RDNH finding.
IP attorney, John Berryhill, scored again; the domain JDM.com was challenged via the UDRP process at the WIPO.
The Complainant was J.D.M. Software B.V. of Maassluis, the Netherlands.
The Complainant is the owner of Benelux Trademark No. 1004796 for JDM in respect of a range of software and computer related goods and services in International Classes 9, 38 and 42. The trademark was registered on November 14, 2016.
The problem is, the domain JDM.com was registered in 1995, predating any marks and rights the Complainant brought forth.
The Respondent offers the disputed domain name for $500,000 dollars.
A three member panel at the WIPO, at the request of the Respondent, decided to deny the transfer of the domain, and delivered a finding of Reverse Domain Name Hijacking. One panelist, Flip J.C. Petillion, refused to find that Reverse Domain Name Hijacking took place.
Full details follow.
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ADMINISTRATIVE PANEL DECISION
J.D.M. Software B.V. v. Robert Mauro, WDINCO
Case No. D2017-11821. The Parties
The Complainant is J.D.M. Software B.V. of Maassluis, the Netherlands, represented by Kennedy Van der Laan, the Netherlands.
The Respondent is Robert Mauro, WDINCO of Clemson, South Carolina, United States of America, represented by John Berryhill, Ph. d. Esq., United States of America (“USA”).
2. The Domain Name and Registrar
The disputed domain name <jdm.com> is registered with CSC Corporate Domains, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 16, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the 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 (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 June 23, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 13, 2017. On July 12, 2017, the Respondent filed a request for an additional four calendar days to file the Response. In accordance with paragraph 5(b) of the Rules, the Center granted the extension of time until July 17, 2017. The Response was filed with the Center on July 18, 2017, having apparently been forwarded by the due date to another dispute resolution provider in error.
The Center appointed Warwick A. Rothnie, Flip Jan Claude Petillion and Richard G. Lyon as panelists in this matter on August 10, 2017. 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.
On July 20, 2017, the Complainant purported to object to the Respondent’s request for the proceeding to be heard by a three member panel instead of a single member panel as requested by the Complainant. Later that same day, the Respondent filed its response to the Complainant’s objection.1
4. Factual Background
The Complainant was incorporated in the Netherlands in 1983. Since then, the Complainant has been offering software for business telephony services. The software has been offered through a website to which the domain name <jdm.nl> resolves since February 1997 and to which the domain name <jdm-software.com> resolves since April 18, 2001. The Complainant has also registered eight other domain names which feature “jdm” as the first three letters of the second level domain.
A Press Release by the Complainant filed with the Complaint shows that, in June 2016, the Complainant identified itself as the developer of the PeterConnects Attendant software for use with Cisco Unified Communications Manager and Microsoft Skype for Business. The Complainant also provided a “popular” product, ServiceDesk, for Cisco. The ServiceDesk software was said to be becoming available for Microsoft Skype “later this year” (as at June 2016).
The Complainant is the owner of Benelux Trademark No. 1004796 for JDM in respect of a range of software and computer related goods and services in International Classes 9, 38 and 42. The trademark was registered on November 14, 2016.
The Respondent operates a business in which he registers domain names which are, or appear to be, descriptive terms or short acronyms or abbreviations.
The disputed domain name became registered in the Respondent’s name on April 17, 2017.
The disputed domain name was first registered by a third party, JDM Interactive, and apparently used in connection with that entity’s business until about 2009. The Complainant makes no complaint about those activities.
From 2009 until the Respondent became the registrant, the disputed domain name was held by another third party, DomainInvest S.A. Throughout this period, DomainInvest S.A. apparently offered the disputed domain name for sale. During this period, the disputed domain name resolved to a website which featured what appear to be pay-per-click (PPC) links to a range of goods and services related to Japanese cars and car parts such as “JDM Auto Parts”, “JDM Engines”, “Stickers”, “JDM Motors”, “Honda Civic Photos”, “Imported JDM Cars for Sale” etc.
In December 2016, the Complainant through its lawyers sent a cease and desist letter to DomainInvest S.A. DomainInvest S.A. replied through its lawyers, Law.es, defending its entitlement to the disputed domain name.
On March 22, 2017, the Complainant’s lawyers wrote to DomainInvest S.A.’s lawyers, expressing surprise that the lawyer handling the matter for DomainInvest S.A. had not disclosed he was a director of DomainInvest S.A., alleging that DomainInvest S.A. was engaging in a game of “smoke and mirrors”. The letter ended by stating that the Complainant’s lawyers had instructions to cease ongoing discussions and to file a complaint under the Policy.
The Respondent appears to have contracted to buy the transfer of the disputed domain name from DomainInvest S.A. for the sum of USD 45,000 on or about April 5, 2017. As noted above, the registration was formally transferred on April 17, 2017.
Since then, the disputed domain name has continued to resolve to a website which continues to feature PPC links related to Japanese cars and car parts of a similar, if not the same, nature as previously maintained by DomainInvest S.A.
The Respondent also offers the disputed domain name for sale for USD 500,000.
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(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.
Paragraph 15(a) of the Rules directs the Panel to decide the 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.
Before addressing the substantive issues, the Panel notes that the Response was filed with the Center one day late, apparently as a result of an inadvertent misaddressing of the email transmitting the Response.
Paragraph 10(c) of the Rules confers on the Panel power to extend a period of time fixed by the Rules in exceptional circumstances, provided the Panel ensures that the administrative proceeding takes place with due expedition and, in accordance with paragraph 10(b), ensures that the parties are treated equally and each given a fair opportunity to present its case.
In the circumstances of this case, bearing in mind that the Response was prepared and attempted to be submitted in due time, it was filed immediately after the error was discovered and within 24 hours of the due date, before the Panel was appointed and the Complainant has not identified any relevant prejudice it has suffered, the Panel admits the Response into the record in this administrative proceeding.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of Benelux Trademark No. 1004796 for JDM as discussed in Section 4 above.
The Complainant also claims entitlement to rights in JDM as an unregistered trademark and in effect under unfair competition laws.
The Complainant has been in existence since 1983. It has also provided evidence that it has offices or a representative in the Netherlands, the United Kingdom of Great Britain and Northern Ireland (“UK”), Germany and France. It has also submitted evidence of an invoice evidencing a sale of its products respectively to a customer in the UK, Germany, Denmark and Italy. The invoices each show the use of a device element above the phrase “JDM SOFTWARE”, where the letters “JDM” are picked out in a contrasting red colour.
There is no evidence of sales revenues. There is no evidence of advertising and promotional expenditure. There is no evidence of public recognition of the Complainant’s trademark. There is no evidence of consumer surveys. As noted in Section 4 above, the Complainant’s own Press Release in June 2016 indicated that the Complainant’s business in the USA, where the Respondent is based, was at an inchoate stage.
The Panel also notes that the Respondent has submitted evidence of numerous other trademarks registered for, or featuring, “JDM” by numerous other businesses. The Respondent has also submitted evidence showing that the acronym has numerous uses in many different fields.
In these circumstances, and bearing in mind that the sign over which the Complainant claims unregistered rights consists only of three letters, the majority of the Panel considers that the evidence submitted falls well short of what is required to support the Complainant’s claimed rights in an unregistered trademark: see in particular WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) section 1.3. Certainly, the evidence does not rise to the level of allowing the Panel to find, as the Complainant contends, that the Respondent must have been aware of the Complainant and its trademark rights.
The second stage of this inquiry simply requires a visual and/or aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible to disregard the generic Top-Level Domain (gTLD) component as a functional aspect of the domain name system: WIPO Overview 3.0, section 1.3. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
As the disputed domain name differs from the Complainant’s registered trademark only by the addition of the gTLD, therefore, the Panel finds that the Complainant has established that the disputed domain name is identical with the Complainant’s trademark and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Given the difficulty in proving a negative, however, it is usually sufficient for a complainant to make out a prima facie case that the respondent lacks rights or legitimate interests. If the complainant does establish a prima facie case, the burden of production shifts to the respondent. See, e.g.,WIPO Overview 3.0, section 2.1.
There is no dispute between the parties about the way in which the Respondent uses the disputed domain name. The dispute relates to the characterisation and the possible operation of Policy, paragraph 4(c)(i) above.
The Complainant contends that the use of the disputed domain name to resolve to a website with PPC links and an offer to sell the disputed domain name at what the Complainant characterises as a “clearly disproportionate price” cannot be considered a good faith offering of goods or services under the Policy. The Complainant invokes WIPO Overview 3.0, section 2.9 in support.
Section 2.9 of WIPO Overview 3.0 fairly summarises the weight of UDRP panel decisions when it says that:
“the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users.”
Similarly, section 2.10.2 of WIPO Overview 3.0 summarises the general approach of UDRP panels where the disputed domain name consists of an acronym in the following terms:
“For a respondent to have rights or legitimate interests in a domain name comprising an acronym, the respondent’s evidence supporting its explanation for its registration (and any use) of the domain name should indicate a credible and legitimate intent which does not capitalize on the reputation and goodwill inherent in the complainant’s mark.”
In the present case, the disputed domain name consists of a three letter acronym, which the evidence shows has a very wide range of potential associations and is in fact in use by numerous business other than the Complainant. The Respondent asserts without contradiction from the Complainant that “JDM” is commonly used as an abbreviation for “Japanese Domestic Market” in respect to automobiles and automobile parts, and submits evidence that all its use of the disputed domain name has been in connection with that market.
The Respondent says it obtained the registration without knowledge of the Complainant. Rather, the Respondent says it obtained the registration of the disputed domain name for its intrinsic value as a three letter acronym. The Respondent’s claim is not inherently implausible in this case. The evidence also shows that the Respondent has in fact registered numerous descriptive terms or acronyms, including some other three letter acronyms, as domain names.
The Respondent also appears to use those domain names, even where offered for sale, for PPC links related to the subject matter associated with the descriptive term or if relevant, acronym.
In the case of the disputed domain name, the Respondent contends that one significant meaning or association of “JDM” is Japanese Domestic Market. The Respondent has provided evidence that the expanded term, and the acronym, are in fact used extensively to identify a field of interest in cars and accessories for such cars made available in Japan having different characteristics and specifications to the same models of Japanese cars offered for sale outside Japan. According to this evidence, Japanese cars released on the domestic Japanese market often include numerous enhancements and customisations and also often have available to them spare parts which are not available through official channels outside Japan. There is, however, within Japan and increasingly overseas (including especially the USA) considerable interest in obtaining these enhancements and other products. Thus, there appears to be a wide acceptance within circles particularly interested in Japanese cars of the acronym JDM as standing for cars and components available on the Japanese domestic market.
Taking all these matters into account, the Panel finds that the Respondent has rights or legitimate interests in the disputed domain name in accordance with the principles summarized in WIPO Overview 3.0, sections 2.10.2 and 2.9.
Accordingly, the Complainant has not established the second requirement under the Policy and the Complaint must be dismissed.
C. Registered and Used in Bad Faith
In view of the Panel’s findings under the second limb of the Policy, no good purpose would be served by consideration of the third requirement under the Policy.
D. Reverse Domain Name Hijacking
The Respondent has not formally requested a finding that the Complainant has engaged in reverse domain name hijacking.
Paragraph 15(e) of the Rules provides, in part:
“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.”
For this purpose, paragraph 1 of the Rules defines “Reverse Domain Name Hijacking” to be “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”. It is notable that reverse domain name hijacking is only an example of the types of situation where such a finding may be made.
Under paragraph 15(e) of the Rules, therefore, the Panel has a duty to consider and, if appropriate, make a ruling on whether the Complaint constitutes an abuse of the administrative proceeding.
The fact that a Complaint has failed does not automatically result in a finding of reverse domain name hijacking. In the present case, however:
(a) The Complainant and its lawyers were on clear notice of how the Respondent was using the disputed domain name before the Complainant filed the Complaint.
(b) The Respondent’s use was the same, or essentially the same, as the use made by DomainInvest S.A. before the latter transferred the disputed domain name to the Respondent.
(c) The lawyers for DomainInvest S.A. put the Complainant and its lawyers – the same lawyers who signed the Complaint – on clear notice of the applicable principles under the Policy.
(d) The Complainant and its lawyers were plainly aware of the positions under the Policy set out in the WIPO Overview 3.0, having referred specifically to section 2.9 of the WIPO Overview 3.0 in the Complaint.
(e) The Complainant and its lawyers must or should also have been aware of the nature of “JDM” as an acronym having many different meanings and used by many people in different fields. It must also have been aware that its own use of the term, if used by itself, was in a limited and particular field.
(f) The Complainant and its lawyers equate the Respondent with the disputed domain name’s prior owner, DomainInvest S.A., without any evidence and without even an allegation of affiliation between the two entities.
(g) The Complainant and its lawyers disclosed only part of its correspondence with DomainInvest S.A., being the last letter alleging that DomainInvest S.A. had acted in bad faith. The Complainant and its lawyers chose not to disclose the full correspondence which put the parties’ dealings in a rather different light and explained why a UDRP complaint would fail.
(h) The Complainant and its lawyers have made allegations about the lawyer representing DomainInvest S.A., the only purpose of which can be to suggest underhanded and bad faith conduct by DomainInvest S.A. and the Respondent. Those allegations were unsupported by any evidence. The Complainant, however, has not sought to explain the grounds on which they were based nor to withdraw them.
In these circumstances, the majority of the Panel considers it should find that the Complaint has been brought in bad faith. The Complainant was aware that the disputed domain name had intrinsic value as a three letter acronym and was not being used to target the Complainant or trade on its goodwill before it filed the Complaint.
Accordingly, the majority of the Panel finds that the Complainant has abused the administrative proceeding and engaged in reverse domain name hijacking.
6. Decision
For the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Presiding PanelistFlip Jan Claude Petillion
PanelistRichard G. Lyon
Panelist
Date: August 23, 2017Opinion Dissenting from Finding of RDNH – Flip J.C. Petillion
The Panel denied the transfer of the disputed domain name and my colleague Panelists make a finding of Reverse Domain Name Hijacking (RDNH).
The Respondent did not specifically ask for such relief. However, following some early cases to the contrary, panels have more recently clarified that, for an RDNH finding to be made, it is not necessary for a respondent to seek an RDNH finding or prove the presence of conduct constituting RDNH (see WIPO Overview 3.0, section 4.16).
Nevertheless, in my opinion, a finding of reverse domain name hijacking is not appropriate in this case.
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 RDNH 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.”
This Panelist cannot conclude to bad faith or abuse in this case. Rather, this Panelist sees a complainant, confronted with a complex situation, trying to obtain the transfer of a domain name identical to a trademark in which it has rights and being overly confident of its own arguments. The Complainant may perhaps have been somewhat aggressive in its attempt to acquire the disputed domain name, being convinced that, while it has registered trademark rights in the JDM sign, the Respondent is only using the disputed domain name for PPC purposes, and is offering it for sale at an amount which is clearly in excess of the Respondent’s
out-of-pocket costs directly related to the domain name.The disputed domain name was registered post-registration of the trademark (the transfer date is relevant here; not the initial registration date by a previous holder), used for a PPC website (which Complainant may have erroneously believed to be an unconditional strong argument in support of bad faith). The Respondent acts as domainer who transacted a purchase of the disputed domain name utilizing “Escrow.com” in the amount of USD 45,000 on April 17, 2017 and offered the disputed domain name for sale at the price of USD 500,000.
UDRP Panels have consistently found that the mere lack of success of a complaint is not itself sufficient for a finding of RDNH.
The Complainant holds trademark rights which are recognized by the Panel. The mark remained unregistered until November 14, 2016. The Complainant has shown the existence and use of an unregistered trademark pre-registration of the disputed domain name (i.e., since the eighties).
The file does not show that the Complainant knew it could not succeed as to any of the required three elements as these were the specific subject of discussion. The confirmation by the Panel of the points of view of the Respondent or the previous domain name holder sent to the Complainant before the UDRP Complaint was filed, does not correspondent to said knowledge. In this case, it is unclear to this Panelist whether the Complainant should have clearly known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the Complaint. This Panelist does not find that the Complainant is unreasonably ignoring established Policy precedent. The Complainant’s file may have been incomplete, but this Panelist never felt to be misled as a panelist. The additional context provided by the Respondent does not make this Panelist change its views. The Respondent revealed additional correspondence between the Complainant and a previous holder of the disputed domain name, in which the previous domain name holder argued it was a legitimate and rightful holder of the disputed domain name. The fact that the Respondent was able to produce this correspondence within the framework of these proceedings might actually support Complainant’s argument that there is a close link between the previous holder of the disputed domain name and the Respondent. In this Panelist’s view, the Complainant was under no obligation to produce all correspondence with a previous holder of the disputed domain name, as such correspondence is related only remotely to the present dispute with the Respondent.
In this case, the Complainant used the alternative dispute resolution mechanism offered by the Rules and it paid the costs. The fact that the Complainant is being represented does not make this Panelist apply another standard to find for RDNH or not.
The Complainant may have believed that domaining is not admissible under any circumstances. We should be reminded that the domaining business was not an activity which was intended when the Domain Name System was created. Admittedly, the domaining business is less known in Europe than in other parts of the world, and trademark holders keep being surprised by speculative business models that are developed around the scarce resource that domain names are.
If a defence prepared by a previous holder of the disputed domain name in response to a complainant’s allegations pre-filing of an UDRP case would withhold a complainant to proceed with a UDRP proceeding because it may face an increased likelihood of a finding of RDNH, that would be detrimental to what the UDRP is meant to be.
The Complainant’s Complaint was denied, and this Panelist agrees with the reasons for it being denied. However, this Panelist does not believe this case is presenting sufficiently clear facts to allow a panel to find RDNH.
Flip Jan Claude Petillion
Panelist1 The Response erroneously stated that the Complainant, rather than the Respondent, had elected the three-member panel. In fact it was the Respondent that made the election and paid the additional fee for a three-member panel, see Rules, paragraph 5(c)(iv); Supplemental Rules, paragraph 8(a).
