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Feel the pain : Reverse #Domain Name Hijacking in HouseOfPagne.com UDRP

Catched.com

The Registrant of HouseOfPagne.com was hit with a UDRP by a joint venture partner, who liked her idea but withdrew from the partnership.

Structure Cellars LLL filed a UDRP to reclaim the domain, an asset that the Respondent had secured 4 months before even sharing her idea with the Complainant.

The Respondent asserts that she registered the Domain Name “nearly four months before I co-developed business arrangement with Brian Grasso/Structure Cellars LLC” and before the Complainant acquired any trademark rights. The Respondent argues that she legitimately registered the Domain Name in anticipation of a business arrangement with the Complainant, from which the Complainant then withdrew.

W. Scott Blackmer, sole panelist at the WIPO, ordered the domain HouseOfPagne.com to remain with the Respondent. At the same time, he found that the Complainant engaged in Reverse Domain Name Hijacking:

The Panel finds that the Complainant brought the Complaint in bad faith, within the meaning of Rule 15(e), in an attempt at Reverse Domain Name Hijacking.

The Complainant may have a business dispute with the Respondent, but the Complainant should not have pursued a remedy designed only to protect trademark rights when it was not prepared to prove that it has such rights and that the Respondent registered and used the Domain Name in contemplation of the Complainant’s trademark rights. This is so fundamental to the Policy that it must be considered irresponsible to ignore.

Full details on the decision follow:

WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Structure Cellars, LLC v. Carolyn Holt
Case No. D2020-0948

1. The Parties

The Complainant is Structure Cellars, LLC, United States of America (“United States”), internally represented.

The Respondent is Carolyn Holt, United States, self-represented.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2020. On April 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 21, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 24, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 14, 2020. The Response was filed with the Center on May 12, 2020.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on May 14, 2020. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a Washington limited liability company, established in 2011, that operates the Structure Cellars Winery, wine club, and tasting room in Seattle, Washington, United States. Brian Grasso, who represents the Complainant in this proceeding, is listed as a governor of the company.

The Respondent, an individual residing in the Seattle area, collaborated with the Complainant in 2019 in developing a business idea for a hip-hop themed Champagne bar. According to the Respondent, “this was a business I originally created and then asked Brian to partner with me.” The Complainant refers to the Respondent only as a “former work for hire.” Neither party is represented by legal counsel in this proceeding, and neither party has submitted any supporting documents defining their business relationship or the arrangements for obtaining and using the Domain Name.

It is undisputed that the Respondent registered the Domain Name in her own name on May 25, 2019, with no organization shown in the registration record. It appears that Complainant opened a Champagne bar called “House of Pagne” in September 2019, at a location close to its facilities in Seattle. The Panel notes that the online database of the Washington Department of Revenue shows that the Complainant registered “House of Pagne” as a trade name on October 16, 2019. Social media references suggest that the Respondent worked at the establishment in late 2019 in some capacity. A screenshot of the website associated with the Domain Name on January 13, 2020, available from the Internet Archive’s Wayback Machine, advertised the House of Pagne Champagne bar. The Respondent indicates that the Complainant withdrew from the parties’ contemplated business arrangement at an unspecified time.

At the time of this Decision, the Domain Name resolves to a website (the “Respondent’s website”) advertising the Respondent’s Champagne tasting events and purchasing promotions, as do related Facebook and Instagram social media accounts. The Complainant operates a website at “www.structurewines.com”, which does not mention the House of Pagne Champagne bar or display a related mark.

The Complaint is based on two trademarks “used in the business”, citing pending applications for United States trademark registrations of the standard character marks HOUSE OF PAGNE (serial number 88640752, filed October 3, 2019, published for opposition April 14, 2020) and THE HOUSE OF PAGNE – HIP HOP BUBBLE BAR (serial number 88850476, filed March 27, 2020).

The application for HOUSE OF PAGNE claims first use in commerce on August 1, 2019, and the application for THE HOUSE OF PAGNE – HIP HOP BUBBLE BAR was filed on the basis of an intent to use the mark in the future.

5. Parties’ Contentions

A. Complainant

The Complainant cites its “legal trademarks” and states that the Domain Name “appropriates” them.

The Complainant contends that the “Respondent is a former work for hire employee of the business who has retained control of the business domain. She operates no business that would have used for the trademark and is parking the domain to prevent our legal use.” The Complainant cites this as evidence of bad faith, as the Respondent has “no valid used [sic]” and is “disrupting our business”.

B. Respondent

The Respondent asserts that she registered the Domain Name “nearly four months before I co-developed business arrangement with Brian Grasso/Structure Cellars LLC” and before the Complainant acquired any trademark rights. The Respondent argues that she legitimately registered the Domain Name in anticipation of a business arrangement with the Complainant, from which the Complainant then withdrew.

The Respondent concludes, “I am not using the domain name in connection with any effort to divert business or traffic from Complainant or to disrupt Complainant’s own business plans, but solely to further my own business interests.”

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

A. Identical or Confusingly Similar

The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

The Complaint is deficient in establishing that the Complainant has relevant trademark rights. It has recently applied for United States trademark registrations, and those applications remain pending. One of the applications was filed on the basis of an intent to use the mark in the future, with no declaration of use yet filed with the United States Patent and Trademark Office (“USPTO”). The other application was published for opposition a few weeks ago after preliminary examination, and the USPTO database shows that the deadline for filing opposition has been extended at the request of a potential opposer (not the Respondent in this proceeding).

A UDRP proceeding may be grounded on an unregistered, common law trademark with sufficient evidence that the mark has acquired distinctiveness (see WIPO Overview 3.0, section 1.3), but there is no such record here. It appears that the Complainant’s Champagne bar opened in September 2019 (one of the trademark applications claims first use of the mark in commerce in August 2019), and a corresponding trade name was registered in October 2019. This is quite recent, and the record includes no evidence of advertising, sales, publicity, or media recognition since then. The Panel discovered two archived website screenshots and found no evidence that the “House of Pagne” is currently advertised online; it is not even mentioned on the Complainant’s website. Thus, there is insufficient basis for finding common law protection for the asserted marks.

The Panel concludes, therefore, that the Complaint fails on the first element.

B. Rights or Legitimate Interests

Given the Panel’s conclusion on the first element of the Complaint, it is not necessary to address the second element.

C. Registered and Used in Bad Faith

It is also not necessary to reach a conclusion on the third element of the Complaint, given the finding that the Complainant has no relevant trademark rights. It is worth noting, however, that the Complainant did not launch a business until at least four months after the Respondent registered the Domain Name, so it would have required evidence supporting an inference of premeditated targeting of an anticipated trademark. See WIPO Overview 3.0, section 3.8.2. That would have required adequately documenting the relationship between the parties and the evolution of the Complainant’s business plans, which the Complainant failed to detail or support on this record.

D. Reverse Domain Name Hijacking

Paragraph 15(e) of the UDRP Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking (‘RDNH’) or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. The Respondent has requested such a finding here.

Reverse Domain Name Hijacking is defined under the UDRP Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”. Mere lack of success of a complaint is not sufficient to find Reverse Domain Name Hijacking. See WIPO Overview 3.0, section 4.16. A finding of RDNH is warranted, for example, when a panel finds that the complainant (especially one represented by counsel) should have recognized that it could not succeed on one of the three elements of the complaint under any fair interpretation of the available facts or brings a complaint based “on only the barest of allegations without any supporting evidence” (id.).

Here, the Complaint is patently deficient. The Complainant has trademark applications, not registrations, and it would need proof to establish common law rights. The Complaint does not address the obvious problem that the Complainant’s business was launched months after the Respondent registered the Domain Name. It should have been clear that if would be necessary to establish the relationship between the parties, but no evidence was submitted on this point. The Complainant is not represented by legal counsel, but these are common-sense rather than highly technical issues, and the Center’s forms, Rules, and Overview provide accessible guidance on these points. The Respondent, who is also not represented by counsel, certainly grasped their implication when completing the Center’s form Response.

The Panel finds that the Complainant brought the Complaint in bad faith, within the meaning of Rule 15(e), in an attempt at Reverse Domain Name Hijacking.

The Complainant may have a business dispute with the Respondent, but the Complainant should not have pursued a remedy designed only to protect trademark rights when it was not prepared to prove that it has such rights and that the Respondent registered and used the Domain Name in contemplation of the Complainant’s trademark rights. This is so fundamental to the Policy that it must be considered irresponsible to ignore.

7. Decision

For the foregoing reasons, the Complaint is denied.

W. Scott Blackmer
Sole Panelist
Date: May 15, 2020


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