Kaufman Realty and Auctions specializes in auctions of personal and real property and the sale of real property. The mark KAUFMAN AUCTIONS was registered in 2021 and in recent months they filed a UDRP against the domain name KaufmanAuctions.com.
That domain was registered in 2005, a substantial amount of time prior to the Complainant’s claimed date of first use of the mark in 2011.
The sole panelist at the Forum (NAF) delivered a decision of Reverse Domain Name Hijacking on the following reasons:
- throughout this proceeding, Complainant has been represented by experienced legal counsel;
- when it filed its Complaint, Complainant must have known from available public records that Respondent had acquired its domain name long before Complainant could have established, by registration or otherwise, rights in the KAUFMAN AUCTIONS mark upon which it relies;
- Complainant has offered no evidence showing that Respondent procured its domain name registration in bad faith anticipation of Complainant’s acquisition of rights in its claimed mark; and
- that Complainant knew that its contentions were advanced in the absence of adequate proof is demonstrated by the repeated references in its Complaint to the inapposite phrase “on information and belief.”
Final decision: Deny transfer of the domain KaufmanAuctions.com and a finding of Reverse Domain Name Hijacking (RDNH.)
Kaufman Realty and Auctions, LLC v. WEB REG / RARENAMES, INC.
Claim Number: FA2207002006249
PARTIES
Complainant is Kaufman Realty and Auctions, LLC (“Complainant”), represented by Andrew R. Burton, Ohio, USA. Respondent is WEB REG / RARENAMES, INC. (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is , which is registered with GoDaddy.com, LLC.
PANEL
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the Forum electronically on July 29, 2022; the Forum received payment on July 29, 2022.
On July 29, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the 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 August 2, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 22, 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, as well as to the attention of postmaster@kaufmanauctions.com. Also on August 2, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On August 23, 2022, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant specializes in auctions of personal and real property and the sale of real property.
Complainant holds a registration for the KAUFMAN AUCTIONS service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 6,505,157, registered October 5, 2021, on the basis of an application for registration showing that it was filed on May 28, 2020, and declaring that the mark was first used in commerce on December 31, 2011.
Respondent’s domain name is identical to Complainant’s KAUFMAN AUCTIONS mark.
Respondent has no affiliation with Complainant.
Respondent is not licensed or otherwise authorized to use Complainant’s KAUFMAN AUCTIONS mark.
Respondent has not been commonly known by the domain name.
Respondent does not use the domain name for either a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Instead, Respondent previously used the disputed domain name to host links to various third-party websites.
Currently, the disputed domain name resolves to an inactive website.
Respondent has neither rights to nor legitimate interests in the domain name.
Respondent registered the domain name in order to sell it to Complainant.
Respondent’s previous use of the domain name was intended to create confusion among Internet users by redirecting them to other websites which appeared to contain malware, from which use Respondent intended to profit.
Respondent both registered and now uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant has failed to prove one of the three subparts of Paragraph 4(a)(i) – (iii) of the Policy, as required, and, in pursuing its Complaint in the absence of such proof Complainant has attempted to commit Reverse Domain Name Hijacking.
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 to or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent’s failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant’s undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see 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 and Rights or Legitimate Interests
In the ordinary course, we would address here the elements set out in Policy¶¶ 4(a)(i) and (ii). In this instance, however, we find it necessary to consider instead the question of bad faith registration and use of the contested domain name, because, in the particular circumstances of this proceeding, analysis of that issue resolves the entire controversy.
The reason for this is that the Policy requires Complainant to prevail on each and every element of Policy ¶¶ 4(a)(i)-(iii) in order to prevail in the proceeding as a whole. If, therefore, Complainant fails as to any one of the three, its case fails altogether. And, in that event, consideration of the Complaint may begin and end with examination of the element as to which Complainant has failed to provide proof upon which it can prevail. See, for example, Post.Com Limited v. Peter Neilson, D2002-0690 (WIPO September 17, 2002):
In this Panel’s view, the Complainant has not established … that the Domain Name was registered by the Respondent in bad faith…. In the light of this finding the Panel does not need to consider paragraphs 4(a)(i) and (ii) of the Policy.
To the same effect, see also Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd., D2010-0470 (WIPO May 19, 2010).
We therefore proceed to consideration of Complainant’s assertions with regard to the question whether Respondent has registered and is now using the domain name in bad faith.
Registration and Use in Bad Faith
The Complaint in this proceeding is exceedingly spare. It contains only seven substantive paragraphs and is accompanied by but two attached exhibits. One of them is a USPTO certificate of registration for Complainant’s KAUFMAN AUCTIONS service mark. The other is a Business Entity Summary issued by the competent authority for the State of Massachusetts reflecting the current status of the entity identified as Rare Names, Inc., Respondent in this proceeding. Notably absent from Complainant’s exhibits is the pertinent WHOIS information for the domain name. Resort to that information, which is in the public domain, reveals that the challenged domain name was first registered on September 9, 2005.
When this information is compared to Complainant’s mark registration certificate, it becomes apparent that the domain name was first registered more that sixteen (16) years before Complainant registered its competing mark and more than six (6) years before Complainant first used the mark in commerce (the mark was registered on October 5, 2021, on the basis of an application for registration showing that it was filed on May 28, 2020, and declaring that the mark was first used in commerce on December 31, 2011). The Complaint is devoid of any evidence explaining why Respondent should be held to have known of Complainant’s rights in its mark more than sixteen years before the mark was registered in Complainant’s name and more than six years before the mark was first used in commerce. On this state of the record, without more, Complainant cannot be said to have demonstrated that Respondent registered the contested domain name in bad faith, inasmuch it could not have targeted Complainant’s then non-existent rights when the domain name was registered. See, for example, Faster Faster, Inc. DBA Alta Motors v. Jeongho Yoon c/o AltaMart, FA 1708272 (Forum February 6, 2017):
Respondent registered the domain name more than a decade before Complainant introduced the … 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.
There is more. The seven bare paragraphs of the Complaint are punctuated by an equal number of recitations of the phrase “upon information and belief,” an expression borrowed from the realm of notice pleadings in civil litigation. The assertions made under cover of Complainant’s “information and belief” are these:
1. “[U]pon information and belief, Respondent buys domain names without reason or cause in order to support traffic to various other websites and services and/or to extract compensation for the sale of the domain name to a trademark owner.”
2. “Upon information and belief, Respondent engaged in a business and routine practice of acquiring domain names for the primary purpose of later selling them [to] various trademark owners.”
3. “Upon information and belief, Respondent acquired [k]aufmanauctions.com for the primary purpose of selling the domain name to the Trademark owner, Complainant.”
4. “Upon information and belief, Respondent engaged in a routine practice of purchasing domain names for the sole purpose of driving internet users to its websites or other online locations. Specifically, Respondent intentionally utilized [the domain name] kaufmanauctions.com as a redirect to websites containing various links to commercial products and services, and which seemingly contain malware.”
5. “Upon information and belief, Respondent financially profited off this intentional misdirection to other websites.”
6. “Upon information and belief, Respondent registered numerous domain names without reason or cause, for the primary purpose of preventing a trademark owner from using the trademark in a domain name.”
7. “Upon information and belief, [k]aufmanauctions.com was one of the many domains that Respondent purchased for this reason.”
Proof of at least some portion of these separate contentions would likely be necessary to sustain a finding of both registration and use of the disputed domain name in bad faith, but none of them is supported by the merest showing of evidence.
The Rules for Uniform Domain Name Dispute Resolution Policy, which regulate the conduct of proceedings subject to the Policy, provide (Rule 3.(b)) that: “The complaint … shall: … (xv) Annex any documentary or other evidence, … upon which the complaint relies,….” The point of this requirement is that the familiar notice pleadings of civil litigation are inapposite in a UDRP proceeding, so that, absent a surprising contention produced in a respondent’s response to a complaint, a complainant has one opportunity both to state and prove its case in the same pleading event. Here Complainant has failed to satisfy this mandate. The result is that Complainant has failed to satisfy its obligation that it prove by satisfactory evidence that Respondent has both registered and is now using the challenged domain name in bad faith. See, for example, Limited Stores, LLC v. Infinite Wireless,
D2013-1269 (WIPO August 29, 2013):
The Complainant’s allegations of bad faith are all said to be on the basis of “upon information and belief”. What information and by whom was it provided? The Complaint does not say. In fact, on this topic the Complaint is remarkably short of information.
* * * * *
In the view of this Panel a finding that a respondent has acted in bad faith for the purposes of paragraph 4(a)(iii) of the Policy should generally only be made where the respondent has in fact acted in bad faith or where there is very cogent evidence before the Panel as to the surrounding circumstances sufficient to support an inference to that effect. Here, in the view of the Panel, the evidence falls far short of that.
The Panel is not persuaded that the Domain Name was registered or is being used in bad faith.
REVERSE DOMAIN NAME HIJACKING
In view of the circumstances described in Complainant’s Complaint and supporting submissions, we are obliged to consider whether, in filing and prosecuting its Complaint in this proceeding, Complainant has attempted to commit “Reverse Domain Name Hijacking,” (“RDNH”), defined in UDRP Rule 1 as: “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”
In order to justify a finding of RDNH, we must be persuaded both that the Complaint has no merit and that Complainant has proceeded under the UDRP in bad faith. On the record before us, the salient facts on this question include that:
1. throughout this proceeding, Complainant has been represented by experienced legal counsel;
2. when it filed its Complaint, Complainant must have known from available public records that Respondent had acquired its domain name long before Complainant could have established, by registration or otherwise, rights in the KAUFMAN AUCTIONS mark upon which it relies;
3. Complainant has offered no evidence showing that Respondent procured its domain name registration in bad faith anticipation of Complainant’s acquisition of rights in its claimed mark; and
4. that Complainant knew that its contentions were advanced in the absence of adequate proof is demonstrated by the repeated references in its Complaint to the inapposite phrase “on information and belief.”
On these facts, we find both that Complainant’s Complaint lacks merit, as detailed above, and that Complainant’s submissions demonstrate that, in filing and prosecuting this proceeding, Complainant has attempted in bad faith to obtain a domain name which it has failed to prove is other than the rightful property of Respondent. As a result, Complainant has attempted to commit Reverse Domain Name Hijacking as defined in the Rules. See, for example, The Guitammer Company v. Herschel Thompson, FA1958918 (Forum September 13, 2021):
The Panel finds that Complainant knew or should have known that it was unable to prove … that … Respondent registered and is using the disputed domain name in bad faith. The most glaring evidence for this conclusion is that the Domain Name was registered … before Complainant’s trademark rights came into existence. It is logically impossible for the registration to have been made with the intent to infringe on trademark rights that did not yet exist. Accordingly, the Panel finds that reverse domain name hijacking has occurred. See Labrada Bodybuilding Nutrition, Inc. v. Glisson, FA 250232 (Forum May 28, 2004) (finding that [a UDRP] complainant engaged in …[RDNH]… where it used “the Policy as a tool to simply wrest the disputed domain name [from Respondent] in spite of its knowledge that … Complainant was not entitled to that name and hence had no colorable claim under the Policy”).
DECISION
Complainant having failed to establish by evidence one of the three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is, hereby, DENIED.
Accordingly, it is Ordered that the domain name REMAIN WITH Respondent.
Terry F. Peppard, Panelist
Dated: August 25, 2022
