The owner of NodeGraph.com, a generic domain registered in 2007, had to defend his domain in a UDRP.
A Swedish company, Nodegraph AB, alleged that by forming in 2015 and getting a European trademark in 2016 and a US trademark in 2020 they have rights to the domain.
No so fast, said the Respondent, who refuted the Complainant’s claims that somehow he’s not the original registrant of Nodegraph.com.
- Respondent is a software programmer with expertise in relation to node graph-based programming. Node graph is a common term used in computer programming to describe a node-based abstraction of software development and user interaction.
- Respondent has been the owner of the domain name since it was first registered on September 9, 2007.
- Respondent claims he is known by the handle “nodegraph” on various social media sites, as well as in the node graph development community.
- Respondent is currently hosting resources for software developers who are interested in node graph-based programming designs at <nodegraph.com>. This website helps the next generation of software programmers and engineers to learn about node graph-based software designs and user interfaces. It is a non-commercial site without any source of revenue, including no advertisements.
- Respondent asks the Panel to make a finding of Reverse Domain Name Hijacking (RDNH) as Complainant has attempted to contact Respondent and purchase the domain name many times, and has resorted to using many (known to be unsavory) third parties to try to acquire the domain name.
The three member panel at the National Arbitration Forum concluded that the Respondent in this case registered and used the domain Nodegraph.com in good faith. Somehow, they denied to deliver a finding of Reverse Domain Name Hijacking, merely slapping the Complainant’s wrist:
The domain transfer was denied.
“The evidence suggests Complainant was not aware, prior to the filing of the Complaint herein, that Respondent had in fact purchased the domain name in 2007. For these reasons, the Panel considers it was not unreasonable for Complainant to commence these proceedings.”
Full details of the UDRP decision for Nodegraph.com follow:
NodeGraph AB v. Shingo Takagi
Claim Number: FA2102001932885
PARTIES
Complainant is NodeGraph AB (“Complainant”), represented by Robert M. Wasnofski, Jr. of Dentons US LLP, Illinois, USA. Respondent is Shingo Takagi (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nodegraph.com>, registered with Google LLC.
PANEL
The undersigned certify 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.
Sebastian M W Hughes (Chair), Jeffrey M Samuels and Petter Rindforth as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the Forum electronically on February 19, 2021; the Forum received payment on February 19, 2021.
On February 22, 2021, Google LLC confirmed by e-mail to the Forum that the <nodegraph.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google LLC 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 March 1, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 22, 2021 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@nodegraph.com. Also on March 1, 2021, 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 March 22, 2021.
Timely Additional Submissions were received from Complainant on March 29, 2021.
Timely Additional Submissions were received from Respondent on March 31, 2021.
On March 30, 2021, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Sebastian M W Hughes, Jeffrey M Samuels and Petter Rindforth 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
Complainant is a company incorporated in Sweden and a provider of data management software under the word and device mark NODEGRAPH (the “Trademark”). Complaint relies upon its business registration certificate in Sweden dated December 21, 2015 for its business name Nodegraph AB comprising the Trade Mark; its registration since December 21, 2015 of the domain name <nodegraph.se> comprising the Trademark; its use of the Trademark in Europe and the United States since 2016; and its registration in Sweden for the Trademark under registration No. 608836, with a registration date of June 10, 2020.
Complainant contends that the domain name is identical or confusingly similar to the Trademark.
Complainant asserts that “While the Domain Name was created in 2007, upon information and belief, the Domain Name was created by a registrant other than the Respondent and the Respondent registered the Domain Name between January 16, 2016 and August 22, 2016.” Complainant contends further that the domain name was previously passively held, and that is has more recently been resolved to various third party software related websites.
As to bad faith, Complainant contends “Upon information and belief, Respondent registered the Domain Name without a bona fide basis for such registration in an attempt to capitalize unfairly on the anticipated trademark rights in Complainant’s NODEGRAPH Mark.” Complainant also points to a number of changes in registrant and registrar in respect of the domain name over the years since it was first registered, the use of a privacy or proxy service to shield the name of the owner of the domain name, and Respondent’s failure to respond to Complainant’s communications sent prior to the commencement of these proceedings.
B. Respondent
Respondent is a software programmer with expertise in relation to node graph-based programming. Node graph is a common term used in computer programming to describe a node-based abstraction of software development and user interaction.
Respondent has been the owner of the domain name since it was first registered on September 9, 2007.
Respondent claims he is known by the handle “nodegraph” on various social media sites, as well as in the node graph development community.
Respondent is currently hosting resources for software developers who are interested in node graph-based programming designs at <nodegraph.com>. This website helps the next generation of software programmers and engineers to learn about node graph-based software designs and user interfaces. It is a non-commercial site without any source of revenue, including no advertisements.
Respondent asks the Panel to make a finding of Reverse Domain Name Hijacking (RDNH) as Complainant has attempted to contact Respondent and purchase the domain name many times, and has resorted to using many (known to be unsavory) third parties to try to acquire the domain name.
C. Additional Submissions
Complainant
Respondent has adduced no evidence to prove that he is known by the handle “node graph”.
Respondent has exhibited undated screenshots of websites to which the domain name has been resolved which appear to have been created after the date of commencement of these proceedings.
Respondent has gained revenue from pay-per-click revenue by previously resolving the domain name to websites with sponsored links relating to software.
Respondent’s request for a finding of RDNH is unfounded. Complainant commenced this proceeding in good faith and did so only after closely analyzing all relevant facts that could be uncovered regarding the historical registration and use of the domain name.
Respondent
The domain name was registered 13 years before Complainant obtained its registration in Sweden for the Trademark and 8 years before Complainant commenced business under the Trade Mark.
Complainant has misrepresented its size and market presence. Complainant “has only around 20 employees and only has $4 million in revenue”.
Complainant’s registration for the Trademark comprises a logo containing artistic cues which are very prominent and very different from the domain name.
FINDINGS
Complainant has not established all the elements entitling it to transfer of the domain name.
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
The Panel finds that the Complainant has rights in the Trademark acquired through use and registration. Although the disputed domain name was registered before the Trademark was registered by the Complainant, this is immaterial for the purposes of the first limb under paragraph 4(a).
Design elements are largely disregarded when assessing identity or confusing similarity under the first element of paragraph 4(a).
The jurisdiction where a complainant’s trademark is registered is also not considered relevant to panel assessment under the first element
The disputed domain name incorporates the entirety of the wording component of the Trademark. Excluding the generic Top-Level Domain “.com”, the disputed domain name is identical to the wording component of the Trademark.
The Panel therefore finds that the disputed domain name is identical or confusingly similar to the Trademark. The evidence further supports the determination that Complainant has rights to the Trademark.
Rights or Legitimate Interests
In light of the Panel’s finding below in respect of bad faith, it is not necessary for the Panel to make any findings with respect to the second limb under paragraph 4(a) of the Policy.
Registration and Use in Bad Faith
Where a domain name has been registered before a complainant has acquired trademark rights, only in exceptional cases would a complainant be able to prove a respondent’s bad faith.
Respondent has provided evidence (including a purchase receipt from the original Registrar) to confirm that he was the original registrant of the domain name. The evidence demonstrates that Respondent purchased the domain name 8 years before the date of incorporation of Complainant and Complainant’s commencement of use of the Trademark; and 13 years before the Complainant’s date of registration of the Trademark. In such circumstances, and in light of the evidence filed by both parties in this proceeding, there is no basis for a finding that Respondent targeted Complainant’s then non-existent Trademark at the time he purchased the domain name.
For all the foregoing reasons, the Panel concludes that the domain name has not been registered and used in bad faith.
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”.
RDNH is furthermore defined under the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name. ”
Panels have consistently found that the mere lack of success of a complaint is not in itself sufficient for a finding of RDNH.
In determining applications for declarations of RDNH, legally represented complainants are usually held to a higher standard than unrepresented complainants.
Respondent highlights the fact Complainant filed the Complaint after unsuccessful attempts to acquire the domain name from Respondent.
In all the circumstances, the Panel does not, however, consider that this is a “Plan B” case for the purposes of Respondent’s application for a finding of RDNH – where the legally represented Complainant has filed the Complaint after an unsuccessful attempt to acquire the domain name from Respondent, and without having any plausible basis for establishing, in particular, bad faith registration and use.
The Panel considers that the status of the historical WhoIs records for the disputed domain name (including Respondent’s use of privacy shields and aliases, and the several changes of Registrar, including in 2016) provides sufficient support for a good faith belief on the part of Complainant that Respondent acquired the domain name in 2016. The evidence suggests Complainant was not aware, prior to the filing of the Complaint herein, that Respondent had in fact purchased the domain name in 2007. For these reasons, the Panel considers it was not unreasonable for Complainant to commence these proceedings.
The Panel accordingly declines to make a finding of reverse domain name hijacking against Complainant.
DECISION
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <nodegraph.com> domain name REMAIN WITH Respondent.
Sebastian M W Hughes, Panelist
Jeffrey M Samuels, Panelist
Petter Rindforth, Panelist
Dated: April 9, 2021
