Minute Men, Inc., filed a UDRP to get the matching domain, MinuteMen.com from its registrant. Registered in 1998, the domain has been in the possession of PTB Media.
Minute Men, Inc., dba Minutemen Staffing, has provided employment staffing and related services under the MINUTEMEN mark, in which it has common law and registered trademark rights. The Complainant operates from the domain MinutemenStaffing.com since 1998.
Respondent, PTB Media Ltd, has provided a declaration of Michael Goetz, Respondent’s Portfolio Manager, that on or around February 18, 2006, as part of its domain name investment strategy of occasionally purchasing or acquiring through auction generic domain names that were deemed to be good investments, Respondent purchased the minutemen.com common word domain name along with 8 other common word domain names as part of an investment portfolio, namely: january.com, audition.com, liveinternet.com, weatherbureau.com, rewardtravel.com, eyeshadow.com, nickname.com and nepal.net.
In their response, the Respondent noted that they are not a cybersquatter as Complainant asserted. In their response via their counsel, attorney Jason Schaeffer of ESQwire.com, they noted:
“Over the past two decades, Respondent has registered tens of thousands of domain names and currently owns many of similar structure to the minutemen.com domain name. Thus, the only reasonable inference to be drawn leads to the conclusion that Respondent does not target trademarks.”
The majority of the three member panel decided that the case sides with the Respondent; however, one panelist dissented. In a 2-1 decision, the domain was ordered to remain with the Respondent.
The domain transfer was denied.
Minute Men, Inc. v. Domain Administrator / PTB Media Ltd
Claim Number: FA2407002106746
PARTIES
Complainant is Minute Men, Inc. (“Complainant”), represented by John L. Krieger of Dickinson Wright PLLC, Nevada, USA. Respondent is Domain Administrator / PTB Media Ltd (“Respondent”), represented by Jason Schaeffer of ESQwire.com, New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is minutemen.com, registered with GoDaddy Online Services Cayman Islands Ltd.
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.
Dawn Osborne and Steven M. Levy, Esq. as Panelists and Alan L. Limbury as Chair.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on July 17, 2024. Forum received payment on July 17, 2024.
On July 17, 2024, GoDaddy Online Services Cayman Islands Ltd. confirmed by e-mail to Forum that the minutemen.com domain name is registered with GoDaddy Online Services Cayman Islands Ltd. and that Respondent is the current registrant of the name. GoDaddy Online Services Cayman Islands Ltd. has verified that Respondent is bound by the GoDaddy Online Services Cayman Islands Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 19, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 12, 2024 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@minutemen.com. Also on July 19, 2024, 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 August 12, 2024.
On August 20, 2024, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, Forum appointed Dawn Osborne and Steve Levy as Panelists and Alan L. Limbury as Chair.
On August 20, 2024, pursuant to Forum’s Supplemental Rule 7, Complainant requested that the Panel consider a Supplemental Submission which it submitted to Forum together with proof of service on Respondent.
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 transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Since 1968 Complainant, Minute Men, Inc., dba Minutemen Staffing, has provided employment staffing and related services under the MINUTEMEN mark, in which it has common law and registered trademark rights.
On April 13, 1998 and January 3, 2020 respectively, Complainant registered the domain names minutemeninc.com and minutemenstaffing.com. The minutemeninc.com domain name resolves to the “www.minutemenstaffing.com” website, where Complainant advertises its services, using the MINUTEMEN mark. Complainant also advertises its services under the mark through 35 brick and mortar locations in the United States. As a result of its advertising efforts and over 50 years of use, Complainant’s services offered under the MINUTEMEN mark have become well known.
Respondent’s minutemen.com domain name is identical or confusingly similar to Complainant’s MINUTEMEN mark.
Respondent lacks rights or legitimate interests in the minutemen.com domain name. Respondent is undoubtedly familiar with and attempting to trade off Complainant’s goodwill in the MINUTEMEN mark given that Complainant had been offering its services under that mark for over thirty years before Respondent registered the domain name. Based upon a review of web captures stored on the Wayback Machine, Respondent appears to have never used the domain name in connection with a website for any bona fide offering of goods or services and has only used it for pay-per-click links for the exact same services as Complainant provides under the MINUTEMEN mark and to advertise the domain name for public sale for $500,000, a price in excess of any reasonable out-of-pocket expenses for the domain name incurred by Respondent.
Complainant has not approved, authorized, or licensed to Respondent the right to use its MINUTEMEN mark in connection with any domain name. Respondent is not commonly known by the domain name or any name containing the MINUTEMEN mark and the unauthorized incorporation of the MINUTEMEN mark in the minutemen.com domain name demonstrates that Respondent does not have rights or legitimate interests in the domain name. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (finding that respondent lacked rights and legitimate interests in the domain name because respondent was not authorized to use complainant’s TELSTRA marks, and because TELSTRA is an invented term, it is not a mark that another would legitimately choose unless seeking to create an impression of an association with complainant).
Respondent registered and is using the minutemen.com domain name in bad faith because there is no colorable rationale for use and registration of the domain name other than (i) to sell it to Complainant; (ii) to disrupt the business of Complainant by causing Internet users and consumers to think they are accessing links to websites sponsored by Complainant; or (iii) to attract for commercial gain Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark, particularly through the use of the pay-per-click links listing services directly related to Complainant’s business.
The fact that Respondent registered a domain name identical to Complainant’s MINUTEMEN mark and nearly identical to Complainant’s domain names for related services listed on Complainant’s website, and subsequently making a public offer to sell the domain name for $500,000, is strong evidence that: (i) Respondent recognized the commercial value in the domain name at the time of its registration, (ii) Respondent intended to offer to sell the domain name to Complainant as the trademark owner or to Complainant’s competitors, (iii) Respondent intended to make such an offer at the time of the domain name registration, and (iv) Respondent intended to make a profit off such sale, all of which supports a finding of bad faith.
Respondent’s use of the domain name to divert Internet users seeking Complainant’s website and services is disruptive to Complainant’s business and is further evidence of bad faith registration and use under the Policy.
B. Respondent
Respondent, PTB Media Ltd, has provided a declaration of Michael Goetz, Respondent’s Portfolio Manager, that on or around February 18, 2006, as part of its domain name investment strategy of occasionally purchasing or acquiring through auction generic domain names that were deemed to be good investments, Respondent purchased the minutemen.com common word domain name along with 8 other common word domain names as part of an investment portfolio, namely: january.com, audition.com, liveinternet.com, weatherbureau.com, rewardtravel.com, eyeshadow.com, nickname.com and nepal.net.
Mr. Goetz declared that Respondent decided to purchase minutemen.com as part of a 9-domain name group because the names are common dictionary words (or combinations of dictionary words) that have meaning and understanding in the public domain, which were deemed valuable for domain investing. English word — or combination of words — domain names have broad public association and may be used for any number of potential uses or businesses.
Respondent says that, domiciled in Hong Kong, it has registered thousands of similar domain names because of their attractiveness and value (not because of trademarks) and had no awareness of Complainant or its mark until the filing of this Complaint.
Respondent purchased the minutemen.com domain name solely because it appears to be a brandable and inherently valuable domain name which anyone is entitled to register and not because of any trademark. Respondent recognized that as a designation of the United States Revolutionary war solders, “the Minutemen,” the minutemen.com domain name evokes power, strength, patriotism and many other positive feelings that any owner could use in branding and marketing for many services and offerings.
From 1999 to 2006, as is typical of domain names in which Respondent invests, Respondent purchased 56 other domain names that end in “men” or “women” and also owns 6 other domain names that contain the word “minute,” including laminutes.com, lastminutelistings.com, lastminuteweekendbreaks.com, perminute.com and secondminute.com.
Respondent either develops the domain names or resells them to other entities looking for easy-to-remember domain names for Internet addresses for their web sites.
Respondent has hosted many of its underdeveloped domain names with domain name parking services that pay a share of the advertising revenue they generate, an industry-wide accepted practice. The minutemen.com domain name is hosted with a service which places pay-per-click (“PPC”) advertising links based on a partner advertiser feed on hosted domain names, sharing the advertising revenue with the domain name owners. Since 2006 Respondent has used the minutemen.com domain name to display PPC advertising links related to general interest topics.
Historically, there were no links related to Complainant or “employment” services on the minutemen.com domain name’s webpage. Over the past decade Respondent has used several different parking providers. If at certain times in the past, some links appeared that relate to “employment services” they were not intentionally placed with Complainant’s trademark in mind and were due to changes in parking systems and providers. The archives and history demonstrate that much of the use of the domain name is unrelated to Complainant and not improper.
The links are not selected by Respondent and are auto generated by the parking service’s advertising partner and are constantly changing based on their keyword advertising inventory, user search behavior and location (similar to what one would find in a search engine result) and the Google algorithm. Respondent owns tens of thousands of domain names of which such advertising partner’s auto-generated links appear on any given domain at any time. More recently, due to a change in parking providers and the algorithm, it appears that generic links related to employment services appeared on the website page. Respondent was not aware of these links and only became aware of them upon receipt of the Complaint. Out of caution and respect for Complainant, Respondent requested its parking service provider remove those links and replace them with more general topics of interest like online degrees, insurance, mortgages and social media account management.
Respondent did not purchase and register the minutemen.com domain name with Complainant’s purported trademark in mind or with intent to sell it to Complainant, to disrupt Complainant’s business or to confuse consumers seeking Complainant’s web site. Indeed, at the time the minutemen.com domain name was registered there is no evidence that Complainant had widespread fame and notoriety such that Respondent would or should have been aware of its existence. Even today, Complainant has what appears to be a specialized location of series [scil services] in the mid-west of the United States. As the minutemen.com domain name was first registered in 1998, and then sold in 2006 to Complainant [scil Respondent] as part of a large investment group of domain names, it is hard to argue that Respondent would have any reason to believe Complainant (who had not taken any action against the prior owners) had any rights or claims to the minutemen.com domain name.
For almost two decades, Complainant has not contacted Respondent regarding the minutemen.com domain name and Respondent was not aware of Complainant. Had Complainant contacted Respondent, Respondent could have addressed Complainant’s concerns. Instead, Complainant chose to file a UDRP complaint more than eighteen (18) years after Respondent purchased the asset and twenty-six (26) years since the domain name was registered. At no time did Respondent target or intend to target the relatively unknown Complainant. Respondent continues to operate and rely on decisions of numerous UDRP panels that have found that this (and many other similar companies’) investment strategy of domain registration and use is a legitimate business activity.
Complainant’s trademark was registered on April 16, 2024. A search of the USPTO database shows many third-party marks for both MINUTEMEN and MINUTE MEN, which belies Complainant’s claims of exclusive or popular association of the term with Complainant. Further, there is no evidence that there is widespread global awareness of Complainant today or in February 2006 when the domain name was purchased by Respondent from another domain name investor as part of a portfolio purchase.
As to legitimacy, Complainant has not produced any evidence to suggest that Respondent has sought to target Complainant in any way over the more than 18 years since it registered the domain name, nor any evidence to suggest that Respondent is engaged in a pattern of registering domain names corresponding to Complainant’s trademark or to third-party trademarks. Under the Policy, the registration of descriptive or dictionary word(s), such as the minutemen.com domain name, or even brandable and acronym domain names, ipso facto establishes a respondent’s legitimate interest, provided the domain name was not registered with a trademark in mind and there is no evidence of targeting or passing off.
In cases such as these, where a domain name is a known combination of English words and a highly popular description of historical note, the key factor is whether a respondent registered the domain name for its own purpose or to profit from the inherent value of the word without intending to take advantage of a complainant’s rights.
Although Complainant has demonstrated that it has used the popular and common term “Minutemen” in connection with its staffing business, there is no evidence that Complainant was well known globally in 2006, and it is clear that even today, Complainant’s business is fairly narrow and focused in the midwestern region of the United States. Such limited and specialized use militates against a finding that Respondent could have targeted Complainant when it registered the domain name.
In sum, contrary to Complainant’s assertions, Respondent is not a cybersquatter. Over the past two decades, Respondent has registered tens of thousands of domain names and currently owns many of similar structure to the minutemen.com domain name. Thus, the only reasonable inference to be drawn leads to the conclusion that Respondent does not target trademarks. Such pattern of descriptive domain name registration supports an inference that the descriptive minutemen.com domain name was not registered with the intent to target a trademark. On the balance of probabilities, considering the facts of this case and Respondent’s other descriptive domains, Respondent has established rights and a legitimate interest in the domain name.
The fact that some links have appeared relating to staffing or employment services does not provide any basis to infer that in October 2006, Respondent registered the minutemen.com domain name to target Complainant. Venderstorm Ventures GmbH & Co. KG v. Domain Administrator, PTB Media Ltd., D2024-1287 (WIPO July 5, 2024).
As to bad faith, there is no evidence of bad faith registration or use. Respondent registered the minutemen.com domain name simply because “Minutemen” was a common English term, available as part of a 9-domain name portfolio with other similar quality domain names. Indeed, Complainant itself seeks to associate its business with the famed United States Revolutionary war “Minutemen”, as is evidenced by Complainant’s logo. A review of the USPTO database reveals many third-party applications and registrations for trademarks with the term MINUTEMEN or MINUTE MEN. Thus, it is clear that the domain name has inherent value independent of Complainant. All evidence points to a finding that this is not a case of a cybersquatter looking for trademarks upon which to prey.
Further, Respondent registered many similarly valuable names on or around the same time as it registered the minutemen.com domain name that were available for registration on a first come, first served basis. Respondent’s good faith is also supported by the fact that it purchased the domain name as part of a 9-domain name portfolio from another domain investor. Regardless of whether a domain name is purchased directly from the prior owner or purchased at auction after a domain name has expired, absent specific proof of intent to profit from or target Complainant’s mark, bad faith registration cannot be established.
Given the nature of Respondent’s business and its portfolio of names, the lack of fame and lack of global awareness of Complainant’s brand now and certainly in 2006, the fact that Respondent is domiciled and located in Hong Kong (while Complainant’s business seems to be solely focused in the midwestern states of the US) all militate in favor of finding that Respondent purchased the domain name because of its attractiveness and inherent value as a common word and well-known term dating back to the American Revolutionary war. Accordingly, the Panel should find that the facts support Respondent’s good faith purchase of an available domain name and negate a claim of bad faith registration.
Complainant baldly claims that Respondent must have registered the domain name with knowledge of it or to sell it to Complainant. No serious facts are proffered by Complainant to support this allegation. It would be hard to argue that anyone outside of the midwestern states would have reason to know of Complainant’s business when Complainant originally registered its own domain name minutemeninc.com on April 13, 1998, and the minutemen.com domain name was registered months later on November 18, 1998. There is no evidence of the reach, notoriety and fame of Complainant in 1998 let alone today. Indeed, all the evidence indicates no awareness of Complainant whatsoever and that the domain name was purchased in October 2006 because it was of similar quality and value as the other common word domains in the 9-domain name portfolio.
Respondent’s legitimate interest is bolstered by the fact that it uses the domain name to post PPC links by a third-party domain name parking provider. For at least a decade, Respondent’s pages showed non-infringing links either related to general topics of interest, based on Yahoo’s or Google’s algorithm.
The fact that some links have appeared relating to staffing or employment services does not provide any basis to infer that in October 2006, Respondent registered the domain name to target Complainant. Venderstorm Ventures GmbH & Co. KG v. Domain Administrator, PTB Media Ltd., D2024-1287 (WIPO July 5, 2024).
The long delay in taking any action for almost 20 years raises the inference that Complainant did not truly believe Respondent’s registration and use of the domain name was in bad faith or that Complainant had been targeted.
Complainant (through its counsel) knew or should have known the facts before filing its Complaint. It certainly had an obligation to understand the UDRP rules. Any amount of due diligence would have shown that it was a claim calculated and designed to steal a valuable domain name from its rightful owner. Given the rise of questionable claims brought by sophisticated counsel on highly aged domain names, a finding of Reverse Domain Name Hijacking is very important for the UDRP and domain owners to deter future claims and abuses of the system.
In cases with more favorable facts than the instant matter, allegations of Reverse Domain Name Hijacking have been upheld. Panelists have found RDNH in circumstances where a respondent’s use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy.
C. Complainant’s Supplemental Submission
Respondent admits that the minutemen.com domain name is similar to Complainant’s common law and registered trademarks for MINUTEMEN, and as a result, this element is not at issue. Respondent attempts to muddle the issue by claiming that Complainant did not obtain a federal trademark registration until April 16, 2024. However, the timing of when Complainant obtained a federal registration is irrelevant to the issue as to whether the domain name is similar to Complainant’s mark and is equally irrelevant as to whether Complainant has shown common law rights dating back to 1968.
Similarly, Respondent’s argument about the USPTO database showing “many third-party marks for both MINUTEMEN and MINUTE MEN,” also has no bearing on this factor. More importantly, this assertion is also factually incorrect as Respondent’s own Annex shows that there is only one (1) live registered mark for MINUTEMEN, which is Complainant’s mark, as all the other marks include other terms, are pending applications, or have been abandoned or cancelled. For example, of the nineteen (19) results shown in Respondent’s USPTO search, fourteen (14) of those are dead marks, and the two other registered marks are for MINUTEMEN IPA and THE CALPEPER MINUTEMEN.
As to legitimacy, although investing in domain names and reselling them can be a legitimate commercial activity, as noted in The Toronto-Dominion Bank v. Domain Protection, FA2007001906372 (Forum Oct. 30, 2020):
“a domain name reseller will not likely succeed in defending against a claim that it has no rights to or legitimate interests in a challenged domain name that is confusingly similar to the mark of a UDRP complainant where it is shown that the reseller has employed its domain name either to compete with the business of that complainant or that it has employed the domain name to work mischief in the online marketplace at the expense of Internet users or that complainant.”
Use of the domain name for PPC links does not show a right to or legitimate interest in the domain name and is sufficient evidence of bad faith. Here, Respondent offers no evidence to refute that the website linked to the domain name included PPC links that redirected website visitors to competitors of Complainant. Respondent instead attempts to place the blame on a third-party domain monetization service for the PPC links. However, Respondent is still responsible for the PPC links. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), at section 3.5:
‘Particularly with respect to “automatically” generated pay-per-click links, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name….”
Any claim by Respondent that it has rights to a legitimate interest in the domain name because it is a business that invests in and resells domain names is extinguished as it relates to the minutemen.com domain name because the domain name was being used with PCC links that compete with Complainant.
Even for individuals or entities involved in domain name reselling, they must show that the domain name was viewed as a common term as of the date it was purchased. Respondent bought the domain name on or around February 18, 2006. It is undisputed that as of 2006, Complainant had been operating in the United States for over 38 years and its domain name minutemeninc.com, which was registered on April 13, 1998, had been in use for nearly eight years. In fact, the website at the minutemeninc.com, even back in 2005, noted that the business had been operating for more than 35 years.
With this background, Respondent alleges in its Response that it has rights or legitimate interest in the minutemen.com domain name because it is “generic” and it has a legitimate business in registering “tens of thousands of domain names” that are descriptive or generic. However, Respondent does not provide any evidence to show that as of the date the domain name was bought by Respondent (February 18, 2006) Complainant had not established strong enforceable rights in the MINUTEMEN mark in the United States and, therefore, acquired distinctiveness.
Further, as shown by the other domain names purchased by Respondent on the same day, the term “minutemen” is not generic as it brings to mind a relatively obscure part of American history and evokes different meanings based on its use with different goods or services, such as patriotism, strength, rapid deployment, and overcoming obstacles. In contrast, the other domain names purchased by Respondent are composed of generic common terms like january.com and eyeshadow.com. In purchasing the minutemen.com domain name, especially, given its known relation to American history, Respondent should have been aware of its potential impact on an American company.
Other than some self-serving statements by Mr. Michael Goetz that Respondent selected “minutemen” simply for its attractiveness as a dictionary word, Respondent has not provided any evidence of any use of the domain name based on Respondent’s understanding of the meaning “soldiers of American Revolutionary War”, such as a website providing information on same. The declaration of Mr. Goetz, purportedly made on personal knowledge, should be disregarded in its entirety because it lacks foundation. He provides no background to provide a foundation for how he could possibly have personal knowledge of events and reasoning for purchasing the domain name.
Complainant has provided a declaration of Dennis Francis showing the renown of the MINUTEMEN mark as of 2006, which proves that the minutemen.com domain name no longer would have been recognized as a common term when Respondent purchased it. As of 2006, Complainant had fifteen (15) brick and mortar locations across three states – Ohio, Michigan, and Illinois. In addition, in 2006 alone, Complainant had issued more than 50,000 W2s for the employees it assigned to customers. Further, for the year 2006 Complainant’s revenue was approximately $120 million dollars, which is consistent with Complainant’s revenue for the three-year period to 2006. As of 2006, Complainant provided services to major companies including private companies, publicly traded companies, municipalities, and other high-profile clients such as the Cleveland Browns and Cleveland Guardians. Thus, as of 2006, U.S. consumers viewed the term MINUTEMEN as a well-known and distinctive trademark in the employment staffing field and associated it with a single source – Complainant – and not as a common dictionary term.
As to bad faith, Respondent must have known of Complainant’s rights in the mark given over 38 years of exclusive use of the mark in the United States as of the date the domain name was bought by Respondent. Further, the fact that the domain name was used for a period of time for PCC links that compete with Complainant is enough to show bad faith, regardless of whether there were other periods where it was used with links unrelated to Complainant’s business.
Respondent’s argument that Complainant’s alleged long delay in taking any action against the domain name raises the inference that the Complainant did not truly believe that the domain name was registered or being used in bad faith is without merit. In one of the cases upon which Respondent relies, cited for a different proposition, Venderstorm Ventures GmbH & Co. KG v. Domain Administrator, PTB Media Ltd., D2024-1287 (WIPO July 5, 2024), a panel held that mere delay does not raise such an inference, stating:
“The Panel does not consider that mere delay between the registration of a domain name and the filing of a complaint either bars a complainant from filing such a case, nor from potentially prevailing on the merits. See WIPO Overview 3.0, section 4.17.”
Moreover, Respondent’s delay is explained by the timeline outline by both Complainant and Respondent—Complainant’s concern about bad faith was increased when the domain name began to use PCC links competing with Complainant’s business.
Finally, based on the Response, Complainant now understands the relationship between Respondent and Port Media Holdings, and that Port Media Holdings originally registered the domain name. Port Media is a serial cybersquatter operating under the guise of being a legitimate domain business. Complainant has discovered numerous instances in which prior panels have transferred domain names from Port Media Holdings because Port Media acted in bad faith. For example: Société Nationale des Chemins de Fer Français, SNCF v. Moniker Privacy Services / 3597435 Domain Administrator Port Media Sales, Case No. D2011-0527 (WIPO May 27, 2011); Montres Breguet S.A. v. Domain Administrator / PortMedia, FA 1111001417906 (Forum Feb. 7, 2012); and The Weather Underground, Inc. v. Domain Administrator / PortMedia Case No. FA1203001433949 (Forum May 9, 2012). This evidence shows that Respondent is not unaware of the rights that entities held in domain names previously owned by Port Media.
Complainant has not engaged in Reverse Domain Name Hijacking. There is no factual basis upon which to support such a claim. Complainant is the trademark owner, has used the mark in commerce for over 50 years, and has identified legitimate bad faith use of the domain name by Respondent. Moreover, Complainant did not bring the claim in bad faith or to abuse this administrative proceeding as it had legitimate arguments for filing the Complaint.
FINDINGS
By a majority, the Panel finds that Complainant has failed to establish all the elements entitling it to relief.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and 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
It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
Complainant has shown that it has rights in the MINUTEMEN mark through registration with the USPTO (Reg. No. 7,358,570, registered on April 16, 2024 upon application filed on March 3, 2023).
The Panel finds Respondent’s minutemen.com domain name to be identical to Complainant’s mark, since the inconsequential “.com” generic top-level domain (“gTLD”) may be ignored. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
It is unnecessary to consider under this element whether Complainant has shown that it had common law rights in the MINUTEMEN mark when the domain name was registered by Respondent. This issue is addressed under the third element below.
Complainant has established this element.
Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to Respondent of the dispute, the use by Respondent 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) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The relevant date to determine whether the Respondent has rights or legitimate interests in the domain name is the date of notice to Respondent of the dispute, in this case the filing date of the Complaint, July 17, 2024. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0) at par. 2.11. Despite Respondent’s submission of archived screenshots showing the display of generic PPC links from 2006 through 2009, and redirection to the SEDO auction site from 2015 through 2018, at the time that the Complaint was filed the domain name resolved to a parked webpage indicating that the domain name is for sale and displaying PPC links to services of the kind provided by Complainant, namely “Employment Staffing”, “Employee Self Service Portal Software” and “Find Temp and Direct Hire Employee”.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the minutemen.com domain name. See JUUL Labs, Inc. v. Dryx Emerson / KMF Events LTD, FA1906001849706 (Forum July 17, 2019).
It is well established that the domain name registrant is responsible for PPC links, whether or not the registrant was aware of them. Accordingly, the Panel finds that, although Respondent’s website for many years displayed PPC links unrelated to Complainant’s business, its current use deprives Respondent of rights or legitimate interests in the domain name.
Complainant has established this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.
(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) 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;
(iii) 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 its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
Although it is highly likely that the amount of US$500,000 for which the domain name is available for public sale exceeds Respondent’s out-of-pocket costs directly related to the domain name, there is no evidence indicating that Respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to Complainant or to a competitor of Complainant.
Respondent’s recent use of the domain name to display PPC links relating to Complainant’s business is clearly use in bad faith under Paragraph 4(b)(iv) of the Policy. Such use is evidence of both bad faith registration and bad faith use but such evidence is not necessarily conclusive, since it may be weighed against any evidence of good faith registration. See Passion Group Inc. v. Usearch, Inc., eResolution Case No. AF-0250, followed in Viz Communications, Inc., v. Redsun dba www.animerica.com and David Penava, WIPO Case No. D2000-0905.
As stated in Yoomedia Dating Limited v. Cynthia Newcomer / Dateline BBS, WIPO Case No. D2004-1085:
“Previous decisions have considered the matter of good faith registration followed by bad faith use. The prevailing view is that the Policy was not designed to prevent such situations. In Substance Abuse Management, Inc. v. Screen Actors Modesl [sic] International, Inc. (SAMI), WIPO Case No. D2001-0782, the panel stated that “If a domain name was registered in good faith, it cannot, by changed circumstances, the passage of years, or intervening events, later be deemed to have been registered in bad faith”. In Teradyne Inc.Teradyne, Inc. [sic] v. 4tel Technology, WIPO Case No. D2000-0026, the Respondent registered a domain name to reflect its own business name but subsequently sought to sell the name for profit when its business dissolved. The panel found that to decide the case on the subsequent bad faith action would “extend the Policy to cover cases clearly intended to be outside its scope.” Similarly, in Telaxis Communications Corp. v. William E. Minkle, WIPO Case No. D2000-0005, the respondent registered the disputed domain name in good faith but subsequently began to use it in bad faith. It was held that because the registration was made in good faith the requirement of Paragraph 4(a)(iii) was not met”.
In considering whether the minutemen.com domain name was registered in bad faith, the Panel notes that the domain name was bought by Respondent on February 18, 2006, 18 years prior to the registration of Complainant’s mark. Hence the critical issues in this case are whether Complainant had acquired, through use, common law rights in that mark by then; whether Respondent was then aware or should have been aware of any such mark; and, if so, whether Respondent registered the domain name in order to target Complainant.
Complainant’s Supplementary Submission, which the Panel has taken into account, shows that, in the three states of Ohio, Michigan and Illinois, Complainant’s reputation was well-known by the time Respondent acquired the domain name and the Panel finds that Complainant did then have common law rights in the MINUTEMEN mark. However, Complainant has not shown that it then had or now has a significant reputation within the full breadth of the United States or internationally.
The domain name comprises two dictionary words in common use and evocative of the American Revolutionary war. Further, many American businesses use the name for all manner of goods and services. Since 1962 the US military has used an intercontinental ballistic missile called the Minuteman, and “Minutemen” is the title of a 1980’s punk rock band and a 1940’s superhero comic book series.
Against this backdrop, the majority of the Panel finds it unlikely that Respondent was aware of or targeted Complainant. Rather, its claim to be a domain name investor which purchases brandable and inherently valuable domain names is supported by the evidence. Respondent’s registration of many other generic or descriptive domain names, including some with the “…men” postfix, provides legitimacy to the assertion that it was following this practice rather than targeting specific trademarks with these domain names.
Complainant cites Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (finding that TELSTRA is an invented term and is not a mark that another would legitimately choose unless seeking to create an impression of an association with complainant). That case sets out a standard that bad faith may be based on non-use of a domain name where the asserted mark is well-known and there is no conceivable active use that could be made of the disputed domain name that would not amount to an infringement of the complainant’s rights in its mark. Here, the minutemen.com domain name is not an invented term and is in active use in many ways unrelated to Complainant or its business. Thus, it does not meet the “inconceivability” standard set out in the Telstra Corp. decision.
The majority of the Panel is not satisfied that Respondent, based in Hong Kong, would or should have been aware of Complainant or its mark when registering the domain name. Even if Respondent was or should have been so aware, its use of the domain name to generate PPC revenue did not involve links related to Complainant’s business until recently, as Complainant has recognized in its Additional Submission:
“Complainant’s concern about bad faith was increased when the Infringing Domain began to use PCC links competing with Complainant’s business.” [emphasis added]
PPC websites may constitute a bona fide offering and use in good faith if there is no targeting of a complainant’s trademark. The PPC links on Respondent’s website between November 6, 2006 and February 20, 2009 were Business, Cars, Education, Entertainment, Finances, Health, Homes, Insurance, Internet, Legal and Shopping.
Taking all the circumstances of this case into account, the majority finds that Complainant has failed to show that the domain name was registered in bad faith.
Complainant has failed to establish this element.
REVERSE DOMAIN NAME HIJACKING
Paragraph 15(e) of the Rules provides that 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 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. The mere lack of success of the Complaint is not, on its own, sufficient to constitute reverse domain name hijacking. See WIPO Overview 3.0, section 4.16.
Respondent asks the Panel to make a finding of Reverse Domain Name Hijacking, contending that any amount of due diligence would have shown Complainant (through its counsel) that this was a claim calculated and designed to steal a valuable domain name from its rightful owner.
The Panel is not so persuaded. Complainant has shown that it had common law rights in the MINUTEMEN mark in part of the United States when the minutemen.com domain name was registered and that it has been used in bad faith. In these circumstances, the Panel does not consider that Complainant, represented by counsel, ought to have known that it could not succeed. Accordingly, the Panel does not find that the Complaint was brought in bad faith.
Dissenting Comments from Dawn Osborne
The Majority of the Panel have found in favour of the Complainant with respect to confusing similarity, lack of rights or legitimate interests, and no reverse domain name hijacking and I agree with the outcome of the majority decision on these points.
However, I wish to record that I cannot agree with the conclusions of the Majority of the Panel as to registration and use in bad faith due to:
i) A principal director of the Respondent is also a principal director of the related company PortMedia that acquired the Domain Name as the Registrant’s predecessor in title in 2006. That predecessor in title Port Media has been found to have registered and used domain names in bad faith several times under the UDRP suggesting a pattern of bad faith activity;
ii) The Complainant had been operating in the United States for over 38 years with an annual turnover in 2006 of 120 Million USD, and its domain name minutemeninc.com had been in use for nearly eight years, at the time the Respondent acquired the Domain Name in 2006;
iii) The Respondent and its predecessor in title being an experienced domain name reseller would be unlikely to have acquired the Domain Name without researching its value and seems familiar with the US meaning in military history. It is not really believable to me that in 2006 when considering the purchase of the Domain Name as a professional re-seller the Respondent would not have discovered the existence of the Complainant due to the well established nature of the Complainant’s business at that time;
iv) The assertions of the Respondent that MINUTEMEN is a common trade mark used by others in the USA having been debunked by the Complainant;
v) The responsibility of the Respondent for the use of the Domain Name for pay per click links for competing services to the Complainant and the lack of any evidence that the Respondent has been trying to use or encourage purchase or use of the Domain Name for military history purposes; and
vi) The extremely high price under which the Domain Name has been offered for sale $500,000 USD suggesting that the Respondent knew of the fact that the rights of the Complainant in the name MINUTEMEN made the Domain Name worth such a sum.
I would have held for the Complainant in this case and disagree with the conclusions of the Majority of the Panel. I believe that it is more likely than not that the Respondent through its common director with its predecessor in title (the subject of several adverse decisions under the UDRP) was aware of the rights of the Complainant at the time of acquisition of the Domain Name. Having bided its time the Respondent is now seeking to profit from its acquisition of the Domain Name which was at the time of acquisition, and is now, extremely valuable. Its value is predictably due to a large degree to the rights of the Complainant in the MINUTEMAN name both in terms of the desirability of the Domain Name to the Complainant and due to the traffic that the Complainant’s rights would bring to the Domain Name in use, especially so for competitors of the Complainant who have been demonstrated to have paid for pay per clicks from the Domain Name. On the balance of probabilities I believe this is a case of both registration and use in bad faith.
DECISION
Complainant 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 minutemen.com domain name REMAIN WITH Respondent.
Alan L. Limbury, Chair
Dated: August 28, 2024
