A UDRP against the domain name, Omada.com, was successfully fended off by the domain’s registrant.
Registered in 2000, Omada.com has been owned and used by a software developer, who delivered services via the web site over the course of several years.
Currently, his dog, Lucky, is being featured on the web site, and it seems it won the panelist’s heart. 😀
Omada means “team” in Greek, and the term is trademarked in the US; the Complainant, Omada A/S, is a provider of innovative solutions and services for identity management and access governance based in Denmark.
Interestingly, when Omada A/S applied for the trademark at the USPTO in 2010, they asserted that “OMADA has no meaning in a foreign language.”
That was 10 years after the domain Omada.com was registered.
Unlike the Starr.com case, the domain’s registrant responded, and the decision was in his favor, despite having offered the domain for $1,000,000 dollars to the Complainant, to “make them go away.”
Full details follow, after a photo of Lucky, the dog. 😀
Lucky, the dog of the Omada.com owner.
Omada A/S v. KoHaw Nieh / KoHaw Neih
Claim Number: FA1708001743642
PARTIES
Complainant is Omada A/S (“Complainant”), represented by Julia Huston of Foley Hoag LLP, Massachusetts, USA. Respondent is KoHaw Nieh / KoHaw Neih (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <omada.com>, registered with Tucows Domains Inc.
PANEL
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
David P. Miranda, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the Forum electronically on August 8, 2017; the Forum received payment on August 8, 2017.
On August 14, 2017, Tucows Domains Inc. confirmed by e-mail to the Forum that the <omada.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 17, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 6, 2017 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@omada.com. Also on August 17, 2017, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on September 6, 2017.
On September 8, 2017 an Additional Submission was received indicating Complainant’s willingness to file a joint withdrawal. There has been no such further filing.
On September 12, 2017, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed David P. Miranda, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant Omada A/S is a provider of innovative solutions and services for identity management and access governance based in Denmark. Since 2000, Complainant has enabled organizations across the world to manage and control business processes around users’ access rights to systems and applications, helping customers to manage and identify risks, protecting people and assets, as well as maximizing efficiency and achieving sustainable compliance. Complainant registered the OMADA mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,097,612, registered Feb. 14, 2012). See Compl., at Attached Ex. 3. Respondent’s <omada.com> domain name is identical to Complainant’s mark.
Respondent has no rights or legitimate interests in the <omada.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent passively holds the disputed domain name. See Compl., at Attached Ex. 7.
Respondent registered and uses the <omada.com> domain name in bad faith as Respondent offered to sell the disputed domain name to Complainant for $1,000,000.00 in an email communication with Complainant. See Compl., at Attached Ex. 5. Further, Respondent passively uses the disputed domain name. See Compl., at Attached Ex. 7. Respondent had full knowledge of Complainant’s rights in the OMADA mark at the time it registered the domain name.
B. Respondent
Respondent KoHaw Nieh claims rights or legitimate interests in the <omada.com> domain name. Respondent is commonly known by the OMADA mark for its legitimate business, Omada Clinic Information Organizer, and is commonly known by that mark. Respondent registered and has continuously used the disputed domain name since 2000 in connection with the bona fide preparation of a product and the bona fide offering of goods or services. Respondent initially registered the disputed domain name to assist in the commercial product development known as the Omada Clinic Information Organizer. See Resp., at Attached Annexes 1-6, 10, 12 (statements of support and articles of incorporation). While Respondent did not acquire the funds to continue to develop the business, Respondent individually worked to further the vision of its legitimate Omada business. Currently, Respondent uses the disputed domain name to post photos of Respondent’s dog, Lucky.
Respondent did not register and use the <omada.com> domain name in bad faith. Respondent has turned down multiple offers to purchase the domain name, and Respondent has no desire to sell it. See Resp., at Attached Annex 13 (email chain with OMADA HEALTH INC.). Respondent only solicited the domain name to Complainant for the unreasonable $1,000,000.00 amount in order to get Complainant to go away and leave Respondent alone. Further, Complainant initiated the offer to purchase the domain name from Respondent. Additionally, Respondent registered and has continuously used the disputed domain name to further its Omada Clinic Information Organizer product. Finally, Respondent could not have known about Complainant’s business at the time of registration because, based on Complainant’s own assertions, it began operation in 2009, and Respondent registered the domain name in 2000.
FINDINGS
Complainant has failed to establish all elements of the policy and its claim is therefore denied.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
Complainant claims it registered the OMADA mark with the USPTO (e.g. Reg. No. 4,097,612, registered Feb. 14, 2012). See Compl., at Attached Ex. 3. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, Complainant has established rights in the OMADA mark.
Complainant next argues that Respondent’s <omada.com> domain name is identical to Complainant’s mark. The disputed domain name consists of the OMADA mark in its entirety and adds the generic top-level domain (“gTLD”) “.com.” Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). The Panel finds that the <omada.com> domain name is identical to the OMADA mark under Policy ¶4(a)(i).
Rights or Legitimate Interests
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent has no rights or legitimate interests in the <omada.com> domain name. Relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “KoHaw Nieh / KoHaw Neih” as the registrant. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the OMADA mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the disputed domain name prior to its registration, and Complainant has not given Respondent permission to use the disputed domain name. Accordingly, Respondent is not commonly known by the <omada.com> domain name under Policy ¶ 4(c)(ii).
Registration and Use in Bad Faith
The Panel finds that Complainant failed to meet its burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Respondent claims that it has used the disputed domain name since 2000 in connection with the bona fide preparation of a product and the bona fide offering of goods or services. Respondent claims to be a software developer who uses the domain name to further its product. Using a domain name to provide legitimate goods or services can show that a respondent has rights and legitimate interests in a disputed domain name. See Chicago Bd. Options Exch. Inc. v. Private, FA 804703 (Forum Nov. 29, 2006) (finding it a persuasive factor that the respondent had used the disputed domain name for over seven years in concluding that the respondent had rights or legitimate interests in the disputed domain name). Respondent also notes that it currently displays photos of his dog, Lucky, on the resolving webpage.
Respondent claims it did not register and use the <omada.com> domain name in bad faith and for the sole purpose of selling the disputed domain name to a third-party. Respondent states it has turned down multiple offers to purchase the domain name, and Respondent has no desire to sell it. See Resp., at Attached Annex 13 (email chain with OMADA HEALTH INC.).
Additionally, Respondent claims it has continuously used the domain name to further its legitimate Omada Clinic Information Organizer product. Legitimately using a disputed domain name can sufficiently show that a respondent registered a domain name in good faith. See Election Systems & Software, Inc. v. Stewart, FA 805224 (Forum Nov. 14, 2006) (Where the respondent registered the disputed domain name to reflect one of the products available from Respondent, the panel did not find bad faith). Respondent provides articles of incorporations for its alleged business, as well as statements from various individuals. See Resp., at Attached Annexes 1-6, 10, 12.
Finally, Respondent could not have known about Complainant’s business at the time of registration because, based on Complainant’s own assertions, it began operation in 2009, and Respondent registered the domain name in 2000. See It Takes 2 v. C.,J., FA 384923 (Forum Feb. 15, 2005) (“[I]n the absence of any evidence of knowledge on the part of Respondent of Complainant, its mark or its services at the time Respondent acquired the domain name, the Panel finds Complainant has failed to establish registration in bad faith.”). The WHOIS registration information for the <omada.com> domain name shows that Respondent registered the domain name on May 14, 2000. See Resp., at Attached Annex 1. The trademark registration for the OMADA mark by Complainant indicates a claimed first use of December 4, 2009. See Compl., at Attached Ex. 3. Accordingly, the Panel agrees with Respondent that it did not have knowledge of Complainant’s OMADA mark at the time of registration.
Reverse Domain Name Hijacking
Since Complainant has satisfied Policy ¶ 4(a)(i), and parts of elements of Policy ¶ 4(a), Complainant has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
Even though Complainant has failed to satisfy its burden under the Policy, this does not necessarily render a finding of reverse domain name hijacking on behalf of Complainant in bringing the instant claim. See ECG European City Guide v. Woodell, FA 183897 (Forum Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.”); see also Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001) (noting that a finding of reverse domain name hijacking requires bad faith on the complainant’s part, which was not proven because the complainant did not know and should not have known that one of the three elements in Policy ¶ 4(a) was absent).
DECISION
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <omada.com> domain name REMAIN WITH Respondent.
David P. Miranda, Esq., Panelist
Dated: September 26, 2017
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