RDNH finding.
It’s Reverse Domain Name Hijacking time for PLUG & Play, LLC of Sunnyvale, California, after a failed attempt at wrestling away PlugAndPlay.com via the UDRP process.
The Respondent established use of the domain as early as in 2002, while the Complainant claimed mark use in 2006, with a registered mark from 2012.
In cases such as these, when the Respondent’s domain use predates any claimed marks, a finding of RDNH is usually granted; in this case, W. Scott Blackmer, sole panelist at the WIPO stated the following:
That is the case here, where the Domain Name, based on a common English phrase, was created before the Complainant business was even formed, and the Respondent already had its own established business with a corresponding name. The Complainant failed to investigate these obvious difficulties, and its Supplemental Filing then overlooked facts (prominently, the relationships between the successive Domain Name registrants) that were available even in the Response and its attachments. Hence, the Panel grants the request for a finding of Reverse Domain Name Hijacking.
The domain was thus ordered to remain with the Respondent. Full details of this decision for PlugAndPlay.com follow:
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PLUG & Play, LLC v. Matt Morris
Case No. D2018-23851. The Parties
The Complainant is PLUG & Play, LLC of Sunnyvale, California, United States of America (“United States”), represented by Law Office of Heather Norton, United States.
The Respondent is Matt Morris of Plano, Texas, United States, represented by UDRP Legal, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
2. The Domain Name and Registrar
The disputed domain name <plugandplay.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2018. On October 18, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 19, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 23, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 5, 2018.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 15, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 5, 2018. The Response was filed with the Center on December 5, 2018.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on December 12, 2018. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Complainant submitted a Supplemental Filing on December 10, 2018 as a “Rebuttal” to the Response, and the Respondent filed on December 15, 2018 a “Reply” objecting to the Complainant’s Supplemental Filing and attaching supporting declarations and documents.
4. Factual Background
The Complainant, a technology venture capital firm, startup accelerator, and corporate innovation consultancy, is organized as a California limited liability company headquartered in Sunnyvale, California, United States. Established in 2006, the Complainant conducts business globally, with offices in a dozen countries. According to its website at “www.plugandplaytechcenter.com” (the “Complainant’s website”), the Complainant invests in more than 260 companies each year and runs over 50 accelerator programs each year in various cities. The Wikipedia article on “Plug & Play Tech Center” reports the Complainant’s claim to be the world’s largest accelerator and notes that it was named the “Most active Silicon Valley venture capital firm” in 2017 by the Silicon Valley Business Journal.
The Complainant holds United States Trademark Registration Number 4186410 for PLUG & PLAY as a standard character mark (registered August 7, 2012), as well as International Trademark registrations. The Complainant claims use of the mark since 2006, although the Complaint includes little evidence to support a claim of common law protection for the mark before 2012.
The Respondent is an author, network marketing trainer and leader, and motivational speaker residing in Plano, Texas, United States, with a website at “www.mattmorris.com”. The Respondent has built several direct sales organizations, written eight bestselling books, and appeared on national media in the United States.
The Registrar reports that the Domain Name was created on September 26, 1999 and is currently registered in the name of the Respondent. The Complaint assumes that the Respondent was the original registrant, and the Response affirms this as a fact, saying that the Complainant “rightly acknowledges in paragraph 11 of the complaint that ‘[t]he domain name was registered with GoDaddy.com by Respondent on September 9, 1999’.” The Response also states that the Respondent used the Domain Name “since at least 2003” (intermittently, it appears) to advertise the Respondent’s services.
The Complaint attaches screenshots from the Internet Archive’s Wayback Machine showing that the Domain Name has at several times in the 2000s either resolved to a “placeholder website” or redirected users to the Respondent’s website at “www.mattmorris.com”. At the time of this Decision, the Domain Name resolves to a landing page with a message indicating that the website is undergoing “maintenance” and furnishing a contact email address using the Domain Name.
The Respondent acknowledges that the Domain Name has been used in the past to redirect users to the Respondent’s website at “www.mattmorris.com” advertising the Respondent’s services. However, the Respondent also demonstrates with screenshots from the Internet Archive that the Respondent used the Domain Name in the past, for example in 2004-2005, to advertise the services of Plug and Play Marketing and Plug and Play Solutions LLC, two companies formed by the Respondent in 2003 to operate an “internet marketing system”.
The Response attaches evidence that many companies use the common phrase “plug and play”, denoting functions that are readily available on set-up, both in their company names and branding.
The Complaint attaches email correspondence between the parties in 2018 in which a representative of the Complainant sought the transfer of the Domain Name and the Respondent suggested a purchase price of USD 150,000. This proceeding followed.
5. Parties’ Contentions
A. Complainant
The Complainant asserts that it has used PLUG & PLAY as a mark since at least 2006 and that the Domain Name is confusingly similar, substituting “and” for the ampersand character. The Complainant argues that the Respondent has no rights or legitimate interests in the Domain Name, with no business or products under a corresponding name. The Complainant infers that the Respondent has registered and used the Domain Name in bad faith, in an effort to extract an excessive sales price from the Complainant and, at times, misdirect Internet users to the Respondent’s own website for commercial gain.
B. Respondent
The Respondent does not challenge the Complainant’s trademark but observes that the Domain Name was created, and used by the Respondent, before the Complainant and its mark came into existence. The Respondent claims a legitimate interest in using a domain name for its generic sense and because it corresponded to company names that the Respondent established in 2002 and 2003.
The Respondent denies that it had advance knowledge of the Complainant’s mark, which did not exist when the Respondent started using the Domain Name, and contends that it did not register and use the Domain Name in contemplation of the mark.
The Respondent seeks a finding of Reverse Domain Name Hijacking. The Respondent argues that the Complainant must have realized that the Complaint was defective because its trademark postdated the Domain Name. The Respondent also suggests that the Complainant set forth the facts in a seriously misleading manner by omitting the emails showing that it was the Complainant that initiated discussions over selling the Domain Name.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, “A Panel shall 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.”
A. Supplemental FilingsThe Complainant submitted a “Rebuttal” replying to the Response, and the Respondent submitted a “Reply” to the Rebuttal. Neither the Rules nor the Supplemental Rules make provision for supplemental filings, except at the request of the panel (see Rules, paragraph 12). Paragraph 10 of the Rules enjoins the panel to conduct the proceeding “with due expedition”. Therefore, UDRP panels are typically reluctant to countenance delay through additional rounds of pleading and normally accept supplemental filings only to consider material new evidence or provide a fair opportunity to respond to arguments that could not reasonably have been anticipated. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.6.
The Complainant should have anticipated the Respondent’s timing objection when the Complainant filed a Complaint accepting that the Respondent registered the Domain Name in 1999, years before the Complainant or its mark came into existence. The Complainant’s Supplemental Filing belatedly addresses that deficiency by attaching a Domain Tools report detailing the history of the registration of the Domain Name, showing that it was registered in the name of Plug and Play Marketing on February 22, 2003, with Paul Schrimsher as the administrative and technical contact, and that from 2008 until July 2011 it was registered in the name of “a third party” named Jimmy Bellow. Thus, the Complainant would have the Panel deem July 2011 as the relevant date for assessing the Respondent’s claims for legitimate interests and good faith. Although the Complainant could have submitted a Domain Tools report with the Complaint, the Panel accepts the report as a Supplemental Filing, because the chronology given in the Response and its attachments was incomplete. (The balance of the Complainant’s “Rebuttal” merely reargues points made in the Complaint and is not considered here.)
The Panel also accepts the Respondent’s Supplemental Filing for clarification on the facts concerning the registration history of the Domain Name and the offer to sell the Domain Name. This clarification includes a Declaration by the Respondent and a Declaration by Mr. Bellew, indicating that Mr. Bellew worked for the Respondent as an officer of Plug and Play Marketing LLC, which was owned by the Respondent in the period 2002-2009, that Mr. Bellew was the “main contact” with the registrar concerning the Domain Name, and that the associated website generated more than 10,000 customers and over USD 2 million in revenues during his tenure. The Respondent’s Supplemental Filing also points to documents attached to the Response showing that the Respondent was the principal in Plug and Play Marketing LLC and that Mr. Schrimsher, a business partner of the Respondent, was the registered agent for that company (and a partner in the earlier Plug & Play Marketing partnership that was formed with the Respondent in October 2002). The Respondent’s Declaration also emphasizes that he intends to use the Domain Name again in the future and, when approached by a domain name broker, agreed on an asking price of USD 100,000 because the associated business had previously generated revenues of over USD 2 million.
B. Identical or Confusingly Similar
It is undisputed that the Complainant has registered PLUG & PLAY trademarks. The Domain Name consists of the same common English phrase but expressed with the word “and” and no spaces, rather than an ampersand character. As in most cases, the generic Top-Level Domain (“gTLD”) “.com” is disregarded. See WIPO Overview 3.0, section 1.11.
The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. See WIPO Overview 3.0, section 1.7. The Panel finds under this test that the Domain Name is confusingly similar in sight, sound, and meaning to the Complainant’s mark and concludes that the first element of the Policy is satisfied.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1.
Timing is important here in assessing the Respondent’s legitimate interests. In this case, both parties in their initial pleadings seem to have assumed that the Respondent initially registered the Domain Name in September 1999, which is when the Registrar reports that the Domain Name was created, but the actual evidence in the record does not establish that. The Respondent’s Supplemental Filing now takes the position that the Respondent owned the Domain Name “as early as 2003 through his association with the company Plug and Play Marketing, LLC.” Indeed, the oldest WhoIs record submitted by the Respondent shows a February 22, 2003 registration by Plug and Play Marketing, a company formed by the Respondent. The registration was changed, as the Complainant notes, to Mr. Bellew’s name in 2008 and then to the Respondent’s name in 2011. Mr. Bellew was not simply a “third party”, though, as characterized by the Complainant, but rather an officer of Plug and Play Marketing LLC, whose Declaration is attached to the Respondent’s Supplemental Filing. The Respondent formed two companies with the “Plug and Play” name and there are screenshots of a commercial website associated with the Domain Name. The Respondent and Mr. Bellew both attest that the Domain Name was used for that independent marketing business and generated some USD 2 million in revenues by 2009. It appears that by July 2011, when the Domain Name was registered in the Respondent’s name, he was no longer doing business under the “Plug and Play” name. But no unrelated entity intervened to control the Domain Name, and the Respondent could legitimately continue to anticipate using or selling the Domain Name for its proven value. From the available record, it appears that the registrants from February 2003 onward were companies controlled by the Respondent or persons acting in his behalf. See Schweizerische Bundesbahnen SBB v. Gerrie Villon, WIPO Case No. D2009-1426 (“In this Panel’s view, the transfer of a domain name or trademark between commonly-controlled persons does not act of itself to extinguish rights and legitimate interests that may have accrued in that domain name or trademark”); WIPO Overview 3.0, section 3.9 (where the same issue is addressed in relation to the third element of the complaint, bad faith).
The Panel finds on these facts that the Respondent has legitimate interests in the Domain Name, in that the Respondent used the Domain Name for bona fide commercial offerings and controlled businesses operating under corresponding names before the dispute arose and could legitimately anticipate restarting such offerings or selling the Domain Name and related marketing assets. Thus, the Respondent prevails on the second element of the Complaint.
The Panel will proceed to discuss the third element as well, however, because of the Respondent’s request for a finding of Reverse Domain Name Hijacking.
D. Registered and Used in Bad Faith
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following cited by the Complainant (in which “you” refers to the registrant of the domain name):
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or …
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”
The Complainant’s reliance on paragraph 4(b)(i) is not persuasive, as the Respondent held the Domain Name for years before the Complainant existed and did not initiate contact with the Complainant concerning a possible sale of the Domain Name.
The Complainant’s argument that the Respondent registered and used the Domain Name to exploit the Complainant’s trademark is also not persuasive. As discussed above, the Panel finds the formal changes in registration of the Domain Name immaterial, as the evidence shows that the Respondent controlled the Domain Name since February 2003, several years before the Complainant came into existence. The Complainant claims a common law trademark from 2006 based on a common English phrase, without submitting substantial proof of sales, advertising, media recognition, and other supporting evidence (see WIPO Overview 3.0, section 1.3), but that is still three years after the 2003 Domain Name registration. The Complainant did not obtain a trademark registration until August 2012 (after even the latest date advanced by the Complainant for the Respondent’s acquisition of the Domain Name). The Complainant simply fails to show how the Respondent could have anticipated the Complainant’s mark, years in advance of its becoming established. It is much more likely that the Respondent chose the mark for its generic sense, as have many other companies.
The Panel concludes that the Complainant has failed to establish the third element of the Complaint, bad faith.
E. Reverse Domain Name Hijacking
Paragraph 15(e) of the UDRP 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 (“RDNH”) or was brought primarily 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 Respondent has requested such a finding here.
Reverse Domain Name Hijacking is defined under the UDRP Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”. Mere lack of success of a complaint is not sufficient to find Reverse Domain Name Hijacking. See WIPO Overview 3.0, section 4.16. A finding of RDNH is warranted, for example, when a panel finds that the complainant (especially one represented by counsel) should have recognized that it could not succeed on one of the three elements of the complaint under any fair interpretation of the available facts or brings a complaint based “on only the barest of allegations without any supporting evidence” (id.). That is the case here, where the Domain Name, based on a common English phrase, was created before the Complainant business was even formed, and the Respondent already had its own established business with a corresponding name. The Complainant failed to investigate these obvious difficulties, and its Supplemental Filing then overlooked facts (prominently, the relationships between the successive Domain Name registrants) that were available even in the Response and its attachments. Hence, the Panel grants the request for a finding of Reverse Domain Name Hijacking.
7. Decision
For the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Sole Panelist
Date: December 28, 2018
A company like that should know better what a joke