BODIS

#GreenRoads .com : #UDRP denied with dissenting opinion on #RDNH

ZFBot

UDRP has been denied.

The UDRP case filed against the domain GreenRoads.com was decided upon by 3 panelists at the WIPO.

The 2005 domain registration was challenged by Green Roads of Florida LLC that asserted rights to a 2017 mark for GREEN ROADS.

The Respondent was represented by IP attorney John Berryhill.

The WIPO panelists found no proof that the domain was registered in bad faith, citing its registration date alongside the trademark registration date for the Complainant, and ordered the domain to remain with the Respondent:

“The Disputed Domain Name, which combines two common words, was registered to the Respondent in 2006, long before the Complainant’s GREEN ROADS trademark existed “

One dissenting panelist stated that the case should warrant a finding of Reverse Domain Name Hijacking, but he was in the minority.

Full details of the decision for GreenRoads.com follow:

WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Green Roads of Florida, LLC v. Privacydotlink Customer 237978 / IMG, INC
Case No. D2018-2384

1. The Parties

The Complainant is Green Roads of Florida, LLC of Davie, Florida, United States of America (“United States”), represented by Cozen O’Connor, United States.

The Respondent is Privacydotlink Customer 237978 of Grand Cayman, Cayman Islands / IMG, INC of Calabasas, California, United States, represented by John Berryhill, Ph.d., Esq., United States.

2. The Domain Name and Registrar

The Disputed Domain Name <greenroads.com> (the “Disputed Domain Name”) is registered with Uniregistrar Corp (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2018. On October 18, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 19, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 24, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 26, 2018.

The Center verified that the Complaint together with the amended 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 October 29, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 18, 2018. Upon request of the Respondent, the due date for Response was extended to November 22, 2018, in accordance with the Rules, paragraph 5(b). The Response was filed with the Center November 22, 2018.

Counsel for the parties conferred and agreed to jointly request a one week suspension for the purpose of discussing potential settlement of this dispute on November 27, 2018. The parties did not reach agreement before December 5, 2018, and the Respondent requested that the proceeding be reinstituted on December 5, 2018. Further to the Parties’ communications, the Center formally notified the parties that the present UDRP proceeding was reinstituted as of December 6, 2018.

On December 11, 2018, the Center received by email a supplemental filing from the Complainant.

The Center appointed Peter J. Dernbach, Nick J. Gardner, and Sir Ian Barker as panelists in this matter on January 8, 2019. 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

The Disputed Domain Name <greenroads.com> was created on December 19, 2005. The Disputed Domain Name was registered to the Respondent on October 31, 2006 and has continuously remained registered to the Respondent since 2006.

The Complainant is the owner of the following United States trademark registration and applications (collectively, the “GREEN ROADS Marks”):

GREEN ROADS, Registration No. 5,288,805, registered on September 19, 2017 for goods/services in International Class 005, first used in commerce in 2014;

GREEN ROADS, Application No. 87975187 for goods/services in International Class 005, 034, and 035;

GREEN ROADS WELLNESS, Application No. 87573569 for goods/services in International Class 005;

GREEN ROADS WELLNESS, Application No. 87584770 for goods/services in International Class 004, 005, 029, and 034.

Upon noting therein that the Complainant claimed rights in the cannabis market, the Respondent immediately removed the name from automated search configuration and has configured the Disputed Domain Name to static results relating to gardening.

5. Parties’ Contentions

A. Complainant

The Complainant requests the Disputed Domain Name be transferred to the Complainant based on the following grounds:

(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Disputed Domain Name <greenroads.com> is confusingly similar to the Complainant’s GREEN ROADS Marks. The Disputed Domain Name is identical to the Complainant’s GREEN ROADS trademark, which has been used in commerce since at least 2014.

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

The Respondent (i) does not own any trademark or service mark registrations encompassing the GREEN ROADS name, nor any variations thereof; (ii) is not commonly known by the Disputed Domain Name; and (iii) is not making a legitimate noncommercial or fair use of the Disputed Domain Name. In addition, the Respondent is using the Disputed Domain Name with intent to mislead and divert consumers from the Complainant’s goods offered under the GREEN ROADS Marks. The website to which the Disputed Domain Name resolves provides hyperlinks to the websites of the Complainant’s competitors.

(iii) The Disputed Domain Name was registered and is being used in bad faith.

The Respondent’s registration of the Disputed Domain Name, which incorporates the Complainant’s GREEN ROADS trademark in its entirety, suggests that the Respondent knew of the prior use and rights of the GREEN ROADS Marks.

The website found at the Disputed Domain Name was being redirected from “www.greenroads.com” to other various sites. This conduct directly disrupts the Complainant’s ability to conduct business whereby consumers looking for the Complainant, may “guess” at the domain name and will be diverted to the Respondent’s linked site, “www.greenroads.com”, which is in no way affiliated with or sponsored by the Complainant. In light of the Respondent’s apparent business model, which appears to exploit the ownership of domain names for the purpose of commercial gain, the Respondent’s bad faith tactics continue to harm the Complainant.

On December 11, 2018, the Complainant submitted to the Center a supplemental filing emphasizing that while the Respondent has revised the nature of the advertisements that appear on the parked site after the filing of the Complaint, this does not convey to the Respondent any legitimate right in the Disputed Domain Name. Moreover, the Respondent’s changes to its site after receiving the Complaint cannot be viewed as being in good faith. In addition, the Complainant states that, according to the Response, the Respondent was able to quickly connect the dots to determine that the genuine inquiries from TFC Marketing were being made on behalf of the Complainant. As such, the Respondent therefore had both actual and constructive knowledge of the Complainant’s marks. Furthermore, the Complainant asserts that the Complainant cannot assume that there was no change of hands between related entities or bad faith as the Respondent’s use of a privacy service concealed its true identity. Even if the Disputed Domain Name has not changed hands, it is obvious that the Respondent does not wish to maintain the Disputed Domain Name for its own legitimate usage but to use leverage the instant proceedings as a means to increase the purchase price of the domain, at which point it can turn around and sell the same to a competitor of the Complainant.

B. Respondent

The Respondent makes the following arguments in relation to each of the grounds relied upon by the Complainant:

(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Respondent argues that the Complainant’s pending registration applications are not probative of rights under the Policy. The Respondent also argues that the Respondent’s rights in the Disputed Domain Name predate the Complainant’s rights in the GREEN ROADS trademark by at least eight years, discussed further below.

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

The “rights and interests” specified in the paragraph 4(a)(ii) of the Policy are not required to be trade or service mark rights, but include a range of equitable interests such as continued use of the domain name for a bona fide purpose and right of seniority.

The Respondent does not possess records dating back to its original acquisition of the Disputed Domain Name. However, DomainTools WhoIs history records and the business records from the Better Business Bureau and the California Secretary of State show that the Disputed Domain Name was registered to the CFO of the Respondent at the Respondent’s Calabasas, California address on May 2, 2006. The CFO of the Respondent further updated registration by October 31, 2006 to reflect its registration to the Respondent as “IMG Inc.” The Disputed Domain Name has continuously remained registered to the Respondent since 2006. The Respondent’s senior registration of the domain name is entirely determinative of the outcome of this Proceeding.

The Respondent obtained the Disputed Domain Name in the belief that, as a combination of two words incorporating the particularly trendy “green”, it would have definite commercial value. There have been various applications and registrations by entities that have used or are making use of this or similar combinations. The Complainant’s use of this combination of terms is hardly unique, famous, or solely associated with the Complainant. The relative popularity of phrases combining “green” with other terms is demonstrated by the frequency of failed attempts to use the Policy to obtain them, such as: <greenenvelope.com>, <greentrust.com>, etc.

Subsequent to registering the Disputed Domain Name, the Respondent has used it in connection with various search advertising systems, commonly referred to as pay-per-click (“PPC”) systems, in order to automatically associate the Disputed Domain Name with content relevant to the domain name itself. DomainTools’ screenshot history shows that the results of these automated systems for the Disputed Domain Name over the years varied from time to time. These results are typical for a domain name of this sort, composed of two common words. When left to auto-optimization, the PPC system will tend to converge on a few primary topics and will occasionally rotate new topics into the system, depending on the relevance of words to subjects in advertising campaigns across the systems of advertising vendors such as Google or Yahoo, who manage the advertiser end of this particular advertising mechanism and who ultimately produce the paid search results to which PPC searches lead. PPC systems likewise can produce results which are dependent on the user’s own browser history, cookies, and previous searches. In the present dispute, it appears from the Complainant’s evidence that the Complainant found search results consistent with the Complainant’s junior promotion of its mark in the cannabis market, and further possibly consistent with the browser and search activities of whomever visited the page.

(iii) The Disputed Domain Name has been registered and is being used in bad faith.

The Respondent registered the Disputed Domain Name in 2006. Bad faith registration cannot be found where the domain name pre-dates the claimed rights at issue, except for a narrow form of anticipatory bad faith in which a domain registrant has reason to believe that a specific party plans to launch a particular mark, which is not relevant here. The Disputed Domain Name could not have been registered in bad faith by the Respondent in 2006 in relation to the Complainant’s then non-existent rights.

The use of a WhoIs privacy service does not excuse the Complainant’s lack of candor or feigned inability to contact the Respondent. The Respondent maintains a link on the page in question through which the Respondent actively receives inquiries. The Complainant knows this, having engaged an agent (TFC Marketing) to do so. The Complainant’s agent contacted the Respondent’s broker via a link provided on the parking page to which the Disputed Domain Name resolved, made offers to purchase the Disputed Domain Name, and could have discussed any details about the Disputed Domain Name, its registrant, and the registrant’s priority at any time. The Respondent submits that the Complainant’s omission of its agent’s communications with the Respondent’s broker render the Complainant’s claim about “hiding” by use of a privacy service to be fundamentally dishonest and deceptive.

6. Preliminary Procedural Issues

6.1 Language of the Proceeding

The Panel determines that the language of the proceeding should be English. Paragraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the Registration Agreement unless otherwise specified in that agreement or agreed by the parties. The language of the Registration Agreement is English. Both the Complaint and Response have been submitted in English. Thus, the Panel concludes that the language of proceedings shall be English.

6.2 Supplemental Filing

In addition to determining the language of the proceeding, the Panel also needs to rule on the admissibility of the Complainant’s supplemental filing before proceeding to the substance of the dispute.

Paragraph 12 of the Rules empowers the Panel to request further statements or documents from the parties at its sole discretion. The Policy does not otherwise contemplate further documents in the proceeding apart from the Complaint and the Response.

Paragraph 10 of the Rules, however, gives the Panel a wide discretion relating to procedural matters subject to an overriding requirement to ensure that parties are treated equally and given a fair opportunity to present their respective cases. Consistently with the objective of providing an efficient and effective online dispute resolution mechanism, paragraph 10(c) directs the Panel to ensure that the proceeding takes place with due expedition. Subject to the overriding obligations mentioned, paragraph 10(d) empowers the Panel to determine the admissibility, relevance, materiality, and weight of the evidence.

Typically, an unsolicited supplemental filing is permitted where it is necessary to correct an error or to address some matter raised in the Response that could not reasonably have been anticipated. See sections 3.1 and 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview a”). See also Starwood Hotels & Resorts Worldwide, Inc., The Sheraton LLC, Sheraton International IP, LLC, Preferred Guest, Inc., Société des Hotels Méridien, Worldwide Franchise Systems, Inc., Westin Hotel Management, L.P. v. Lei Qi, WIPO Case No. D2015-1539.

The Panel observes that the Respondent did not raise issues which the Complainant could not have expected to be raised in the Response. Overall, the Complainant’s supplemental filing primarily reiterates its supporting grounds in the Complaint. Nevertheless, on balance the Panel finds that accepting the supplemental filing does not prejudice the Respondent’s fair opportunity to present its case, nor does it cause undue delay to the administrative proceeding. Therefore, the Panel accepts the Complainant’s supplemental filing for consideration.

7. Discussion and Findings

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [provider], in compliance with the Rules of Procedure, that (i) [the disputed domain name] is identical or confusingly similar to a trademark or service mark in which the complainant has rights[.]”

The Complainant has established that it is the owner of the GREEN ROADS trademark in the United States.

Since the Top-Level Domain (“TLD”) “.com” is generally disregarded for the purposes of the test of confusing similarity (section 1.11 of WIPO Overview 3.0), the only relevant part of the Disputed Domain Name is the paragraph “greenroads”, and it is identical to the word element of the GREEN ROADS trademark of the Complainant. The Disputed Domain Name, <greenroads.com>, incorporates the GREEN ROADS trademark in its entirety.

It does not matter for the purposes of this element that the Disputed Domain Name was registered before the GREEN ROADS trademark existed – the Panel agrees with the consensus approach as explained in WIPO Overview 3.0, section 1.1.3:

“1.1.3 While the UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired its rights, such rights must be in existence at the time the complaint is filed.

The fact that a domain name may have been registered before a complainant has acquired trademark rights does not by itself preclude a complainant’s standing to file a UDRP case, nor a panel’s finding of identity or confusing similarity under the first element.

Where a domain name has been registered before a complainant has acquired trademark rights, only in exceptional cases would a complainant be able to prove a respondent’s bad faith”.

See further below as to bad faith issues.

Thus, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s GREEN ROADS trademark. The condition of paragraph 4(a)(i) of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules of Procedure, that […] (ii) [the respondent has] no rights or legitimate interests in respect of the [disputed] domain name[.]”

Paragraph 4(c) of the Policy sets out the following several circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Complainant has shown that the Respondent (i) does not own any trademark or service mark registrations encompassing the GREEN ROADS name, nor any variations thereof; (ii) is not commonly known by the Disputed Domain Name; and (iii) is not making a legitimate noncommercial or fair use of the Disputed Domain Name. The Complainant also has confirmed that the Respondent is no way affiliated with or sponsored by the Complainant.

The Respondent has shown that it registered the Disputed Domain Name in 2006, some eight years prior to the Complainant’s trademark registration and is using the Disputed Domain Name in connection with PPC advertising systems.

The Panel notes that the system of domain name registration is generally a “first-come, first-served system.” Absent pre-existing rights that may be used to revoke a registration, the first person in time to register a domain name would normally be entitled to use the domain name for any legitimate purpose it wishes (Inbay Limited v. Ronald Tse dba Neosparx International, WIPO Case No. D2014-0096).

In the instant case, the Respondent is a company that has been engaged in business communication and advertising services since 1994. The Respondent registered the Disputed Domain Name several years prior to the Complainant’s obtaining rights or interests in the GREEN ROADS trademark. The Respondent proceeded to use the Disputed Domain Name for advertising on a parking page comprised of pay-per-click links, in order to automatically associate the Disputed Domain Name with content relevant to the Disputed Domain Name itself.

Panels have additionally noted that respondent efforts to suppress PPC advertising related to the Complainant’s trademark (e.g., through so-called “negative keywords”) can mitigate against an inference of targeting the Complainant.

With regard to whether use of a domain name to conduct PPC advertising constitutes a legitimate interest, previous panels have recognized that the use of a domain name to host a page comprising PPC links would be permissible – and therefore consistent with respondent rights or legitimate interests under the UDRP – where the domain name consists of an actual dictionary word(s) or phrase and is used to host PPC links genuinely related to the dictionary meaning of the word(s) or phrase comprising the domain name, and not to trade off the complainant’s (or its competitor’s) trademark.”

In the present case, the Respondent’s use of the Disputed Domain Name may have established a legitimate interest in the Disputed Domain Name. The Panel notes, though, that the website to which the Disputed Domain Name resolves did provide, at some point in time after the Complainant had registered its GREEN ROADS trademark, hyperlinks to the websites to other third party websites, including those of the Complainant’s competitors. Since receiving the Complaint, the Respondent removed the Disputed Domain Name from automated search configuration and has reconfigured the advertising to link to sites related to gardening. On balance the Panel considers the Respondent’s actions likely to have established it did have rights or legitimate interests in the Disputed Domain Name. However, in view of the Panel’s finding on bad faith issues (see below) it is not necessary for the Panel to reach a final conclusion on whether or not the Respondent’s use of the Disputed Domain Name in connection with PPC advertising gives rise to rights or legitimate interests.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [providers], in compliance with the Rules of Procedure, that […] (iii) [the respondent’s] domain name has been registered and is being used in bad faith.”

Paragraph 4(b) of the Policy explicitly states, in relevant part, that “the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the registrant has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or

(ii) the registrant 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 the registrant has engaged in a pattern of such conduct; or

(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

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

The Disputed Domain Name, which combines two common words, was registered to the Respondent in 2006, long before the Complainant’s GREEN ROADS trademark existed (Aspen Grove, Inc. v. Aspen Grove, WIPO Case No. D2001-0798). Although a trademark can form a basis for a UDRP action under the first element irrespective of its date, where a respondent registers a domain name before the Complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the Respondent. Section 3.8.1 of WIPO Overview 3.0). The Complainant has failed to establish that the Disputed Domain Name was registered in bad faith.

As the Policy requires that the Disputed Domain Name be registered and used in bad faith, and the Complainant has failed to show that the Disputed Domain Name was registered in bad faith, the Panel concludes that the conditions of paragraph 4(a)(iii) of the Policy have not been satisfied.
D. Reverse Domain Name Hijacking

Paragraph 15(e) of the Policy 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. The Panel considered making a finding of Reverse Domain Name Hijacking (“RDNH”), which is defined in paragraph 1 of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”

The mere lack of success of the complaint is not itself sufficient for a finding of RDNH. Indeed, even if a complainant were over-optimistic in filing the complaint, that would not by itself necessarily justify a finding of RDNH. What must be shown, as paragraph 1 of the Rules makes plain, is that the Complainant was actuated by bad faith in bringing the complaint. In Jazeera Space Channel TV Station v. AJ Publishing aka Aljazeera Publishing, WIPO Case No. D2005-0309, the majority of the panel stated that: “Allegations of reverse domain name hijacking have been upheld in circumstances where a respondent’s use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy (see Goldline International, Inc v. Gold Line, WIPO Case No. D2000-1151).

Here, the Complainant should have known that on bare assertions its contentions under paragraph 4(a)(iii) of the Policy must fail, since the Disputed Domain Name was registered to the Respondent at least eight years prior to the Complainant’s use and registration of the GREEN ROADS trademark.

In this case, the Complainant argues that the fact that the registrant information was concealed for a period of time before the Complaint was filed caused the Complainant to believe that a transfer in ownership of the Disputed Domain Name may have occurred since 2014 and the Disputed Domain Name was registered and is used in bad faith. Section 3.8.1 of WIPO Overview 3.0 states: “Merely because a domain name is initially created by a registrant other than the respondent before a complainant’s trademark rights accrue does not however mean that a UDRP respondent cannot be found to have registered the domain name in bad faith. Irrespective of the original creation date, if a respondent acquires a domain name after the complainant’s trademark rights accrue, the panel will look to the circumstances at the date the UDRP respondent itself acquired the domain name.”

The Respondent adduced evidence proving the Respondent has been the registrant of the Disputed Domain Name since 2006, and that the Complainant has been attempting to buy the Disputed Domain Name from the Respondent through its agent prior to filing the Complaint. It appears that the Complaint is being used as a Plan “B” option to acquire the Disputed Domain Name and may likely fall within the category of cases listed in section 4.16 of WIPO Overview 3.0: (vii) filing the complaint after an unsuccessful attempt to acquire the disputed domain name from the respondent without a plausible legal basis.

The Panel notes that the mere use of a privacy shield does not give rise to a reasonable conclusion that a transfer in ownership must have occurred. In this case, counsel for the parties have conferred and agreed to jointly request a one week suspension for the purpose of discussing potential settlement of this dispute. Following the failure to reach a settlement with the Respondent, the Complainant requested that the proceeding be terminated or that the Complainant be permitted to withdraw its Complaint. The Respondent did not agree and requested that the Proceeding continue. The Proceeding was then reinstituted.

For the above reasons, while the Panel is not persuaded that the use of a privacy shield in itself is sufficient to reasonably lead the Complainant to conclude that the Disputed Domain was transferred after 2014, it is not inconceivable that the Complainant held this belief at the time of filing the Complaint. The Panel finds that the Complaint was not filed in bad faith and the Panel by a majority (panelist Gardner dissenting) does not find that this is a case of reverse domain name hijacking.

8. Decision

For the foregoing reasons, the Complaint is denied.

Peter J. Dernbach
Presiding Panelist

Nick J. Gardner
Panelist

Sir Ian Barker
Panelist
Date: January 22, 2019

Dissenting Opinion as to Reverse Domain Name Hijacking

The dissenting Panelist concurs with the findings of the majority above, save in relation to Reverse Domain Name Hijacking (“RDNH”) where his opinion is as follows.

Reverse Domain Name Hijacking is defined under the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”.

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”.

As set out in the WIPO Overview 3.0, section 4.16, reasons articulated by panels for finding RDNH include: (i) facts which demonstrate that the complainant knew it could not succeed as to any of the required three elements – such as the complainant’s lack of relevant trademark rights, clear knowledge of respondent rights or legitimate interests, or clear knowledge of a lack of respondent bad faith (such as registration of the disputed domain name well before the complainant acquired trademark rights, (ii) facts which demonstrate that the complainant clearly ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint, including relevant facts on the website at the disputed domain name or readily available public sources such as the WhoIs database, (iii) unreasonably ignoring established Policy precedent notably as captured in this WIPO Overview – except in limited circumstances which prima facie justify advancing an alternative legal argument, (iv) the provision of false evidence, or otherwise attempting to mislead the panel, (v) the provision of intentionally incomplete material evidence – often clarified by the respondent, (vi) the complainant’s failure to disclose that a case is a UDRP refiling, (vii) filing the complaint after an unsuccessful attempt to acquire the disputed domain name from the respondent without a plausible legal basis, (viii) basing a complaint on only the barest of allegations without any supporting evidence”.

For reasons discussed below this Panelist considers that various of these factors are present in the instant case.

The Disputed Domain Name comprises two ordinary English words namely “green” and “roads”. It is self evidently possible that a domain name involving those words could be independently derived without any knowledge of the Complainant or its trademarks. The Respondent’s filed evidence convincingly demonstrates that (unsurprisingly) domain names involving the word “green” are very common. In the present case it should have been obvious to the Complainant that a case of independent derivation would be advanced. Specifically the Disputed Domain Name was registered in 2006 some eight years prior to the first date the Complainant asserts its GREEN ROADS trademark was used. Absent specific circumstances that indicate the Respondent had in some way anticipated the Complainant’s intention to use such a trademark that fact would normally be fatal to a Complaint, and the Complainant, through its attorneys either knew or should have known such was the case. This position is clearly explained in WIPO Overview 3.0 as follows: “Subject to scenarios described in 3.8.2 below, where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent”. Section 3.8.2 deals with registrations made in anticipation of trademark rights. No attempt is made in the Complaint to allege any particular specific circumstances that alter the normal position including any facts of the type described in section 3.8.2. In those circumstances a complaint is doomed to failure unless of course an intervening change of registrant has occurred – see WIPO Overview 3.0, section 3.9, and in particular “On the other hand, the transfer of a domain name registration from a third party to the respondent is not a renewal and the date on which the current registrant acquired the domain name is the date a panel will consider in assessing bad faith. This holds true for single domain name acquisitions as well as for portfolio acquisitions”. In the present case it is true that when the Complaint was originally filed, the Respondent’s identity was anonymised. However no attempt was made in the Complaint to allege that there had been any relevant change of registrant beyond a single unsupported statement that the Disputed Domain Name had been “updated on November 21, 2017”. No attempt was made to explain what this “update” was, whether it was relied upon, and if so on what basis. Any difficulties in the Complainant’s case arising out of the fact that the date of registration of the Disputed Domain Name was long before the Complainant adopted its trademark were simply ignored. Following disclosure by the Registrar, the Amended Complaint identified IMG, INC as the substantive Respondent. Again, no attempt was made to allege that there had been any relevant change of registrant beyond a single unsupported statement that the Disputed Domain Name had been “updated on November 21, 2017”.

The Complainant’s supplemental filing belatedly attempts to deal with overcoming the fundamental defect in the Complainant’s case. It does so in the following terms:

“Because the Registrant chose to hide its identity from the period of October 3, 2014 through October 23, 2018, and because the Respondent has admittedly misplaced the records showing that it retained the domain for the entire duration of the registration, Complainant cannot assume that there was no change of hands between related entities or bad faith at play here. Respondent’s use of a privacy service in an attempt to conceal his true identity is a further indication of bad faith of registration and use. BMEzine.com, LLC. v. Gregory Ricks / Gee Whiz Domains Privacy Service, Case No. D2008-0882.

Interestingly, Complainant brought a complaint against the Registrar, Uniregistrar, on October 18, 2018 to reveal the identity of the Registrant. Even before such identity was revealed by the Center, and before the Complainant was invited to amend the instant Complaint, the Respondent must have been notified/alerted of the Complaint, and updated the Registrant details to reflect IMG, INC on October 23, 2018. It has not yet come to light or fruition what sort of strategy was at play here, but the disclosure of the identity of the Respondent and its related companies surely was done in an effort to deny any plausibility in the instant proceeding. With the advice of Respondent’s counsel who has touted his mastery and manipulation in this field to serve his less-than-forthcoming clientele, Respondent further updated the nature of the advertisements that appear on the parked site in an effort to display its virtuosity.

It is entirely possible that Complainant had one federally registered trademark and a number of a pending USPTO applications at the time of the most recent registration of the disputed domain name, however, because of the hidden identity of the Registrant, Complainant has no way of proving a transfer. BMEzine.com, LLC. v. Gregory Ricks / Gee Whiz Domains Privacy Service, Case No. D2008-0882.

Further, even if the domain has not changed hands, it is obvious that the Respondent does not wish to maintain the domain for its own legitimate usage but to use leverage the instant proceedings as a means to increase the purchase price of the domain, at which point in can turn around and sell the same to a competitor of the Complainant.”

As to these arguments (i) whilst use of a privacy service may in some circumstances be a relevant factor in determining bad faith it is not usually determinative on its own; (ii) the Respondent’s case as to transfer of ownership is entirely speculative and is in any case advanced even if there has been no transfer at all; (ii) the Respondent has by credible evidence shown that on the balance of probabilities an unbroken chain of ownership exists; (iii) the Complainant’s comments about the Respondent’s motives and intentions, and the Respondent’s counsel’s conduct, are unwarranted and unsupported and appear to be intended to bolster a case that cannot succeed on its merits. Further, the Complainant has provided no evidence as to whether it has attempted to examine historical records of how the Disputed Domain Name was used. In circumstances where it needed to show a relevant change of ownership if its case was to succeed it would seem that would have been an obvious enquiry to make. The Respondent has however adduced such evidence, which shows a consistent historical use by linking the Disputed Domain Name to a PPC parking page. The content of that page has changed over time, but there is nothing in the relevant material that gives rise to any inference that ownership at any point might have changed.

In this Panelist’s view the above matters would likely be sufficient to give rise to a finding of RDNH. However, matters do not rest there. In the Response, the Respondent alleged that the Complainant had through an intermediary made five attempts to enquire about purchasing the Disputed Domain Name. These attempts were possible because the relevant parking page contained a link enabling offers to purchase to be made. The Respondent alleged that two attempts were made in September 2017 and three in January 2018.

The Complainant’s supplemental filing accepts that the enquiries concerned were made on behalf of the Complainant. The details of the enquiries in question and any subsequent communications have not been provided to the Panel but it is to be noted that no information about these enquires was provided in either the original or amended Complaint. It is difficult to see how the Complainant could have properly certified (as it did) that “the information contained in this Amended Complaint is to the best of the Complainant’s knowledge complete and accurate” when it had failed to disclose it had made repeated attempts through an agent to enquire about purchasing the Disputed Domain Name. It seems to this Panelist that the Complaint was materially incomplete, and this cannot have been inadvertent, and that it was only as a result of the Respondent providing its evidence, that this information was placed before the Panel. This seems to this Panel to be determinative in relation to a finding of RDNH.

In all the circumstances this Panelist would respectfully disagree with the majority and make a finding of Reverse Domain Name Hijacking.

Nick J. Gardner
Panelist


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