Domain ecourier.com in #UDRP : It’s a finding of Reverse #Domain Name Hijacking

The domain Ecourier.com was taken to the WIPO for a UDRP round. Τhe domain was registered in 1997, all while the Complainant’s marks were registered in 2008 at the earliest.

On top of this, the marks incorporate a dash and are graphic images. The WIPO panelist picked up on this:

The Complainant has not provided sufficient evidence to demonstrate that the Trade Marks have a strong reputation or are widely known. There is no evidence that the Respondent provided any false or misleading contact details to the Registrar.

But that’s not all. Apparently, the Complainant did not disclose in the Complaint that they tried repeatedly to buy the domain but their offers were declined. That led the sole panelist to deliver a finding of Reverse Domain Name Hijacking:

In addition, the Complainant’s allegation that the Respondent acquired the Disputed Domain Name to sell it for profit in excess of any out-of-pocket costs has no evidentiary support. It is wholly inconsistent with the fact, documented in the Response, that the Respondent has never offered or invited offers to sell the Disputed Domain Name and rebuffed the Complainant’s repeated offers to purchase the Disputed Domain Name. This correspondence was not disclosed by the Complainant.

Full details for the decision on Ecourier.com follow:

WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Soft Trust Inc. v. Todd Hinton, Ikebana America LLC
Case No. D2020-2640

1. The Parties

The Complainant is Soft Trust Inc., Canada, represented by Merizzi Ramsbottom & Forster, Canada.

The Respondent is Todd Hinton, Ikebana America LLC, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <ecourier.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 9, 2020. On October 12, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 13, 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 October 13, 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 October 19, 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 October 21, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 10, 2020. On November 10, 2020, the Respondent requested an extension to the Response filing period. Pursuant to paragraph 5(b) of the Rules, the Response due date was extended until November 14, 2020. The Response was submitted on November 14, 2020, and the Respondent filed an amended Response on November 16, 2020.

The Center appointed John Swinson as the sole panelist in this matter on November 19, 2020. The Panel finds that it was properly constituted. 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.

The Complainant submitted a Supplemental Filing on December 2, 2020.

The Center received a request from the Respondent on December 4, 2020, to reply to the Complainant’s above-referenced Supplemental Filing. The Panel’s consideration of these supplemental submissions is discussed under section 6.A.3 below.

4. Factual Background

The Complainant is Soft Trust Inc., a company incorporated in Canada. According to the Complaint, the Complainant carries on a business related to the transfer of electronic communications (including electronic messages and files) and offers a number of additional services associated with remote access and sharing of electronic information.

According to the Complaint, the Complainant was incorporated in 2004 and has carried on its business under the name “E-Courier” since that time. According to the Complaint, between 2018 and 2019 in Canada and the United States, the Complainant earned over CAD 1.1 million in annual revenue and its services were used by 230,000 individuals.

The Complainant is the owner of a number of registered trade marks and trade mark applications incorporating the “E-Courier” name, including:

– Canadian registered trade mark number TMA705677 for logo registered on January 25, 2008 (the “Design Trade Mark”); and

– United States registered trade mark number 4651310 for E-COURIER.CA, registered on December 9, 2014 (the “Word Trade Mark”),

collectively, the “Trade Marks”.

The Complainant is also the owner of a domain name incorporating the Trade Marks, <e-courier.ca>, which the Complainant registered on May 17, 2005.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions.

Identical or Confusingly Similar

The Complainant has carried on a business under the name “E-Courier” since its incorporation in 2004, including through the use of the Trade Marks on its marketing materials and website at the domain name <e-courier.ca>. In Canada and the United States, the Complainant has registered and unregistered trade mark rights in the name “E-Courier” and has the exclusive right to provide its goods and services in association with the name “E-Courier” and any confusingly similar word.

Apart from the hyphen in the Design Trade Mark and the Word Trade Mark, the Disputed Domain Name is identical. The Design Trade Mark and Disputed Domain Name are also the same or very similar in connotation or meaning and in the commercial impression they invoke.

It appears the Disputed Domain Name was originally registered by a third party and that the Respondent did not register the Disputed Domain Name until 2012 at the earliest. This is a number of years after the Complainant began using the “E-Courier” name and the Design Trade Mark and is therefore likely to lead to confusion on the part of consumers.

Rights or legitimate interests

The Respondent has not been granted a licence to use the name “E-Courier” by the Complainant and does not own any trade marks associated with the Disputed Domain Name.

The Respondent has not made demonstrable preparations to use the Disputed Domain Name or a name corresponding with the Disputed Domain Name in connection with a bona fide offering of goods or services. The website at the Disputed Domain Name has displayed a message stating “Sorry! This site is temporarily unavailable.” since at least September 2001. The message available at the Disputed Domain Name contradicts the longstanding passive holding of the Disputed Domain Name and such holding is therefore illegitimate. This is further supported by the Respondent’s pattern of acquiring and stockpiling domain names. It appears that the purpose of the website is to occupy the Disputed Domain Name and block its use by entities who hold rights in a name corresponding to the Disputed Domain Name.

The Respondent has not been commonly known by the Disputed Domain Name. There is no evidence that the Respondent has used the term “ecourier” to refer to itself, its business or its offerings.

The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. The Respondent has not made any use of the Disputed Domain Name, except to seemingly block the use of the Disputed Domain Name by an owner of associated trade mark rights.

Registered and Used in Bad Faith

The Complainant is unsure of the exact date that the Respondent registered the Disputed Domain Name but it appears to have been at some point between September 14, 2005, and December 17, 2015. This is after the date on which the Complainant accrued rights in E-COURIER.

The message displayed at the Disputed Domain Name since 2005 misleadingly suggests that the Disputed Domain Name will be put to some other use at some point in the future and disguises the true use of the Disputed Domain Name, passive holding.

The Respondent appears to have engaged in longstanding passive holding of the Disputed Domain Name for the specific purpose of disrupting its use by the owner of a corresponding trade mark and/or for selling the Disputed Domain Name for profit in excess of any out-of-pocket costs.

Further, it appears that the Respondent has engaged in a pattern of registering domain names that are similar to third-party trade mark rights-holders for the purposes of selling them back to such rights-holders or for otherwise preventing such rights-holder from fully enjoying their rights. The Respondent owns hundreds of domain names that appear unrelated to any commercial or other activities of the Respondent. A brief review shows that a number of these are the same or similar to trade marks that have either been registered in the United States or whose registration is pending.

The Respondent (or its predecessor in title) has been aware of the Complainant and its rights in E-COURIER since at least 2012 and indicated that it would be engaged in commercial activity related to the term “e-courier”. No such activity occurred. The Respondent is using the reputation of the Trade Marks to attract Internet users to the Disputed Domain Name and thereby increase the value of the Disputed Domain Name in the eyes of potential purchasers. These factors, together with the Respondent’s pattern of conducting in registering a large number of domain names, demonstrates that the Respondent registered the Disputed Domain Name to disrupt the business of the Complainant and/or intentionally to attract, for commercial gain, Internet users to the Disputed Domain Name, by creating a likelihood of confusion with the Trade Marks.

In Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the panel recognized that passive holding of a domain name registration could constitute bad faith when taken in consideration of surrounding factors. Such factors are present here.

B. Respondent

The Respondent makes the following contentions.

The Respondent registered the Disputed Domain Name on December 3, 1997, with Network Solutions. In the years since registration, the Respondent transferred the Disputed Domain Name to different registrars several times. The Respondent individual has always been listed as the registrant since the Disputed Domain Name was registered. The Respondent company listed as the registrant organization in the WhoIs record for the Disputed Domain Name was incorporated by the Respondent individual on May 11, 2004.

The Complainant contends that it has prominently displayed the Trade Marks and the E-COURIER name in connection with its services since 2004 but did not present strong evidence of this. The Complainant also claims to have customers in the United States but there is little evidence to support this. Further, the Complainant filed an application to register a trade mark identical to the Design Trade Mark in the United States in 2006 but this application was abandoned prior to registration, likely because the Complainant didn’t need a trade mark in the United States or thought the trade mark would not receive approval.

A representative of the Complainant contacted the Respondent on three occasions between 2007 and 2011 offering to purchase the Disputed Domain Name. The Respondent declined to sell the Disputed Domain Name on all three occasions. The Complainant did not provide copies of these communications as part of its Complaint.

The Respondent has registered hundreds of domain names over the years and currently holds a few hundred. The Complainant stated that a number of domain names held by the Respondent are the same as or similar to trade marks registered or pending in the United States. Many of these domain names were registered prior to the trade marks identified. All domain names owned by the Respondent were registered in good faith with the future expectation of developing them and are not held with malicious intent. Many of these domain names redirect to the Respondent’s website at “www.ikebana.com”.

Identical or Confusingly Similar

The Respondent concedes that the Complainant has met its burden in respect of the first element of the UDRP.

Rights or legitimate interests

Before any notice of the dispute, the Respondent made demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services. This is evidenced by correspondence and the Respondent’s abandoned application (number 78042687) for a United States trade mark for ECOURIER.COM which was lodged on January 11, 2001.

The Respondent has been employed by FedEx since 1997, this inspired the Respondent to register the Disputed Domain Name. The Respondent’s initial plans for the Disputed Domain Name were unsuccessful and the Disputed Domain Name has since been primarily used for email until such time as the Respondent can move forward with a commercial venture. The second element of the UDRP does not require successful bona fide use.

Registered and Used in Bad Faith

The Respondent registered the Disputed Domain Name in 1997. At the earliest, the Complainant can show common law trade mark rights in the name “E-Courier” from 2004 and registered trade mark rights from 2006. Accordingly, the Disputed Domain Name could not have been registered to harm the Complainant. In any case, “E-Courier” is a generic term like “email” or “ecommerce”, the element “E” has become synonymous with electronic or online products or services and “Courier” is a generic term for a delivery person or conduit. Accordingly, the Complainant has not demonstrated registration of the Disputed Domain Name in bad faith.

The fact that the Respondent has had a non-existent website at the Disputed Domain Name for two decades does not demonstrate bad faith use. The Complainant contended that the Respondent is stockpiling domain names and that this demonstrates bad faith use. The Respondent is a domain name collector and registers domain names for future ideas. Many of the Respondent’s domain name registrations are defensive and designed to help protect the Respondent’s most valuable domain names (e.g., by registering the same domain with various Top-Level Domains or alternate spellings). The Respondent has spent thousands of dollars on domain name registrations and on infrastructure in an attempt to develop projects.

The Respondent seeks a finding of Reverse Domain Name Hijacking.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:

(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.

A. Procedural matters

A.1 References to the Respondent

The initial Complaint listed only the Respondent company (Ikebana America LLC), matching the registrant organization in the available details of the WhoIs. The amended Complaint listed as the Respondent both the Respondent company and Respondent individual (Todd Hinton). The Respondent individual corresponds to the registrant name of the disputed domain name as confirmed by the Registrar. The Panel notes that the Respondent individual incorporated the Respondent Company. Any reference in this decision to the Respondent includes both the Respondent company and Respondent individual, unless otherwise stated.

A.2 Late filing of the amended Response

The due date for the Response was November 14, 2020. The Center received the Response on November 15, 2020. However, the Response was submitted on November 14, 2020, according to time at the Respondent’s location. The Respondent filed an amended Response on November 16, 2020.

Paragraph 14(a) of the Rules provides that, in the event of a late response, absent exceptional circumstances, panels shall proceed to a decision based solely on the complaint.

Paragraph 14(a) of the Rules is counterbalanced by paragraph 10(b) of the Rules, which requires panels to ensure that parties are treated with equality and that each party is given a fair opportunity to present its case.

As noted in Türk Ticaret Bankası A.Ş. v. Seda Celik, WIPO Case No. D2019-3155, late responses were taken into account by the UDRP panels in cases where:

– “the response was filed before commencement of the decision-making process by the panel (see J.P. Morgan & Co., Incorporated and Morgan Guaranty Trust Company of New York v. Resource Marketing, WIPO Case No. D2000-0035);

– the lateness did not delay the decision (see Young Genius Software AB v. MWD, James Vargas, WIPO Case No. D2000-0591);

– response was late only by one day (see Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001‑1384 and Arthur Guinness Son & Co. (Dublin) Limited v. Feeney O’Donnell and John O’Donnell, WIPO Case No. D2000-1710);

– although there were no exceptional circumstances, a late response was taken into account on the basis of the panel’s ‘general powers’ pursuant to paragraph 10(b) of the Rules (‘equality and that each party is given a fair opportunity’) on the grounds that failure to take the response into account ‘would be a rather drastic step and should be undertaken with great care’ (see AT&T Corp. v. Randy Thompson, WIPO Case No. D2001-0830).”

In the case at hand, notwithstanding the absence of exceptional circumstances, the lateness of the filing of the amended Response has not prejudiced the Complainant nor has it delayed the Panel’s decision. The Complainant also failed to disclose a number of important facts relating to the history of the communications between the parties, which the Panel should have been made aware of. The Panel therefore deems it appropriate to admit the Respondent’s late amended Response.

In any event, the amendments in the amended Response are not material to the Panel’s decision in this case and do not cause the Panel to reach a different view than that which it would have reached on the basis of the initial Response.

A.3 Supplemental Filings

The Complainant submitted a Supplemental Filing on December 2, 2020. The Respondent requested the Panel’s permission to reply on December 4, 2020.

Paragraph 10 of the Rules vests the Panel with the authority to determine the admissibility, relevance, materiality, and weight of the evidence, and also to conduct the proceedings with due expedition. Paragraph 12 of the Rules provides that the Panel may request, in its sole discretion, further statements or documents from either of the parties. There is no provision in the Rules for a party to file additional unsolicited submissions. Unsolicited supplemental filings are generally discouraged.

A party submitting an unsolicited supplemental filing should show some exceptional circumstances as to why it was unable to provide the information contained therein in its complaint or response (see section 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

The Panel has reviewed the Complainant’s Supplemental Filing and decided to admit it in this instance, principally because the matters raised relate to:

– new information provided by the Respondent which may not have been apparent to the Complainant at the time it submitted the Complaint; and

– the Respondent’s request in the Response that the Panel make a finding of Reverse Domain Name Hijacking.

The Respondent’s request to reply did not contain any further substantive arguments. Accordingly, the Panel will not admit the request, or consider any further submissions by either Party.

A.4 Date of registration of the Disputed Domain Name

The Complainant contends that the Disputed Domain Name was transferred from the Respondent individual (Todd Hinton) to the Respondent company (Ikebana America LLC) at some point between September 14, 2005, and December 17, 2015, and that this constitutes a new registration of the Disputed Domain Name. Accordingly, the Complainant contends that rights and legitimate interests and bad faith registration should be assessed as at this date.

Previous panels have concluded that transfers of a domain name between related corporate entities (see e.g., Thebuyerpool Limited v. Private Registration / Stephen Pomeroy, WIPO Case No. D2018-0133, and Seminole Tribe of Florida v. propertyusa, ltd, WIPO Case No. D2019-1797) and from an individual to a company controlled by that individual (see e.g., Sheryl Sandberg & Dave Goldberg Family Foundation v. WhoisGuard, Inc. / Hecham Ghazal, WIPO Case No. D2019-0213) do not amount to new registrations as the chain of control has not been broken.

It is unclear exactly when the Disputed Domain Name was transferred from Respondent individual to the Respondent company. However, the Panel is satisfied that the Disputed Domain Name has been subject to common control by the Respondent since its registration on December 3, 1997.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.

The Respondent rightly concedes that the Complainant meets the first element of the Policy.

The design elements of the Design Trade Mark may be disregarded for the purpose of assessing confusing similarity (see section 1.10 of the WIPO Overview 3.0). Further, Top-Level Domains (“TLDs”) (i.e., the “.com” suffix) may be disregarded when comparing the similarities between a domain name and a trade mark (see e.g., Incase Designs Corp. v. Juliane Kuefer, WIPO Case No. D2012-2020, and cases cited therein). Therefore, the comparison is between the Disputed Domain Name and the textual elements of the Design Trade Mark (i.e., E-COURIER).

The Panel finds that the Disputed Domain Name is confusingly similar to the Design Trade Mark. The only difference between the marks is that the Disputed Domain Name does not contain a hyphen.

The Disputed Domain Name is also confusingly similar to the Word Trade Mark, despite the fact that the “.CA” element of the Word Trade Mark does not appear in the Disputed Domain Name.

The Complainant is successful on the first element of the Policy.

C. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lack rights or legitimate interests.

In this case, there is no evidence that the Respondent registered the Disputed Domain Name to trade off the Complainant’s rights, or that the Respondent’s intentions for the Disputed Domain Name were not and are not bona fide.

As outlined above, the Respondent presented evidence to demonstrate that he registered the Disputed Domain Name in 1997 and that he (or the company which he owned) has held the Disputed Domain Name continuously since that time. The Respondent registered the Disputed Domain Name well before the Complainant came into existence.

There is no indication that the Disputed Domain Name was registered in anticipation of the Complainant or its rights coming into being. Based on the evidence before the Panel, it appears that the Respondent genuinely planned to use the Disputed Domain Name for a business related to the industry in which is he employed and went as far as to apply for a trade mark for the term ECOURIER.COM. However, this business venture did not proceed and panels are typically required to assess rights and legitimate interests at the time of the dispute (see section 2.11 of the WIPO Overview 3.0).

For a number of years, the Disputed Domain Name has displayed a message reading “Sorry! This site is temporarily unavailable.” The Complainant contends that this is misleading and an attempt to disguise a pattern of the Respondent acquiring and stockpiling domain names. The Respondent contends that he has been using the Disputed Domain Name for email purposes and may use the Disputed Domain Name for a business venture in the future.

There is some evidence that the Respondent has used the Disputed Domain Name for email purposes. If the Respondent was to use the Disputed Domain Name in the future for a business similar to that operated by the Complainant, a question may arise as to which whether the Complainant or Respondent has a better claim to the “ecourier” name. The Panel will not speculate as to whether the Complainant or Respondent would be successful in such a scenario and such a dispute may be better resolved by way of court proceedings.

The facts at hand do not align neatly with one of the scenarios enumerated in paragraph (c) of the Policy. However, these scenarios are non-exhaustive and on balance, the Panel finds that the Respondent has established rights or legitimate interests in the Disputed Domain Name. This finding is based on the evidence that the Respondent:

– registered the Disputed Domain Name before the Complainant came into existence;

– applied to register a United States trade mark for E-COURIER.COM in 2001, approximately three years before the Complainant came into existence;

– at one time intended to use the Disputed Domain Name in relation to a bona fide business;

– has since made use of the Disputed Domain Name for email purposes; and

– has repeatedly rebuffed offers to purchase the Disputed Domain Name.

In light of the above, the Complainant does not succeed on the second element of the Policy.
D. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.

D1. Registration in bad faith

To succeed in a complaint under the Policy, it is well established that under the third element of the Policy, a complainant must prove on the preponderance of the evidence is that the domain name in issue was registered in bad faith, i.e., was registered with the complainant and/or its trade mark in mind.

The Complainant was not incorporated until 2004, and would not have accrued rights in the Trade Marks until some time after that. As outlined above, the Respondent registered the Disputed Domain Name in 1997 (at least six years prior to the Complainant’s incorporation) and accordingly, it is not possible that the registration of the Disputed Domain Name could have been targeting the Complainant or its Trade Marks.

The Complainant has therefore failed to demonstrate that the Respondent registered the Disputed Domain Name in bad faith to target the Complainant.

D2. Use in bad faith

The Complainant contends that the Respondent is passively holding the Disputed Domain Name for the purpose of disrupting its use by the owner of a corresponding trade mark and/or selling the Disputed Domain Name for profit in excess of any out-of-pocket costs. The Complainant pointed to the large number of domain names owned by the Respondent as evidencing a pattern of such conduct.

As outlined above, the Panel is satisfied that at one time the Respondent intended to use the Disputed Domain Name in relation to a business venture. The Respondent also presented evidence that he has frequently rebuffed offers to purchase the Disputed Domain Name and that he has used the Disputed Domain Name for email.

The Complainant also contends the Panel should make a finding that the Respondent’s passive holding of the Disputed Domain Name represents use in bad faith and refers to Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (the “Telstra Case”). The Panel is not convinced that the factors identified in the Telstra Case support a finding of bad faith use for the following reasons:

– The Complainant has not provided sufficient evidence to demonstrate that the Trade Marks have a strong reputation or are widely known (as in the Telstra Case) and it appears that a number of other business around the world operate under the names “ecourier” and “e-courier”.

– Unlike the Telstra Case, the Respondent in this case provided some evidence of actual or contemplated good faith use of the Disputed Domain Name, including an application for a trade mark for ECOURIER.COM as part of a now discontinued business venture.

– There is no evidence that the Respondent provided any false or misleading contact details to the Registrar, as was the case in the Telstra Case.

Further, the Panel has reviewed the long list of domain names owned by the Respondent (over 240) and cannot conclude from this list that the Respondent has engaged in a pattern of registering domain names to target trade marks held by the Complainant or third parties. Many of the Respondent’s domain names registrations are for descriptive terms (e.g., <non-profit.org> and <replymail.org>). In addition, a number of the domain names owned by the Respondent which the Complainant identified as being identical or confusingly similar to existing trade marks appear to have been registered before those trade marks were filed.

In light of the above, the Panel finds that the Complaint also fails on the third element of the Policy.

E. Reverse Domain Name Hijacking

The Respondent has requested a finding of Reverse Domain Name Hijacking (“RDNH”).

RDNH is defined in paragraph 1 of the Rules as meaning “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”

The Complainant’s entire case hinges on whether the Respondent registered the Disputed Domain Name before or after the Complainant acquired rights in the Trade Marks. However, the Complainant should have been aware that the Respondent individual and Respondent company were connected at the time it submitted its initial Complaint and further evidence of the connection was presented when the Registrar provided the registrant details and when the Respondent filed the Response. However, these matters were not addressed by the Complainant in the amended Complaint or Supplemental Filing respectively. The Complainant persisted with the Complaint when it was evident that the Disputed Domain Name had been subject to common control since 1997 and therefore pre-dated the registration of the Trade Marks (and even the Complainant’s incorporation) by a number of years. The facts which evidence this common control are as follows:

– As part of the initial Complaint, the Complainant provided a list of other domain names owned by the Respondent, the registrant details included for almost all of the domain names in this list refer to both the Respondent individual and Respondent company.

– The Complainant’s list of other domain names owned by the Respondent includes a number of domain names which incorporate the name “ikebana”.

– The Panel was able to establish a link between the Respondent company and Respondent individual via a simple Google search.

– The registrant details provided by the Registrar (and adopted in the Complainant’s amended response) refer to both the Respondent individual and Respondent company.

– The Respondent’s reply on July 15, 2008, to one of the Complainant’s offers to purchase the Disputed Domain Name listed the Respondent’s email address, which contained the name of both the Respondent individual and Respondent company.

– Had the Complainant performed a search for United States trade marks owned or applied for by the Respondent individual, it would have found application number 78042687 for ECOURIER.COM which was lodged on January 11, 2001.

– The Respondent provided a number of pieces of correspondence with various parties offering to purchase the Disputed Domain Name. The Respondent’s signature block in a number of these pieces of correspondence included the names of both the Respondent individual and Respondent company.

– The Respondent provided an invoice addressed to the Respondent company for the attention of the Respondent individual.

Further, the Complainant indicated in the Complaint that it had contacted the Respondent in 2012 but did not refer to its offer to the Respondent to purchase the Disputed Domain Name in 2008 (or several other offers identified by the Respondent) or provide a copy of the relevant correspondence. As a result, the Complainant’s explanation of its history with the Respondent was incomplete and previous panels have considered that intentional omission of relevant evidence may justify a finding of RDNH.

In addition, the Complainant’s allegation that the Respondent acquired the Disputed Domain Name to sell it for profit in excess of any out-of-pocket costs has no evidentiary support. It is wholly inconsistent with the fact, documented in the Response, that the Respondent has never offered or invited offers to sell the Disputed Domain Name and rebuffed the Complainant’s repeated offers to purchase the Disputed Domain Name. This correspondence was not disclosed by the Complainant.

The Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the Administrative Proceeding.

7. Decision

For the foregoing reasons, the Complaint is denied.

John Swinson
Sole Panelist
Date: December 4, 2020

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