BODIS

John Berryhill slamdunks Complainant in MODZ.com #UDRP with #RDNH

RDNH finding.

A French company, Modz of Arnas, filed a UDRP against the aged domain, Modz.com.

Registered in 1998, the domain is in reference to gaming modification files, or “modz” in gaming parlance.

The Respondent’s attorney, John Berryhill, pointed that out:

The term “modz”, a commonly used alternative to “mods”, is a generic term used in the gaming and computer hobbyist market to refer to aftermarket modifications. There are many trade marks in the United States which incorporate this term.

The Respondent acquired the Disputed Domain Name in 2008 for the purpose of establishing an online retail business relating to video gaming. The Respondent sold gaming accessories (or “modz”) via his online store. The Respondent has provided evidence of his use of the Disputed Domain Name in that way.

Although it appears that such use isn’t actively made, currently, and the domain is listed for sale for $150,000 dollars, a three member panel at the WIPO ordered it to remain with the Respondent.

They also slapped the French company with a finding of reverse domain name hijacking; these are the three panelists at the WIPO that came to this favorable decision: John Swinson, Christophe Caron and Tony Willoughby.

Full details on this case follow below:

WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Modz v. He Ming Huang
Case No. D2017-2008

1. The Parties

The Complainant is Modz of Arnas, France, represented by Marion le Marchard Avocat, France.

The Respondent is He Ming Huang of Chicago, Illinois, United States of America (“United States”), represented by John Berryhill, United States.

2. The Domain Name and Registrar

The disputed domain name <modz.com> (the “Disputed Domain Name”) is registered with Fabulous.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 17, 2017. On October 17, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 20, 2017, 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 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 30, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 19, 2017. On November 16, 2017, the Respondent requested an automatic 4-day extension of the deadline to file the Response. The Center granted the requested extension and confirmed that the new deadline for the Response was November 23, 2017. The Response was filed with the Center on November 23, 2017.

The Center appointed John Swinson, Christophe Caron and Tony Willoughby as panelists in this matter on December 18, 2017. 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 Complainant is Modz, an online fashion retailer based in France. The Complainant owns French registered trade mark number 3484351 for MODZ, which was registered on February 22, 2007 (the “Trade Mark”). The Complainant operates its online store from the domain name <modz.fr>.

The Respondent is He Ming Huang, a professional poker player who lives in the United States.

The Disputed Domain Name was registered on May 20, 1998. It is not in dispute that the Respondent acquired the Disputed Domain Name in 2008. According to the Complaint, the Respondent acquired the Disputed Doman Name on July 9, 2008.

At the time the Complaint was filed, the website at the Disputed Domain Name featured pay-per-click (“PPC”) links, most of which relate to the gaming and computer industry.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions.
Identical or Confusingly Similar

The Disputed Domain Name fully incorporates the Trade Mark. The Disputed Domain Name is identical to the Trade Mark. The generic Top-Level Domain (“gTLD”) “.com” has no significance to this comparison.
Rights or Legitimate Interests

The website at the Disputed Domain Name features random commercial links, including to the Complainant’s website. The website otherwise appears to be idle. The Respondent has never used the Disputed Domain Name for offering goods or services. The Respondent registered the Disputed Domain Name without any clear intention to use it.

The Respondent acquired the Disputed Domain Name more than a year after the Trade Mark was registered, and months after the Complainant registered its own domain name. It is most likely that the Respondent was aware of the Trade Mark at the time he registered the Disputed Domain Name.
Registration and Use in Bad Faith

The Respondent is undoubtedly aware of the Trade Mark, as one of the links on the website at the Disputed Domain Name relates to the Complainant’s business. The Respondent is deliberately causing a likelihood of confusion as to the source or sponsorship of the website at the Disputed Domain Name with the intent for commercial gain. The Respondent intends to divert consumers or tarnish the Trade Mark.

In June 2016, the Complainant offered to purchase the Disputed Domain Name from the Respondent. The Respondent advised that the Disputed Domain Name may be for sale for USD 150,000. This amount exceeds the out-of-pocket expenses relating to the Disputed Domain Name. The Complainant attempted to contact the Respondent again after the initial offer, but did not receive a response.

As such, the Disputed Domain Name was registered and is being used in bad faith.

B. Respondent

The Respondent makes the following contentions.
Identical or Confusingly Similar

The Complainant has a registered trade mark. It satisfies the minimum criteria of the first element of the Policy.
Rights or Legitimate Interests

The term “modz”, a commonly used alternative to “mods”, is a generic term used in the gaming and computer hobbyist market to refer to aftermarket modifications. There are many trade marks in the United States which incorporate this term.

The Respondent acquired the Disputed Domain Name in 2008 for the purpose of establishing an online retail business relating to video gaming. The Respondent sold gaming accessories (or “modz”) via his online store. The Respondent has provided evidence of his use of the Disputed Domain Name in that way.

The Respondent discontinued his retail operation in 2009 and parked the Disputed Domain Name in PPC monetization, based on the value of “modz” as a generic keyword. Apart from a brief period during 2011 and 2012, the PPC links displayed on the website at the Disputed Domain Name have mostly related to the generic meaning of “modz” in the gaming market.
Registration and Use in Bad Faith

The Respondent originally acquired and used the Disputed Domain Name in 2008 for the purpose of establishing and operating an online retail business relating to video gaming. When the business failed to meet the Respondent’s expectations the Respondent commenced use of the Disputed Domain Name for the purposes of generating pay-per-click revenue from advertising links almost exclusively devoted to gaming products. That use continues today.

To the extent that any of the advertising links relate to the Complainant’s business, that is something that is down to the Complainant. The Respondent explains:

“The Complaint and its Exhibits…make it clear that the Complainant has managed to buy “modz” as a paid, geo-targeted search keyword, in order to appear among the search results generated by the advertising system, among what is obviously otherwise a roster of gaming and computer accessory vendors. That is a significant distinction of this case in relation to other “PPC targeting” scenarios, in which the domain keywords themselves are clearly and deliberately based on the goods or services of a trademark claimant.”

The Respondent has received numerous offers from third parties interested in purchasing the Disputed Domain Name since he acquired the Disputed Domain Name in 2008. The Respondent has consistently either indicated that he is not willing to sell, or not willing to sell for a low price. In 2009, the Respondent received an offer of USD 4,000 from the Complainant, which the Respondent rejected. At that time, the Complainant did not mention the Trade Mark. The Complainant has failed to disclose this previous attempt to purchase the Disputed Domain Name.

The Respondent has never sought to use the Disputed Domain Name to advertise clothing. Until this proceeding was launched the Respondent was wholly unaware of the existence of the Complainant’s business. The Complainant has registered a generic term as a trade mark, and is using it to operate an unknown French business. The Respondent has used the Disputed Domain Name in its generic sense. The Respondent did not register, and is not using, the Disputed Domain Name in bad faith.

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, namely:

(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(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.

The onus of proving these elements is on the Complainant.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.

The Trade Mark is wholly incorporated into the Disputed Domain Name with no other terms added. The Disputed Domain Name is identical to the Trade Mark.

The Complainant succeeds on the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.

In light of the Panel’s finding in relation to registration and use in bad faith below, the Panel is not required to consider this element of the Policy. However, the Panel will briefly address key aspects of this element for completeness.

The Panel considers that the Respondent has rights to or legitimate interests in the Disputed Domain Name.

The Respondent has consistently used the Disputed Domain Name in connection with its generic meaning, being a colloquialism used in the gaming and computer industry for an aftermarket modification.

After acquiring the Disputed Domain Name in 2008, the Respondent initially used the Disputed Domain Name to establish and operate an online retail store offering gaming accessories (known as “modz”). The Respondent has provided evidence of his use of the Disputed Domain Name in that way.

The Respondent closed his online store in 2009, and since that time has used the website at the Disputed Domain Name to display PPC links. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the Respondent’s use of the Disputed Domain Name to host a website displaying PPC links is permissible given that the Disputed Domain Name consists of a generic term, and the links generally relate to the generic meaning of that term.

The Panel is satisfied that both uses of the Disputed Domain Name by the Respondent are legitimate. The Respondent succeeds on the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent has registered and is using the Disputed Domain Name in bad faith.

At the time the Respondent acquired the Disputed Domain Name, the Complainant had owned the Trade Mark for around one year, and had only registered its own domain name approximately two months earlier. The Complainant submits that the Respondent was “undoubtedly” aware of the Complainant when he acquired the Disputed Domain Name.

However, as the Respondent submits, the Complainant has provided the Panel with no evidence of its reputation (whether within or outside of France), nor has it provided any persuasive evidence that the Respondent specifically registered the Disputed Domain Name with the Complainant or the Trade Mark in mind. The only evidence put forward by the Complainant in this regard is the fact that for a short time one of the advertising links on the Respondent’s PPC page led to the Complainant. The Respondent puts this down to the purchase by the Complainant of “modz” as a “paid, geo-targeted search keyword, in order to appear among the search results generated by the advertising system.” The Panel sees no reason to doubt this explanation of the Respondent.

The Respondent denies all knowledge of the Complainant’s business at the relevant time. There is no reason for the Panel to believe that the Respondent was aware of the Complainant or the Trade Mark at the time he acquired the Disputed Domain Name.

Further, the Complainant’s contention that the Respondent has never actively used the Disputed Domain Name is incorrect. As previously mentioned, the Respondent acquired the Disputed Domain Name in 2008 for the purpose of establishing and operating an online retail store relating to gaming accessories. The Respondent has provided evidence of this. Had the Complainant conducted any of its own investigations prior to filing its Complaint, it could have discovered this information.

The Complainant also submits that the Respondent acquired the Disputed Domain Name solely for the purpose of selling the Disputed Domain Name for an amount in excess of its out of pocket expenses. Again, given the Respondent’s use of the Disputed Domain Name for the purpose of operating an online retail store, the Panel does not accept this claim.

Of more concern to the Panel is the Complainant’s selective account of the Complainant’s prior dealings with the Respondent. The Complainant provided evidence of its attempt to purchase the Disputed Domain Name from the Respondent in 2016. However, it has blatantly omitted to mention that it had previously attempted to purchase the Disputed Domain Name from the Respondent in 2009. At that time, the Complainant made an unsolicited offer to the Respondent of USD 4,000, which the Respondent refused. During that exchange, the Respondent informed the Complainant that he had acquired the Disputed Domain Name for personal use. The Complainant made no mention of its Trade Mark rights at that time.

The Complainant’s failure to disclose this exchange is unacceptable, as it demonstrates not only that the Complainant’s contention that the Respondent acquired the Disputed Domain Name for the sole purpose of reselling it is false, but also that the Complainant was aware of this falsity and filed the Complaint anyway.

The Panel finds that the Respondent did not acquire the Disputed Domain Name in bad faith.

The Complainant makes further general statements, again unsupported by evidence, in relation to the Respondent’s use of the Disputed Domain Name to cause a likelihood of confusion as to the source or sponsorship of the website at the Disputed Domain Name with the intent for commercial gain. The Complainant submits that the Respondent intends to divert consumers or tarnish the Trade Mark.

None of these statements is supported by evidence. It is clear to the Panel that the Respondent has consistently used the Disputed Domain Name in a manner which corresponds with its generic meaning. The Respondent has never used the Disputed Domain Name in a way which trades off the reputation in the Trade Mark or causes a likelihood of confusion. The PPC links currently featured at the Disputed Domain Name direct Internet users to products and services which relate to the computer and gaming industry, and do not take advantage of any third party’s rights.

The Panel finds that the Respondent is not using the Disputed Domain Name in bad faith.

The Complainant does not succeed in establishing the third element of the Policy.

D. Reverse Domain Name Hijacking

In considering the Complaint and making its decision, the Panel must have regard to paragraph 15(e) of the Rules. In particular, that paragraph states:

“If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”

Reverse domain name hijacking (“RDNH”) is defined in paragraph 1 of the Rules as meaning “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”

The Respondent has not specifically sought a finding of RDNH in this case. However, it is open to the Panel to make such a finding without a request from the Respondent. In fact, the Panel in Dumankaya Yapi Malzemeleri SAN. VE TIC. A.S v. Domain Administrator, Name Administration Inc. (BVI), WIPO Case No. D2015-1757 stated that “[i]f abuse is apparent on the face of the case papers, the Panel is under an obligation to declare it”.

In this case, the Panel considers that the Complainant omitted or misrepresented key communications between the Complainant and the Respondent. The Complainant’s earlier offer to purchase the Disputed Domain Name was only disclosed by the Respondent. The Panel considers the Complainant’s filing of the Complaint was “Plan B” following several failed attempts to purchase the Disputed Domain Name at what it considered to be a reasonable price.

As stated by the Panel in Chuan Sin Sdn. Bhd. v. Internet Admin (not for sale), Reflex Publishing Inc., WIPO Case No. D2014-0557:

“When the Complainant filed the Complaint, the Complainant knew that there was no proper basis for the Complaint yet it went ahead and filed the Complaint. This alone merits a finding of RDNH. See Dextra Asia Co., Ltd. v. Lakeside Enterprises Limited, WIPO Case No. D2012-0403. In so doing the Complainant knew that it was accusing an innocent registrant of dishonesty (bad faith) in the hope that it could deprive the Respondent of the Disputed Domain Name. Moreover, the Complainant knew that if the Respondent were to retain the Disputed Domain Name, the Respondent would have to spend time and money and in all likelihood employ representation to defend itself. The Complainant also knew that even if it lost the case, it would not be called upon to compensate the Respondent”.

There is nothing in the way of solid evidence to suggest that the Respondent has been targeting the Complainant or the Trade Mark, or that would otherwise support a finding of bad faith. If nothing else, the Complainant is greatly overreaching with respect to its perceived rights in this name.

In light of the above, the Panel finds that the Complainant has used the Policy in bad faith “to attempt to deprive a registered domain name holder of a domain name”. The Panel finds that the Complainant has committed Reverse Domain Name Hijacking.

7. Decision

For the foregoing reasons, the Complaint is denied.

John Swinson
Presiding Panelist

Christophe Caron
Panelist

Tony Willoughby
Panelist
Date: December 21, 2017

 


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