UDRP has been denied.
Etsy, Inc. filed a UDRP against the owner of the aged domain, Esty.com.
Registered in 2001, Esty.com is at least four years older than the online arts and crafts marketplace, and registered more than five years before Etsy, Inc. trademarked ETSY.
Regardless of this timeline of events, Etsy, Inc. filed a UDRP at the National Arbitration Forum. The Respondent was represented by IP attorneys, Ari Goldberger and Jason B. Schaeffer, of ESQwire.com.
Note: ESQwire.com is an advertiser on DomainGang.com.
In the UDRP filing, Etsy, Inc. disclosed its financial prowess: more than $2.84 billion in gross merchandise sales in 2016, and more than 30.6 million active buyers, along with 1.8 million active sellers for arts, crafts, handmade and vintage goods.
The ETSY mark was registered after Etsy.com and the company formed in 2005.
The Complainant’s main point in filing this UDRP, was the “zero click” pop up ads, some of which allegedly delivered malware or fake “alerts” to update Adobe Flash, or to fix Windows errors.
According to the UDRP:
Respondent registered the Disputed Domain solely based on its descriptive nature — and not because of Complainant’s trademark – the Panel should consider common examples of similar, valuable, first name or surname domain names that Respondent has registered, include but are not limited to: Ashira.com, Danielle.com, Rajat.com, Leita.com, Devera.com, Youssef.com, and Juhong.com; Yu.com, Bergstein.com, Frink.com, Fedorov.com, Kasen.com, Roselle.com, and Harson.com
A three member panel found no bad faith in the domain’s registration, and ordered the domain Esty.com to remain with the Respondent.
Currently, Esty.com is available on Sedo, with a minimum price of $100,000 dollars.
Full details of this decision follow.
Copyright © 2024 DomainGang.com · All Rights Reserved.Etsy, Inc. v. DOMAIN ADMINISTRATOR / PORTMEDIA HOLDINGS LTD
Claim Number: FA1710001753224
PARTIES
Complainant is Etsy, Inc. (“Complainant”), represented by David A.W. Wong of Barnes & Thornburg LLP, Indiana, USA. Respondent is DOMAIN ADMINISTRATOR / PORTMEDIA HOLDINGS LTD (“Respondent”), represented by Ari Goldberger of Esqwire.com, New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <esty.com>, registered with Uniregistrar Corp.
PANEL
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
David L. Kreider, Esq., as the Chair of the three-member Panel, along with The Honorable Charles Kuechenmeister (Ret.), and The Honorable Neil Anthony Brown QC, as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the Forum electronically on October 11, 2017; the Forum received payment on October 12, 2017.
On October 16, 2017, Uniregistrar Corp confirmed by e-mail to the Forum that the <esty.com> domain name is registered with Uniregistrar Corp and that Respondent is the current registrant of the name. Uniregistrar Corp has verified that Respondent is bound by the Uniregistrar Corp 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 19, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 13, 2017 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@esty.com. Also on October 19, 2017, 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 13, 2017.
On November 20, 2017, Complainant made timely an additional submission pursuant to Supplemental Rule No. 7. The Panel has considered Complainant’s submission.
On November 22, 2017, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed
David L. Kreider, Esq., as Panelist;
The Honorable Charles Kuechenmeister (Ret.), as Panelist; and,
The Honorable Neil Anthony Brown QC, as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
[a.] The domain name <esty.com> is confusingly similar to the ETSY trademark domain name in which Complainant has rights. ICANN Rule 3(b)(ix)(1); UDRP Policy ¶ 4(a)(i).
Etsy, Inc., (“Complainant”), at more than $2.84 billion in gross merchandise sales in 2016 and having more than 30.6 million active buyers and 1.8 million active sellers, is the world leader in providing an outlet for the buying and selling of arts, crafts, and handmade and vintage goods. Etsy has been using the ETSY mark in connection with its online marketplace services since 2005. The ETSY website has over 32,000,000 unique visitors with over 1,000,000,000 page views each month. Etsy has 2,710,000 followers of Etsy’s Twitter account. More information about Complainant is available at http://www.etsy.com/.
Complainant’s services are provided under the ETSY® trademark; Complainant’s company and trade name is ETSY, INC.; Complainant’s website has been available at the etsy.com domain name since 2005; and Complainant owns various registered trademarks incorporating the term ETSY (collectively, the “ETSY Mark”). As a result of continuous and significant use of the ETSY Mark, Complainant has also established strong common law rights in the ETSY Mark throughout the United States and elsewhere. Indeed, the ETSY trademark is well-known and famous in numerous parts of the world.
The esty.com domain name (the “Disputed Domain Name”) is nearly identical and confusingly similar to the ETSY Mark. The Disputed Domain Name is a simple misspelling of the ETSY Mark – esty.com merely transposes the letters “t” and “s” (plus adding the generic top-level domain “.com”) and is therefore confusingly similar to the ETSY Mark. See McAfee, Inc. v. Web Services Pty/Aditya Roshni, FA1204001439614 (Forum May 21, 2012) (Respondent’s <mcaefe.com> domain name is confusingly similar to Complainant’s MCAFEE mark); Google Inc. v. Jon G., FA 106084 (Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to Complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”); Delta Corporate Identity, Inc. v. SearchTerms, FA 590678 (Forum Dec. 14, 2005) (concluding that the <dleta.com> domain name was confusingly similar to Complainant’s DELTA mark).
Complainant does not dispute that the record indicates that the Disputed Domain Name was first registered or created prior to Complainant establishing rights to the ETSY Mark. However, the relevant inquiry under ICANN Rule 3(b)(ix)(1); UDRP Policy ¶ 4(a)(i) is “whether Complainant ‘has’ a trademark, i.e. has one at the time the question is being considered and not whether it previously had a trademark or whether it acquired one after the domain name was registered.” Adam Milstein v. Benjamin Doherty, FA1511001647496 (Forum January 11, 2016); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).
[b.] Respondent has no rights or legitimate interests to <esty.com>. ICANN Rule 3(b)(ix)(2); ICANN Policy ¶ 4(a)(ii).
Respondent is not commonly known by the Disputed Domain Name and Complainant has not authorized Respondent to use any version of Complainant’s ETSY Mark for any purpose. Prior to submitting the original complaint, the WHOIS information for the Disputed Domain Name listed Respondent as “PRIVACYDOTLINK CUSTOMER 568313”. After this original complaint was submitted, the WHOIS information for the Disputed Domain was updated to list Respondent as “DOMAIN ADMINISTRATOR” with the Organization “PORTMEDIA HOLDINGS LTD” and identifies no other connection between Respondent and the Disputed Domain Name. See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”); see also RMO, Inc. v. Burbridge, FA 96949 (Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) “to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail”). A WHOIS History report indicates that Respondent and its predecessors in interest have never been known by the Disputed Domain Name. Furthermore, Respondent has no trademark or intellectual property rights in the Disputed Domain Name and Respondent has never used or made preparations to use the Disputed Domain Name in connection with a bona fide offer of goods or services or for any legitimate noncommercial or fair purpose.
Most significantly, Respondent is using the Disputed Domain Name to divert and redirect Internet users to generate numerous different illicit pop-up windows for several different nefarious and competing websites, including for example:
A. Respondent is using the Disputed Domain Name to generate pop-up window scam alerts that “lock up” the user’s browser preventing the user from easily navigating away from closing the window. The scam alerts allege that the user’s computer is infected with a virus and spyware and directs the user to call a phone number to remove the virus and spyware. Sound clips are simultaneously generated along with these written scam alerts which verbally state the following messages:
Critical alert from Microsoft. Your computer has alerted us that it is infected with a virus and spyware. This virus is sending your credit card details, Facebook login, and personal emails to hackers remotely. Please call us immediately at the toll free number listed so that our support engineers can walk you through the removal process over the phone. If you close this page before calling us, we will be forced to disable your computer to prevent further damage to our network. Error No. 268D3.
and;
Important security message. Your computer has been locked up. Your IP address was used without your knowledge or consent to visit websites that contains [sp] identify theft virus. To unlock the computer, please call support immediately. Please do not attempt to shut down or restart your computer. Doing that may lead to data loss and identify theft. The computer lock is aimed to stop illegal activity. Please call our support immediately.
There are numerous third-party resources on the Internet that have investigated these exact scams including several videos documenting the scams. When calling the phone number provided in the scam alerts, the phone is answered by individuals that continue to perpetrate the fraud by “confirming” that the user’s computer is indeed infected and asking for the user’s credit card information in order to have the malware removed and to install anti-virus software. Respondent is allowing the Disputed Domain Name to be associated with the fraud and Respondent is undoubtedly remunerated for participation in the scam and is therefore complicit in the fraudulent activity. It is well established that criminal fraud clearly demonstrates that Respondent has no legitimate interests in the Disputed Domain Name. Demco, Inc. v. Adminprivateregcontact a/k/a Demco USA, Case No. D2011-1516 (WIPO Oct. 31, 2011).
B. Respondent is using the Disputed Domain Name to direct Internet traffic to webpages stating that the user’s computer is “infected by the virus which has created unauthorized access to your system” and directing the user not to close the webpage “as your system will be disable to protect your data. Finally, the user is directed to call a phone number to address the “issue.” For the all the same reasons identified above at Par. 6(b)(ii)(A), Respondent’s use of the Disputed Domain Name to facilitate a scheme to divulge sensitive financial information under false pretenses constitutes criminal fraud and demonstrates that Respondent has no legitimate interest in the Disputed Domain Name.
C. Respondent is using the Disputed Domain Name to divert Internet users to a commercial landing website that displays links to third-party websites that compete and overlap directly with Complainant’s services. Respondent’s pay-per-click landing page displays ESTY.COM prominently in the webpage header and provides links to directly competitive services, including “handmade products”, “baby gear”, “clothing and accessories,” “home furnishings,” “wedding supplies,” “fashion jewelry,” and “fashion clothing.” Complainant is well-known and famous for providing a platform for selling these exact goods. Given the identical nature of the goods identified on Respondent’s website, there can be no doubt that Respondent willfully seeks to trade on the goodwill of Complainant’s well-known ETSY Mark. Furthermore, upon information and belief, Respondent derives commercial benefit from these diversions due to click-through fees from the links on the website. Such use does not qualify as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Forum June 12, 2003) (finding that Respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to Complainant’s mark, websites where Respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy).
D. Respondent is also using the Disputed Domain Name to redirect Internet users to websites inviting the user to download software by alleging that, for example, “Your Download is Ready.” and “Your version of Flash Player might be outdated. Updates are ready to install.” Users that click on the “download” button will undoubtedly infect their computer with unwanted adware or other undesirable malware.
E. Respondent is also using the Disputed Domain Name to redirect Internet users to the websites of other retail store service providers, including Kohl’s and Macy’s. These sites compete directly with Complainant’s services as numerous identical sets of goods can be purchased via each of them. Such goods include apparel, jewelry, and home furnishings. Upon information and belief, Respondent derives commercial benefit from the affiliate programs of these retail services providers or other revenue generating mechanisms that reward redirecting Internet users from Complainant’s website to the sites of others. Such use does not qualify as a legitimate interest under Policy ¶ 4(c)(iii). See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Forum June 12, 2003).
For all the reasons identified above, Respondent has no rights or legitimate interests in the Disputed Domain Name.
[c.] The domain name has been registered and is being used in bad faith. ICANN Rule 3(b)(ix)(3); ICANN Policy ¶ 4(a)(iii).
As evidenced by Complainant’s trademark registrations, the ETSY Mark was distinctive in the U.S. and beyond since 2005 so as to give at least constructive notice to Respondent that the current use of the Disputed Domain Name would violate Complainant’s rights. Not only is Respondent imputed with constructive knowledge based on Complainant’s trademark registrations, but the nature of Respondent’s fraudulent activity and the clear attempts to trade on the goodwill of the ETSY Mark (i.e. by providing links and redirections to directly competitive goods and services) inherently demonstrates Respondent has actual knowledge of Complainant’s rights. It is not a coincidence that the Disputed Domain Name provides hyperlinks on the homepage labeled “handmade products”, “baby gear”, “clothing and accessories,” etc. Rather, Respondent has willfully chosen these links in an effort to maximize its pay-per-click revenue generated by Internet users seeking Complainant’s website. This diversion and redirection of Internet users to competitive third-party websites via immediate redirection as well as presenting search engine and links located at some of Respondent’s websites constitutes bad faith use pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another’s mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website).
Furthermore, given Respondent’s clear knowledge of, and attempts to trade on the good will of, the ETSY Mark coupled with Respondent’s uncaring and callous use of the Disputed Domain Name seeking to generate revenue through deception and criminal fraud, Respondent’s actions constitute bad faith use of a domain name. See Demco, Inc. v. Adminprivateregcontact a/k/a Demco USA, Case No. D2011-1516 (WIPO Oct. 31, 2011) citing Graybar Services, Inc. v. Graybar Elec, Grayberinc Lawrenge, Case No. D2009-1017 (WIPO Oct. 2, 2009). Respondent is using the Disputed Domain Name, which is a very common misspelling of Complainant’s ETSY Mark, to redirect and divert Internet traffic seeking Complainant’s services, and presenting users with links to competing services and false notifications alleging that their computers have been compromised and that they must provide their personal financial and credit card information. All the while, Respondent generates revenue at the expense of unsuspecting Internet users. Accordingly, there can be no doubt that Respondent uses the Disputed Domain Name to perpetrate the fraud.
Complainant acknowledges that the Disputed Domain Name was first registered prior to Complainant establishing rights to the ETSY Mark. However, Complainant submits that the Disputed Domain Name (1) was registered and has since been maintained for the bad faith purpose of subsequently using the domain name to trade on the goodwill of a trademark owner; (2) has subsequently been transferred and renewed well after Complainant established rights to the ETSY Mark thereby creating a new obligation to comply with the requirements of the Policy; and (3) the use of the Disputed Domain Name has changed for the bad faith purpose of diverting and defrauding Internet users well after Complainant’s rights to the ETSY Mark were established.
The registration of a domain name for speculative purposes hoping that someday that it could be used to exploit the trademark rights of another constitutes bad faith registration. Camilla Australia Pty Ltd v. Domain Admin, Mrs Jello, LLC, WIPO Case No. D2015-1593. According to Camilla Australia Pty Ltd, “In all cases, the issue remains that to which the bad faith registration requirement in paragraph 4(a)(iii) is directed: what was the state of mind of Respondent when it registered the disputed domain name? A respondent which speculatively registers a disputed domain name, with an open mind to exploiting any future trademark value the domain name might develop, can arguably be said to have registered the domain name in bad faith.” Id. Such is the case here. For over sixteen years, the Disputed Domain Name has never been used for any legitimate purpose. The Disputed Domain Name registration was first created on June 3, 2001 and the Internet Archive Wayback Machine first captured the website associated with esty.com only one-and-a-half months later on July 20, 2001, in which the domain name was associated with a webpage stating:
Welcome to DomainDeluxe.com, your place to find a new home on the Internet. We have an inventory of thousands of top quality domains at extremely reasonable prices. New domains are being added weekly, so please come back to see what we have in stock. Search through our list of domains using the search box above or by clicking on one of the categories to the left. Once you have found the right domain, follow the easy steps to make an offer or buy the domain immediately. Establish your place on the internet today!
From 2001 through 2014, the Disputed Domain Name has never been used for any purpose other than (1) to sell the domain name; and more recently (2) to confuse and deceive Internet users seeking Complainant’s website by diverting those users to competing sites and generating sites and alerts falsely alleging that the users’ computers are infected with malware and ultimately seeking credit card information as part of wide-scale criminal fraud seeking financial information and payment for unwary Internet users seeking Complainant’s website. Section 2 of the Policy, entitled “Your Representations” provides in pertinent part: “[Y]ou will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name infringes or violates someone else’s rights.” (Emphasis added.) This provision of the Policy:
[I]ncludes a representation and warranty by the registrant that it will not now or in the future use the domain name in violation of any laws or regulations. This effectively imposes on the registrant a continuing duty to ensure that the domain name is not used in violation of another’s rights and clearly covers intellectual property rights and the laws protecting them, including copyright and trademark. … If a party uses the domain name in the future so as to call into question the party’s compliance with the party’s representations and warranties, this may be deemed to be retroactive bad faith registration. Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, WIPO Case No. D2009-0786; See also City Views Limited v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE, WIPO Case No. D2009-0643; Phillip Securities Pte Ltd v. Yue Hoong Leong, ADNDRC Decision DE-0900226; and Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, WIPO Case No. D2009-0786; Denver Newspaper Agency v. Jobing.com LLC, FA 1282148 (Nat. Arb. Forum Oct. 16, 2009); and Country Inns & Suites By Carlson, Inc. v. Shuai Nian Qing, La Duzi, WIPO Case No. D2009-1313.
Also, in Milly LLC v. Domain Admin, Mrs. Jello, LLC, WIPO Case No. D2014-0377, the Panel held that “[t]he fact that Respondent may have registered the Disputed Domain Name prior to Complainant’s acquisition of trademark rights does not per se preclude a finding of bad faith under the circumstances of this case for the purposes of paragraph 4(a)(iii). The Panel finds that Respondent registered and used the Disputed Domain Name in bad faith pursuant to Policy, paragraph 4(a)(iii).” In the subject case, the Disputed Domain Name has not been used at any point in time over the last sixteen years since registration for any purpose except to sell the domain name for a profit and is now being used to divert and deceive the public. The evidence demonstrates the bad faith state of mind of the Registrant when the Disputed Domain Name actually first registered in 2001. Respondent, by and through its predecessors in interest, registered the Disputed Name for speculative purposes hoping that someday the domain name could be used to exploit the trademark rights of another.
Moreover, it has been established under the Policy that both a transfer and renewal of a domain name can be held to be a new “registration”, such that the good faith of the registration must be evaluated as of the date of the transfer, renewal, or both. In Adam Milstein, the Panel ordered the transfer of the domain name at issue holding that Respondent’s “renewal of the registration of the domain name he warranted to the registrar that ‘the registration of the domain name will not infringe upon or otherwise violate the rights of any third party;…’ That statement was false, as by that time Complainant’s trademark was registered and he had acquired full rights as a trademark owner and yet Respondent continued to use the entirety of Complainant’s trademark in his domain name without permission.” See also Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, WIPO Case No. D2009-0786. A reverse WHOIS search report indicates that the registrant, registrar, and DNS servers for the Disputed Domain Name have changed multiple times, including well after Complainant had secured registration of its ETSY Mark. Furthermore, the Disputed Domain Name has been renewed numerous times after Complainant established rights to the ETSY Mark.
In Big 5 Corp. v. EyeAim.com / Roy Fang, FA1308001513704 (Forum October 11, 2013), Respondent had registered the big5.com domain name many years before Complainant acquired its trademark, but had begun using the domain name in bad faith after Complainant’s success in the marketplace and at the time of renewal of the domain name. The Panel held that “it is very important to stress that Paragraph 2 of the Policy states that Registrant represents and warrants, when applying to register a domain name, or when requesting to maintain or renew a domain name registration, that the domain name will not infringe upon or otherwise violate the rights of any third party.” Id. citing PAA Laboratories GmbH v. Printing Arts America, WIPO Case No. D2004-0338 and Eastman Sporto Group LLC v. Jim and Kenny, WIPO Case No. D2009-1688. As discussed above, Complainant first asserts that the Disputed Domain Name was registered in bad faith in 2001. Alternatively, the evidence demonstrates that the Disputed Domain Name has been renewed, maintained, and transferred in bad faith sufficient to prove that Respondent has violated Paragraph 2 of the Policy at the time of renewal, continued maintenance, and transfer of the Disputed Domain Name.
For all the reasons identified above, Respondent has used and registered the Disputed Domain Name in bad faith.
B. Respondent
A. Complainant’s Trademark is Identical or Confusingly Similar to the Disputed Domain
Complainant is not the owner of the name “Esty,” and it holds no trademark rights for the common first and last name. However, for the purposes of this UDRP Respondent accepts the validity of Complainant’s trademarks for ETSY, which while different than Esty, could arguably be found to be similar. As noted below Respondent vigorously disputes Complainant’s misleading claims regarding Respondent’s legitimate interest in the Disputed Domain and its 8
proper registration and continuous ownership and use of the Disputed Domain (which long predates Complainant’s existence).
B. Respondent Has Rights And A Legitimate Interest In The Domain Name
The registration of domain names that contain common words are permissible on a first-come, first served basis, and such registration establishes Respondent’s legitimate interest, provided the domain was not registered with a trademark in mind. See Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview”). See also National Gardening Association, Inc. v. CK Ventures, No. 1294457 (Forum Feb. 16, 2010); CNRV, Inc. v. Vertical Axis, Inc., No. 1300901 (Forum May 3, 2010); Landmark Group v. DigiMedia.com, L.P., FA 285459 (Forum Aug. 6, 2004); Baccus Gate Corp. et al v. CKV et al., No. D2008-0321 (WIPO May 20, 2008); Registering, generic word or common first name domain names for re-selling is itself a legitimate business activity, provided there was no intent to target the trademark holder. Sallie Mae, Inc. v. Michele Dinoia, D2004-0648 (WIPO Oct. 18, 2004)(holding that Respondent had a legitimate interest in the domain name <sallie.com> based on its value as a common first name). Moreover, a party has legitimate interest in a domain name by virtue of the common character of a first name, like the Disputed Domain. Id.
It is well-established that, like common words, anyone is entitled to register domain names incorporating short letter combinations to which a Complainant does not have exclusive rights, and Respondents’ legitimate interest is established per se. See Tenenhaus v. Telepathy, Inc., Case No. 94355 (Forum May 17, 2000) (complainant not entitled to “exclusive use of the domain name DAF”); Trans Continental Records, Inc. v. Compana LLC, No. D2002-0105 (WIPO April 30, 2002) (“use of [LFO.com] . . . even for sale, is a legitimate business.”); Moreover, a registrant has legitimate interest in registering a single, two, three or four character — short letter — domain name provided it does not target or otherwise act inappropriately to a known trademark holder. SK Lubricants Americas v. Andrea Sabatini, Webservice Limited, D2015-1566 (WIPO Nov. 23, 2015).
This legitimate interest itself refutes any claim by Complainant. Moreover, it cannot be presumed (nor should it be retroactively conferred) that Complainant registered the Disputed Domain in 2001 with Complainant’s mark in mind as Complainant did not exist until sometime in 2005 at the earliest. (and was certainly not then a well-known consumer brand or trademark). This Old House Ventures, Inc. v. Telepathy, Inc., No. 651060 (Apr. 19, 2006)(TOH.COM) (“Evidence fails to show that the disputed domain name was registered and is being used by Respondent in bad faith”); uwe GMbH v. Telepathy, Inc., D2007-0261 (WIPO May 28,2007)(“Little evidence that Respondent should have been aware of Complainant.”).
Respondent’s ownership of the Disputed Domain as an investment because of its increasing inherent value also satisfies the legitimate interest prong of the Policy. X6D Limited v. Telepathy, Inc., Case No. D2010-1519 (Nov. 16, 2010) (given “the commercial value of descriptive or generic domain names it has become a business model to register and sell such domain names to the highest potential bidder.”); See Also Audiopoint, Inc. v. eCorp, Case No. D2001-0509 (WIPO June 14, 2001)(“speculation in domain names . . . may itself constitute a bona fide activity under paragraph 4(c)(i)”); Incorp Services, Inc. v. RareNames, WebReg, 559911 (Forum Nov. 10, 2005)(“selling domain names consisting of generic or descriptive terms is a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)”). It is settled, that registering generic domain names for investment – including the sale of the domain name – has been found to constitute use of the domain name concerned in connection with a bona fide offering of goods or services provided that the registration of the domain name was not undertaken with intent to profit from or otherwise abuse a complainant’s trademark rights. Id. See also, General Machine Products Company, Inc. v. Prime Domains (a/k/a Telepathy, Inc.), Forum (NAF Mar. 16, 2000) (<craftwork.com>) (finding that Respondent established legitimate interests in selling generic and descriptive domain names).
Indeed, if there is any doubt that Respondent registered the Disputed Domain solely based on its descriptive nature — and not because of Complainant’s trademark – the Panel should consider common examples of similar, valuable, first name or surname domain names that Respondent has registered, include but are not limited to:
Ashira.com, Danielle.com, Rajat.com, Leita.com, Devera.com, Youssef.com, and Juhong.com; Yu.com, Bergstein.com, Frink.com, Fedorov.com, Kasen.com, Roselle.com, and Harson.com
The only reasonable inference to be drawn leads to the conclusion that Respondent does not target trademarks. Such pattern of descriptive domain name registration supports an inference that the descriptive disputed domain was not registered with the intent to target a trademark. On the balance of probabilities, considering the facts of this case and Respondent’s other descriptive domains, Respondent has established rights and a legitimate interest in the Disputed Domain. Game Truck Licensing, LLC v. Chris Hampton, D2012-1964 (WIPO Jan. 12, 2013).
Finally, Respondent’s legitimate interest is bolstered by the fact it uses the Disputed Domain in connection with the provision of related pay-per-click (“PPC”) advertising links appearing on the web site, for which it receives a share of the revenue. Metro Sportswear Limited v. Vertical Axis, No.D2008-0754 (WIPO Aug. 4, 2008); The Landmark Group v. Digimedia L.P., No. 285459 (Forum Aug. 6, 2004); (“this business model is permitted under the Policy.”); Williams, Babbitt & Weisman, Inc. v. Ultimate Search, No. 98813 (Forum Oct. 8, 2001), (“[n]either the current UDRP nor current ICAAN registrar contracts preclude this type of domain name use.”). See also Roderick W. Accetta v. Domain Admin et al., No. 826565 (Forum Jan. 2, 2007) (use of “domain name to operate a PPC search engine is a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)”).
PPC links establish legitimacy where they are selected as a result of the generic or descriptive meaning of terms contained in a domain, as opposed to being selected with a trademark in mind. See Tomsten Inc. v. Registrant 7281 a/k/a Star Access Inc. No.0925448 (Forum April 20, 2007). Such is the case here. The PPC Ads were not selected by Respondent at all. Rather, they were auto-generated by Google’s or parking provider software and relate to topics of general interest. As noted in Mariah Media Inc. v. First Place Internet Inc. No. D2006-1275 (WIPO Dec. 6, 2006), the appearance of links created by a third-party domain monetization service does not constitute bad faith on the part of the domain owner. As the 3-member panel there explained:
In the face of Respondent’s denials and the automated nature of the advertising links, the Panel considers these particular links insufficient to prove Respondent’s intent to mislead Internet users by means of the Domain Name itself.
In short, the Panel is unwilling to attribute bad faith to this search software. And it does not feel warranted in presuming bad faith on the part of a company using such software when the “keywords” it provides are merely dictionary words.
The evidence is that Respondent registered the Disputed Domain because of its value as a short first or surname, and it has used it in connection with the bona fide offering of goods and services in the form of PPC Ads. Any recent changes in links were due to changes in parking providers and not intentional. In any event, to the extent the new parking provider recently served questionable links Respondent took corrective action when it became aware of such issue.
Complainant seems to present some more recent screen (though undated) screen shots as evidence that Respondent is a nefarious actor. While it may be the case that Respondent made changes in its parking provider and settings for the Disputed Domain changed as well, these links and “questionable” pages were immediately remedied. Respondent has also attested that it was not aware of such activity and any such activity was removed when it became aware of such links. The existence of such links was not intentional and were certainly de minimus when compared to Respondent’s good faith use since June 2001. Contrary to the misleading presentation by Complainant, the facts support a finding that for over sixteen (16) years the Disputed Domain has been used in a proper manner with PPC and search advertising unrelated to Complainant in any manner. Accordingly, Respondent has demonstrated that it has rights and a legitimate interest in the Disputed Domain and the Complaint must, therefore, be dismissed.
C. Complainant Has Not Demonstrated That The Domain Name Was Registered and Is Being Used In Bad Faith
Where a respondent provides satisfactory evidence of an unbroken chain of possession, panels typically would not treat merely “formal” changes or updates to registrant contact information as a new registration. WIPO Overview 3.0, 3.9. In response to a similar argument as that presented by Complainant, it was recently clarified that “the consensus view of panelists as to whether or not a transfer of a domain name amounts to a new registration is noted as generally turning upon whether there has been an unbroken chain of underlying ownership by a single entity or within a genuine conglomerate, and it is clear that any change in WhoIs registrant data is not being made to conceal an underlying owner’s identity for the purpose of frustrating assessment of liability in relation to registration or use of the domain name.” BD Hotels, LLC v. POD Hotels Ltd D2016-0997 (WIPO Jul. 26, 2016). Here, Respondent is the continuous owner of the Disputed Domain and has changed Registrars and hosting providers for legitimate business reasons, including but not limited to registrar closure and competition in renewal rate pricing. During this time Respondent has maintained Whois Privacy services to protect its privacy, as it does with all of its domain names. Respondent has also documented transfer of Disputed Domain to registrar accounts all owned and managed by Respondent. Id. Based on the foregoing, it should be clear that Respondent has continuously owned the
Disputed Domain since its registration in June 2001 and the claim of a “new registration” should be denied.
Respondent registered the Disputed Domain simply because it incorporated the name “Esty” that became available when its prior owner allowed the Disputed Domain’s registration to expire. This is not a case of a cybersquatter looking for trademarks upon which to prey. To the contrary, Respondent purchases descriptive term and generic word domain names that are available or offered for sale by their prior owner or are newly available for registration. Id. Registration of domain names in this manner not only fails to support a finding of bad faith registration, it negates such a finding. Accordingly, the Panel should find that facts support Respondent’s good faith purchase and negates a claim of bad faith registration.
The overwhelming approach of UDRP panels since Octogen has been to reject alternative approaches such as that espoused in Octogen and to affirm paragraph 4(a)(iii) of the Policy requiring bad faith at the time of registration or acquisition of the disputed domain name. See, e.g., Coolside Limited v. Get On The Web Limited, WIPO Case No. D2016-0335; Centroamerica Comercial, Sociedad Anonima de Capital Variable (CAMCO) v. Michael Mann, WIPO Case No. D2016-1709; New Forests Asset Management Pty Limited v. Kerry Schorsch, Global Advertizing, LLC, WIPO Case No. D2015-1415; Dreamlines GmbH v. Darshinee Naidu / World News Inc, WIPO Case No. D2016-0111; Lonza AG v. Onyx Networks, Inc., WIPO Case No. D2015-1460; Movius Interactive Corporation v. Dynamo.com, WIPO Case No. D2015-1717 and Intellect Design Arena Limited v. Moniker Privacy Services / David Wieland, iEstates.com, LLC, WIPO Case No. D2016-1349.
In its attempt to wrest the Disputed Domain from its rightful owner, Complainant relies on the discredited “Mummygold/Octogen Decisions” to claim that it is entitled to the Disputed Domain. Complainant seeks to use “Octogen” to overcome Respondent’s obvious, indeed irrefutable, good faith registration of the Disputed Domain and over decade and a half of good faith use of the Disputed Domain.
It is settled that the plain language of paragraph 4(a) (iii) of the Policy requires a conclusion that the domain name has been “registered” and “used” in bad faith. Mile, Inc. v. Michael Berg, D2010-2011 (WIPO Feb. 7, 2011) (joining with other panel decisions, in unanimously rejecting the “Octogen Decisions” and citing Validas, LLC v. SMVS Consultancy Private Limited, D2009-1413; and Eastman Sporto Group LLC v. Jim and Kenny, D2009-1688). It is clear that the “Mummygold/Octogen” line of reasoning runs counter to a decade of UDRP decision and predictable guidance that has been provided to domain name registrants. The Panel in Mile, Inc., put it best:
[i]f a consensus developed that a line of prior decisions had reached the wrong result, and if panels generally adopted a new approach on an issue, this Panel also would be open to considering whether a new approach was appropriate, both substantively under the Policy and in order to promote consistency. However, the Mummygold/Octogen reasoning has not prompted any such consensus; to the contrary, a number of decisions have expressly considered and rejected it. See, e.g., Validas, supra; Eastman Sporto, supra; Torus Insurance Holdings Limited v. Torus Computer Resources, WIPO Case No. D2009-1455; Camon S.p.A. v. Intelli-Pet, LLC, WIPO Case No. D2009-1716; Tata Communications International Pte Ltd (f/k/a VSNL International Pte Ltd) v. Portmedia Inc./TRUEROOTS.COM c/o Nameview Inc. Whois, WIPO Case No. D2010-0217 (majority opinion); Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470; A. Nattermann & Cie. GmbH and Sanofi-aventis v. Watson Pharmaceuticals, Inc., WIPO Case No. D2010-0800 (majority opinion). The fact that so many panelists have declined to follow the Mummygold/Octogen approach argues against an emerging consensus to overturn a long-established doctrine and provides yet another reason for this Panel to decline to adopt the Mummygold/Octogen reasoning.
It is undisputed that Respondent registered the Disputed Domain in long use prior to the existence of Complainant and its purported mark. Respondent has presented more than ample evidence of the global third-party use of the name “Esty” and has shown its legitimate interest in registering the Disputed Domain.
While there are a handful of UDRP cases, which considered alternative approaches based on the warranty in paragraph 2 of the UDRP and the wording of paragraph 4(b), amongst other things, “the overwhelming approach of UDRP panels since then has been to affirm the literal meaning of paragraph 4(a)(iii) of the Policy and to require bad faith at the time of registration or acquisition of the disputed domain name.” Group One Holdings Pte Ltd v. Steven Hafto D2017-0183 (WIPO Mar. 28, 2017).
“[T]he Policy was intended to benefit trade mark owners by providing them with a reasonably quick and cost-effective alternative means of enforcing their rights in a very narrow category of cases. The Policy was in general never intended to enable owners of later trade mark rights to acquire domain names registered prior to those rights coming into existence.” IUNO Advokatpartnerselskab v. Angela Croom D2011-0806 (WIPO Jul. 4, 2011).
This is not a case of a cybersquatter seeking to “profit” off of Complainant’s trademark, and Respondent is not an “abusing” Complainant’s trademark. The facts belie Complainant’s claims as the archives do not show “targeting” so Complainant’s claim is even more spurious. Contrary to Complaint’s colored “opinion” of domain investing, as the IUNO panel held “registering a domain name which is identical to another’s trade mark is not of itself abusive and particularly if the registrant is has no reason to be aware of the trade mark’s existence, registering a domain name in respect of which one has no rights or legitimate interests is not of itself abusive. Registering a domain name for no purpose other than to make money out of it is not of itself abusive.” Id.
Accordingly, for all the above reasons, Complainant has failed to meet its burden of proving bad faith registration and use and, the Complaint must, therefore, be dismissed.
C. Additional Submissions
Complainant’s Additional Submission Alleges:
The subject domain name is confusingly similar to Complainant’s trademark in which Complainant has rights. Respondent essentially admits that the Disputed Domain is similar to Complainant’s registered trademarks for ETSY, and as a result, this element is not at issue.
Yet Respondent further argues that it selected the ESTY name in part because it is a popular first and last name. Respondent’s alleged evidence supporting this hindsight justification is flawed. Initially, evidence from November 2017 showing that Esty is an uncommon first and last name is not relevant to the alleged basis for Respondent’s selection in 2001. Further, the Declaration of Michael Goetz, purportedly made on personal knowledge, should be disregarded in its entirety because it lacks foundation. He provides no background to provide a foundation for how he could possibly have personal knowledge of events in 2001, or subsequently.
In addition, even if Respondent’s alleged evidence from 2017 were somehow relevant to its intent in 2001, Respondent did not conduct the proper search. When ESTY is entered into a Google® Internet search, no first or last names pop up. Instead, the entire first page of search results provide links directly to or related to Complainant’s services. Further, Respondent’s own evidence demonstrates that ESTY is not a common surname. Instead, the term ESTY is a common misspelling of the ETSY trademark.
Finally, Respondent’s own use of the Disputed Domain confirms that it is confusingly similar to the ETSY trademark. The webpages associated with the Disputed Domain have displayed links to third-party websites that are highly related to Complainant and its services. In some cases, the webpages provide pay-per-click links directly to websites of Complainant’s competitors. In other cases, Internet users are immediately forwarded from the Disputed Domain to Complainant’s competitors where it can be presumed that Respondent collects monies as part of an affiliate program. These multiple uses of the Disputed Domain by Respondent that are clearly designed and intended to trade on the goodwill of the ETSY trademark rely on the confusing similarity between the Disputed Domain and the ETSY trademark. Without confusing similarity, there would be no need to display links and forward Internet users to Complainant’s competitors.
Respondent spends much effort attempting to argue that there are no links to Complainant or its business, and that the “vast majority” of the use of the Disputed Domain “is not improper.” This argument actually creates an admission by Respondent that at least some of its use of the Disputed Domain is improper. This admission alone serves as sufficient evidence of bad faith.
Respondent further attempts to dispute the validity of Complainant’s evidence of the bad faith and fraudulent use of the Disputed Domain. Initially, Respondent complains that the “improper,” “questionable” and “nefarious” screenshots are undated. Yet Respondent’s own exhibit identifies multiple screenshots from June 3, 2017 and July 20, 2017 that confirm the improper use of the Disputed Domain to divert internet users to a commercial landing website that displays links to third party websites that compete and overlap directly with Complainant’s services. The screenshots provided in Complainant’s exhibits were captured between July and October 2017. Furthermore, upon the request of the Panel, Complainant can provide to the Panel multiple videos clearly capturing Internet users typing the Disputed Domain into the web browser’s address bar and being presented with, and diverted to, the webpages identified in Complainant’s exhibits.
Respondent’s bad faith use of the Disputed Domain is further documented in the online publication “Domain Name Wire” in the October 20, 2017 article titled, “Oh, Zero Click, When Will You Be Cleaned Up?” This article discusses the author’s experience of recently visiting the Disputed Domain and having been “bounced between a few URLs and ended up at arp.bettersearchtools.com” at which the site is “tricking users into clicking ‘I’m human’ to continue to the site they were seeking, but they’ll end up installing a Chrome extension.” Id.
Respondent’s excuse for its bad faith use of the Disputed Domain is that it was not aware of such improper, questionable and nefarious uses, and that it remedied these improper uses as soon as it learned of them. Yet in the same breath, Respondent argues that its improper behavior was “de minimus” (recte). Again, whether de minimis or not, Respondent’s use of the Disputed Domain is in bad faith. And, if Respondent had the ability to remedy improper uses upon receiving notice, it certainly would have and should have had the ability to control the content to avoid bad faith use in the first place.
Respondent’s effort to blame Google® or its parking services for its bad faith similarly fails. Even if Respondent did not have control over the advertisements that appear on the Disputed Domain, this argument is without merit because Respondent is ultimately responsible for what appears on its website. See St. Farm Mutual Auto. Ins. Co. v. Pompilio, FA 1092410 (Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.”); see also Hoffmann-La Roche Inc. v. Truskowski, FA 808287 (Forum Nov. 14, 2006) (“[C]ontrary to Respondent’s bald averment, the operation of a ‘parking page’ in connection with the disputed domain name does not constitute a bona fide offering of goods or services as contemplated by [UDRP] Policy ¶ 4(c)[i] or a legitimate noncommercial or fair use as contemplated by [UDRP] Policy ¶ 4(c)[iii].”).
Now that Complainant has learned Respondent’s true identity as party of this proceeding, it has discovered numerous instances in which prior panels have transferred Disputed domains from Respondent. Several of these decisions also found bad faith on behalf of Respondent. For example, Respondent was found to be in bad faith in at least the following proceedings: Société Nationale des Chemins de Fer Français, SNCF v. Moniker Privacy Services / 3597435 Domain Administrator Port Media Sales, Case No. D2011-0527 (WIPO May 27, 2011); Montres Breguet S.A. v. Domain Administrator / PortMedia, FA 1111001417906 (Forum Feb. 7, 2012); and The Weather Underground, Inc. v. Domain Administrator / PortMedia Case No. FA1203001433949 (Forum May 9, 2012).
In addition, Respondent has established a pattern of transferring domain names after the initiation of UDRP proceedings in hopes of avoiding the piling-up of bad faith findings against it. See for example, Officine Panerai A.G. Corp v. PortMedia Holdings Ltd., Portmedia Domains, Case No. D2013-2206 (WIPO Feb. 17, 2014); Anadarko Petroleum Corporation v. Moniker Privacy Services/ Portmedia, Inc.; Case No. D2013-0687 (WIPO Sep. 5, 2013); Capital One Financial Corp. v. PORTMEDIA DOMAINS / PORTMEDIA HOLDINGS LTD Case No. FA1410001586092 (Forum Nov. 20, 2014) (the parties agreed to transfer the domain name capitaloneplatinum.com to Complainant who had rights to the CAPITAL ONE trademark, but only after Complainant initiated the UDRP proceeding). In fact, the Panel in The Weather Underground, Inc. v. Domain Administrator / PortMedia Case No. FA1203001433949 (Nat. Arb. Forum May 9, 2012), in its finding that Respondent had acted in bad faith, expressly acknowledged and thwarted Respondent’s strategy of avoiding adverse decisions stating that “the “consent-to-transfer approach is but one way for cybersquatters to avoid adverse findings against them” and then transferring the subject domain names to Complainant.
These multiple transfers and findings of Respondent’s bad faith registrations provide a clear picture of Respondent’s continuous malfeasance and wrongdoing. From this, there is no doubt that Respondent is in the business of registering domain names, including the subject Disputed Domain, with the intent of trading on the goodwill of other’s trademarks for commercial gain. Respondent’s previous bad faith use and registration of Disputed domain names is, under the circumstances of this case, evidence of registration, renewal, maintenance and use in bad faith under Policy ¶ 4(b)(ii). See Sony Kabushiki Kaisha v. Anderson, FA 198809 (Forum Nov. 20, 2003) (finding a pattern of registering domain names in bad faith pursuant to Policy ¶ 4(b)(ii) when Respondent previously registered domain names incorporating well-known third-party trademarks); see also Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented Complainant from reflecting its mark in a domain name and Respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting).
Finally, Respondent has renewed the Disputed Domain several times after Complainant had established strong rights to the ETSY trademark. Each renewal required Respondent to reaffirm its obligation to be bound by the ICANN Registrar/Registered Name Holder Agreement which requires, “to the best of the Registered Name Holder’s knowledge and belief, neither the registration of the Registered Name nor the manner in which it is directly or indirectly used infringes the legal rights of any third party.” Furthermore, upon information and belief, Portmedia Holdings, Ltd. did not exist at the time of the original registration of the Disputed Domain. There are several UDRP cases identifying various “Portmedia” companies as Respondent; however, there are no UDRP cases identifying involving Respondent until 2014. This strongly suggests that the Disputed Domain was only recently transferred to Portmedia Holdings, Ltd. and well after Complainant had established its rights to the ETSY trademark. For the reasons and authorities identified in the Amended Complaint, the transfer of the Disputed Domain subsequent to the establishment of Complainant’s trademark rights, Respondent has used and registered the Disputed Domain in bad faith.
For all these reasons, Complainant requests transfer of the <esty.com> domain name to Complainant.
FINDINGS
The Disputed Domain Name <esty.com> was registered on June 29, 2001, nearly four (4) years before Complainant’s first claimed use of its ETSY mark in commerce, on June 1, 2005, and more than five (5) years before Complainant’s earliest registration of its ETSY mark.
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 second-level of the four-letter Disputed Domain Name <esty.com> is comprised of the same letters as Complainant’s four-letter ETSY mark, albeit with the letters “T” and “S” interposed, and rendering them similar. Respondent concedes as much in its Response, acknowledging that that the Disputed Domain Name <esty.com> is “arguably” confusingly similar to Complainant’s registered ETSY mark.
Whether this similarity between the domain name and the trademark rises to the level of “confusing similarity” within the meaning and purview of Policy ¶ 4(c)[i] is debatable, but need not be decided by this Panel to resolve the present administrative proceeding, however, in view of Complainant’s utter and complete failure to satisfy the “bad faith registration and use” element of Policy, ¶ 4(c)[iii], as will be explained below.
The Panel therefore makes no finding with respect to the first element, Policy ¶ 4(c)[i], because Complainant has not satisfied the second and third elements, Policy ¶ 4(c)[ii] and [iii].
Rights or Legitimate Interests
Respondent is a domain name wholesaler maintaining a substantial inventory of domain names. The Panel finds Respondent’s evidence of its intent and purpose in registering the Disputed Domain Name, i.e., that it is a familiar and commonly-used short form, like “Esty”, of the given name “Esther”, or of “Esty” as a surname, and Complainant’s evidence of the various nefarious uses to which the Disputed Domain Name has allegedly been put somewhat unpersuasive.
Even if the Disputed Domain Name was just made up by Respondent for no reason at all, it is clear to this Panel that the various renewals of the domain name as it neared expiration, or changes in the registrar over time, or both, provide no grounds or evidence whatsoever that could possibly support a finding that Respondent targeted Complainant’s much later-acquired trademark, or that Respondent sought to trade off Complainant’s much later-arising reputation or goodwill. The existence of de minimus links directed via the Disputed Domain Name to Complainant’s website or those of its competitors, does not require a different result.
The Panel finds on these facts that Respondent is providing a bona fide offering of goods and services, and holds that Respondent therefore has rights or legitimate interests in and to the Disputed Domain Name.
Complainant has not satisfied the second element of the Policy, ¶ 4(c)[ii].
Registration and Use in Bad Faith
Complainant’s case fails utterly on bad faith. It is well-settled that renewals and changes in registrar occurring after a complainant acquires rights in a mark do not convert a previously existing good faith registration into a bad faith registration, and Complainant’s arguments find no support within any exception of the now largely-discredited Mummy/Octogen line of decisions. See, WIPO UDRP Overview 3.0 at par. 3.2.1.
Complainant has not satisfied the third element of the Policy, ¶ 4(c)[iii].
DECISION
Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <esty.com> domain name REMAIN WITH Respondent.
David L. Kreider, Esq., as the Chair, along with The Honorable Charles Kuechenmeister (Ret.), and The Honorable Neil Anthony Brown QC, Panelists.
Dated: November 27, 2017
