#ScheduleFlow .com : Another #UDRP delivers a Reverse Domain Name hijacking decision

The registrant of ScheduleFlow.com is an Australian company, using the domain name since 2009. Currently, it forwards to FieldInsight.com.

Duoserve, Inc. d/b/a ScheduFlow, owns a trademark for SCHEDUFLOW and filed a UDRP at the National Arbitration Forum.

That mark, as the Respondent of this UDRP pointed out, does not match the two word composite of the domain, which consists of the words “Schedule” and “Flow”.

The panel’s decision was for the Respondent to keep the domain, and a finding of Reverse Domain Name Hijacking was delivered as well:

Respondent alleges that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this proceeding. Respondent contends that Complainant is attempting to deprive Respondent, the rightful, registered holder of the <scheduleflow.com> domain name, of its rights to use the disputed domain name. Respondent argues that Complainant has been unable to file any evidence that goes to the essential issue of its trademark rights and has instead relied solely on bare, unsupported assertions, which would clearly indicate to Complainant’s competent counsel that it could not prove the second or third element of the Policy.

Further, Respondent claims that Complainant has known at all times that Respondent is commonly known by the disputed domain name, as the Complaint itself names Respondent as ScheduleFlow Pty Ltd which corresponds directly to the disputed domain name. Finally, Respondent contends that, as discussed above, Complainant’s submissions on bad faith simply recites various types of bad faith conduct accompanied by references to Panel decisions which bear no resemblance to the present fact situation and are largely irrelevant.

Thus, the Panel finds that Complainant knew or should have known that it was unable to prove that Respondent lacks rights or legitimate interests in the <scheduleflow.com> domain name and that Respondent registered and is using the disputed domain name in bad faith.

Full details of this decision follow:

Duoserve, Inc. d/b/a ScheduFlow v. Paul Tyrrell / ScheduleFlow Pty Ltd

Claim Number: FA1711001759845

PARTIES

Complainant is Duoserve, Inc. d/b/a ScheduFlow (“Complainant”), represented by Steven L. Rinehart, Utah, USA. Respondent is Paul Tyrrell / ScheduleFlow Pty Ltd (“Respondent”), represented by Victor Ng, Copper Mills Lawyers, Melbourne, Australia.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <scheduleflow.com>, registered with NetRegistry Pty Ltd.

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

The Honorable Neil Anthony Brown QC, Honorable John J. Upchurch (Ret.), and Ho-Hyun Nahm, Esq.(Chair) as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on November 25, 2017; the Forum received payment on November 25, 2017.

On November 29, 2017, NetRegistry Pty Ltd. confirmed by e-mail to the Forum that the <scheduleflow.com> domain name is registered with NetRegistry Pty Ltd. and that Respondent is the current registrant of the name. NetRegistry Pty Ltd. has verified that Respondent is bound by the NetRegistry Pty Ltd. 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 December 1, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 21, 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@scheduleflow.com. Also on December 1, 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 December 21, 2017. On December 26, 2018 a timely Additional Submission from Complainant was received.On January 2, 2018 a timely Additional Submission from Respondent was received.

On January 5, 2018, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed The Honorable Neil Anthony Brown QC, Honorable John J. Upchurch (Ret.), and Ho-Hyun Nahm, Esq.(Chair) as Panelists.

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

i) Complainant was formed for the purpose of offering desktop and web-based scheduling and customer management services. Complainant’s software products have been placed in major distribution chains since 2008, including Office Depot, Staples, Newegg, Amazon, Fry’s Electronics, and hundreds of others. Complainant registered the SCHEDUFLOW mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,758,958, registered June 23, 2015). See Compl. Annex I. Complainant also has rights dating back to at least 2008, when it began selling its ScheduFlow consumer management service software. Since then, Complainant has built valuable goodwill and a strong reputation in the SCHEDUFLOW mark, and aggressively advertises its ScheduFlow product and services online. See Compl. Annexes D-H, N (evidence of generate goodwill and sales figures). Respondent’s <scheduleflow.com> domain name is confusingly similar to Complainant’s mark as it wholly incorporates Complainant’s mark, with the exception of the letter “s,”(sic) and appends the generic top-level domain (“gTLD”) “.com.”

ii) Respondent has no rights or legitimate interests in the <scheduleflow.com> domain name. Respondent intentionally attempts to divert Internet users to its website, at which it passively holds the domain and fails to use it for an active purpose. See Compl. Annex M.

iii) Respondent registered and uses the <scheduleflow.com> domain name in bad faith, as Respondent registered the domain name to prevent Complainant from reflecting its mark in the principal gTLD. Further, Respondent registered the disputed domain name after Complainant accrued trademark rights in the SCHEDUFLOW mark for the purpose of interfering with Complainant’s business affairs by impersonating Complainant and trading on the goodwill of Complainant’s mark to offer illegitimate competing services. See Compl. Annex M. Finally, Respondent registered the domain name with actual and constructive knowledge of Complainant’s SCEDUFLOW mark as it previously registered a different domain name, <scheduleflow-usa.com>, which resolved to a webpage offering competing services as Complainant. See Compl. Annexes O-P.

B. Respondent

i) The disputed domain name is not confusingly similar to Complainant’s SCHEDUFLOW mark, as the <scheduleflow.com> domain name is comprised of the ordinary words SCHEDULE and FLOW, whereas Complainant’s mark is a coined word, SCHEDUFLOW, that has no meaning.

ii) The evidence provided by Complainant establishes that Respondent does have rights or legitimate interests in the disputed domain name because Respondent is commonly known by the SCHEDULEFLOW mark, and provided service management software services with the domain name prior to the initiation of this dispute. See Resp. Annexes F & K (screenshots of the domain name in 2010 and 2017). Further, all of the evidence provided by Complainant that Respondent had actual knowledge of Complainant’s business when it registered the domain name in 2009 is inadequate, as Complainant only makes self-serving, conclusory statements backed up by evidence of existence in 2017, not 2009.

iii) Respondent did not register the <scheduleflow.com> domain name in bad faith. Complainant’s allegation that Respondent registered the domain name to “deprive Complainant of the ability to reflect its mark in the principal gTLD” is plainly without merit, as Complainant is the owner of the <scheduflow.com> domain name which directly reflects Complainant’s exact trademark. Further, all of the evidence provided by Complainant that Respondent had actual knowledge of Complainant’s business when it registered the domain name in 2009 is inadequate, as Complainant only makes self-serving, conclusory statements backed up by evidence of existence in 2017, not 2009. The best argument Complainant can put forth is based on Respondent’s potential constructive knowledge of Complainant’s mark, which has no application under the Policy.

iv) Respondent alleges that the Complaint should be barred by the doctrine of latches.

v) Respondent alleges that the Panel should find reverse domain name hijacking.

C. Additional Submissions

i) Actual Knowledge by Respondent of Complainant

a) Respondent is misrepresenting the actual knowledge it had of Complainant when registering the Disputed Domain after Complainant’s first use date, which discredits all of Respondent’s allegations. Annexed hereto as Annex AA from the WayBack Machine is a screenshot of Respondent’s website at <scheduleflow.com> from September of 2011 showing Respondent was copying content from Complainant’s website in 2011.

b) Respondent claims in his Response that he changed his company name in 2010 and registered the Disputed Domain in 2009 because it was a “better” name. (Resp. ¶ 4.) It is impossible that in researching the value of the Disputed Domain Respondent did not have actual knowledge of Complainant when registering it (even if the 2009 registration date were to be accepted).

c) The graph in the Additional Submission summarizes the keywords and ranking positions of Complainant from 2008 to 2012 for keywords such as “calendar software,” “scheduling software,” and “employee schedule software.” In the 15 month period from August of 2009 to December of 2010, during which Respondent claims he changed his name, Complainant’s Google advertisements had over four million impressions as manifest by the graphs.

d) Respondent is deliberately using <scheduleflow.com> to benefit from the spelling mistake which Complainant’s customers commonly make, namely to misspell “ScheduFlow” as “Scheduleflow” – a mistake which is not commonly made in reverse. Complainant has received numerous emails evidencing actual confusion on the part of Complainant’s customers between Complainant and Respondent. Samples of these emails are shown below, and include customers complaining they logged into Respondent’s site believing it was Complainant’s as well as a customer using the word “confusing” to describe Complainant and Respondent’s domain names.

e) Whether registered in 2009 or 2017, the Disputed Domain was registered after the 2008 first use date in Complainant’s registered Mark and after the evidence above and in the Complaint establishes Complainant was making extensive use of the Mark. The disputed domain is confusingly similar to Complainant’s mark, is being used to compete with Complainant, and was registered in bad faith. Respondent’s registration and use of the disputed domain are in violation of the Policy.

Respondent’s Additional Submission

i) Complainant’s assertion on the alleged actual knowledge on the side of Respondent is tenuous at best is made absent any real evidence. The sentences Complainant submitted clearly bear no resemblance to one another. Complainant’s allegation that the sentences are evidence that Respondent has copied Complainant’s content is entirely fanciful and belie the hopeless nature of the entire Complaint. Respondent’s internal deliberations that led to the selection of the Scheduleflow name and registration of the disputed domain name are as set out in Response. The extract of Google Adwords reports that Complainant has chosen to provide are lacking in detail and are of no probative value. In doing so, Complainant has made it impossible to determine what these extracts show, how the data has been compiled and why there are discrepancies in the selected data. Accordingly, the extracts of Google Adwords reports are entirely unreliable for evidentiary purposes.

ii) Alleged Confusion: Complainant’s attempt to portray the email as evidence that Respondent is engaging in fraud is a blatant attempt by Complainant to mislead the Panel. The total evidence Complainant has adduced of actual confusion are two emails – one from 2013 and the other from 2017. The paucity of the evidence – two instances of confusion, four years apart, despite the disputed domain name having been registered for eight years – indicates that there is, in fact, no real confusion.

iii) No evidence Complainant had common law rights: Google Adwords reports are inadequate and unreliable and, at best, show a modest level of exposure at some point of time. Complainant has not adduced any further evidence to support its somewhat grandiose bare assertions of world-wide fame and recognition.

iv) Respondent had no knowledge of Complainant or its unregistered mark: Respondent registered the disputed domain name without knowledge of Complainant or its unregistered mark and has used the disputed domain name for over 7 years in connection with the bona fide offering of Respondent’s field service management software.

FINDINGS

i) Complainant registered the SCHEDUFLOW mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,758,958, registered June 23, 2015). There is no adequate evidence of use or secondary meaning, and thus the common law rights to Complainant’s mark is not recognized. The disputed domain name is not confusingly similar to Complainant’s SCHEDUFLOW mark.

ii) Respondent first registered the <scheduleflow.com> domain name on December 4, 2009.

iii) Respondent is commonly known by the <scheduleflow.com> domain name. Respondent provided legitimate service management software services under the <scheduleflow.com> domain name prior to the initiation of this dispute. Respondent was using his corporate name as the domain name which has been recognized many times to give rights or legitimate interests in the domain name.

iv) Complainant’s allegation that Respondent registered the domain name to “deprive Complainant of the ability to reflect its mark in the principal gTLD” is plainly without merit. All of the evidence provided by Complainant insufficiently demonstrates Respondent’s alleged actual knowledge.

v) The Panel finds that the doctrine of laches does not apply as a defense in the present proceeding.

vi) Reverse Domain Name Hijacking has occurred.

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 contends that Complainant registered the SCHEDUFLOW mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,758,958, registered June 23, 2015). See Compl. Annex I. Complainant also has rights dating back to at least 2008, when it began selling its ScheduFlow consumer management service software. Since then, Complainant has built valuable goodwill and a strong reputation in the SCHEDUFLOW mark, and aggressively advertises its ScheduFlow product and services online. See Compl. Annexes D-H, N (evidence of generate goodwill and sales figures). Complainant further contends that Respondent’s <scheduleflow.com> domain name is confusingly similar to Complainant’s mark as it wholly incorporates Complainant’s mark, with the exception of the letter “s,” and appends the generic top-level domain (“gTLD”) “.com.”

In response to Complainant’s contentions, Respondent contends that the disputed domain name is not confusingly similar to Complainant’s SCHEDUFLOW mark, as the <scheduleflow.com> domain name is comprised of the ordinary words SCHEDULE and FLOW, whereas Complainant’s mark is a coined word, SCHEDUFLOW, that has no meaning.

The Panel is of the view that anyone looking at the disputed domain name and then looking at Complainants trademark would have to say that the trademark owner has gone out of his way to make up some fancy word that is not the same as the normal, generic words that people understand, but something unique and different, so they would not be confused.

The case mounted to show someone actually was confused is weak. The Panel duly notes Respondent’s contention that the total evidence Complainant has adduced of actual confusion consists of two emails – one from 2013 and the other from 2017. The paucity of the evidence – two instances of confusion, four year apart, despite the disputed domain name having been registered for eight years – indicates that there is, in fact, no real confusion. Also, in deciding on confusing similarity, surely we are entitled to assume that people in business who are using the Internet can actually read and spell and are acting like rational people in making decisions. The other thing the Panel points out is the allegation by Complainant that: “The disputed domain wholly incorporates Complainant’s Marks with the exception of the letter “s.” However, the Panel finds “there is no “s” dropped from Complainant’s trademark ( or added to it).”

The Panel notes that Complainant contends that it has rights dating back to at least 2008, when it began selling its ScheduFlow consumer management service software. Since then, Complainant has built valuable goodwill and a strong reputation in the SCHEDUFLOW mark, and aggressively advertises its ScheduFlow product and services online. See Compl. Annexes D-H, N (evidence of generate goodwill and sales figures). However, the Panel finds that it has not been made out on the balance of probabilities and concludes that there is no adequate evidence of use or secondary meaning, and thus the common law rights to Complainant’s mark is not recognized. The Panel agrees with Respondent’s contention that Google Adwords reports Complainant submitted are inadequate and unreliable and, at best, show a modest level of exposure at some point of time. Complainant has not adduced any further evidence to support its somewhat grandiose bare assertions of world-wide fame and recognition. Even if it had a common law trademark, it can only be for SCHEDUFLOW. As the Panel has concluded above, the Panel does not find that the disputed domain name is confusingly similar to Complainant’s mark.

As such, the Panel determines that Complainant failed to establish the first element of Policy Paragraph 4(a).

Rights or Legitimate Interests

The Panel holds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Forum Aug. 24, 2006) (holding that Complainant did not satisfactorily meet its burden and as a result found that Respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Forum Aug. 9, 2006) (finding that Respondent overcame Complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).

The Panel notes that Respondent states that it is commonly known by the <scheduleflow.com> domain name based on evidence submitted by Complainant. Presumably, Respondent refers to the WHOIS information and the content available on Respondent’s webpage located at the disputed domain name, of which Respondent also provides copies. See Compl. Annexes M, P, & J; see also Resp. Annexes E, F, & K. As the Panel agrees with Respondent, that the evidence presented by Complainant (and subsequently by Respondent) establishes that Respondent appears to be commonly known by the <scheduleflow.com> domain name, the Panel holds as such under Policy ¶ 4(c)(ii).

Respondent contends that it provided legitimate service management software services under the <scheduleflow.com> domain name prior to the initiation of this dispute. A respondent may use arguments of providing legitimate services with a disputed domain name to establish rights and legitimate interests under Policy ¶ 4(c)(i) and (iii). See Modern Props, Inc. v. Wallis, FA 152458 (Forum June 2, 2003) (finding that Respondent’s operation of a bona fide business of online prop rentals for over two years was evidence that Respondent had rights or legitimate interests in the disputed domain name). Respondent provides screenshots of the resolving webpage, one from 2010 and one from 2017, both of which appear to display material related to scheduling services. See Resp. Annexes F & K. Accordingly, the Panel agrees with Respondent that it has offered services under the domain name since as early as 2010, establishing rights and legitimate interests in the domain name.

The Panel is of the view that the case seems to come within paragraph 4 (c) (i) as Respondent was using the name for a bona fide offering of goods before notice of the dispute. It would not be bona fide if the whole thing was a devious exercise to steal Complainant’s name and business, but that case is not made out. It seems more probable than not, that Complainant was sticking to the US market and was not as well known overseas as it thinks. After all, the Panel is concerned about the time between June 11, 2008 ( Complainant’s first sale) and December 4, 2009 ( registration of the disputed domain name) and it is possible but improbable in the absence of real evidence that Complainant could have built up a reputation overseas in that time. The Panel notes that Complainant has not submitted evidence such as figures of overseas sales ,which must be available to Complainant if it exists. Accordingly, the Panel must conclude that this is one of those many areas in this case where Complainant’s case consists of assertions unsupported by evidence.

As mentioned above under the section for Policy ¶ 4(a)(i), Respondent argues that the terms of the <scheduleflow.com> domain name are common and ordinary, and therefore, Complainant does not have an exclusive monopoly of the terms on the Internet. The Panel is of the view that the argument that the choice of the disputed domain name was to copy Complainant does not hold up, either chronologically or as a tactic. The Panel finds on the evidence that Respondent had a right or legitimate interest because it chose this name for its disputed domain name as it was the new name for its product. Also Respondent was using his corporate name as the domain name which has been recognized many times to give a right or legitimate interest in a domain name.

As the Panel agrees with Respondent, the Panel finds that Respondent can establish rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Forum Jan. 5, 2004) (finding that Respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes); see also Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Forum July 23, 2004) (stating that “Complainant’s rights in the QWEST mark are limited to its application to the tele-communications industry,” where a variety of other businesses used the mark in unrelated fields).

Therefore, the Panel determines that Complainant failed to establish the second element of Policy Paragraph 4(a).

Registration and Use in Bad Faith

The Panel finds that Complainant failed to meet the 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 Complainant failed to establish that 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 Respondent acted in bad faith).

As the Panel concludes that Respondent has rights or legitimate interests in the <scheduleflow.com> domain name pursuant to Policy ¶ 4(a)(ii), the Panel also finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found Respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).

Respondent argues that Complainant’s allegation that Respondent registered the domain name to “deprive Complainant of the ability to reflect its mark in the principal gTLD” is plainly without merit, as Complainant is the owner of the <scheduflow.com> domain name which directly reflects Complainant’s exact trademark. In cases where a complainant already has a domain name reflecting its trademark, Panels regularly hold that a respondent did not register a domain name in bad faith under Policy ¶ 4(b)(ii). See Minn. Mining and Mfg. Co. v. Overbey, D2001-0727 (WIPO Oct. 15, 2001) (finding that Policy ¶ 4(b)(ii) was inapplicable because Complainant already had registered and used a domain name containing its mark and thus, “the Panel does not find that [Complainant] has been deprived of its ability to register or use the mark as a domain name”). Respondent provides the WHOIS information for the <scheduflow.com> domain name, which lists the registrant as “Merima Jakirlic / Duoserve.” See Resp. Annex I. Respondent also provides a brochure of the Duoserve business, which appears to market the ScheduFlow product referenced by Complainant. See Resp. Annex J. It seems unlikely Respondent would have been motivated by bad faith. The Panel notes that the two products of Complainant and Respondent were significantly different and the markets likewise being different.

Accordingly, as the Panel agrees that Complainant owns a domain name reflecting its own mark, then the Panel finds that Respondent did not register the <scheduleflow.com> domain name to prevent Complainant from registering a domain name reflecting its mark.

Further, Respondent contends that all of the evidence provided by Complainant of Respondent’s alleged actual knowledge of Complainant’s business when it registered the domain name in 2009 is inadequate, as Complainant’s only makes self-serving, conclusory statements backed up by evidence of existence in 2017, not 2009. Additionally, Respondent claims that the best argument Complainant can put forth is based on Respondent’s potential constructive knowledge of Complainant’s mark, which has no application under the Policy. Complainant has the burden of providing sufficient evidence of actual knowledge of a complainant’s rights in a mark at the time of a respondent’s registration of a confusingly similar domain name, and further, constructive knowledge is irrelevant under the Policy. See Reid v. Chao, FA 154587 (Forum May 29, 2003) (finding that Respondent could not have registered the disputed domain name in bad faith where its registration came months before Complainant filed its trademark application and no evidence of common-law rights in the mark were submitted to the panel); see also Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”). As such, the Panel agrees with Respondent that the evidence provided by Complainant insufficiently demonstrates Respondent’s alleged actual knowledge, and thus the Panel finds that Respondent registered the domain name without knowledge of Complainant’s rights in the mark under Policy ¶ 4(a)(iii).

As mentioned above under the section for Policy ¶ 4(a)(i), Respondent contends that the <scheduleflow.com> domain name is comprised entirely of common terms that have many meanings apart from use in Complainant’s SCHEDUFLOW mark. Moreover, Respondent contends that the registration and use of a domain name comprising such common terms is not necessarily done in bad faith. As the Panel finds that a respondent is free to register a domain name consisting of common terms and that the domain name currently in dispute contains such common terms, the Panel finds that Respondent did not register or use the domain name in bad faith under Policy ¶ 4(a)(iii). See Zero Int’l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) (“Common words and descriptive terms are legitimately subject to registration as domain names on a ‘first-come, first-served’ basis.”); see also Target Brands, Inc. v. Eastwind Group, FA 267475 (Forum July 9, 2004) (holding that Respondent’s registration and use of the <target.org> domain name was not in bad faith because Complainant’s TARGET mark is a generic term); see also Miller Brewing Co. v. Hong, FA 192732 (Forum Dec. 8, 2003) (finding that because Respondent was using the <highlife.com> domain name, a generic phrase, in connection with a search engine, Respondent did not register and was not using the disputed domain name in bad faith).

Therefore, the Panel determines that Complainant failed to establish the third element of Policy Paragraph 4(a).

Doctrine of Laches

Respondent also submits that the Complaint is barred by the doctrine of laches. It is not strictly necessary to decide that issue in the present proceeding as Complainant has failed on the substantive issues. However, as the issue has been argued, the Panel expresses the view that it has often been decided in UDRP decisions that the doctrine of laches does not apply as a defense. See Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) (“The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defense of laches has no application.”); see also Drown Corp. v. Premier Wine & Spirits, FA 616805 (Forum Feb. 13, 2006) (finding that the laches defense was inappropriate under the Policy and that the time frame within which Complainant brought the proceeding was of no consequential value); see also Disney Enters. Inc. v. Meyers, FA 697818 (Forum June 26, 2006) (“Respondent’s efforts at arguing related equitable defenses such as estoppel and acquiescence are equally misplaced as these legal arguments are not contemplated by the Policy. Moreover, recognition of these arguments in accordance with Respondent’s desires requires the Panel to make a legal determination regarding the continuing validity of Complainant’s DISNEY mark. Such action is beyond the scope of the UDRP proceeding and if Respondent desires such an outcome it should avail itself of the proper judicial proceedings by which such a result might be accomplished.”).The Panel notes those decisions with respect. However, it has also been decided in a number of recent decisions that actual delay in bringing proceedings by a complainant and its consequences, if any, may be taken into account by panels. The extent to which it is applicable must of course depend on the facts on individual cases.

Reverse Domain Name Hijacking

Respondent alleges that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this proceeding. Respondent contends that Complainant is attempting to deprive Respondent, the rightful, registered holder of the <scheduleflow.com> domain name, of its rights to use the disputed domain name. Respondent argues that Complainant has been unable to file any evidence that goes to the essential issue of its trademark rights and has instead relied solely on bare, unsupported assertions, which would clearly indicate to Complainant’s competent counsel that it could not prove the second or third element of the Policy. Further, Respondent claims that Complainant has known at all times that Respondent is commonly known by the disputed domain name, as the Complaint itself names Respondent as ScheduleFlow Pty Ltd which corresponds directly to the disputed domain name. Finally, Respondent contends that, as discussed above, Complainant’s submissions on bad faith simply recites various types of bad faith conduct accompanied by references to Panel decisions which bear no resemblance to the present fact situation and are largely irrelevant. Thus, the Panel finds that Complainant knew or should have known that it was unable to prove that Respondent lacks rights or legitimate interests in the <scheduleflow.com> domain name and that Respondent registered and is using the disputed domain name in bad faith. As the Panel finds there is sufficient evidence to this effect, it finds that reverse domain name hijacking has occurred. See NetDepositVerkaik v. Crownonlinemedia.com, D2001-1502 (WIPO Mar. 19, 2002) (“To establish reverse domain name hijacking, Respondent must show knowledge on the part of Complainant of Respondent’s right or legitimate interest in the Domain Name and evidence of harassment or similar conduct by Complainant in the fact of such knowledge.”); see also Labrada Bodybuilding Nutrition, Inc. v. Glisson, FA 250232 (Forum May 28, 2004) (finding that complainant engaged in reverse domain name hijacking where it used “the Policy as a tool to simply wrest the disputed domain name in spite of its knowledge that Complainant was not entitled to that name and hence had no colorable claim under the Policy”).

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 <scheduleflow.com> domain name REMAIN WITH Respondent.

Ho-Hyun Nahm, Esq.(Chair),

The Honorable Neil Anthony Brown QC

Honorable John J. Upchurch (Ret.), and

Panelists

Dated: January 17, 2018

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