Ashanti PLC scored a finding of Reverse Domain Name Hijacking, in a UDRP involving the domain name SpringGate.com.
Attorney John Berryhill was the Respondent’s attorney, pointing out that the Complainant failed to include communication between the two parties prior to the filing of the UDRP, that included the following:
“It is my understanding from my client that they have had the domain name since 2006, which is considerably senior to your client’s mark, and that the name was previously used by my client for advertising relating to gates and gate hardware.”
The three member panel at the WIPO ordered the domain name SpringGate.com to remain with the Respondent, and delivered a finding of Reverse Domain Name Hijacking.
Full details follow:
Schoffstall Farm, LLC v. Privacy.co.com – 80580, Savvy Investments, LLC Privacy ID# 1048451 / Ashantiplc Limited
Case No. D2020-05911. The Parties
The Complainant is Schoffstall Farm, LLC, United States of America (“United States”), represented by Tucker Arensberg, P.C., United States.
The Respondent is Privacy.co.com – 80580, Savvy Investments, LLC Privacy ID# 1048451, United States / Ashantiplc Limited, Hong Kong, China, represented by John Berryhill, Esq., United States.
2. The Domain Name and Registrar
The disputed domain name <springgate.com> is registered with Sea Wasp, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 9, 2020. On March 10, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 11, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 15, 2020, 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 March 18, 2020.
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 March 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 12, 2020. The Response was filed with the Center April 2, 2020.
The Center appointed Steven A. Maier, Christopher J. Pibus, and Nick J. Gardner as panelists in this matter on May 8, 2020. 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 a limited liability company formed in 2010 under the laws of the Commonwealth of Pennsylvania, United States. It has traded since 2014 as SpringGate Vineyard, Winery and Brewery and has used the marks SPRING GATE and/or SPRINGGATE in that connection since March 2014.
The Complainant is the owner of trademark registrations including the following:
– United States trademark number 5301317 for the word mark SPRING GATE, registered on October 3, 2017, in Classes 32 and 33;
– United States trademark number 5973378 for the word mark SPRINGGATE, registered on January 28, 2020, in Classes 32 and 33.The disputed domain name was first registered on February 26, 1999.
The disputed domain name has been used for the purposes of a “parking page” website offering links to various goods and services, including those connected with springs and gates. The page has also stated that the domain owner is willing to entertain a sale or other proposals.
5. Parties’ Contentions
A. ComplainantThe Complainant provides evidence of its use of the mark SPRINGGATE for the sale of wine, cider, and beer and merchandise including t-shirts, hats, and bottles, since 2014. It states that it has invested substantial time and money in the promotion of its business under that mark and has a significant presence on social media. It contends that, as a result of these matters, its mark SPRINGGATE has enjoyed public recognition since 2014 as designating the Complainant’s goods and that it has obtained common law rights in that mark in addition to the registered rights referred to above.
The Complainant submits that the disputed domain name <springgate.com> incorporates its trademark SPRINGGATE in its entirety and is identical to that trademark.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It states that it has never authorized the Respondent to use its SPRINGGATE trademark, that the Respondent has not been commonly known by that name, and that the Respondent is making neither bona fide commercial use nor legitimate noncommercial or fair use of the disputed domain name. The Complainant specifically denies that the Respondent’s use of the disputed domain name for the parking page referred to above amounts to bona fide commercial use. While it concedes that: “… the words “spring gates” could be viewed as descriptive under certain conditions,” it states that the Respondent is not offering to sell “spring gates”. The Complainant contends that the Respondent’s parking page is merely a vehicle for the sale of the disputed domain name.
The Complainant submits that the disputed domain name was registered and has been used in bad faith. While acknowledging that the disputed domain name was first registered in 1999, the Complainant alleges “on information and belief” that the Respondent acquired the disputed domain name in about 2018. It bases this assertion on a domain history report, which it exhibits, although it does not explain what information contained in that report it considers significant. The Panel notes, however, that the report records a change in the registrar of the disputed domain name from Fabulous.com Pty Ltd to Sea Wasp, LLC in about May 2018.
The Complainant contends that the Respondent acquired the disputed domain name primarily for the purpose of selling it, and has in furtherance of that purpose used the disputed domain name misleadingly to attract Internet users who are looking for the Complainant’s website. The Complainant submits that it is the only known user of the SPRINGGATE mark and that the Respondent knew or ought to have known of the Complainant’s rights when it registered the disputed domain name. Specifically, it contends that even a cursory Internet search carried out in 2018 would have revealed the Complainant’s existing business under the SPRINGGATE mark.
The Complainant further contends that the Respondent was under a continuing duty to ensure that the disputed domain name did not violate the Complainant’s trademark rights and that and any such violation, even after the date of acquisition of the disputed domain name, should be deemed retroactive bad faith for the purposes of the Policy (e.g., Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, WIPO Case No. D2009-0786).
The Complainant exhibits a letter sent by its counsel to the Respondent on November 27, 2019, demanding the transfer of the disputed domain name to the Complainant in exchange for payment of the Respondent’s documented out-of-pocket costs. The Complainant refers to a reply from the Respondent dated November 28, 2019, denying that the Respondent was infringing on the Complainant’s rights, but does not exhibit a copy of that response. The Complainant contends that the Respondent’s failure to transfer the disputed domain name on the terms of the Complainant’s proposal is further evidence of the Respondent’s bad faith.
The Complainant requests the transfer of the disputed domain name.
B. Respondent
The Respondent disputes the Complainant’s assertion that it acquired the disputed domain name in 2018. The Respondent states that it acquired the disputed domain name at a Snapnames.com domain name auction on April 6, 2006, and produces, in support of that statement, a Snapnames.com receipt for the sale of the disputed domain name, dated April 6, 2006, and addressed to the Respondent. It also exhibits separate confirmation of the Respondent’s purchase provided more recently by the parent company of Snapnames.com.
The Respondent points out that the Complainant does not explain what in its exhibited domain history report suggests that the Respondent acquired the disputed domain name in 2018. The Respondent speculates that this must be the change in registrar from Fabulous.com Pty Ltd to Sea Wasp, LLC (referred to above). However, the Respondent submits that this was the result only of Sea Wasp LLC having acquired the business of Fabulous.com in late 2017 and exhibits evidence in support of that submission.
The Respondent submits that, not only does the Complainant have no evidence that the Respondent acquired the disputed domain name in 2018, but the Respondent specifically put it on notice of its earlier acquisition of the disputed domain name in its representative’s email dated November 28, 2019, which the Complainant omitted to exhibit. The Respondent produces that email, which includes the following sentence:
“It is my understanding from my client that they have had the domain name since 2006, which is considerably senior to your client’s mark, and that the name was previously used by my client for advertising relating to gates and gate hardware.”
The email further requests that the Complainant include a copy of this correspondence as an exhibit to any UDRP filing. The Respondent states that the Complainant requested no further information concerning the Respondent’s claimed rights before filing this proceeding, and contends that the Complainant’s failure to exhibit the email in question constituted an attempt to mislead the Panel and was also contrary to the Complainant’s certificate that the information contained in the Complainant was complete and accurate to the best of the Complainant’s knowledge.
The Respondent submits that, since it acquired the disputed domain name several years before the Complainant either came into existence or began using its SPRINGGATE mark, the Complaint must inevitably fail, as the Respondent cannot have registered the disputed domain name in bad faith in order to take unfair advantage of the Complainant’s mark.
The Respondent further submits that the Complainant’s claim of “retroactive bad faith” based on the Octogen line of decision (supra) should be dismissed as that line of jurisprudence has been overwhelmingly disapproved by panels under the UDRP.
The Respondent submits that, in any event, it has rights or legitimate interests in the disputed domain name and has not used it in bad faith. It contends that the disputed domain name comprises two dictionary terms, “spring” and “gate” which are in common usage both individually and together and exhibits evidence to that effect. It states that it has used the disputed domain name both to link to products related to these terms and to offer the disputed domain name for sale, both of which are legitimate purposes in circumstances where it has not sought in any manner to target the Complainant’s trademark.
6. Discussion and Findings
In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and,
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established that it is the owner of trademark registrations for the names SPRING GATE and SPRINGGATE. The disputed domain name is effectively identical to these trademarks and the Panel therefore finds that the first element under paragraph 4(a) is satisfied.
B. Rights or Legitimate Interests
In the light of the Panel’s findings in respect of bad faith, below, it is unnecessary for the Panel to express a conclusion on the question of the Respondent’s rights or legitimate interests.
C. Registered and Used in Bad Faith
The Panel finds on the evidence that the Respondent acquired the disputed domain name in April 2006, several years before the Complainant was incorporated in 2010, or began using its SPRING GATE or SPRINGGATE trademarks in 2014. In the circumstances, the Respondent cannot have registered the disputed domain name in the knowledge of the Complainant’s trademark and with the intention of taking unfair advantage of that trademark, and cannot therefore have registered it in bad faith for the purposes of the Policy (see e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.8). Since the requirement under paragraph 4(a)(3) is conjunctive, i.e. the disputed domain name must have been both registered and used in bad faith, the Complaint must therefore fail.
The Panel accepts the Respondent’s submission that the Octogen line of decisions, which would infer retroactive bad faith in certain circumstances, has been discredited and is of no application in this case.
7. Reverse Domain Name Hijacking
Under paragraph 15(e) of the Rules:
“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.”
The Complainant is professionally represented in this matter and, in the opinion of the Panel, knew or ought to have known that it had no reasonable chance of prevailing in this proceeding for the reasons set out above. The Complainant produced no material evidence that the Respondent acquired the disputed domain name in 2018 and gave no reasonable explanation for its assertion to that effect. The Panel is particularly perturbed by the Complainant’s failure to exhibit the Respondent’s email dated November 28, 2019, stating that it had acquired the disputed domain name in 2006, having exhibited its own letter of the previous date and having been expressly requested by the Respondent to include its reply. The Panel is also of the view that the Complainant’s purported reliance on the Octogen line of cases implies its clear awareness that its case was fundamentally flawed.
The Panel therefore finds that the Complainant was brought in bad faith and constitutes an abuse of the administrative proceeding.
8. Decision
For the foregoing reasons, the Complaint is denied.
Steven A. Maier
Presiding PanelistChristopher J. Pibus
PanelistNick J. Gardner
PanelistDate: May 14, 2020
