Empower Media Partners LLC filed a UDRP to usurp the domain EmpowerMedia.com from its registrant. The Respondent in this case is a Canadian citizen that incorporated as Empower 360 Inc. in 2007; it acquired the disputed domain in 2010.
Meanwhile, the Complainant registered the mark EMPOWER in 2018 with the USPTO. The three member panel at the Forum (NAF) found the filing of this case to be meritless:
“It is clearly a case frequently referred to as a Plan B case, one where a complainant goes through the purported process of negotiating to buy the domain name but then resorts to filing proceedings to force the domain name holder to transfer the domain name. There is also a lot to be said for making the finding in suitable cases that will, hopefully, deter the bringing of patently unjustified or frivolous proceedings, of which this is one. In particular, the Complainant should have given the Panel correct information on the date when its trademark was registered but it did not do so. The Panel finds that in all the circumstances it is appropriate to make a finding of Reverse Domain Name Hijacking, which the Panel now does.”
Final decision: Deny the transfer of the domain EmpowerMedia.com and a finding of Reverse Domain Name Hijacking.
Empower Media Partners, LLC v. M. Jarrar
Claim Number: FA2301002030007
PARTIESComplainant is Empower Media Partners, LLC (“Complainant”), represented by Matthew A. Homyk of Blank Rome LLP, Pennsylvania, USA. Respondent is M. Jarrar (“Respondent”), Canada, represented by Ankur Raheja, Cylaw Solutions, Agra, India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is empowermedia.com, registered with NameSilo, LLC.
PANEL
We the undersigned certify that we have acted independently and impartially and to the best of our knowledge we have no known conflict in serving as Panelists in this proceeding.
The Honorable Neil Anthony Brown KC (Chair), Michael A. Albert and Steven M. Levy as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on January 31, 2023; Forum received payment on January 31, 2023.
On January 31, 2023, NameSilo, LLC confirmed by e-mail to Forum that the empowermedia.com domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 February 1, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 21, 2023 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@empowermedia.com. Also on February 1, 2023, 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 February 21, 2023.
On February 27, 2023 and on March 3, 2023, Respondent filed Additional Submissions after obtaining legal representation. The Panel, having regard to all the circumstances, decided to admit the Additional Submissions and to consider them and their attachments.
On February 28, 2023, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, Forum appointed The Honorable Neil Anthony Brown KC, (Chair), Michael A. Albert and Steven M. Levy as Panelists.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that 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 made the following contentions.
Complainant, previously Empower MediaMarketing, Inc. and now Empower Media Partners, LLC, is a media agency founded in 1985. Complainant has rights in the EMPOWER mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,490,741, registered June 12, 2018).Complainant also argues common law rights in the EMPOWER and EMPOWER MEDIAMARKETING marks based on use of those marks for the past 38 years.
Respondent’s empowermedia.com domain name is identical or confusingly similar to Complainant’s EMPOWER mark as it merely adds the generic word “media”.
Respondent lacks rights or legitimate interests in the empowermedia.com domain name. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services because Respondent uses the disputed domain name to direct users to pay-per-click advertisements for the same services that Complainant provides.
Respondent registered and uses the empowermedia.com domain name in bad faith. Respondent is offering the disputed domain name for sale for $50,000, far above the cost of reasonable fees paid by the Respondent when it registered the disputed domain name. Additionally, Complainant contends Respondent has a history of bad faith registrations. Further, Complainant argues Respondent is using the disputed domain name for commercial gain by resolving to website with pay-per-click advertisements competing with Complainant’s services. Respondent further shows bad faith by concealing its identity from the WHOIS directory through a privacy shield. Finally, Respondent had actual knowledge of Complainant’s mark prior to registration of the disputed domain name.
B. Respondent
Respondent initially responded to the Complaint via email on February 21, 2023 before he obtained legal representation and made the following contentions.
Respondent submitted that “Empower Media” is a generic term. Respondent argued that its corporation has been using “Empower Media” in business since 2007 and obtained the disputed domain name with the intention of using it at a time that was convenient to that entity. Respondent further argues that a search for companies under the name “Empower Media” in North America results in a number of third-party entities using similar names. Respondent also notes that Complainant’s name is “Empower Media Partners” not “Empower Media”. Respondent also indicated that alternative domain name options using “Empower Media” with different extensions are available for registration.
Additional Submissions
The Respondent made an additional submission that the Panel has accepted and to which it has had regard in reaching its decision. In that additional submission, the Respondent made the following contentions.
1. Respondent is a Canadian citizen who incorporated the Canadian company Empower 360 Inc. on December 14, 2007. The company deals in technology related services, digital media and educational services. It has had a website at www.empower360.com since 2009.
2. The Respondent also incorporated the ‘Empower The World Foundation in October 2020.
3. It also registered /acquired a series of six domain names incorporating the word “empower” which are set out in the Response.
4. Respondent acquired the disputed domain name in September 2010, having bought the same from its previous owner and became its registered owner on September 14, 2010.
5. Respondent was commonly known as EMPOWER and the domain name included the word “media” which describes the services its company renders.
6. The domain name is a combination of two dictionary terms “empower “and “media” which are in wide use.
7. The domain name was registered prior to the Complainant acquiring any trademark rights, to make legitimate use in its business and it then put the domain name to use, which is a bona fide offering of goods and services under paragraph 4(c)(i) of the Policy.
8. The Respondent had never heard of the Complainant until it received the Complaint.
9. There are more than 50 companies apart from the Respondent’s company that have the words EMPOWER MEDIA in their company name. Moreover, there are many websites and domain names using the expression “Empower Media”.
10. Thus, the Complainant does not have exclusive rights to the words “ Empower Media.”
11. The Complainant made an unsolicited offer to buy the domain name on November 29, 2022 which was rejected, showing that the present Complaint is a Part B plan to reverse hijack the domain name from the Respondent.
12. There is no evidence that the Complainant has made use of any combination of “Empower Media” in any domain name. In fact, the Complainant operates its business website at empowerMM.com.
13. The Complainant applied for the registration of the EMPOWER trademark on October 19, 2017 and it was registered on June 12, 2018, almost 8 years after the Respondent registered the domain name on September 14, 2010.Moreover, the Complainant did not adopt the company name Empower Media Partners LLC until 2022.
14. There is no evidence that the Complainant acquired any common law trademark rights to EMPOWER prior to 2018.
15. The Respondent concedes that the Complainant has established its standing to file this Complaint, by virtue of its 2018 trademark.
16. The Respondent has a right or legitimate interest in the disputed domain name because its domain name consists of a common term and the Respondent had a good faith belief that the value of the domain name derived from its common qualities rather than its specific trademark value and the use of the domain name is consistent with that belief.
17. Moreover, where a domain name consist of short common words, there is a disposition in domain name decisions to favor the domain name owner.
18. The Respondent made demonstrable preparations for a bona fide offering of goods and services before notice of this proceeding within the meaning of paragraph 4(c) (i) of the Policy. This was done in 2010-2011 by causing the domain name to resolve to www.votetowin.com, as part of Empower360’s digital campaign showing links to digital marketing, which is one of its activities, and later by carrying advertisements within the Respondent’s field of business.
19. The Respondent was commonly known by the dominant portion of the domain name, EMPOWER” and the word “media” describes the services of his company, Empower 360 Inc.
20. The use of the domain name made by the Respondent is a fair use, as the links displayed are only those related to the Respondent’s business.
21. The Complainant has therefore not made out a prima facie case that the Respondent has no right or legitimate interest in the domain name.
22. The Complainant has not shown that the Respondent registered the domain name in bad faith because there is no evidence that the Respondent targeted the Complainant or its trademark or even had the Complainant in mind when it registered the domain name.
23. There is no evidence that the Respondent had actual knowledge of the Complainant when it registered the domain name.
24. The evidence shows that the Respondent registered and used the domain name in good faith.
25. The Respondent’s use of a privacy service was entirely legitimate.
26. All the circumstances show that this is a case of Reverse Domain Name Hijacking.
27. The Panel should dismiss the Complaint and find pursuant to Rule 15 (e) that the Complaint was brought in bad faith in an attempt at Reverse Domain Name Hijacking, was brought primarily to harass the Respondent as domain-name holder and constitutes an abuse of the administrative proceeding.
FINDINGS
1. Complainant is a United States company and a media agency. Respondent is a Canadian citizen who conducts a business that deals in technology related services, digital media and educational services.
2. Complainant has established its rights in the trademark Registered Number 5,490,741 for EMPOWER, by virtue of its registration of the Mark with the United States Patent and Trademark Office (“USPTO”) on June 12, 2018.
3. On December 14, 2007 Respondent incorporated the Canadian company Empower360 Inc., with the domain name empower360.com and a website to which it resolved at www.empower360.com. On October 10, 2020, the Respondent was instrumental in incorporating via Empower360 Inc., a not-for-profit foundation named Empower the World Foundation.
4. Respondent acquired the disputed empowermedia.com domain name on September 14, 2010, when it acquired the domain name from its previous owner.
5. The evidence shows that Respondent has a right and legitimate interest in the disputed domain name.
6. The evidence shows that Respondent did not register and use the disputed domain name in bad faith.
7. The Panel finds that pursuant to Rule 15 (e) the Complaint was brought in bad faith in an attempt at Reverse Domain Name Hijacking, was brought primarily to harass the Respondent as domain-name holder and that it constitutes an abuse of the administrative proceeding.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
The first issue that arises is whether the Complainant has a trademark or service mark on which it may rely on in this proceeding. That requirement is spelt out in paragraph 4(a)(i) of the Policy and it is an important element as, if it is met, it is the first step towards giving a complainant standing to bring the proceeding. The Complainant’s case in that regard is that it has the trademark required, namely the trademark for EMPOWER which is registered with the United States Patent and Trademark Office (“USPTO”) ( Registered Number 5,490,741, registered on June 12, 2018) ( “the EMPOWER trademark”).The Complainant has exhibited as Exhibit B an extract from the USPTO registry demonstrating that the trademark is registered in the name of Empower MediaMarketing,Inc which is the former name of the Complainant , and evidence has been adduced to verify that change of name. Accordingly, the Complainant has established that within the meaning of paragraph 4(a)(i) of the Policy, it “has” rights in a trademark, namely the trademark just referred to. The Complainant has thus satisfied the first part of the formal requirement, as the Policy does not state that the trademark must have been registered prior to the relevant domain name, but that the Complainant “has” the trademark, that is to say that it “has” the trademark at the time the Complaint was filed, which it did.
However, the Panel is concerned at the manner in which the Complainant has put its case on its trademark and when the Complainant acquired its trademark rights. In the Complaint, the Complainant submits that “Complainant’s EMPOWER Mark was and is registered in International Class 35 in the United States several years before Respondent’s registration of its domain in 2005.” The evidence shows that the domain name was acquired by the Respondent on September 14, 2010, shortly after it bought the domain name from its previous owner. As the disputed domain name was acquired by the Respondent on September 14, 2010, the trademark was therefore not registered several years before the registration of the domain name but some 8 years after it was registered.
Indeed, the same evidence shows that the Complainant filed for its trademark on October 19, 2017 which was also well after the Respondent registered its domain name and not before it.
These factual matters may well have consequences for the Panel’s consideration of whether the Respondent has a right or legitimate interest in the domain name and whether it registered and used the domain name in bad faith, two other essential requirements under the Policy, and the Panel will have to deal with those issues later in this decision. At the present, however, it should be understood that this is a case where the submitted evidence indicates that respondent acquired its domain name when there was no trademark preventing it from doing so.
It might also be noticed here that, according to the USPTO, the Complainant had another trademark, THE EMPOWER GROUP, trademark no.4281801, but this was cancelled on August 30, 2019, for a reason not disclosed in this proceeding. The Complainant also had another trademark, EMPOWER MEDIA MARKETING, trademark no. 2328438, but this was cancelled on November 5, 2021, again for a reason not disclosed in the proceeding.
As well as its reliance on the registered EMPOWER trademark which was clearly registered some 8 years after the Respondent registered its domain name, and not before it, the Complainant submits that it also has a common law or unregistered trademark for EMPOWER and EMPOWER MEDIAMARKETING (sic., seemingly as one word). This submission seems to be something of an afterthought, as the Complainant has made it very clear that its case in substance is and always was that:
“(1) The domain name is confusingly similar to Complainant’s registered EMPOWER Mark;…”
but not confusingly similar, by implication, to any common law EMPOWER mark.
Nevertheless, the Complainant submits that it has the two above common law trademarks and the Panel has to rule on that submission.
So far as the latter is concerned, there is no evidence that the Complainant has or ever had a common law trademark for EMPOWER MEDIAMARKETING or, for that matter, EMPOWER MEDIA MARKETING. The Panel acknowledges that the Complainant may have had a common law trademark for either or both of these expressions, but the issue for the Panel is whether there is any evidence to support the contention and there is none. It is certainly not evidence that the Complainant stated in its filing for the registered trademark that it had a first use and a first use in commerce from January 3, 1999. It is not evidence because it is now well established that the claimed date of first use in commerce on a US trademark registration certificate is, alone, not evidence of common law rights as of that date. For example, in Handy Guy Inc. v. Merlin Kauffman, FA 1998214 (Forum July 20, 2022), the Panel noted that “Nor is the claimed date of first use in the application definitive evidence that the mark actually was used and valid prior to the filing of the application.” See also JumpCloud, Inc. v. Peter Irion / SCS LLC, FA 1914971 (Forum Nov. 27, 2020) (with reference to the date of first use in commerce recited in Complainant’s US trademark registration certificate, the Panel noted that such “dates claimed by the trademark owner and not supported by evidence, has always been treated in UDRP proceedings with some reserve, rather than as evidence of when a trademark was in fact first used as a trademark.”). Such assertions therefore need to be supported by evidence if they are to be used and they are frequently proved in these proceedings by evidence of the extent of the use of the claimed mark, advertising, sales, industry awards, media recognition and suchlike. But no such evidence has been adduced here by the Complainant.
The only other reference to EMPOWER MEDIA MARKETING that the Panel can find is that the Complainant once had a registered trademark for that expression as noted above, trademark no. 2328438, but that is not evidence that has been adduced by the Complainant. Nor is there any apparent explanation for why a party would register a trademark on March 14, 2000, cancel it on November 14, 2021 and then subsequently submit that it had actually had a common law trademark in the same expression.
The Panel therefore finds that the Complainant has not shown by evidence that it has or ever had a common law trademark for EMPOWER MEDIAMARKETING or EMPOWER MEDIA MARKETING. In particular, there is no evidence that the Complainant had a common law trademark at or before the Respondent registered its domain name.
So far as the former claimed common law trademark, EMPOWER, is concerned, although the Complainant has obviously used the word “empower” in its business , it is far from clear that it has taken on the color of a common law trademark or that it acquired any degree of exclusivity associated with the Complainant. Moreover, there is no evidence that it has done so “for the past 38 years” or at any time prior to the registration of the domain name. Importantly, the word “empower” is very generic and in wide use and the Panel is therefore entitled to see at least some evidence that would give it some of the connotations and cachet of a trademark, of which the Panel can see none. In fact, the detailed submissions and evidence submitted by the Respondent, which in many respects are pivotal to this decision, show that the word has been widely used in trademarks, domain names, company names and websites and it is unlikely that the Complainant could have any exclusivity to it in the face of that evidence. The Panel therefore finds that the Complainant has not made out a case that it has or had a common law trademark for EMPOWER.
The result, therefore, is that the Panel finds that the Complainant has shown only that it has a registered trademark for EMPOWER, a trademark that was registered on June 12, 2018. The domain name contains that trademark in its entirety and is thus similar to the trademark to that extent. But the question remains whether the domain name is not only similar to the trademark, but confusingly similar. The domain name includes the gTLD “.com”, but that is not taken into account for this purpose, as all domain names are registered under the umbrella of a gTLD. But as the rest of the string of the domain name is the generic word “media”, and as the word “media” is used twice in the class of goods and services covered by the trademark, it is conceivable that some internet users might find the domain name confusingly similar to the trademark.
The Panel is not convinced that this is so, as most internet users, comparing the domain name with the trademark, would probably first want to know whether it related to one of the many uses of the word EMPOWER in trademarks and other commercial designations or whether it was simply invoking the generic notion of empowerment through the media. Other internet users would undoubtedly note that the domain name empowermedia.com and the trademark EMPOWER are essentially different and could not give rise to any confusion because they deal with different subjects, one being empowerment through the media and the other being the general notion of empowerment by whatever means.
The general approach in this field is that confusing similarity is a “low threshold” and simply gives standing to a complainant to bring the complaint. Accordingly, the Panel is prepared to find that the Complainant has met the “low threshold” necessary to give it standing. But it must be remembered that the real issues in this proceeding come down to how the other and far more significant issues are resolved.
For present purposes the Complainant has thus made out the first of the three elements that it must establish.
Rights or Legitimate Interests
When considering this element, it is now well established that the onus is on the Complainant to make out a prima facie case that the Respondent does not have a right or legitimate interest in the disputed domain name. If it does, the onus is reversed and the obligation is then on the Respondent to rebut that prima facie case.
A prima facie case is one where, all things being equal, it can safely be said that the party concerned has made out the constituent elements of its case, raising the probability that its case is valid. The Panel has given careful consideration to all of the submissions and evidence. The Panel finds that the Complainant has not made out a prima facie case showing that those constituent elements that it must prove have been established to the extent that they are probably true. The Panel also finds that even if a prima facie case has been made out, it has clearly been rebutted by the Respondent.
It must first be understood exactly what case the Complainant is putting. The Complainant does not leave much doubt as to what its case consists of, as it has said so on at least two occasions in the Complaint. On both occasions the Complainant makes it clear that its case is that the Respondent was motivated to register and use the domain name by the existence of Complainant’s registered EMPOWER trademark. That is, that the Respondent knew of the registered trademark and, because of the registered trademark, set about registering the domain name and deliberately targeting the Complainant and its registered trademark and trading off the goodwill associated with it.
The first occasion relied on is in the body of the Complaint, where the Complainant submits that the Complainant registered the domain name “more than six years after Complainant’s claimed date of first use in commerce in U.S. Trademark Registration No. 5490741 for EMPOWER…”
The second occasion is even more specific, in that the submission is that the “only purpose” (emphasis added) in the Respondent’s use of the domain name was “to redirect Complainant’s consumers and to make money off Complainant’s goodwill in its EMPOWER Mark”. Thus, it is clear that what is being alleged is that the Respondent was motivated or stimulated solely by the fact that the Complainant had registered its trademark for EMPOWER.
Thus, the Complainant’s case is that the Respondent has no right or legitimate interest in the domain name because its “only purpose” was to redirect internet users and that its “only use” of the domain name was to trade off the goodwill of the Complainant’s registered trademark. That poses immediate problems for the Complainant. The Complainant submits that the Respondent registered the domain name on July 27, 2005, and cites in support of that submission the WHOIS printout for the ,empowermedia.com. domain name, which is the Complainant’s Exhibit E. But that document does not say the Respondent registered the domain name on that or any other date. It says that the domain name was created on that date, which it was. But the totality of the evidence, including the verification response from the registrar and the extensive evidence of the transaction submitted by the Respondent, shows that it acquired the domain name on September 14, 2010 when it bought it from the previous owner. Thus, the fact that the Complainant had a registered trademark from June 12, 2018 could not have been the only purpose or even part of the purpose for the Respondent acquiring the domain name some 8 years earlier. That being so, the Respondent was entitled to register the domain name. The Panel therefore finds that the Complainant has not made out a prima facie case that the Respondent has no right or legitimate interest in the domain name.
In any event, even if a prima facie case has been made out, the Panel finds that the Respondent has rebutted that case. The Respondent has presented a detailed case to show that it had a right to register the domain name and a legitimate interest in it. That case and the evidence in support of it have already been set out and it is not necessary to repeat it here. It is also supported by very extensive documentary evidence that verifies the Respondent’s contentions. The Panel has examined this evidence closely and finds that it is consistent with the Respondent’s contentions. It is clear to the Panel from the evidence that years before the Complainant applied for its trademark, the Respondent had a legitimate business and that it was buying and developing domain names and selling them if and when the price was right and it fitted in with its business strategy. It was as part of that legitimate business that the Respondent acquired the domain name. It is apparent that the Respondent did not acquire the domain name for a reason that had anything to do with the Complainant or its EMPOWER trademark and is motivation was not to trade off the goodwill of that trademark, but to use the domain name as an asset of its already established business. Indeed, on the totality of the evidence, it is unlikely that the Respondent even knew of the Complainant until this proceeding commenced.
That being so, the Panel finds that the Respondent had the right to acquire the domain name and retain it.
The Respondent also has a legitimate interest in the domain name because the evidence shows that it has used it as part of its legitimate business and done so in a legitimate way. Although it is alleged by the Complainant that its only interest was in targeting the Complainant and trading off its goodwill, the evidence shows that it did not do this or anything remotely like it. The Wayback Machine is in evidence and an examination of how the Respondent has used the domain name shows that the Respondent did not engage in any targeting or trading on the goodwill of the Complainant, although it had years to do so if it were so minded, which it clearly was not. The Complainant has exhibited a single screenshot from the Wayback Machine, but it is apparent from examining the history of the use of the domain name that it has not been used to divert internet users to competitors of the Complainant, to pass itself off as the Complainant or copy the Complainant’s own website. Many of the screenshots available show no advertisements or promotions at all. Others are to fields completely outside the fields in which the Complainant is engaged. Others offer the domain name for sale. All of them seem to the Panel to be bona fide. Taking the evidence as a whole, the Panel finds that it shows that in so far as the Respondent has used the domain name on the internet at all, it has used it for a bona fide offering of goods and services within the meaning of paragraph 4(c)(i) of the Policy.
In this regard, the Panel also agrees with two other persuasive points made by the Respondent. The first is that the domain name is essentially generic, consisting as it does of two short, common words. There is a general disposition in this field to regard uses of such domain names as legitimate if they are reasonably within the meaning of such words and, of course if there is nothing untoward to suggest that the use is deceptive or misleading. The Respondent passes that test in the present case.
Secondly, the bona fides of the Respondent can be assessed by how the Respondent first used the domain name, as that will throw light on its overall intentions with respect to its use. The Respondent’s submission in that regard, supported by a screenshot of the relevant website, is that this was done in the years 2010-2011 (the domain name was registered on September 14, 2010) by causing the domain name to resolve to www.votetowin.com that carries links to various avenues of digital marketing, one of the activities of the Respondent’s company Empowrr360 Inc.
Finally, the Respondent has submitted that it is commonly known by the domain name. The evidence is that the Respondent formed the company Empower 360 Inc. in Canada on December 14, 2007 and on October 10, 2020 was instrumental in forming a not-for-profit foundation named Empower the World Foundation. The respondent has tendered in Annex 1V certificates issued by Industry Canada and the Department of Innovation, Science and Economic Development Canada respectively. The purpose of the latter entity was described on its certificate of incorporation as Volunteer Based education, mentoring and other community services. It also stated that it was incorporated by Empower 360 Inc. and the certificate was also signed by the Respondent. The Respondent has also tendered in evidence an extract from the Wayback Machine stating that Empower 360 Inc. is a company offering “New Media Marketing” and that its resources include “Domain Names”. That statement appears on the Wayback Machine for August 16,2009. Apart from Empower 360 Inc, the domain name empower360.com resolves to a website, the earliest screenshot of which is dated on the Wayback Machine as being as early as April 4, 2001. There are many other screenshots on the Wayback Machine for empower360.com, including the screenshot of March 3,2018 stating that its activities are “Technology Services | Business Solutions | Project Management.”
This evidence shows that the Respondent used in its business the name Empower, showing that he was commonly known by that name in business. It also shows his right to register the domain name empowermedia.com and the legitimacy of his retaining and using the domain name in his business and at a time long before the Complainant registered its EMPOWER trademark.
The accumulated evidence therefore shows that the Respondent had a right and legitimate interest in the disputed domain name and the Panel so finds.
The Complainant has therefore failed to discharge its burden under the second element that it must establish.
Registration and Use in Bad Faith
The foregoing evidence shows that the Respondent did not register and use the disputed domain name in bad faith and it is unnecessary to repeat that evidence here. It is clear from the chronology of the registration of the disputed domain name that the Respondent did not register it in bad faith as the domain name was well and truly registered and in use before the Complainant registered its trademark and even before it applied for the trademark. It is equally clear that the Respondent’s conduct and the use it made of the domain name were not in bad faith but were a good faith use of the domain name in a legitimate business.
In that regard it should be noted that despite its valuable work, there is no evidence to suggest that the Complainant or its trademark were well known to the extent that the Respondent knew of its existence or name. The Respondent therefore did not have actual notice of the Complainant or its trademark at the time the Respondent registered his domain name or at all.
The Complainant has therefore failed to discharge its burden under the third element that it must establish.
As the Complainant has failed to discharge its burden under these two elements, the Complaint is denied.
Reverse Domain Name Hijacking
Rule 15 (e) gives a discretionary power to the Panel to find that the Complaint was brought in bad faith in an attempt at Reverse Domain Name Hijacking, was brought primarily to harass the Respondent as domain-name holder and that it constitutes an abuse of the administrative proceeding.
Such a finding is not made where a complainant has been merely over-optimistic in bringing the claim and it is generally made only in a clear case of harassment or where the Complaint has been brought recklessly and without good ground. The Panel finds that this is an appropriate case for making such a finding. It is clearly a case frequently referred to as a Plan B case, one where a complainant goes through the purported process of negotiating to buy the domain name but then resorts to filing proceedings to force the domain name holder to transfer the domain name. There is also a lot to be said for making the finding in suitable cases that will, hopefully, deter the bringing of patently unjustified or frivolous proceedings, of which this is one. In particular, the Complainant should have given the Panel correct information on the date when its trademark was registered but it did not do so.
The Panel finds that in all the circumstances it is appropriate to make a finding of Reverse Domain Name Hijacking, which the Panel now does.
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 empowermedia.com domain name REMAIN WITH Respondent.
The Panel also makes a finding of Reverse Domain Name Hijacking against the Complainant.
The Honorable Neil Anthony Brown KC, (Chair)
Michael A. Albert
Steven M. Levy
Panelists
Dated: March 7, 2023
