JoshCo Group, LLC d/b/a Veteran Benefits Guide attempted to usurp VBG.com, an aged three letter domain matching its “VBG” initials.
Registered in 2001, VBG.com is listed for sale with a $750,000 dollar asking price. The Respondent, Dot Corner Web Services, was represented by IP attorney, John Berryhill.
According to the UDRP, the Complainant is in the business of helping Veterans to navigate the United States Veterans Affairs disability claims process. Complainant alleged to have “common law rights to the VBG mark through acquired distinctiveness, goodwill, and renown among consumers.”
Regardless, VBG is an acronym that can have numerous uses. The Respondent pointed out the elements of the UDRP that did not click with the Complainant’s allegations:
- Complainant has failed to establish a registered trademark or any common law rights in the VBG mark.
- The domain name is a valuable non-distinctive three letter acronym which may be identified as standing for many things and as potentially being of use for many purposes.
- Respondent’s registration of the domain name occurred before Complainant came into existence and before it established any rights in the VBG mark or any other mark.
The three member panel at the Forum (NAF) sided with the Respondent, ordering the domain name to remain with them; the panelists also slapped the Complainant with a finding of Reverse Domain Name Hijacking.
JoshCo Group, LLC d/b/a Veteran Benefits Guide v. Domain Administrator / DOT CORNER WEB SERVICES
Claim Number: FA2305002046327
PARTIES
Complainant is JoshCo Group, LLC d/b/a Veteran Benefits Guide (“Complainant”), represented by Timothy Getzoff of Holland & Hart LLP, Colorado, USA. Respondent is Domain Administrator / DOT CORNER WEB SERVICES (“Respondent”), represented by John Berryhill, Ph.d. esq., Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is vbg.com, registered with Godaddy.Com, Llc; GoDaddy.com, LLC.
PANEL
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Petter Rindforth as Panelist, Jeffrey J. Neuman as Panelist, and The Honorable Neil Anthony Brown KC as Panelist and Chair.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on May 26, 2023; Forum received payment on May 26, 2023.
On May 30, 2023, Godaddy.Com, Llc; GoDaddy.com, LLC confirmed by e-mail to Forum that the vbg.com domain name is registered with Godaddy.Com, Llc; GoDaddy.com, LLC and that Respondent is the current registrant of the name. Godaddy.Com, Llc; GoDaddy.com, LLC has verified that Respondent is bound by the Godaddy.Com, Llc; 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 June 1, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 26, 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@vbg.com. Also on June 1, 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.
A timely Response was received and determined to be complete on June 8, 2023.
On June 14, 2023, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, Forum appointed The Honorable Neil Anthony Brown KC (Chair), Petter Rindforth and Jeffrey J. Neuman 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 made the following contentions.
Complainant is in the business of helping Veterans to navigate the United States Veterans Affairs disability claims process. Complainant has common law rights to the VBG mark through acquired distinctiveness, goodwill, and renown among consumers.
Respondent’s vbg.com domain name is identical or confusingly similar to Complainant’s mark as it fully incorporates the mark and adds only the “.com” generic top-level domain (“gTLD”) to form the domain name.
Respondent lacks rights or legitimate interests in the vbg.com domain name. Respondent is not commonly known by the disputed domain name, nor has Respondent been authorized by Complainant to use the VBG mark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent inactively holds the disputed domain name and has offered it for sale.
Respondent registered and uses the vbg.com domain name in bad faith. Respondent has offered to sell the disputed domain name at a price far exceeding its out-of-pocket costs.
Respondent had actual knowledge of Complainant’s VBG mark when it registered the domain name.
Respondent continued to renew the disputed domain name after Respondent had actual knowledge of Complainant’s mark and therefore retrospectively registered and used the domain name in bad faith.
B. Respondent
Respondent made the following contentions.
Respondent buys, sells, and monetizes generic and common domain names.
Complainant has failed to establish a registered trademark or any common law rights in the VBG mark.
The domain name is a valuable non-distinctive three letter acronym which may be identified as standing for many things and as potentially being of use for many purposes.
Respondent’s registration of the domain name occurred before Complainant came into existence and before it established any rights in the VBG mark or any other mark.
Respondent did not register the disputed domain name in bad faith nor use it in bad faith.
Respondent’s offer of the domain name for sale was part of its legitimate business of buying generic domain names to resell at a later date.
Respondent’s offer of a valuable three-letter acronym domain name for sale constitutes a bona fide offering of goods and services.
Complainant initiated an offer to attempt to purchase the disputed domain name prior to the initiation of this proceeding. Respondent did not have actual knowledge of Complainant prior to its registration of the disputed domain name because its registration of the domain name predated Complainant coming into existence.
In all the circumstances the Complaint was abusively maintained despite clear notice that it had to the effect that its claim was frivolous and constitutes Reverse Domain Name Hijacking.
FINDINGS
1. Complainant is a United States company engaged in the provision of services designed to help veterans navigate the Veterans Affairs disability claims process.
2. Complainant has not established that it is the owner of or has any rights in a registered or common law trademark for VBG.
3. Respondent Dot Corner Web Services is a name under which Mr. M. Aamir Siddiqui conducts a business in domain names including the registration and use of the domain name vbg.com.
4. Respondent registered the vbg.com domain name on June 24, 2001. The registration was renewed on or about May 26, 2008.
5. The evidence shows that the disputed domain name is not identical or confusingly similar to a trademark or service mark in which Complainant has rights.
6. The evidence does not show that Respondent has no rights or legitimate interests in the disputed domain name.
7. The evidence does not show that Respondent registered and used the disputed domain name in bad faith.
8. The Panel finds that the complaint was brought in bad faith in an attempt at Reverse Domain Name Hijacking and was brought primarily to harass Respondent as the domain-name holder and makes a declaration pursuant to Rule 15(e) that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
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
Does the Complainant have rights in a trademark?
The first issue that arises in this proceeding is whether the Complainant has established that it has a trademark or service mark to which the disputed domain name is identical or confusingly similar. In that regard, it is clear that the Complainant may establish either that it has a registered trademark or a common law or unregistered trademark, as the Policy makes no distinction for that purpose between the two.
The Complainant does not submit that it has a registered trademark. It remains therefore to consider if it has a common law or unregistered trademark. Whether it does or does not is a matter of fact to be decided by the Panel on the basis of evidence that is submitted. It cannot be determined on the basis of a mere assertion. If any authority were needed for that position, it is to be found in paragraph 4(a) of the Policy, which provides with respect to the three constituent elements of a complaint under the Policy, that “the complainant must prove that each of these three elements are present.” That can only mean proved by evidence.
The Complainant seems to accept that this obligation falls on it to satisfy, as it submits in the Complaint that it has “strong common-law trademark rights” in VBG. Moreover, it claims that it has had those rights “since at least 2019.”
Neither of those propositions has been proved and the Complainant’s arguments to show that the trademark has been established and is “strong” are not evidence but are really only a series of assertions which are totally inadequate. Moreover, the Complainant’s advisers should have appreciated this before the Complaint was filed.
The evidence relied on by the Complainant to prove the above propositions opens with an invitation to the Panel to visit its website at www.vetbenefitsguide.com as it is said that it will then be seen that Complainant markets itself and its services using the term VBG and that this has been done consistently and regularly. It may be noted here that the Complainant’s submission is that it is only the term VBG by which it says that it markets itself, and not Veteran Benefits Guide, although its own name asserts that it is actually doing business as Veteran Benefits Guide, not as VBG.
The Panel has taken up the invitation to inspect the Complainant’s website. However, having done so, the Panel’s conclusion is that the Complainant’s website does not show that the Complainant markets itself in any real or substantial sense using the term VBG and certainly not that it has done so consistently or regularly. In fact, if it has done so at all, which is itself very doubtful, it has been done only very recently.
In particular, the Panel’s study of the website shows that it is incorrect to assert, as the Complainant does, that it has used the term VBG as its trademark “since at least 2019.”
For example, the website as it is today opens with the statement that “VBG has guided tens of thousands of Veterans….”. It then states that “VBG was founded …” and that the Complainant “created VBG…”. It then uses the expression Veteran Benefits Guide, but with different and bold coloring for the letters “V”, “B” and “G” in screenshots taken from the website so as to highlight that the first 3 letters of Veteran Benefits Guide are VBG. It then twice describes itself as VBG as in sentences such as “VBG provides guidance to U.S Military Veterans..” and “VBG is not affiliated with the Department of Veterans Affairs…”. Thus, the intent of the website as it stands today is clearly to emphasize the use of the acronym VBG which Complainant claims as its trademark. Indeed, the Complainant submits that the screenshots in the Complaint showing the use of the acronym VBG are included to show that the Complainant markets itself as VBG “consistently and regularly”.
However, it appears from the Wayback Machine at www.archive.org that the above uses of the VBG acronym and the emphasis on the letters “V”,”B” and “G” have been very recent indeed and may fairly be described as a recent invention. In particular, they certainly cannot be said to have been used by the Complainant to market itself as VBG “consistently and regularly”, or “since at least 2019” giving rise to considerable doubt whether the Complainant has common law rights to the VBG acronym today, or whether it has ever had such rights. That doubt is generated by the following chronology.
The Complaint in this matter was filed on May 26, 2023 and the Amended Complaint was filed on May 31, 2023. Immediately prior to those filings, the Complainant’s website, as recently as at March 7, 2023, did not contain the specific references to VBG set out above, which seem to have been created at the time this proceeding was commenced, virtually on its eve and probably because the Complaint was about to be filed. Thus, on March 7, 2023 the website did not state that VBG was guiding veterans or that that was its name or brand and nor did the website use different coloring for some letters to highlight the letters VBG. Moreover, the purported extracts from the website included in the Complaint, using the designation VBG, were not part of the website even as recently as March 7, 2023 and have clearly been added since then.
This raises a very serious question as to the veracity of the Complainant’s assertion that it has used the acronym VBG as its trademark “since at least 2019.” Even on its own evidence, that cannot be so.
Moreover, including such a statement in both of the Complaint and the Amended Complaint, putting it before the Panel as evidence and certifying that its submissions are “complete and accurate” when they clearly are not and when they must have been known to be neither complete nor accurate, raises an equally serious question as to what credence the Panel should give to the entire case of the Complainant.
In particular, the website as it is today includes a prominent section headed VBG Newsroom, described in the following words: “Read the latest press coverage, company announcements, and more”. It is clear that this section has been included to try to show the Complainant’s public recognition as VBG and alleged use of the VBG acronym and hence to strengthen its case for VBG being seen as its common law trademark. However, it was not part of the Complainant’s website as recently as March 7, 2023 and has clearly been added to bolster the Complainant’s case for a common law trademark in VBG.
In general, the Panel’s assessment of this evidence as a whole is that it does not show that Complainant has used VBG to market itself either consistently or regularly or at all.
The Complainant also relies on other material to show its common law trademark, namely a press release and various social media comments. There is no doubt that these sources use the letters VBG and the Panel has taken them all into account. But any fair-minded observer would have to acknowledge that they are sparse in number, are virtually all used merely as an abbreviation and are often used in tandem with the full name of the organization, Veteran Benefits Guide, and most importantly for present purposes, they are not being used to identify Complainant as the provider of specific goods and services. The Panel has to be satisfied that the material identifies Complainant as the source of the goods and services said to be provided by Complainant, but it is unable to reach that conclusion on the evidence that has been provided.
Accordingly, in the opinion of the Panel, the Complainant has not established by evidence that it has a common law trademark for VBG based on the use it has made of that expression.
The Complainant then puts an alternative or additional argument, namely that its rights to VBG also come from its rights in VETERAN BENEFITS GUIDE. That is said to be so because VBG is “tied” to the “reputable VETERANS (sic) BENEFITS GUIDE company” and that this has increased the profile of the alleged VBG trademark.
The Panel is at a loss to understand what this submission means. The Panel is not aware of any company in this proceeding with the name VETERANS (sic) BENEFITS GUIDE or VETERAN BENFITS (sic) GUIDE, another name the Complainant relies on. Nor can it be said that the existence or use of such a company name could affect the meaning or significance of the expression VBG which is the only trademark that the Complainant has sought to establish. In particular, the Complainant has never contended that it has a common law trademark in VETERAN BENEFITS GUIDE and such a trademark would be irrelevant in this proceeding as it is not identical or confusingly similar to the disputed domain name. In any event, no evidentiary case has been presented as to show such a trademark.
Indeed, there must be considerable doubt whether the Complainant itself has a clear understanding of the trademark for which it is contending. The Panel notes the curious misspellings of VETERAN BENEFITS GUIDE, the Complainant’s assertion in the Complaint and then repeated in the Amended Complaint that its trademark is in fact SPECTRUM, that it has “trademark rights in the VBG and VETERAN BENEFITS GUIDE marks”(sic) and that it is relying on what are said to be “VBG marks” (sic).These are presumably typographical errors, but they are used in the Complaint, repeated in the Amended Complaint and in submissions that are certified in both the Complaint and the Amended Complaint to be “complete and correct.” The Panel has been able only to proceed to reaching its conclusions on the basis that the Complainant has made no real attempt to prove a trademark other than for VBG, and on that contention it has not been able to succeed for lack of evidence.
Accordingly, the Panel finds that the Complainant has not shown by persuasive evidence that it has or has ever had common law or unregistered trademark rights in VBG or in any mark that is relevant to this proceeding.
Is the domain name identical to a mark in which Complainant has rights?
The next question that arises is whether the dispute domain name is identical or confusingly similar to a relevant trademark.
As no registered or unregistered trademark has been shown, it is clearly impossible to show that the disputed domain name is either identical to or confusingly similar to any such trademark.
Complainant accordingly cannot succeed on this element and, hence, cannot succeed in this proceeding.
The other issues
It is therefore not strictly necessary to deal with the remaining two issues, namely any right or legitimate interest that Respondent might have in the domain name and whether it registered and used the domain name in bad faith. But as the issue of Reverse Domain Name Hijacking may become relevant, it is necessary to put on the record the Panel’s findings on those two remaining elements.
Rights or Legitimate Interests
The Complainant submits that the Respondent does not have a right or legitimate interest in the disputed domain name.
In that regard, it is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). If a prima facie case is made out, the burden then shifts to Respondent to show that it does have rights or legitimate interests in the domain name. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Having regard to that basic principle, the Panel will therefore consider whether the Complainant has made out a prima facie case that the Respondent does not have a right or legitimate interest in the domain name.
The Panel finds that the Complainant has not made out the prima facie case it is required to show.
Moreover, now that the Respondent’s Response has been filed with supporting evidence, the Panel also finds that even if the Complainant had made out such a prima facie case, the Respondent has rebutted the case and has shown that it has a right and legitimate interest in the domain name and has had such a right and legitimate interest since it registered the domain name.
The reasons why the Panel has reached those conclusions are as follows.
The Complainant has advanced three grounds which it says show that the Respondent has no right or legitimate interest in the domain name.
The first ground appears to be that the Respondent is not commonly known by the domain name. As a statement of fact, that seems to be true enough and the Respondent has never claimed that he is commonly known as VBG. But it is not a pre-requisite for owning a domain name or having a right to a domain name that it reflects the owner’s name. Indeed, most domain names that are validly held do not reflect the owner’s name and there is no reason why they should. Thus, a registrant may legitimately hold a domain name even if, as is usually the case, it has no echoes of the registrant’s name at all. Accordingly, this first ground relied on does not show even a prima facie case that Respondent has no right to register the domain name or that the Respondent has no legitimate interest in it. That is because a respondent in the position of the present respondent may be able to show that there are other grounds that give it a right or legitimate interest in the domain name. The Respondent has accepted that challenge and has shown in the opinion of the Panel that in fact it does have other grounds giving it a right and a legitimate interest in the domain name.
The second ground relied on by the Complainant is that the Respondent is not holding the domain name to support a website, but is holding it for resale, with which the Respondent would agree, as he is a buyer and seller of domain names and that is the reason why he acquired the domain name and why he continues to hold it. But it is also a persuasive reason by itself why the Respondent has a right and legitimate interest in the domain name.
It is true that UDRP decisions, such as the four decisions the Complainant cites, regularly cancel or transfer domain names where a trademark owner’s prior trademark is embedded in the disputed domain name and the domain name is identical or confusingly similar to the trademark.
But that is not the present case. In the present case there is no registered or common law trademark that has been made out and embedded in the domain name. In the present case, the Respondent registered the domain name years before the Complainant came into existence and when there was accordingly no trademark to which the domain name could conceivably be either identical or confusingly similar.
Moreover, it has been established many times and is now not under serious challenge, that a domain name dealer is entitled to ply his trade so long as he is not acting illegally or abusing another party’s trademark. Accordingly, on the facts of the present case, that ground will not deny the Respondent the right to register or hold the domain name.
The third ground relied on is that the Respondent has not obtained consent to the use of “the VETERAN BENFITS (sic) GUIDE or VBG marks.” The short answer to this ground is again that no such trademark, either registered or at common law has been made out; the domain name was registered long before the Complainant came into existence and no such consent as alleged was either necessary or possible.
The Complainant has thus not shown, even on a low threshold test, a prima facie case that Respondent has no right to the domain name or legitimate interest in it.
Moreover, now that the Respondent’s Response has been filed with supporting evidence, the Panel also finds that even if the Complainant had made out such a prima facie case, the Respondent has rebutted that case, as it has shown that it has a right and legitimate interest in the domain name and has had such a right and legitimate interest since it registered the domain name.
The Panel has reached that conclusion substantially for the reasons advanced by the Respondent and which are as follows.
First, as the evidence shows, the Respondent acquired the domain name well before the Complainant came into existence and at a time when the Respondent had every right to register it. Thus, unless he is a clairvoyant, there is no way that he could have known that Complainant would or might come into existence. That situation is entirely credible and consistent with the legitimacy of acquiring and retaining the domain name.
Secondly, the Respondent on the evidence registered the domain name as part of a legitimate business of buying and selling domain names that he has conducted since the year 2010.That again is consistent with legitimacy of the Respondent’s having acquired the domain name. Indeed, the notion that running a business registering and selling domain names has been recognized by prior UDRP panels as capable of establishing rights or legitimate interests under the Policy, provided the domain name was not registered to profit from and exploit a complainant’s trademark. See, Limble Soltions, Inc. v. Domain Admin, Alter.com, Inc., D2022-4900 (WIPO March 8, 2023) See also WIPO Overview 3.0, and relevant decisions collected under Sections 2.1 and 2.10. Section 2.1 of the WIPO Overview 3.0 provides, “panels have accepted that aggregating and holding domain names (usually for resale) consisting of acronyms, dictionary words, or common phrases can be bona fide and is not per se illegitimate under the UDRP”. Section 2.10 of the WIPO Overview 3.0 clarifies that such a business in domain names can include common words and phrases so long as the intended use is not to trade off third-party trademark rights. In view of the nature of the present domain name, that statement of the law and practice is particularly appropriate.
Thirdly, the domain name itself is a common acronym, the generic nature of which lends itself to being available and of use for any number of legitimate purposes which may well have been inchoate at the time of acquisition but which nevertheless would manifest themselves the longer the Respondent retained the domain name. Indeed, the domain name is so common and generic that it would or might invoke some indeterminate association that would conceivably arise in the future. Indeed, such acronyms are so popular in business these days that, sooner or later it would almost certainly become of value to many entities in business. It is entirely legitimate to acquire a domain name that would be of value on that basis, a legitimacy that has long been recognized in countless cases. It is therefore, as the Respondent submits, “beyond obvious that the Respondent was not aware of the Complainant’s mark at the time the domain was registered for the simple reason that neither the Complainant nor its alleged mark existed at the time”.
That again is consistent with the legitimacy of the acquisition and retention of the domain name for resale.
Fourthly, none of the known facts surrounding the domain name are consistent with it being illegitimate for the Respondent to acquire and retain it or would suggest that there was any impropriety or untoward conduct in his so doing.
The Panel therefore finds that the Respondent had the right to acquire the domain name and has had and still has a legitimate interest in it.
The Complainant therefore fails on this element.
Registration and Use in Bad Faith
The Panel does not accept any of the reasons advanced by the Complainant in support of its argument that the Respondent registered and used the domain name in bad faith. Indeed, the contrary is clearly the case, and the Panel finds that the Respondent did not register and use the domain name in bad faith and in fact did neither.
In support of its case, the Complainant argues first that a totality of circumstances that shows a lack of legitimacy in the registration and use of a domain name may show that the Respondent also registered and used the domain name in bad faith. That is true, but in the present case the evidence shows unequivocally that the Respondent had every right to acquire and retain the domain name. Consequently, the same evidence shows that the Respondent did not acquire or use the domain name in bad faith but in good faith. Such a conclusion is well supported by prior UDRP decisions. See Record Connect, Inc. v. Chung Kit Lam / La-Fame Corporation, FA 1693876 (Forum Nov. 3, 2016) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Sheet Labels, Inc. v. Harnett, Andy, FA 1701423 (Forum Jan. 4, 2017) (finding that because the respondent had rights and legitimate interests in the disputed domain name, its registration of the name was not in bad faith).
The Complainant then argues that the circumstances in the present case show bad faith registration and use based on the actual knowledge by the Respondent of “the VETERAN BENEFITS GUIDE and/or VBG mark”. That proposition need only be stated to see how baseless it is. The Complainant has never argued that it has a trademark for VETERAN BENEFITS GUIDE. Its argument, until now, has always been that the Complainant has and had a trademark in VBG. If it now argues that it also had a trademark for VETERAN BENEFITS GUIDE, the Panel finds that no such trademark, registered or at common law, has been made out and the Panel expressly rejects it. Even if it had been made out, the domain name on its plain terms could not conceivably be identical or confusingly similar to the alleged trademark and could not be even relevant to this proceeding. The Complainant’s case, in clear terms, has always been that it had a common law trademark in VBG, an argument that was and is rejected as there is no evidentiary basis for it. When the Respondent registered the domain name, the Complainant did not even exist and was not to come into existence for several years. It is therefore illogical to suggest that the Respondent could have had any actual or even constructive knowledge of any such trademark. The Complainant’s argument is therefore rejected.
The Complainant then argues that the Respondent has tried to sell the domain name to the Complainant for various “exorbitant six figure sums” and that it actually acquired and renewed the domain name with the intention of selling it to the Complainant, “the lawful trademark owner”. There is no evidence or logic to support that submission and the Panel rejects it. On the totality of the evidence, the Complainant did not exist at the time the Respondent bought the domain name and it could not therefore have formed the intention that is now attributed to it.
Such an analysis is well established by many UDRP decisions to the effect that if a Respondent’s registration of the vbg.com domain name predates Complainant’s first claimed rights in the VBG mark, a Complainant generally cannot prove registration in bad faith per Policy ¶ 4(a)(iii), as the Policy requires a showing of bad faith registration and use. See Platterz v. Andrew Melcher, FA 1729887 (Forum Jun. 19, 2017) (“Whatever the merits of Complainant’s arguments that Respondent is using the Domain Name in bad faith, those arguments are irrelevant, as a complainant must prove both bad faith registration and bad faith use in order to prevail.”); 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.”).
Moreover, the evidence does not suggest that any such intention was or could have been formed. The reality is that the Respondent bought the domain name as part of its stock in trade and that it was thereafter available for purchase by the Respondent or anyone else at any price that could be agreed. There is not a skerric of bad faith revealed by an analysis of that process.
The Complainant then surprisingly resorted to its worst possible argument, based on the totally discredited argument espoused in the decision in Eastman Sporto Group LLCF v. Jim and Kenny, WIPO Case No. D2009-1688. That argument is that the registration of the domain name, which the Complainant seems to acknowledge was in “good faith”, was renewed and transformed in a retrospective bad faith registration. To so decide would be in plain contradiction of what a complainant is obliged to prove under the Policy, namely bad faith registration and use. In any event, there is no evidence to support such a conclusion or for the baseless allegation that to try to effect a sale in such circumstances is some form of a “ransom demand”.
The Panel therefore does not accede to any of the grounds on which the Complainant contends that the Respondent registered and used the domain name in bad faith.
The case presented by the Respondent also shows that it registered and has used the domain name in good faith. As has already been noted, and it is pivotal to this decision, the Respondent, as it was put in the decision in Patrick Universal Export Pty Ltd, WIPO Case, D2016-0653, cited by the Respondent,
‘There is no possibility that the Domain Name was registered in bad faith as the Complainant was not in existence at the time and the Respondent could not therefore have contemplated the Complainant’s then non-existent right when he registered the Domain Name.”
Nor, on the facts of the present case could the Respondent ever have contemplated such conduct as no such trademark has ever been established.
Moreover, as the Respondent has also shown, “The Complainant does not allege the domain name ever to have been used for any purpose having anything to do with the Complainant.”
Next, the Respondent has also shown that it has offered for sale an obviously valuable three letter name with many potential uses and without targeting any trademark of the Complainant. In those circumstances, as was noted in TNP Consultants v. Jan Novak, WIPO Case D2017-0669:
“The circumstances of the case suggest that the Respondent , which appears to trade mainly domain names with generic meanings, registered the disputed domain name with numerous potential meanings without targeting the Complainant and its trademarks.”
Indeed, far from the Respondent targeting the Complainant, the Respondent has shown by a detailed examination of the chronology of the dealings between the parties, that in all probability it was the Complainant who initiated the offer to buy the domain name. That being so, it could not be said that the Respondent registered the domain name for the primary purpose of selling it to the Complainant within the meaning of paragraph 4(b)(i) of the Policy. Moreover, it is concerning that the Complainant did not reveal its own initial offer to buy the domain name, despite certifying that its submissions were “complete and accurate”.
Put in other words, Respondent argues and has shown that Complainant initiated the sale negotiation of the domain name. When a complainant indicates a willingness to engage in a market transaction for a disputed domain name, it does not violate the policy for a respondent to offer to sell for a market price. See Puky GmbH v. Agnello, D2001-1345 (WIPO Jan. 3, 2002) (finding insufficient evidence to hold that the domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(i) where the complainant initiated contact with the respondent and the respondent responded with an offer to sell its domain name registration); likewise, Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Forum Feb. 21, 2002) (finding that “when a Complainant indicates a willingness to engage in a market transaction for the name, it does not violate the policy for a [the respondent] to offer to sell for a market price, rather than out-of-pocket expenses”). As already noted, Respondent has produced evidence that Complainant initiated the negotiation for the sale of the disputed domain name. See Resp. Ex. I. The Panel agrees with the Respondent and therefore finds that Respondent did not register and use the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(i).
Respondent argues that it owned the vbg.com domain name years before Complainant began its use of the VBG mark. See Resp. Ex. B. Registration of a disputed domain name prior to a trademark registration may well show respondent acted in good faith. See Reid v. Chao, FA 154587 (Forum May 29, 2003) (finding that the respondent could not have registered the disputed domain name in bad faith where its registration came months before the complainant filed its trademark application and no evidence of common-law rights in the mark were submitted to the panel); see also Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Forum May 16, 2007) (determining the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark). Thus, the Panel finds a lack of evidence of bad faith registration and use.
Respondent also argues that the vbg.com domain name is generic and that there is no deliberate attempt to confuse internet users by attempting to divert them away from a claimed trademark. Where a disputed domain name is generic, past panels have found no deliberate attempt by a respondent to confuse or divert users, unless of course there is evidence to that effect of which there is none in the present case. See Canned Foods, Inc. v. Ult. Search Inc., FA 96320 (Forum Feb. 13, 2001) (holding that, where the domain name is comprised of a generic term, it is difficult to conclude that there was a deliberate attempt to confuse on behalf of the respondent, and stating that “[i]t is precisely because generic words are incapable of distinguishing one provider from another that trademark protection is denied them”). Here, Respondent submits that the vbg.com domain name is a generic acronym , which it clearly is and there is no evidence at all that it has sought to use the domain name in an improper way. See Resp. Ex. C; see also Resp. Ex. H. The Panel agrees and finds therefore in the absence of any other evidence that Respondent did not register or use the disputed domain name in bad faith.
The Complainant accordingly cannot succeed on this element and, hence, cannot succeed in this proceeding.
REVERSE DOMAIN NAME HIJACKING
The Respondent submits that the Complaint was abusively maintained despite clear notice that the Complainant had to the effect that its claim was frivolous.
Rule 15 (c) of the Rules provides that if 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. Reverse Domain Name Hijacking is defined in the Rules as using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.
The Panel finds both that the complaint was brought in an attempt at Reverse Domain Name Hijacking as defined and that it was brought primarily to harass the domain-name holder. That is so for the following reasons:
(a) the proceeding was brought and pursued when there was no reasonable prospect of it succeeding, as it was always clear that the Complainant could not prove any of the 3 elements that it was required to prove;
(b) this must have been apparent to the Complainant’s advisers;
(c) to proceed with such a complaint is harassment and in bad faith;
(d) the Respondent was entitled to know precisely the trademark that the Complainant relied on, yet it asserted a conflicting and confusing series of alleged trademarks which must have been confusing to the Respondent and was certainly confusing to the Panel. Those alleged trademarks were misspelt several times, showing an apparent indifference to their accuracy. Nor is this a de minimis issue, as the Respondent was entitled to know, in a jurisdiction where the delineation of the trademark is pivotal, exactly what was being alleged against it;
(e) on several occasions the Complainant accused the Respondent of bad faith, a serious allegation for which there was never any evidence;
(f) in defending what was essentially a baseless case, the Respondent must have been put to considerable time, trouble and cost in a jurisdiction where there is no provision for legal costs to be awarded to a successful respondent, which the Panel would have ordered, had it had power to do so;
(g) the Complainant’s advisers furnished on two occasions, in the Complaint and the Amended Complaint, certificates that the material it was submitting was “complete and accurate”, when the initial proposal by the Complainant to buy the domain name was not disclosed and hence the Complaint and the Amended Complaint were neither complete nor accurate.
The Panel therefore declares that within the meaning of paragraph 15(e) of the Rules the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
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 vbg.com domain name REMAIN WITH Respondent.
Petter Rindforth, Panelist
Jeffrey J. Neuman, Panelist
The Honorable Neil Anthony Brown KC, Panelist and Chair of the Panel
Dated: June 22, 2023
