In the UDRP filed against the domain RunSmart.com, the Respondent noted that since the domain was registered 10 years prior to the first use by Complainant of the RUNSMART mark, the domain could not have been adopted in bad faith since Respondent could not have know of a then nonexistent mark at the time of registration of its domain.
In the process, RunSmart Online LLC, the Complainant, was found by the Forum panel to be guilty of engaging in Reverse Domain Name Hijacking:
“Here, the Panel finds that Complainant had no basis for filing its complaint other than to obtain a domain name that it knew it was not entitled to. Accordingly, the Panel finds that Complainant has attempted reverse domain name hijacking.”
Final decision: Deny transfer of the domain RunSmart.com with a RDNH finding.
RunSmart Online, LLC v. Domain Administrator / Intuit Inc.
Claim Number: FA2401002078063
PARTIES
Complainant is RunSmart Online, LLC (“Complainant”), New York, USA. Respondent is Domain Administrator / Intuit Inc. (“Respondent”), represented by Amanda Alameddine of Fenwick & West, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is runsmart.com, registered with MarkMonitor 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.
David S. Safran, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on January 8, 2024; Forum received payment on January 8, 2024.
On January 9, 2024, MarkMonitor Inc. confirmed by e-mail to Forum that the runsmart.com domain name is registered with MarkMonitor Inc. and that Respondent is the current registrant of the name. MarkMonitor Inc. has verified that Respondent is bound by the MarkMonitor 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 January 11, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 31, 2024 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@runsmart.com. Also on January 11, 2024, 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 January 31, 2024.
On February 1, 2024, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed David S. Safran, as Panelist.
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 contends that since the domain and its mark are identical and that no use has been made of the domain, that it follows that it was adopted and is used in bad faith.
B. Respondent
Respondent contends that since the domain was registered 10 years prior to the first use by Complainant of the RUNSMART mark, the domain could not have been adopted in bad faith since Respondent could not have know of a then nonexistent mark at the time of registration of its domain. Furthermore, Respondent contends that Complainant knew or should have known that it could not prevail when it filed its complaint and thus is guilty of reverse domain name hijacking.
FINDINGS
Respondent registered the runsmart.com domain name over a decade before the first use of the RUNSMART mark by Complainant, and Complainant knew or should have known this fact at the time that it instituted these proceedings.
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.
Registration and Use in Bad Faith
As pointed out by Respondent, given that Respondent registered the runsmart.com domain name 12 years prior to any rights alleged by Complainant, it is impossible to conclude that the registration was done in bad faith. Respondent could not have entertained bad faith intentions with respect to Complainant’s mark because it could not have contemplated Complainant’s then non-existent rights in the mark at the moment the domain name was registered. Thus, the Panel finds that the domain runsmart.com was not adopted in bad faith. See Watchdog USA, LLC v. Newfold Digital, Inc., FA2307002052775 (Forum Aug. 18, 2023) (“since the disputed domain name, watchdog.com was owned by an entity connected with Respondent since at least 2001, and Complainant did not come into existence until 2003, it is impossible to conclude that the registration was done in bad faith, as that could not have been the intention of Respondent at the time of acquisition of the disputed domain name.”); 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.”); see also VitriVax, Inc. v. Alexander Segal, FA 1959542 (Forum Sep. 10, 2021) (“The lack of any evidence that the Complainant’s trademark existed when the disputed domain name was registered suggests that Respondent could not have known of or anticipated the trademark and thus could not have targeted it in bad faith at that point in time.”); see also JoshCo Group, LLC d/b/a Veteran Benefits Guide v. Domain Administrator / Dot Corner Web Services, FA 2046327 (Forum June 22, 2023)(“[U]nless [Respondent] is a clairvoyant, there is no way that he could have known that Complainant would or might come into existence.”)
Having found that Complainant has failed to establish that Respondent adopted the runsmart.com domain name, the Panel finds it unnecessary to consider the other two factors under Paragraph 4(a) of the Policy.
REVERSE DOMAIN NAME HIJACKING
The Panel finds that the disputed domain was registered long before Complainant claims rights in the trademark RUNSMART. In its complaint, the Complainant cites the 1998 registration of the disputed domain by Respondent. Thus, Complainant knew at the time that this dispute was instituted that it could not establish prior rights and that Respondent could not have acted in bad faith when it registered its domain.
In Watchdog USA, LLC v. Newfold Digital, Inc., the Panel observed that “such a finding is justified where a complainant proceeds despite the fact that it knew or should have known that it did not have a colorable claim under the Policy.” Watchdog USA, LLC v. Newfold Digital, Inc., FA2307002052775 (Forum August 18, 2023). In GSL Networks Pty Ltd. v. Domains By Proxy, LLC / Alex Alvanos, the Panel found RDNH where the domain name was registered long before the Complainant’s trademark existed and Complainant presented no evidence indicating Respondent’s bad faith. Here, the Panel finds that Complainant had no basis for filing its complaint other than to obtain a domain name that it knew it was not entitled to. Accordingly, the Panel finds that Complainant has attempted reverse domain name hijacking.
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 runsmart.com domain name REMAIN WITH Respondent.
