Mercury Cash is a global cash and crypto management solution designed for fortune 500 companies. The company operated from the domain Mercury.cash, until the Estonia-based COO of the company pulled the plug on the domain.
The company moved to the domain MercuryCash.us and filed a UDRP, noting that their mark for MERCURY CASH was registered in 2018. The Respondent stated that the company owes him and his team in Estonia at least $78,000 dollars, among the reasons for taking over the domain as collateral.
The Forum (NAF) panelist pointed out that the domain was registered in 2017 by the Respondent, at a time that the Complainant’s mark wasn’t in use. He ordered the domain to remain with the Respondent as there’s no indication of bad faith at the time of registration.
Here is a similar case where the instance of “bad faith” at the time of registration is affected by the parties’ contractual agreements.
The domain transfer was denied.
ADVENTUROUS ENTERTAINMENT LLC v. Marco Pirrongelli
Claim Number: FA2209002013597
PARTIESComplainant is ADVENTUROUS ENTERTAINMENT LLC (“Complainant”), represented by Oscar Guilarte, Colombia. Respondent is Marco Pirrongelli (“Respondent”), EE.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is mercury.cash, registered with eNom, LLC.
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.
The Honorable Neil Anthony Brown KC as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on September 27, 2022; Forum received payment on September 27, 2022.
On September 27, 2022, eNom, LLC confirmed by e-mail to Forum that the mercury.cash domain name is registered with eNom, LLC and that Respondent is the current registrant of the name. eNom, LLC has verified that Respondent is bound by the eNom, LLC registration agreement and has thereby agreed to resolve domain name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 4, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 24, 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@mercury.cash. Also on October 4, 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.
A timely Response was received and determined to be complete on October 19, 2022.
On November 1, 2022, Complainant filed an additional submission. It is necessary for Complainant to obtain leave from the Panel to have that submission admitted and considered by the Panel pursuant to Rule 12. As Respondent went into considerable detail in its Response, the Panel has taken the view that it would be advantageous in the consideration of this proceeding to see what reply Complainant had to make on those matters raised by Respondent. The Panel, pursuant to its discretion under Rule 12, will therefore admit the Complainant’s additional submission and consider its contents.
On November 8, 2022, Respondent filed an additional submission. This was, at least in part, a reply to the Complainant’s additional submission and for that reason the Panel will admit it and consider its contents.
On October 26, 2022, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC 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.
RELIEF SOUGHT
Complainant requests that the domain name be canceled.
Preliminary issue. Does the proceeding come within the scope of the UDRP and the jurisdiction of the Panel ?
The parties have not raised it, but first question that arises is whether the Panel should hear this proceeding on the ground, if established, that the dispute is not a domain name dispute coming within the meaning and intent of the UDRP Policy, but a general commercial dispute which is not subject to the UDRP and which should be litigated in an appropriate court. This possibility often arises in complex matters where there is conflicting evidence on significant factual matters which could not be properly resolved with the limited forensic powers possessed by a UDRP Panel and where it is said that the panel lacks jurisdiction to hear the wider commercial dispute. An illustration of that approach is Love v. Barnett, FA 944826 (Forum May 14, 2007) where the panel concluded that “the present case appears to hinge mostly on a business or civil dispute between the parties, with possible causes of action for breach of contract or fiduciary duty. Thus, the majority holds that the subject matter is outside the scope of the UDRP and dismisses the Complaint.” That statement was quoted with approval in dmarcian, Inc. v. Martijn Groeneweg / dmarcian Europe BV FA2102001933397 (FORUM April 7, 2021).
But whether the issue is seen as one of jurisdiction, or the “scope” of the UDRP or as one that does not sit within the structure of the Policy, it is clear that some disputes are essentially regarded as inappropriate for the administrative process established under the policy and are seen as best left to litigation in the courts.
It is also clear that when that issue arises, the task of a panel, whether it has been raised by the parties or, as in the present case, not raised by the parties, is to assess as best it can whether the dispute is, as a matter of fact, a general or wider commercial dispute or one that is a domain name dispute as conceived by the Policy. In performing that task, however, a panel should not be deterred merely because there are complicated facts in the case that will have to be unraveled. The role of the panel in such a case is to make a proper assessment of the dispute and its true nature.
Having conducted such an assessment of the present proceeding, the Panel finds that the dispute between the parties is essentially a domain name dispute properly brought before the Panel under the Policy and within its jurisdiction. That was the way in which the Complainant framed the dispute when it filed the Complaint. The parties have, however, ranged far beyond the narrow confines of the Policy and that has made the proceeding more and unnecessarily complicated. Nevertheless, the dispute is essentially a domain name dispute. The basis of the claim is that the Respondent is in breach of the provisions of the Policy that, according to the Complainant, entitles it to the relief that it claims. The evidence that it adduces is relevant to the claim. The relief sought is that the domain name should be cancelled, which is one of the orders that the Panel can validly make under the Policy. It is true that the Complainant also submits that the actions of the Respondent have caused it damage and that the damage was inflicted intentionally by the Respondent, but it asks only for an order for cancellation and does not seek damages or a declaration or any other order not available to a successful party under the Policy. Nor is there any evidence to suggest that the Respondent has ever believed or acted consistently with the notion that it had a claim against the Complainant of a general commercial nature, separate from the ambit of the domain name claim. Indeed, the Respondent’s complaints, set out in more detail in the Contentions section of this decision are variously, on their terms, advanced as reasons why the domain name should be “ cancel(led) or eliminated”, which is the relief sought by the Complainant, why “ no rights shall be granted to the Complainant on such Domain…”, to refute the allegations of Complainant, and to provide ”more context of the situation.”
The substance of the claim by the Complainant and its defence by the Respondent are therefore a claim and counterclaim about the domain name and the order that should be made, if any, with respect to it.
Finally, and without passing any judgement on the validity of any of the claims made by the Respondent, including his allegation that the Complainant owes him $78,000, they can be litigated by the Respondent in separate proceedings and are not in any sense necessary to be resolved before the domain name claim can be finalized under the Policy.
For all of those reasons, the Panel finds that the dispute between the parties is essentially and in substance a dispute concerning the domain name which can be accommodated within the scope and jurisdiction of the Policy.
The panel will therefore proceed with the Complaint and resolve it in the usual manner.
PARTIES’ CONTENTIONSA. Complainant
Complainant made the following contentions.
1. Complainant is a United States company that was incorporated in Florida on May 8, 2018.It is engaged in the business of currency exchange services, currency trading, currency transfer services; financial services, namely providing electronic transfer of virtual currency for use by members of an online community via a global computer network; and forex trading online in real time.
2. Complainant has a trademark registered with the United States Patent and Trademark Office (“USPTO”) for MERCURY CASH which was registered on the day of the incorporation of the company , namely May 8, 2018 with respect to the abovementioned goods and services.
3. Respondent, who is domiciled in Estonia, was the Chief Operating Officer of Complainant but submitted his resignation from that position in writing on May 9, 2022 in a letter to the company’s board of directors, of which he was also a member
4. Respondent is also the registrant of the domain name, mercury.cash (“ the disputed domain name”), having registered it on March 13, 2017, which was before Complainant was incorporated.
5. His resignation was stated in his letter of resignation of May 9, 2022 to be “from Monday 9, 2022” and for what was said to be a “personal decision” relating to his career.
6. Respondent also sent a further letter to Complainant on May 24, 2022 which is in the Spanish language and which purports to deal with the subject “Renuncia a la Junta”.
7. Respondent did not comply with “the obligation to carry out the transfer of the domain name mercury.cash”.
8. On September 9, 2022, Respondent decided to change the names of domain servers which caused the website of Complainant to stop pointing to its servers “causing an absolute system crash”.
9. As an emergency measure and in the absence of being able to use the disputed domain name, Complainant commenced to serve its customers through the domain name mercurycash.us, which is currently in operation.
10. The domain names mercury.cash and mercurycash.us are identical and confusingly similar to the MERCURY CASH trademark.
11. Respondent has no rights or legitimate interests in the disputed domain name. That is because Respondent since the registration of the disputed domain name has been using it “within” Complainant. Complainant has been using the disputed domain name to provide its services to its clients around the world. Thus, Respondent has no legitimate interest in the disputed domain name. Moreover, Respondent has caused damage to Complainant through changing the servers, leaving Complainant inoperative, harming its interests with its clients and generating losses and financial, logistical, operational and reputational damage.
12. Respondent registered and used the domain name in bad faith. That is because Respondent changed the names of the domain servers, leaving Complainant’s website inoperable, suspending its services, compromising the administration, logistics and internal control of Complainant, and affecting Complainant’s workers, customers and its community and interrupting its communications.
13. Respondent’s intention was to cause damage to Complainant, which he knew he would cause and which would give rise to benefits for Respondent. He did this when he left Complainant’s service.
14. The foregoing gives rise to a severe risk to Complainant and those associated with it.
15. Complainant therefore requests that the registration of the disputed domain name be cancelled.
B. Respondent
Respondent made the following contentions.
1. The substance of the Response is that the disputed domain name should be cancelled or eliminated and that no rights should be granted to the Complainant on the domain name
2. Respondent therefore seeks to refute the allegations and accusations made by Complainant with a view to supporting Respondent’s request “which appears to be the same as the one requested by Complainant”. Moreover, the Complaint has been brought in bad faith and the Panel should find that it constitutes an abuse of the administrative proceeding.
3. Respondent owns the domain name which is similar to Complainant’s trademark.
4. Respondent then contends that his obligation was that “during my final two weeks at Mercury Cash, I will be pleased to either transfer responsibility where appropriate or train a replacement for my position.”
5. However, it was not appropriate to transfer the domain name due to the following:
(1) Complainant owes him around $78,000 which is still owing;
(2) Respondent kept the domain name as collateral in view of Complainant’s failure to pay commitments to previous directors, as in the case of Carlos Arias Regeti;
(3) The amount owed to Respondent by Complainant came about because on October 29, 2021 Complainant authorised Respondent and Giordano Lugo to establish two related companies (“the Moonable Companies”) to expand Complainant’s business into Europe, (his resignation being given on May 9, 2022) and other agreements were entered into between the Moonable companies and service providers.
(4) Complainant stopped paying employees of Complainant, including Respondent, and on August 15, 2022 Respondent received termination contracts pursuant to contracts between Complainant and the Moonable Companies. Respondent’s intention was that Complainant should pay at least half of the amount owed by Complainant in exchange for the disputed domain name.
6. Respondent disputes certain factual assertions made by Complainant. The true facts are that it was Complainant who took the website down and thereby violated the security of the system, acted in bad faith and put at risk the operations, transactions and reputation of the organization built up over five years. Respondent then purports to provide particulars in support of his submissions.
7. Respondent retained the domain name as a safeguard for the Moonable companies to receive what was due to them from Complainant.
8. The domain name was created for use by Complainant, but Respondent owns it and Respondent has a right or legitimate interest in the domain name until Complainant fulfills its commitments to Respondent, former staff of Complainant and service providers of the Moonable Companies.
9. Respondent contends that it is false to claim that he caused any loss or damage to Complainant.
10. Respondent has not used the domain name in bad faith and has not been motivated by a desire for personal benefit. In particular, Respondent has not made any changes to the DNS servers since September 7, 2022. Any failure of the systems was caused by the actions of Complainant. Respondent has not carried out any action that has caused damage to the Complainant, its customers and any related entity or person of interest.
11. Respondent has retained the domain name to put pressure on the Complainant until it fulfils its obligations rather than to cause any damage or to use the domain name for personal gain.
12. Complainant has kept information from Respondent despite his being a shareholder and at a time when he was a Chief Expansion Officer of the Complainant.
C. Additional Submissions
Complainant
1. As to Respondent’s submission that it was not appropriate to transfer the domain name to Complainant, his legal obligation was to transfer it and his arguments only ratify that the domain name was not his property and that he would have transferred it if he were acting according to the law.
2. On the claim of $78,000, that is erroneous and an argument that cannot be resolved in this jurisdiction. No such debt is owing.
3. The argument concerning the example of Carlos Arias Regetti (sic) is also unrelated to issues to be resolved in this jurisdiction. The alleged debts of Complainant, which it denies, cannot be relied on to allow Respondent to appropriate and retain the domain name.
4. The internal company activities raised by Respondent do not provide any valid argument that the domain name belongs to Respondent. In reality, Respondent made decisions against Complainant, violating the contractual terms that bound him to Complainant with respect to the domain name which is an asset of Complainant.
5. As to the alleged dubious reputation of Complainant’s directors, Complainant rejects that allegation which in any case is outside the competence of the Panel and Respondent should pursue it in a jurisdiction which has competence over it.
6. Any issue of company debts is outside the jurisdiction of the Panel.
7. No such argument could be relied on to show that Respondent owns the domain name and there is no convincing argument that Respondent is the legitimate owner of the domain name.
8. Respondent has acted in bad faith and Respondent knew he was doing so.
9. Respondent’s arguments do not invalidate Complainant’s arguments and the Panel should declare that Complainant is the legitimate owner of the disputed domain name.
Respondent
1, The dispute is about the rights and use of the disputed domain name, not about its ownership.
2.Respondent owns the disputed domain name.
3. Respondent purchased the domain name with his own money, as is evidenced by the fact that it is registered under his name in “the Provider’s account”.
4. The Complainant has never purchased the domain name, compensated the Respondent or returned the payment he made for the domain name.
5. Respondent has retained the domain name as a safeguard for the Moonable companies to receive the amount owed by the Complainant.
6. Respondent reiterates his position that the Complainant has debts, obligations and liabilities to him.
7. Respondent purchased the domain name in good faith when starting the Complainant company.
8.Complainant never entered into an agreement indicating when or how he should transfer the rights of the domain name to the Complainant
9.None of the current management was in the company during formation nor during the first years of its operation, the time when Respondent purchased the domain name.
10. Ownership is not part of the present claim.
FINDINGS
1. The dispute between the parties is a domain name dispute within the jurisdiction and scope of and to be resolved in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
2. Complainant is a United States company that was incorporated in Florida on May 8, 2018.It is engaged in the business of currency exchange services, currency trading, currency transfer services; financial services, namely providing electronic transfer of virtual currency for use by members of an online community via a global computer network; and forex trading online in real time.
3. Complainant has established its trademark rights in the MERCURY CASH mark by virtue of registering the mark with the United States Patent and Trademark Office (“USPTO”) on May 8, 2018 with respect to the abovementioned goods and services.
4. Respondent registered the disputed domain name on March 13, 2017, which was before Complainant was incorporated. Respondent is the current domain name holder of the disputed domain name.
5. The evidence shows that the disputed domain name is identical to the MERCURY CASH mark.
6. The Panel makes no finding on the issue of whether Respondent has a right or legitimate interest in the disputed domain name.
7. The evidence does not show that the disputed domain name has been registered and is being used in bad faith.
8. The Complaint is therefore 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.
Identical or Confusingly Similar
The first question that arises is whether the Complainant has a trademark or service mark on which it can rely in this proceeding. Complainant submits that it has rights in the MERCURY CASH mark based upon registration of the mark with the USPTO (e.g., Reg. no. 5,462,752, registered May 8, 2018). See Compl. Ex. 1 (2). Registration of a mark with the USPTO is considered a valid showing of rights under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Since Complainant has provided evidence of registration of the MERCURY CASH mark with the USPTO, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
The next issue that arises is whether the mercury.cash domain name is identical or confusingly similar to Complainant’s MERCURY CASH trademark. This will be determined by comparing the disputed domain name and the trademark, without regard to the circumstances under which either may be used per Policy ¶ 4(a)(i). The domain name is mercury.cash and Complainant’s trademark is MERCURY CASH. They are identical, except for minor punctuation. The Panel therefore finds that Respondent’s domain name is identical to the MERCURY CASH trademark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
Rights and Legitimate Interests: Policy ¶ 4(a)(ii).
The Panel will not make a finding on this, the second element, namely whether the Respondent has a right or legitimate interest in the disputed domain name. There are three reasons why the Panel takes that course.
First, it will be seen that the Panel has held that it has not been proved that the Respondent registered the domain name in bad faith. Consequently, it cannot be shown that the Respondent registered and used the domain name in bad faith (emphasis added), as both must be proved. As a complainant is required to prove all three elements under the Policy and as the Complainant has failed on one of them, it clearly cannot succeed on this Complaint. A finding on the second element, rights and legitimate interests, therefore cannot effect the outcome of this proceeding and it is simply not necessary to make such a finding.
Secondly, it is clear to the experienced observer that this dispute may go further and be taken up in later proceedings. Accordingly, the Panel does not wish to make findings that might be seen to be findings on any issue other than those strictly necessary to dispose of the current proceeding.
Thirdly, although the Panel has found that the dispute is properly before the Panel and within its jurisdiction, the parties have ranged far and wide on matters which are not strictly relevant to the proceeding. In the course of doing so, the real issues in the case have been well concealed. That is particularly so on the issue of rights and legitimate interests. To go into the great detail of the evidence and submissions on this issue would simply make an already complicated matter even more complicated and for no benefit, as the Complainant has failed to prove an essential issue, namely that the domain name was registered in bad faith.
Registration and Use in Bad Faith
The Complainant must show that Respondent registered the domain name in bad faith and also that he has used it in bad faith. That dual requirement is made clear by the plain words of the Policy. It is also the consistent view of writers and observers of the domain name process, a view now regularly reflected in a succession of decisions of panelists. Moreover, it is equally clear that a complainant will lose a proceeding if an attempt is made to shoehorn evidence of bad faith use into the requirement to prove bad faith registration. The two requirements are separate and both must be proved and must be genuinely and clearly evidence of, first, bad faith registration and, secondly, bad faith use.
It is here that the Complainant’s case falters and where it has failed for lack of evidence on this important issue and an issue that might well be seen as the most important of all issues in these proceedings.
The importance of the issue does not seem to have been appreciated by the parties. The Complainant at least makes an allegation that the domain name was both registered and used in bad faith. However, it then strangely adduces evidence only related to alleged conduct of the Respondent after the registration of the domain name and, indeed, even at a later point, i.e., after the Respondent resigned from the company and after the parties had fallen out and begun their acrimonious relationship.
Indeed, there is a curious dichotomy in the evidence of the Complainant on the registration of the domain name. Any evidence of the relationship between the parties from the beginning of their commercial relationship and any evidence from which an inference might be drawn that threw light on how, why and when the Respondent registered the domain name, seems for some reason to be studiously avoided; but it makes a series of allegations both in the Complaint and in its additional statement supported by detailed evidence designed to show the intention of the Respondent to cause damage to the company and to argue out the issue of the financial dealings between the parties. The latter, of course, are relevant, but they relate, at best, to bad faith use of the domain name and not to bad faith registration, which is left untouched.
Respondent’s approach is also curious. It apparently decided at the time of the Response to leave out any evidence, if there were any, of good faith registration of the domain name. In fact, it gives the following heading to the section of the Response dealing with this issue:
“With respect to the allegation as to whether I have used the Disputed Domain in bad faith.”(emphasis added).
It appears from that phraseology that the Respondent has made a conscious decision to ignore the requirement for proof of bad faith registration as if it did not exist and to address only bad faith use. It should be added that the heading to this section of the Response cites “UDRP Policy 4 (a) (iii)” which makes it clear beyond doubt that the issue is both bad faith registration and bad faith use.
Up to the time of the Complainant, the Response and the additional statement by the Complainant, there was therefore no evidence one way or the other that might show or from which an inference might be drawn that the domain name was registered in bad faith or otherwise.
However, the Respondent then filed its own additional statement, and as it was filed in reply to the Complainant’s additional statement and as the Panel must make sure that both parties are treated equally, the Panel has allowed it to be received and take into consideration. In that additional statement, the Respondent submitted (and certified that the statement was “ complete and accurate”) that he purchased the domain name in good faith when starting the Complainant company; the Complainant never entered into an agreement indicating when or how he should transfer the rights of the domain name to the Complainant; and none of the current management was in the company during formation nor during the first years of its operation, i.e., the time when Respondent purchased the domain name. There is therefore, albeit at this late stage in the proceeding, evidence showing that the Respondent did not register the domain name in bad faith.
That evidence is of course not conclusive but at least it clears up some of the more obvious omissions in the evidence. The Respondent therefore claims that he registered the domain name in good faith, that by inference the domain name was owned by him and that nothing has been done since then to change that situation.
The panel’s assessment of this new evidence is that although it is not conclusive, it reinforces the notion that it has not been proved that the Respondent probably registered the domain name in bad faith, as there is no evidence that he did and at least some evidence, albeit from the Respondent himself, that he registered it in good faith. Put somewhat differently, it would be unsafe to conclude on the still meagre nature of the evidence that the Respondent registered the domain name in bad faith.
The Panel’s assessment is that on the balance of probabilities, the Respondent registered and paid for the domain name as part of his contribution to the setting up of the company, at a time when the parties were harmonious and that neither party moved to have that arrangement changed at any time thereafter. That does not show bad faith registration.
There is a second reason why it has not been proved that the domain name was registered in bad faith. To prove bad faith of any sort it must be shown that the bad faith was real and actual or to put it in somewhat different words, that there was some object to which the bad faith was directed. The UDRP has as its basis the protection of trademarks and the deterrence of conduct that is inimical to the legitimate interests of trademark owners. Accordingly, if it is said that a person registering a domain name was motivated by bad faith in registering a domain name, which the UDRP requires to be proved by evidence, it must be shown that there was a trademark that the registrant was seeking to compromise or undermine. That clearly cannot be so if the domain name was registered before the trademark was in existence. If the domain name was registered before the relevant trademark was registered, there cannot have been bad faith registration.
That is well accepted and noted in many UDRP decisions. 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. 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.”).
The present case is a classic illustration of that principle. Here, the domain name was registered on March 13, 2017. But the MERCURY CASH trademark was not registered until well after that date, in fact not until May 8, 2018. Accordingly, the domain name could not have been registered with the motivation of undermining or compromising the MERCURY CASH trademark as it did not exist at that time.
Indeed, as noted above, the likelihood is that the domain name was registered when the parties were in a harmonious relationship and all working together to establish their new venture. This does not sound remotely like bad faith. Moreover, it could not have been in bad faith as, not only had the trademark not been registered by March 13, 2017, but had not even been applied for by that date. It was filed on August 9, 2017 which was also after the domain name was registered.
The Complainant’s problems do not end there because when the Complainant filed for its trademark it asserted to the USPTO that the MERCURY CASH mark had been first used and first used in commerce on May 16, 2017, which was also after the domain name had registered. Thus, when the domain name was registered, the MERCURY CASH trademark was not even being used.
Finally on this issue, the Complainant itself was not incorporated until May 8, 2018, so the domain name was well and truly on the books over a year before the Complainant came into existence.
All of these circumstances reinforce the notion that it has not been shown that there was any bad faith on the part of the Respondent when he registered and paid for the domain name. In fact, the contrary seems to be far more likely.
As the Complainant has not shown that the domain name was registered in bad faith it cannot show that the domain name was both registered and used in bad faith.
The Complainant has therefore not proved one of the three elements that it is required by the Policy to prove and the Respondent therefore prevails.
REVERSE DOMAIN A NAME HIJACKING
The Respondent has asked for a finding that the Complaint has been brought in bad faith as an abuse of the administrative proceeding, in effect reverse domain name hijacking. The Respondent has prevailed but that does not mean the proceeding itself is an abuse or an exercise in reverse domain name hijacking. Rather, the proper categorization of the proceeding is that the Complaint was filed properly to prevent the domain name being used in a way that the Complainant finds deleterious to its interests. The case has failed not because the claim should not have been brought but for a lack of evidence on a major issue. The motion for a finding that the Complaint was brought in bad faith as an abuse of the administrative proceeding is therefore denied.
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 mercury.cash domain name REMAIN with Respondent.
The Honorable Neil Anthony Brown KC
Panelist
Dated: November 9, 2022
