking registration in bad faith first, on this aspect a complainant typically requires to demonstrate that the respondent had the complainant’s rights in mind when it registered the domain name concerned and that, at that point, it was proceeding with the bad faith intention of targeting those rights. However, where, as here, the disputed domain name has been created by the Respondent before the Complainant’s trademark rights accrued, absent any nascent or as yet unregistered rights of the Complainant, the Panel will not normally find bad faith on the part of the Respondent (see section 3.8 of the WIPO Overview 3.0). There is no suggestion or evidence on the present record that in registering the disputed domain name in 2004, the Respondent was anticipating and intending to target any then-nascent rights of the Complainant. Indeed, the Complainant’s registered rights did not come into being until 2020. Furthermore, the Complainant did not itself exist until 2017 and, on its own assertion, its predecessors or affiliates did not commence trading as “Streamline Servers” until 2009. This is sufficient to dispose of the Complainant’s case on registration in bad faith and due to the conjunctive requirement outlined above the Complaint therefore fails.
Turning to use in bad faith, for completeness, neither the Response nor the Respondent’s annexed declaration attempt to explain the apparent affiliate link at the disputed domain name, which at one time pointed to the website of a gaming server provider, as shown on the Complainant’s screenshot of April 29, 2021. The Panel has no way of knowing if this was a specific configuration of the disputed domain name which was intended to monetize this and indeed for how long this use was active. Both Parties agree that the link is now no longer in place. Likewise, the Panel does not know whether, in setting up the disputed domain name in this manner, the Respondent was intending to take advantage of more recent notoriety of the Complainant’s mark as opposed to merely monetizing a domain name which it had registered for its own genuine business purposes, bearing in mind that it appears to consist of dictionary words that are apt to describe a server hosting business. In any event, the onus of proving that the pointing of the disputed domain name was a deliberate act intended to target the Complainant’s rights falls upon the Complainant and it has put forward no evidence of such. In particular, the Panel cannot assess the present notoriety of the Complainant’s mark and the extent and reach of its rights based purely upon the list of customer numbers which has been produced. In the Panel’s view, therefore, the Complainant has failed to demonstrate use in bad faith on the balance of probabilities.
In the above circumstances, the Complainant has failed to carry its burden in respect of paragraph 4(a)(iii) of the Policy and the Complaint fails.
E. Reverse Domain Name HijackingThe Respondent requests the Panel to make a finding of Reverse Domain Name Hijacking (“RDNH”). Paragraph 1 of the Rules defines Reverse Domain Name Hijacking as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”. 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”.
A commentary on the nature of RDNH together with examples of previous cases under the Policy in which it has been found is detailed in section 4.16 of the WIPO Overview 3.0. It should be noted in particular that lack of success of a complaint is typically not sufficient on its own for a finding of RDNH.
It is evident from the Complaint in this case that the Complainant has not fully appreciated the requirement to prove both registration and use in bad faith. As the Respondent notes, the Complaint impliedly accepts that the disputed domain name was registered by the Respondent as at its creation date in 2004. In other words, the Complaint does not suggest that the disputed domain name was acquired by the Respondent more recently and, in particular, after the Complainant’s trademark rights had accrued or after it had commenced its own use of the term “streamline servers”. The Complaint does not suggest that the Respondent was anticipating the coming into existence of the Complainant’s rights, nor would any such suggestion have been credible on the facts of this case. This Complaint was therefore doomed to fail at the outset as the Complainant could not prove registration in bad faith. The Complainant and/or its legal counsel should have appreciated this. A passing familiarity with Policy precedent on this issue (for example, as described in section 3.8 of the WIPO Overview 3.0) is something that the Panel is entitled to expect from parties represented by legal counsel, and it is lacking here. Such familiarity would have caused the Complainant to be aware of its difficulties in pursuing the Complaint. A modicum of additional research would also have indicated to the Complainant that the Respondent itself had created and run a business by the name of “Streamline Servers”, well before 2009, and it therefore had a bona fide basis for registration of the disputed domain name.
It must be acknowledged that, according to the Complainant’s relatively recent screenshot, the disputed domain name may have appeared at one point to have been targeting the Complainant’s rights by forwarding traffic on an affiliate link to one of the Complainant’s competitors, albeit that this use had ceased by the time the Complaint was filed. In the particular circumstances of the present case, however, such use should not have caused the Complainant to overlook the fact that the disputed domain name predated both its rights, and even its own, and its predecessors’ existence by a considerable margin. The Complainant should also have considered the fact that the distinctiveness of its trademark is due in part to its stylization, and that the disputed domain name contains dictionary words which are at least partially descriptive of a hosting business. The fact that the word “servers” is disclaimed in the Complainant’s United States trademark registration provides something more than a hint in this direction, raising the reasonable possibility that another entity might have come by the term “streamline servers” on an independent basis, and without necessarily having any knowledge of or intent to target the Complainant or its rights. The Notice of Registrant Information issued by the Center to the Complainant provided the full name of the Respondent and the fact that it also used the name and domain name
Bearing all of the above in mind, the Panel is of the view that the Complainant’s failure, or that of its representatives, to carry out basic research into the history of the disputed domain name before resorting to its Complaint under the Policy, together with the representatives’ apparent lack of familiarity with Policy precedent on the relevant issue, places this particular case into RDNH territory. Based on the Respondent’s submissions, the Panel does not doubt that the Respondent has suffered inconvenience and expense, and in this case the Panel determines that the circumstances call for the sanction which is available to it, in terms of paragraph 15(e) of the Rules.
The Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
7. DecisionFor the foregoing reasons, the Complaint is denied.
Andrew D. S. Lothian
Sole Panelist
Date: September 27, 2021
1 The Panel searched for the Complainant’s details on the website of the Australian Securities and Investments Commission (“ASIC”) by way of conducting limited factual research into matters of public record (on this topic, see section 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The Panel is confident that it has identified the correct entity because the Complainant’s Australian business number was specified on the Complaint and matched the records retrieved. The Panel did not require to search said website in respect of the Complainant’s submissions relative to the other company which it mentions, Streamline Servers Pty Ltd, as a copy of that company’s certificate of registration, issued by ASIC, was produced with the Complaint.
2 Although the Complainant described its Australian trademark as STREAMLINE SERVERS, the Panel consulted the Australian Government’s “IP Australia” website in respect of such mark and noted that the “Words” section provided that the words in the mark are S STREAMLINE SERVERS.