#SmartSearch .com : UDRP results in a Reverse #Domain Name Hijacking decision

RDNH finding.

The domain name SmartSearch.com was registered in 1998; twenty years later, a UDRP was filed.

According to the Respondent, the Complainant attempted to acquire the domain, and when that failed, they apparently resorted to “Plan B” – filing a UDRP.

It’s noteworthy that the Respondent acquired the domain in the aftermarket 13 years ago. Since then, they monetized it on various PPC providers, including Sedo.

In their defense, provided by ESQwire.com*, the Respondent stated:

Respondent also alleges that the disputed domain name was not registered or used in bad faith. Respondent contends that it registered the disputed domain name because it incorporated a descriptive term that was short and memorable.

Respondent has purchased many similar domain names over the past decade. Respondent also alleges that it had no knowledge of Complainant’s mark when it purchased the disputed domain name.

Complainant’s mark is highly descriptive and subject to extensive third-party use, and there is no evidence to infer or conclude that Respondent had knowledge of Complainant’s personnel staffing program.

The Respondent sought a finding of Reverse Domain Name Hijacking, based on the case’s particulars.

A three member panel at the WIPO, consisting of David H. Bernstein, Neil Anthony Brown and James Bridgeman, granted that request to the Respondent, and denied the domain’s transfer.

In the past, Mr. David H. Bernstein was a panel member deciding on the ADO.com UDRP, and in that case he wasn’t sympathetic to the Respondent; in the case of SmartSearch.com, he was part of the panel’s unanimous vote that favored the Respondent.

The decision’s full text follows:

* Note: ESQwire.com is a sponsor of DomainGang.com and they provided this decision to us.

DECISION

Advanced Personnel Systems, Inc.
v. Domain Admin / Mighty Products, Inc.
Claim Number: FA1804001780243

1. The Parties

Complainant is Advanced Personnel Systems, Inc. of Oceanside, California, United States of America (“United States”), represented by Rutan & Tucker LLP, United States.

Respondent is Domain Admin/Mighty Products, Inc. of Wilmington, Delaware, United States, represented by ESQwire.com, P.C., United States.

2. The Registrar and Disputed Domain Name

The disputed domain name <smartsearch.com> is registered with Internet Domain Service BS Corp.

3. Panel

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflicts in serving as Panelists in this proceeding.

4. Procedural History

Complainant submitted a Complaint to the FORUM electronically on April 3, 2018; the FORUM received payment on April 3, 2018.

On April 6, 2018, Internet Domain Service BS Corp. confirmed by email to the FORUM that the <smartsearch.com> domain name is registered with Internet Domain Service BS Corp. and that Respondent is the current registrant of the name. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp 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”). The FORUM sent an email communication to Complainant on April 6, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amended Complaint. Complainant filed an amended Complain on April 9, 2018.

On April 10, 2018, the FORUM served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 30, 2018 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@smartsearch.com. Also on April 10, 2018, 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 4-day extension was granted on April 26, 2018 which extended the deadline for timely response until May 4, 2018.

A timely Response was received and determined to be complete on May 4, 2018.

Pursuant to Supplemental Rule 7(a), Complainant submitted an additional statement on May 22, 2018. Although the Supplemental Submission largely reargued the same points without addressing any facts or law that could not have been anticipated in the Complaint and would therefore normally be disregarded, the Panel has elected to consider Complainant’s Supplemental Submission because Respondent requested a finding of Reverse Domain Name Hijacking and Complainant used the Supplemental Submission to respond to that request.
On May 17, 2018, pursuant to Respondent‘s request to have the dispute settled by a three-member panel, the FORUM appointed David H. Bernstein, The Honourable Neil Anthony Brown QC and James Bridgeman SC as Panelists.
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.

5. Relief Sought

Complainant requests that the domain name be transferred from Respondent to Complainant.

6. Factual Background

Complainant is Advanced Personnel Systems, Inc., a company that offers a recruitment and staffing agency computer program known as SMARTSEARCH. On May 1, 1996, Complainant filed for registration of the SMARTSEARCH mark with the United States Patent and Trademark Office (“USPTO”). Complainant claimed first use of the mark in commerce in January 1995, and the USPTO registered the stylized trademark on November 10, 1998 (U.S. Reg. No. 2,202,445) for use in connection with computer software for personnel information storage, classification, retrieval and reporting. Complainant’s registered business name is SmartSearch, Inc. and Complainant owns five domain names incorporating SMARTSEARCH.

The disputed domain name was registered on December 11, 1998 by its prior owner. Respondent purchased the disputed domain name on December 27, 2005, as part of a bulk portfolio purchase of domain names from the prior owner. Respondent has hosted the disputed domain name with various providers and utilizes parking services that sometimes displays pay-per-click (“PPC”) advertising links. The disputed domain name sometimes resolves to a page with PPC links for popular and commonly searched topics, such as “Free Movie Apps” and “Free Games”; it also indicates at the top that the disputed domain name “may be available for sale by its owner.” Complainant does not allege that there have ever been any PPC links related to Complainant or its business.

7. Parties’ Contentions

A. Complainant

Complainant alleges that the disputed domain name is identical to the SMARTSEARCH trademark in which it has rights. It provided evidence of the US trademark registration for SMARTSEARCH.

Complainant further contends that Respondent does not have any rights or legitimate interests in the disputed domain name. It alleges that Respondent’s web page is simply a parking page using PPC links that are unrelated to Respondent’s business and are intended to generate revenue by redirecting consumers to other pages. Complainant alleges that Respondent is not making active use of the disputed domain name in connection with a bona fide offering of goods or services.

Complainant contends that Respondent registered and used the domain name in bad faith. Complainant states that Respondent’s primary purpose in maintaining ownership of the disputed domain name is to solicit high bids from Complainant to purchase the disputed domain name. In support of this assertion, Complainant cites to a link on the webpage that indicates that the domain name may be for sale. Complainant also claims that the disputed domain name was registered by Respondent to create and exploit confusion with Complainant’s mark, though Complainant does not provide any factual allegations in support of that assertion.

B. Respondent

Respondent accepts the validity of Complainant’s trademarks.

Respondent contends that it purchased the disputed domain name in good faith for investment and development purposes, and has been using the disputed domain name for more than 13 years. Respondent has registered hundreds of common word and combined letter domain names for more than a decade, and claims to have chosen the disputed domain name as it is descriptive, short, and memorable. Respondent states in a declaration submitted by its owner that it had no knowledge of Complainant, its website, its business name, or its trademark, and that Respondent did not register the disputed domain name with any intention to sell it to Complainant, disrupt Complainant’s business, or confuse consumers seeking Complainant’s website.

Respondent alleges to have rights and a legitimate interest in the disputed domain name. It claims that registration of descriptive domain names, such as SMARTSEARCH, establishes Respondent’s legitimate interest provided the domain name was not registered with a trademark in mind. Respondent provided a declaration stating that it had no knowledge of Complainant or its trademark and did not register the disputed domain name to target Complainant. In fact, Respondent also registered <SearchSmart.com> (the same words as the disputed domain name in inverted order), and uses that domain name to resolve to a similar PPC page as the PPC page used for the disputed domain name. Respondent claims that it is using the disputed domain name in connection with the bona fide offering of goods and services by offering an advertising platform. The links on the webpage, which are generated by a third-party monetization service, are unrelated to Complainant’s business, and none of the advertisements are targeted at Complainant or its business. Respondent alleges that the fact that the disputed domain name is advertised as possibly “for sale,” does not make use of the domain name illegitimate. Respondent claims that a business based on reselling domain names satisfies the legitimate interest prong of the Policy as long as there is no evidence that a trademark was targeted by the registrant.

Respondent also alleges that the disputed domain name was not registered or used in bad faith. Respondent contends that it registered the disputed domain name because it incorporated a descriptive term that was short and memorable. Respondent has purchased many similar domain names over the past decade. Respondent also alleges that it had no knowledge of Complainant’s mark when it purchased the disputed domain name. Complainant’s mark is highly descriptive and subject to extensive third-party use, and there is no evidence to infer or conclude that Respondent had knowledge of Complainant’s personnel staffing program.

Finally, Respondent cites to Complainant’s twenty-year delay in taking action against any of the registrants of the disputed domain name as evidence that Complainant did not actually believe the disputed domain name was registered in bad faith, but instead only filed its Complaint after it was unsuccessful in purchasing the disputed domain name (a so-called “Plan B”), or was not pleased with the automated response to their offer.

8. Discussion and Findings

To prevail, Complainant must prove all three elements set out in paragraph 4(a) of the Policy by a preponderance of the evidence:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant has submitted evidence of its ownership of registrations for SMARTSEARCH, with stylized letters, in the United States. Respondent has not contested these registrations or Complainant’s trademark rights in the term SMARTSEARCH. As such, Complainant has established that it has rights in the trademark SMARTSEARCH.

The disputed domain name includes the term SMARTSEARCH. As such, disregarding the gTLD .com, the domain name is identical to Complainant’s trademark.

Accordingly, Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

If a PPC parking website shows only advertising links that are based on or related to the descriptive meaning of the domain name, a registrant may be found to have a legitimate interest in the domain name because it is making a fair use of the domain name. That is because use of a domain name for PPC advertising, where the links are related to the descriptive meaning of the domain name and are not seeking to take advantage of Complainant or its trademark rights, reflects a legitimate effort to capitalize on the descriptive meaning of the domain name rather than an effort to capitalize on the goodwill associated with another entity’s trademark.

In this case, Respondent has been utilizing the disputed domain name as a parking page for PPC advertising links. None of the links appear to be related to Complainant, its trademark or its business. Instead, the links seem to reflect descriptive matters that one might search for on the Internet, such as “games” and “movies.” Because these links are sufficiently related to a website that offers “smart” “search” on the Internet, and because none of the links are related to Complainant or its personnel staffing program, the Panel finds that Complainant has failed to establish that Respondent lacks rights or legitimate interests in the disputed domain name.

Complainant argues that Respondent’s webpage does not always include PPC links; at those times, the webpage to which the domain name resolves includes only the notation that the domain name may be for sale. Even if that is correct, it does not undermine the fact that the Respondent appears to have a legitimate interest in using this domain name for a page that sometimes includes links related to smart searching on the Internet.

Accordingly, Complainant has failed to satisfy the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that Respondent has registered or has acquired the Disputed Domain Name primarily for the purpose of selling, renting or otherwise transferring the Disputed Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the Disputed Domain Name; or
(ii) Respondent has registered the Disputed Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Disputed Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. Policy, paragraph 4(b).

None of these four circumstances exist here, nor is there any other evidence of bad faith registration or bad faith use. Complainant argues that the registration and use was in bad faith because Respondent has an offer on the website indicating that it may be willing to sell the domain name, but that alone, without more, is not sufficent to establish bad faith. Respondent is entitled to sell property or rights that it owns, including a domain name registration, as long as the sale is not being done in a bad faith effort to take advantage of Complainant’s trademark rights.

Complainant also contends that Respondent registered the disputed domain name to divert traffic for Respondent’s gain by creating a likelihood of confusion. Complainant’s allegations are entirely conclusory, and are supported by no evidence whatseover to substantiate those allegations. As noted above, Respondent’s webpage does not include any links related to Complainant’s business or trademark, and does not target Complainant in any way.
Futhermore, Respondent has certified that it had not heard of Complainant or its marks at the time of acquisition of the disputed domain name. Given that Complainant has not included any evidence of the fame or renown of its trademark as of the time the domain name was acquired by Respondent, Respondent’s assertions appear credible. The Panel therefore finds that the Respondent did not register the disputed domain name with bad faith towards Complainant’s marks.
None of Complainant’s arguments are sufficient to establish bad faith registration or use. The Panel therefore finds that the disputed domain name has not been registered and used in bad faith in terms of paragraph 4(a)(iii) of the Policy.

9. Reverse Domain Name Hijacking

Respondent has requested a finding of Reverse Domain Name Hijacking. Paragraph 15(e) of the Rules provides that, “[i]f 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 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.”

Section 4.16 of the WIPO Decision Overview 3.0 notes that a panel may find Reverse Domain Name Hijacking when there are “facts which demonstrate that Complainant knew it could not succeed as to any of the required elements—such as Complainant’s lack of relevant trademark rights, clear knowledge of Respondent rights or legitimate interests, or clear knowledge of Respondent bad faith such as…facts which demonstrate that Complainant clearly ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint.”

This case provides a clear example of Reverse Domain Name Hijacking. Through this action, Complainant sought to obtain the disputed domain name despite having to know that its Complaint had no possibility of success. Complainant and its counsel made conclusory allegations with no supporting facts, and disregarded the requirements set forth in the Policy for establishing abusive registration of a domain name. Complainant submitted no evidence to show that the PPC links were targeting Complainant or its business or trademark, ignored the obvious descriptive meaning of the disputed domain name, and made unsupportable assertions of bad faith.

Complainant’s and its counsel’s bad faith conduct is all the more apparent when one considers that Complainant waited more than a decade to bring this challenge, and filed it only after its failed efforts to purchase the domain name.

Taken together, these facts warrant a finding of Reverse Domain Name Hijacking. See generally Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151 (Jan. 4, 2001) (finding Reverse Domain Name Hijacking where “Respondent’s registration and use of the domain name could not, under any fair interpretation of the facts, constitute bad faith”).

10. Decision

For the foregoing reasons, the Complaint is denied. Moreover, in light of Complainant’s and its counsel’s abusive bad faith in filing this Complaint, the Panel finds Complainant guilty of Reverse Domain Name Hijacking.

David H. Bernstein, Presiding Panelist
The Honourable Neil Anthony Brown QC and James Bridgeman SC, Panelists

Dated: May 25, 2018


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