A company with a registered mark in stylized form for I AM lost a UDRP it filed against HugeDomains; the domain ForeverIam.com was being challenged.
HugeDomains pointed out that “forever I am” is a prelude to various English phrases, such as the romantic reference “forever I am yours.”
While lacking syntax, that phrase is still valid and the three WIPO panelists agreed. It’s interesting to point out that the domain was in the Complainant’s possession between 2010 and 2017 when the credit card on record at the registrar failed to renew it.
Final decision: Deny transfer of ForeverIam.com to the Complainant.
The domain transfer was denied.
Forever I Am, Inc v. Domain Admin, HugeDomains.com
Case No. D2021-15501. The Parties
Complainant is Forever I Am, Inc., United States of America (“United States”), represented by Spiegel & Utrera, P.C., United States.
Respondent is Domain Admin, HugeDomains.com, United States.
2. The Domain Name and Registrar
The disputed domain name <foreveriam.com> (the “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 May 18, 2021. That same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 19, 2021, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the Domain Name.
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 Respondent of the Complaint, and the proceedings commenced on May 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 10, 2021. The Response was filed with the Center June 10, 2021.
Complainant made a request to file a Supplemental Filing on July 1, 2021, accompanied by the filing. Respondent filed Objections to Complainant’s Supplemental Filing on July 2, 2021. On July 17, 2021, the Center issued an administrative order on the Panel’s behalf, among other things, inviting Respondent to respond to Complainant’s Supplemental Filing. Respondent timely filed a Supplemental Filing on July 22, 2021.
The Center appointed Harrie R. Samaras, Anne Gundelfinger, and David E. Sorkin as panelists in this matter on July 12, 2021. The Panel finds that it was properly constituted. Each member of 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
Complainant Forever I Am, Inc., is in the business of selling anti-aging skin creams, lotions, and related beauty/cosmetic products. It owns United States Trademark Registration No. 5,404,222 (registered February 20, 2018), a combination word and design mark for I AM (the “I AM Mark” or the “Mark).
Complainant originally registered the Domain Name on October 26, 2010, and successfully renewed it for the next few years. The Domain Name was used in conjunction with an e-commerce site from which Complainant sold skin care products. In 2017, Complainant apparently intended to continue paying to maintain its registration, which should have automatically renewed and charged the payment method on file at the end of the term. Due to an unknown error, however, the Registrar was unable to charge Complainant’s payment account on file and did not renew the Domain Name registration in October of 2020. Complainant’s registration for the Domain Name was terminated. Complainant became aware of the termination when an Internet search revealed that the Domain Name was for sale on Respondent’s website HugeDomains.com, and on GoDaddy.com.
On November 30, 2020, the Registrar notified Respondent that he won the Domain Name by way of an auction for recently expired domain names. The Domain Name has since resolved to an error page informing the user that “This site can’t be reached.”
5. Parties’ Contentions
A. Complainant
Complainant makes the following allegations and arguments in support of its position.
The I AM Mark is derived from Complainant’s trade name and its former domain name – the Domain Name. The Domain Name incorporates the Mark. Consumers, who used to purchase Complainant’s goods through a website that was used in conjunction with the Domain Name, would be confused as to the source of goods that Respondent may sell using the Domain Name.
Complainant has not licensed or otherwise permitted Respondent to use the I AM Mark in any manner, including as a domain name. Respondent has not used, or demonstrated preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering for goods and services. When the Domain Name is entered into a web browser, it does not resolve to a functioning website, instead it takes the Internet user to a site stating: “This site can’t be reached”. Respondent is in the business of buying expired domain names and selling them back to their former registrants. As set forth on Respondent’s website’s “About Us” section, it maintains a portfolio of over 4 million domain names for the purpose of selling them. As a business, Respondent has never used or been known by the Domain Name. Respondent has registered, is using, and is selling the Domain Name with the intent of profiting from the goodwill of Complainant’s I AM Mark and business. Furthermore, Respondent is not making a legitimate noncommercial or fair use of the Domain Name insofar as the website is not in use. Respondent is demanding payment of an exorbitant fee of USD 11,595.00 to transfer the Domain Name back to Complainant. That consideration exceeds Respondent’s out-of-pocket costs directly related to the Domain Name.
Complainant registered the Domain Name in October of 2010 with the Registrar, and renewed it every year thereafter. In 2017, Complainant paid for two years of registration with domain name protection, which would automatically renew and charge the payment method on file at the end of the term. Due to an unknown error, the Registrar was unable to charge Complainant’s payment method on file and did not renew the Domain Name registration or charge Complainant’s payment method on file in October of 2020. The Registrar contacted Complainant after the 2020 payment did not go through and subsequently terminated the Domain Name’s registration. Complainant learned of the termination when an Internet search revealed the Domain Name was for sale on HugeDoamins.com and GoDaddy.com. When Complainant contacted the Registrar to renew the registration, it learned that Respondent had purchased the Domain Name.
Respondent and the Registrar have refused to provide Complainant with Respondent’s direct contact information. Complainant paid the Registrar’s fee of USD 119,99 for “Domain Broker Services,” because it could not contact Respondent directly. There have been no direct communications between Complainant and Respondent, all communications have been through the Registrar’s domain broker service.
Respondent registered the Domain Name in bad-faith, with a primary purpose to sell it to Complainant for a price in gross excess of out-of-pocket expenses related to the name. Respondent is demanding payment of USD 11,595.00 to transfer the Domain Name back to Complainant.
Respondent has registered, is using, and is selling the Domain Name with the intent of profiting from the goodwill of the Mark and Complainant’s business. Respondent has done nothing but offer it for sale.
Respondent has a demonstrated pattern of bad-faith registration through its admitted ownership of over 4 million domain names, which it offers for sale.
B. Respondent
Respondent makes the following allegations and arguments in support of its position.
Complainant does not have a trademark for “forever I am”, rather it has a design mark for the term “I Am”. A design mark is a logo mark, which grants protections to the registrant for the specific graphics of the design. It does not grant Complainant an exclusive worldwide right to the term “I Am” and it is specifically for the goods and services listed in the registration document: “anti-aging skin creams and/or lotions”. The registration does not prevent others from using the term “I Am” in a generic fashion or for the term’s generic and dictionary-defined meaning. Complainant has not expressly stated that it has a common law mark, rather it claims that because it has a business certificate from the State of Florida for “Forever I Am, Inc.” that they have trademark rights in the Domain Name. Complainant has not made the required showing for common law rights under the Policy.
“Forever I am” is a commonly used phrase or partial phrase in the English language used by many entities. Complainant did not coin it. It is composed of three dictionary-defined terms that when put together have a common meaning. The term is often followed up by additional dictionary terms to make a complete sentence, a very common romantic phrase being: “Forever I am yours”. A search on Google.com for the phrase “Forever I Am” does not bring up a single mention of Complainant or Complainant’s business, only entities unrelated to Complainant. Further, from the time Respondent registered the Domain Name to the present there is no information that would lead anyone to know “Forever I Am” is a mark owned by Complainant, for example, owning social media handless for “Forever I Am”.
Respondent is a reseller of generic and descriptive Internet domain names and is in the business of buying and selling domain names that fit a wide variety of topics. Respondent owns a large portfolio of domain names mostly consisting of two or three dictionary-defined terms put together to create a generic term. UDRP panels have found that selling generic domain names is a bona fide offering of goods and services under the Policy. Under UDRP case law, the Rules and the Policy, Respondent is not required to have an active website, and Respondent is not required to operate under or be known by “forever I am”. Respondent owns 1,051 domain names that begin with the word “forever” and they are unrelated to Complainant or its trademark rights in the I Am Mark (e.g., <foreverin.com>, <foreverinpeace.com>, and <foreverinlove.com>). Respondent also owns 492 domain names ending with “I am”. They have nothing to do with Complainant (e.g., <iamwhyiam.com>, <boyiam.com>, <womaniam.com>, and <howiam.com>). Respondent also owns a Domain Name that is the contraction of the Domain Name <foreveriam.com>.
Complainant’s basis for commencing this proceeding is because it is upset that Respondent owns a domain name that Complainant owned in the past. Complainant does not make any argument required and mandated under the Rules. There is no requirement that a registered domain name must be used to offer goods or services bearing the mark that coincides with that domain name, especially when the domain name is generic in nature.
That Complainant used to own the Domain Name is not evidence that Respondent registered and is using it in bad faith. Respondent had no information regarding the previous registration. Respondent purchased the Domain Name because of the generic meaning of the term “Forever I Am”. Also, because Respondent has a legitimate interest in the Domain Name it neither registered nor used the Domain Name in bad faith.
Complainant infers that Complainant directly corresponded with Respondent before this proceeding began but that is not the case. Respondent is using GoDaddy.com as the Registrar for the Domain Name and Complainant attempted to purchase the Domain Name using GoDaddy.com’s Domain Broker Services. GoDaddy.com did not notify Respondent of Complainant’s interest in the Domain Name, nor did Respondent ever hear from Complainant. It appears GoDaddy told Respondent the sales price that HugeDomains was asking (on its public sales page) to sell the Domain Name. Respondent never knew Complainant submitted an offer to buy the Domain Name for USD 5,000, which GoDaddy rejected, until seeing the Complaint. Complainant’s only real grievance is that it was unable to purchase the Domain Name for that amount. When Complainant perceived negotiations failed, it began this proceeding to recover the Domain Name, which misuses the Policy.
Complainant states that they did not know who owned the Domain Name because GoDaddy.com would not tell them, however, Complainant filed its Complaint specifically naming Respondent, HugeDomains.com. Further, Complainant’s Annex 1 shows that Complainant was fully aware that HugeDomains.com owned the Domain Name.
Complainant cannot claim Respondent registered the Domain Name with the intent to sell it back to Complainant. Respondent has never communicated with Complainant before this proceeding and never offered to sell the Domain Name to it. Respondent never heard of Complainant until this proceeding and purchased the Domain Name for its generic meaning of the words combined and the generic marketability of the phrase. At the time of registration and at the time of filing this Response there is no way for Respondent to know that Complainant has alleged common law trademark rights in the term “forever I am” based upon a design mark for the generic term “I Am”. Complainant does not have a registered trademark for “forever I am” and Respondent has never heard of its business name. There is no searchable evidence on the Internet that Complainant uses “forever I am” in a manner that has given Complainant national or worldwide public notoriety. Complainant has not provided any evidence regarding the use of “Forever I Am” such as marketing materials or income or sales statements. Had Respondent searched the database of the United States Patent & Trademark Office when it bought the Domain Name, it would not have found a successful match because Complainant does not have a registration for “Forever I Am” – no one does. It takes some effort to locate the Mark without knowing the serial number or registration number.
Complainant filed its Complaint in bad faith with the intent to take the Domain Name from Respondent.
Complainant does not have trademark rights in “Forever I Am” and knows this as Complainant would have provided the Panel with evidence of its rights if they existed. Represented by legal counsel here, Complainant knew or should have known it was unable to prove Respondent lacks rights in the Domain Name and the other required elements under the Policy. Complainant filed a frivolous Complaint failing to: provide evidence of a registered mark for “Forever I Am”; provide any evidence of its use of “Forever I Am”; show Respondent purchased the Domain Name in bad faith; show Respondent knew of Complainant when it registered the Domain Name; and show Respondent used the Domain Name in bad faith.
This case was filed to deny Respondent its legitimate rights in the Domain Name after Complainant attempted to buy the Domain Name. Failure to find reverse domain name hijacking will encourage Complainant to further abuse the Policy to take domain names from legitimate registrants and allow Complainant to create an unearned worldwide exclusivity in the term “Forever I Am”.
C. Complainant’s Supplemental Filing
Marks consisting of a design element combined with words and/or letters protect the design and word/letter portion of the mark and the mark must be considered in its entirety. If a mark comprises both wording and a design, greater weight is often given to the wording, because it is the wording that purchasers would use to refer to or request the goods or services.
Respondent alleges that “forever I am” is a commonly used phrase but fails to meet its burden of establishing that the I AM Mark or “forever I am” are terms which the relevant purchasing public understands primarily as the common or class name for the goods – i.e., that they are generic. Similarly, Respondent presented no evidence or arguments that the Domain Name merely describes a function, use, characteristic, or size of Complainant’s goods. That the Mark is registered shows that it is not generic or descriptive, otherwise registration would have been refused. The Mark is not generic or descriptive as the public would not consider it to primarily refer to “anti-aging skin creams and/or lotions”.
Respondent did not conduct a Word and/or Design Mark Search, and presented results for a Word Mark only search to present misleading search results. The first and only live trademark identified through a Free-Form Word and/or Design Mark Search for “forever I am” is the Mark. Respondent could have conducted a simple Word and/or Design Mark Search and find that the most recent owner of the domain name purchased at an expired domain auction had a trademark incorporating the Domain Name. Thus, Respondent should be or have been aware of the Mark when it registered the Domain Name.
A Google search for “Forever I Am” locates a related website owned by Complainant, <foreveriamevets.com>. The primary purpose of the website associated by that domain name is to promote and provide information about the annual Forever I Am Women’s Conference by Complainant’s principal. Complainant’s goods are related to the I Am Women’s Conference, as both have common ownership, and employ the same “I Am branding” to support their focus on empowering women. With regard to Respondent’s searches for “forever i am skin cream”, “forever i am anti aging cream,” and “forever i am florida,” Complainant sold its products through a website that was associated with the Domain Name as such, the website won’t come up in any search results as all of Complainant’s content has been removed. With regard to Respondent’s argument that Complainant does not own any of the major social media handles for “forever I am”, the first result of a Google search for “foreveriam.com” leads to Complainant’s Facebook page, created on June 18, 2011. It has a “Shop Now” link that redirects the public to <foreveriam.com> where consumers had the ability to make purchases.
Respondent may be a buyer and seller of generic and descriptive domain names, but that is of no consequence because the Domain Name is neither generic or descriptive. Moreover, Respondent claims that it owns many generic domain names, and registering such names to sell them is not bad faith. However, Respondent does not claim that is how it came to own the Domain Name. Respondent purchased the Domain Name via a recently expired domain auction, with the intent to sell it back to Complainant at a price in excess of out of-pocket costs. Respondent has presented no evidence to establish that it has any rights or legitimate interests in the Domain Name, other than that it has registered and offered to sell it. If mere registration of a domain name were sufficient to establish rights or legitimate interests under the Policy, then all registrants would have such rights or interests, and no complainant could succeed on a claim of abusive registration.
Respondent is in the business of “drop-catching,” buying recently expired domain names, usually from a pre-release domain auction, to sell the domain name to its previous owner for a price in great excess of registration costs. Drop-catching is not an avenue to establish a legitimate interest. After the Response was filed, Complainant learned that Respondent is owned by Turn Commerce Inc. (“Turn Commerce”), which is also the parent company of Name Bright and Drop Catch. Respondent is located at the same address as Turn Commerce and Drop Catch. Drop Catch states that the “software and advanced algorithms behind DropCatch.com have been in use for many years and directly responsible for capturing more than 1,000,000 domains from the drop. We have arrangements with other bulk partners [i.e., Respondent] who use the DropCatch.com technology and network of registrars to acquire domains on the drop.” Respondent and other Turn Commerce entities monitor recently expired domains, then outbid all other parties in expired domain name auctions, in order to sell the domains back to their owners. Such registration and use does not establish legitimate rights.
There is nothing inherently wrong in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. That does not imply a right to sell domain names that are identical or confusingly similar to Complainant’s trademark without consent.
Despite pointing out that it offered to sell the Domain Name to Complainant through the Registrar, Respondent does not deny that it attempted to sell it in excess of its out-of-pocket costs, for USD 11,595. Respondent does not deny that it presented that price as a non-negotiable take-it or leave-it offer, nor does Respondent deny that it was in communication with the Registrar regarding the sale of the Domain Name to Complainant (including its agents and employees). Respondent is using the Registrar’s domain brokering service to avoid direct communication with Complainant in a misguided effort to hide its attempts and intent to sell the Domain Name to Complainant. The only logical conclusion from Respondent’s denial of receiving Complainant’s USD 5,000 offer is that the Registrar lied about communicating that offer. The Registrar would have no reason to lie about communicating the offer, even if a higher sale price would yield higher commissions, as evidenced by the Registrar’s offer to locate alternate domain names for Complainant.
6. Discussion and Findings
A. Procedural Matters – Supplemental Filings
The Panel must determine as a preliminary matter whether Complainant’s unsolicited supplemental submission and Respondent’s invited reply to it, should be considered, consistent with the Policy and the Rules.
No provision in the Policy, the Rules, or the Supplemental Rules authorizes the filing of supplemental filings by either party to the administrative proceeding without leave from the Panel. Paragraph 12 of the Rules provides that in addition to the complaint and response, the Panel may request, in its sole discretion, further statements or documents from either of the parties. But the Policy and the Rules demonstrate a strong preference for single submissions by the parties, absent exceptional circumstances. See Rollerblade, Inc. v. CBNO and Ray Redican Jr., WIPO Case No. D2000-0427.
If a party wants to file a supplemental submission, a preferred practice under the Rules is to first seek the Panel’s permission to do so and to provide an explanation of why a further submission is warranted. Custom Bilt Metals v. Conquest Consulting, WIPO Case No. D2004-0023. Appropriate reasons a party may proffer for requesting permission include the existence of new, pertinent facts that did not arise until after the submission of the Complaint, the desire to bring new, relevant legal authority to the attention of the Panel, or the need to rebut factual arguments that could not have been anticipated in the Complaint. Id. Conversely, a mere desire to reargue the same issues already submitted is not a valid reason for additional submissions. Id. There are advantages of seeking permission first, including: (1) if the Panel determines that a further submission is warranted, requesting permission first provides the Panel with the ability to set a schedule that is fair to both parties; and (2) if the Panel decides not to accept a supplemental submission or to focus the scope of the submission, having the Panel’s input would save the parties some or all of the expense in preparing any further submissions. Id.
Here, Complainant filed an unsolicited Supplemental Filing explaining why the Panel should consider it. In this regard, Complainant argued that Respondent has asserted facts and information which it could not have been anticipated at the time it filed the Complaint and that it considered “incomplete, misleading and false” (providing specific examples). Insofar as the Parties did not have direct contact before this proceeding was filed where relevant issues and arguments may have been vetted, the Panel has given Complainant the benefit of the doubt. Having reviewed Complainant’s Supplemental Filing with that perspective, the Panel has considered it to the extent that it addresses matters that could not reasonably have been included in Complainant’s initial submission.
Respondent filed copious objections and requested the Panel’s permission to file a supplemental submission if it agreed to accept Complainant’s Supplemental Filing. The Panel gave Respondent permission to respond to Complainant’s Supplemental Filing and considered what Respondent submitted.
B. Identical or Confusingly Similar
The Panel finds Complainant has established rights in the I AM Mark based on the aforementioned trademark registration for the Mark that Complainant has made of record.
Respondent argues that the registration for the I AM Mark specifically details the design in the registration as: “Circles comprised of animals; Circles comprised of geometric figures; Circles comprised of humans; Circles comprised of letters or numerals; Circles comprised of plants; Circles comprised of punctuation; Letters, numerals, punctuation, geometric figures, objects, humans, plants or animals comprising a circle” and “Circles that are totally or partially shaded.” In fact, that description relates to where the trademark Examining Attorney searched in examining Complainant’s application for the Mark. The description of the Mark on the front of the registration is: “The mark consists of the words “IAM” in black letters with the letters “A” and “M” overlapping at the base with 3 red dots across the letter “A” as part of the letter.”
Also, Respondent argues that “[a] design mark is a logo mark which grants protections to the registrant for the specific graphics of the design”. That the Mark has design elements does not preclude a finding of confusingly similarity here. See, e.g., Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031 (“[G]raphic elements, such as the Sweeps design, not being reproducible in a domain name, need not be considered when assessing identity or confusing similarity. See EFGBank European Financial Group SA v. Jacob Foundation, WIPO Case No. D2000-0036, section 6(b)(i) (finding that the domain name was identical to the trademark where the text of the name was identical and only the graphic elements which cannot be reproduced in the domain name were left out)).”
Respondent argues that Complainant does not have any rights in the term “forever I am”, namely a registered mark or evidence of common law rights and that the Mark is specifically limited to the goods and services set forth in the registration for the Mark. In a court trademark infringement action it is possible that those arguments may be influential. Here, however, it is necessary to recognize that “the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.” See, section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The test involves a simple comparison of the mark relied upon with the domain name in issue. Id. “While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” Id. In this case, the Domain Name wholly incorporates Complainant’s I AM Mark along with the term “forever”. Prior UDRP panels have consistently held that the addition of other terms (whether descriptive, geographical, meaningless, or otherwise) to a complainant’s mark does not prevent a finding of confusing similarity between a domain name and that mark. See, section 1.8 of the WIPO Overview 3.0 and cases cited therein.
Finally, the addition of the generic Top-Level domain (“gTLD”) “.com” to the Domain Name does not prevent it from being confusingly similar to the Mark (seeArthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698; and America Online, Inc. v. Johuathan Investments, Inc., and AOLLNEWS.COM, WIPO Case No. D2001-0918).
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
C. Rights or Legitimate Interests
The Panel need not make a finding on the second element of the Policy in view of its findings concerning bad faith under the third element, as set out below.
D. Registered and Used in Bad Faith
Under the third requirement of the Policy, Complainant must establish that the Domain Name has been both registered and used in bad faith by Respondent. The Panel finds that Complainant has not proven that Respondent registered the Domain Name in bad faith.
To establish that the Domain Name has been registered in bad faith, Complainant must show that Respondent was aware or should have been aware of Complainant and the Mark. See, e.g., uwe GMbH v. Telepathy, Inc, WIPO Case No. D2007-0261). That is a difficult hurdle for Complainant here.
“Evidence that Respondent should have been aware of Complainant might be drawn from a number of sources. There might be such evidence if Complainant was well-known in Respondent’s jurisdiction; was well-known in a field or jurisdiction in which Respondent operates; the Mark was distinctively associated with Complainant; or if it appears, on a common-sense approach and the surrounding facts, that the similarity between the Domain Name and mark was deliberately created. Here, there is insufficient evidence of this kind.” Id. Here, Complainant is relying solely on its United States trademark registration for the Mark, which was sufficient to satisfy the first element of the Policy, but it does not satisfy Complainant’s burden for this element. Even in cases where a mark is “famous” or well-known, and particularly here where that is not the case with the I AM Mark, to prove the renown of a mark and, thus, how a respondent would have known of it, successful complainants typically make of record dated information for relevant time periods evidencing actual use of the mark and its scope of use. Such evidence might include annual reports, articles, social media activity, website presence, marketing channels, and marketing budgets. That was not done here. Likewise, there is no evidence of the geographic scope of Complainant’s business (e.g., local, regional, national, international) such that the Panel could determine whether Respondent would have been aware of Complainant or its rights in the Mark.
Also, there is no evidence that the similarity between the Domain Name and Mark was deliberate or that Complainant or the Mark were targeted. Indeed, Respondent is in the business of buying and selling domain names and owns many other domain names starting with “forever” and ending with “I am.”
The Parties each expressed “what if” views relating to what Respondent might have discovered if it had conducted a trademark or other search before registering the Domain Name. Even to the extent the Panel agrees that Respondent was under a duty to search proactively in order to avoid infringing third party rights, the Mark here does not appear to be similar enough to the Domain Name for reasonable due diligence (which may extend beyond a trademark register search to include a general Internet search or available historical information on dropping names) to have unearthed the Mark or learn anything regarding Complainant at that time. For example, the Domain Name is <foreveriam.com> but Complainant does not have a United States trademark registration for the mark FOREVER I AM and its registration for the I AM Mark is for a composite mark (design/lettering). Given the foregoing, a straightforward search for the words “forever I am”, would not have elicited the registration for the I AM Mark. The search query suggested by Complainant retrieves that registration only because it encompasses the registrant field as well as the trademark.
Complainant has made numerous assertions that Respondent’s registration was in bad faith, but has provided little if any evidence. What Complainant did not argue or present evidence (if it existed) for was any suggestion that Respondent’s acquisition of the Domain Name was due to the latter’s knowledge of the former’s pre-existing business reputation and goodwill (whether based on a purported duty to search or otherwise) and a desire to capitalize therefrom, as opposed to a conscious decision merely not to renew its domain name registration. Based on the evidence presented, there is little to no support for a finding that Respondent registered the Domain Name in bad faith. Accordingly, Complainant cannot establish the third requirement under the Policy, and there is no need to address the question of bad faith use.
The Panel notes that Complainant is free to pursue a claim in court, whether against the Registrar (due e.g., to the apparent breakdown in its renewal process or otherwise) or Respondent.
E. Reverse Domain Name Hijacking
Paragraph 15(e) of the 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 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”. Reverse Domain Name Hijacking (“RDNH”) is further defined under the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name.”
Respondent predicates its assertion of RDNH on various argument including: Complainant does not have registered or common law rights in “forever I am” and knew (or should have known) that it was unable to prove Respondent’s lack of rights in <foreveriam.com>; Complainant is ultimately asking the Panel to find that it is the only entity allowed to use the phrase “forever I am” and requesting it to disregard evidence that the Domain Name is generic and descriptive; Complainant and its counsel disregarded Policy and precedent in commencing this proceeding knowing what it would have to prove, including Respondent’s bad faith registration and use of the Domain Name; and the Complaint is without merit and the case was filed to deny Respondent’s legitimate rights in the Domain Name after Complainant attempted to buy it.
In its Supplemental Filing Complainant counters with: (1) Respondent’s claim is primarily based on the allegation that Complainant did not prove the necessary elements to transfer the Domain Name, rendering it frivolous and without merit. That ignores the fact that Complainant registered the Domain Name in 2010, and had been using it to sell products since that time; (2) Respondent’s claim of RNDH is also based on the argument that the Mark is not identical to the Domain Name, however, a domain name which incorporates a trademark is sufficient to establish confusing similarity; and (3) Complainant’s counter-offer of USD 5,000 to Respondent’s offer to sell the Domain Name for USD 11,595 does not show bad faith. Although the USD 5,000 offer was vastly more than out of pocket costs, it was reasonable in light of Respondent’s high offer, avoiding pro-longed disruption of business, and Respondent made bad-faith allegations of RNDH, as illustrated by its offer to transfer the Domain Name to Complainant at no cost, in exchange for withdrawing the Complaint. Respondent would not offer to transfer the Domain Name to Complainant at no cost if it felt that the Complaint was made in bad-faith. It was only when Complainant requested payment of its costs and legal fees that the Response and request for appointment were filed. Respondent sought appointment of the Panel to force Complainant to incur additional fees.
As an initial matter, Panels have consistently found that the mere lack of success of a complaint is not itself sufficient for a finding of RDNH. See, section 4.16 of the WIPO Overview 3.0. Thus, the fact that Complainant did not succeed here is not a sufficient basis for a finding of RDNH.
As indicated above Complainant has rights in the I AM Mark that are relevant to this proceeding and it made viable arguments to meet the confusing similarity standard under the Policy. Furthermore, Complainant made colorable arguments for the other two elements under the Policy, even though as determined for element III there was a lack of supporting evidence. Likewise, although there is ample argument here, there is insufficient evidence for the Panel to find the requisite bad faith or intent to harass or deprive Respondent of the Domain Name.
For all of these reasons, the Panel concludes that Respondent has not established Reverse Domain Name Hijacking.
7. Decision
For the foregoing reasons, the Complaint is denied.
Harrie R. Samaras
Presiding PanelistAnne Gundelfinger
PanelistDavid E. Sorkin
Panelist
Date: July 27, 2021
