The UDRP filed against the domain Tractus.com closed with the Respondent, a father & son domain investor pair, being cleared of any wrong-doing.
The domain was registered in 2006 by the Respondent. The Complainant, Tractus Asia Limited, claimed rights to the TRACTUS mark going back to 2001. The domain’s Latin word origin gave the Respondent the opportunity to claim rightful registration and use.
Fina decision: Deny the transfer of Tractus.com to the Complainant. The three member panel also denied the Respondent’s request for a finding of Reverse Domain Name Hijacking.
The domain transfer was denied.
Tractus Asia Limited v. Domain Administrator / Synergy Technologies, LLC
Claim Number: FA2311002070088
PARTIES
Complainant is Tractus Asia Limited (“Complainant”), represented by Patchen M. Haggerty of Perkins Coie LLP, Washington, USA. Respondent is Domain Administrator / Synergy Technologies, LLC (“Respondent”), represented by Ari Goldberger of ESQwire.com P.C., New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is tractus.com (the “Disputed Domain Name”), registered with GoDaddy.com, LLC.
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.
Jonathan Agmon as Panelist, The Honorable Neil Anthony Brown KC as Panelist, and Douglas M. Isenberg as Panelist and Chair.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on November 7, 2023; Forum received payment on November 7, 2023.
On November 8, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the tractus.com domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 November 10, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 1, 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@tractus.com. Also on November 10, 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.
On November 29, 2023, Respondent requested an extension of time pursuant to Rule 5(b), and Respondent requested and paid the extension fee for an extension of time pursuant to Forum Supp. Rule 6(a)(ii). Also on November 29, 2023, Forum granted Respondent’s requests, setting the new response deadline as December 15, 2023.
A timely Response was received and determined to be complete on December 15, 2023.
On December 26, 2023, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, Forum appointed Douglas M. Isenberg (chair), Jonathan Agmon, and The Honorable Neil Anthony Brown KC 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 states, via a declaration from its executive director, that it is “a business strategy consulting and operations management firm dedicated to helping clients invest and thrive globally”; that it “first began operating and… offering its services in Thailand in 1995 and entered the U.S. market in 2001”; and that it has its “principal place of business in Hong Kong and offices locations in the US., China, India, Indonesia, Japan, Myanmar, Singapore, Thailand, and Vietnam, operated either directly or through affiliated entities.”
Complainant states that it has used the mark TRACTUS since at least as early as 2001, which is protected by registrations in the United States, China, India, and Vietnam, including U.S. Reg. No. 4,750,391 (first used in commerce December 31, 2001; registered June 9, 2015, for use in connection with, inter alia, “[p]roviding business management and business consulting services”) (collectively, the “TRACTUS Trademark”). Complainant has provided a copy of the registration certificate for U.S. Reg. No. 4,750,391, but not for any other registrations.
Complainant states that it uses the domain name tractus-asia.com, which is registered by an affiliate, Tractus (Thailand) Co., Ltd., and that this domain name was created on October 17, 2000.
Complainant states that the Disputed Domain Name was “first registered in 2006” and “does not support active website content, but rather is parked and passively maintained with click-to-pay advertisements, under a privacy service to conceal Respondent’s identity.” Complainant further states that the website associated with the Disputed Domain Name “actively solicits offers for inquiry as to acquisition of the domain, with a link stating ‘click Here to Inquire About Tractus.com.'” According to correspondence included with the Complaint, Complainant apparently used a broker to attempt to purchase the Disputed Domain Name from Respondent, offering US $5,000.00, but the broker stated that “[t]he seller replied he will only consider serious offers above $50,000 USD.”
Complainant argues that the Disputed Domain Name is confusingly similar to the TRACTUS Trademark because the Disputed Domain Name “consists of the entirety of” the TRACTUS Trademark, “coupled only with” the top-level domain .com, and “[p]revious panels have found that addition of a gTLD is insufficient to differentiate a disputed domain name from a registered mark.”
Complainant argues that Respondent has no rights or legitimate interests in the Disputed Domain Name because, inter alia, “Respondent is not a licensee or authorized user of [the TRACTUS Trademark] (or any variation thereof) and is not commonly known by the Disputed Domain [Name] or any variation of [the TRACTUS Trademark]”; and the Disputed Domain Name “does not support active website content, but rather is parked and passively maintained with click-to-pay advertisements, under a privacy service to conceal Respondent’s identity” and “[t]he resolved website actively solicits offers for inquiry as to acquisition of the domain, with a link stating ‘click Here to Inquire About Tractus.com.'”
Complainant argues that the Disputed Domain Name has been registered and is being used in bad faith because, inter alia, “the nature and content at the website hosted at the Disputed Domain makes it clear that Respondent’s intent is to improperly withhold the Disputed Domain from Complainant by passively holding the domain in an effort to exact a price over $50,000, which well-exceeds Respondent’s reasonable out of pocket costs”; and “the nature of the content at the website hosted at the Disputed Domain makes it clear that Respondent’s intent is to attract Internet traffic and commercially benefit from the goodwill of Complainant’s Mark to through pay-per-click advertising.”
B. Respondent
Respondent states, and provides a declaration to support, that its owner, Hugh Hedley, “is responsible for the registration of the Disputed Domain” and “has been in the business of buying, selling, leasing, and developing generic and descriptive domain names since February 20, 2007 with over 10,000 generic and descriptive domain names in its portfolio.” The declaration further states that the Disputed Domain Name was “first created and registered in December, 1998”; that Mr. Hedley’s father, Victor Hedley (owner of Marketing HQ, Inc.) registered the Disputed Domain Name when it lapsed “on or around February 13, 2006”; that Marketing HQ, Inc. sold the Disputed Domain Name to Search Marketing, Inc. in 2008; and that “[o]n or around March, 2013, Respondent purchased the Disputed Domain from Search Marketing, Inc., because it is a short, single Latin dictionary word .COM domain name with inherent value and utility.” The declaration states that “Respondent believed [the Disputed Domain Name] was important to own because it was the type of attractive domain name that could be developed, sold to a third-party end user, or resold on the secondary market” and “Respondent recognized that the Disputed Domain is a Latin dictionary word with many different references with its most common being medical use.”
Respondent states that “[o]ver the past 2 decades, Respondent has registered approximately seventy-eight (78) other valuable and memorable Latin words or religious related domain names of similar quality and value to the Disputed Domain”; that it “did not register the Disputed Domain with Complainant’s registered trademark in mind or with the intent to sell to Complainant, to disrupt Complainant’s business, or to confuse consumers seeking to find Complainant’s web site”; and that “[a]t no time did Respondent target or intend to target the Complainant.”
Respondent admits that the Disputed Domain Name is identical or confusingly similar to the TRACTUS Trademark.
Respondent argues that it has rights or legitimate interests in the Disputed Domain Name because, inter alia, “[t]he registration of domain names that contain single dictionary words are permissible on a first-come, first served basis, and such registration establishes the Respondent’s legitimate interest, provided the domain was not registered with a trademark in mind”; Respondent’s registration of “other valuable and memorable Latin words… supports an inference that the descriptive disputed domain was not registered with the intent to target a trademark”; Respondent acquired the Disputed Domain Name with “good faith use for investing purposes”; and Respondent is “a generic domain name reseller with numerous similar domain names held for investment.”
Respondent argues that the Disputed Domain Name was not registered or used in bad faith because, inter alia, “Respondent purchased the Disputed Domain simply because it is a single Latin dictionary word .COM that became available when its prior owner decided to sell the Disputed Domain”; “Registration of domain names in this manner not only fails to support a finding of bad faith registration, but it also negates such a finding”; “Respondent did not have knowledge of Complainant’s trademark and that Respondent, therefore, did not target Complainant with the registration of the Disputed Domain”; “Respondent engaged in good faith negotiations [with Complainant or its representatives] to consummate a sale” of the Disputed Domain Name; “it does not constitute bad faith to offer generic or descriptive term domain names for sale”; and responding and making counteroffers to offers to purchase a domain name is not evidence of bad faith.
Respondent requests that the Panel find that Complainant has abused this administrative proceeding because, inter alia, “[a]ny amount of due diligence [by Complainant] would have shown that it was a claim calculated and designed to steal a valuable domain name from its rightful owner”; and “the facts squarely fit into the ‘Plan B’ type of case – using the Policy after failing in to acquire the disputed domain name.”
FINDINGS
Complainant has failed to establish all three elements. As such the Disputed Domain Name shall remain with Respondent.
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
Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the TRACTUS Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the TRACTUS Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “tractus”) because “[t]he applicable Top-Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1.
As set forth in section 1.7 of WIPO Overview 3.0: “in cases where a domain name incorporates the entirety of a trademark,… the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” Here, the Disputed Domain Name incorporates the entirety of the TRACTUS Trademark, with no additional characters. Where, as here, a disputed domain name contains a complainant’s trademark, and only such trademark, “it is apparent without the need for elaboration, that the Disputed Domain Name is identical or confusingly similar to” the trademark, Société Air France v. Indra Armansyah, WIPO Case No. D2016-2027, because in such case “[t]he disputed domain name is obviously identical to the Complainant’s mark.” Icebug AB v. Domain Administrator, WIPO Case No. D2013-1823.
Accordingly, the Panel finds that Complainant has proven the first element of the Policy.
Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent can demonstrate that it has rights or legitimate interests in a disputed domain name by proving any of the following:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
As set forth in section 2.9 of WIPO Overview 3.0:
Applying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising [pay-per-click] PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users.
Panels have additionally noted that respondent efforts to suppress PPC advertising related to the complainant’s trademark (e.g., through so-called “negative keywords”) can mitigate against an inference of targeting the complainant.
Panels have recognized that the use of a domain name to host a page comprising PPC links would be permissible – and therefore consistent with respondent rights or legitimate interests under the UDRP – where the domain name consists of an actual dictionary word(s) or phrase and is used to host PPC links genuinely related to the dictionary meaning of the word(s) or phrase comprising the domain name, and not to trade off the complainant’s (or its competitor’s) trademark.
Here, despite Complainant’s rights in the TRACTUS Trademark, it appears that “tractus” has a dictionary meaning – even though that meaning may be in Latin, not English, and is not universally clear.
A screenshot of the website associated with the Disputed Domain Name, as provided by Complainant, shows PPC links labeled “Dictionary Definition,” “Online Thesaurus,” and “Meanings Of Words.” Although these PPC links are not strictly “genuinely related to the dictionary meaning of the word(s) or phrase comprising the domain name,” it is apparent that these PPC links do not “trade off” of the TRACTUS Trademark or anything related to Complainant or the TRACTUS Trademark. If anything, these PPC links seem to indicate that Respondent may have taken “efforts to suppress PPC advertising related to” the TRACTUS Trademark.
Accordingly, the Panel finds that Respondent has demonstrated that it has rights or legitimate interests in the Disputed Domain Name.
Registration and Use in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
This case appears to be analogous to a recent decision under the Policy brought against the same respondent as here, Royal Caribbean Cruises, Ltd. v. Anonymize, Inc. / Synergy Technologies, LLC, WIPO Case No. D2023-1708. In that dispute, involving the domain name starofthesea.com, the panel found that the respondent had not used the disputed domain name in bad faith. The panel there wrote:
Respondent has registered and used the Disputed Domain Name in connection with a PPC page that contains links unrelated to Complainant or Complainant’s trademarks and instead solely related to the religious meaning of the phrase “Star of the Sea.” Previous panels have found that use of a disputed domain name in connection with a PPC page that provides links connected to a common or dictionary meaning associated with the domain name, and unrelated to a complainant or a complainant’s trademarks does not constitute bad faith. See, e.g., Telect, Inc. v. Arvind Reddy, WIPO Case No. D2017-1270 (finding no bad faith where PPC links “are generic” and “Complainant has failed to provide evidence that demonstrates that the Respondent is using the Disputed Domain Name to trade off the Complainant’s reputation, to mislead Internet users, or to disrupt the Complainant’s business”); and Weeds, Inc. v. Registration Private, Domains By Proxy, LLC / Innovation HQ, Inc., WIPO Case No. D2017-1517 (finding no bad faith where disputed domain name weeds.com was associated with a PPC site that contained links for “Container Gardening”, “Fine Gardening”, “Flora”, “Gardening”, “Green Plants”, “Herb Gardening”, “Home Gardening”, “Horticulture”, “Horticulture Magazines” and “House Plants”).
Similarly, in another decision also involving the same respondent as here, a panel found a lack of bad faith where it found “absence of any evidence indicating that Respondent targeted the Complainant,” in part because Respondent “claims that it registered the disputed domain name because of its inherent value as a personal name” and the respondent used the disputed domain name in connection with a PPC page containing links unrelated to the relevant trademark. Titoni AG v. Synergy Technologies, LLC, Domain Administrator, WIPO Case No. D2019-0395.
And in yet another decision involving the same respondent as here, a panel declined to find bad faith where the respondent “provides sufficient evidence to allow the Panel to find that Respondent registered the domain name for its inherent value as a descriptive term” and “Respondent makes clear that its business involves the acquisition of domain names that may have inherent value because of their generic meaning.” Indoor Billboard/Northwest, Inc. v. Domain Administrator / Synergy Technologies, LLC, Forum Claim No. 1973863.
The Panel here agrees with the conclusions in these previous decisions in which Respondent prevailed and finds the reasoning applicable here as well.
Further, the Panel finds Complainant’s arguments with respect to passive holding inapplicable here, given that the Disputed Domain Name is in fact associated with an active website – albeit one that displays only PPC links. Notably, section 3.3 of WIPO Overview 3.0 refers to the passive holding doctrine (first set forth in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003) in the context of disputes involving “the non-use of a domain name (including a blank or ‘coming soon’ page)”, which is not the case here. In any event, even if the Panel considered the PPC page associated with the Disputed Domain Name to constitute passive holding, the Panel does not find the doctrine applicable here given, at least, Complainant’s failure to establish that the TRACTUS Trademark “has a strong reputation and is widely known” (citing Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003) because Complainant has not provided any evidence to support its statements about the TRACTUS Trademark other than a certificate for a single U.S. trademark registration; and further given Respondent’s evidence of “actual or contemplated good faith use by it of the domain name” (Id.).
Finally, with respect to Complainant’s arguments regarding communications about a potential sale of the Disputed Domain Name, the Panel agrees with the decision cited by Respondent, Costa Crociere S.P.A. v. Yoshiki Okada, WIPO Case No. D2018-1632. There, the panel wrote:
Turning to the Respondent’s asking price of USD 1 million for the disputed domain name, it is the view of the Panel that, where an investor in domain names legitimately registers a domain name which appreciates in value, it is reasonable to expect the registrant to seek the full price it believes to be achievable for the sale of that name. The Respondent made no approach to the Complainant for 21 years and quoted the price in question in response to an enquiry from the Complainant. In the view of the Panel, the facts of the case overall are more supportive of an inference that the Respondent registered the disputed domain name because of its Spanish dictionary meaning and in the hope that it would appreciate in value generally, rather than with the specific intention of selling it to the Complainant or a competitor of the Complainant for an excessive price.
Accordingly, the Panel finds that Complainant has not proven the third element of the Policy.
REVERSE DOMAIN NAME HIJACKING
Paragraph 1 of the Rules defines Reverse Domain Name Hijacking (“RDNH”) as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”. Paragraph 15(e) of the Rules provides, in relevant part: “If 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.”
As set forth in section 4.16 of WIPO Overview 3.0:
Reasons articulated by panels for finding RDNH include: (i) facts which demonstrate that the complainant knew it could not succeed as to any of the required three elements – such as the complainant’s lack of relevant trademark rights, clear knowledge of respondent rights or legitimate interests, or clear knowledge of a lack of respondent bad faith…, (ii) facts which demonstrate that the 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, including relevant facts on the website at the disputed domain name or readily available public sources such as the WhoIs database, [or] (iii) unreasonably ignoring established Policy precedent notably as captured in this WIPO Overview – except in limited circumstances which prima facie justify advancing an alternative legal argument.
Given the undertakings in paragraphs 3(b)(xiii) and (xiv) of the UDRP Rules, some panels have held that a represented complainant should be held to a higher standard.
Here, as set forth above, Complainant (which is represented by an attorney) has failed to establish two of the three elements of the Policy, and it appears that Complainant filed the Complaint, as Respondent has described, only as a “Plan B” after Complainant failed to negotiate a purchase of the Disputed Domain Name at a price it was willing to pay. Perhaps Complainant should not have filed the Complaint. However, the bar for RDNH, as described in WIPO Overview 3.0 above, is high.
Moreover, the Complaint was substantive and supported by both evidence and citations, indicating that the Complainant had a reasonable belief that it was entitled to pursue a claim for the Disputed Domain Name on appropriate grounds despite the Panel’s conclusion that it failed on two of the three elements of the Policy.
As a result, the Panel declines to find that the Complaint was brought in bad faith, in an attempt at RDNH.
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 tractus.com domain name REMAIN WITH Respondent.
Douglas M. Isenberg, Panelist and Chair
Jonathan Agmon, Panelist
The Honorable Neil Anthony Brown KC, Panelist
Dated: January 3, 2024
