Karma.com : Baseless #UDRP ends in Reverse #Domain Name Hijacking finding

Karma.com and its owner, Mr. David Malaxos, were vindicated; the UDRP against the 1994 registration ended with a Reverse Domain Name Hijacking finding.

The Respondent registered the domain in 1994, and the claims made by the Complainant, Karma International LLC, were rebutted by the Respondent’s attorney, David E. Weslow of Wiley Rein LLP.

According to the UDRP, these facts delivered a finding favoring the Respondent:

• Respondent registered the disputed domain name on November 28, 1994
• Complainant uses the name KARMA for a private membership organization and filed trademark application Serial No. 88/124,089 with the United States Patent and Trademark Office (“USPTO”) on September 19, 2018 to register that name
• There is no commercial or other relationship between the parties other than when in 2009 Complainant tried unsuccessfully to purchase the disputed domain name from Respondent.

The three member panel at the National Arbitration Forum stated:

The Panel is in agreement with Respondent’s submissions and finds, on any construction of the facts, that Complainant knew or should have known that it was unable to prove its Complaint. The explicit claims to bad faith registration and use made in the Complaint are largely specious and the accusations levelled at Respondent are groundless and malicious. This is not the picture of an assiduous infringer slowly engineering the downfall of the rightful trademark owner. Indeed, on one construction of the evidence, it could be said that the Complaint was the design of a party disappointed by its failure, ten years ago, to secure the purchase of the domain name, who has turned the Policy against Respondent, indifferent to the integrity of that party.

Furthermore, in finding that Complainant guilty of Reverse Domain Name Hijacking, the panel stated:

” This is not the picture of an assiduous infringer slowly engineering the downfall of the rightful trademark owner. Indeed, on one construction of the evidence, it could be said that the Complaint was the design of a party disappointed by its failure, ten years ago, to secure the purchase of the domain name, who has turned the Policy against Respondent, indifferent to the integrity of that party. The Panel therefore finds RDNH.”

Full details on this UDRP decision for Karma.com follow:

Karma International, LLC v. David Malaxos

Claim Number: FA1812001822198

PARTIES

Complainant is Karma International, LLC (“Complainant”), represented by Kristin Kosinski of Cislo & Thomas LLP, California, USA. Respondent is David Malaxos (“Respondent”), represented by David E. Weslow of Wiley Rein LLP, Washington DC, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <karma.com>, registered with GoDaddy.com, LLC.

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as panelists in this proceeding.

Debrett G. Lyons (Chair), Sandra J. Franklin, The Hon. Neil Anthony Brown QC, as panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on December 21, 2018; the Forum received payment on December 21, 2018.

On December 24, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <karma.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 December 27, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 22, 2019 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@karma.com. Also on December 27, 2018, 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.

A timely Response was received and determined to be complete on January 22, 2019.

Both parties made Additional Submissions which were found to comply with Forum Supplementary Rule 7.

On January 28, 2019, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed Debrett G. Lyons (Chair) Sandra J. Franklin and the Hon. Neil Anthony Brown QC, as panelists (the “Panel”).

Having reviewed the communications records, the Panel finds that the 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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant asserts trademark rights in KARMA and submits that the disputed domain name is identical to its trademark.

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name because it has no trademark rights; is not known by the domain name; and the domain name has not been used in respect of a bona fide offering of goods or services.

Complainant alleges that Respondent registered or at least renewed the registration of the disputed domain name in bad faith having knowledge of Complainant who had approached Respondent to purchase the name. Further, Complainant alleges that Respondent has passively held the domain name in bad faith and, to the small extent that it has been used, that use has been incoherent and has diluted and damaged Complainant’s trademark.

B. Respondent

Respondent broadly denies Complainant’s allegations. In particular, Respondent denies that Complainant has shown trademark rights and, in any event, states that it registered the disputed domain name long before any trademark rights might have arisen. It follows that it could not have registered the domain name in bad faith.

Respondent asserts that it has a legitimate interest in the domain name which is a common generic term. Respondent asserts that it has the right to deal with the disputed domain name as it pleases and its refusal to sell the name to Complainant does not constitute bad faith.

Finally, Respondent argues that in the circumstances Complainant has engaged in Reverse Domain Name Hijacking when it filed the Complaint since it knew that all aspects of its case were unsupportable.

C. Additional Submissions

Both parties made Additional Submissions in compliance with the Forum’s Supplemental Rule 7 and the Panel has referred to these as required in the discussion which follows.

FINDINGS

The factual findings pertinent to the decision in this case are that:

1. Respondent registered the disputed domain name on November 28, 1994;

2. Complainant uses the name KARMA for a private membership organization and filed trademark application Serial No. 88/124,089 with the United States Patent and Trademark Office (“USPTO”) on September 19, 2018 to register that name; and

3. There is no commercial or other relationship between the parties other than when in 2009 Complainant tried unsuccessfully to purchase the disputed domain name from Respondent.

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.

Identical and/or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.

Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights.[i] However, Complainant relies on a pending application for a trademark before the USPTO, not on a registered trademark. Accordingly, to satisfy paragraph 4(a)(i) Complainant must prove that it has rights in the word KARMA as an unregistered or so-called common law trademark.

Common law trademark rights may be established through use and public recognition of the word KARMA such that it has come to acquire secondary meaning.[ii] The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“the WIPO Overview”)[iii], asks at paragraph 1.3: “What does a complainant need to show to successfully assert unregistered or common law trademark rights? ” The consensus viewpoint of panelists includes the following statement:

“Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning.”

In its Additional Submissions Complainant states that it has established:

“… its common law trademark rights in the mark KARMA as use of this term has become a distinctive identifier that consumers associate with Complainant’s entertainment services, namely, conducting parties coordinated with large sporting and cultural events; organizing community sporting and cultural events; computer application software featuring interactive private social networking software; pens and presentation folders; and polo-style shirts since at least as early as September 2005.”

The Panel notes, firstly, that the asserted trademark is an ordinary dictionary word which might describe or allude to any number of goods or services. Secondly, the Panel observes that there is nothing whatsoever in the evidence to support Complainant’s claim that the term has become distinctive of the goods listed above which appear to be the goods claimed in Complainant’s pending, unregistered USPTO trademark application. Thirdly, the claim that KARMA has come to uniquely identify Complainant’s services rests almost entirely on assertion and not on any of the usual factual indicia of acquired distinctiveness.

The leading declaration relied on by Complainant is that of Dylan Marer, CEO and Executive Producer of Complainant, who describes Complainant organization as “dedicated to connecting exceptional and inspirational individuals both socially and professionally.” Marer asserts first use of KARMA in commerce as a trademark in 2005 and claims to have produced “several thousands of events that have earned international acclaim and attendance by some of the world’s most influential people”. Complainant asserts that “it has received and continues to receive consistent and laudable recognition and accolades from its members and guests regarding its KARMA goods and services based upon its operation for over thirteen years”.

There is no evidence of those claims. Instead, appended to the Marer declaration are (undated) screenshots from Complainant’s website. The website makes the same claims as Marer and includes, for example, various photographs of groups of people interacting at social functions. Having regard to that part of the WIPO Overview outlined already, there is insufficient proof of unregistered trademark rights.

Nothing provided with Complainant’s Additional Submissions improves on that position and so the Panel finds that Complainant has not satisfied the requirements of paragraph 4(a)(i) of the Policy.

Rights or Legitimate Interests

With the paragraph 4(a)(i) finding against Complainant, the Complaint fails and no further analysis would ordinarily be required.[iv] However, in these proceedings Respondent has argued that Complainant has engaged in Reverse Domain Name Hijacking and in order to assess that claim properly the Panel must look further at all aspects of Complainant’s case.

Paragraph 4(c) of the Policy states that 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 rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:

(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 trade mark or service mark at issue.

Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating that it has those rights or interests.[v]

The publicly available WHOIS information identifies Respondent as “David Malaxos” and so there is no prima facie evidence that Respondent might be commonly known by the disputed domain name. There is no evidence that Respondent has any trademark rights. Complainant argues that Respondent has not used the domain name in connection with a bona fide offering of goods or services and in its Additional Submissions Complainant further states that:

“Respondent has displayed absolutely no legitimate right to the domain given the incoherent, ever-changing, random display of links, postings, musings, and URL re-directs having no relation to the term karma.com, and no apparent relationship with each other that Complainant can ascertain from archived web captures of the domain over the years since Complainant has had rights in the trademark KARMA.”

…

“Random re-directs, linking, and the like to unrelated matters such as a news article on CNBC about Warren Buffet apparently hearing Dr. Martin Luther King, Jr. speak at one time …, a YouTube video of “Ijexá” by Clara Nunes …, and most recently, the Wikipedia page for “Karma” …, as well as other random, incoherent linking or re-directing patterns over the years …, show that Respondent has no legitimate interest in the disputed domain name other than posturing for a financial windfall.”

The Panel finds that whilst Respondent has owned the disputed domain name since 1994[vi] there has not been a discernable pattern of its use in connection with what the Panel would call an offering of goods or services and so the Panel finds that Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name.

The onus passes to Respondent to rebut that case and Respondent does so by underscoring that it registered the domain name, a generic term, before Complainant came in existence.

There is no clear picture of Respondent’s business[vii] but there is evidence that Complainant sought to purchase the name from Respondent in 2009. At that time Respondent would not sell the domain name for less than USD 50,000. Respondent claims that it declined to sell the disputed domain name to others who had made an approach for that purpose. In short, Respondent submits that it has never held the domain name out for sale to the general public or to Complainant; that Complainant initiated the 2009 sale negotiations; that Respondent could not have registered the domain name with intent to sell it to Complainant since Complainant was not in existence when Respondent registered the domain name; and that Respondent has rebuffed numerous third-party offers to purchase the domain name over the years.

The Panel finds that Complainant’s counter-arguments rest on a number of faulty assumptions. Nowhere in the Policy is there a requirement that a respondent is under a positive obligation to use (or surrender an unused) domain name. Failure to use a domain name is not per se evidence that its owner has no right or legitimate interest in the name. A re-seller of generic domain names, for example, has long been held to conduct a legitimate business, whether the names have been used in connection with their generic meaning, or not used at all. Further, even in the case of such a re-seller, the critical question remains whether or not the respondent has a legitimate interest in the name, rather than whether the re-seller’s business is legitimate; in other words, the legitimacy of the business will not generally override an illegitimate claim to the at-issue domain name.

In this case the domain name is a dictionary word. Its desirability to domain name purchasers, as well as being a matter of which the Panel takes “judicial” notice, is supported by Respondent’s declaration. Respondent was under no obligation to conclude its sale with Complainant and Respondent was free to place whatever market value it chose on the name. It follows that Respondent was no “rogue” or “squatter” on the domain name as Complainant asserts and the Panel finds those allegations groundless. Further, whether or not Respondent made “incoherent” or “random” use of the domain name is, on the facts, no basis for Complainant’s assertion that Respondent was “posturing for a financial windfall” since, as stated, Respondent was under no positive obligation to use the name or to sell it at any particular price.

Complainant has therefore not satisfied the Panel that it has made out the second element of the Policy. Accordingly, the Panel finds that Respondent has a legitimate interest in the domain name.

Registration and Use in Bad Faith

Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.

The proper starting point is the observation made many times by UDRP panelists that once a respondent is shown to have a legitimate interest in a domain name it follows that a complainant will struggle to show bad faith, especially bad faith registration. Nevertheless, further guidance is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.

The four specified circumstances are:

‘(i) circumstances indicating that the respondent 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 respondent’s documented out-of-pocket costs directly related to the domain name; or

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

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

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

The Panel finds no evidence which would support a finding of registration and use in bad faith based on any of those four scenarios. It is unequivocal that, at the time Respondent registered the disputed domain name, it had no knowledge of Complainant or of its asserted trademark. Nonetheless, in its Additional Submissions, Complainant states that:

“… these random, incoherent uses [of the domain name] over time creates a strong inference that the domain was registered in bad faith, and possibly with the speculation that a registrant may exploit any future trademark value the domain name might develop. In other words, the domain appears to have been registered as a speculative investment to provide a financial windfall in the future. … Respondent’s apparent ownership of the domain was, and remains, motivated by gaining a financial windfall by selling the domain at some point.”

The Panel has already found that Respondent has a legitimate interest in the domain name and that (even if they existed) Respondent’s speculative intentions are not a source of bad faith in this case. Nonetheless, it is Complainant’s additional argument that bad faith registration can still be shown because Respondent renewed the domain name registration at times after it had knowledge of Complainant and its asserted rights in the trademark.

The Panel is not moved by that argument. It is inconsistent with the Panel’s finding that Complainant has no proven trademark rights and it is inconsistent with the WIPO Overview. In particular, paragraph 3.8.1 of the WIPO Overview reiterates[viii] that:

“… 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”,

but qualifies that basic principle by the statement that:

“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.” (emphasis added by the Panel)

By contrast, paragraph 3.9 of the WIPO Overview states in part:

“Where the respondent provides satisfactory evidence of an unbroken chain of possession, panels typically would not treat merely “formal” changes or updates to registrant contact information as a new registration.

… panels have found that the mere renewal of a domain name registration by the same registrant is insufficient to support a finding of registration in bad faith.

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.

Facts or circumstances supporting an inference that a change in registrant has occurred may typically include a change in the content of the website to which a domain name directs to take advantage of the complainant’s mark or unsolicited attempts to sell the domain name to the complainant only following such asserted change in registrant.”

As already stated, the Panel has no cause to think that Respondent is not the original registrant of the domain name. It follows that its renewal of the domain name did not at any point constitute registration in bad faith. With that finding, Complainant has failed to establish this final aspect of the Policy.

For the sake only of the following discussion of the Reverse Domain Name Hijacking argument, the Panel notes two further submissions by Complainant related to its allegations of bad faith, neither of which has any influence on the conclusion just reached. One is the claim that “[t]his is a unique situation wherein the Respondent may have acted in a manner where bad faith registration can be inferred [since it] was willfully blind to any current or future trademark rights”. The Panel regards this submission fanciful since it lacks any reasonable basis.

The other is a two-pronged argument that Respondent has passively held the domain name in bad faith in line with the reasoning first laid out in the case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (“Telstra ”) and, to the extent that the domain name has been used, that use has been incoherent and has diluted and damaged Complainant’s trademark. The latter claim is that “some of the prior redirects of karma.com are political views and comments that may dilute Complainant’s rights in its mark by whittling away the distinctiveness of the KARMA mark on its use in connection with random links and seemingly inconsequential posts, and by tarnishing Complainant’s reputation among its consumers and potential consumers.”

The Panel sees no parallel whatsoever with the facts of the Telstra case where the trademark at issue was an invented word which was not only registered but immensely well-known by the time of the complaint. Otherwise, the Panel has not found any proof of reputation in this case and so there has been no trademark to tarnish or dilute even if it were accepted that the various uses of the domain name might have had that effect in other circumstances.

Reverse Domain Name Hijacking (“RDNH”)

Respondent submitted that the Panel should make a finding of RDNH by Complainant. Paragraph 1 of the Rules defines RDNH to mean “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 “the Panel finds that the complaint was brought in bad faith, for example in an attempt at [RDNH], the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”

The WIPO Overview asks at paragraph 4.16: “In what circumstances will panels issue a finding of Reverse Domain Name Hijacking (RDNH)?” in reply to which UPRP panelists are in agreement that:

“… the mere lack of success of a complaint is not itself sufficient for a finding of RDNH” … [which] “ultimately turns on the complainant’s conduct.

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) … , (vii) filing the complaint after an unsuccessful attempt to acquire the disputed domain name from the respondent without a plausible legal basis, [and] (viii) basing a complaint on only the barest of allegations without any supporting evidence.”

Here, Complainant failed to establish any of the three elements required under the Policy. The Panel has found no evidence of trademark rights, nor of bad faith registration, and has found that Respondent has a legitimate interest in the disputed domain name. However, as noted, RDNH is not necessarily found simply because a complaint is weak or misconceived. There must, as indicated, be an element of bad faith. [ix] In that respect Respondent argues that Complainant knew or should have known that it had no colorable claim to trademark rights in the term KARMA, a common dictionary word. Further, that Complainant knew that Respondent registered the disputed domain name well before Complainant came in being. Finally, that nothing in Respondent’s actions could be construed as targeting Complainant and indeed in 2009 it was Complainant which made an unsolicited attempt to purchase the domain name.

The Panel is in agreement with Respondent’s submissions and finds, on any construction of the facts, that Complainant knew or should have known that it was unable to prove its Complaint. The explicit claims to bad faith registration and use made in the Complaint are largely specious and the accusations levelled at Respondent are groundless and malicious.

This is not the picture of an assiduous infringer slowly engineering the downfall of the rightful trademark owner. Indeed, on one construction of the evidence, it could be said that the Complaint was the design of a party disappointed by its failure, ten years ago, to secure the purchase of the domain name, who has turned the Policy against Respondent, indifferent to the integrity of that party.

The Panel therefore finds RDNH.

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the <karma.com> domain name REMAIN WITH Respondent.

The Panel also finds REVERSE DOMAIN NAME HIJACKING. Accordingly, the Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

Debrett G. Lyons (Chair)

Sandra J. Franklin

The Hon. Neil Brown QC

Panelists

Dated: February 15, 2019

[i] See, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”)

[ii] See, for example, Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) holding that complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”; Copper Wire Stripper Limited v. Joe Williams / BLUEDOGINTERNATIONALINC, FA 1604460 (Forum Apr. 4, 2015) finding complainant failed to establish secondary meaning where no evidence was provided with respect to sales under the mark and money spent promoting the mark; CW & Associates Consulting and Recruiting Inc. v. Lynda Pitchford / ITSR, FA 1619758 (Forum June 29, 2015) finding complainant failed to establish common law rights, stating, “Complainant has failed to provide evidence of any sales figures or advertising expenditures or any indication of the extent of use aside from what may be implied from the business name registration and placement of the name(s) on social media. There is no evidence to show that the public is aware of the claimed marks at all, much less a public association of the claimed ETS marks with the Complainant. Mere use of social media alone is not acceptable proof of secondary meaning, a/k/a/ acquired distinctiveness, in the mind of the general public.”

[iii] See http://www.wipo.int/amc/en/domains/search/overview3.0

[iv] See, for example, Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary; Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i).

[v] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).

[vi] A matter which Complainant attempts to call into question for the purposes of an argument that Respondent later took ownership of the name in order to capitalize on Complainant’s alleged reputation in the word KARMA, but an acquisition date which the Panel has found no reason to question.

[vii] The Panel observes that Respondent does not appear to have a business as a domain name reseller and does not claim to act as one albeit that there is some limited evidence that Respondent holds other domain names composed of generic terms.

[viii] See, for example, Faster Faster, Inc. DBA Alta Motors v. Jeongho Yoon c/o AltaMart, FA 1708272 (Forum Feb. 6, 2017) where the panel held that “Respondent registered the domain name more than a decade before Complainant introduced the ALTA MOTORS mark in commerce. Respondent therefore could not have entertained bad faith intentions respecting the mark because it could not have contemplated Complainant’s then non-existent rights in [the mark] at the moment the domain name was registered.” U.S. Nutraceuticals, LLC v. Telepathy, Inc., FA 365884 (Forum Jan. 17, 2005) (“Without knowledge of Complainant or its claim of right in the mark, it is difficult to see how Respondent could have the specific intent required for it to act in bad faith against the rights of Complainant.”); Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Forum May 16, 2007) determining the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark).

[ix] See, for example, Labrada Bodybuilding Nutrition, Inc. v. Glisson, FA 250232 (Forum May 28, 2004) finding that complainant engaged in reverse domain name hijacking where it used “the Policy as a tool to simply wrest the disputed domain name in spite of its knowledge that the Complainant was not entitled to that name and hence had no colorable claim under the Policy”.

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