When you spend money in the domain aftermarket, don’t wait too long to develop that domain.
This appears to be the lesson delivered by a UDRP case involving Tosca.com, a domain registered in 2002.
Its current registrant acquired it in 2010 with a development plan in mind, but the domain was moved to parking.
Tosca Services LLP filed a UDRP to usurp the domain, after the registrant declined their offers.
In the UDRP’s particulars the Respondent pointed out it holds a registered trademark for the TOSCA Mark in the European Union and its rights to the TOSCA mark predate Complainant’s registered marks.
The case was decided upon at the National Arbitration Forum and the 3 member panel sided with the Respondent, declining the Complainant’s demands for a transfer. In doing so, they also refused to declare a finding of Reverse Domain Name Hijacking:
The Panel notes that the Domain Name had been unused for 10 years prior to commencing proceedings and that Complainant had written to Respondent prior to the commencement of these proceedings.
It’s clear that domains that are meant to be developed should not be parked in the interim.
The domain transfer was denied.
Tosca Services, LLC v. IPHoldings / Alexandre Marguet
Claim Number: FA2104001943342
PARTIES
Complainant is Tosca Services, LLC (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is IPHoldings / Alexandre Marguet (“Respondent”), represented by Samantha Collins of Marks & Clerk LLP, United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tosca.com> (“Domain Name”), registered with eNom, LLC.
PANEL
The undersigned certifies 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.
Sandra J. Franklin and Aaron B. Newell as Panelists and Nicholas J.T. Smith, as chair Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the Forum electronically on April 29, 2021; the Forum received payment on April 29, 2021.
On April 29, 2021, eNom, LLC confirmed by e-mail to the Forum that the <tosca.com> domain name is registered with eNom, LLC and that Respondent is the current registrant of the name. eNom, LLC has verified that Respondent is bound by the eNom, 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 May 3, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 28, 2021 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@tosca.com. Also on May 3, 2021, 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 May 27, 2021.
On June 4, 2021, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Sandra J. Franklin and Aaron B. Newell as Panelists and Nicholas J.T. Smith, as chair 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 has rights in the TOSCA mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. 4,827,753, registered Oct. 6, 2015). Respondent’s <tosca.com> domain name is identical or confusingly similar to Complainant’s mark as it incorporates the mark in its entirety and adds the “.com” generic top-level domain (“gTLD”) to the end of the mark.
Respondent lacks rights and legitimate interests in the <tosca.com> domain name as it is not commonly known by the Domain Name, nor has Complainant authorized or licensed Respondent to use its TOSCA mark. Respondent does not use the Domain Name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead inactively holds the Domain Name, and previously offered the Domain Name for sale.
Respondent registered and uses the <tosca.com> domain name in bad faith. Respondent inactively holds the Domain Name and previously offered the Domain Name for sale. Respondent failed to respond to Complainant’s cease-and-desist letter and hid its identity behind a WHOIS Privacy Service.
B. Respondent
Respondent is an agent of a company that purchased the <tosca.com> domain name in 2010 as part of its mission to launch a furniture e-commerce service throughout the world.
Respondent holds a registered trademark for the TOSCA Mark in the European Union and its rights to the TOSCA mark predate Complainant’s registered marks. Respondent has incurred considerable costs in acquiring the Domain Name, registering its trademarks and preparing its business for launch.
Respondent has parked the Domain Name in anticipation of its launch. It has no control over the parked page which displayed a link to a service offering to buy the Domain Name. Complainant has offered to purchase the Domain Name from Respondent and Respondent has refused to engage with Complainant as it has no interest in selling the Domain Name.
FINDINGS
The Panel finds that Complainant has rights in the TOSCA mark. The Domain Name is identical to Complainant’s mark as it contains the entirety of Complainant’s mark. Complainant has not satisfied its burden of proving Respondent registered the <tosca.com> domain name in bad faith. The Panel makes no findings with respect to the remaining elements under the Policy.
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
Complainant has rights in the TOSCA mark based upon registration of the mark as USPTO Reg. 4,827,753, registered Oct. 6, 2015. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) (“Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).).
The Panel finds that the <tosca.com> domain name is identical or confusingly similar to Complainant’s TOSCA mark as it incorporates the mark in its entirety and adds the “.com” gTLD to the end of the mark. Under Policy ¶ 4(a)(i), adding the “.com” gTLD is generally insufficient in differentiating a disputed domain name from the mark it fully incorporates. See Abt Elecs., Inc. v. Ricks, FA 904239 (Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
Rights or Legitimate Interests
In light of the Panel’s dispositive finding on the issue of registration 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 failed to meet its burden of proof of bad faith registration under Policy ¶ 4(a)(iii), and thus the Panel need not consider the second element. It is generally accepted under the Policy that for a bad faith registration (i) the Respondent must have been aware of the Complainant or its mark when it registered the disputed domain name; and (ii) the registration must in some way have been targeted at Complainant or its mark. See WIPO Overview 3.0, paragraph 3.2.2 for the consensus view on this issue.
The Domain Name was acquired by the Respondent in 2010. While Complainant operates a successful business in providing reusable plastic shipping solutions, it provides no evidence of holding any registered trademarks prior to 2014 and no evidence of sales under, or reputation in, the TOSCA mark in the European Union at the time Respondent acquired the Domain Name.
There is no evidence that Respondent, prior to the commencement of the proceeding, was aware of or has targeted the Complainant in any way, either by a direct offer for sale, or in the manner it has used the Domain Name. While the Domain Name was at one point redirected to a parking page, the Panel accepts the evidence provided by Respondent showing that the parking page was maintained by the Registrar and name servers, was not controlled or managed by Respondent in any way, and the message was entirely unauthorized by Respondent. In such a case, the Panel is unprepared to infer that Respondent has offered or intends to offer the Domain Name for sale. The Respondent’s contention that it has never sought to sell the Domain Name is supported by its refusal to respond to numerous messages from Complainant seeking to acquire the Domain Name.
Respondent has provided evidence of its preparations around the time of registration of the Domain Name to use the Domain Name for a furniture e-commerce service. This includes evidence that Respondent had, between 2009 and 2014, registered trademarks corrosponding to the Domain Name in numerous jurisdictions, including the EU, UK, Russia, China and Japan, that it spent a significant amount of money to acquire the Domain Name, and that it has incurred considerable costs in developing a brand identity around the TOSCA mark. While the Domain Name has not yet been used by Respondent, Respondent’s evidence is persuasive in showing that its acquisition of the Domain Name in 2010 was not motivated by awareness of Complainant but by a desire to use the Domain Name as part of a business offering furniture e-commerce services (a field unrelated to Complainant), under the TOSCA Mark.
Finally, there is no other evidence that Respondent has violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Haru Holding Corporation v. Michael Gleissner / NextEngine Ventures LLC, FA 1685263 (Forum Aug. 30, 2016) (finding that where a respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith, lack of rights or legitimate interests on its own is insufficient to establish bad faith). As discussed above, Respondent has not offered the Domain Name for sale, nor is there a basis for inferring such an intention. Respondent has not, on the basis of the evidence before the Panel, engaged in a pattern of conduct of registering domain names to prevent the owner of a mark for reflecting such a mark in a corresponding domain name. Respondent is not a competitor of Complainant and has not used the Domain Name for an active website.
The Uniform Domain Name Dispute Resolution Policy is designed to deal with clear cases of cybersquatting, see IAFT International LLC v. MANAGING DIRECTOR / EUTOPIAN HOLDINGS, FA 1577032 (Forum Oct. 9, 2014) (“The objectives of the Policy are limited — designed to obviate the need for time-consuming and costly litigation in relatively clear cases of cyber-squatting — and not intended to thwart every sort of questionable business practice imaginable. ”). This is not such a case. The Panel finds that Complainant has failed to prove that the Domain Name was registered in bad faith.
REVERSE DOMAIN-NAME HIJACKING
Respondent alleges that Complainant has engaged in reverse domain-name hijacking by initiating this dispute when it should have known that it could not succeed. In particular Respondent notes that the Complaint does not provide proof of Complainant’s reputation and does not address the fact that Respondent holds trademark registrations for the TOSCA mark in multiple jurisdictions that predate Complainant’s registration of the TOSCA mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i). While Complainant may have been unwise to file this case, the Panel does not impose on a complainant an obligation to search trademark registries prior to commencing proceedings. The Panel notes that the Domain Name had been unused for 10 years prior to commencing proceedings and that Complainant had written to Respondent prior to the commencement of these proceedings. Respondent chose not to respond to Complainant’s communications (including by providing information such as the Respondent’s trademark registrations, that might have prevented the proceeding). For these reasons, there is insufficient basis in the record for the Panel to conclude that the Complaint was filed without any good faith basis or reasonable prospect of success. The Panel therefore declines Respondent’s request to declare that Complainant filed the Complaint in an attempt at 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 <tosca.com> domain name REMAIN WITH Respondent.
Sandra J. Franklin and Aaron B. Newell, as Panelists
and Nicholas J.T. Smith, as chair Panelist
Dated: June 15, 2021
