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RDW.com : Aged #LLL .com #domain threatened via the #UDRP process

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UDRP has been denied.

RDW.com, a three letter .com domain registered in 1999, ended up being challenged via the UDRP process.

The Complainant, RDW Imports, Inc., attempted to use a 2018 trademark application with the USPTO as the basis of their UDRP case filing.

The Respondent stated:

“Respondent’s <rdw.com> domain name merely consists of the generic acronym RDW, which can represent any three English words with the same initials, and Complainant does not have exclusive rights to use the term on the Internet. Further, Complainant has failed to provide any evidence to prove its reputation and substantial use of the RDW mark in commerce. Moreover, Respondent’s registration of the domain name significantly predates Complainant’s first use of the ROUGH DIAMOND WORLD or RDW marks.”

Eugene I. Low, Panelist at the National Arbitration Forum, delivered a finding in favor of the Respondent:

What is fatal to Complainant’s case is that Respondent’s registration of the <rdw.com> domain name in 1999 significantly predates Complainant’s first claimed rights in the ROUGH DIAMOND WORLD and/or RDW marks. Given this rather significant time gap, and the fact that apparently Respondent has owned the domain name since its creation (as confirmed by Respondent’s additional submissions), the Panel is unable to conclude that Respondent registered the domain name in bad faith. Respondent could not have entertained bad faith intentions in respect of Complainant’s RDW mark which was then non-existent at the time of the registration of the domain name.

The Respondent’s request for a finding of Reverse Domain Name Hijacking, wasn’t granted.

Full details of this decision for RDW.com follow:

RDW Imports, Inc. v. wang yan hong

Claim Number: FA1901001824259

PARTIES

Complainant is RDW Imports, Inc. (“Complainant”), represented by Randy M. Friedberg of White and Williams LLP, New York, USA. Respondent is wang yan hong (“Respondent”), represented by Yiyang Zhai, China.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <rdw.com>, registered with Ename Technology Co., Ltd., Ename Technology Co., Ltd.

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.

Eugene I. Low as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on January 8, 2019; the Forum received payment on January 8, 2019. The Complaint was received in both Chinese and English.

On January 9, 2019, Ename Technology Co., Ltd., Ename Technology Co., Ltd. confirmed by e-mail to the Forum that the <rdw.com> domain name is registered with Ename Technology Co., Ltd., Ename Technology Co., Ltd. and that Respondent is the current registrant of the name. Ename Technology Co., Ltd., Ename Technology Co., Ltd. has verified that Respondent is bound by the Ename Technology Co., Ltd., Ename Technology Co., 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 January 17, 2019, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of February 6, 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@rdw.com. Also on January 17, 2019, the Chinese language 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 January 31, 2019.

On February 4, 2019, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Eugene I. Low as Panelist.

On February 8, 2019, the Panel invited the Parties to make additional submissions (if any) within 5 calendar days and accordingly extended the time for rendering the Decision. On February 11, 2019, Respondent submitted its additional submissions. No additional submissions were received from Complainant within the said 5 calendar days.

Having reviewed the communications records, 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 owns and operates wholesale on-line and retail stores which sell precious and semi-precious gemstones. Complainant has rights in the ROUGH DIAMOND WORLD mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,631,715, registered Dec. 18, 2018). A. Complainant also has rights in the RDW mark through its pending trademark application with the USPTO (Ser. No. 87,884,642, filed Apr. 19, 2018), and Complainant has made a substantial investment in the advertising, marketing, and promotion. Respondent’s <rdw.com> domain name is identical or confusingly similar to Complainant’s RDW marks as it merely adds the “.com” generic top-level domain (“gTLD”).

Respondent has no rights or legitimate interests in the <rdw.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent has either parked the domain name, or has resolved to a completely inactive webpage. Further, Respondent has previously offered to sell the domain name to the general public.

Respondent registered and uses the <rdw.com> domain name in bad faith. Respondent registered the domain name with intent to sell it to a third-party with some vested interest in the RDW acronym who would pay a premium price, and at one point even explicitly offered it for sale on the resolving webpage. Further, Respondent has failed to actively use the domain name for the entire duration of its ownership. Additionally, Respondent provided false/misleading information when it registered the domain name.

B. Respondent

Respondent’s <rdw.com> domain name merely consists of the generic acronym RDW, which can represent any three English words with the same initials, and Complainant does not have exclusive rights to use the term on the Internet. Further, Complainant has failed to provide any evidence to prove its reputation and substantial use of the RDW mark in commerce. Moreover, Respondent’s registration of the domain name significantly predates Complainant’s first use of the ROUGH DIAMOND WORLD or RDW marks.

Respondent has rights and legitimate interests in the <rdw.com> domain name. The domain name merely consists of the generic acronym RDW, which Complainant does not hold exclusive rights. Further, Respondent uses the domain name in connection with domain name trading, and has generated significant traffic since at least 2016. Additionally, Respondent’s registration of the domain name significantly predates Complainant’s rights in any of its marks.

Respondent did not register or use the <rdw.com> domain name in bad faith. Respondent registered the domain name in 1999, whereas Complainant only alleges a first use of the ROUGH DIAMOND WORLD mark in 2004, and first use of the RDW mark in 2018. Further, Respondent uses the domain name to operate a domain name trading webpage. Additionally, there is no information on the website indicating that the domain name is for sale. Moreover, Respondent itself did not conceal its registration information; rather the registrar did that on its own accord.

Respondent argues that Complainant engages in reverse domain name hijacking.

FINDINGS

The Panel notes that the <rdw.com> domain name was created on December 21, 1999. By Procedural Order No.1, the Panel requests the parties to submit evidence (if any) about the chain of ownership of the domain name <rdw.com> since its creation on December 21, 1999. Only the Respondent responded to Procedural Order No.1 – in its response the Respondent effectively confirmed that the Respondent has owned the domain name <rdw.com> since its creation on December 21, 1999

DISCUSSION

Preliminary Issue: Language of the Proceedings

The Panel notes that the Registration Agreement is written in Chinese, thereby making the default language of the proceedings in Chinese.

The Panel has further taken into account that both Parties have made their submissions in English, notwithstanding that the default applicable language is Chinese. By Procedural Order No.1, the Panel indicated that the Panel is prepared to conduct these proceedings (including delivering the Decision) in English and has invited the Parties to raise objections if any. In its additional submissions, Respondent confirmed its agreement to the use of English as the language of proceedings. Complainant has not made additional submissions on the language of proceedings.

Accordingly, the Panel determines that these proceedings will be conducted in English.

Substantive Elements of the Policy

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
The Panel considers that Complainant has satisfied this element.

Among others, Complainant claims it holds common law rights in the RDW mark although it does not currently hold a trademark registration for the RDW mark. To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017). Complainant avers that it has rights in the RDW mark through its pending trademark application with the USPTO (Ser. No. 87,884,642, filed Apr. 19, 2018), and Complainant states it has made a substantial investment in the advertising, marketing, and promotion of the mark. Complainant provides images of its mark on tradeshow exhibits, and also provides images of its website and social media profile. The Panel accepts such evidence to be sufficient in establishing Complainant’s claimed common law rights in the RDW mark under Policy ¶ 4(a)(i).

Complainant next argues, and the Panel accepts, that Respondent’s <rdw.com> domain name is identical or confusingly similar to Complainant’s RDW mark as it merely adds the “.com” gTLD. It is a well-established principle under the Policy that the mere addition of “.com” is not sufficient to distinguish a domain name for the purposes of Policy ¶ 4(a)(i).

Respondent argues that its <rdw.com> domain name was registered prior to Complainant’s alleged rights in either of Complainant’s claimed marks. This however does not impact on the Panel’s determination of the element under Policy ¶ 4(a)(i). The Panel will address this argument in more detail under Policy ¶ 4(a)(iii).

Rights or Legitimate Interests
The Panel considers that Complainant has satisfied this element.

Under this element, Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Thereafter, the burden shifts to Respondent to show it does have rights or legitimate interests.

Complainant contends that Respondent has no rights or legitimate interests in the <rdw.com> domain name. The WHOIS identifies “Yan Hong Wang” as the registrant. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the RDW mark. Complainant also adduces evidence to show that Respondent has not made an active use of the domain name as it has either been parked or has resolved to a completely inactive webpage. The Panel accepts such evidence, among others, as prima facie proof of Respondent’s lack of rights or legitimate interests under this limb.

The Panel considers that Respondent has failed to submit sufficient evidence to demonstrate its rights and legitimate interests in the disputed domain name. While Respondent alleges that it uses the <rdw.com> domain name in connection with domain name trading, and has generated significant traffic since at least 2016, the Panel finds that the evidence adduced by Respondent falls short of showing a consistent or bona fide offering of goods or services relating to the domain name. Furthermore, the Panel finds that Respondent has not adduced evidence to show that it is commonly known by the <rdw.com> domain name.

Registration and Use in Bad Faith

The Panel considers that Complainant has failed to satisfy this element.

What is fatal to Complainant’s case is that Respondent’s registration of the <rdw.com> domain name in 1999 significantly predates Complainant’s first claimed rights in the ROUGH DIAMOND WORLD and/or RDW marks. Given this rather significant time gap, and the fact that apparently Respondent has owned the domain name since its creation (as confirmed by Respondent’s additional submissions), the Panel is unable to conclude that Respondent registered the domain name in bad faith. Respondent could not have entertained bad faith intentions in respect of Complainant’s RDW mark which was then non-existent at the time of the registration of the domain name. See Faster Faster, Inc. DBA Alta Motors v. Jeongho Yoon c/o AltaMart, FA 1708272 (Forum Feb. 6, 2017). There is nothing in the evidence which suggests or infers that Respondent was somehow aware of Complainant or Complainant’s RDW mark at the time of the registration of the domain name.

Reverse Domain Name Hijacking

Respondent alleges that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute.

On the available materials, the Panel cannot conclude that Complainant has acted in bad faith. It is a well-established principle that even if a Panel finds that a Complainant has failed to satisfy its burden under the Policy, this does not necessarily render a finding of reverse domain name hijacking on behalf of Complainant in bringing the complaint. See ECG European City Guide v. Woodell, FA 183897 (Forum Oct. 14, 2003); see also Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001). In the present case, the Panel considers that there are elements in relation to Respondent’s use of the <rdw.com> domain name that may suggest bad faith on a domain name registrant’s part (e.g. passive holding of the domain name; offering the domain name for sale). Hence, the Panel considers that Complainant has not acted wholly unmeritoriously or in bad faith.

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

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

Eugene I. Low, Panelist

Dated: February 15, 2019


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