Gaygle.com : WIPO panelist cites “lack of counsel” as reason of no #RDNH finding!

The domain Gaygle.com was registered in 2003 and a UDRP complaint was filed with the WIPO in 2020.

Basing the filing on a 2019 trademark for GAYGLE, the Complainant operates from the .CO variant.

The Respondent stated that they legitimately registered the Domain Name more than 15 years before Complainant had ever used GAYGLE as a trademark. As such there can be no bad faith registration of the Domain Name. Respondent asserted that Complainant is engaged in Reverse Domain Name Hijacking.

Oddly, the WIPO panelist soft-slapped the Complainant, by not branding them with a Reverse Domain Name Hijacking finding. Said the panelist:

The Panel declines, however, to find that it was brought in bad faith, largely because the Complaint appears to be the product of Complainant (not represented by counsel) misunderstanding domain names, how they are acquired and transferred, and the difference between a domain name and a URL.

It’s baffling to see such an argument where a dispute’s intentions get attributed to “ignorance,” and in our opinion this decision deserved a finding of RDNH. Instead, the request to transfer the domain Gayle.com to the Complainant was denied.

Full details on this decision follow:

WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Colavito v. Domain Management, Oceanside Capital Corp.
Case No. D2020-2295

1. The Parties

Complainant is Philip Colavito, United States of America (“United States”), self-represented.

Respondent is Domain Management, Oceanside Capital Corp., United States, represented by Website Attorneys, United States.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 31, 2020. On September 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 3, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on September 10, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. That same day the Center also notified Complainant that the Complaint was administratively deficient. On September 11, 2020, Complainant filed an amended Complaint. On September 23, 2020, the Center notified Complainant that the deficiency had not been cured, and on September 25 and 26, 2020, Complainant submitted to the Center a second and third amended Complaint. The Center sent two email communications to the Complainant on September 29, 2020, in response to which Complainant filed a fourth amended Complaint that same day.

The Center verified that the Complaint together with the amended Complaints 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 October 5, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 25, 2020. The Response was filed with the Center on October 25, 2020. On October 26, 28, and 29, 2020, the Center received three email communications from Complainant. On November 2, 2020, Complainant submitted a supplemental filing, which the Panel, in its discretion, has considered.

The Center appointed Robert A. Badgley as the sole panelist in this matter on November 20, 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 Parties, particularly Complainant, have made numerous factual allegations and arguments in this proceeding, but only a few of the alleged facts and arguments are actually germane to the disposition of this dispute. The Panel will not lay out in detail all of the allegations and arguments presented.

Complainant holds two registered trademarks for GAYGLE with the United States Patent and Trademark Office (“USPTO”), namely, USPTO Reg. No. 5,928,817 for “promoting the goods and services of others by means of operating an on-line shopping mall with links to the retail web sites of others,” registered on December 3, 2019, and USPTO Reg. No. 6,117,031 for “providing a website featuring a search engine for Gay commerce,” registered on August 4, 2020. Both of these USPTO registrations indicate a date of first use in commerce of April 10, 2019. (Contrary to the foregoing information, Complainant alleges in his Complaint that “the marks have been in use since April 2018 [the correct date is April 10, 2019] and certified in 2019 [only one was registered in 2019].”)

Complainant operates a website at “www.gaygle.co”. According to Respondent, Complainant registered this domain name on April 2, 2019.

The Domain Name at issue in this case was registered on November 12, 2003, more than 15 years before Complainant used the GAYGLE mark in commerce, and more than 16 years before Complainant’s mark was first registered with the USPTO. Respondent states that it has held this Domain Name continuously since 2003, contrary to Complainant’s allegations to the contrary. It appears that Complainant is alleging that Respondent transferred the Domain Name 16 times over the years, but Complainant’s supposed evidence of this is a series of “URL transfers” captured by the Wayback Machine (“www.archive.org”). Complainant appears to be confused on this point, as the Wayback Machine printout annexed to the Complaint does not indicate ownership of the Domain Name itself, but merely the creation and revision of various web pages accessible via the Domain Name.

The Domain Name currently resolves to a parking page with several hyperlinks, including “Transgender Hormone Therapy Near Me” and “Silver Singles Dating Site.” This parking page also indicates that the Domain Name is for sale.

The Parties discussed, through a domain name broker, a possible sale of the Domain Name from Respondent to Complainant. According to Complainant, he eventually agreed to Respondent’s asking price of USD 10,000, at which time Respondent allegedly said that it wanted a “six figure” payment.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has established all three elements required under the Policy for a transfer of the Domain Name.

B. Respondent

Respondent states that it legitimately registered the Domain Name more than 15 years before Complainant had ever used GAYGLE as a trademark. As such, Respondent states, there can be no bad faith registration of the Domain Name. Respondent asserts that Complainant is engaged in Reverse Domain Name Hijacking.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
A. Identical or Confusingly Similar

The Panel concludes that Complainant has rights in the trademark GAYGLE through registration demonstrated in the record. The Panel also concludes that the Domain Name is identical to that mark.

Complainant has established Policy paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel need not decide this element, given its conclusion below that there is no evidence of bad faith registration of the Domain Name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or

(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel finds no evidence that Respondent registered the Domain Name in bad faith. As noted above, the Domain Name was registered more than 15 years before Complainant first used the GAYGLE trademark, and more than 16 years before that mark was registered. There is no evidence that Respondent was not the original Domain Name registrant, or that Respondent first acquired the Domain Name after Complainant had started using GAYGLE as a mark. Because there is no evidence that Respondent was targeting Complainant’s trademark at the time the Domain Name was registered, there can be no finding of bad faith registration of the Domain Name. The Complaint must fail.
D. Reverse Domain Name Hijacking

This Complaint was doomed to fail, given Respondent’s apparently continuous ownership of the Domain Name long before Complainant had any trademark rights. The Panel declines, however, to find that it was brought in bad faith, largely because the Complaint appears to be the product of Complainant (not represented by counsel) misunderstanding domain names, how they are acquired and transferred, and the difference between a domain name and a URL. In addition, Complainant may have genuinely believed that Respondent’s apparently moving target of a purchase price for the Domain Name constituted bad faith in itself.

7. Decision

For the foregoing reasons, the Complaint is denied. The Panel makes no finding of Reverse Domain Name Hijacking.

Robert A. Badgley
Sole Panelist
Date: November 30, 2020

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