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#Procurium .com : Domain predates the #trademark but case was sent to #UDRP

The domain Procurium.com was registered in 2012, and the .net Registrant filed a UDRP in 2020. They also followed up with a trademark application just two days later.

That, according to the Respondent in this case, indicates that it’s a case of filing the UDRP in bad faith. They asked for a finding of Reverse Domain Name Hijacking.

According to the UDRP, the PROCURIUM mark is for supply chain management services, none of which apply to the use of the matching .com domain.

Respondent also informed that has offered Complainant the temporary use of the disputed domain name for a nominal monthly fee so that Complainant would have time to find and register a .com domain that is available and to legally change the name of his Procurium LLC enterprise.

In the end, the NAF panelist found no bad faith in the registration of the domain Procurium.com, as the registration of the domain predates that of the common law mark:

“Respondent argues it has not registered or used its <procurium.com> domain name in bad faith because, even with Complainant’s common law rights in the PROCURIUM mark, Respondent’s registration of the disputed domain name predates Complainant’s trademark common law rights. “

The Respondent’s request for a finding of RDNH was rejected, but they were allowed to keep the domain. Full details on this decision for Procurium.com follow:

The domain transfer was denied.

Fadi Daher v. Robert Morrissette

Claim Number: FA2002001881940

PARTIES

Complainant is Fadi Daher (“Complainant”), represented by Fadi Daher, Texas, USA. Respondent is Robert Morrissette (“Respondent”), California, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <procurium.com>, registered with NameSilo, LLC.

PANEL

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

Luiz Edgard Montaury Pimenta as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on February 4, 2020; the Forum received payment on February 4, 2020.

On February 5, 2020, NameSilo, LLC confirmed by e-mail to the Forum that the <procurium.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 February 6, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 26, 2020 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@procurium.com. Also on February 6, 2020, 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 February 25, 2020.

On March 2, 2020 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Luiz Edgard Montaury Pimenta 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 be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant, Fadi Daher, is the sole owner of Procurium, LLC, a Texas company providing business consulting services in the areas of supply chain management, contracts management, and business process transformation. Complainant states that the domain name <procurium.net> is being used as its main business domain name.

Complainant defends that the disputed domain name is identical to Complainant’s trademark. Complainant adds that the disputed domain name is confusing to Complainant’s customers, which would be likely to be misled.

Complainant alleges that the Respondent has no right or legitimate interests in the disputed domain name, as it is not commonly known by the domain name.

Complainant also states that the Respondent advertises on its website services of a nature that would be similar to Complainant’s.

Complainant argue that the Respondent attempts to disrupt Complainant’s business and attract users to the disputed domain name where it redirects to Respondent’s website, which competes with Complainant’s business consulting services.

B. Respondent

Respondent alleges that Respondent has no ties to, or clients, designs or interests in, supply chain management.

Respondent argues that Complainant does not have rights in the PROCURIUM mark. Complainant only has rights to operate a business in the name Procurium, LLC, in the state of Texas, per Complainant’s Certificate of Filing with the Texas Secretary of State.

Respondent informs that Complainant uses its Procurium, LLC business to compete with third-party Accenture-Procurian, which operates a supply chain management business in competition with Complainant.

Further, Respondent argues that the Complainant filed an application for the PROCURIUM mark with the United States Patent and Trademark Office (“USPTO”) on February 8, 2020, which is two days after filing this complaint; the timing of this trademark filing suggests Complainant has filed a UDRP complaint in bad faith.

Respondent adds that Respondent’s website <axxelium.com> [to which the disputed domain name was redirected by fluke] has no content, images, metatags, links, articles or posts relating to the word PROCURIUM, not to Complainant’s procurium.net domain, to any supply chain management site or any supply chain management site or any supply chain management business, links or posts.

Also, Respondent argues that the disputed domain name is owned and legally used in good faith by Respondent since February 24, 2012.

Respondent informs that after receiving the Complaint, has reached the Complainant by phone to try to resolve the UDRP Complaint amicably.

Respondent also informed that has offered Complainant the temporary use of the disputed domain name for a nominal monthly fee so that Complainant would have time to find and register a “.com” domain that is available and to legally change the name of his Procurium LLC enterprise.

Respondent admits that the <procurium.com> domain name redirected to <axxelium.com>, another of Respondent’s domain names, but explains that it was redirected only “momentarily” and “by fluke.” Respondent denies that its Axxelium business is a competitor of Complainant, as it has no interests in supply chain management.

Additionally, Complainant engages in reverse domain name hijacking.

FINDINGS

Complainant, Fadi Daher, is the sole owner of Procurium, LLC, a Texas company, which has used the domain name <procurium.net> as its main business domain name since 2017. Complainant filed an application for the PROCURIUM mark with the United States Patent and Trademark Office (“USPTO”) on February 8, 2020

Respondent registered the disputed domain name on February 24, 2012 and used it for Respondent’s Procurium service division until March 2019.

At the time this decision was issued, the disputed domain name was being parked by the Respondent. According to the Respondent, the disputed domain name will be relaunched in an industry unrelated to supply chain management.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

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

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

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

Identical and/or Confusingly Similar

In order to prevail under policy paragraph 4(a)(i), Complainant must establish that it has rights in a trademark and that the Disputed Domain Name is identical or similar thereto.

Complainant claims rights in the PROCURIUM mark based upon its use in commerce since 2017. Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”).

In view of the above, the Panel finds that Paragraph 4(a)(i) has been fulfilled.

Rights or Legitimate Interests

Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

The Panel finds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See High Adventure Ministries v. JOHN TAYLOE / VOICE OF HOPE, FA 1737678 (Forum Aug. 9, 2017) (holding that a complainant’s failure to satisfactorily meet its burden suggests respondent has rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also JJ206, LLC v. Erin Hackney, FA 1629288 (Forum Aug. 25, 2015) (finding that a respondent may defeat a complainant’s established case by showing it has made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services).

In this case, Respondent provides a screenshot of prior use of the <procurium.com> domain name including the domain name printed on a business card and the mention of the word “Procurium” on Respondent’s <primerium.com> website (also undated). See Resp. Annex G.

The Panel finds that Respondent has shown evidence of doing business as <procurium.com> and therefore has rights and legitimate interests in the domain name under Policy ¶ 4(c)(ii).

Respondent contends that its use of <procurium.com> is connected to a bona fide offering of goods or services because it actively used the domain name from 2012 until 2019 for its Procurium business division.

As previously mentioned, Respondent provides screenshots of what it asserts are business cards and a previous version of its website showing the word “Procurium” on <primerium.com>. See Resp. Annex G. Further, Respondent claims that it is currently parking the domain name but plans to relaunch a website at the disputed domain name in the near future.

Therefore, the Panel concludes that Respondent is using the disputed domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).

Registration and Use in Bad Faith

The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and 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).

The Panel notes that Respondent’s registration of the <procurium.com> domain name predates Complainant’s first claimed rights in the PROCURIUM 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 Faster, Inc. DBA Alta Motors v. Jeongho Yoon c/o AltaMart, FA 1708272 (Forum Feb. 6, 2017) (“Respondent registered the domain name more than a decade before Complainant introduced the ALTA MOTORS mark in commerce. Respondent therefore could not have entertained bad faith intentions respecting the mark because it could not have contemplated Complainant’s then non-existent rights in [the mark] at the moment the domain name was registered.”).

The Panel concludes that Respondent has rights or legitimate interests in the <procurium.com> domain name pursuant to Policy ¶ 4(a)(ii), the Panel also finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Record Connect, Inc. v. Chung Kit Lam / La-Fame Corporation, FA 1693876 (Forum Nov. 3, 2016) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Sheet Labels, Inc. v. Harnett, Andy, FA 1701423 (Forum Jan. 4, 2017) (finding that because the respondent had rights and legitimate interests in the disputed domain name, its registration of the name was not in bad faith).

Respondent argues it has not registered or used its <procurium.com> domain name in bad faith because, even with Complainant’s common law rights in the PROCURIUM mark, Respondent’s registration of the disputed domain name predates Complainant’s trademark common law rights. 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 where the respondent registered the disputed domain name before the complainant began using the mark). Respondent contends that it registered the <procurium.com> domain name in 2012, and that Complainant incorporated its LLC and registered its <procurium.net> domain name in 2017. See Resp. Annexes D and I; see also Compl. Annex 1. The Panel finds that Respondent has not registered or used the disputed domain name in bad faith per Policy ¶ 4(a)(iii).

Reverse Domain Name Hijacking (“RDNH”)

Respondent submitted that the Panel should make a finding of RDNH by Complainant. Paragraph 1 of the Rules defines RDNH to mean “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Paragraph 15(e) of the Rules provides that if “the Panel finds that the complaint was brought in bad faith, for example in an attempt at [RDNH], the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”

The WIPO Overview asks at paragraph 4.16: “In what circumstances will panels issue a finding of Reverse Domain Name Hijacking (RDNH)?” in reply to which UPRP panelists are in agreement that:

“… the mere lack of success of a complaint is not itself sufficient for a finding of RDNH” … [which] “ultimately turns on the complainant’s conduct.

Reasons articulated by panels for finding RDNH include: (i) facts which demonstrate that the complainant knew it could not succeed as to any of the required three elements – such as the complainant’s lack of relevant trademark rights, clear knowledge of respondent rights or legitimate interests, or clear knowledge of a lack of respondent bad faith … such as registration of the disputed domain name well before the complainant acquired trademark rights, (ii) … , (vii) filing the complaint after an unsuccessful attempt to acquire the disputed domain name from the respondent without a plausible legal basis, [and] (viii) basing a complaint on only the barest of allegations without any supporting evidence.”

Here, Complainant failed to establish two of the three elements required under the Policy. The Panel has found no evidence of bad faith registration, and has found that Respondent has a legitimate interest in the disputed domain name. However, as noted, RDNH is not necessarily found simply because a complaint is weak or misconceived.

There must, as indicated, be an element of bad faith.

Complainant has alleged all three elements of Policy ¶ 4(a) in its complaint.

The record does not show that Complainant was motivated to initiate this proceeding by anything other than his claim to rights in the PROCURIUM mark and that Respondent was redirecting <procurium.com> to <axxelium.com>, which Complainant alleges is a competitor in business consulting services. Thus, the Panel may find no reverse domain name hijacking has occurred because Complainant alleged in good faith that Respondent lacks rights or legitimate interests in the <procurium.com> domain name and that Respondent registered and is using the disputed domain name in bad faith.

Therefore, this Panel declines Respondent’s request to declare RDNH.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the <procurium.com> domain name REMAIN WITH Respondent.

Luiz Edgard Montaury Pimenta, Panelist

Dated: March 16th , 2020


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