OpenTex, registrant of the domain Hummingbird.com acquired it some time in 2006; this 1994 generic .com domain became the target of Hummingbird RegTech, Inc., that filed a UDRP at the Forum (NAF.)
Hummingbird was a Canadian company founded in 1984. It became known for its flagship Exceed™ product, and evolved as a strong player in the connectivity market. In 1999, it diversified, entering the Enterprise Content Management (ECM) market.
In October 2006, OpenText™ acquired Hummingbird. Hummingbird’s enterprise software solutions, including Exceed, enabled the management of the life cycle of enterprise content. Hummingbird Connectivity Solutions were renamed and rebranded to OpenText and now live under the OpenText Connectivity family.
The Respondent did not file a response, but the sole panelist at Forum pointed out that the Respondent’s rights to the Hummingbird mark are senior to the Complainant’s.
Final decision: Deny transfer of the domain name Hummingbird.com to the Complainant. In our opinion, it could have been a finding of RDNH if only the Respondent had pushed for it.
The domain transfer was denied.
DECISION
Hummingbird RegTech, Inc. v. Open Text Corporation
Claim Number: FA2209002011918
PARTIES
Complainant is Hummingbird RegTech, Inc. (“Complainant”), represented by Rimon PC, Idaho, USA. Respondent is Open Text Corporation (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is hummingbird.com (“Domain Name”), registered with SafeNames Ltd..
PANEL
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Nicholas J.T. Smith as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on September 14, 2022; Forum received payment on September 14, 2022.
On September 15, 2022, SafeNames Ltd. confirmed by e-mail to Forum that the hummingbird.com domain name is registered with SafeNames Ltd. and that Respondent is the current registrant of the name. SafeNames Ltd. has verified that Respondent is bound by the SafeNames Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 15, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 5, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@hummingbird.com. Also on September 15, 2022, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On October 10, 2022, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
RELIEF SOUGHT
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant, Hummingbird RegTech, Inc., offers software and related services. Complainant asserts rights in the HUMMINGBIRD mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 6,674,792, registered March 22, 2022). Respondent’s hummingbird.com domain name is identical to Complainant’s HUMMINGBIRD mark because it consists of the mark in its entirety.
Respondent does not have rights or legitimate interests in the hummingbird.com domain name. Respondent is not licensed or authorized to use Complainant’s HUMMINGBIRD mark and is not commonly known by the Domain Name.
Respondent registered and uses the hummingbird.com domain name in bad faith. Respondent uses the Domain Name with knowledge of Complainant’s rights in the HUMMINGBIRD mark as Complainant has regularly sought to contact Respondent to obtain transfer of the Domain Name.
B. Respondent
Respondent failed to submit a Response in this proceeding. The hummingbird.com domain name was registered on December 1, 1994.
FINDINGS
Complainant having failed to establish bad faith registration of the domain name hummingbird.com has not established all required elements of its claim, and thus its complaint must be denied.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent’s failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Identical and/or Confusingly Similar
Complainant has rights in the HUMMINGBIRD mark based on registration with the USPTO (e.g Reg. No. 6,674,792, registered March 22, 2022). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) (“Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”).
The Panel finds that the hummingbird.com domain name is identical to Complainant’s HUMMINGBIRD mark as it wholly incorporates the HUMMINGBIRD mark and adds the gTLD “.com”. Adding a gTLD to a wholly incorporated trademark does not negate the similarity between a domain name and a mark under Policy ¶ 4(a)(i). See Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Rights or Legitimate Interests
In light of the Panel’s dispositive finding on the issue of registration and use in bad faith, the Panel declines to address the question of rights or legitimate interests.
Registration and Use in Bad Faith
The Panel finds that Complainant has failed to meet its burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Tristar Products, Inc. v. Domain Administrator / Telebrands, Corp., FA 1597388 (Forum Feb. 16, 2015) (“Complainant makes conclusory allegations of bad faith but has adduced no specific evidence that warrants a holding that Respondent proceeded in bad faith at the time it registered the disputed domain name. Mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith.”); see also Chris Pearson v. Domain Admin / Automattic, Inc., FA 1613723 (Forum July 3, 2015) (finding that the complainant could not establish the respondent registered and used the disputed domain name in bad faith because it failed to present evidence that would support such a holding).
Respondent’s registration of the hummingbird.com domain name predates Complainant’s first claimed rights in the HUMMINGBIRD mark, and thus Complainant cannot prove registration in bad faith per Policy ¶ 4(a)(iii), as the Policy requires a showing of bad faith registration and use. See Platterz v. Andrew Melcher, FA 1729887 (Forum Jun. 19, 2017) (“Whatever the merits of Complainant’s arguments that Respondent is using the Domain Name in bad faith, those arguments are irrelevant, as a complainant must prove both bad faith registration and bad faith use in order to prevail.”); see also Faster Faster, Inc. DBA Alta Motors v. Jeongho Yoon c/o AltaMart, FA 1708272 (Forum Feb. 6, 2017) (“Respondent registered the domain name more than a decade before Complainant introduced the ALTA MOTORS mark in commerce.”) Here, Respondent registered the Domain Name, which consists of a descriptive word, on December 1, 1994. Complainant does not provide any statements about when it was established or commenced use of the HUMMINGBIRD mark however its trade mark registration for the HUMMINGBIRD mark states that it was first used in commerce on January 15, 2017, more than 20 years after the Domain Name was registered. Respondent could not have entertained bad faith intentions respecting the HUMMINGBIRD mark because it could not have contemplated Complainant’s then non-existent rights in HUMMINGBIRD mark at the moment the domain name was registered.
Complainant makes reference to statements on the Respondent’s website suggesting that Respondent acquired an entity known as Hummingbird in 2006. This is irrelevant to the outcome, as even if Complainant acquired the Domain Name in 2006, this still predates Respondent’s first use of the HUMMINGBIRD mark.
Therefore, the Panel finds Respondent did not register the Domain Name in bad faith.
DECISION
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the hummingbird.com domain name REMAIN WITH Respondent.
Nicholas J.T. Smith, Panelist
Dated: October 12, 2022
