CanonCityPropertyManagement.com: Yes, this UDRP ended up being a #RDNH finding

Canon City Property Management LLC filed a UDRP against the domain name CanonCityPropertyManagement.com.

Complainant is a company involved in the business of real estate, including marketing, leasing and management of residential property, among others and offers its services in Canon City, Colorado.

According to the UDRP, the Respondent is a company involved in the creation and design of websites for property management businesses and in 2016, the company Proficient Property Management Services, Inc. (PPMS) located in Canon city, Colorado requested from Respondent web creation services. Respondent registered the domain name canoncityproprertymanagement.com on October 28, 2016 with GoDaddy, on behalf of its Client (“PPMS”).

Respondent also argues that the website was completed and went live in 2021, due to the creation of a complex client portal. Since 2021, the Client uses the website that linked to that the disputed domain name to promote its services.

The Complainant offered $5,000 dollars for the domain and when the Respondent declined, they filed a UDRP. There are more obvious cases of RDNH that were not delivered but in this case the sole panelist at the Forum (NAF) stated that this was a “Plan B” case:

Thirdly, the present case has features which might be described as those of a “Plan B Reverse Domain Name Hijacking case”. Indeed, Complainant offered to purchase the domain name to Respondent before filing the present dispute.

Final decision: Deny transfer of the domain CanonCityPropertyManagement.com and a finding of Reverse Domain Name Hijacking.

Canon City Property Management, LLC v. David Borden

Claim Number: FA2203001987569

PARTIES

Complainant is Canon City Property Management, LLC (“Complainant”), represented by Chad G. Clark, Colorado, USA. Respondent is David Borden (“Respondent”), represented by Jyoti Pandya of Pandya Law, LLC, Colorado, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is , registered with GoDaddy.com, LLC.

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.

Mrs Nathalie Dreyfus as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on March 9, 2022; the Forum received payment on March 9, 2022.

On March 10, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the 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 March 14, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 15, 2022 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@canoncitypropertymanagement.com. Also, on March 14, 2022, 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 April 15, 2022.

On April 27, 2022 Complainant filed an Additional Submission following Respondent’s response.

On April 21, 2022, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Mrs Nathalie Dreyfus 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 is Canon City property Management LLC, a company involved in the business of real estate, including marketing, leasing and management of residential property, among others and offers its services in Canon City, Colorado. As of August 4, 2017, Complainant filed Articles of Organization as a limited liability company in Colorado under the name Canon City property Management. Complainant began doing business no later than January 1st, 2018. On July 7, 2021, Complainant filed a US trademark application for “Canon City Property Management” under No. 90814980.

Complainant asserts that the domain name is confusingly similar to its prior rights as it incorporates its trademark.

Complainant also argues that Respondents have no rights or legitimate interests in the domain name as Respondent had notice of Complainant’s trade name at least as of August 4, 2017. In addition, Complainant asserts that it began doing business on January 2018 and operating its website under the domain name .

Complainant contends that Respondent at that time were not using the domain name to hosts its business, but was displaying a GoDaddy placeholder page. Respondent began to use the domain name in 2021 by hosting a website offering services that are identical to Complainant’s and exercise in the same city.

Furthermore, Complainant argues that Respondent has no trademark or service mark rights in the domain name. Whereas, Complainant applied on July 7, 2021 for “Canon city Property Management“ trademark and has been commonly known under this name since 2018. In this regard, in August 2021, Complainant attempted to purchase the dispute domain name from Respondent for 5000 USD, but Respondent refused.

Finally, Complainant asserts that Respondent registered and uses the domain name in bad faith as Respondent attempts to attract users for commercial gain by using a confusingly similar domain name to redirect users to competing goods and services.

B. Respondent

Respondent is Mr. David Borden who is the co-founder and co-owner of KOHVA company, which is doing business under the name Property Management Websites (“PMW”). This company is involved in the creation and design of websites for property management businesses throughout the United States. Respondent has created many websites. In this regard, in 2016, the company Proficient Property Management Services, Inc. (PPMS) located in Canon city, Colorado requested from Respondent web creation services. Respondent registered the domain name on October 28, 2016 with GoDaddy, on behalf of its Client (“PPMS”). Respondent also argues that the website was completed and went live in 2021, due to the creation of a complex client portal. Since 2021, the Client uses the website that linked to that the disputed domain name to promote its services.

Respondent asserts that Complainant cannot evidence rights in the CANON CITY PROPERTY MANAGEMENT mark. Respondent indicates that Complainant’s trademark application has been refused by the USPTO. One of the refusal reasons is that the trademark is primarily geographically descriptive of the origin of applicant’s services. Consequently, Respondent asserts that Complainant has no federal statutory trademark registration.

In addition, Respondent asserts that Complainant has no Common law trademark rights as it failed to evidence secondary meaning in the trademark by the use of its trade name as it is made up of geographical and generic terms.

Further, Respondent asserts that it has rights or legitimate interests in the disputed domain name. On the one hand, this domain name is descriptive of the location and nature of its Client’s business. On the other hand, Respondent holds the domain name on behalf of a company that provides property management services in Canon city. In this regard, this common practice to incorporate a reference to the geographic location in the domain name is the purpose to have a better referencing on the Internet. Thus, it is a bona fide use of the domain name and establishes Respondent’s legitimate interest.

Respondent underlines that Complainant had not been formed under state law and did not exist at the time of the registration of the disputed domain name. It is only since January 2018 that Complainant began advertising its services through domain name.

Thus, Respondent claims that the disputed domain name should not be considered as having been registered and being used in bad faith, as so far as at the time where the Respondent registered the domain name, Complainant did not come into existence.

In August 2021, Complainant’s representative attempt to obtain the disputed domain name by sending a purchase offer to Respondent. After Respondent refused this offer, Complainant commenced this proceeding. In this regard, Respondent argues that this is an illegitimate attempt at reverse domain name hijacking.

C. Additional Submissions

Complainant in its Additional Submission states that Respondent’s registration has been done in bad faith because it omits the date where Proficient Property Management Services assumed control of the contested Domain.

Complainant indeed asserts that there has been a transfer of control of the disputed domain name from David Borden to Proficient Property Management Services, Inc (PPMS) after August 4, 2017, and that in such cases, the date that should be considered for the bad faith analysis at registration is the date of the transfer of the domain name.

In addition, Complainant argues that Proficient Property Management Services (PPMS) offers similar or identical services as those of Complainant.

Moreover, Complainant underlines that its mark is not generic because of the inclusion of a geographically descriptive term.

Finally, Complainant sustains that it has trademark rights in its mark because it and has sought registration for its mark with the USPTO, and acquired distinctiveness by using its mark since January 2018.

FINDINGS

Respondent registered the disputed domain name on October 28, 2016, prior to Complainant’s existence and Complainant’s filing of the trademark “CANON CITY PROPERTY MANAGEMENT” before the USPTO, dated July 7, 2021.

Respondent registered the disputed domain name on behalf of Proficient Property Management services, for the creation of its website.

Complainant filed Articles of Organization as a limited liability company in Colorado on August 4, 2017 and began doing business and adverting its services on January 1st, 2018.

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 disputed domain name has been registered by Respondent on October 28, 2016.

As of August 4, 2017, Complainant filed its Articles of Organization as a limited liability company in Colorado and began its business on January 2018. On July 7, 2021, Complainant filed a trademark application for “CANON CITY PROPERTY MANAGEMENT” with the USPTO (e.g., Serial No. 90,814,980).

In this regard, past panels have allowed a pending application to serve as evidence of a complainant’s rights to a mark when the complainant also holds a Notice of Allowance. See Love City Brewing Company v. Anker Fog/Love City Brewing Company, FA1753144 (Forum Nov. 17, 2017). However, in this case, the USPTO issued a provisional refusal of Complainant’s trademark application, notably because the trademark is made up of geographic and generic terms.

On the other hand, Policy ¶ 4(a)(i) does not require a Complainant to own a trademark prior to a Respondent’s domain name registration if it can establish common law rights in the mark, including advertising and profiting from use of the mark. See Lokai Holdings, LLC v. Domain Admin / Whois Privacy Corp., 1763598 (Forum Jan. 22, 2018). In this regard, relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. See Amsec Enterprises, L.C. v. Sharon McCall, D2001-0083 (WIPO April 3, 2001).

Complainant provides evidence of investing in advertising, as well as results for Google and Bing searches of the trademark. Complainant also sustains, in its additional submission that it has common law rights in the disputed domain name, because it has been using its mark since January 2018 and has sought registration with the USPTO. Besides, Complainant also argues that the provisional refusal issued by the USPTO can be overcome.

While Respondent contends that the disputed domain name is comprised of geographic terms and predates Complainant’s use of the mark, the Panel find such a determination is not necessary under Policy Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also 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)).

Thus, the Panel finds that Complainant satisfied the first requirement by demonstrating it has rights on the “CANON CITY PROPERTY MANAGEMENT” trademark that is incorporated in the disputed domain name.

The Panel finds that the disputed domain name is identical to Complainant’s common law trademark rights.

Rights or Legitimate Interests

Under Policy paragraph 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of the disputed domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).

Complainant contends Respondent lacks rights and legitimate interests in the disputed domain name because Respondent is not authorized to use the CANON CITY PROPERTY MANAGEMENT trademark, Respondent commonly known by the disputed domain name and Respondent the owner of a trademark or a service mark identical to the disputed domain name.

Further, Complainant asserts Respondent does not use the domain name for a bona fide offering of goods and services or legitimate noncommercial or fair use because the resolving website offers competing services to those offered by Complainant. Using a disputed domain name to offer competing services is not a bona fide offering of goods and services or legitimate noncommercial or fair use.

Nevertheless, as the Respondent states, “CANON CITY PROPERTY MANAGEMENT” is a descriptive term which is represented by generic words and “CANON CITY” referring to a geographical location.

Further, Respondents argues that the use of the generic word is to describe his products services and business or to profited generic value, of the word without taking advantage of Complainant’s rights in that word. See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Forum Jan. 5, 2004) (finding that the respondent was using the domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes).

In the present case, Respondent uses the disputed domain name to resolve to the website of its client PPMS which is specialized in property management and which has its business in Canon City, Colorado. In addition, previous Panel has held that it is not necessary for Respondent to own a trademark right on the disputed domain name where the latter is descriptive rather than arbitrary. See Superiority, Inc. d/b/a Just Bulbs v. none/Motherboards.com, No. D2003-0491 (WIPO Oct. 9, 2003).

Respondent even provides evidence Complainant’s trademark application with the USPTO was denied on the grounds that the terms are descriptive.

It can therefore be concluded that Respondent has rights or legitimate interest in the disputed domain name, pursuant to Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

To fulfill the third requirement of the Policy, Complainant must prove that the disputed domain name was registered and is being used in bad faith. These are two distinct concepts and are both integral to a finding of bad faith as understood by the Policy.” SOG Specialty Knives and Tools, LLC v. Val Katayev / Poise Media Inc, No. 1704001726464 (Forum May 23. 2017).

Complainant argues that Respondent registered and used in bad faith the disputed domain name because Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website that provides similar services as the one of Complainant in Canon City, Colorado.

In its additional submission, Complainant states that it does not matter if Respondent registered the disputed domain name before Complainant first claim of rights in the CANON CITY PROPERTY MANAGEMENT trademark when there is a transfer of control of a domain. The date used to determine registration in bad faith is the date of the transfer and evokes “The MITRE Corporation v. Timothy Kwok, No. FA2105001944297 (Forum June 16, 2021)” decision in support of its claim. However, in the case cited the Complainant owned a registered trademark at the time where the disputed domain name was transferred.

However, it must be noted that Respondent, David Borden, registered the domain name in 2016 and when the Complaint was filed, the verification done with the registrar of the disputed domain name showed that David Borden was still the registrant of said domain. Consequently, Complainant did not demonstrate that a change of ownership occurred for the disputed domain name. Thus, the date that Panel should take into consideration when examining the bad faith registration is the date of the registration of the domain name that is October 28, 2016.

The Panel finds that Respondent’s registration of the domain name predates Complainant’s first claimed rights in the CANON CITY PROPERTY MANAGEMENT mark, and that Complainant did not prove registration in bad faith per Policy ¶ 4(a)(iii). Indeed, Respondent registered the disputed domain name on 28 October 2016, whereas Complainant did not come into existence until the next year, on August 4, 2017. See 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.”).

Panels does not find any evidence of registration in bad faith of the disputed domain name.

Consequently, the Panel finds Complainant has not satisfied Policy ¶ 4(a)(iii).

Reverse Domain Name Hijacking

Respondent alleges that Complainant has acted in bad faith and is engage in reverse domain name hijacking. Respondent contends that Complainant is attempting to deprive Respondent, the rightful registered holder of the domain name, of its rights to use the disputed domain name. Respondent asserts this is Complainant’s last-ditch effort at obtaining the disputed domain name, as Complainant offered to buy the domain name and, when Respondent refused, filed this Complaint.

Even if Complainant has failed to satisfy its burden under the Policy, this does not necessarily render a finding of reverse domain name hijacking on behalf of Complainant in bringing the instant claim. See ECG European City Guide v. Woodell, FA 183897 (Forum Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.”); see also Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001) (noting that a finding of reverse domain name hijacking requires bad faith on the complainant’s part, which was not proven because the complainant did not know and should not have known that one of the three elements in Policy ¶ 4(a) was absent).

In the Panel’s opinion the whole circumstances must be reviewed, on an objective basis, to determine whether the Complaint was brought in bad faith.

In the present case, the Panel finds multiple independent grounds which are individually capable of leading to a finding of RDNH. First, the fact that a complainant must or at least ought to have appreciated at the outset that its complaint could not likely succeed is often regarded as an important consideration on the question of RDNH.

Complainant knew that the disputed domain name had been registered almost a year before it filed its Articles of Organization under the name “CANON CITY PROPERTY MANAGEMENT” and over a year before Complainant began its business activities.

There was here an absence of any possibility that Respondent targeted Complainant or its rights in the registration of the disputed domain name.

Secondly, Complainant failed to prove in its Amended Complaint that Respondent registered the domain name in bad faith. It is only in its Additional Submission that Complainant tried to demonstrate said bad faith registration but without providing the Panel with any evidence accordingly. Indeed, Complainant used Respondent’s response to allege that the domain name had been transferred from David Borden to PPMS. However, in its declaration, David Borden stated that he agreed to transfer said domain to PPMS but did not confirmed that the transfer became effective. In the Whois history, the first registrant is David Borden and he still today the registrant of the domain name.

Thirdly, the present case has features which might be described as those of a “Plan B Reverse Domain Name Hijacking case” (see the discussion of this aspect of RDNH in the recent case of Patricks Universal Export Pty Ltd. v. David Greenblatt, WIPO Case No. D2016-0653). Indeed, Complainant offered to purchase the domain name to Respondent before filing the present dispute. As stated in the WIPO overview 3.0 (see 4.16) reverse domain name hijacking can be found when Complainant filed “the complaint after an unsuccessful attempt to acquire the disputed domain name from the respondent without a plausible legal basis”. Further, previous UDRP Panels stated that such proceedings should not be commenced in an unjustifiable attempt to pressure a domain name owner into releasing a legitimately held domain name that pre-dates any trademark rights held by Complainants (see Sustainable Forestry Management Limited v. SFM.com and James M. van Johns ‘Infa dot Net’ Web Services, WIPO Case No. D2002-0535 and Proto Software, Inc. v. Vertical Axis, Inc/PROTO.COM, WIPO Case No. D2006-0905).

Consequently, the filing of the present dispute by Complainant has been done with the sole purpose of trying to obtain the transfer of the disputed domain name that Respondent refused to sell.

In all of these circumstances, the Panel finds that the Complaint was brought in bad faith in an attempt at RDNH and constitutes an abuse of the administrative proceeding.

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 domain name REMAIN WITH Respondent.

Nathalie Dreyfus, Panelist

Dated: May 4, 2022

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