UDRP: Loss for the Respondent.
If you jumped into the dot .APP namespace believing that the domains will sell like hot cakes, better watch out.
Even generic keywords, when used in conjunction with the “app” part might infringe on existing applications and other software.
In the case of the domain Hike.APP, its registrant was sent to the WIPO via the UDRP process.
Having registered 300 dot .APP domains, the Respondent is most definitely a domain investor, offering them for sale. Regardless of the development potential of some of these domains, no-one truly expects to develop 300 domains!
An Indian company that claims 100 million users of its Hike app in India, filed the UDRP.
Hike Private Limited of New Delhi, India asserts sufficient utilization of its application in the US and other markets outside of India. They operate from the domain name Hike.in.
The Respondent attempted to defend his registration in a series of arguments, without utilizing the services of a qualified attorney. The WIPO panelist sided with the Complainant, ordering the transfer of the domain Hike.APP.
Full details of this decision follow:
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hike Private Limited v. Jared Hanstra
Case No. D2018-15881. The Parties
The Complainant is Hike Private Limited of New Delhi, India, represented by Scriboard Advocates & Legal Consultants, India.
The Respondent is Jared Hanstra of Niles, Michigan, United States of America (“United States”), self-represented
2. The Domain Name and Registrar
The disputed domain name <hike.app> 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 July 13, 2018. On July 13, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 13, 2018, 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 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 July 25, 2018. On July 31, 2018, the Center received an email communication from the Complainant. In accordance with the Rules, paragraph 5, the due date for Response was August 14, 2018. The Response was filed with the Center on August 9, 2018. On August 14, 2018, the Complainant submitted a supplemental filing.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on August 24, 2018. 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. On August 31, 2018 at the request of the Panel, the Center issued Procedural Order No. 1 to the Parties affording the Respondent seven calendar days to comment on the Complainant’s assertions included in its supplemental filing submitted on August 14, 2018. In response to Procedural Order No. 1, the Respondent submitted a supplemental filing on September 7, 2018.
4. Factual Background
The Complainant was incorporated on October 13, 2011 and is the owner and operator of an instant messaging mobile application (“app”) named “Hike Messenger” or “Hike” which was launched on December 12, 2012. The app crossed the 100 million users mark in January 2016 at which time it was logging a monthly messaging volume of around 40 billion messages. It is available on all popular mobile application platforms and, for example, has been installed more than 50 million times from the Google Play Store.
The Complainant is the owner of a portfolio of registered trademarks for the HIKE mark both in word and figurative or stylized varieties dating back to 2011, including, for example, Indian registered trademark no. 3567602 for the word mark HIKE filed on June 9, 2017 and registered on December 18, 2017. The Complainant also owns 168 domain names containing the term “hike” including the domain used for its present official website at “www.hike.in” which it says is a comprehensive, unique and acclaimed introduction to its brand.
The Complainant claims a total spend of USD 57 million between 2013 and 2018 in respect of its promotion of services and products under the HIKE mark. It maintains a YouTube channel with around 123,000 subscribers and featuring videos which have had more than 100 million views, together with a “Facebook” and “Twitter” presence. Each of these social media channels uses the Complainant’s term “HikeApp”.
The Complainant’s “Hike” app has gained widespread popularity in India and the Complainant also claims goodwill and an unspecified number of subscribers to its app in the United States. It describes the United States subscribers as substantial, having gradually increased due to the presence of large communities of nationals from other countries, including India. In 2015, the Complainant acquired a company based in the United States named “ZipPhones” and says that this acquisition was reported by numerous publications in the United States and internationally. The Complainant is funded by companies based in the United States and provides evidence that one of its funding deals has been reported in the Wall Street Journal in the United States, among other media.
The disputed domain name was created on May 5, 2018. The Respondent describes its business, named Coprime LLC (“Coprime”), as “nascent”, a developer of wildly diverse businesses and ideas, and a collection of disparate projects and investments. Coprime’s “Mission & Vision” page on its website notes that it has invested in over 300 “.app” domain names.
The Respondent asserts that it registered the disputed domain name as a common dictionary word for the purposes of creating a hiking application similar to that produced by “AllTrails”. On June 12, 2018, the Respondent engaged in email correspondence with a third party which was interested in acquiring the disputed domain name. The Respondent replied to this third party that the disputed domain name was available for purchase but its asking price, USD 16,000, was somewhat high because the Respondent had thoughts about using it as a hiking app at some time in the future. The Respondent added that it was open to negotiation but the third party was unwilling to accept the Respondent’s asking price.
According to a screenshot produced by the Complainant dated July 13, 2018, the website associated with the disputed domain name originally sought advertisers by stating “Advertise with us / We’re seeking quality products and brands to partner with us to fill this space on over 300 high-traffic domains”. Below this statement were links to Coprime’s website, followed by the disputed domain name in large letters beneath which was a “Buy it Now” price of USD 15,000 and an invitation to make offers therefor. At some point between July 13, 2018 and July 25, 2018, the Respondent removed this website and replaced it with a page entitled “hike / Explore your world / A Coprime project. Coming soon”.
Coprime’s website at “www.coprime.io” features a page containing a large list of .app domain names for sale at various prices, on which page the disputed domain name is priced at USD 15,400. Among the Respondent’s other domain names listed for sale are <headspace.app>, registered on the same date as the disputed domain name; and <hella.app>, <epsilon.app>, and <fixie.app>, each registered on May 8, 2018. The Complainant states that these and other domain names correspond to established apps and brand names.
Following upon notification of the Complaint, in an email to the Complainant dated July 25, 2018, the Respondent stated inter alia, “If you’d like to make an offer for the domain, we can discuss that separately – but otherwise I will continue to work on my projects, including [the disputed domain name], and you can work on yours.” The Respondent also noted in such email that it had already removed the original website at the disputed domain name.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which it owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant asserts that the HIKE mark is well known and that the disputed domain name has a direct reference to the Complainant’s mark, business and trading name which establishes an identity and connection with the Complainant and no one else. The Complainant produces Google searches for the words “Hike” and “Hike App” conducted at “www.google.co.in” which show that the first page results refer to the Complainant or its app.
The Complainant contends that the disputed domain name is identical to its HIKE mark. The Complainant asserts that the generic Top-Level Domain (“gTLD”) “.app” is descriptive and is a direct reference to the Complainant’s primary product, with reference to the registry operator’s explanation of the purpose of the gTLD which states that this is intended for apps and app developers. The Complainant contends that the gTLD increases the likelihood of confusion with the Complainant’s mark. The Complainant argues that its mark has become a distinctive identifier associated with the Complainant or their goods and services and has acquired a secondary meaning through continuous and extensive use.
The Complainant asserts that the Respondent has no proprietary or contractual rights in any registered or common law trademark corresponding in whole or in part to the disputed domain name, no connection with the Complainant or any company licensed by the Complainant, is not commonly known by the disputed domain name or the HIKE mark and is not licensed or authorized by the Complainant to register, hold or use the disputed domain name. The Complainant notes that its app has been available for download on all leading app stores across the world since 2012 and that the use of the gTLD “.app” indicates that the Respondent was aware of its HIKE mark. The Complainant concludes that it is highly improbable that the Respondent has any rights or legitimate interests in the disputed domain name.
The Complainant states that the Respondent has no active legitimate or bona fide business in the name of “Hike” or “Hike App” and could not use the disputed domain name for a legitimate purpose since it contains the Complainant’s registered trademark and name of its app, followed by the gTLD “.app” which is descriptive in nature and a direct reference to the Complainant’s primary product. The Complainant asserts that further evidence of a lack or rights or legitimate interests on the part of the Respondent stems from the fact that the Respondent is offering the disputed domain name for sale in the sum of USD 15,000, being an amount which greatly exceeds its direct registration and/or renewal cost.
The Complainant asserts that it is inconceivable that the registration of the disputed domain name was made without full knowledge of the existence of the Complainant and its HIKE mark. The Complainant argues that the use of the disputed domain name would result in immense confusion and deception due to the well-known status of its mark and contends that registration of a domain name which is identical or confusingly similar to such a mark is a clear indicator of bad faith. The Complainant submits that the Respondent’s offer for sale of the disputed domain name is a further indicator of bad faith. The Complainant states that it is reasonable to infer that the Respondent registered the disputed domain name with the intention to target the Complainant’s rights in some manner, adding that it would be extremely difficult, if not impossible, for the Respondent to use the disputed domain name as the name of any business, product or service for which it would be commercially useful without violating the Complainant’s rights and that any such use would necessarily be in bad faith.
In its supplemental filing, the Complainant notes that the Respondent has neither contested nor denied that the disputed domain name is confusingly similar to the Complainant’s mark, noting that confusing similarity was also found in Hike Private Limited v. Perfect Privacy LLC / Zcapital, WIPO Case No. D2017-0902 cited by the Respondent. The Complainant asserts that the fact that the Respondent has registered the disputed domain name in the “.app” gTLD confirms that its use of the HIKE mark relates to mobile applications.
The Complainant suggests that it is inconceivable that the Respondent was not aware of the Complainant’s HIKE mark or its app when registering the disputed domain name, adding that the “Hike” app is one of the most downloaded on the Google Play store and that the Complainant has been valued at USD 1.4 billion. The Complainant notes that it applied for United States trademarks in 2016, acquired a United States company in 2015, has a substantial number of users in the United States and has been funded by United States-based companies which are covered in the United States press.
The Complainant contends that the Respondent’s Google search in the United States for the phrase “Hike app” confirms that the Complainant is well known in that every single result on the first page pertains to the Complainant. The Complainant denies the Respondent’s assertion that the absence of featured sitelinks on such search indicates that the HIKE mark is not strong, adding that by such reasoning the Respondent should not have registered <headspace.app>. The Complainant provides evidence indicating that “Headspace” is a well-known and popular app and that a similar search for such app shows sitelinks.
The Complainant submits that “an overwhelming majority” of the domain names registered by the Respondent are infringing and targeting established, genuine businesses and bona fide brands and trademarks across the globe. The Complainant suggests that the Respondent meticulously researches and targets such established brands and provides a list of some eleven trademarks and brands which the Complainant says are being targeted by the Respondent’s domain names. The Complainant notes that the Respondent’s domain names <headspace.app>, <hella.app>, <epsilon.app>, and <fixie.app> correspond to established brands and trademarks and were registered in May 2018 along with the disputed domain name. The Complainant states that there can be no doubt that the Respondent knew of these brands at the point of registration, adding that the Respondent’s submission that Coprime is in the business of developing diverse businesses and ideas is a smokescreen to conceal a business model of selling domain names corresponding to known brands and trademarks. The Complainant asserts that it is impractical and unlikely that the Respondent could consider developing different projects for all 300 plus domain names which it has acquired. The Complainant submits that it is more plausible and reasonable that the Respondent registered such domains to sell or profit from them based upon the reputation of the corresponding brands, adding that the Respondent is seeking an exorbitant price for such domain names.
The Complainant notes that while the Respondent has taken down the offer to sell the disputed domain name from the website associated with the disputed domain name, it continues to offer it for sale on its company website along with the other “.app” domain names which it has registered. The Complainant adds that the Respondent offered to sell the disputed domain name to the Complainant in its email of July 25, 2018 and that it has actively solicited offers from third parties in the past, asserting that the Respondent’s statement that it plans to develop a hiking app in connection with the disputed domain name but is also ready to sell it is nothing more than a slightly veiled offer to sell it for an exorbitant price. The Complainant notes that the Respondent has not submitted any definite or concrete proof that it is developing a hiking app or plans to use the disputed domain name for a legitimate business. The Complainant adds that the Respondent’s change to the website associated with the disputed domain name is an afterthought which does not establish that the Respondent is creating a hiking app and that it is inconceivable that the Respondent is creating 300 such apps or projects.
The Complainant states that the Respondent has attempted to mislead the Panel by suggesting that the mission statement of Coprime contained the sentence “One such idea Coprime has ambitions to create is a hiking application similar to AllTrails (https://www.alltrails.com/) or Hike.io (http://hike.io/)” which the Complainant says is incorrect.
The Complainant states that it is inconceivable that the Respondent, which appears to be well-versed in technology, did not conduct a Google search before registering the disputed domain name. The Complainant asserts that the Respondent is likely to have performed a search before registering all of its domain names “since most of these registrations infringe upon third-party trademarks”. The Complainant asserts that the Respondent is a “domainer” dealing in bulk registration of domain names, noting that multiple panels have held that a professional domainer cannot be willfully blind to the trademark rights of third parties.
The Complainant asserts that the Respondent’s registration of multiple domain names corresponding to established brands constitutes a pattern of bad faith conduct. The Complainant states that the Respondent is an opportunistic individual who immediately registered hundreds of domain names under a recently launched domain name extension so as to prevent legitimate brand owners from acquiring domain names corresponding to their brands under the said extension, noting that similar cases have arisen under the Policy relative to other respondents. The Complainant asserts that the Respondent has priced its domain name portfolio according to the value and popularity of the existing brand.
B. Respondent
The Respondent requests that the Complaint be denied.
The Respondent notes that the word “hike” is a verb and a common dictionary word which has nothing to do with messaging, the Internet, apps or anything related to the Complainant, adding that this has been declared by a UDRP panel in the case of Hike Private Limited v. Perfect Privacy LLC / Zcapital, WIPO Case No. D2017-0902. The Respondent asserts that the disputed domain name is sufficiently general that no person can claim exclusive rights therein, even if the gTLD is the business of the Complainant. The Respondent states that the Complainant’s app is not the only app in the iOS or Android App Store branded with the word “hike”.
The Respondent asserts that the Complainant has no trademark claim in the United States to the word “hike” but only “Hike Messenger”. The Respondent concedes that it had no prior claim or association with the Complainant’s HIKE trademark, and adds that it has not and does not intend to infringe on that trademark by using the disputed domain for the purposes of messaging or anything similar to the Complainant’s business.
The Respondent asserts that it was not familiar with the Complainant’s brand when it registered the disputed domain name, adding that “Hike Messenger” is not a well-known messaging app in the United States and submitting that the Respondent was not aware of the size of the Complainant or of the pervasiveness of its brand before the dispute arose. The Respondent asserts and provides evidence that when performing a Google search for the word “hike”, the Complainant’s app does not appear on the first page of results in the United States. The Respondent also produces a Google search for the phrase “hike app”, noting that the Complainant’s app appears but asserting that the result does not carry an indication of the weight of the brand or suggest that it is a large global brand. The Respondent notes that the first three results are links to the Apple Store, Play Store and Wikipedia and that the results do not feature sitelinks which the Respondent says are a common trait of strong Internet brands.
The Respondent states that the description of Coprime’s business has been displayed on its homepage since before the Complaint was filed. The Respondent notes that this description states that Coprime has lots of compelling ideas for software startups. The Respondent explains that one such idea is to create a hiking application similar to “AllTrails” or “Hike.io”. The Respondent states that it purchased the disputed domain name together with over 300 other domain names to have at its disposal for the creation of app projects in the future, adding that almost all of its domains are common English words and slang and submitting that the domains were purchased with the intent to use many of them for future in-house projects and offering the rest at a reasonable price to future app developers based on their value as memorable names. The Respondent states that the price points of such domains are reflective of the approximate estimated value of the word or phrase, adding that the disputed domain name was not priced outstandingly higher than other domains of a similar nature. The Respondent notes that while it planned to develop a hiking app and to use the disputed domain name for that purpose, if a party offered a price that offset the opportunity cost of giving up such a high-value memorable domain name for such a use, the Respondent would consider giving up the benefits of the name and seek a different domain name (or use one of its other purchased domain names) for the project.
The Respondent produces an email thread which predates the filing of the Complaint and which it says features an interaction with a third party app developer, asserting that this shows its legitimate interest in creating a hiking app. The Respondent states that the third party was interested in purchasing the disputed domain name and that in its reply the Respondent makes no indication that it has reserved this domain to hold it to ransom against the Complainant, pointing out that it sets out an intention to use the disputed domain name for a hiking app in the future and that therefore its asking price is somewhat high.
The Respondent denies that it is impossible for the disputed domain name to be used by the Respondent or another app developer for a legitimate purpose because the term “hike” is a common word that can be and has been used by the app “hike.io” for a legitimate purpose especially in the United States where it says that the Complainant’s brand is not well known.
The Respondent states that it does not recall if it searched for “hike app” before registering the disputed domain name but adds that it did not think it necessary to consider whether any specific entity could have any rights to the disputed domain name. The Respondent notes that it intentionally did not want to encounter any trademark legal battles and avoided purchasing words and phrases with significant brands surrounding them that were not generic words or phrases and were not part of the common English vernacular.
The Respondent asserts that the examples of supposed predatory registration which the Complainant notes namely <hella.app>, <headspace.app>, <epsilon.app>, and <fixie.app> are all examples of common words and slang from the English vernacular that were in existence before their respective apps appeared, and are thus not a clear pattern of trademark abuse and bad faith. The Respondent submits that it did not register the disputed domain name with intent to sell it to the Complainant adding that this is proved by its exchange of email with a third party and noting that it made no contact with the Complainant to offer to sell the disputed domain name. The Respondent asserts that there is nothing sinister regarding its invitation for commercial proposals relative to such a valuable, common, short, one-word domain name such as the disputed domain name, adding that the Complainant is not the only party entitled to use such name, under reference to Hike Private Limited v. Perfect Privacy LLC / Zcapital, WIPO Case No. D2017-0902.
The Respondent states that it did not register the disputed domain name to mislead consumers into believing that the Respondent is associated with the Complainant, adding that this is abundantly apparent and asserting that no consumers have been misled. The Respondent provides evidence indicating that the disputed domain name has had 38 page views between May and August 1, 2018, which it states is an exceptionally small number that probably results from the Complainant and the Respondent’s activity and shows that the disputed domain name has not caused significant confusion to users of the Complainant’s app. The Respondent notes that it changed the landing page of the disputed domain to a promotional landing page for its hiking app after this dispute had been initiated which it states is an effort to reduce any confusion for the Complainant’s users.
In its supplemental filing, the Respondent asserts that Coprime cannot anticipate the exact nature of the projects it will pursue, adding that it bought generic domain names for such and will probably only use a small percentage for future projects, thus has listed its domain names for sale at a price that would allow it to recoup some of the associated costs. The Respondent states that it cannot predict what kind of applications it will want to create. The Respondent notes that its domain names have the potential to be valuable in the future, as they are common English words, and that some of the prices are high because they are valuable to the Respondent.
The Respondent notes that the disputed domain name was not priced higher than other similar generic one-word domain names and that some such domains were priced higher. The Respondent says that the disputed domain name was listed at a price the Respondent would accept to pursue its future project on some other domain name. The Respondent adds that its intent was to be fully transparent with the availability and offer price for its domain names and that it has received praise from interested buyers about its transparency.
The Respondent says that it did not target existing brands with malicious intent and directs the Panel to Coprime’s mission statement which it wrote long before the present proceeding and which shows what it hopes to achieve. The Respondent also produces a “Facebook” post announcing Coprime on July 25, 2018.
The Respondent concedes that <headspace.app> “blurs the line between common word and established brand”, adding that “headspace” is a dictionary word but not as common as others. The Respondent offers to transfer this domain name to the corresponding brand owner. With regard to the other domains of which the Complainant is critical, the Respondent repeats that these are common English words and slang, asserting that it had never heard of the brands before and did not register any of its domain names in connection with an established brand, adding that the domains represent a very small percentage of its portfolio and do not demonstrate predatory conduct.
The Respondent repeats that it had no knowledge of the Hike brand before it registered the disputed domain name and is unsure whether it performed any searches before doing so, adding that even if it had done so the search results suggest that “Hike Messenger” is a small, unknown app. The Respondent apologizes for any confusion in its communications and asserts that it is not a cybersquatter but a single developer with a young business and many ideas for future projects.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Preliminary Issue: Parties’ supplemental filingsParagraph 12 of the Rules provides that it is for the panel to request, in its sole discretion, any further statements or documents from the parties it may deem necessary to decide the case. Paragraph 10 of the Rules provides, inter alia, that the panel has authority to determine the admissibility, materiality and weight of the evidence. Unsolicited supplemental filings are generally discouraged, unless specifically requested by the panel. Panels have repeatedly affirmed that the party submitting or requesting to submit an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response.
In the present case, the Complainant filed a supplemental filing in which it sought to answer new matters raised by the Respondent in its Response and to deal with circumstances occurring after the date of filing of the Complaint. The Panel is satisfied that it is reasonable to admit this on the basis that the Complainant could not have anticipated significant elements of the Response, nor any circumstances relevant to the facts and circumstances of the case occurring after the filing of the Complaint at the time when the latter was prepared. Likewise, the Panel considered that having decided to admit the Complainant’s supplemental filing, it was fair and reasonable to allow the Respondent to have the opportunity to comment thereon and thus arranged for the Center to issue Procedural Order No. 1 to the Parties. The Panel is satisfied that the approach which it has taken to the supplemental filings in this case accords and is consistent with the general principles contained within paragraphs 10 and 12 of the Rules.
B. Identical or Confusingly Similar
There are two parts to the inquiry under the first element of the Policy. The Complainant must demonstrate both that it has rights in a trademark and that the disputed domain name is identical or confusingly similar to such trademark.
In the present case, the Panel finds that the Complainant has UDRP-relevant rights in its HIKE trademark by virtue of the registered trademark noted in the factual background section above. The Panel therefore turns to compare the disputed domain name to such mark. As noted in section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the applicable TLD is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. Section 1.11.2 of the WIPO Overview 3.0 goes on to state that this practice is applied irrespective of the particular TLD and that the ordinary meaning ascribed to a particular TLD would not necessarily impact assessment of the first element, adding that the meaning of such TLD may however be relevant to panel assessment of the second and third elements. The Panel does not therefore consider the significance of the “.app” TLD for the purpose of the present assessment.
Accordingly, the comparison is between the second level of the disputed domain name and the Complainant’s HIKE mark. Such mark is alphanumerically identical to the second level of the disputed domain name. In all of these circumstances, the Panel finds that the Complainant’s trademark is confusingly similar to the disputed domain name and thus that the first element under the Policy has been established.
C. Rights or Legitimate InterestsParagraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you 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 (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 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 consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name. In the present case, the Panel finds that the Complainant has established the requisite prima facie case based on its submissions that the Respondent has no rights in any corresponding trademark, has no connection to the Complainant, is not commonly known by the disputed domain name or a corresponding name and is not authorized by the Complainant to register, hold or use the disputed domain name. In these circumstances, the burden of production shifts to the Respondent to bring forward evidence of its rights and legitimate interests in the disputed domain name.
The essence of the Respondent’s case is that its “nascent” business has invested in some 300 “.app” domain names, including the disputed domain name, with intent to develop these into future businesses of a “wildly diverse” nature, albeit that ultimately only a small proportion will be developed and the remainder will be sold as high-value generic domain names. The Respondent indicates that the disputed domain name consists of a dictionary word and argues that it has rights and legitimate interests in registering such for its intended hiking application. At the same time, the Respondent does not deny that it is offering a portfolio of 300 domain names, including the disputed domain name, for sale at prices considerably in excess of the registration fees. At first sight, this appears to the Panel to be somewhat inconsistent with the notion that the Respondent intends to associate any of the domain names with apps which it proposes to develop.
Section 2.10.1 of the WIPO Overview 3.0 notes that panels have recognized that merely registering a domain name comprised of a dictionary word or phrase does not by itself automatically confer rights or legitimate interests on a respondent, adding that panels have held that mere arguments that a domain name corresponds to a dictionary term/ phrase will not necessarily suffice. The section goes on to indicate that in order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trademark rights.
In the present case, there is insufficient evidence before the Panel that the Respondent intended to use the disputed domain name in connection with the relied-upon dictionary meaning. No demonstrable preparations have been evidenced by the Respondent and, what is more, the Respondent admits that it does not intend or expect to create projects with any of its domain names beyond an unspecified small proportion. In the absence of such evidence, there is no basis upon which the Panel could accept that the disputed domain name is any different from the other domain names which the Respondent has registered but apparently does not intend to develop.
The Respondent endeavors to single out the disputed domain name by putting forward a prior email exchange with a third party as evidence of its intent to develop the same. However, this email merely repeats its alleged intent regarding a putative hiking application which it says that it “has thoughts about” while nevertheless seeking to sell the domain name, or any other among the 300 domain names on the Respondent’s site, to such third party. This, in the Panel’s view, does not constitute “demonstrable preparations” within the meaning of the Policy. Neither is the Respondent’s change to the homepage associated with the disputed domain name of any evidential value given that the Respondent indicates that this was done in an effort to reduce any confusion for the Complainant’s users and thus after it became aware of the Complainant’s concerns. Neither is the Respondent’s social media announcement of the launch of Coprime of significance, as this occurred on the date of notification of the Complaint. Furthermore, once the Respondent knew of the Complainant’s concerns, it must be noted that it persisted in offering the disputed domain name for sale to the Complainant. This does not appear consistent with its alleged intent to develop an app in connection with the dictionary meaning of the word “hike”.
For its part, the Complainant focuses in particular on the fact that the disputed domain name has been registered within the “.app” TLD, which it says was conceived and launched by the registry for use in connection with mobile applications. It is a central element of the Complainant’s case, accompanied by substantial evidence, that the Complainant has established a very strong presence under its well-known HIKE trademark in that particular arena. In these circumstances, the fact that the Respondent coupled the Complainant’s mark with the “.app” TLD may be of considerable significance provided that the TLD itself is relevant to the assessment of its rights and legitimate interests. Sections 2.14.1 and 2.14.2 of the WIPO Overview 3.0 address this topic. Specifically, section 2.14.1 notes that particularly where the TLD is descriptive of or is a term associated with the complainant, the respondent’s selection of such TLD would tend to support a finding that the respondent obtained the domain name to take advantage of the complainant’s mark and as such that the respondent lacks rights or legitimate interests in the domain name. Section 2.14.2 provides the corollary of this proposition, noting that if the meaning of the TLD appears to corroborate the respondent’s bona fide use or demonstrable preparations to use the domain name, the selection of the TLD may support respondent rights and legitimate interests.
It appears to the Panel that a major challenge for the Respondent in seeking to establish rights and legitimate interests in the disputed domain name is that the Complainant’s line of business is intimately and directly connected with the meaning behind the “.app” TLD. While there may be other apps which might feature a descriptive connection to the word “hike”, it is only the Complainant with whom a very large number of consumers, in excess of 100 million users, would associate the phrase “Hike app”. A further challenge for the Respondent’s case is the fact that it has failed to provide anything other than an assertion and the statement on its website/social media to stand as demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods and services. The Complainant’s criticism of the Respondent’s case that it is extremely unlikely that the Respondent could have intended to develop apps for all of its “.app” domain names holds water, particularly as the Respondent acknowledges that it has no intent to build businesses in respect of all of its domain names. Why, then, should the Panel accept that the disputed domain name should be singled out as one of the “small percentage” of domain names in respect of which the Respondent now says that it intends to make a bona fide offering of goods or services? How does this sit with the Complainant’s contention that a selection of the Respondent’s domain names appears to target the rights of third parties who are already engaged in the mobile application business?
To take just one example from several for which the Complainant has provided detailed evidence, according to the corresponding WhoIs record, the Respondent’s domain name <headspace.app> was registered some 13 seconds before the disputed domain name. The Panel is unaware if there is any special significance in this timing, for example whether the registrations were queued at the Registrar, but in any event the Respondent has not explained the close proximity between the two registrations to the Panel’s satisfaction. The Complainant shows, via a “Wikipedia” page which links to relevant mainstream media articles, that “Headspace app” refers to an extremely popular app with more than a million users worldwide, as at 2014. In other words, “Headspace”, in the context of an app rather than a dictionary phrase, happens to be a well-known, popular service with a large number of users and, in that context, is similar to the Complainant’s app. When the Respondent was challenged on this, it asserted that the phrase can also have a dictionary meaning but was prepared to accept that this is the one domain in its portfolio which “blurs the line between common word and established brand”. The Complainant however produces some 11 other domains which it shows are established mobile application brands. The Respondent makes the same argument that these are all common dictionary words although it does not explain why it does not consider that these “blur the line” in a similar fashion beyond a bare and unsupported assertion that the word “headspace” is not as common in the English language as many of the others. In any event, the presence of such domain names further raises the Panel’s suspicions regarding the Respondent’s intent.
The Panel might have accepted the notion that the Respondent could have inadvertently registered the name of one very well-known app due to a business plan connected with use of a dictionary term. However, the presence of two or more such examples, in the absence of evidence of any demonstrable preparations to use the domains in connection with a bona fide offering of goods or services, appears to the Panel to take matters beyond mere coincidence. The Respondent acknowledges this, at least to some degree, by reference to its comments on the <headspace.app> domain name which it says that it is prepared to transfer to the brand owner concerned. Nevertheless, when it is brought to the Panel’s attention that the registration of the disputed domain name is not an isolated incident and that, on the contrary, the Respondent can be shown to have made several such registrations at around the same time, the Respondent’s explanation relating to dictionary words and slang terms ceases to ring true for the Panel.
In all of these circumstances, the Panel considers that the Respondent has failed to produce evidence which is sufficient to rebut the Complainant’s prima facie case and accordingly finds that the Respondent has no rights or legitimate interests in the disputed domain name. The second element under the Policy has been established.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, 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 you have registered or you have 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 your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.
In the present matter, the Complainant focuses on the Respondent’s offering of the disputed domain name for sale, effectively a case under paragraph 4(b)(i) of the Policy. The Complainant also refers to the other domain names registered by the Respondent which appear to target third party rights owners, most notably <headspace.app> as outlined in section 6C of this Decision, effectively a case under paragraph 4(b)(ii) of the Policy. The Respondent argues that there is nothing sinister in its invitation for commercial proposals for valuable, common, short, one-word domain names such as the disputed domain name and adds that it had no knowledge of the Complainant or its app when it registered the disputed domain name.
As indicated by the Panel in the discussion above regarding the Respondent’s case on rights and legitimate interests, the apparent targeting of the “Headspace” branded app seconds before the disputed domain name was registered, in the Panel’s view, irrevocably taints the Respondent’s assertion of a lack of knowledge of the Complainant or its rights. One example of such a registration in connection with the “.app” domain may be inadvertent, possibly careless or potentially “willfully blind” to the rights of trademark owners (on which latter subject, see, for example, Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; and Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448). Two or more such examples, in very close proximity, clearly points on the balance of probabilities towards knowledge and intent to target the rights of the brand owners concerned and thus to registration and use in bad faith.
The Respondent focuses on Hike Private Limited v. Perfect Privacy LLC / Zcapital, WIPO Case No. D2017-0902 (“the Zcapital case”) by way of its assertion that the Complainant is not the only person who could use “hike” or “hike app”. This case, in which the complainant was also the present Complainant, was however decided upon very different facts from the instant case. In the first place, the domain name concerned, <hike.com>, had been registered many years before the Complainant’s rights came into being. The disputed domain name in the present case was created some six years after the launch of the Complainant’s app and two years after it marked the milestone of 100 million users. The Complainant in the Zcapital case was required, and failed, to show that the domain name concerned had recently undergone a material change in ownership. No such issue arises in the instant case.
Furthermore, in the Zcapital case, the Complainant was unable to show that the domain name at issue was registered with the Complainant’s mark in mind, given that the domain name consisted of the dictionary term “hike” and there was no significance arising from the TLD “.com”. The instant case is substantively different in that the use of the “.app” TLD gives rise to an immediate suggestion of targeting which is fortified and confirmed, on the balance of probabilities, by the proximity of the registration of another domain name featuring the brand of another well-known and popular app. This does not suggest an incidental use of a dictionary word or phrase and it does not surprise the Panel that the Respondent now offers to transfer that particular domain name to the rights owner concerned. Finally, in the Zcapital case, the panel found that the respondent’s registration of the relative domain name was “overwhelmingly more consistent” with its registration of a portfolio of generic domain names, a practice in which it had engaged for many years before the Complainant’s rights were established, than with any intention to target or take unfair advantage of the Complainant’s trademark. For the reasons outlined above, the Panel in the instant case considers that the facts and circumstances here point in the opposite direction.
For the sake of completeness, the Panel notes that it does not accept the Complainant’s contention that the Respondent attempted to deliberately mislead the Panel by making any implication in the Response that its alleged plans to develop the disputed domain name were contained within Coprime’s mission statement. The Respondent’s quotation of the mission statement is clearly marked out from its subsequent comment in the Response by way of quotation marks. The key to the failure of the Respondent’s case lies in the absence of suitable evidence of genuine intent to develop this or any other of its domain names for a good faith purpose, together with the fact that it has evidently registered the names of other well-known mobile application brands in a manner which appears to the Panel to be more than coincidental.
It follows from the above analysis that the Panel finds that the disputed domain name has been registered and is being used in bad faith and therefore that the third element of the Policy has been established.
7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <hike.app> be transferred to the Complainant.
Andrew D. S. Lothian
Sole Panelist
Date: September 14, 2018
Is there an obligation to develop .app names?