The Chinese registrant of the domain Brime.com won the UDRP filed by Brime LLC.
In its majority, the NAF panel found the Complainant guilty of Reverse Domain Name Hijacking. One panelist disagreed with the RDNH part, stating thus:
I, Héctor Ariel Manoff, believe that not every complainant who fails to satisfy the burden under the Policy should receive a finding of reverse domain name hijacking. I find there should normally be some evidence or inference of strong bad faith on the complainant’s part and also good faith in the domain owner side. In this case I find that the complainant could understand that the owner of the domain was in violation of the policy because the very limited use of the domain name, the offer for sale for a substantial amount and the timing of the additions to the webpage, just immediately following the beginning of Brime going more public and known. This behavior could rise to suspicion on the part of Complainant that Respondent had no legitimate interest in the disputed domain name. Under these circumstances I decline to make a finding of reverse domain name hijacking.
The bottom line: Deny transfer of the domain Brime.com and order a finding of Reverse Domain Name Hijacking for the Complainant. Full details follow:
Brime, LLC v. Jack Zhang
Claim Number: FA2105001945815
PARTIES
Complainant is Brime, LLC (“Complainant”), represented by Robby Anderson of Balch & Bingham LLP, Alabama, USA. Respondent is Jack Zhang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brime.com>, registered with Dynadot, 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.
Hector Ariel Manoff, The Honourable Neil Anthony Brown QC and Professor David E. Sorkin, as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the Forum electronically on May 20, 2021; the Forum received payment on May 20, 2021.
On May 24, 2021, Dynadot, LLC confirmed by e-mail to the Forum that the <brime.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 May 24, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 14, 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@brime.com. Also on May 24, 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 June 10, 2021.
A timely Additional Submission from the Complainant was received by the Forum on June 21, 2021.
On June 16, 2021, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed Hector Ariel Manoff, The Honourable Neil Anthony Brown QC and Professor David E. Sorkin 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
1- Complainant, Brime, LLC, is a newly formed company that provides media content distribution.
2- Complainant has common law rights in the BRIME mark based on use of the mark in commerce.
3- Respondent’s <brime.com> domain name is identical to Complainant’s BRIME mark.
4- Respondent does not have any rights or legitimate interests in the <brime.com> domain name.
5- Respondent is not commonly known by the disputed domain name.
6- Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use as the domain as Respondent uses the domain to confuse Internet users seeking Complainant and inactively holds the domain.
7- Respondent offers the domain name for sale.
8- Respondent registered and uses the <brime.com> domain name in bad faith. 9- Respondent registered the disputed domain name with the intention to sell it. 10- Respondent uses the domain to attract users and cause confusion.
11- The disputed domain name is inactive.
B. Respondent
1- Respondent agrees that the <brime.com> domain name is confusingly similar to Complainant’s BRIME mark.
2- Respondent notes it tried to file a Notice of Opposition against Complainant’s trademark application BRIME; however, the application has not yet been published for opposition.
3- Respondent has rights and legitimate interests in the <brime.com> domain name.
4- Respondent has applied for a trademark for BRIME.COM through the China National Intellectual Property Administration (“CNIPA”).
5- Complainant did not have any rights in the BRIME mark at the time Respondent acquired the disputed domain name.
6- BRIME is a common surname.
7- Respondent also actively used the disputed domain name to host a personal blog from 2018-2019.
8- Respondent did not register the <brime.com> domain name in bad faith. Respondent acquired the disputed domain name on December 25, 2012, prior to Complainant’s rights in the BRIME mark.
9- Respondent has not used the disputed domain name to capitalize on Complainant’s interests and linking a generic domain name to a for sale page is acceptable under the policy.
10- Complainant engages in reverse domain name hijacking as Respondent rejected Complainant’s offer to buy the domain.
C. Additional Submissions by Complainant
1- Complainant actively started using the Brime Mark in June, 2020
2- Respondent has never been known by or used the Brime name.
3- Respondent has also shown no evidence of his use of the Brime mark.
4- As soon as Complainant launched its new product, the domain that had been passive for many years all the sudden changed to note “Something really cool is coming soon” and offering a sale price of $200,000 for the domain, which is a strong indicator of bad faith on the part of Respondent.
5- Although at the time of filing, the domain was blank and offering to sell the domain for $200,000, Respondent has now changed the webpage to be a brand new blog that has never been seen through any of the internet archive captures dating back to 2013.
FINDINGS
Complainant, Brime, LLC, is a company that provides media content distribution. It started its activities on June 2020 and was legally formed in December 2020. Complainant has a pending trademark application for BRIME before the USPTO as from March 9, 2021.
Respondent owns the <brime.com> domain name which was acquired on December 25, 2012. It has displayed prepared to use holding pages from 2013 to 2017, and then it has been actively used as the Respondent’s personal blog from 2018 to 2019. Respondent has applied for the trademark, BRIME.COM, through China National Intellectual Property Administration on May 25 2021. Respondent offered the domain name for sale.
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 does not hold trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the BRIME mark, just a pending application filed on March 9, 2021. Even though a federal trademark registration is not necessary to establish rights under Policy ¶ 4(a)(i) as long as the Complainant can establish common law rights through proof of sufficient secondary meaning associated with the mark, this Panel finds that Complainant has not submitted sufficient secondary meaning in the mark to create common law rights in the mark. See Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Forum Dec. 28, 2006) (failing to find common law rights where the complainant provided little evidence showing the extent of its use of the mark over the three years that the complainant claimed to have been using the mark); see also Build-A-Bear Workshop, Inc. v. Pallone, FA 874279 (Forum Mar. 1, 2007) (finding that the complainant did not establish common law rights in the BEAR BUILDER or BEAR BUILDERS marks because the evidence it submitted was insufficient to show the mark had acquired any secondary meaning). Therefore, the Panel finds Complainant has failed to established rights in the BRIME mark pursuant to Policy ¶ 4(a)(i).
The Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i) and declines to analyze the other two elements of the Policy. See Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Other elements
As the Panel’s conclusion on the first element is dispositive of the present dispute, a majority of the Panel declines to address the other elements set forth in Paragraph 4(a). See Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Accordingly, a majority of the Panel declines to address these elements.[i]
A minority of the Panel (Mr. Brown) would address and make findings on those two elements. Accordingly, and before reaching a firm conclusion on Reverse Domain Name Hijacking, it is appropriate in his opinion at least to say what his decision would have been on the other two issues, namely rights and legitimate issues and bad faith. On the former, Panelist Brown would find that the Respondent has shown that it has a right or legitimate interest in the domain name because the evidence is that the Respondent has used the domain name for a personal blog which has attracted numerous other users and because the domain name is a surname and could be of legitimate interest to persons of that name, one of whom inquired about the name on 21 May 2019, which was of course before the Complainant was incorporated on 10 December 2020 and before it applied for its trademark. On the latter issue, bad faith, the Respondent has shown that it did not register the domain name in bad faith because it registered the domain name 25 December 2012 and the Complainant did not apply for its trademark until 9 March 2021 so there were no trademark rights to which any bad faith registration could be directed. Nor did it use the domain name in bad faith as the evidence is that it did not copy the Complainant or cause any confusion with it. Accordingly, the Respondent has prevailed on all three issues and in the light of that has asked a finding of RDNH. Panelist Brown would make that finding.
Reverse Domain Name Hijacking
Under Paragraph 1 of the Rules, “Reverse Domain Name Hijacking” (RDNH) is defined as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Paragraph 15(e) of the Rules provides that if “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.”
In the Panel’s view, such a finding is justified only in rare cases, such as instances where a complainant proceeds despite the fact that it knew or should have known that it did not have a colorable claim under the Policy. See Karma International, LLC v. David Malaxos, FA 1822198 (Forum Feb. 15, 2019) (finding RDNH where complainant lacked trademark rights, came into being long after domain name was registered, and had made prior unsolicited offer to purchase domain name).
Respondent has used the domain name for a personal blog which has attracted numerous other users. In addition, the domain name is a surname and could be of legitimate interest to persons of that name, one of whom inquired about the name on 21 May 2019, which was of course before the Complainant was incorporated on 10 December 2020 and before it applied for its trademark. Furthermore, Respondent registered the domain name on 25 December 2012, while the Complainant did not commence use of its claimed trademark until June 2020 and did not apply for a trademark registration until 9 March 2021, so there were no trademark rights to which any bad faith registration could have been directed. Nor is there any evidence of bad faith use, as Respondent did not copy the Complainant or cause any confusion with it.
This case is what is sometimes referred to as a “Plan B” scenario, where a complainant attempts to purchase a domain name and then switches tactics, bringing a complaint under the Policy despite a clear inability to make the required showings. See Aether, LLC v. Aether Domains / Aether Things, Inc., FA 1739957 (Forum Aug. 24, 2017) (finding RDNH of <aether.com> where complaint was brought after unsuccessful commercial negotiations); EBSCO Industries, Inc. v. WebMagic Staff / WebMagic Ventures, LLC, FA 1722095 (Forum May 25, 2017) (finding RDNH of <novelist.com> where respondent had previously rejected multiple purchase offers from complainant).
Complainant is represented by counsel with experience in the UDRP process, who likely advised Complainant that its position was unsupportable. See Daniel Biro / RealtyPRO Network, Inc. v. Ben Kueh / Computerese, FA 1929289 (Forum Mar. 29, 2021) (finding RDNH against unrepresented complainant, while noting that such complainants “are generally given a free pass” for purposes of RDNH).
A majority of the Panel (Professor Sorkin and Mr. Brown) finds that the Complaint was brought in bad faith, in an instance of reverse domain name hijacking, and constitutes an abuse of the administrative proceeding.
A minority of the Panel (Mr. Manoff) would not make a finding of RDNH.
I, Héctor Ariel Manoff, believe that not every complainant who fails to satisfy the burden under the Policy should receive a finding of reverse domain name hijacking. I find there should normally be some evidence or inference of strong bad faith on the complainant’s part and also good faith in the domain owner side. In this case I find that the complainant could understand that the owner of the domain was in violation of the policy because the very limited use of the domain name, the offer for sale for a substantial amount and the timing of the additions to the webpage, just immediately following the beginning of Brime going more public and known. This behavior could rise to suspicion on the part of Complainant that Respondent had no legitimate interest in the disputed domain name. Under these circumstances I decline to make a finding of reverse domain name hijacking.
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 <brime.com> domain name REMAIN WITH Respondent.
Hector Ariel Manoff, Panel Chair
The Honourable Neil Anthony Brown QC, Panelist
Professor David E. Sorkin, Panelist
Dated July 6, 2021
[i] Although the Panel elects not to reach findings on the issues of rights or legitimate issues and registration and use in bad faith, it notes the strength of Respondent’s position on these issues and the likelihood that Respondent would have prevailed in this proceeding even had Complainant been able to demonstrate the required trademark rights.
