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#Mixbook failed in #UDRP to get Mixbooks.com – but there’s a catch!

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Mixbook filed a UDRP to get the plural version domain, Mixbooks.com, but failed. The plural version exists since 1998, and the Complainant registered their trademark in 2009.

The Respondent asserted that their domain is thus much older than the registered mark, and the sole panelist, Carol Stoner, Esq., agreed there is no sign of bad faith in the domain’s registration.

One small detail: Mixbooks.com was sold as an expired domain on NameJet for $129 dollars, according to Namebio, earlier in 2019. The Respondent is not the original registrant.

The domain transfer was denied.

When the registrant changes in such manner due to a sale, the domain’s registration is generally considered to get reset for the sake of UDRP decisions. In this case, in our non-expert opinion, the domain should have been awarded to the Complainant.

Full details on this decision for Mixbooks.com follow:

Interactive Memories, Inc. d/b/a Mixbook v. Isaac Goldstein

Claim Number: FA1911001869584

PARTIES

Complainant is Interactive Memories, Inc. d/b/a Mixbook (“Complainant”), represented by Neel Chatterjee of Goodwin Procter LLP, California, USA. Respondent is Isaac Goldstein (“Respondent”), Hong Kong.

REGISTRAR AND DISPUTED DOMAIN NAM

The domain name at issue is <mixbooks.com>, registered with eNom, LLC.

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.

Carol Stoner, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on November 1, 2019; the Forum received payment on November 1, 2019.

On November 4, 2019, eNom, LLC confirmed by e-mail to the Forum that the <mixbooks.com> 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On November 12, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 2, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@mixbooks.com. Also on November 12, 2019, 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 December 2, 2019.

Complainant’s Additional Submission was received on December 16, 2019, and in Panel’s discretion, it complies with Supplemental Rule 7.

Respondent’s Additional Submission was received on December 04, 2019, and in Panel’s discretion, it complies with Supplemental Rule 7.

On December 04, 2019, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Carol Stoner, Esq., as Panelist.

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.

RELIEF SOUGHT

Complainant requests that the domain name <mixbooks.com>, be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant, Interactive Memories, Inc. d/b/a Mixbook., is an internet-based photo design tool and photo product service that allows its customers to design customized photo prints through its online interface. Complainant has rights in the MIXBOOK mark based upon the registration with the United States Patent Office (“USPTO”) (e.g., Reg. No. 3,634,848, registered Jun. 9, 2009). See Amend. Compl. Annex 2. Respondent’s <mixbooks.com> domain name is identical and/or confusingly similar to Complainant’s mark as Respondent incorporates the entire MIXBOOK mark, merely adds the letter “s” and the “.com” generic top-level domain (“gTLD”).

Respondent has no rights or legitimate interests in the <mixbooks.com> domain name. Respondent is not licensed or authorized to use Complainant’s MIXBOOK mark and is not commonly known by the disputed domain name. Additionally, Respondent doesn’t use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to either divert Internet users to Complainant’s own website or to a shell website hosting Complainant’s mark. In addition, Respondent is using the disputed domain name in connection with the installation of malware.

Respondent registered and uses the <mixbooks.com> domain name in bad faith. Respondent attempts to divert Internet users to unrelated third-party websites for commercial gain. Furthermore, Respondent had constructive notice and actual knowledge of Complainant’s MIXBOOK mark when it registered the <mixbooks.com> domain name.

B. Respondent

Respondent claims that the <mixbooks.com> domain name bears no confusion to Complainant’s mark because it was registered on March 03, 1998, almost 11 years before Complainant’s mark was registered. See Resp. Annex. In addition, there are several website domain names not related to Complainant that are composed with the MIXBOOK mark.

Respondent claims rights or legitimate interests in the <mixbooks.com> domain name. Respondent owns a big portfolio of domain names, for the purpose of parking and selling, which is considered to be a bona fide business.

Respondent claims that the domain name was not registered in bad faith because Respondent owns a big portfolio of domain names, which are owned for purposes of parking and selling. Respondent claims that the disputed domain name was registered 8.5 years prior to Complainant’s first use of the MIXBOOK mark.

Respondent further claims that Complainant brings this dispute in bad faith to take control of the domain name.

C. Additional Submissions

Complainant’s Additional Submission

Complainant argues that the Panel should reject Mr. Goldstein’s arguments for the following reasons:

Mr. Goldstein is a serial trademark misappropriator in the business of passing off as and capitalizing on the goodwill of branded companies. Mr. Goldstein adds generic articles to stolen trademarks in order to generate confusingly similar domain names. Declaration of Andrew Laffoon (“Laffoon Decl.”) ¶ 8. He intentionally formulates these domains to pass off as the underlying brand, misleading and luring the trademark owner’s customers to Mr. Goldstein’s webpages. Id. There, customers are redirected to new webpages, generating Mr. Goldstein revenue from click-through fees on each redirection. Id. ¶ 7.

Mr. Goldstein argued that his “big portfolio of domain names, owned for parking and selling” is a “bona fide business” is not “beeing [sic] used in bad faith.” Resp. ¶¶ 7-8. Mr. Goldstein’s portfolio and business practices have been reviewed by Forum over-and-over, and each time the Panel has found them to constitute bad faith. In fact, Mr. Goldstein has been the named Respondent in at least fourteen prior UDRP actions at Forum. See, e.g., Wells Fargo & Co. v. Goldstein, FA 1321448 (Forum June 9, 2010); Zevex, Inc. v. Goldstein, FA 1323005 (Forum June 15, 2010); Gedex Inc. v. Goldstein, FA 1332191 (Forum Aug. 11, 2010); Fandango, Inc. v. Goldstein, FA 1333483 (Forum Aug. 11, 2010). In all but one of those cases, the Panel transferred the domain name from Mr. Goldstein to the Claimant. See ElderCare Advocates, Inc. v. Goldstein, FA 1357548 (Forum Dec. 13, 2010) (declining to transfer eldercareadvocates.com, but only because the Claimant expressly disclaimed the term ELDERCARE ADVOCATES, INC. in registering its mark ELDERCARE ADVOCATES, INC. WE’RE THERE WHEN YOU CAN’T BE). In each case, Mr. Goldstein has been found to be a bad faith user of domain names.

Wells Fargo & Co. v. Goldstein, is instructive. FA 1360860 (Forum Jan. 10, 2011). The Panel in Wells Fargo noted that Mr. Goldstein “has previously been the respondent in multiple other UDRP proceedings in which the disputed domain names were transferred to the respective complainants.” Id.

The Panel further found that “such a history of adverse UDRP decisions is evidence that Respondent has a pattern of registering domain names which misappropriate third-party trademarks.” Id. (citing Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Gamesville.com, Inc. v. Zuccarini, FA 95294 (Forum Aug. 30, 2000) (finding that the respondent engaged in a pattern of conduct of registering domain names to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, which is evidence of registration and use in bad faith)). Finally, the Panel concluded that “this pattern demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(ii).” Id.

Mr. Goldstein’s comparison of MIXBOOK’s and Mixbook.com’s registration and first use dates to mixbooks.com’s registration and first use date is completely irrelevant. Resp. ¶¶ 9-14. A bad faith “registration” under paragraph 4(b) of the Policy is broader than the initial registration and includes paragraph 4(b) (iv)

“by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.” Kirkbrae Country Club v. Moyers, FA 1797564 (Forum Aug. 27, 2018) (emphasis added).

In Kirkbrae, the Panel found the registration and use in bad faith prong was satisfied, observing that “paragraph 4(b)(iv) stands apart from the other three scenarios in that it hinges on use in bad faith. It says nothing of registration in bad faith. The Panel finds use in bad faith.” Id. (emphasis added). Mr. Goldstein’s use of the misleading domain to infringe the MIXBOOK and Mixbook.com marks on the website by causing confusion for commercial gain is more than sufficient to satisfy the registration and use in bad faith prong. Here, Mr. Goldstein targets and captures Mixbook’s web traffic in order to sell it back to Mixbook. Laffoon Decl. ¶ 7. And worst of all, the parking site has redirected to websites where customers inadvertently downloaded and installed malware and spyware onto their computers. Id.

And even if this dispute hinged on registration rather than use, which it does not, Mr. Goldstein is not the registrant of the mixbooks.com domain. Mr. Goldstein only recently purchased the domain name from the registrant. Id. This purchase occurred long after Mixbook had generated a substantial amount of goodwill in its mark and web traffic to its website. Id. ¶ 5. Mr. Goldstein’s profiting off the confusion of Mixbook.com customers evidences his bad faith in acquiring the domain.. Id. ¶ 7.

Mr. Goldstein next takes the kitchen-sink approach, arguing that Mixbook brought its Complaint in bad faith for a slew of reasons. Resp. ¶¶ 15-16.1 But Mr. Goldstein failed to show how any of these points demonstrates that Mixbook had “knowledge of: (i) its lack of relevant trademark rights, (ii) Respondent’s rights or legitimate interests in the disputed domain name, or (iii) Respondent’s lack of bad faith in the disputed domain name.” U.S. Steel Corp. v. Walker, FA

1842116 (Forum June 25, 2019).

Respondent’s Additional Submission

Respondent’s Additional Submission consists of a short letter to the Forum, dated December 04, 2019, wherein the Respondent informs the Forum that Respondent has just received a “cease and desist” letter from Complainant and has attached a copy of this letter in PDF form.

Respondent, Isaac Goldstein, also stated in his Additional Submission that, “We do not think it is appropriate at this point. Seems like some late attempt to influence the outcome of this litigation.”

FINDINGS

(1) Panel declines to analyze, whether or not the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights, as bad faith registration has not been proved.

(2) Panel declines to analyze whether Respondent has no rights or legitimate interests in respect of the domain name, as bad faith registration has not been proved.

(3) Panel rules that the domain name has been used in bad faith. However, the domain name has not been registered in bad faith.

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:

(4) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(5) Respondent has no rights or legitimate interests in respect of the domain name; and

(6) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Panel declines to analyze, whether or not the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights, as bad faith registration has not been proved.

Rights or Legitimate Interests

Panel declines to analyze whether Respondent has no rights or legitimate interests in respect of the domain name, as bad faith registration has not been proved.

Registration and Use in Bad Faith

The requirement of bad faith registration and use in Policy ¶ (4)(a)(iii) is stated in the conjunctive. That is, use in bad faith is insufficient if the respondent originally registered the domain name for a permissible purpose. See Shirmax Retail Ltd v. CES Marketing Inc. eRES Case No. AF-1004 (20 Mar 2000). Policy ¶4(b)(iv) refers only to improper use, rather than to improper use and registration. This conflicts with the conjunctive rule set out in paragraph 4(a)(iii). However, Panel construes “any of following circumstances” in Policy ¶ 4(b)(iv) as mere “examples” of bad faith, rather than violative of Policy ¶(4)(a)(iii).

The conspicuous use of Mixbook’s logos and trademarks on the <mixbooks.com> redirected websites suggests that Respondent intends to mislead consumers into thinking it is somehow officially connected or affiliated with Complainant’s mark <Mixbook.>. See Complainant’s Amended Complaint, Annex 3. See also Confédération Nationale du Crédit Mutuel v. Mariano Jackline and Alex Leparox, D2013-2134 8 (WIPO Jan. 30, 2014) (“Respondents take presumably pecuniary advantages by obtaining a commercial benefit for each user who is redirected to the Complainant’s competitors’ websites through the disputed domain names.”); Public Service Electric & Gas Company v. Vanguard Resolutions LLC, D2012-0618 (WIPO May 11, 2012) (“Respondent’s use of the disputed domain name solely to redirect Internet users to Respondent’s own website is indicative of textbook bad faith under the Policy. Re-direction alone causes this harm, regardless of the content of Respondent’s website or the legitimacy of Respondent’s business.”) Complainant thus has met its burden of proof of bad faith use under Policy ¶4(a)(iii).

However, Panel also rules that Respondent did not use mark in a manner constituting “opportunistic bad faith” as was charged by

Complainant. This is because Complaint has failed, beyond self-serving statements, to provide any proof of consumer advertising, consumer recognition, advertising dollars spent, or secondary meaning. Complainant does oddly state, however, that it (a printing services company) has “one of strongest marks in financial and investment services.“

As will be seen below, Complainant has failed to meet its conjunctive burden of proving that Respondent also engaged in bad faith registration of the disputed domain mark, as well as bad faith use of the mark.

Where a respondent registers a domain name prior to a complainant obtaining rights to a mark, a panel may generally not find the respondent had knowledge of the mark sufficient to find registration in bad faith. See Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Forum May 16, 2007) (determining the respondent could not have registered or used the disputed domain name in bad faith wheren the respondent registered the disputed domain name before the complainant began using the mark). Here, Respondent showed credible evidence that Respondent registered the <mixbooks.com> domain name on March 03, 1998, prior to Complainant’s alleged rights in the mark on June 9, 2009. See

Respondent’s Response, ¶12 and supporting ICANN look-up. Complainant’s

domain name Mixbook.com was registered on August 30, 2006. See also

Respondent’s Response, ¶11, stating that Complainant’s date of first use of its

trademark registration was April 01, 2007.

Here, Respondent provides credible evidence that the <mixbooks.com> domain name was registered almost 11 years prior to the registration of Complainant’s mark and 8.5 years prior to Complainant first using the mark in commerce. Therefore, the Panel finds that Respondent did not register the disputed domain name in bad faith.

If Respondent’s registration of the <mixbooks.com> domain name predates Complainant’s first claimed rights in the MIXBOOK mark, Complainant generally cannot prove registration in bad faith per Policy ¶ 4(a)(iii), as the Policy requires a showing of bad faith registration and use. 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 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.”).

Complainant has failed to meet the required conjunctive burden of proof of both bad faith registration and bad faith use under Policy ¶4(a)(iii). See Tristar Products, Inc. v. Domain Administrator / Telebrands, Corp., FA 1597388 (Forum Feb. 16, 2015) (“Complainant makes conclusory allegations of bad faith but has adduced no specific evidence that warrants a holding that Respondent proceeded in bad faith at the time it registered the disputed domain name. Mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith.”); see also Chris Pearson v. Domain Admin / Automattic, Inc., FA 1613723 (Forum Jul. 3, 2015) (finding that the complainant could not establish the respondent registered and used the disputed domain name in bad faith because it failed to present evidence that would support such a holding).

Respondent’s Allegation of Bad Faith Complaint

The latter part of Respondent’s Response consisted of an allegation that Complainant’s action in bringing this Complaint was motivated by bad faith, and was instituted for the sole intention of unfairly obtaining the disputed domain name for its own purposes.

While Complainant was not able to successfully prove all of the required elements to obtain a grant to them of the disputed domain name, <Mixbooks.com>, Complainant had a good faith basis and a legitimate purpose to dispute Respondent’s use of the disputed domain name. And in fact, Panel has ruled that Respondent had acted in bad faith usage of the disputed domain name.

Therefore, Respondent’s Request that Panel rule that Complainant has promulgated its Complaint in bad faith, is denied.

DECISION

Respondent’s allegation that Complainant instituted the instant Complaint in Bad Faith, is denied.

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 <mixbooks.com> domain name REMAIN WITH Respondent.

Carol Stoner, Esq., Panelist

Dated: December 18, 2019


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