Complainant is Urban Logic, Inc. of Palo Alto, California, United States of America, represented by the law firm Weil, Gotshal & Manges LLP, United States.
Respondent is Urban Logic, Peter Holland of San Francisco, California, United States, represented by Law Office of Victoria K. Hall, United States.
The disputed domain name <urbanlogic.com> is registered with Network Solutions, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2009. On June 30, 2009, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On June 30, 2009, Network Solutions, LLC transmitted by email to the Center its verification response, disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 6, 2009, providing the registrant and contact information disclosed by the Registrar and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 7, 2009. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 8, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 28, 2009. The Response was filed on July 28, 2009 and received by the Center on July 29, 2009.
The Center appointed Richard G. Lyon as the sole panelist in this matter on August 3, 2009. The Panel finds that it was properly constituted and has jurisdiction over this proceeding. The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Under a literal reading of paragraphs 10(a) and 10(b) of the Supplemental Rules each party's pleading exceeds the Center's prescribed word limit. The amended complaint in this proceeding, exclusive of caption and signature, contains 5,924 words, and the amended response (similarly without caption and signature) 5,414. The Center has advised the Panel that it verifies compliance against the substantive matter pleaded, i.e., the “Factual and Legal Grounds” sections without counting (for example) the required information about addresses, preferred method of service, and the like, and that it considered both pleadings compliant.1
Complainant. Complainant is a non-profit organization chartered in New York, now with its principal place of business in Palo Alto, California, United States. Complainant was chartered in 1992 and maintained its principal office in New York City until at least 2003. Complainant's focus is research, advocacy, and financing urban technology and sustainability solutions for major cities, particularly including information systems. It has operated under its current name since 1994, and established its principal website “www.urbanlogic.org” in October 1998. Subsequently Complainant registered several other domain names that use “urbanlogic” with various top-level and country-specific domains. Complainant registered URBANLOGIC as a trademark with the United States Patent and Trademark Office, applying for registration in July 2002 based upon a claimed first use in commerce of 1994. This application matured to registration in January 2007.
Respondent. Respondent is an individual who resides in San Francisco, California, United States. Respondent registered the disputed domain name in January 1999, at about the same time he registered a fictitious business name and obtained a business license from the State of California and developed a logo for a business to be called Urban Logic. From 1999 through 2004 or 2005 Respondent used the disputed domain name for a consulting business and other personal matters under the name Urban Logic. The disputed domain name was not used for any active business between 2006 and 2009, when Respondent, a Vietnam War veteran, began using the disputed domain name for a blog for Vietnam veterans.
Correspondence Between the Parties. The first piece of correspondence in the record between the parties is an email in December 2002 from Respondent to Complainant's founder and Chief Executive Officer, Bruce Cahan. Its full text reads as follows:
Howdy. My name is Peter Holland, and I run the other Urban Logic. I assume that you have seen our website at www.urbanlogic.com. Recently, I have been getting a few emails here that seem meant for you. Where possible, I try to send a quick note to the person saying that they probably want .org and not .com. I am a lawyer doing web development and political consulting. I don't do too much structural engineering these days. I am guessing those are for you. I just thought you might want to remind people which one you guys are when you are talking to new clients so that you don't' miss any emails. I catch most of them, but who knows what might get bounced back. I have only noticed this recently, and we have both been around for years. I am guessing you had something with your name on it printed the wrong way and people got confused. This is just a friendly heads up. Please let me know if I can be of any further assistance.
Urban Logic (San Francisco)
[Respondent's telephone number]
[Respondent's email address]”
The parties' correspondence continued sporadically through March 2003, usually referring to the parties' respective businesses and forwarding of emails. At one point Complainant inquired if Respondent would consider “abandoning the [disputed] domain name”. Respondent replied promptly, stating that at that time he was not so inclined but if he ever later decided to “set his business aside,” he would notify Complainant of that fact.
Correspondence between the parties resumed six years later, in February 2009. The tone and content of this later correspondence is discussed more fully in Section 6-C below.
To the extent germane to the Panel's decision the parties' contentions are discussed in Section 6 below. This case is noteworthy for no notable omissions by either party from the communications between the parties, which has allowed the Panel to evaluate the record in full context. Each party supports its factual allegations with a declaration on penalty of perjury from an individual (Respondent and Bruce Cahan, Complainant's founder and chief executive officer) with personal knowledge of the matters at issue.
In addition to responding to the Complaint, Respondent requests that the Panel make a finding of Reverse Domain Name Hijacking.
The Panel can resolve this matter based only upon the Complaint. The requirements of paragraph 4(a) of the Policy are conjunctive and Complainant's failure to carry its burden of proof on any of them results in denial of the Complaint. Here the Complaint reveals two fatal deficiencies.
First, Respondent used the disputed domain name for five years for its consulting business under the name Urban Logic. There was no suggestion that this business was unlawful, competitive with Complainant, interfering with Complainant's business in any way, tarnishing Complainant's mark, otherwise illegitimate or mala fide, or even distasteful, or that the business's name was an attempt to take advantage of Complainant. The pre-2003 email correspondence cited in and supplied with the Complaint admits Complainant's contemporaneous knowledge of Respondent's site and no objection from Complainant to it.2 At most Complainant expressed a casual desire to obtain the disputed domain name. Complainant's evidence includes nothing from which the Panel could find any effort by Respondent to advance its business (then or thereafter) by taking a free ride on Complainant's good name. Far from interfering with Complainant's business Respondent volunteered to forward to Complainant emails mistakenly sent to Respondent. Complainant's evidence and pleading establishes that Respondent “as an individual, business, or other organization [had] been commonly known by the domain name, even if [he had] acquired no trademark or service mark rights” in Urban Logic (Policy, paragraph 4(c)(ii)) and “before any notice … of the dispute, [used] … the domain name … in connection with a bona fide offering of goods or services”. (id. paragraph 4(c)(i)). Complainant has thus failed to carry its burden of proof under paragraph 4(a)(ii) of the Policy.
Second, Respondent registered the disputed domain name eight years before Complainant achieved registration of its URBAN LOGIC mark. While Complainant had been in business since 1994, there is precious little in the Complaint to indicate that Respondent had any knowledge of that business, of Complainant, or of Complainant's then-unregistered mark when he registered the disputed domain name in 1999. Other than incorporation and operating generally (and that apparently only in New York) and registration of its own domain name the Complaint pleads and Complainant's CEO avers no facts that if established would allow the Panel to infer Respondent's knowledge of Complainant in 1999. The mark is not particularly distinctive and there is no evidence of its renown or that Respondent in 1999 aped Complainant or its business in any way. Without any such factual underpinning the Panel must ignore conclusionary pleading of “[recognition] in the urban sustainability and resiliency field” and “extensive and prominent [use]” of the mark. Even if these statements be true there is no basis on the present record for finding they were true in January 1999 and no indication on the present record of why anyone in San Francisco would have known about them then. Complainant's evidence provides no basis for a finding that Respondent registered the disputed domain name with knowledge of Complainant. Complainant has thus failed to carry its burden of proof under paragraph 4(a)(iii) of the Policy, which requires proof of both registration and use in bad faith.
“When, as here, the face of the complaint includes facts that demonstrate no likelihood of success, the respondent is entitled to a finding of Reverse Domain Name Hijacking.” 1 Model Management, LLC. v. L.A.S. Inc., Latifa Aadess, 1 Models LLC, WIPO Case No. D2008-1173; accord, Mirabella Beauty Products, LLC v. Mrs. Jello, LLC, WIPO Case No. D2009-0673. Particularly is that true when as here Complainant is represented by counsel. A non-lawyer party might be excused from failing to distinguish registration in bad faith from use in bad faith, or not understanding that both must be proven (and proven with evidence not allegations), but counsel must further certify that “the assertions in this Complaint are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.” Rules, paragraph 3(b)(xiv). The Panel can discern no reasonable basis for Complainant's counsel's certification in this proceeding, as establishing both registration and use in bad faith are required by the plain language of paragraph 4(a)(iii) and ten years of unbroken Policy precedent. See Liquid Nutrition Inc. v. liquidnutrition.com/Vertical Axis Inc., WIPO Case No. D2007-1598 (“Complainant and its counsel have not even sought to explain why the Panel should depart from settled Policy precedent on the determinative issue in this matter.”)
Reverse Domain Name Hijacking (RDNH) is discretionary with the Panel and never mandatory, see Rudy Rojas v. Gary Davis, WIP0 Case No. D2004-1081. There are some facts in this case to justify considering the exercise of that discretion to deny the requested finding. Respondent's stated reasons for it depend upon the Panel's accepting as gospel Respondent's interpretations of both parties' communications and thereby ascribing to Complainant motives that this (or any other) Panel has no way of confirming in so abbreviated a proceeding. As noted, Complainant has not misrepresented the record or taken quotations unfairly out of context, instead fairly presenting the factual background of the parties' dealings.
The Panel has carefully reviewed the recent email correspondence between the parties. The content and tenor of Respondent's recent communications with Complainant and later Complainant's counsel may give some insight into why Complainant commenced this proceeding. Respondent accused Complainant of intentional torts. Respondent (as he himself acknowledges) occasionally used inflammatory language, at one point intimating that he might use the disputed domain name for a pornography site. For example, Respondent might refer to his combat experience and skill with weapons (though never threatening anyone with physical harm). Respondent included his criticism of Complainant in an email message sent to an Internet user who had sought Complainant (though duly advising this man that he should direct his communications to Complainant and providing the proper address). The Panel can imagine that Respondent's mixture of sarcasm, disdain, and military metaphor might well have antagonized Complainant; indeed that might have been Respondent's intent. (Respondent could as he claims have been provoked to intemperance by Complainant's actions.)
The fact remains, however, that Respondent has been put to considerable expense, of his own time and paying outside counsel, to defend this proceeding – a proceeding that the Panel has found to be groundless on the face of the Complaint. Disappointment at Respondent's refusal to transfer the disputed domain name or fear or anger generated by Respondent's fighting words cannot elide these consequences. Complainant's counsel and Complainant's principal (a lawyer himself) should have expected or at least not been surprised by some hyperbole from Respondent, another lawyer, in an exchange in a contentious matter. Lawyers are expected to divorce emotion from their professional judgment. The certification required by paragraph 3(b)(xiv) of the Rules demands no less.
Whatever offense Complainant or its counsel may have taken from Respondent's fighting words simply does not excuse the filing of the Complaint on the facts as set out in the Complaint. The Panel finds that this was a proceeding “brought primarily to harass the domain-name holder” (Rules, paragraph 15(e)) in an attempt at reverse domain name highjacking.
For the foregoing reasons, the Complaint is denied.
Richard G. Lyon
Dated: August 17, 2009
1 See, e.g., Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Jil Sander, SML Limited, and Sandy Inc., WIPO Case No. D2008-1335. The undersigned agrees with the panel in Consitex that strict compliance with the word limit should be required, and that a panel would be justified in disallowing or ignoring non-complainant pleadings. This case well illustrates why: either party could easily have come within the Center's word limitation without compromising its or his contentions.
2 This correspondence is, so far as the Panel can tell, entirely cordial, down to use of first names and friendly closings (“Cheers”).