RDNH finding.
The registrant of EliteMindset.com acquired it in 2017 for $500 dollars on Flippa, and a person seeking to buy the domain since 2016 filed a UDRP as “plan B.”
Key points:
- They offered to buy the domain for $300 via the GoDaddy buy service in 2018
- The Respondent sought $2,500 dollars in 2018
- The Complainant registered a trademark for EM ELITE MINDSET in 2019
- In 2019 the Complainant offered $2,500 but the Respondent asked for $7,500
- The Complainant informed the Respondent that they have no option but to file a UDRP
That move didn’t amuse the sole panelist, who delivered a finding of Reverse Domain Name Hijacking.
Full details on this UDRP decision for EliteMindset.com follow.
Gary Chupik v. Shant Sarkuni
Claim Number: FA1910001868583
PARTIES
Complainant is Gary Chupik (“Complainant”), Washington, USA. Respondent is Shant Sarkuni (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <elitemindset.com>, registered with NameCheap, Inc..
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.
James Bridgeman SC as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the Forum electronically on October 25, 2019; the Forum received payment on October 25, 2019.
On October 25, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <elitemindset.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 28, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 18, 2019 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@elitemindset.com. Also on October 28, 2019, 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 November 14, 2019.
On November 15, 2019, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name <elitemindset.com>, be transferred from Respondent to Complainant.
Respondent requests a declaration in accordance with the Rules Paragraph 15(e) that this Complaint was brought in bad faith an attempt at Reverse Domain Name Hijacking and constitutes an abuse of this administrative proceeding.
PARTIES’ CONTENTIONS
A. Complainant
Complainant relies on his rights in the ELITE MINDSET trademark acquired through his claimed use of the disputed domain name in commerce since 2017 and his assertion that “(Complainant’s) name is officially trademarked by the United States Patent and Trademark Office (#:88283355).” In an annex to the Complaint Complainant has submitted evidence of his ownership of U.S. trademark registration number 5, 839, 129, for which he applied on January 30, 2019 and which was registered on August 20, 2019.
Complainant submits that Respondent is an “obvious cybersquatter” and that Respondent maintains a “hollow or a shadow website” using the disputed domain name which sends a very mixed message to visitors creating the impression that Complainant is not in business which consequently cost Complainant tens of thousands, if not hundreds of thousands of dollars.
Complainant states that when it was “live”, the website to which the disputed domain name resolved contained: stock footage; stock template text (example: “Sed ut perspiciatis unde omnis iste natus error sit voluptatem accusantium doloremque laudantium, totam rem aperiam, eaque ipsa quae ab illo inventore veritatis et quasi architectoeaque ipsa quae ab illo inventore”); and the bio of an adult entertainment star on the front page. Otherwise, the pages on the website were left blank with little or no content.
Complainant states that the content on Respondent’s webpage had absolutely no direct, or, even indirect association with the meaning of “elitemindset”.
Complainant states that the ownership of the website which commenced on February 22, 2008, has not changed as of 2019; and that he has been tracking this for at least 3 years.
Complainant further submits that if the owner of the disputed domain name had any interest in the topic of having an ”elite mindset”, the content of the website would have been updated and changed. Instead Respondent’s website contains stock pictures and text and Complainant alleges that it is clearly not being used for any intended purpose except to “cybersquat”.
Complainant states that although he knew that the owner of the disputed domain name was cybersquatting, on August 19, 2019 he availed of an online service that facilitates negotiations for the buying and selling of Internet domain names and placed an offer to purchase the disputed domain name for $100.
(In the Complaint, Complainant has named the provider of the online negotiation service but because of Complainant’s unsubstantiated allegations, this Panel has decided that it would be inappropriate to identify the service provider.)
His maximum offer was $300. Respondent declined the offer.
Complainant states that he subsequently re-entered the same negotiation, emphasising that this was not a different negotiation, because the negotiation team of the negotiation service provider allowed him to extend the original negotiation. Complainant offered $1,500. Respondent increased his asking price to $7,500. Complainant left the negotiation as he took the view that the asking price was unaffordable.
Complainant states that he then sought advice from the negotiation service provider and was told that there was nothing he could do. He alleges that the negotiation service provider has a vested interest in the advice because it collects a commission on the sale of a website as well as a fee for facilitating the online negotiation and so its advice was not to be trusted. Complainant states that he nonetheless accepted the advice.
Complainant alleges that within 24 hours of him mentioning that he believed that what Respondent was doing was unlawful, Respondent’s website had been “parked”. Complainant alleges that this was to eliminate the proof that the content had not changed since 2008, and, that the website had nothing to do with an “elite mindset”.
To support his submissions, Complainant has annexed a picture of the home page of Respondent’s website, taken on September 12, 2019 at 3:22pm. He asserts that none of the links to other social media sites exist or existed.
Complainant submits that Respondent’s website now has an “elite mindset” title on it. In support of his argument, Complainant has annexed details of his trademark registration and the photograph of part of the home page of Respondent’s website, which is headed “Elite Mindset”, has what appears to be a stock photograph of a person silhouette in a window overlooking a cityscape, other content including the words “search”, “Follow Elite Mindset” with social media favicons, the words “Recent Articles” and a photograph of an actor/model below the words “Influencers: Interview with (named actor/model)”.
B. Respondent
Respondent states that he is a computer programmer who primarily registers Internet domain names for the development of web applications and services. Although domain name speculation is not his primary business, he occasionally registers domain names for their intrinsic value. He has registered approximately 10 domain names over the past 10 years and has never previously been accused of “cybersquatting” or been involved in any UDRP proceeding.
Respondent asserts that he purchased the disputed domain name on April 18, 2017 from a leading domain marketplace, for the “Buy It Now” price of USD $500.00 plus escrow fees, intending to develop a website and associated social media accounts, featuring articles, interviews, and insights into the mindset of influential people.
He states that he “launched” the website to which the disputed domain name resolves in April 2017 and that it “went live” until February 2019. He asserts that the social media accounts associated with the website remain live to the present day.
He states that his website was “parked” in February 2019, but that Respondent continued to use the disputed domain name for business email, cloud storage, and file sharing through October 2019. The disputed currently resolves to a landing page.
Respondent notes that according to the relevant WHOIS data, the record for the disputed domain name was created by a third party on February 22, 2008 prior to the date on which Complainant applied to register his trademark.
Respondent argues that Complainant has no entitlement to the disputed domain name; that this Complaint constitutes an abuse of the Policy and is an attempt at Reverse Domain Name Hijacking.
Respondent submits that the disputed domain name is composed of two ordinary English words and refers to a common, descriptive phrase: “elite mindset”. This phrase is commonly used to describe a winning mentality and a Google search for the phrase shows over 18 million results.
Respondent came across a public auction listing for the disputed domain name and decided it was suitable for the website that Respondent intended to develop. Respondent notes that the auction for the disputed domain name was public, and it was open to Complainant’s participation.
Respondent states that his decision to purchase the disputed domain name was also motivated, in part, by a belief in its descriptive value. The disputed domain name is applicable to a wide variety of commercial uses (e.g., education, fitness, lifestyle, motivation, and success) and could be resold.
Respondent states that when he purchased the disputed domain name, he had no knowledge of Complainant or Complainant’s business, or alleged marks and asserts that Complainant only applied to register his trademark in January 2019, more than a year and nine months after Respondent purchased the disputed domain name.
Respondent argues that he has made demonstrable use of the disputed domain name. Respondent launched a public-facing website for the disputed domain name in April 2017. Respondent then set up Google G Suite for the disputed domain name which he continued to use for business email, cloud storage, and file sharing through October 2019.
On October 9, 2019, Respondent transferred the disputed domain name from GoDaddy to another registrar, Namecheap, and set up a landing page using GitHub Pages, a popular free hosting service.
Respondent submits that panels established under the Policy have repeatedly affirmed that a complainant must prove each of the three elements set out in Paragraph 4(a) of the Policy.
Respondent asserts that Complainant misleadingly states in its Complaint: “My name is officially trademarked by the United States Patent and Trademark Office (#:88283355)” But that this mark is not currently registered with the United States Patent and Trademark Office.
Respondent accepts that Complainant has registered the separate US trademark, registration number 5,839,129, filed January 30, 2019 and registered August 20, 2019 with the USPTO which is for word and design mark EM ELITE MINDSET. However, Respondent also submits that “EM ELITE MINDSET” (with the “EM” letters as the dominant portion of the mark) is not identical with, or confusingly similar to, the disputed domain name and requests this Panel to note that Complainant does not argue any similarity between its registered EM ELITE MINDSET word and design mark and the disputed domain name.
Respondent submits that Complainant cannot establish rights in the ELITE MINDSET mark; and that Respondent’s registration of the disputed domain name predates Complainant’s filing of its trademark applications by about a year and nine months. See Twin Lakes Telephone Cooperative Corporation v. DNS ADMIN / BEST WEB LIMITED, FA 1725012 (Forum May 23, 2017) (complainant failed to establish rights in the TWIN LAKES COMMUNICATION marks for purposes of the policy, because registration of respondent’s domain name predated registration of complainant’s mark by approximately five years).
Respondent points out that in Complainant’s trademark applications, the earliest claimed first use and first use in commerce are February 25, 2017 and April 18, 2017. Respondent submits that a bare claim that a mark has been in use from a certain date, without more evidence, is insufficient to establish trademark rights within the meaning of the Policy. See Force Therapeutics, LLC v. Patricia Franklin, University of Massachusetts Medical School, D2017-2070 (WIPO December 12, 2017) (assertion of a date of first use does not establish an evidentiary presumption as to the date of first use).
Respondent states that there is no evidence of Complainant or its business using the marks prior to 2018. No evidence of Complainant’s claimed rights in the marks under common law has been provided. In fact, according to the relevant WHOIS data, the records for the domain names associated with the Complainant were only created in 2018 or later: <garychupik.com> was created on May 15, 2018; <anelitemindset.com> was created on May 15, 2018; <elitemindset1.com> was created on March 25, 2019.
Furthermore, Complainant provides no evidence to support its claim of lost revenue.
Respondent asserts that the phrase “elite mindset” is not exclusively or even primarily associated with Complainant and that Complainant provides no evidence of public recognition, or that any person associates the phrase “elite mindset” with the Complainant or his business.
The Complaint fails to establish a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent argues that Complainant cannot show that he had any rights in the ELITE MINDSET mark at the time Respondent registered the disputed domain name. See Riveron Consulting, L.P. v. Stanley Pace, FA 1309793 (Forum April 12, 2010) (without evidence of a complainant’s trademark rights at the time of a respondent’s registration, there is no foundation to conclude that a respondent has no rights in the domain name).
Respondent asserts that he had a right to register the disputed domain name for the project he was intending to develop, for its intrinsic descriptive and commercial value or for any other legitimate purpose. Respondent claims that he has used the disputed domain name in a bona fide and entirely legitimate manner, namely a public-facing website, business email (Google G Suite), and, from February 2019, as a GoDaddy parking page. The disputed domain name currently resolves to a landing page, and Respondent intends to use it again in the future.
Respondent denies that his website contained “Stock footage” or “Stock template text”. He asserts that the “bio” to which Complainant refers was actually an interview, completely anodyne, and part of a series of interviews featuring social media influencers. He denies that pages on the website were “left blank with little or no content”. Regarding “topical association”, Respondent asserts that the interviewees themselves explained the website’s content as “how I built my personal brand” and “how to succeed in photography”. To support these assertions, Respondent has provided copies an archived page, available through the Internet Archive at <archive.org>. This page was archived on November 26, 2018. Respondent also provided screenshots of interviews published on the website to which the disputed domain name resolves which he presents as contemporaneous references to these interviews in social media posts by interviewees.
Respondent argues that for the purposes of Policy Paragraph 4(a)(ii) he need only show that he has a legitimate right or interest in the disputed domain name. Respondent argues that he does not need to show that his rights or legitimate interests are somehow “better” than those of Complainant. See Borges, S.A., Tanio, S.A.U. v. James English, D2007-0477 (WIPO June 21, 2007) (a complainant having a purportedly better legitimate interest, however measured, is insufficient).
Respondent submits that Complainant has provided no evidence to demonstrate that Respondent has engaged in cybersquatting and submits that it was impossible for the disputed domain name to have been registered in bad faith because it was acquired before Complainant had any rights in the ELITE MINDSET mark. Respondent had no knowledge of the Complainant or its business, and was not targeting the Complainant in any manner, when he acquired the disputed domain name.
On September 3, 2018, Respondent received an offer of USD $300 for the disputed domain name from the negotiation service through which he had made it available for sale. Respondent submitted a counter-offer of USD $2,500. Respondent states that this counter-offer was binding for seven days and it expired without being accepted by the buyer.
Months later, on February 19, 2019, Respondent received a new offer of USD $2,500 for the disputed domain name via the same negotiation service provider. Respondent submitted a counter-offer to sell for USD $7,500. This counter-offer was binding for seven days, but it too expired without being accepted by the buyer. Respondent submits that Complainant fails to understand that the counter-offers, made through an online form and according to the service provider’s terms of service, were not indefinitely binding.
Respondent had no knowledge of the potential buyer’s identity at any point during this process. Respondent did not solicit the Complainant at any point during this process. In fact, it was Complainant who solicited the Respondent.
Respondent’s responses to Complainant’s offer to purchase is not considered bad faith. See Murad, Inc. v. Stacy Brock, FA 1430865 (Forum March 31, 2012). Respondent also has the right to sell the disputed domain name for whatever price he deems appropriate, regardless of the value that Complainant or an appraiser may ascribe to the domain name. See Personally Cool Inc. v. Name Administration Inc. (BVI), FA 1474325 (Forum January 17, 2013).
Despite Complainant’s absurd allegations that the negotiation service provider has “a vested interest in being dishonest” and “must have notified the owner of my complain [sic]”, Respondent was not notified by the negotiation service provider (or anyone else) of any complaint at any point during this process. Respondent was not aware of any complaint, or even the existence of any complainant, prior to October 2019. Respondent’s use of the disputed domain name has never been influenced by the Complainant at any time.
Finally, Respondent denies Complainant’s allegation that: “[n]one of the links to other social media sites exist or existed” and asserts that the social media accounts associated with the website plainly existed at the time, and still existed as of the date of the Response. In fact, the links to social media accounts are visible in Complainant’s own exhibit of Respondent’s website, under the “Follow Elite Mindset” heading. The archived page for the disputed domain name, available through the Internet Archive at <archive.org>, confirms that the links existed at the time.
Respondent requests that a finding of Reverse Domain Name Hijacking (RDNH) should be made by this Panel.
Respondent draws attention to the chronology of events, specifically:
a. the Respondent’s registration of the disputed domain name on April 18, 2017;
b. the unsolicited offers to purchase the disputed domain name by Complainant;
c. the belated filing by the Complainant of its trademark applications with the USPTO on January 30, 2019;
d. the filing of the Complaint on or about October 28, 2019.
Respondent submits that Complainant knew or should have known that its trademark applications were filed more than a year and nine months after the Respondent had acquired the disputed domain name (and more than 10 years after the original registrant had registered it).
Complainant applied for the ELITE MINDSET trademark after knowing about Respondent’s disputed domain name and did not disclose this fact in its Complaint. See Airpet Animal Transport, Inc. v. Marchex Sales, Inc / Brendhan Hight, FA 1470056 (Forum January 2, 2013) (three-member panel unanimous in finding RDNH).
Complainant knew or should have known, at the time it filed the Complaint, that it could not prove that the disputed domain name was registered in bad faith.
Respondent alleges that Complainant tried to purchase the disputed domain name and then brought the Complaint to take it as a “Plan B”. Complainant recognized that Respondent had rights in the disputed domain name and has a right to sell it. Complainant would not have repeatedly tried to purchase the disputed domain name from the Respondent had it believed otherwise.
Respondent argues that Complainant covets the disputed domain name for its own business and that he engineered this Complaint after Respondent declined to accept the Complainant’s unsolicited offers to purchase the disputed domain name. This is a classic “Plan B” case. See TOBAM v. M. Thestrup / Best Identity, D2016-1990 (WIPO November 21, 2016) (i.e., “using the Policy after failing in the marketplace to acquire the disputed domain name”).
Respondent comments that Complainant divulged his plan in an unsolicited email to the Respondent, stating: “I tried to offer to buy through (named negotiation service provider), however, you rejected my offers. Therefore, I had no choice but to enter this legal proceeding.” In this email, a copy of which is annexed to the Complaint, Complainant also claims to have “sought additional legal counsel specializing in domain management law” prior to filing its Complaint. Complainant should therefore have known that his Complaint was grossly deficient, in relevant details and probative evidence, to prove each of the three elements set out in Paragraph 4(a) of the Policy. See WIPO Overview 3.0, section 4.16 (reasons articulated by panels for finding RDNH include: “clear knowledge of a lack of respondent bad faith such as registration of the disputed domain name well before the complainant acquired trademark rights”, “filing the complaint after an unsuccessful attempt to acquire the disputed domain name from the respondent without a plausible legal basis”).
Finally, Respondent submits that Complainant failed to disclose a prior complaint that he had filed and withdrawn prior to this Compliant. On September 26, 2019, Respondent received an email from GoDaddy that “Private Domain Registration” associated with the disputed domain name was cancelled. After further inquiry, the Respondent received another email from GoDaddy stating that the domain name at issue “will remain locked pending the outcome of the dispute.”
On October 8, 2019, the Respondent received an email from GoDaddy confirming that they received “the Dismissal” and “Registrar-Lock” was removed from the disputed domain name. This email referenced the FA number: FA1909001863829. On this date, with no further information regarding any disputes, the Respondent believed the matter was closed. Respondent never received any documents or notice regarding FA1909001863829, presumably because it never commenced.
On October 28, 2019, Respondent received notice of this Complaint, FA1910001868583.
On October 29, 2019, after further inquiry, Respondent was informed by the Forum that “FA1910001868583 is an active matter” and that the “previous matter was Dismissed”, referencing FA1909001863829.
FINDINGS
Complainant is the owner of United States registered trademark number 5,839, 129, registered on the Principal register on August 20, 2019 for goods in international class 25 and services in international class 41, pursuant to an application filed on January 30, 2017 claiming first use in commerce on April 18, 2017. The registered trademark is a logo device of the stylized letters “EM” together with the words ELITE MINDSET.
The disputed domain name was registered on February 3, 2008.
Respondent is an IT professional who from time to time buys and sells Internet domain names. He purchased the disputed domain name on April 18, 2017.
On September 3, 2018, Respondent received an offer of to buy the disputed domain name for USD $300 via a third party service provider that facilitates a market in Internet domain names; Respondent made a counter-offer to sell the disputed domain name for USD $2,500.
On February 19, 2019, Respondent received a new offer of to purchase the disputed domain name for USD $2,500, again via the same negotiating service; Respondent submitted a counter-offer of USD $7,500. There is a dispute between the Parties as to whether there was a time limit on the offers.
While the negotiation service did not disclose the identity of the offeror on either occasion, in an email to Respondent on October 29, 2019, Complainant disclosed that he had been the offeror.
Complainant made and subsequently withdrew an earlier complaint in relation to the disputed domain name in the weeks prior to the filing of this Complaint.
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.
Initial General Comments
As this Panel makes an unusual finding of Reverse Domain Name Hijacking, it is appropriate to make some initial general comments regarding the adequacy of the Complaint. Furthermore it is appropriate to set out the respective submissions of the Parties in detail.Notwithstanding that Complainant stated that he had secured legal advice, the Complaint itself did not sequentially address the elements of the test in Policy paragraph 4(a) that are required for a complainant to succeed. For example, there is no express claim that the disputed domain name is identical or confusingly similar to Complainant’s mark. Furthermore, the Complaint lacks evidence to support Complainant’s claimed use of disputed domain name and Complainant’s assertion that “(Complainant’s) name is officially trademarked by the United States Patent and Trademark Office (#:88283355)”. There is however evidence that Complainant owns a recently registered trademark and so has succeeded in the first element of the test in Policy Paragraph 4(a)(i) for reasons given below.
Because, as will be seen, Complainant failed to establish the second element of the test in paragraph 4(a)(ii) of the Policy in normal circumstances it may not be necessary to proceed to consider the third element of the test and address bad faith registration and use. This Panel is of the view however that because there is a finding of Reverse Domain Name Hijacking, the preferred approach in the circumstances of this case, is to proceed to deal fully with each of the three elements.
There is also a contract issue in this case. It appears to be common case that on September 3, 2018 Respondent received an offer of USD $300 for the disputed which he rejected with a counter-offer to sell the domain name for USD $2,500. Respondent states that this counter-offer was binding for seven days only and expired without being accepted by the buyer. This is denied by Complainant who asserts, albeit without any supporting evidence that the negotiation service provider extended the response time.
Months later, on February 19, 2019, Respondent received a new offer of USD $2,500 for the disputed domain name via the same negotiation service provider. Respondent responded with a counter-offer to sell for USD $7,500.
Complainant’s position is that the negotiations remained open and that he in fact accepted Respondent’s initial offer. While neither Party has provided any evidence of whether there was a time-limit on the counter-offer, the documents adduced by Respondent show that both of Complainant’s offers were expressly time-limited by the service provider’s negotiation program.
On that basis it would appear that Respondent’s submissions are more likely to be correct. If that is not correct, then the contract dispute may a matter for another forum, as contract disputes are outside the scope of the limited jurisdiction of this Panel established under the Policy.
Finally, for completeness, it is important to state that there is absolutely no evidence to support Complainant’s conclusory allegations about the motivation and context of any advice he may have received from the negotiation service provider.
Identical and/or Confusingly Similar
Complainant has provided sufficient evidence of his rights in the ELITE MINDSET mark to satisfy the first element of the test in Paragraph 4(a)(i) of the Policy.
Complainant has acquired his rights through his ownership of United States registered trademark number 5,839, 129, registered on the Principal register on August 20, 2019 for goods in international class 25 and services in international class 41, pursuant to an application filed on January 30, 2019. He claims first use of the mark in commerce since April 18, 2017 but has not provided any evidence to prove this assertion.
This Panel also accepts Respondent’s submissions that Complainant has not provided any evidence for his unsupported assertion that his rights in the ELITE MINDSET name were “officially trademarked by the United States Patent and Trademark Office (#:88283355).”
As Respondent has pointed out correctly, the Complaint is deficient in many ways and while Complainant has not expressly submitted that the disputed domain name is identical or confusingly similar to the ELITE MINDSET mark, this Panel finds that this allegation may be implied from the fact that Complainant has brought this Complaint and the factual context of Complainant’s submissions.
Furthermore, this Panel makes this finding mindful that Complainant’s registered trademark is a device/logo of the stylized letters “EM” and the words “ELITE MINDSET” and that Respondent argues that Complainant’s trademark is actually EM ELITE MINDSET. The only evidence that Complainant has submitted of his use of his mark is a photograph of a garment on which the mark is used as registered i.e. the combination of the “EM” stylized letters and the words ELITE MINDSET. However, on the balance of probabilities this Panel finds for the purpose of this Complaint that the mark would be referred to as ELITE MINDSET in commerce.
This Panel finds therefore that the disputed domain name is confusingly similar to both the ELITE MINDSET mark in which Complainant has rights and Complainant has succeeded in the first element of the test in Policy paragraph 4(a)(i).
Rights or Legitimate Interests
Complainant has failed to prove that Respondent has no rights or legitimate interest in the disputed domain name.
It would be generous to say that Complainant has met a prima facie standard in this regard in the Complaint. His submissions are that the disputed domain name was registered before he had any rights in the mark; that he made an offer to purchase the disputed domain name from Respondent but that Respondent refused to sell the disputed domain name to him for the highest price that he was willing to offer; that Respondent was not using the disputed domain name but that the domain name resolved to an inactive web page which contained stock images, stock Latin verbiage and favicons with inactive links to social media.
Respondent has addressed Complainant’s allegations explaining that he purchased the disputed domain name intending to use it for a social media project and potentially alternatively because of its intrinsic descriptive and commercial value as a domain name.
Respondent has provided some evidence that he is in the process of developing a website using the disputed domain name. It is clear that he is not investing much in the way of time or money in his project but nonetheless he is entitled to own and retain a domain name for the purposes of resale if the project does not continue.
As the burden of production rests with Complainant to prove his assertions, this Panel finds that Complainant has failed to prove that Respondent has no rights or legitimate interest in the disputed domain name. Complainant has therefore failed to establish the second element of the test in paragraph 4(a)(ii) of the Policy.
Registration and Use in Bad Faith
The disputed domain name was registered long before Complainant had established any rights in the ELITE MINDSET mark. There is no possibility that the registrant chose and registered the mark with Complainant in mind.
Neither is there any evidence of any bad faith use of the disputed by Respondent. Respondent was entitled to purchase the disputed domain name and on the balance of probabilities he did so and proceeded to hold and use the disputed domain name in good faith, perhaps with the plan to develop a social media site or more likely hoping to sell the disputed domain name at a profit.
Having considered the Complaint and the Response and the evidence adduced, this Panel finds that Complainant has failed to prove that the disputed domain name was either registered or is being used in bad faith.
Complainant has therefore failed to establish the third element of the test in paragraph 4(a)(iii) of the Policy and his application must be refused.
Reverse Domain Name Hijacking
The chronology of this dispute supports a finding of Reverse Domain Name Hijacking which is defined in Rules Paragraph 1 as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”
The sequence of events was as follows:
a. the disputed domain name was registered on April 18, 2017;
b. Complainant made unsolicited offers to purchase the disputed domain name which were rejected by Respondent;
c. Complainant filed his trademark applications with the USPTO on January 30, 2019 after his offers to purchase the disputed domain name were rejected;
d. the filing of the Complaint on or about October 28, 2019.
Respondent submits that Complainant knew or should have known that his trademark applications were filed more than a year and nine months after the Respondent had acquired the disputed domain name (and more than 10 years after the original registrant had registered it).
Complainant knew or should have known, at the time it filed the Complaint, that he could not prove that the disputed domain name was registered in bad faith. As Respondent has correctly submitted this is indicative of Reverse Domain Name Hijacking.
Additionally, as Respondent alleges, Complainant divulged his motivation in an unsolicited email to the Respondent, stating: “I tried to offer to buy through Godaddy, however, you rejected my offers. Therefore, I had no choice but to enter this legal proceeding.”
Furthermore, as Complainant claims to have “sought additional legal counsel specializing in domain management law” prior to filing its Complaint, he should therefore have known that its Complaint was grossly deficient, in relevant details and probative evidence, to prove each of the three elements set out in Paragraph 4(a) of the Policy.
Finally Complainant failed to disclose in his Complaint that he had made and withdrawn a prior at the Forum.
In the circumstances, this Panel finds that Complainant, being aware that he was not entitled to succeed, nonetheless brought this Complaint with the hope that he may secure the transfer of the disputed domain name, after he had failed to purchase same in open commercial arms-length negotiations.
The inference in the Complaint that Respondents offer to sell the disputed domain name remained open for an extended period has been denied by Respondent and is not supported by any evidence adduced by Complainant.
DECISION
Complainant having failed to establish all three elements required under the ICANN Policy, this Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <elitemindset.com> domain name REMAIN WITH Respondent.
Furthermore, this Panel finds in accordance with the Rules Paragraph 15(e) that this Complaint was brought in bad faith an attempt at Reverse Domain Name Hijacking and constitutes an abuse of this administrative proceeding.
______________________
James Bridgeman SC
Panelist
Dated: November 18, 2019
lol what a moron