Filing a UDRP against the domain CreditHero.com was a disastrous move; not only was the Complainant, Credit Repair Cloud, denied transfer of the domain – they were also found guilty of engaging in Reverse Domain Name Hijacking.
The domain was registered in 2007, while the Complainant acquired a trademark for CREDIT HEROES in 2013 – six years later. According to the sole panelist at NAF:
Further, Complainant falsely alleged Respondent would have had actual knowledge of Complainant’s rights from its “repeated entreaties to purchase the domain”, despite knowing that its domain agent’s attempts to contact Respondent in 2019 had been unsuccessful.
Full details on the decision for CreditHero.com follows:
DECISION
Daniel A. Rosen, Inc. d/b/a Credit Repair Cloud v. Michael Steele / Nemo Apps LLC
Claim Number: FA2008001910796
PARTIES
Complainant is Daniel A. Rosen, Inc. d/b/a Credit Repair Cloud (“Complainant”), represented by Andrew Skale of Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C., California, USA. Respondent is Michael Steele / Nemo Apps LLC (“Respondent”), represented by Michael D. Pogue of Michael Pogue Law, P.C., Indiana, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <credithero.com>, registered with Tucows Domains Inc.
PANEL
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Alan L. Limbury, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the Forum electronically on August 31, 2020, naming Contact Privacy Inc. Customer 0136097415 as respondent. The Forum received payment on August 31, 2020.
On September 1, 2020, Tucows Domains Inc. confirmed by e-mail to the Forum that the <credithero.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 September 2, 2020 the Forum required Complainant to amend the Complaint to identify Respondent properly. Complainant submitted an Amended Complaint that day.
On September 3, 2020, the Forum served the Amended Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 23, 2020 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@credithero.com. Also on September 3, 2020, 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 23, 2020.
On September 28, 2020, Complainant submitted an Additional Submission which complied with the Forum’s Supplemental Rule 7.
On September 29, 2020, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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 offers cloud-based credit repair software and customer relationship management (CRM) services. Complainant asserts rights in the CREDIT HEROES mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) on November 26, 2013. Complainant has used the CREDIT HEROES mark in connection with these services and has common law rights dating back to at least September 9, 2009.
Respondent’s <credithero.com> domain name is confusingly similar to Complainant’s mark, as it incorporates the singular form of the mark in its entirety and merely adds the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <credithero.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent’s use of the CREDIT HEROES mark. Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent makes no active use of the domain name, despite having maintained its registration for over 13 years.
Respondent registered and uses the <credithero.com> domain name in bad faith. Respondent has failed to make any active use of the domain name.
Respondent registered the domain in January 2007 and has maintained that registration with renewals every year since. The existence of bad faith “registration” sufficient to satisfy this element can be measured at any of those points. See L.F.P., Inc. v. B and J Properties, FA020400010969 (Forum May 30, 2002); Leonhard Kurz Stiftung & Co. KG v. North Light Communications, FA1405001560423 (Forum June 21, 2014); Navigant Consulting, Inc. v. Daison Arikkat / Navigant Engineering Consultants, FA1602001660462 (Forum Mar. 22, 2016).
Respondent’s latest renewal in January 2020 was also in bad faith because he would have had actual knowledge of Complainant’s rights from Complainant’s repeated entreaties to purchase the domain in 2019 (Annex 6). Complainant had to make these entreaties via a domain purchase servicer because Respondent hid his identity with a WHOIS privacy service. Respondent ignored all of Complainant’s entreaties and its later cease and desist letter, (Annexes 6-7), which is itself evidence of bad faith.
If Respondent did not actually receive the cease and desist letter, then he must have provided inaccurate information to the privacy service, which is “alone sufficient grounds to find bad faith registration and use.” Hewlett-Packard Development Company, L.P. v. Navamani Mathavadian Selvaraj, FA1609001696174 (Forum Nov. 2, 2016).
B. Respondent
[The Response is mistakenly intituled as a WIPO proceeding].
The disputed domain name was registered on January 16, 2007, 6 years and 10 months before Complainant’s registration of the CREDIT HEROES mark.
Respondent says the <credithero.com> domain name is not identical or confusingly similar to the CREDIT HEROES mark, and nothing in the record suggests that consumers have been or are likely to be confused by any similarities between the two as “hero” is a common suffix to add to a generic word. “CreditHero” follows this pattern. Other high-profile websites that do this are studentloanhero.com; employmenthero.com; jobhero.com; coursehero.com; classhero.com; spirithero.com; phonicshero.com; usehero.com; spothero.com; relationshiphero.com; statushero.com; audiohero.com; luggagehero.com; activityhero.com and answerhero.com.
Complainant cannot make a showing that Respondent lacks rights or legitimate interests in the <credithero.com> domain name. Respondent is an active developer of websites for 20 years and mobile apps for 10 years. At the time of the domain name acquisition until today, he has researched and considered certain applications for use of the <credithero.com> domain, but has not commercially exploited the site.
There are numerous, potentially non-infringing, uses of the <credithero.com> site since the generic word “Credit” can refer to any number of different financial products and services, such as a portal for finding the ideal new credit cards; any service that originates loans; a service that manages your credit card points and rewards; a portal that supports cash back programs offered by credit card companies; the online presence of a bank that offers a home equity line-of-credit; the website for a peer-to-peer lending service; and the website for a micro-credit program in a developing country.
It is a common practice for individuals and companies to maintain registered domain names without yet building corresponding commercial web sites. For example, Yahoo, the well-known Internet portal service, has registered, in addition to its primary domain name “yahoo.com,” another domain name, “yahoo-inc.com”, which is used solely for company e-mail communications.
Complainant has not proven any bad faith elements under the Policy, Paragraph 4(b). Respondent does not recall receiving a cease and desist letter nor can recall any offers from Complainant to purchase the domain name.
Respondent requests that the Panel declare the Complainant brought this Complaint in bad faith through reverse domain name hijacking.
C. Additional Submission by Complainant
Noting that the Response is intituled as a WIPO proceeding, Complainant submits that, since this is a Forum proceeding, the citations of WIPO cases in the Response should be disregarded or, at minimum, viewed less favourably when contrasted with Complainant’s citations of Forum cases.
Complainant’s Additional Submission repeats the contentions in its Complaint and its Amended Complaint, including numerous case citations, and contends that Respondent should have been aware of Complainant’s trademark rights as a matter of law.
FINDINGS
Complainant has failed to establish all the elements entitling it to relief.
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.”
The Panel does not consider it appropriate to disregard or to view WIPO case citations less favorably than Forum case citations.
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 has shown that it has rights in the CREDIT HEROES mark through its incontestable registration with the USPTO, Reg. No. 4,439,664, registered on November 26, 2013 in Class 36 for “Credit reporting services; Credit scoring services; Financial counselling services, namely, helping others build a better working relationship with their money.”
In determining confusing similarity, evidence of actual confusion is not required. The test is an objective one, confined to a comparison of the domain name and the trademark alone, independent of the products or services for which the domain name may be used, or other marketing and use factors usually considered in trademark infringement. See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000‑1698; AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327.
The Panel finds Respondent’s <credithero.com> domain name to be confusingly similar to Complainant’s CREDIT HEROES mark under Policy ¶ 4(a)(i), as it incorporates the singular form of the mark and merely adds the inconsequential “.com” gTLD, which may be ignored.
Complainant has established this element.
Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in a disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Respondent registered the domain name <credithero.com> on January 16, 2007 and has made no use of it since. These circumstances, coupled with Complainant’s assertions, constitute a prima facie case that Respondent lacks rights and legitimate interests in the <credithero.com> domain name under Policy ¶ 4(a)(ii). Accordingly, the burden shifts to Respondent to show he does have rights or legitimate interests. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014).
The Panel accepts Respondent’s submissions that the domain name comprises the addition of the common suffix “hero” to a generic word and that there are numerous potentially non-infringing uses to which the domain name could be put. However, Respondent has not made any use of the domain name for a website in the 13 years since its registration and there is no evidence that Respondent has otherwise used the domain name, such as for email or file transfer. Respondent does not claim to be commonly known by the <credithero.com> domain name and has provided no evidence in support of his claim to have researched and considered possible applications for use of the domain name.
In State Farm Mutual Automobile Insurance Company v. Rocky E. Faw (Forum case FA94971) the respondent was found to have no legitimate interests in respect of the domain name where he had not used nor developed the domain name for a legitimate non-commercial or fair purpose and was not using the domain name in connection with a bona fide offering of goods or services. See also Leland Stanford Junior University v. Zedlar Transcription & Translation (Forum case FA94970).
In the circumstances of this case, the Panel finds that Respondent has no rights or legitimate interests in respect of the <credithero.com> domain name under Policy ¶ 4(a)(ii).
Complainant has established this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
Complainant does not allege any of the circumstances set out in Policy, paragraph 4(b).
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”) paragraph 3.8 answers the question “Can bad faith be found where a domain name was registered before the complainant acquired trademark rights?” as follows:
“Subject to scenarios described in 3.8.2. below [domain names registered in anticipation of trademark rights], 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.”
In this case the <credithero.com> domain name comprises the dictionary words “credit” and “hero,” and was registered on January 16, 2007, more than 2½ years before Complainant claims to have acquired common law rights in its CREDIT HEROES mark (as to which Complainant has provided no evidence) and more than 6½ years before Complainant registered that mark in November, 2013. There is no evidence from which an inference can be drawn that Respondent registered the domain name <credithero.com> intentionally to target Complainant and its then non-existent CREDIT HEROES mark nor the trademark of any third-party. Further, as mentioned, there are numerous potentially non-infringing uses to which the domain name could be put.
See Faster Faster, Inc. DBA Alta Motors v. Jeongho Yoon c/o AltaMart, FA 1708272 (Forum Feb. 6, 2017) (“Respondent registered the domain name more than a decade before Complainant introduced the ALTA MOTORS mark in commerce. Respondent therefore could not have entertained bad faith intentions respecting the mark because it could not have contemplated Complainant’s then non-existent rights in [the mark] at the moment the domain name was registered.”). See also The Way International, Inc. v. Diamond Peters, WIPO Case No. D2003-0264 (“As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy. The essence of the complaint is an allegation of bad faith, bad faith targeted at the complainant. For that bad faith to be present, the cybersquatter must have actual knowledge of the existence of the complainant, the trade mark owner. If the registrant is unaware of the existence of the trade mark owner, how can he sensibly be regarded as having any bad faith intentions directed at the complainant? If the existence of a trade mark registration was sufficient to give the Respondent knowledge, thousands of innocent domain name registrants would, in the view of the Panel, be brought into the frame quite wrongly”).
Under these circumstances the Panel finds that Respondent did not register the domain name in bad faith in January, 2007. This finding is sufficient to determine this proceeding in favour of Respondent. However, some of Complainant’s further submissions must be addressed.
Complainant submits that, regardless of his intent when he initially registered the domain name, Respondent has never had an active website and even if he had intended to use the domain name for legitimate purposes when he first registered it, his extended passive holding of the domain name and continued renewal thereof in the absence of any content constitutes bad faith use and registration, citing L.F.P., Inc. v. B and J Properties, FA0204000109697 (Forum May 30, 2002).
The circumstances of that case were very different from this case. In that case the trademark pre-dated the registration of the domain name, as in other cases cited by Complainant in support of this submission: United Van Lines, LLC v. PRO MOVES, No. D2009-1761 (WIPO February 11, 2010); Broadnet Teleservices, LLC v. Sun, FA1506001625931 (Forum July 27, 2015) and Fox Media LLC v. Global Investor Media Ltd., FA2006001900503 (Forum August 3, 2020).
The panel in Fox Media cited the leading case on passive use, namely Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Johnson & Johnson v. Daniel Wistbaca, WIPO D2017-0709. The latter case held that, of the five circumstances present in Telstra, impossibility to conceive of any plausible active use plays a decisive role in determining whether any particular passive holding can be regarded as bad faith use of a disputed domain name.
The Amended Complaint cites a passage from L.F.P., Inc. v. B and J Properties as follows:
“[v]arious panels have ordered transfer of a domain name after an extended period of non-use by its registrant, typically referred to as ‘passive holding.’ Passive holding . . .occurring in view of and in spite of the respondent’s knowledge as to the mark in question, . . . [is] sufficient evidence of bad faith use and registration under the general provisions of Paragraph 2 and 4 of the Policy.”
However, in full the passage is as follows:
“Various panels have ordered transfer of a domain name after an extended period of non‑use by its registrant, typically referred to as “passive holding”. Passive holding is the antithesis of excused delay. In cases where passive holding was found, non‑use was coupled with a complainant having valid trademark rights commencing prior to the date on which the offending domain name was registered coupled with the registrant having actual or imputed knowledge of those rights. [Emphasis added]. See, e.g., Spence‑Chapin Services, cited supra; America Online, Inc. v. Woods, D2001‑0555 (WIPO June 13, 2001); Chip Merchant Inc. v. Blue Star Electronics d/b/a Memory World, D2000‑0474 (WIPO Aug. 21, 2000); Chernow Communications, Inc. v. Kimball, D2000‑0119 (WIPO May 18, 2000); America.com Inc. v PSS InterNet Services, Inc., FA 96784 (Forum Apr. 19, 2001); Awesome Kids LLC v. Selavy Communications, D2001‑0210 (WIPO Apr. 16, 2001) and American Vintage Wine Biscuits, Inc v. Brown, d/b/a Big Daddy’s Antiques, D2000‑0004 (WIPO Feb. 16, 2000); as well as Northwest Racing Associates Limited Partnership v. Quantu Marketing, FA 95506 (Forum Oct. 6, 2000); Can’t Stop Productions, Inc. v. Lussie, FA 94966 (Forum July 27, 2000); Liberty Public Limited Company v. Guarrera, FA 95103 (Forum Aug. 17, 2000); V & S Vin & Spirit Aktiebolag v. Gunnar Hedenlans Peev, FA 95078 (Forum Aug. 9, 2000); Leland Stanford Junior University v. Zedlar Transcription & Translation, FA 94970 (Forum July 11, 2000); Georgia Gulf Corporation v. The Ross Group, D2000‑0218 (WIPO June 14, 2000); Sanrio Company, Ltd. v. DLI, D2000‑0159 (WIPO Apr. 20, 2000); America Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Forum Mar. 16, 2000) and Telstra Corporation Limited v. Nuclear Marshmallows, D2000‑0003 (WIPO Feb. 18, 2000). Here, in view of the widespread reputation of the Complainant’s mark “HUSTLER” ‑‑ given its use began some 28 years prior to the initial registration of the disputed domain name, it would simply be preposterous to think that the Respondent was unaware of this mark at the time she initially registered (and certainly renewed) the disputed domain name. In each case cited immediately above, such passive holding, occurring in view of and in spite of the respondent’s knowledge as to the mark in question, was seen as sufficient evidence of bad faith use and registration under the general provisions of paragraph 4(b) of the Policy. The Panel sees no plausible reason to divert from that view, with the passive holding here providing the basis for the Panel’s finding that the Respondent’s actions constitute bad faith use and registration in contravention of paragraph 4(a)(iii) of the Policy.”
Complainant asserts that Respondent’s latest renewal in January 2020 was in bad faith because he would have had actual knowledge of Complainant’s rights from Complainant’s repeated entreaties to purchase the domain in 2019, which Complainant says Respondent ignored. Complainant relies for this assertion on Annex 6, a string of emails in March and April 2019 from a domain agent reporting to Complainant on its attempts to communicate with Respondent, culminating in the message: “Unfortunately, after repeated attempts, we were unable to contact the owner of credithero.com to present your offer before the negotiations expired.” The Panel does not accept Complainant’s assertion because, even if the agent had named Complainant and its mark in its attempted communications with Respondent, as to which there is no evidence, the failed attempts to contact Respondent could not have given Respondent actual knowledge of Complainant’s rights.
Even if Respondent had become aware of Complainant and its rights in the mark by the time he renewed the domain name registration, the descriptive character of the domain name is such that, as submitted by Respondent, there are many plausible uses to which the domain name may be put without infringing Complainant’s mark or misleading Internet users. Hence any renewal of the domain name with such knowledge cannot be regarded as being in bad faith. See Goldline International, Inc. v. Gold Line, WIPO case D2000-1151 (4 January 2001) in which the complainant claimed the respondent’s knowledge of the complainant’s corporate name was proof of bad faith. The panel held:
“Respondent’s knowledge of Complainant’s mark, though, came as a result of a review he conducted, before he chose the domain name [goldline.com], of dozens of registered and pending “Gold Line” marks, none of which, he concluded, covered the kind of Internet and Community Services he contemplated for his business… In registering the domain name, therefore, the Respondent reasonably believed that his proposed services were unlikely to cause confusion with, or trade on, “Gold Line” as a mark for other, unrelated products and services. Cf. General Machine Prods. Co. v. Prime Domains, File No. FA0001000092531 (Forum March 16, 2000). Under these circumstances, the Respondent’s knowledge of the Complainant’s mark prior to registration of the domain name is not evidence of bad faith”.
Further, as stated in the WIPO Jurisprudential Overview 3.0, paragraph 3.9:
“…irrespective of registrant representations undertaken further to UDRP paragraph 2, panels have found that the mere renewal of a domain name registration by the same registrant is insufficient to support a finding of registration in bad faith.”
Although there are some panel decisions finding that bad faith registration may be determined at the time of renewals, such as Eastman Sporto Group LLC v. Jim and Kenny, WIPO Case No. D2009-1668, Leonhard Kurz Stiftung & Co. KG v. North Light Communications, FA1405001560423, Broadnet Teleservices, LLC v. Sun, FA1506001625931 and Navigant Consulting, Inc. v. Daison Arikkat / Navigant Engineering Consultants, FA1602001660462, this Panel prefers the reasoning of the learned panellist in BioClin B.V v. MG USA, WIPO Case No. D2010-0046:
“To this Panel it seems that, if the intention of the framers of the Policy was that subsequent bad faith use of a domain name which had been registered in good faith was not to be caught by the Policy (as appears to this Panel to have been the case), an interpretation of the Policy which would eventually catch all such registrants (when they renewed their registrations) is to be avoided. Given the clear intention expressed in the Second Staff Report (paragraph 1 above), it seems to the Panel that the bad faith registration requirement was intended to catch a respondent’s bad faith in the choice of the disputed domain name. That choice is of course made at the time of the original registration or acquisition, not at renewal time.”
Complainant asserts that Respondent ignored Complainant’s cease and desist letter, which is itself evidence of bad faith. The Panel rejects that assertion because Complainant’s cease and desist letter (Annex 7) is dated August 18, 2020, only 13 days before the filing of the Complaint in these proceedings. These circumstances are not evidence of bad faith registration nor of bad faith use.
Complainant asserts that if Respondent did not actually receive the cease and desist letter, then he must have provided inaccurate information to the privacy service, which is “alone sufficient grounds to find bad faith registration and use”, citing Hewlett-Packard Development Company, L.P. v. Navamani Mathavadian Selvaraj, FA1609001696174 (Forum Nov. 2, 2016).
The decision in that case contains no reference to the provision of inaccurate information to a privacy service. Be that as it may, this Panel does not accept the proposition that the provision of inaccurate information to a privacy service is alone sufficient grounds to find bad faith registration and use, for the reasons set out in Greenvelope, LLC v. Virtual Services Corporation, WIPO Case No. D2017-0006, a case on all fours with the present case, in which the learned panellist said:
“In this case, even in the absence of a response from Respondent, there is simply no evidence provided by Complainant that Respondent registered the Domain Name to intentionally target a trademark owner including Complainant and its GREENVELOPE mark, or the trademark of any third-party for that matter. Instead, the Domain Name corresponds to the dictionary words “green” and “envelope,” and was registered years before Complainant first started using its trademark.
Despite these circumstances, of which Complainant was presumably aware, Complainant contends nonetheless that the Domain Name was registered in bad faith because Respondent provided false registrant information. Even assuming this is true, this conduct, without any evidence of targeting of a trademark, does not alone amount to bad faith registration in this case for purposes of the Policy. A review of UDRP cases reveals that providing false registration information is sometimes considered as one of several elements, which on a cumulative basis (e.g., in combination with the targeting of a complainant’s trademark), can result in a finding of bad faith registration. The Panel agrees with the decisions on this point. Here, however, there is no evidence that Respondent targeted Complainant and its marks at the time of registration, when it created the Domain Name comprised of the two dictionary words “green” and “envelope” before Complainant’s mark even existed.”
The Complaint in this proceeding was sent by the Forum, inter alia, to the email address of Respondent provided by the Registrar in response to the Forum’s request for registrant contact information. Respondent filed a Response. Under these circumstances the Panel is not satisfied that Respondent provided inaccurate information to the privacy service. Further, Respondent’s use of a privacy service in registering a domain name comprising dictionary words, years before Complainant’s mark came into existence, cannot be interpreted as having been done in bad faith.
Complainant contends that Respondent should have been aware of Complainant’s trademark rights as a matter of law and that a simple search of the TESS database at each time of renewal would have shown Complainant’s mark. Citing Navigant Consulting, Inc. v. Daison Arikkat / Navigant Engineering Consultants, FA1602001660462, Complainant says:
“As one panel has held, “[a] most basic investigation by Respondent would have revealed [Complainant’s] rights in the [CREDIT HEROES] Marks,” so “[r]egardless of whether Respondent failed to investigate, or investigated and then disregarded,” Complainant’s rights in the CREDIT HEROES marks, “Respondent’s actions evince bad faith”.”
The passage quoted by Complainant from that decision is actually from the submission made by the complainant in that case, not from the panellist, as one would be led to believe from the way in which it appears in Complainant’s Additional Submission.
As mentioned above, the nature of Respondent’s domain name is such that there are many plausible uses to which it may be put without infringing Complainant’s mark, which has not been shown to be famous and is limited in its scope to the specific services set out in its registration certificate, so even if knowledge of Complainant’s mark were properly to be imputed to Respondent upon any of Respondent’s renewals of the domain name, such renewals, despite Respondent’s non-use, would not constitute bad faith targeting of Complainant or its mark.
For the above reasons the Panel finds that Complainant has failed to establish bad faith registration and use under Policy ¶ 4(a)(iii).
Reverse Domain Name Hijacking
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”. Reverse Domain Name Hijacking (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 mere lack of success of the complaint is not itself sufficient for a finding of Reverse Domain Name Hijacking; rather, as stated in the WIPO Jurisprudential Overview 3.0, paragraph 4.16:
“Reasons articulated by panels for finding RDNH include: (i) facts which demonstrate that the complainant knew it could not succeed as to any of the required three elements – such as the complainant’s lack of relevant trademark rights, clear knowledge of respondent rights or legitimate interests, or clear knowledge of a lack of respondent bad faith (see generally section 3.8) such as registration of the disputed domain name well before the complainant acquired trademark rights…”
Here Complainant and its legal representative had clear knowledge of lack of Respondent’s bad faith registration because the <credithero.com> domain name was registered before Complainant acquired trademark rights in the CREDIT HEROES mark. Their clear knowledge is underscored by the deliberate omission from the passage cited in the Complaint from L.F.P., Inc. v. B and J Properties, FA0204000109697 (Forum May 30, 2002) of the words:
“In cases where passive holding was found, non‑use was coupled with a complainant having valid trademark rights commencing prior to the date on which the offending domain name was registered coupled with the registrant having actual or imputed knowledge of those rights.”
Further, Complainant falsely alleged Respondent would have had actual knowledge of Complainant’s rights from its “repeated entreaties to purchase the domain”, despite knowing that its domain agent’s attempts to contact Respondent in 2019 had been unsuccessful.
Complainant contends that a finding of RDNH is unwarranted since the Complainant here owns the exclusive, incontestable trademark rights in a mark identical to the disputed domain (less the gTLD), citing Mattel, Inc. v. Gopi Mattel, FA0411000372847 (Forum Feb. 15, 2005) (finding no reverse domain name hijacking since Mattel owned the mark MATTEL and the domain mattel.org was identical thereto; so holding despite finding that Respondent had legitimate interests in the domain).
A finding of RDNH was denied in the Mattel case because it involved a famous trademark pre-dating by many years the disputed domain name and because the complaint was based on an erroneous assumption. The present case differs significantly from Mattel because there is no evidence that Complainant’s trademark is famous or widely known; Complainant’s trademark rights arose years after Respondent’s domain name was registered; and the Complaint is based on knowingly false and misleading statements.
The Panel therefore finds that that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
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 <credithero.com> domain name REMAIN WITH Respondent.
Alan L. Limbury, Panelist
Dated: October 12, 2020
