TrailBuilt.com rolls out Reverse Domain Name Hijacking finding

The registrant of Trailbuilt.com acquired the domain name in a good faith business transaction and for substantial financial consideration.

SD Wheel Corp. filed a UDRP to usurp the domain, based on a mark registration. But according to the UDRP, Complainant filed its application for registration of the TRAILBUILT mark on September 16, 2019, more than 95 days after the domain name was registered by Respondent.

That formed the basis of the Respondent’s argument, who not only won the UDRP but managed to give enough fodder to the Forum’s panelist for a finding of Reverse Domain Name Hijacking:

  • Throughout this proceeding Complainant has been represented by experienced legal counsel;
  • Complainant knew, or should have known, when it filed its Complaint, that Respondent had registered its domain name more than three months before Complainant filed an application for registration of the service mark upon which it relies;
  • Complainant has offered no evidence showing that Respondent procured its domain name registration in bad faith anticipation of Complainant’s mark registration;
  • Complainant filed its Complaint only after its efforts to purchase the domain name from Respondent had failed;  and
  • Complainant continued to prosecute this proceeding with the filing of an Additional Submission after the salient facts touching on the parties’ relative time priority in rights were laid before the Panel in Respondent’s Response.
  • As a consequence, Complainant is guilty of Reverse Domain Name Hijacking as defined in the governing Rules.

SD Wheel Corp. v. Dustin Hoon / TrailBuilt.com

Claim Number: FA2109001967151

PARTIES

Complainant is SD Wheel Corp. (“Complainant”), represented by Michael J. Bendel of Davis & Kuelthau. s.c., Wisconsin, USA. Respondent is Dustin Hoon / TrailBuilt.com (“Respondent”), represented by Kleiman Professional Legal Services, California, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <trailbuilt.com>, which is registered with Tucows Domains Inc.

PANEL

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

Christopher K. Larus, Esq., Georges Nahitchevansky, Esq., and Terry F. Peppard, Esq., as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on September 30, 2021; the Forum received payment on September 30, 2021.

On October 1, 2021, Tucows Domains Inc. confirmed by e-mail to the Forum that the <trailbuilt.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 5, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 29, 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@trailbuilt.com. Also, on October 5, 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 October 25, 2021. Thereafter, Complainant filed an Additional Submission under date of October 29, 2021, and Respondent replied with its Additional Submission, filed under date of November 1, 2021.

On November 11, 2021, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Christopher K. Larus, Esq., Georges Nahitchevansky, Esq., and Terry F. Peppard, Esq., as Panelists in this proceeding.

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

In its Complaint and Additional Submission, Complainant alleges that:

Complainant provides retail store services online featuring automotive wheels, tires, suspension components, and related clothing and accessories.

Complainant holds a registration for the TRAILBUILT service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 6,167,236, registered October 6, 2020, based upon an application for registration filed on September 16, 2019, and declaring the mark’s first use in commerce to be June 24, 2019.

Complainant also has common law rights in the mark dating from June 24, 2019, based upon previous use of the mark.

Respondent registered the domain name <trailbuilt.com> on June 10, 2019.

The domain name is substantively identical to the TRAILBUILT mark.

Respondent has not been commonly known by the domain name.

Respondent has not been licensed or otherwise authorized by Complainant to use the TRAILBUILT mark for any purpose.

Respondent fails to use the domain name for a bona fide offering of goods or services or for a legitimate noncommercial or fair use.

Instead, Respondent has inactively held the domain name for the majority of the time since its registration.

Before Complainant sent a cease-and-desist letter to Respondent demanding that it discontinue its use of the domain name, Respondent employed it to sell goods online in competition with the business of Complainant.

Respondent does not have rights to or legitimate interests in the domain name.

Respondent registered and used the domain name in a manner intended to disrupt the business of Complainant in order to induce Complainant to buy the domain name from Respondent.

Respondent has offered to sell the domain name to Complainant for an exorbitant price.

Respondent registered and now uses the domain name in bad faith.

B. Respondent

In its Response and Additional Submission, Respondent asserts that:

Complainant does not have rights in the TRAILBUILT mark superior to those of Respondent in its <trailbuilt.com> domain name because Complainant did not register the mark prior to Respondent’s registration of the domain name.

The domain name was first registered on November 4, 2018, by Respondent’s predecessor in interest, and Respondent acquired the domain name and registered it as of June 10, 2019, whereas Complainant did not use the TRAILBUILT mark in commerce before June 24, 2019, and did not obtain registration of the mark until October 6, 2020.

Respondent acquired the domain name in a good faith business transaction and for substantial financial consideration.

Complainant has failed to provide any evidence that the TRAILBUILT mark acquired distinctiveness sufficient to support a claim of rights in the mark under the common law prior to its registration of the mark.

Respondent has rights to and legitimate interests in the <trailbuilt.com> domain name based on its good faith efforts to employ the domain name in the marketing of off-road vehicles online from as early as May of 2019.

Respondent made a proposal to sell the domain name to Complainant only after

Complainant specifically solicited such a proposal, not once but twice.

Complainant should be found by the Panel to have commenced and prosecuted this proceeding in a bad faith attempt at reverse domain name hijacking.

FINDINGS

Complainant has failed to prove that Respondent registered the contested <trailbuilt.com> domain name in bad faith, and Complainant’s pursuit of its claim in this proceeding constitutes Reverse Domain Name Hijacking.

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, to obtain an order that a domain name should be cancelled or transferred, Complainant must prove each of the following three elements:

(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 to or legitimate interests in respect of the domain name; and

(3) the same domain name was registered and is being used by Respondent in bad faith.

Registration and Use in Bad Faith

It is customary for a UDRP panel to take up the issues presented by Policy ¶ 4(a) seriatim, in the order in which they appear in the text of the Policy. However, because Complainant is obliged by the terms of the Policy to prove all of the three points set out immediately above, a failure to prove any of them must be fatal to Complainant’s cause. And, in that event, it becomes unnecessary for the Panel to address the others. See, for example, Post.Com Limited v. Peter Neilson, D2002-0690 (WIPO September 17, 2002):

In this Panel’s view, the Complainant has not established … that the Domain Name was registered by the Respondent in bad faith…. In the light of this finding the Panel does not need to consider paragraphs 4(a)(i) and (ii) of the Policy.

To the same effect, see also Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd., D2010-0470 (WIPO May 19, 2010).

Here Complainant asserts that it has rights in the TRAILBUILT service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with the USPTO. However, the parties’ pleadings show that Complainant’s rights in its mark are not senior in time to Respondent’s registration of the <trailbuilt.com> domain name. This is because the domain name was registered by Respondent on June 10, 2019, while Complainant obtained registration of its TRAILBUILT service mark nearly sixteen months later, on October 6, 2020. And, while UDRP panelists have found that a complainant’s seniority in time should be determined as of the date of filing of its registration application rather than the eventual date of mark registration, Complainant filed its application for registration of the TRAILBUILT mark on September 16, 2019, more than 95 days after the domain name was registered by Respondent.

The parties’ submissions do not show that Respondent registered the contested domain name in bad faith, but instead support Respondent’s assertion that it had no reason to know of Complainant’s mark when it registered the domain name. See, for example, Francesca’s Collections, Inc. v. Blackstone Trust, FA 368315 (Forum March 9, 2011):

… Complainant’s rights in the mark date back only to… the filing date of the… trademark registration. Respondent, however, registered the… domain name… prior to Complainant’s trademark registration. Accordingly, the Panel finds that Respondent’s predating registration of the disputed domain name indicates that Respondent did not register the disputed domain name in bad faith according to Policy ¶ 4(a)(iii).

Complainant also asserts that it acquired common law rights in the TRAILBUILT mark dating from June 24, 2019. However, that date fell fourteen days after Respondent’s registration of the challenged domain name. Accordingly, even if Complainant’s assertion were credited, it would not establish that Respondent registered the domain name in bad faith. Again, see Francesca’s Collections, Inc. v. Blackstone Trust, supra:

Complainant contends it has common law rights in the… mark dating back to 1999 when Complainant alleges it first engaged in commerce by using the… trademark. Complainant alleges it has continuously used the mark in commerce since that time, expending considerable economic resources in expanding its brand recognition…. The Panel finds, however, that Complainant has not provided evidence that would warrant a finding of common law rights prior to the registration of the domain name…. Moreover, Complainant has failed to show that Respondent had any awareness of Complainant’s business at the time the domain name was registered.

We therefore conclude that Complainant has failed to prove that Respondent registered the challenged domain name in bad faith as provided in the Policy.

REVERSE DOMAIN NAME HIJACKING

Respondent contends that, in filing and prosecuting its Complaint in this proceeding, Complainant is guilty of “Reverse Domain Name Hijacking,” (“RDNH”) defined in UDRP Rule 1 as: “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”

In order to justify a finding of RDNH, Respondent must establish both that Complainant’s Complaint has no merit and that Complainant has proceeded under the UDRP in bad faith. See, for example, NetDepositVerkaik v. Crownonlinemedia.com, D2001-1502 (WIPO March 19, 2002):

To establish reverse domain name hijacking, Respondent must show knowledge on the part of the Complainant of the Respondent’s right or legitimate interest in the Domain Name and evidence of harassment or similar conduct by the Complainant in the face of such knowledge.

The facts on this question in the record before us show the following:

1. throughout this proceeding Complainant has been represented by experienced legal counsel;

2. Complainant knew, or should have known, when it filed its Complaint, that Respondent had registered its domain name more than three months before Complainant filed an application for registration of the service mark upon which it relies;

3. Complainant has offered no evidence showing that Respondent procured its domain name registration in bad faith anticipation of Complainant’s mark registration;

4. Complainant filed its Complaint only after its efforts to purchase the domain name from Respondent had failed; and

5. Complainant continued to prosecute this proceeding with the filing of an Additional Submission after the salient facts touching on the parties’ relative time priority in rights were laid before the Panel in Respondent’s Response.

On these facts, we find both that Complainant’s Complaint lacks merit, and that the parties’ submissions, taken as a whole, demonstrate that, in filing and prosecuting this proceeding, Complainant has attempted in bad faith to obtain through abuse of the processes of the Policy what it could not obtain to its satisfaction through negotiation. As a consequence, Complainant is guilty of Reverse Domain Name Hijacking as defined in the governing Rules. See, for example, The Guitammer Company v. Herschel Thompson, FA1958918 (Forum September 13, 2021):

The Panel finds that Complainant knew or should have known that it was unable to prove … that … Respondent registered and is using the disputed domain name in bad faith. The most glaring evidence for this conclusion is that the Domain Name was registered … before Complainant’s trademark rights came into existence. It is logically impossible for the registration to have been made with the intent to infringe on trademark rights that did not yet exist. Accordingly, the Panel finds that reverse domain name hijacking has occurred. See Labrada Bodybuilding Nutrition, Inc. v. Glisson, FA 250232 (Forum May 28, 2004) (finding that [a UDRP] complainant engaged in …[RDNH]… where it used “the Policy as a tool to simply wrest the disputed domain name [from Respondent] in spite of its knowledge that … Complainant was not entitled to that name and hence had no colorable claim under the Policy”).

DECISION

Complainant having failed to establish one of the three essential elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, DENIED.

Accordingly, it is Ordered that the <trailbuilt.com> domain name REMAIN WITH Respondent.

Christopher K. Larus, Esq., Panelist Georges Nahitchevansky, Esq., Panelist

Dated: November 25, 2021 Dated: November 25, 2021

Terry F. Peppard, Esq., Panel Chair

Dated: November 24, 2021

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