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Yonder.com : Two housing companies fought over this #domain in a #UDRP

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The domain Yonder.com was registered in 1995, and in 2019 it was acquired by Yonder Global, Inc. The company is in the business of international online bookings for temporary lodging and agricultural tourism.

Meanwhile, North Carolina based Yonder, Inc., offers vacation home rental services since September 13, 2011 and in 2013 they acquired the matching registered mark, YONDER. They operate from YonderNC.com.

The domain transfer was denied.

The ensuing UDRP resulted in a finding favoring the respondent. Full details on this decision follow:

Yonder, Inc. v. Yonder Global, Inc. / Freyr Thor

Claim Number: FA1911001871167

PARTIES

Complainant is Yonder, Inc. (“Complainant”), represented by Rebecca E. Crandall of McGuire Wood & Bissette, United States. Respondent is Yonder Global, Inc. / Freyr Thor (“Respondent”), represented by David Martinez of Robins Kaplan LLP, United States.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <yonder.com>, registered with MarkMonitor Inc..

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.

The Honourable Neil Anthony Brown QC (Chair), Steven M. Levy Esq., and Honorable Bruce E. Meyerson (Ret.) as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on November 13, 2019; the Forum received payment on November 13, 2019.

On November 18, 2019, MarkMonitor Inc. confirmed by e-mail to the Forum that the <yonder.com> domain name is registered with MarkMonitor Inc. and that Respondent is the current registrant of the name. MarkMonitor Inc. has verified that Respondent is bound by the MarkMonitor 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 November 25, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 20, 2019 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@yonder.com. Also on November 25, 2019, 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 December 20, 2019.

On December 31, 2019, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC (Chair), Steven M. Levy Esq., and Honorable Bruce E. Meyerson (Ret.), as Panelists.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant made the following contentions.

1. Complainant, Yonder, Inc., is a North Carolina corporation offering, by itself and through its predecessor in interest, vacation home rental services which it has done since September 13, 2011 or thereabouts.

2. Complainant has rights in the YONDER mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,379,679, registered Aug. 6, 2013).

3. Complainant is also the registered owner of the domain name <yondernc.com> and conducts its business primarily through the website to which that domain name resolves.

4. The <yonder.com> domain name is identical to Complainant’s mark.

5. Respondent does not have rights or legitimate interests in the <yonder.com> domain name because:

(a) Respondent is not commonly known by the disputed domain name due to its recently acquiring the name;

(b) Complainant has not authorized or permitted Respondent to use Complainant’s mark through the disputed domain name;

(c) Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the domain name in direct competition with Complainant and to cause confusion.

6. Respondent obtained and uses the <yonder.com> domain name in bad faith because it uses the domain name to trade on the goodwill of Complainant and to attract Complainant’s customers for commercial gain. The only reason for Respondent to have acquired the disputed domain name and begun using it to compete with Complainant was to divert customers away from Complainant’s website and to Respondent’s website.

B. Respondent

Respondent made the following contentions.

1. Respondent, Yonder Global, Inc., is in the business of international online bookings for temporary lodging and agricultural tourism.

2. Complainant may lack exclusive rights in the YONDER mark due to provisional USPTO findings of a likelihood of confusion between Respondent’s own applied-for mark and a third-party mark which predates Complainant’s rights to its claimed mark.

3. Respondent has rights and legitimate interests in the <yonder.com> domain name because Respondent made demonstrable preparations in connection with the domain name being used for a bona fide offering of services prior to Complainant’s filing of the complaint.

4. While Respondent offers its services internationally, Complainant only offers its lodging services in two geographic locations exclusively in North Carolina. Out of an abundance of caution, Respondent is not now conducting and does not intend to conduct business in North Carolina.

5. Additionally, Respondent also has rights or legitimate interests in the disputed domain name because it consists of a common dictionary term connected to the services provided by Respondent as evidenced by frequent third-party use amongst companies involved in the travel and lodging industry.

6. Finally, the different branding and content between Respondent’s and Complainant’s websites as well as the Parties’ differing business models establish evidence of legitimate interests in the disputed domain name.

7. Respondent did not acquire or use the <yonder.com> domain name in bad faith. Respondent did not target Complainant’s mark in an attempt to extract profit from its alleged popularity as seen by the lack of confusion and diversion.

FINDINGS

1. Complainant is a United States company that provides vacation home rental services in two areas of North Carolina.

2. Respondent is a United States company that provides online bookings for temporary lodgings and agricultural tourism.

3. Complainant has established its trademark rights rights in the YONDER mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,379,679, registered Aug. 6, 2013).

4. Complainant registered the <yondernc.com> domain name on or about July 25, 2011, and has used it in connection with its vacation home rental services since on or about September 13, 2011.

5. Respondent was incorporated on or about September 21, 2018 as Thirty-Three Horizon Way and as of April 3, 2019 as Yonder Global, Inc

6. Respondent acquired the disputed domain name from its previous owner on April 16, 2019 and has used it in connection with its online booking service for temporary lodgings and agricultural tourism since then.

7. The evidence shows that the disputed domain name is identical to the YONDER mark.

8. The evidence shows that Respondent has rights or legitimate interests in the disputed domain name.

9. The evidence shows that Respondent did not register or use the disputed domain name in bad faith.

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

The first issue to arise is whether the Complainant has a trademark or service mark on which it may rely. Complainant has rights in the YONDER mark based upon registration of the mark with the USPTO (Reg. No. 4,379,679, registered Aug. 6, 2013). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority). Since Complainant has provided evidence of the registration, the Panel finds that Complainant has rights in the YONDER mark under Policy ¶ 4(a)(i).

The next issue is whether the disputed domain name is identical or confusingly similar to the YONDER mark. Complainant argues that Respondent’s <yonder.com> domain name is identical to Complainant’s mark. While not argued by Complainant, the Panel notes that the disputed domain name also adds the “.com” generic top-level domain (“gTLD”) to the trademark to make up the domain name. The addition of a gTLD is irrelevant in determining whether a mark and a domain name that consists entirely of that mark are identical. See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). In the present case, the disputed domain name wholly incorporates the YONDER mark, merely adding the “.com” gTLD. Therefore, the Panel finds that the <yonder.com> domain name is identical to the mark under Policy ¶ 4(a)(i).

The Complainant has thus made out the first of the three elements that it must establish.

Rights or Legitimate Interests and Bad Faith

The Complainant’s argument that the Respondent has no rights or legitimate interests in the <yonder.com> domain name is essentially that it owns the YONDER trademark which the Respondent is using in its domain name to engage in direct competition with the Complainant and to trade on the goodwill of the Complainant. It subsequently argues that this conduct also amounts to bad faith on the part of the Respondent. In essence, the Respondent replies to those arguments by submitting several grounds on which it contends that its conduct has been legitimate and in particular that it has not engaged in bad faith when it registered and used the domain name. Those contentions require the Panel to reach conclusions on the motivations and intentions of the Respondent when it registered the domain name and during the subsequent period when it has used it. There is therefore inevitable overlap between the issues of rights and legitimate interests on the one hand and bad faith on the other. Accordingly, the Panel will deal with both of these areas of contention in this section of the Policy but will specifically refer to the provisions in the Policy on rights and legitimate interests and bad faith respectively when it is necessary to do so.

Use or demonstrable preparations to use the domain name for a bona fide offering of goods and services.

The first of the matters relied on by the Respondent is that the Policy itself gives it a right or legitimate interest in the domain name. That is said to be so by

reason of paragraph 4(c)(i) of the Policy which provides that the following “shall

demonstrate” such a right or interest, i.e.:

“…(i) before any notice to you (the Respondent) 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;”

Respondent thus argues that it has rights and legitimate interests in the <yonder.com> domain name because it made preparations in connection with a bona fide offering of services prior to Complainant’s filing of the complaint and that it can demonstrate what those preparations were. In other words, the Respondent says that it had the right to register the domain name because it intended to use it for a legitimate business that amounts to a bona fide offering of goods or services and that it has a legitimate interest in the domain name for the same reason. This is not a novel proposition and there are now many prior UDRP decisions that have adopted that approach and found that the respondent in question had such a right and interest for that reason. The obstacle that a party in the situation of the present Respondent must overcome is to establish that there is evidence bringing itself within the provisions of paragraph 4(c)(i) and that it used the domain name for a bona fide offering of goods or services or could show that it was preparing to do so. The Policy makes it clear that use or demonstrable preparations to use a domain name for a bona fide offering of goods or services gives rise to a right or legitimate interest in the domain name. See Downstream Exch. Co. v. Downstream Energy, FA 96304 (Forum Feb. 2, 2001) (finding that the respondent established rights in the <downstreamexchange.com> domain name pursuant to Policy ¶ 4(c)(i) by obtaining “the domain name in contemplation of creating and operating an Internet auction exchange” and showing demonstrable preparations for such use).

Respondent then argues that it can bring itself within that principle because it acquired the disputed domain name in preparation for setting up a business for the legitimate offering of travel bookings and not for the purpose of trading upon Complainant’s reputation, as is alleged against it. In particular, the Respondent submits that it has made demonstrable preparations to use the domain name for a bona fide offering of goods and services, which it describes as the services of “an international online booking service specifically dedicated to environmentally sustainable agro/eco-tourism…”

If the Respondent can make out this ground on the facts, it will have established a complete defense under paragraph 4(a)(ii) of the Policy. But it will also have established a defense under paragraph 4(a)(iii), as it is generally accepted that if the Respondent has rights or legitimate interests in a domain name pursuant to Policy ¶ 4(a)(ii), a Panel may also find that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). 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).

It is therefore a matter of considerable importance for the Panel to decide on the

evidence whether the Respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or service and that it did so before it received notice of the dispute.

The use of and the demonstrable preparations relied on by the Respondent are, firstly, that it has actually used the domain name for a website promoting its business and that it also currently uses the domain name and the website for that purpose. If made out, that activity will qualify as a use without also having to show “demonstrable preparations.”

The Respondent goes further and states that it has operated the website since July 9, 2019. If made out, that activity would also show a use of the domain name and additional demonstrable preparations.

The Panel has examined the website as it is today and finds that it is a website that promotes a going concern that utilizes the services of “ hosts” and “ guests,” the former being people who join up and offer their premises for use by guests while they enjoy the environment. The Panel notes particularly that the website entreats potential customers to contact the Respondent by means of an email address and a telephone number, suggesting that the business is currently offering its Services.

The Panel has also examined the website via the Wayback Machine at www.archive.org to see if there is any evidence that the Respondent has operated the website since July 9, 2019 as the Respondent contended. The Panel finds that there was one screen capture made on October 25, 2019 and that, while it is not as lavish as the later website on view today, it is substantially the same, as it invites new hosts and urges new guests to join in opportunities to commune with nature and observe and take part in activities such as “participating in Fall harvests, to horseback rides to sunset hikes and everything in between…” It suggests in the absence of evidence to the contrary, of which there is none, that the Respondent’s submission that the website has been operational in the promotion of its business “since July 9, 2019” is correct, as on that date it was using the website for disseminating substantially the same promotion as it subsequently disseminated and which it does at the present time. Moreover, the services offered on the website come easily within the generally understood meaning of the expression “a bona fide offering of goods or services.”

Accordingly, the Panel finds that establishing the website with the content so described and using it to further the Respondent’s business is both a use and demonstrable preparations to use the domain name for a bona fide offering of goods and services.

As to when the Respondent had notice of the dispute, there is no evidence of when this occurred and in particular no evidence of if and when a cease and desist letter or any other communication of the fact that there was a dispute was sent to the Respondent. The Complaint itself, before amendment, is dated 13 November 2019; the Forum has advised the Panel that the Complaint was submitted to it on November 13, 2019 and the opening proposition in the Response is that the Respondent received the Written Notice of Complaint and Commencement of Administrative Proceeding on 25 November 2019.

The Respondent’s own evidence is thus that it has used the website based on the domain name to promote its business from July 9, 2019, and the extrinsic evidence shows this to have been so at least by October 25, 2019. There is no evidence to the contrary. Accordingly, the Panel concludes that the Respondent was using the domain name for making a bona fide offering of goods or services before it received notice of the dispute on November 25, 2019 and was making demonstrable preparations for its subsequent and continued use for the same purpose.

The foregoing matters show that the Respondent has a right or legitimate interest in the domain name within the meaning of paragraph 4(c)(i) of the Policy and the Panel so finds.

Other demonstrable preparations

There are three other circumstances that Panel finds, putting them all in context and taking a practical view of what they import, that tend to suggest the Respondent had a right to register the domain name and has a legitimate interest in it or, at the least was making demonstrable preparations to use the domain name for a legitimate purpose. Those other circumstances are as follows:

(a) Respondent was incorporated on September 21, 2018 but changed its name to Yonder Global, Inc. on April 3, 2019. This fact is not of course conclusive, but it tends to suggest that Respondent is genuine when it claims that it had conceived of an international online booking service with an environmental bent, that it took the name Yonder because it summed up its intentions, and that it sought to apply that name as a domain name, website, and company name.

(b) Respondent filed three trademark applications with the USPTO for the mark YONDER on October 11, 2018, covering activities such as providing a website for “eco-lodging,” a mobile app for similar lodgings, and like activities. These applications tend to suggest that the Respondent did in fact have a legitimate long term plan for establishing a business in the environmental tourism field, that it had adopted the name Yonder as encapsulating what it had in mind, and it was only natural that it should then take steps to obtain a domain name that reflected that commitment.

(c) The evidence is that the Respondent paid $253,000 for the domain name, which, despite the high prices for attractive domain names these days, is a substantial sum to pay, especially for a name that was already in very wide use. But more importantly it suggests that no rational party, minded to undermine the Complainant and its business, as is alleged against it, would pay such a sum when it knew the Complainant had only a small business confined to limited parts of North Carolina and that the overlap between the Complainant’s business and the business the Respondent wanted to establish was comparatively small. Such a strategy simply does not make sense. Accordingly, it is reasonable to assume that when the Respondent bought the domain name, it was doing so not to target the Complainant, which would have been of minimal benefit to it, but as part of a genuine plan to start an online booking for temporary lodging and agricultural tourism.

The domain name as a common dictionary word

The Respondent also claims rights or legitimate interests in the disputed domain name because it is a common dictionary term that is highly suggestive of the services provided by Respondent. Sometimes the principle emerging from this situation is put in terms of a word being generic or descriptive. For example, it was said in Walsh Bishop Assocs. v. Honggi, Honggi Kim, FA 907521 (Forum Mar. 6, 2007) that “[A] respondent may have a legitimate interest in a domain name if the domain name is used to profit from the generic value of the word, without intending to take advantage of complainant’s rights in that word.” In the present case, the word “yonder” as used in the domain name may not literally be generic or descriptive, but in the opinion of the Panel it is certainly a common dictionary word and, according to the evidence in the present case, is highly suggestive of travel and invokes the notion of places far away. No doubt this is the reason why, on the evidence, the word has been adopted by many users in travel and related fields. Indeed, it may well be the reason why the Respondent chose the name for its own proposed business in substantially the same field. Considerable leeway is therefore given to domain name registrants who register domain names, provided that they use them within the normal meaning accorded to the words, do not register or use them to trade on another party’s trademark, and provided they do not engage in any other illegitimate conduct.

In the present case, the Panel concludes from the evidence that the Respondent adopted the word “yonder” for its domain name as the word evoked the notion of travel from one place to another, the same notion the Respondent associated with its business.

The Panel also concludes on the evidence that, in registering and using the domain name, the Respondent was not copying or passing itself off as the Complainant, offering to sell the domain name to Complainant, diverting Complainant’s customers, encouraging confusion in the market, selling counterfeit products, engaging in any activities other than legitimate competition, targeting or trading on the Complainant or its trademark, or engaging in any of the sort of behavior in which cybersquatters engage.

Accordingly, the Panel is satisfied that the Respondent acquired a domain name that was suggestive of the type of business it wanted to establish and used it in accordance with its normal meaning and that it did not have regard to the Complainant’s trademark in acquiring or using the domain name.

In summary on the issue of rights and legitimate interests, then, the Panel is of the view that the Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). Even if a prima facie case has been established it has clearly been rebutted. That is so because it is inherently unlikely, in light of the evidence, that the Respondent’s plan was to copy the Complainant which on no realistic test could be regarded as a serious competitor to the potential national and international business the Respondent had commenced to establish. Indeed, as has been noted already, the Complainant must have been a minor player in the Respondent’s deliberations as the Complainant’s, business was confined to a few properties in two areas of North Carolina.

Moreover, the evidence as a whole shows that the Respondent established the type of business described above and that Yonder was a very suitable name for its business. The Complainant has not established any facts to the contrary. See High Adventure Ministries v. JOHN TAYLOE / VOICE OF HOPE, FA 1737678 (Forum Aug. 9, 2017) (holding that a complainant’s failure to meet its burden satisfactorily suggests that the respondent has rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also JJ206, LLC v. Erin Hackney, FA 1629288 (Forum Aug. 25, 2015) (finding that a respondent may defeat a complainant’s established case by showing it has made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services). In any event, the fact that the Respondent has made out its argument for its use and demonstrable preparations to use the domain name for a bona fide offering of goods or services, establishes the case that it has a right or legitimate interest in the domain name.

The Respondent thus succeeds on the issue of its rights and legitimate interests in the domain name.

It also follows from the Panel’s earlier comments that, as the Respondent was motivated by legitimate considerations, it did not register or use the domain name in bad faith and the Panel so holds. See Build-A-Bear Workshop, Inc. v. Pallone, FA 874279 (Forum Mar. 1, 2007) (“A respondent does not register or use a disputed domain name in bad faith if the terms of a complainant’s mark are of common usage and the respondent operates a business that could reasonably be marketed under the disputed domain name”).

The Panel is reinforced in this conclusion by the facts that, on the evidence, there is very limited scope for confusing the Complainant’s business with that of the Respondent because their business models are different, even though there may be some overlap between them from time to time. Moreover, as a matter of fact, there has been little if any actual confusion between the parties caused by the Respondent using the domain name in its business.[i]

In particular, it should not be overlooked that when Complainant registered a domain name to use in its business, it registered the domain name <yondernc.com> and used it for its website. It is fairly clear that by including the letters “nc” in the domain name and by continuing to use that domain name to run its business, Complainant virtually asserted that the business was limited to being a North Carolina business. On its website, Complainant also makes specific reference to the fact that it is a North Carolina business. For example, Respondent’s Exhibit C-4 shows that on its website the Complainant states that “Yonder offers both luxury mountain and coastal vacation rentals throughout Asheville and Wilmington, NC areas.” This consideration makes it even less likely that the Respondent was motivated by bad faith towards the Complainant.

The Complainant has thus not made out the second and third of the three elements that it must establish.

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 <yonder.com> domain name REMAIN WITH Respondent.

The Honourable Neil Anthony Brown QC (Chair),

Steven M. Levy, Esq.

Honorable Bruce E. Meyerson (Ret.)

Panelists

Dated: January 9, 2020

[i] While the Complainant does submit a copy of an email from one of its hosts claiming that the host was solicited to list its property with the Respondent, the Respondent plausibly explains this as a mere coincidence based upon its having sent solicitations to hundreds of property owners. In any event, Respondent has decided to avoid doing business in Complainant’s state of North Carolina.


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