The registrant of CoopersHawk.com was sent a UDRP notice and the ensuing decision was in his favor. On top of that, the Complainant in this case, operators of the Cooper’s Hawk chain of restaurants, were tagged as Reverse Domain Name Hijacking enablers.
Registered in 2001, the domain was acquired by the Respondent in 2005. It’s a generic composite of two words, and the domain’s registration predates the Complainant’s use of the brand in 2005 by four years.
As noted in the complaint:
The Complainant provides no evidence to demonstrate that it was plausible that the Respondent knew or should have known about the Complainant’s rights at the time it registered the domain name. It offers nothing other than the fact that it opened a restaurant in Illinois prior to the Respondent’s registration of the domain name and that it had a first use date on its US Trademark Registration which is one month prior to Respondent acquiring the domain name.
As a side note, the Complainant and the Respondent agreed at some point to a sale for the sum of $5,000 dollars; the Complainant did not submit payment, however.
Full details on the decision for CoopersHawk.com follows:
Cooper’s Hawk Intermediate Holding, LLC v. Tech Admin / Virtual Point Inc.
Claim Number: FA2010001916204
PARTIES
Complainant is Cooper’s Hawk Intermediate Holding, LLC (“Complainant”), represented by Kevin J. Lahey of Sponsler Koren Hammer & Lahey, P.A., United States. Respondent is Tech Admin / Virtual Point Inc. (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <coopershawk.com>, registered with Dynadot, 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.
Jeffrey J. Neuman as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the Forum electronically on October 7, 2020; the Forum received payment on October 7, 2020.
On October 8, 2020, Dynadot, LLC confirmed by e-mail to the Forum that the <coopershawk.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy).
On October 8, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 28, 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@coopershawk.com. Also on October 8, 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 October 28, 2020.
On November 3, 2020, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Jeffrey J. Neuman as Panelist.
On November 10, 2020, Complainant filed an Additional Submission under Supplemental Rule 7 which provides that:
If a party requests an additional written submission be considered by the Panel, the additional submission must be sent to Forum along with proof of service on the opposing party(s). Forum will forward all additional submissions to the Panel. It is within the discretion of the Panel to accept or consider additional unsolicited submission(s).
On November 16, 2020, Respondent filed a Supplemental Response to Complainant’s Additional Submission also under Supplemental Rule 7.
After having reviewed both the Complainant’s new material and the Respondent’s reply, the Panel accepts for consideration both of the submissions. The Additional Submission by the Complainant is accepted for consideration as it responds to Respondent’s allegation of Reverse Domain Name Hijacking raised first in its Response dated October 28, 2020. It therefore also accepts for consideration Respondent’s reply asserting objections to the consideration of the Complainant’s Additional Submission.
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, Cooper’s Hawk Intermediate Holding, LLC, owns and operates a chain of restaurants, wineries, and tasting rooms. Complainant has rights in the COOPER’S HAWK mark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,413,974, registered April 22, 2008). See Compl. Ex. E. Complainant also has common law rights in the mark through continuous use of the mark in commerce since 2005. Respondent’s <coopershawk.com> domain name is identical and/or confusingly similar to Complainant’s COOPER’S HAWK mark because it bears the exact same literal elements as the mark.
Respondent does not have rights or legitimate interests in the <coopershawk.com> domain name. Respondent is not commonly known by the name and is not licensed or permitted to use the COOPER’S HAWK mark in any way. Further, Respondent fails to use the disputed domain name for any bona fide offering of goods or services, or for any legitimate noncommercial or fair use. Instead, Respondent has made no preparations to use the disputed domain name other than to list the domain name for resale.
Respondent registered and used the <coopershawk.com> domain name in bad faith. Respondent offered to sell the disputed domain name in substantial excess of out-of-pocket costs. Additionally, Respondent’s passive holding of the disputed domain name suggests bad faith.
B. Respondent
Respondent’s rights in the <coopershawk.com> domain name predate Complainant’s rights in the COOPER’S HAWK mark since Complainant’s earliest trademark was registered over two years after Respondent acquired the domain name. Additionally, Complainant does not have exclusive rights in the domain name because it is comprised entirely of dictionary words.
Respondent has rights and legitimate interests in the <coopershawk.com> domain name because the domain name is comprised of the descriptive, dictionary words, “Cooper’s Hawk” which is a common North American bird. Respondent has registered many descriptive, generic, and dictionary words over the years. Respondent uses the domain name in connection with its generic and brandable value, not to profit off Complainant’s reputation.
Respondent, located in California, had no knowledge of Complainant’s rights in the COOPER’S HAWK mark in Illinois until after it acquired the <coopershawk.com> domain name and Complainant provides no evidence that Respondent uses the domain name to capitalize on Complainant’s goodwill. To the extent that there is value in the domain name, Respondent claims that the value is derived from its generic qualities.
Additionally, Respondent alleges that Complainant’s actions demonstrate an attempt to reverse domain name hijack. Respondent alleges that Complainant sat on its rights for 15 years, negotiated extensively for the purchase of the domain name, admitted it had no rights to the domain name, but filed the UDRP anyway. Complainant only filed the complaint after it was unsuccessful in its bid to purchase the domain name.
C. Additional Submissions
1. Complainant
In reply to Respondent’s allegation of Reverse Domain Name Hijacking, Complainant admits it acquired the trademark registration until after the domain name was registered, but it alleges that its rights are based on its First Use of Commerce date of October 5, 2005 (a month prior to the Respondent’s acquisition of the domain name).
Complaint alleges that Respondent should have known about the Complainant’s rights because it opened in the third largest metropolitan region in the United States and it “opened to much fanfare at that time and was featured prominently in the media.” See Reply at para. 3. It restates that Respondent has provided no evidence that its business plan at the time of the acquisition of the name included using it in connection with its generic/dictionary sense.
Complainant also argues that because the domain name’s website has been advertising that the domain name was for sale since the name was acquired by the Respondent, this should be considered by the Panel as soliciting invitations to negotiate the price of the domain name, and therefore can be used to show bad faith.
Finally, Complainant seeks to exclude certain evidence from the record about statements that were made during settlement negotiations, including the statement used by Respondent as an admission by Complainant that it knew it did not have legitimate rights to file the UDRP action.
2. Respondent
Respondent asks the Panel to disregard the Complainant’s Additional Submission for failing to provide evidence which it could have provided in the Complaint. On the substance, Respondent argues that Complainant, even in the Additional Submission, fails to provide any evidence on how Respondent could have known about the Complainant’s rights in the term “Cooper’s Hawk” and that the Panel should consider Complainant’s July 9, 2020 letter to Respondent regardless of whether such letter would (or would not) be admissible in a United States federal court.
FINDINGS
1. The disputed domain name <coopershawk.com> is identical or confusingly similar to a trademark or service mark to which Complainant has rights.
2. This case involves a dispute over a domain name that is not only identical to the Complainant’s trademark but is also corresponds to a term in the dictionary. In addition, the chronology of events coupled with the fact that Respondent is in the business reselling domain names, the Panels determines that Respondent’s rights or legitimate interests in the disputed domain name is closely tied to whether the Respondent registered and used the domain name in bad faith under Policy ¶ 4(a)(iii).
3. Complainant has not satisfied its burden of proof to demonstrate that the Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
4. Under the totality of circumstances, the panel agrees with the Respondent that this is a case that should not have been filed and was only done so after negotiations for the domain name ended unsuccessfully. Therefore, in line with other similar cases, the Panel finds reverse domain name hijacking.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
Complainant asserts rights in the COOPER’S HAWK mark based on Reg. No. 3,413,975 issued on April 22, 2008. According to the incontestable registration, it claims that the mark has been in continuous use in commerce since 2005. See Compl. Ex. E. Registration of a mark with the USPTO is generally sufficient to establish rights in that mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Therefore, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
It is important to emphasize that although the application for the trademark was filed in January 2007, Complainant asserts common law rights in the COOPER’S HAWK mark dating back to October 5, 2020. See Compl. Ex. E. Common law rights in a mark may be established under Policy 4(a)(i) by a showing of secondary meaning. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). Complainant argues that it has used the COOPER’S HAWK openly in commerce since the opening of its first restaurant on October 5, 2005 in Overland Park, Illinois. Complainant provides printouts outlining its use of the marks. See Compl. Ex. G.
Respondent does not dispute that its domain name is Identical and/or confusingly similar to Complaint’s trademark. Rather, it argues that its registration of the <coopershawk.com> domain name predates Complainant’s alleged rights in the mark. For this element of the Policy, however, when the trademark was first used is not relevant to the inquiry of whether the mark is identical and/or confusingly similar to the Complainant’s mark under Policy ¶ 4(a)(i). 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
The Policy states that the Complainant, as part of its prima facie case, must demonstrate that the Respondent has no rights or legitimate interests in respect of the domain name. See Policy ¶ 4(a)(ii). Policy ¶ 4(c) enumerates certain circumstances, “in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented” which may be used by a Respondent to demonstrate its rights or legitimate interests to the domain name for purposes of ¶ 4(a)(ii).
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name because it does not meet any of the enumerated conditions within Policy ¶ 4(c), namely that the Respondent is not using the domain in connection with a bona fide offering of goods or services, is not commonly known by the domain name, nor is it engaged in a noncommercial or fair use of the mark. Additionally, it argues that there is no affiliation between the Respondent and the Complainant nor has the Complainant authorized or licensed the Respondent to use the Complainant’s mark.
Respondent argues, however, that the terms of the <coopershawk.com> domain name are comprised of the descriptive, dictionary words, “Cooper’s Hawk”, which is a common North American bird and that there are a number of third parties that have adopted and use “Cooper’s Hawk” in their names.
It is undisputed that Complainant never authorized Respondent to use the Cooper’s Hawk trademark for any purpose. Nor does the Respondent claim to (a) have any trademark rights associated with the designation “Cooper’s Hawk” or (b) be commonly known as Cooper’s Hawk. However, it is important to note that a determination of whether the Respondent has rights or legitimate interests cannot solely be made on the express factors listed in Policy ¶ 4(c). This is why the text of that section uses the terms “without limitation.” The Policy (now more than 20 years old) recognized that there could be other situations in which a Respondent could demonstrate that it has rights or legitimate interests in a domain name.
In assessing whether a respondent has rights or legitimate interests in a dictionary word, UDRP panels have tended to look at several factors: “the status and fame of the trademark,” (weak in this case, in November 2005) “whether the respondent has registered other domain names containing dictionary words or phrases” (true, for this Respondent), and “whether the domain name is used in connection with a purpose relating to its generic or descriptive meaning”. See Easton Corp Pty Ltd v. Privacydotlink Customer 9513 / DNS Admin, Best Web Limited, D2016-1975 (WIPO November 12, 2016) quoting WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition.[i] In Easton, therefore, rather than making a definitive determination on whether the Respondent had any rights or legitimate interests in the domain name, it went straight to the Complainant’s allegations of bad faith.
A similar approach was taken in Laboratoires Thea v. Tech Admin, Virtual Point Inc., D2018-0039 (WIPO February 27, 2018) involving, upon information and belief, this very same Respondent. Namely, that the “chronological development of the events underlying this case is relevant in that on the one hand panels tend to assess claimed respondent rights or legitimate interests in the present, e.g. with a view to the circumstances prevailing at the time of the filing of the complaint (see WIPO Overview 3.0, section 2.11), while the assessment of bad faith under the UDRP necessarily includes looking back at the time of the registration of the disputed domain name and whether or not respondent took unfair advantage or otherwise abused a complainant’s trademark at that specific point of time.”
Just as the Panel in Laboratoires turned to determining whether or not Respondent may be found to have registered and made use of the disputed domain name in bad faith, this Panel elects to do so as well.
Registration and Use in Bad Faith
Bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s trademark (WIPO Overview 3.0, section 3.1). The burden of proof on this rests with the complainant (paragraph 4(a) of the Policy).
Although the facts here are different than those in Laboiratoires, this Panel can apply a similar standard in the determination of bad faith under the Policy. That Panel stated:
It is undisputed between the parties that Respondent registered the disputed domain name from the very beginning for purposes of subsequent resale including for a profit. UDRP panels, in general, have found that such practice does not by itself support a claim that the respondent registered the disputed domain name in bad faith with the primary purpose of selling it to a trademark owner within the meaning of paragraph 4(b)(i) of the Policy, but that the circumstances indicating that a domain name was registered for the bad-faith purpose of selling it to a trademark owner can be highly fact-specific, including e.g., the nature of the domain name and the distinctiveness of the trademark at issue (see WIPO Overview 3.0, section 3.1.1).
In this case, it is undisputed that the domain name <coopershawk.com> was acquired by the Respondent on November 3, 2005. Although this was less than one month after the Complainant opened up its first restaurant location in Orlando Park, Illinois, the Complainant has failed to demonstrate how the Respondent, located in California, could have known about the Complainant or the one restaurant at the time the domain name was acquired. In its Additional Submission, Complainant argues that the Panel should infer that knowledge based on the fact that “Orland Park, Illinois, is part of the third largest metropolitan region in the United States,” and “Cooper’s Hawk opened to much fanfare at that time and was featured prominently in the media.” However, there is no evidence in the record to back up this claim. In similar cases, most Complainants provide ample evidence of marketing campaigns, promotional materials, news coverage, etc. that was aimed at, or targeted to, the geographic location in which the Respondent is located. They use that information to establish at the very least that because of all that activity Respondent knew or should have known about Complainant’s rights. No such evidence was provided by Complainant in this case. Thus, the Panel cannot find that the Respondent knew or should have known about Complainant’s rights at the time it registered the domain name.
The Complainant must provide more than just conclusory allegations of bad faith to establish that there was bad faith at the time the domain name was acquired. 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).
Rather than providing evidence demonstrating that the Respondent should have known about Complainant’s use of the trademark, Complainant attacks Respondent’s use of the domain name (or lack thereof) to demonstrate that the Respondent used the domain name in bad faith. That ignores, however, the Policy which requires that a domain name must be both registered and used in bad faith. If the domain name was not acquired in bad faith, even if it was used in bad faith, this does not meet the Complainant’s burden of proof.
Complainant’s main argument seems to rest on Policy ¶ 4(b)(i), namely that the domain name was acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark. . . for valuable consideration in excess of [the] documented out-of-pocket costs related to the domain name.” However, with respect to Complainant’s allegations, Complainant has failed to satisfactorily establish bad faith registration of the domain name, because it has not shown that the Respondent had knowledge of the Complainant at the time of the registration and never made a deliberate attempt to capitalize from the name. See Kaleidoscope Imaging, Inc. v. V Entertainment aka Slavik Viner, FA 203207 (Forum January 5, 2004).
Respondent admits that it is has acquired numerous domain names that are comprised of dictionary words and that it acquired this particular name “in its regular course of business for the Domain Name’s inherent brandable quality, being comprised of dictionary words.” See Response Annex A, Declaration of Brett E. Lewis dated October 28, 2020 (“Lewis Declaration”) at ¶ 5 and ¶ 6. Although Complainant alleges that at the time of the Complaint (and presumably for the 15 years that Respondent has owned the domain name) the website on the dispute domain name advertised that the domain name was for sale, it is well established that merely offering to sell a domain name is insufficient to amount to bad faith under the Policy. Rather the domain name must be registered primarily for the purpose of selling it to the owner of a trademark for an amount in excess of our-of-pocket expenses. See Kaleidoscope.
Respondent claims, and Complainant does not dispute, that it never initiated contact with the Complainant to purchase the disputed domain name at any point in the 15 years since the domain name was first acquired by Respondent. See Lewis Declaration at ¶ 10. Rather, the evidence before us establishes that it was Complainant who made the contact with Respondent about purchasing the domain name. See Mark Warner 2001 v. Larson, FA 95746 (Forum Nov. 15, 2000) (finding that considering or offering to sell a domain name is insufficient to amount to bad faith under the Policy; the domain name must be registered primarily for the purpose of selling it to the owner of a trademark for an amount in excess of out-of-pocket expenses). The fact that the Respondent offered to sell the domain name for an excessive fee years after the domain name was acquired does not in and of itself mean that the domain name was registered in bad faith, especially when it was the Complainant that initiated the contact for purchase of the domain. See Camper, S.L. v. Detlev Kasten, 2005-0056 (WIPO March 3, 2005) (adopting the Consensus View that the mere pricing of the domain name at a very high level cannot in itself indicate bad faith at the time of registration.)
Having failed to establish that the domain name was registered in bad faith, Complainant cannot satisfy the bad faith prong of 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.”).
REVERSE DOMAIN NAME HIJACKING
The Rules, paragraph 1, define Reverse Domain Name Hijacking (RDNH) as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name,” and (paragraph 15) direct a panel “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 most instructive case on Reverse Domain Name Hijacking (“RDNH”) is Timbermate Products Pty Ltd v. Domains by Proxy, LLC/Barry Gork, D2013-1603 (WIPO November 3, 2013). This decision listed out the different basis upon which findings of RDNH had been made. They include cases where (i) materially false evidence was submitted, (ii) relevant evidence was omitted, (iii) Complainant misrepresented the facts, (iv) no trademark rights existed at the time of the registration of the domain name, (v) there was an ulterior purpose, namely to increase negotiating leverage in settlement discussions, (vi) Complainant knew that Complaint was doomed to failure, or where (vii) the Complainant had constructive knowledge that its Complaint would not succeed.
In Jazeera Space Channel TV Station v. AJ Publishing aka Aljazeera Publishing, D2005-0309 (WIPO July 20, 2005) the majority of the three-member panel noted that the onus of proving that a complainant has acted in bad faith is on the respondent, and that mere lack of success of the complaint is not of itself sufficient to constitute reverse domain name hijacking. The majority went on to note that: “Allegations of reverse domain name hijacking have been upheld in circumstances where a respondent’s use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy.
To support its claim of RDNH, Respondent argues that the Complainant sat on its rights for 15 years, negotiated extensively for the purchase of the Domain Name, and admitted in correspondence provided to the Panel that it knew its’ case was weak. had not rights in the Domain Name. Further, Complainant only filed the complaint after it was unsuccessful in its bid to purchase the domain name. Finally, Respondent argues that the Complainant induced the Respondent into negotiating for the sale of the domain name only to use that price against them in this UDRP proceeding.
After consideration of all of the evidence, this Panel is troubled by the following facts:
(a) This action was taken 15 years after domain name was initially acquired.
(b) The Complainant provides no evidence to demonstrate that it was plausible that the Respondent knew or should have known about the Complainant’s rights at the time it registered the domain name. It offers nothing other than the fact that it opened a restaurant in Illinois prior to the Respondent’s registration of the domain name and that it had a first use date on its US Trademark Registration which is one month prior to Respondent acquiring the domain name. See X6D Limited v. Telepathy, Inc., D2010-1519 (WIPO November 16, 2010).
(c) The Respondent never initiated contact with the Complainant to sell the domain name to the Complainant. It is not sufficient to argue that a mere listing of a site for sale should have the same impact as the Respondent actually reaching out to the Respondent.
(d) The Complainant initiated contact several times with the Respondent to negotiate the sale of the domain name and according to the evidence (which is not disputed), actually entered into an agreement to purchase the domain name a number of years ago. However, according to the Respondent, the Complainant purportedly reneged on its payment of $5,000 to acquire the domain name. If true, and Complainant had followed through, we would not be here today.
(e) According to the letter sent by Complainant’s counsel to Respondent’s counsel on July 2, 2020 (“Letter”), Complainant does seem to admit that one of its employee’s may have blurred “the lines between trademark rights and domain name ownership,” and that Complainant agreed “that this was an improper interpretation of the extent of its trademark rights by my client”. Yet several months later, after apparently unsuccessfully negotiating a price for the domain name, Complainant filed this very action.
Complainant argues that the Panel cannot admit the Letter into evidence because it sent the Letter under Federal Rule 408 which protects settlement discussions from being uses against either party in a Court. As a general proposition, under rules of evidence in the United States parties are forbidden to disclose settlement discussions (if they fail) to encourage resolution of disputes. However, under the UDRP, panels tend to view settlement discussions between the parties as ‘admissible’, particularly insofar as such discussions may be relevant to assessing the parties’ respective motivations. See WIPO Jurisprudential Overview 3.0, paragraph 3.10. Normally however such discussions are used to demonstrate bad faith on the part of the Respondent. This is because many cyber squatters often wait until the trademark owner launches a complaint for asking for payment and because panels are competent to decide whether settlement discussions represent a good faith effort to compromise or a bad faith effort to extort. Also, the legal criteria for showing bad faith directly specify that an offer for sale can be evidence of bad faith.” See WIPO Overview 2.0.
Although this Panel could not find a previous case on point where purported settlement discussions were used to determine bad faith of the Complainant, the Panel finds that if settlement discussions are admissible to demonstrate bad faith on the part of the Respondent, then it should equally be admissible in determining whether the Complainant acted in bad faith for purposes of RDNH.
In Summary, for all the reasons above, the Panel finds that the Complaint was brought in bad faith in an attempt at Reverse Domain Name Hijacking 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 <coopershawk.com> domain name REMAIN WITH Respondent.
Jeffrey J. Neuman, Panelist
Dated: November 17, 2020
