The UDRP against the domains ClickBetter.com and ClickBetter.info was filed by a former partner of the Respondent.
The Respondent, ClickBetter LTD, Canada, was represented by ESQwire.com, an advertiser on DomainGang.
The case was presented as too complex to be addressed via the UDRP channel and that’s what the Respondent emphasized:
Despite the Complainant’s choice to file an UDRP claim and its selective presentation of evidence, the case is not appropriate for the UDRP procedure because this matter is a business dispute between two partners whose relationship damaged and it is involving competing claims of employment and contractual relations, intellectual property rights under UK, Canadian and probably US laws. The present dispute is not a “cybersquatting” dispute whatsoever;
When that happens, the panel usually terminates the UDRP without ordering the domains to be transferred to the Complainant. This is what happened in this case, however one panelist disagreed with the majority. Warwick A. Rothnie, dissenting panelist, said:
An asset of the business was unilaterally transferred to a different holder and used to redirect people seeking the Complainant’s business to the business of one of its competitors. Accordingly, I would find that, on the record in this case, both disputed domain names have been registered and used by the Respondent in bad faith.
So it’s two versus one and the final decision orders the domain ClickBetter.com and ClickBetter.info to remain with the Respondent.
The domain transfer was denied.
Clickbetter Ltd. v. Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf / Justin Michie, ClickBetter LTD
Case No. D2021-18941. The Parties
The Complainant is Clickbetter Ltd., United Kingdom (“UK”), represented by Adlex Solicitors, UK.
The Respondent is Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf, Iceland/ Justin Michie, ClickBetter LTD, Canada, represented by ESQwire.com PC, United States of America (“US”).
2. The Disputed Domain Names and Registrar
The disputed domain names <clickbetter.com> and <clickbetter.info> are registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 16, 2021. On June 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 17, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 18, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 18, 2021.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 19, 2021. On July 16, 2021 the Respondent requested a deadline extension until July 27, 2021. The Response was filed with the Center on July 27, 2021. On August 31, 2021 the Center received an unsolicited supplemental filing from the Complainant. On September 15, 2021, the Center received an unsolicited supplemental filing from the Respondent.
The Center appointed Marilena Comanescu, Warwick A. Rothnie and The Hon Neil Brown Q.C. as panelists in this matter on September 10, 2021. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is an UK company registered in October 2012 which provides Internet advertising services.
The Complainant claims common law trademark rights for the “Clickbetter” name.
According to the Registrar’s verification, the disputed domain name <clickbetter.com> was registered on August 23, 2014 and the registrant is the Respondent Justin Michie; the disputed domain name <clickbetter.info> was registered on August 22, 2013 and the registrant is ClickBetter LTD, UK (i.e. the Complainant although the address is different).
At the time of filing the Complaint both disputed domain names were redirected to a third party website where services similar to those of the Complainant were promoted.
5. Parties’ Contentions
A. Complainant
The Complainant contends mainly the following:
– The Complainant was incorporated on October 9, 2012 upon the agreement of two associates, Sean Clark (the Complainant’s representative) and Justin Michie (the Respondent) and, according to their agreement, Mr. Clark was desingated as the sole director and shareholder and the Respondent Mr. Michie was an unofficial, “silent partner”;
– The Respondent Mr. Michie provided services to the Complainant for which he was paid a monthly management fee through his Canadian company;
– On September 5, 2012 the Respondent Mr. Michie acquired the disputed domain name <clickbetter.com> on behalf of the company to be created (i.e. the Complainant). The name for the disputed domain name was selected by the Respondent from a list of names provided by Mr. Clark;
– At least between March 27, 2013 and February 10, 2017, the Complainant was the registrant for the disputed domain name <clickbetter.com> – Exhibit 5 to Complaint;
– The Complainant generally paid the renewal fees for the disputed domain names;
– The Complainant used the disputed domain names for email addresses and for the “ClickBetter” branded websites until February 2021, when they were imporperly removed by the Respondent Mr. Michie;
– In 2017 and 2018 the Complainant made loans of, respectively, USD 100,000 and EUR 150,000 to the Respondent’s Canadian company which were guaranteed by Mr. Michie personally. From around 2019, the services provided by the Respondent to the Complainant’s business diminished and the relationship between the parties deteriorated, mainly as a result of the Respondent’s failure to repay the said loans. On July 30, 2020 the Complainant’s solicitors sent a legal letter to the Respondent seeking to enforce his personal guarantee – Exhibit 11 to Complaint. The Respondent did not formally reply to this letter;
– On February 17, 2021, the Complainant’s solicitors sent a letter to the Respondent advising that the Respondent will be locked out of the database that day because he sold the Complainant’s customer data, which is contrary to the data protection law – Exhibit 12 to Complaint. The Respondent did not substantively respond to this letter either;
– On February 19, 2021 the Complainant received a notification from the Registrar which showed that the Respondent had removed the Complainant’s name and email address from the registrant contact details for the disputed domain name <clickbetter.com> and replaced them with his own details. At around the same time, the Respondent changed the DNS for the disputed domain name <clickbetter.com> whith the result that the websites under the disputed domain names, as well as the Complainant’s emails, stopped working. Such action effectively destroyed the Complainant’s business within minutes;
– The Respondent also reconfigured the relevant email settings in order to take control of the Complainant’s business email addresses and thus the Respondent, inter alia, intercepted emails intended for the Complainant;
– On March 9, 2021, the Respondent changed the email address on the Complainant’s “click funnels” affiliate account, and, on March 12, 2021 he paid himself approximately USD 2,000 that was the Complainant’s credit in this account;
– As of May 14, 2021, the Respondent had redirected the disputed domain name <clickbetter.com> to the website of the Complainant’s biggest competitor;
– The Complainant relies in this Complaint on common law rights. By virtue of extensive trading and marketing activities, the Complainant has acquired substantial reputation and goodwill in the name “Clickbetter” which is recognized by the public as distinctive term in relation to the Complainant’s business;
– the Respondent’s use of the disputed domain names has been to seek to destroy the Complainant’s business;
-The change of the registrant’s information for the disputed domain name <clickbetter.info>, made between March 6 – April 7, 2021 was plainly connected with the Respondent’s illicit scheme intended to damage the Complainant and it should be treated as an act of registration in bad faith.
B. Respondent
The Respondent contends mainly the following:
– Despite the Complainant’s choice to file an UDRP claim and its selective presentation of evidence, the case is not appropriate for the UDRP procedure because this matter is a business dispute between two partners whose relationship damaged and it is involving competing claims of employment and contractual relations, intellectual property rights under UK, Canadian and probably US laws. The present dispute is not a “cybersquatting” dispute whatsoever;
– Between 2010-2012 Mr. Clark and the Respondent Mr. Michie had a joint venture relationship where they promoted each other’s information products and affiliates using third party websites;
– As part of the business arrangement Mr. Clark and Mr. Michie executed a partnership agreement as of May 5, 2012, which is the date they started working on the business together;
– The Respondent Mr. Michie is 50% owner of the Complainant which was formally created on October 6, 2012 with two associate partners: Justin Michie (the Respondent) and Sean Clark (the representative for the Complainant) as 50/50 partners – Exhibit 3 to Response;
– At some point in 2012, the Respondent thought “Clickbetter” would be a marketable and brandable name for its business with the Complainant. The Respondent purchased the disputed domain name <clickbetter.com> from a domain name provider on September 5, 2012. On August 22, 2013 the Respondent registered the disputed domain name <clickbetter.info>. At all relevant times, the Respondent maintained ownership of the disputed domain names and generally paid their renewal fees;
– Over the course of nearly 10 years, there were various changes in the administrative and technical details corresponding to the disputed domain names, however, at no time, did the Respondent intend to release his ownership interest in the disputed domain names. As long as the Respondent was a 50% owner of the Complainant or partner in the ongoing business, he was willing to contribute the disputed domain names for the business effort;
– The Complainant is not the exclusive user of the term “clickbetter”. The Complainant does not hold any registered trademark for this name;
– Any common law trademark right that the Complainant claims in the name “Clickbetter” was created by the joint efforts of the two parties involved in the present dispute;
– During the course of their business relationship, between March 2013 and January 2018, the parties registered several entities (around four) in order to act as subsidiaries of the Complainant and to promote various aspects of their business;
– The loans referred to by the Complainant were to be repaid through retention of profits from the Complainant’s operations;
– There were many business disputes and disagreements between the parties as well as thousands of emails and communications regarding operation of the business and corresponding roles and responsabilities of each party;
– On February 17, 2021 the Complainant’s representative (Sean Clark) improperly terminated the Respondent’s acces to all areas of their online business and therefore the Respondent retained ownership and use of the disputed domain names, as originally envisioned. When the websites were down, the Respondent attempted to restore the DNS settings but he received an error message, which was an external server issue that the Respondent was not able to acces – Exhibit 6 to Response. The Complainant’s representative Mr. Clark was the only party that had access to the servers and the Respondent had no possibility of restoring access to or ensuring the websites under the disputed domain names were active;
– The disputed domain names are currently pointed to a third party website that operates in a similar business with the Complainant and such third party holds registered trademark for the name “Clickbetter” in the UK;
– The Respondent has a legitimate interest in the disputed domain names also because these were formed of common dictionary words, the disputed domain names being a creative, somewhat suggestive representation of an affiliate marketing network – to “click” with “better results” (in terms of content and payouts). The Respondent approached the original domain name holder to purchase the disputed domain name <clickbetter.com> in good faith based on the inherent value of the common dictionary words forming the disputed domain name and without having any trademark in mind;
– It is undisputed that the Respondent registered the disputed domain names in 2012, respectively in 2013 in good faith.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and 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 the Complainant to prove each of the following three elements in order to obtain an order that the disputed domain name should be transferred or cancelled:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Before the Panel will proceed to analyze the merits of the case, it addresses the following three procedural aspects:
A. Procedural Aspects
a) Consolidation of multiple Disputed Domain Names and Respondents request
According to the provisions of paragraph 10(e) of the Rules, the Panel has the power to decide the consolidation of multiple domain names disputes. Further, paragraph 3(c) of the UDRP Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.
Under the Rules, the Respondent “means the holder of a domain name registration against which a complaint is initiated”. While the disputed domain names were privacy protected, the Complaint was filed against Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf. However, the Registrar verification revealed that Mr. Michie was the registrant for the disputed domain name <clickbetter.com> and ClickBetter LTD, UK (i.e. the Complainant albeit at a different address) was the registrant for the disputed domain name <clickbetter.info>.
From section 4.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) it results that in cases involving a Complainant request to consolidate against multiple respondents, panels look at whether (i) the disputed domain names or the corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties, and also procedurally efficient.
In case of the disputed domain name <clickbetter.info> the Complainant asserts that, although it is registered as the registrant for this domain name, this domain name is in fact controlled by the Respondent.
The Respondent claims he has maintained ownership of the disputed domain names since the outset and through the date of the Response.
At the time of filing the Complaint, the disputed domain names were used in the same manner: redirected to a third party website.
For the above, the Panel finds that the disputed domain names and corresponding websites are subject to common control and it would be equitable and procedurally efficient to decide the consolidation of multiple disputed domain names and the Respondents in the present procedure, Mr. Michie being the Respondent.
b) Admissibility of supplemental filings
Secondly, the Panel notes that both parties filed unsolicited supplemental filings. The Complainant submitted Supplemental Filings on August 31, 2021 and the Respondent further submitted Supplemental Filings on September 15, 2021.
Neither the Rules nor the Supplemental Rules make provision for supplemental filings, except at the request of the panel (see Rules, paragraph 12). However, on the one hand, Paragraph 10 of the UDRP Rules vests the panel with the authority to determine the admissibility, relevance, materiality and weight of the evidence, and also to conduct the proceedings with due expedition. On the other hand, Panels have repeatedly affirmed that the party submitting or requesting to submit an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response (e.g., owing to some “exceptional” circumstance). See section 4.6 of WIPO Overview 3.0.
Where unsolicited supplemental filings are admitted, it is usually because the material corrects some error or addresses an issue raised in a response which could not reasonably have been anticipated or which was not otherwise appropriate to deal with until a respondent’s position on a particular point was clear. See also Sarten Ambalaj San. Ve Tic. A.S. v. Stanley Pace, WIPO Case No. D2015-1790.
Having reviewed the parties’ supplemental submissions in this case, the Panel is of the opinion that they perpetuate the contested factual issues between the parties and they do not contain responses or new facts to points raised by the other party or which could not reasonably have been anticipated by the parties and therefore, the Panel does not see any exceptional circumstance in this case that necessitates allowing the supplemental submissions filed by the parties to be admissible. The Panel therefore declines to consider parties’ supplemental filings.
B. Dispute outside the scope of the UDRP
Before analyzing the application of the UDRP rules in the present proceeding and without prejudice to the findings below, the Panel notes that although the Complainant does not hold any registered trademark, it submits that it owns a common law trademark in the name for “Clickbetter”.
It is suggested in section 1.3 of WIPO Overview 3.0, that to establish unregistered or common law trademark rights for the purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services. Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the number of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys. In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning.
In this case, the Complainant submitted that, by virtue of its extensive trading and marketing activities, the name “Clickbetter” is recognized by the public as distinctive in the Complainant’s business and it submitted by Exhibit 9 to the Complaint the following supporting evidence: one invoice from May 2021; an email from an accountant sent to the Complainant’s representative with what is claimed to be an “account statement of turnover” between 2016-2020; five pictures named “sample promotional material” and an excerpt from Google Analytics evidencing the views per page for the disputed domain name <clickbetter.com> between January 1, 2020 – March 8, 2021.
Although, in view of the final decision of the Majority of the Panel, there is no need for it to make a substantive finding on this issue, the Majority of the Panel is not convinced that the Complainant has discharged the burden of proof on it of establishing its common law trademark rights under this first element of the Policy.
Moreover, it is apparent from the case file documents, that, the parties involved in this proceeding have: (i) a business collaboration for more than ten years; (ii) a partnership agreement backdated and based on which the Respondent claims 50% ownership in the Complainant and the Complainant alleges the Respondent is only an unofficial partner and not a shareholder/owner thereof; (iii) several entitites registered in multiple jurisdictions; (iv) allegations of unfair competition, taken down websites, blocking and incercepting emails, stealing funds, loans and many further facts presented in a contradictory manner by the parties.
Indeed, it is clear that the parties disagree on virtually all issues in this case and, in addition to the documentary evidence submitted and allegations made by the parties, there are thousands of email communications and other evidence that cannot be properly reviewed and submitted here which evidence the scope of the Respondent’s rights in the Complainant and his relationship with Mr. Clark, and registration and use of the disputed domain names. In order to get to the bottom of these issues the Majority of the Panel believes it will be necessary to have further evidence including cross-examination, discovery of documents and interrogatories or their equivalent. A UDRP panel does not have those mechanisms and has no power to order them.
As as a practical matter, the UDRP procedure is not well suited to the resolution of the kinds of complicated factual disputes that are presented in this proceeding. In this regard, the Panel notes that in the past Panels have often denied cases that are not based on the merits of issues arising under the UDRP, but on the ground that the relevant dispute between the parties exceeds the relatively limited “cybersquatting” scope of the UDRP. It has also frequently been found that such disputes would be more appropriately addressed by a court of competent jurisdiction than under the UDRP (see section 4.14.6 of the WIPO Overview 3.0). In the Panel’s view, the UDRP jurisprudence, its governing instruments and legislative background, all make it clear that the Policy was designed to prevent extortionate or abusive behavior commonly known as “cybersquatting” and that it should not be used to litigate disputes simply because they involve domain names in a subsidiary or peripheral way (see also Philippe Dagenais designer inc. / Philippe Dagenais v. Groupe Dagenais MDC inc. (formerly Philippe Dagenais Mobilier Décoration Conseils Inc.) / Mobilier Philippe Dagenais, WIPO Case No. D2012-0336; AUCONET GMBH v. FARNK WINTER, WIPO Case No. D2020-2651; Rockcliffe Landscaping Inc. v. Whois Agent (713109851), Whois Privacy Protection Service, Inc., Marc Arnold, WIPO Case No. D2021-2129; or Private Media Group v. Anton Enterprises Inc., d/b/a Private USA, WIPO Case No. D2002-0692).
As it was observed in The Thread.com, LLC v. Jeffrey S. Poploff, WIPO Case No. D2000-1470 “As the above factual recitation should make clear, this is not a garden-variety cybersquatting case. In fact, it is not a cybersquatting case at all. Rather, this appears to be a breach of contract and breach of fiduciary duty dispute between former partners. The only arguable reason that Complainant is seeking relief in this forum is that the property at issue is a domain name”. The Majority of the Panel finds that those remarks by the panel are equally applicable to the present proceeding.
The Majority of the Panel therefore concludes that, the present case falls outside the scope of the Policy in light of the complex factual matrix that underlies the dispute. Therefore, it is for a court of competent jurisdiction with greater inquisitorial and forensic powers to determine the nature of the relationship between the parties, the validity and content of the Silent Partnership Agreement and other agreements that may be concluded between the parties, and how these factors might be brought to bear inter alia on the ownership or disposition of the disputed domain names and on other remedies the court might find to be appropriate after examining the detail of this complex matter which clearly goes far beyond the ambit of the UDRP.
Therefore, the Majority of the Panel finds that the current dispute is not suitable for resolution under the UDRP and accordingly that it should not examine the issues that arise in a UDRP proceeding.
7. Decision
For the foregoing reasons, the Complaint is denied.
Marilena Comanescu
Presiding PanelistThe Hon Neil Brown Q.C.
PanelistWarwick A. Rothnie
Panelist (Dissenting)
September 27, 2021
DISSENTING OPINIONI respectfully dissent. I am indebted to the Panel for the extensive and detailed recounting of the facts (so far as revealed in the record).
First, I agree with the Majority of the Panel that there is plainly a larger dispute between the parties which we have neither the ability nor the mandate to decide. Whatever the merits of that dispute in what appears to be the breakdown of some sort of partnership or joint venture, however, it does not preclude us from deciding the issue raised by the Complaint – whether the Respondent has registered and used the disputed domain names in bad faith having regard to the three requirements set forth in paragraph 4(a) of the Policy. In my respectful opinion, the objects of the Policy would be too easily undermined if a respondent could escape liability under the Policy be raising disputes with the complainant about other matters. In fact, in the present case, the Respondent while arguing that the Policy does not apply justifies his conduct on the basis that he is the true holder of the disputed domain names.
That is the issue directly arising under the Policy and falls to be decided on the basis of the statements and documents submitted in accordance with the Policy and the applicable principles of law. See paragraph 15(a) of the Rules.
Secondly, I agree with the Majority of the Panel that the Complainant has not made a case for submission of an unsolicited supplemental filing and, accordingly, neither supplemental filing should be admitted.
Thirdly, I agree with the Majority of the Panel that consolidation of the Complaints against both disputed domain names is appropriate. It is common ground between the parties that, whatever name the second disputed domain name is formally registered in, the Respondent controls it as well as the first disputed domain name.
I turn then to consideration of the issues arising under the Policy. As this is a dissenting opinion only, I shall endeavour to set out my reasons in summary form only.
A. Identical or Confusingly Similar
As the Panel’s reasons note, the Complainant does not have a registered trademark but relies on “Clickbetter” as an unregistered trademark.
The Respondent contends that the Complainant cannot have exclusive rights in that trademark as a third party has in fact registered it. The issue before us, however, is not whether the Complainant’s use (or the Respondent’s, for that matter) infringes the third party trademark. The issue is whether or not the Complainant has developed a reputation or goodwill in “Clickbetter” such that the Complainant can be considered to have unregistered rights in the expression as a trademark.
In relation to that issue, the Complainant has submitted evidence:
(a) showing the use of its claimed trademark on its website and as a domain name in 2014;
(b) showing the use of its claimed trademark on name cards, banners and the like used at two marketing events held in Las Vegas in 2016 and 2018;
(c) annual turnover (in rounded terms):
(i) in 2016, of GBP 505,000;
(ii) in 2017, of GBP 2,191,000;
(iii) in 2018, of GBP 1,481,000;
(iv) in 2019, of GBP 1,814,000; and
(v) in 2020, of GBP 1,726,000.
(d) Google Analytics data showing daily page views of its website between January and around September 2020 ranged between 5,000 and 7,500 before declining after September 2020 to around 2,500.
This evidence is sufficient to establish that the Complainant has a relevant reputation in its claimed trademark to qualify as an unregistered trademark for the purposes of the Policy bearing in mind the comparatively niche nature of the market in which the Complainant operates and, further, that this requirement under the Policy is essentially a standing requirement to ensure that the Complainant has a genuine basis to bring its claims.
To an extent, the Respondent recognises this as he contends that the Complainant’s reputation in the name is solely due to his efforts in marketing and promoting the business. Those efforts, however, were not efforts undertaken on his own account but rather as agent for or on behalf of the business.
Disregarding the generic Top-Level Domains of the disputed domain names (as is usual – see WIPO Overview 3.0, section 1.11), therefore, the disputed domain names are both identical to the Complainant’s trademark.
B. Rights or Legitimate Interests
The Complainant contends that its domain names, the disputed domain names, have been transferred away from it by the Respondent without the Complainant’s permission.
The fact of transfer away from the Complainant without its permission does not appear to be in dispute between the parties. Rather, the Respondent contends that the disputed domain names are and always have been his domain names.
Both parties claim to have conceived the name. Both parties claim to have been paying the registration fees and dispute that the other party did so.
The Respondent claims that he identified and selected the first disputed domain name on his own account and independently of the Complainant or Mr. Clark. Then, in April 2013, he registered the second disputed domain name as a new domain name. According to the Respondent he registered the disputed domain names solely because they are valuable, brandable domain names with inherent value which he could develop, sell to a third-party or resell on the secondary market. The Respondent says further at no time did he surrender his ownership but so long as he was a 50 per cent owner of the Complainant or partner in the ongoing business he was willing to contribute the disputed domain name to the business.
Ordinarily, a shareholder in a company is not the owner of the assets of the company. Subject to an agreement to the contrary, the shareholder has a right in broad terms to vote in meetings of the members, to participate in dividend distributions and to share in the profits (if any) on the realisation of the assets of the company when it is wound up. The position of a partner is not much, if at all, different.
It is of course possible for a shareholder to allow the company, or a partner to allow the partnership, to use some property of the shareholder/partner while still retaining ownership of the property. An example might be where the shareholder leases some property such as an office or factory to the company.
There is nothing in the documentation submitted by the parties to support the Respondent’s claim to independent ownership of the disputed domain names which he made available to the Complainant and could take back for his own use as and when it suited him.
First, the objective evidence in the form of contemporaneous emails shows that Mr. Clark identified <clickbetter.com> and five other domain names for the purposes of their proposed business in September 2012. From these, Mr. Michie identified <clickbetter.com> as “better than all the rest”. Mr. Michie then proceeded to buy the first disputed domain name on behalf of the business with Mr. Clark promising to pay half the costs.
The Respondent’s claim in 2021 to identifying and selecting the first disputed domain name on his own account and independently of the Complainant or Mr. Clark does not sit with this email correspondence. Nor does it explain it.
Secondly, the objective evidence in the form of WhoIs records show that both disputed domain names were registered in the Complainant’s name. At least in the case of the first disputed domain name, Mr. Michie was identified as the registrant contact and Mr. Clark was identified as the administrative and technical contacts.
The Complainant remained the registrant of both disputed domain names until February 2021 when the first disputed domain name was transferred into the Respondent’s name and control.
The second disputed domain name was not formally transferred out of the Complainant’s name but, at the same time, came under the unilateral control of the Respondent and, like the first disputed domain name, redirected to the site of one of the Complainant’s competitors.
Thirdly, the Respondent relies on a Silent Partnership Agreement between himself and Mr. Clark as setting out the terms of their relationship and the conduct of the business of the Complainant. Apart from this agreement, the Respondent has not submitted any correspondence or other documentation supporting his claim to have lent or otherwise permitted the Complainant to use the disputed domain names.
Under the Silent Partnership Agreement, Mr. Clark and Mr. Michie each have an equal 50 per cent interest in the business. They each have an equal vote. They share equally in the profits and losses. Further, “No Partner is authorized to act on their own in obtaining contracts, financial, or other obligations on the Partnership. Decisions will be based on a majority of equal votes among Partners”.
These arrangements directly contradict the Respondent’s claim to unilaterally transfer the disputed domain names into his sole control.
In these circumstances, I would find that the Complainant has established a prima facie case that the Respondent does not have rights or a legitimate interest in the disputed domain names which the Respondent has not rebutted. Accordingly, I would find the Complainant has established the second requirement under the Policy.
C. Registered and Used in Bad Faith
In my view, the transfer of the disputed domain names from the Complainant to the Respondent in February 2021 is the point at which registration and use in good faith falls to be tested.
Prior to that transfer, the disputed domain names were registered in the Complainant’s name and subject to the joint decision making processes set up under the Silent Partnership Agreement. After that transfer, both disputed domain names were under the unilateral control of the Respondent.
This was not a mere formal change in registration and control of the kind contemplated by WIPO Overview 3.0, section 3.9. Nor was it a transfer between members of the same corporate group where ultimate control remained the same. It was a transfer from joint control by Mr. Clark and Mr. Michie through the Complainant to sole control by Mr. Michie.
That transfer of control was done with knowledge of the Complainant’s use of the “Clickbetter” trademark in its business. It appears to have been done to further Mr. Michie’s claims in his dispute with Mr. Clark over the conduct of the business. For the reasons outlined in Section B Rights or Legitimate Interests, I would find it was done without any right or title to do so. An asset of the business was unilaterally transferred to a different holder and used to redirect people seeking the Complainant’s business to the business of one of its competitors.
Accordingly, I would find that, on the record in this case, both disputed domain names have been registered and used by the Respondent in bad faith.
Warwick A. Rothnie
Panelist (Dissenting)
September 27, 2021
