Complainant is Etrack LLC, United States of America (“United States”), represented by The Bobadilla Law Firm, United States.
Respondent is Edward Sturrock, United States, represented by Fish & Richardson P.C., 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 November 11, 2021. On November 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 12, 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 Complainant on November 15, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 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 Respondent of the Complaint, and the proceedings commenced on November 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was initially December 13, 2021 and extended to December 17, 2021. Respondent sent various informal email communications on November 15, 2021, November 19, 2021 and November 20, 2021. The formal Response was filed with the Center on December 17, 2021.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on December 28, 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 BackgroundComplainant is a limited liability company based in Virginia Gardens, Florida, United States. Complainant owns a federal trademark registration for BYFY, namely, United States Registration No. 6,398,262, registered on June 22, 2021 (application filed on July 22, 2020) for downloadable mobile applications for transport of people and goods in class 9 and for transport of persons and goods and delivery, packaging, and storage of goods in Class 39. The registration features a first use in commerce claim of November 4, 2020. Complainant alleges that the Disputed Domain Name was registered on May 24, 2004 as reflected in the WhoIs data submitted with the complaint.
Respondent is the Chief Technology Officer and co-founder of Cart.com, Inc. Respondent annexed to the Response a sworn affidavit in which Respondent states he registered the Disputed Domain Name in 2013 or 2014.
The Disputed Domain Name currently leads to a server error page.
5. Parties’ Contentions A. ComplainantComplainant asserts that it has established rights in the BYFY mark and that the Disputed Domain Name is confusingly similar to the BYFY mark.
Complainant further asserts that Respondent lacks rights or legitimate interests in the Disputed Domain Name because Respondent has never used the Disputed Domain Name in connection with a bona fide offering or goods or services, or a legitimate noncommercial or fair use of the Disputed Domain Name, and Respondent has never been commonly known by the Disputed Domain Name. Complainant argues that Respondent merely holds the Disputed Domain Name, without using it, with intent for improper commercial gain, as evident by Respondent’s conduct during negotiations with Complainant for the purchase of the Disputed Domain Name. To support this contention, Complainant annexes email correspondence with a Sedo.com broker in August 2020 and September 2020 showing Complainant eventually made an offer of USD 32,500 for the Disputed Domain Name, which Respondent rejected.
Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith because Respondent registered the Disputed Domain Name primarily to sell, rent, or otherwise transfer it to Complainant for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the Disputed Domain Name.
B. RespondentRespondent asserts that Complainant’s alleged trademark rights in BYFY are inconsequential because Respondent acquired the Disputed Domain Name in 2013-2014, six to seven years before Complainant’s alleged first use of BYFY on November 4, 2020.
Respondent argues that Respondent has rights or legitimate interests in the Disputed Domain Name because Respondent acquired the Disputed Domain Name with the intention of creating an online marketplace for buyers and sellers of e-commerce tools and services. According to Respondent, the marketplace would offer tools created by and for Respondent’s customers, as reflected in the use of “byfy” in the Disputed Domain Name as an abbreviation of “by you for you.” Respondent states he held the Disputed Domain Name with the intention of utilizing it someday.
Respondent asserts that Complainant has failed to show Respondent registered and is using the Disputed Domain Name in bad faith because Respondent was unaware of Complainant or its trademark rights in BYFY when it registered the Disputed Domain Name. Respondent acquired the Disputed Domain Name years before Complainant’s alleged date of first use of BYFY. Respondent argues it is therefore factually impossible for Respondent to have acquired the Disputed Domain Name with the intent of selling it to Complainant.
In addition, Respondent also refers to Complainant’s annexed email correspondence of August 2020 and September 2020 to point out Complainant approached Respondent with an offer to purchase the Disputed Domain Name, and several negotiations proceeded, during which Respondent asked Complainant if it was interested in a partnership as to the Disputed Domain Name. Respondent ultimately decided to retain ownership of the Disputed Domain Name and rejected Complainant’s offer to purchase the Disputed Domain Name. Respondent asserts that Respondent’s willingness at one time to sell the Disputed Domain Name to Complainant does not establish bad faith. Respondent argues that even assuming the sale price was above what Respondent paid for the Disputed Domain Name, prior UDRP decisions establish that the mere sale of a domain name for a high price does not establish a respondent registered a domain name with the intention of selling it to the complainant.
6. Discussion and Findings A. Identical or Confusingly SimilarThe Panel finds that Complainant has established trademark rights in BYFY by way of its federal trademark registration. The Panel further finds that the Disputed Domain Name is confusingly similar to the BYFY mark because it incorporates the mark in its entirety.
Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsIn light of the Panel’s finding below that Complainant has not satisfied paragraph 4(a)(iii) of the Policy, the Panel need not address whether Respondent has rights or legitimate interests in the Disputed Domain Name under paragraph 4(a)(ii).
C. Registered and Used in Bad FaithIt is the general rule that “where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.8.1. Respondent swears in his affidavit that he acquired the Disputed Domain Name in 2013-2014, and the WhoIs and information supplied by the Registrar provides that the Disputed Domain Name was created in 2004, without specifying the precise date Respondent acquired the Disputed Domain Name.
The Panel notes for clarity here that it is not the creation date of a domain name registration that controls, but the date of its acquisition by the current registrant/respondent.
The evidence, whether that of the Respondent (2013-2014) or as claimed by the Complainant (2004), shows that Respondent registered the Disputed Domain Name before Complainant commenced use of BYFY as a trademark. Complainant has not provided any evidence that it had a sufficiently well-known mark (e.g., by way of use in commerce) at some earlier date such that Respondent can reasonably be said to have known of Complainant’s mark when the Disputed Domain Name was acquired. Accordingly, there is no basis in the record for inferring bad faith registration on Respondent’s part. This is fatal to Complainant’s argument that Respondent registered the Disputed Domain Name in bad faith. See, e.g., Securus Technologies, LLC v. Domain Administrator,WIPO Case No. D2021-3383; Cyarx Technologies Ltd. v. Taylor Robison, WIPO Case D2020-0595; HSIL Limited, Somany Home Innovation Limited / SHIL Ltd., Brilloca Limited v. GOTW Hostmaster, Get On The Web Limited,WIPO Case No. D2020-3416.
Complainant contends that, “[i]n negotiating for the sale of the domain to Complainant, it is apparent Respondent merely holds the domain name, without using it, with intent for improper commercial gain.” The Panel rejects this as it is not evidence of bad faith that a domain name owner merely engages in negotiations to consider the sale of a domain name. Complainant’s own evidence in the form of pre-Complaint correspondence in August 2020 and September 2020 shows Complainant approached Respondent with a purchase offer for the Disputed Domain Name, not the other way around, and after Complainant rejected Respondent’s counteroffer, Respondent eventually rejected Complainant’s offer to purchase the Disputed Domain Name. See, e.g., Brooksburnett Investments Ltd. v. Domain Admin / Schmitt Sebastien,WIPO Case No. D2019-0455 (finding respondent’s mention of selling another domain name for USD 1.5 million did not prove the respondent acquired the domain name primarily to sell to complainant or complainant’s predecessor in interest where complainant initiated contact with respondent to express interest in purchasing the domain name); Thebuyerpool Limited v. Private Registration / Stephen Pomeroy,WIPO Case No. D2018-0133 (finding respondent’s higher counter-offer to complainant’s unsolicited purchase offer was not evidence of an attempt to sell the domain name for an amount in excess of respondent’s out-of-pocket expenses); GAMBERO ROSSO S.p.A. v. Mr. Michele Dinoia, Macrosten LTD,WIPO Case No. D2018-0697 (finding unpersuasive complainant’s argument that respondent attempted to sell the domain name for profit where respondent rejected two unsolicited purchase offers from complainant).
Complainant misconstrues and misapplies paragraph 4(b)(i) of the Policy when arguing that Respondent sought to sell the Disputed Domain Name to Complainant for valuable consideration in excess of Respondent’s out-of-pocket costs relating to the Disputed Domain Name. There is no evidence here that the Disputed Domain Name was registered or acquired for purpose of resale to Complainant whose rights did not exist when the Disputed Domain Name was registered. Regardless, the practice of registering a domain name for resale, including for profit, is not by itself improper unless the respondent registered the domain name in bad faith with the primary purpose of selling it to a trademark owner or competitor. WIPO Overview 3.0, section 3.1.1. And it is not necessarily improper to ask for a high price to sell a domain name especially if the domain name was not registered and used in bad faith. See Stone Fashion Group B.V. v. John James Broderick and or Jeanne Broderick Shelton,WIPO Case No. D2019-1888 (noting that an offer to sell a domain name for a high amount does not in itself constitute bad faith, although respondent’s alleged offer to sell the domain name for USD 2 million was likely in excess of respondent’s out-of-pocket costs related to the domain name); N2COM v. Whois Privacy Services / Domain Admin, Xedoc Holding SA,WIPO Case No. D2017-1220 (noting an offer to sell a generic domain name at a high price is not of itself illegitimate).
Accordingly, the Panel find that Complainant has not satisfied paragraph 4(a)(iii) of the Policy.
D. Reverse Domain Name Hijacking (“RDNH”)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.” 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 facts here call for a finding of RDNH. As a general rule, bad faith registration will not be found where the disputed domain name was registered before the complainant acquired trademark rights (WIPO Overview 3.0, section 3.8.1.), and Complainant acknowledged that Respondent registered or acquired the Disputed Domain Name well before Complainant’s earliest use of its BYFY trademark (whether in 2004 or 2013-2014). It was incumbent on Complainant to justify departing from the general rule that bad faith registration will not be found where the disputed domain name was registered before Complainant acquired trademark rights. See Securus Technologies, LLC v. Domain Administrator,WIPO Case No. D2021-3383 (finding RDNH where complainant acknowledged the domain name was registered before complainant’s claimed date of first use and did not provide arguments justifying departure from the general rule). Complainant made no such effort, other than the contention that the mere fact of engaging in negotiations that Complainant initiated was evidence of bad faith. The preponderance of evidence indicates that Complainant filed this UDRP complaint out of frustration after a failed effort to purchase a domain name that it knew or should have known was not registered in bad faith. Accordingly, the Panel finds RDNH.
7. DecisionFor the foregoing reasons, the Complaint is denied.
Lawrence K. Nodine
Sole Panelist
Date: January 11, 2022