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Algorand.CO #UDRP : Domain investing is a legitimate activity

When a generic domain is older than the keyword’s trademark, the rule of thumb is that there is no bad intention in the registration.

In the case of Algorand.CO, the Indian Respondent registered the domain at a time that the Complainant, Algorand, Inc. had not yet registered their mark.

The panelist’s decision favored the Respondent, but this little tidbit is important to highlight – it emphasizes the legitimacy of domain investing as a professional activity:

…the Respondent is a domain name investor/reseller, and registered the disputed domain name prior to Complainant’s rights in the ALGORAND trademark. Prior Panels have held that domain name investing or trading is a legitimate activity. See Alphalogix Inc. v. DNS Servs., FA 491557 (Forum. July 26, 2005) (“Respondent is in the business of creating and supplying names for new entities, including acquiring expired domain names.  This is a legitimate activity in which there are numerous suppliers in the United States.”).

Full details follow:

The domain transfer was denied.

Algorand, Inc. v. Kabir S Rawat

Claim Number: FA2006001900213

PARTIES

Complainant is Algorand, Inc. (“Complainant”), represented by Robert D. Carroll of Goodwin Procter LLP, Massachusetts, USA. Respondent is Kabir S Rawat (“Respondent”), India.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <algorand.co>, registered with GoDaddy.com, LLC.

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.

Petter Rindforth as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on June 15, 2020; the Forum received payment on June 15, 2020.

On June 16, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <algorand.co> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 June 18, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 8, 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@algorand.co. Also on June 18, 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 July 7, 2020.

On July 13, 2020 an Additional Submission was received from the Complainant.

On July 13, 2020 an Additional Submission was received from the Respondent.

Both Additional Submissions complies with Supplemental Rule 7, and are accepted.

On July 10, 2020, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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 provides blockchain technology to consumers allowing for the performance of borderless financial transactions. Complainant has rights in the ALGORAND trademark through its registration of the trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 6,024,666, registered Mar. 31, 2020). Complainant also has rights in the ALGORAND trademark by investing substantial sums in developing the trademark and developing a high degree of consumer recognition and distinctiveness as a result. Respondent’s <algorand.co> domain name is identical or confusingly similar to Complainant’s trademark, as Respondent fully incorporate the trademark and merely adds the “.co” country code top-level domain. (“ccTLD”).

Respondents has no rights or legitimate interests in the <algorand.co> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s trademark. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is merely parking the disputed domain name with messaging stating the domain name is for sale.

Respondent registered and uses the <algorand.co> domain name in bad faith. Specifically, Respondent is offering the disputed domain name for sale to Complainant for an excessive sum. Additionally, Respondent is a cybersquatter and has an established pattern of bad faith registration. Respondent has not made any demonstrable preparations to use the disputed domain name. Furthermore, Respondent had actual knowledge of Complainant’s rights in the ALGORAND trademark at the time of registration.

B. Respondent

Respondent is a domain name investor with over 1000 domain name in his portfolio. Respondent uses customized software, attention to trends and attractive combination when deciding on domain name to register. The <algorand.co> domain name uses the Galician translation of the English word “algorithm.”

UDRP disputes are a hazard in domain name investing and Complainant cherry picked UDRP disputes that Respondent has lost and ignored the UDRP case Respondent has won. Respondent’s rights in the <algorand.co> domain name predate Complainant’s rights in the ALGORAND trademark.

C. Additional Submissions

Complainant

The Complainant states that Respondent’s argument there is no bad faith as the disputed domain name was before the Complainant’s first trademark was registered, is not correct. Complainant claims to have common law rights in the ALGORAND trademark at least as early as 2016.

Further, Respondent’s argument that the disputed domain name was registered on April 5, 2016 is incorrect, as <algorand.co> was registered in the name of the Respondent on February 8, 2017.

Further, Respondent’s repeated attempts to sell the <algorand.co> domain name to the Complainant for a price well above the cost of registration is clear evidence of Respondent’s bad faith.

Respondent

Respondent points out that the Complainant’s trademark did not exist until the Respondent registered the disputed domain name, and the Respondent was not familiar with Complainant’s trademark at that time.

Respondent is a domain name investor, and the actions form the Complainant is a clear intention of “snatching” the domain name <algorand.co> from the Respondent. The Respondent does not see any bad faith in investing in domain names.

FINDINGS

The Complainant is the owner of the following U.S. trademark registration:

No. 6,024,666 ALGORAND (word), registered March 31, 2020 for goods and services in classes 9, 41 and 42. The application was filed on February 15, 2018, with a first use date of February 15, 2018 and a first use in commerce date of February 5, 2019.

The Complainant’s founder published an academic paper on July 6, 2016: “ALGORAND: The Efficient and Democratic Ledger”, which is the Complainant’s first use of the word ALGORAND.

The disputed domain name <algorand.co> was registered in the name of the Respondent on February 8, 2017.

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 Complainant claims rights in the ALGORAND trademark through its registration of the trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 6,024,666, registered Mar. 31, 2020). Registration with the USPTO is sufficient to demonstrate rights in a trademark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that the Complainant has rights in the ALGORAND trademark under Policy ¶ 4(a)(i).

Complainant also asserts rights in the ALGORAND trademark by investing substantial sums in developing the trademark and developing a high degree of consumer recognition and distinctiveness as a result. Common law rights can also establish rights in a mark per Policy ¶ 4(a)(i). See Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (holding, “A Complainant does not need to hold registered trademark rights in order to have rights in a trademark under Policy ¶ 4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out.”). To establish common law rights in a mark, a complainant generally must prove that the trademark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”).

The Panel notes that Complainant does not provide evidence in support of the claim for Common Law rights. The Panel further notes that the registered trademark is officially registered on March 31, 2020 with February 5, 2019 as the date of first use in commerce – meaning that the Examiner can accept common Law rights by use, but only from February 5, 2019. The use as part of the title of the academic paper from July 6, 2016 is not enough to prove common Law trademark rights from that date.

Complainant argues Respondent’s <algorand.co> domain name is identical or confusingly similar to Complainant’s trademark, as Respondent fully incorporate the trademark and adds the “.co” ccTLD. Adding a ccTLD to a fully incorporated mark may be found to be identical for purposes of Policy ¶ 4(a)(i). See CloudFlare, Inc. v. [Registrant], FA 1624251 (Forum Aug. 1, 2015) (holding, “The inclusion of a ccTLD does not alleviate the similarity between a mark and a disputed domain name as per Policy ¶ 4(a)(i).”). Therefore, the Panel find that Respondent’s <algorand.co> domain name is identical to Complainant’s trademark under Policy ¶ 4(a)(i).

While Respondent argues that its registration of the <algorand.co> domain name predates Complainant’s alleged rights in the trademark, the Panel find that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark(s) and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).

Rights or Legitimate Interests

Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).

Complainant argues that Respondent has no rights or legitimate interests in the <algorand.co> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed or authorized by the Complainant to use Complainant’s trademark. Relevant WHOIS information can be used as evidence to show a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name).

Additionally, lack of authorization to use a complainant’s trademark may indicate that the respondent lacks rights or legitimate interest in a disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).

The Panel notes that the WHOIS of record identifies the Respondent as “Kabir S Rawat” and no information in the record indicates that Respondent was authorized to use Complainant’s trademark or was commonly known by the disputed domain name. So far the Panel agrees with the Complainant’s conclusions.

However:

The Respondent argues that Respondent has rights and legitimate interest in the <algorand.co> domain name, as the Respondent is a domain name investor/reseller, and registered the disputed domain name prior to Complainant’s rights in the ALGORAND trademark. Prior Panels have held that domain name investing or trading is a legitimate activity. See Alphalogix Inc. v. DNS Servs., FA 491557 (Forum. July 26, 2005) (“Respondent is in the business of creating and supplying names for new entities, including acquiring expired domain names. This is a legitimate activity in which there are numerous suppliers in the United States.”).

Additionally, registering a disputed domain name before a complainant’s trademark is registered can establish rights and legitimate interest in a disputed domain name for the respondent. See Latent Tech. Group, Inc. v. Fritchie, FA 95285 (Forum Sept. 1, 2000) (finding that the respondent does have a legitimate interest in the domain name where the respondent registered the disputed domain name for a legitimate business purpose prior to complainant’s application for registration of the mark and the complainant has not proven any earlier use of the mark).

The Panel notes that the correct date when the disputed domain name <algorand.co> was registered in the name of the Respondent is February 8, 2017.

The question is if the Complainant had established trademark rights in ALGORAND before that date. Complainant refers to an academic paper, written by Complainant’s founder and published on July 6, 2016: “ALGORAND: The Efficient and Democratic Ledger”. This is 4 years before the trademark ALGORAND was registered in the name of the Complainant, and 7 months before the Respondent registered the disputed domain name.

The term “trademark or service mark” as used in Policy ¶ 4(a)(i) encompasses both registered and unregistered (“common law”) trademarks. However, in order to establish unregistered / common law trademark rights for the purposes of the Policy, a complainant must show that the trademark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services. This can be evidence in the form of amount of sales, public recognition, consumer surveys, etc. In this case, the Complainant, although filing an Additional Submission, has not provided any such evidence in support of any trademark notification/use before February 8, 2017.

On the contrary, the Complainant refers to the Certificate of Registration for the U.S. trademark No. 6,024,666 ALGORAND (word). There, the Complainant has informed the USPTO that the date of first use is February 15, 2018 and the date of first use in commerce is February 5, 2019.

Based on evidence provided by the Complainant, the Panel accept February 8, 2017 as the registration date of the disputed domain name, and February 15, 2018 as the date of first use of the trademark ALGORAND (one year later).

Therefore, the Panel finds that Respondent has rights and legitimate interest in the <algorand.co> domain name.

Registration and Use in Bad Faith

The Complainant argues that Respondent registered and uses the <algorand.co> domain name in bad faith, however the Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Tristar Products, Inc. v. Domain Administrator / Telebrands, Corp., FA 1597388 (Forum Feb. 16, 2015) (“Complainant makes conclusory allegations of bad faith but has adduced no specific evidence that warrants a holding that Respondent proceeded in bad faith at the time it registered the disputed domain name. Mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith.”); see also Chris Pearson v. Domain Admin / Automattic, Inc., FA 1613723 (Forum Jul. 3, 2015) (finding that the complainant could not establish the respondent registered and used the disputed domain name in bad faith because it failed to present evidence that would support such a holding).

As noted above, if Respondent’s registration of the <algorand.co> domain name predates Complainant’s first claimed (and proved) rights in the ALGORAND trademark, Complainant generally cannot prove registration in bad faith per Policy ¶ 4(a)(iii), as the Policy requires a showing of bad faith registration and use. See Platterz v. Andrew Melcher, FA 1729887 (Forum Jun. 19, 2017) (“Whatever the merits of Complainant’s arguments that Respondent is using the Domain Name in bad faith, those arguments are irrelevant, as a complainant must prove both bad faith registration and bad faith use in order to prevail.”); see also 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.”).

The Panel finds that Respondent did not register the <algorand.co> domain name in bad faith.

As the “Registration and Use in Bad Faith” Element of the Policy is thereby not proved, the Examiner see no reason to also in detail examine if the disputed domain name is used in bad faith. However, generally speaking, the business practice as such of registering domain names for subsequent re-sale – even for profit – is not by itself a bad faith use. This is only so, when a disputed domain name was in fact also registered in bad faith in the name of the respondent.

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 <algorand.co> domain name REMAIN WITH Respondent.

Petter Rindforth, Panelist

Dated: July 22, 2020


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