Domain investor Bill Patterson served a sweet, juicy fruit to the Complainant of a UDRP involving the domain RedFig.com.
Simply put, the domain is put together from two dictionary words and describe a “red fig” more than anything else. Meanwhile, Redfig LLC asserted rights to the domain because of a trademark that they registered in 2020.
So what, said the Respondent’s attorney, Mr. John Berryhill, whose own name contains a “berry” and a “hill.”
Respondent has registered various domain names consisting of two-word descriptive terms including redbird.com, redsky.com, and blueapple.com. Respondent placed a bid on the (then) expired Domain Name and did so solely on the basis of it consisting of a two-word descriptive term, similar to the other domain names in its portfolio.
Final decision: Let the Complainant choke on this red fig by denying the domain’s transfer. The sweet part: Bill Patterson spent only $1,555 dollars to acquire the domain in 2019 and the now lost Complainant better come up with a bigger budget to acquire the domain, after losing this UDRP.
Redfig LLC v. Bill Patterson / Reserved Media LLC
Claim Number: FA2310002065116
PARTIES
Complainant is Redfig LLC (“Complainant”), Illinois, USA. Respondent is Bill Patterson / Reserved Media LLC (“Respondent”), represented by John Berryhill, Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is redfig.com (“Domain Name”), registered with Dynadot Inc.
PANEL
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Steven M. Levy and Professor David E. Sorkin as Panelists and Nicholas J.T. Smith as Chair Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on October 5, 2023; Forum received payment on October 5, 2023.
On October 6, 2023, Dynadot Inc confirmed by e-mail to Forum that the redfig.com domain name is registered with Dynadot Inc and that Respondent is the current registrant of the name. Dynadot Inc has verified that Respondent is bound by the Dynadot Inc 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 October 9, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 3, 2023 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@redfig.com. Also on October 9, 2023, 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 October 23, 2023.
On October 31, 2023, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, Forum appointed Steven M. Levy, Professor David E. Sorkin and Nicholas J.T. Smith as Panelists.
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
Complainant has rights in a trademark consisting of the word “redfig” and a fig device (“REDFIG mark”) through its registration with the United States Patent and Trademark Office (“USPTO”). (Reg. 6,017,702, registered March 24, 2020 with a stated date of first use of August 1, 2019). Complainant uses the REDFIG mark to provide services relating to computer programming and software. Respondent’s redfig.com domain name is identical to Complainant’s REDFIG mark because it consists of the mark in its entirety.
Respondent does not have rights or legitimate interests in the redfig.com domain name. Respondent is not commonly known by the Domain Name and the Domain Name is not being used. Rather, it resolves to a website advertising the Domain Name as being listed for sale.
Respondent registered and uses the redfig.com domain name in bad faith. The Domain Name is listed for sale on a third-party site for a sum which is well in excess of the cost of purchasing a domain name from a registrar.
B. Respondent
The Domain Name consists of a non-distinctive and non-exclusive two-word term. The Domain Name has been registered to various parties in the past and on August 13, 2019, the previous registration expired. Respondent has registered various domain names consisting of two-word descriptive terms including redbird.com, redsky.com, and blueapple.com. Respondent placed a bid on the (then) expired Domain Name and did so solely on the basis of it consisting of a two-word descriptive term, similar to the other domain names in its portfolio. Respondent’s bid was successful and the Domain Name was transferred to Respondent on September 21, 2019.
Respondent’s registration of the Domain Name predates Complainant’s registration of the REDFIG mark. Complainant provides no evidence of reputation in or use of the REDFIG mark at all, other than the statement in its USPTO application (which is not the subject of evidentiary inquiry) that the first use of the mark was August 1, 2019.
Complainant has not satisfied its burden of showing that the Domain Name was registered and used in bad faith by Respondent. Rather Respondent acquired the Domain Name following its expiry entirely for its descriptive properties. At the time of acquisition Respondent was unaware of Complainant and its use of or reputation in the REDFIG mark, which likely was miniscule at the date of registration.
FINDINGS
Complainant having failed to establish bad faith registration of the domain name redfig.com has not established all required elements of its claim, and thus its complaint must be denied.
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
In light of the Panel’s dispositive finding on the issue of registration and use in bad faith, the Panel declines to address the question of whether the Domain Name is identical or confusingly similar to the REDFIG Mark.
Rights or Legitimate Interests
In light of the Panel’s dispositive finding on the issue of registration and use in bad faith, the Panel declines to address the question of rights or legitimate interests.
Registration and Use in Bad Faith
The Panel finds that Complainant has failed to meet its 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).
Complainant provides no documentary evidence of any use of or reputation in the REDFIG mark at the time Respondent registered the Domain Name. Even if the Complainant’s stated date of first use of August 1, 2019 is accurate, Complainant would only have used the mark for a matter of weeks prior to the September 21, 2019 date the Domain Name was acquired by the Respondent.
Respondent provides information and a clear explanation about when it acquired the Domain Name and the reason it acquired the Domain Name, i.e., based on it becoming available after a recent expiration. It also provides evidence supporting the claimed good faith reason, namely that the Domain Name is completely consistent with the other descriptive domain names held by the Respondent. The Panel is not satisfied that Respondent entertained bad faith intentions regarding the REDFIG mark at the time of acquisition because there is no evidence establishing that it was aware of Complainant or any rights in the REDFIG mark at the time and a clear and supported alternative explanation for the registration.
Complainant has thus failed to satisfy its burden to demonstrate, on a preponderance of the evidence, that the Domain Name was registered in bad faith by the Respondent; i.e. registered with awareness of the Complainant and mal intent instead of being registered because it consisted of a two-word descriptive term. There is no evidence that Respondent has violated any of the factors listed in Policy ¶ 4(b) or engaged in any conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
As Complainant cannot prove registration in bad faith per Policy ¶ 4(a)(iii), Respondent’s use of the Domain Name is immaterial, as the Policy requires a showing of bad faith registration and use. See Platterz v. Andrew Melcher, FA 1729887 (Forum June 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.”). The fact that Respondent is seeking to sell the Domain Name does not change the fact that Complainant has failed to establish that the Domain Name was registered in bad faith, a requirement of the Policy.
Therefore, the Panel finds Respondent did not register the Domain Name 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 redfig.com domain name REMAIN WITH Respondent.
Steven M. Levy and Professor David E. Sorkin as Panelists and Nicholas J.T. Smith, as Chair Panelist
Dated: November 4, 2023
