World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Webpass, Inc. v. Paul Breitenbach

Case No. D2010-1796

1. The Parties

The Complainant is Webpass, Inc. of San Francisco, California, United States of America represented by Law Office of Richard J. Greenstone, United States of America.

The Respondent is Paul Breitenbach of Wellington, Ohio, United States of America, represented by Fincham Downs, LLC, United States of America.

2. The Domain Name and Registrar

The disputed domain name <webpass.com> is registered with GoDaddy.com, Inc (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2010. On October 26, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 27, 2010, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 1, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 21, 2010. The Response was filed with the Center on November 19, 2010.

The Center appointed Richard Hill as the sole panelist in this matter on November 30, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

According to the publicly available WhoIs information, the disputed domain name was created in 2001. At that time, the Complainant did not exist as a business entity.

The Complainant first used its trademark WEB PASS in 2007.

The Respondent has used the disputed domain name to promote a business known as WEBPASS, which offered the service of anonymous Internet browsing of various paid-Internet sites.

5. Parties’ Contentions

A. Complainant

The Complainant states that it is a corporation located in San Francisco, California, United States of America. It is a telecommunications service provider along with associated hardware to deliver those services. It has been doing business at least as early as March 13, 2006 which it was incorporated in the state of California under the name VVD Communications, Inc. VVD Communications, Inc. changed its name to Webpass, Inc. in January 2007. The Complainant owns the domain name <web-pass.com> matching its mark in order to operate a consistent website to advertise, inform, and communicate with the public.

The Complainant alleges that it is the owner of the common law trademark WEBPASS and owns United States trademark registration number 3,384,499 for the mark WEBPASS (and design) which has been used by the Complainant since at least as early as April 12, 2007.

According to the Complainant, the disputed domain name is identical to its mark WEBPASS. That domain name was actively used as far back as July 15, 1997. From 1997 to 2002, the domain name remained unused. The Respondent acquired the disputed domain name in 2001. In 2002, the disputed domain name defaulted to a domain name search and registration service. From 2003 to 2007, the site remained “under construction” with no activity or update whatsoever. In May 2007, the site displayed a page saying “this site is under construction” but listing numerous hyperlinks to other websites as various as promoting web-design, tips on business travel or how to incorporate a business. The last use of the domain name lasted less than a year commencing in June 2007 and terminating in May 2008. The site hosted a page dedicated to products trademarked as QUICKSTORE24. QUICKSTORE24 now appears on the <quickstore24.com> domain name with products called “Thumbpass.” The disputed domain name has remained inactive since 2008.

The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name because (1) no evidence exists that the Respondent is using, or has 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; (2) the Respondent has not been commonly known by the disputed domain name; (3) the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. For the reasons set forth below, the Panel will not summarize the Complainant’s arguments in greater detail.

The Complainant cites Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, to justify its allegation that the Respondent registered and is using the disputed domain name in bad faith. In particular, the Complaint alleges the Complainant’s strong reputation in California; the passive holding of the disputed domain name by the Respondent; and the fact that the Respondent may have concealed its identity and provided incorrect or false contact information are evidence of bad faith registration and use. The evidence for the allegation of concealment of identity being that the Respondent did not reply to various communications from the Complainant’s attorney, including a cease-and-desist letter. For the reasons set forth below, the Panel will not summarize the Complainant’s arguments in greater detail.

According to the Complainant, any actual or contemplated active use of the disputed domain name by the Respondent would be illegitimate. Considering the history of the use of the disputed domain name, it is very unlikely that the Respondent is reasonably contemplating using the domain name in a legitimate manner. No relevant website or other activity has been hosted under the disputed domain name, not only since the Respondent purchased the domain name, but since the domain name was created thirteen (13) years ago. The Respondent therefore abandoned and lost any domain name rights vis à vis legitimate trademark and domain name rights of the Complainant.

B. Respondent

According to the Respondent, the Complainant has demonstrated United States Federal Trademark Registration of a stylized mark including the words WEB and PASS. The Complainant has, however, set forth no evidence that any rights conferred by the registered stylized mark may reasonably be considered at issue with respect to the use of the disputed domain name. “Web” and “pass” are two extremely common words and their mere occurrence as a domain name does not seem to raise any issues of confusion with respect to the particular stylized graphic that the Complainant has registered. In other words, the Complainant has not evidenced any federal rights in the mere words “web” and/or “pass”. Further, there is no evidence regarding whether any common law rights have indeed been vested in the mere words “web” and/or “pass”.

The Respondent alleges that, in 2002 and 2003, he used the disputed domain name to provide a web site supporting a business known as “Webpass”, which offered the service of anonymous Internet browsing of various paid-Internet sites. He provides evidence to support that allegation. He was a principal at a company that, on November 7, 2002, in furtherance of the business of “Webpass”, filed a United States Federal Trademark Application for the word mark WEBPASS, in international class 35 for “[d]irect Marketing and advertising services for online businesses … providing … memberships for a variety of consumer websites that offer and charge for premium content online.”

The Respondent states that, as his time and responsibilities became more consumed by other areas of his business, the business of “Webpass”, became inactive. The Respondent has never, however, had intent to let the business, any common law rights in the mark WEBPASS that were obtained by virtue of usage of the mark in the course of commerce in the state of Connecticut (and/or elsewhere), or the disputed domain name, go abandoned.

The Respondent further states that indeed – as the Complainant points out – he resumed utilization of the domain disputed domain name in 2007 as a pointer to his website of “www.quickstore24.com”, for which his re-named business, Vendmore Systems, LLC (re-named from Conversion Marketing, LLC), also of Connecticut, owns a United States Federal Trademark Registration. This year, as the Respondent’s vending business has become increasingly web-based, and as time and resources have allowed more time to be spent in consideration of trademark and domain name issues, the Respondent has once again begun to consider implementation of the disputed domain name as part of his vending business.

The Respondent states that his registration and use of both the mark WEBPASS and the disputed domain pre-date any alleged activities of the Complainant by five (5) years or more. The Respondent is at a loss as to how the Complainant can allege, in good conscience, that the Respondent has registered the disputed domain name in bad faith when it is the Complainant who is the junior user of the mark, by far.

Regarding the allegation of concealment of identity and the Respondent’s failure to reply to a letter from the Complainant’s attorney, the Respondent states that would be highly surprised if any meaningful percentage of “demand letters” written in such an aggressive, litigious tone as the Complainant’s “demand letter” actually received responses. Lack of response to the Complainant’s harsh and overreaching demands, whether received via e-mail, telephone, courier, or otherwise, is not evidence that the Respondent’s contact information is incorrect. Indeed, as evidenced by this Response, the Respondent’s contact information is correct, and all correspondence has been duly received and given proper business and legal consideration.

For the reasons set forth below, the Panel will not summarize the Respondent’s additional contentions regarding the element of bad faith registration and use.

The Respondent states that he truthfully believes that the Complaint was served in bad faith and constitutes an abuse of this administrative proceeding. Thus he requests that the Panel consider a finding of Reverse Domain Name Hijacking pursuant to the Rules, paragraph 15(e).

6. Discussion and Findings

A. Identical or Confusingly Similar

Since each element of the Policy is dispositive, the Panel finds that it need not analyze this element of the Policy, for the reasons given below. See Creative Curb v. Edgetec International Pty. Ltd., NAF Claim No. 116765 (September 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary).

B. Rights or Legitimate Interests

For the reasons set forth below, the Panel finds that it need not analyze this element of the Policy.

C. Registered and Used in Bad Faith

The Respondent argues that, at the time he registered the disputed domain name in 2001, the Complainant did not exist as a business entity. The Complaint does not contest this allegation. Indeed, the Complainant’s trademark registration gives 2007 as the year of first use in commerce, and there is no evidence of any use by the Complainant of the WEB PASS mark prior to 2007 that would give rise to rights in the mark.

The Respondent argues that it could not have registered the disputed domain name in bad faith if the Complainant did not own a business or a trademark when the Respondent acquired the disputed domain name.

Indeed, it is well-established case-law under the UDRP that, in general, a finding of bad faith registration cannot be made with respect to a trademark that did not exist at the time of registration of the disputed domain name. As the WIPO Overview of WIPO Panel Views on Selected UDRP Questions says at paragraph 3.1:

“Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right.”

In support of this, see Telecom Italia S.p.A. v. NetGears LLC c/o Domain Admin, NAF Claim No. 944807 (May 16, 2007) (finding 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); see also Aspen Grove, Inc. v. Aspen Grove, WIPO Case No. D2001-0798 (October 5, 2001) (finding that it is “impossible” for the respondent to register disputed domain name in bad faith if the complainant company did not exist at the time of registration).

The Complainant argues that the Respondent has not used the disputed domain name, and that this demonstrates his bad faith. But this allegation is not correct. As the Complainant itself points out, the Respondent has used the disputed domain name in the past. Further, the Respondent provides plausible explanations for the current lack of use, and a plausible argument regarding future use.

It cannot be denied that the Respondent’s registration of the disputed domain name did not violate the Policy because he registered the disputed domain name well before the Complainant started to use its trademark. In light of the above, the Panel finds that the Respondent did not register the disputed domain name in bad faith under Policy, paragraph 4(a)(iii).

D. Reverse Domain Name Hijacking

Paragraph 1 of the Rules defines Reverse Domain Name Hijacking:

“Reverse Domain Name Hijacking means using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”

The general conditions for a finding of bad faith on the part of a complainant are well stated in Smart Design LLC v. Carolyn Hughes, WIPO Case No. D2000-0993 (October 18, 2000):

“Clearly, the launching of an unjustifiable Complaint with malice aforethought qualifies, as would the pursuit of a Complaint after the Complainant knew it to be insupportable.”

These conditions are confirmed in Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151 (January 4, 2001) and Sydney Opera House Trust v. Trilynx Pty. Limited, WIPO Case No. D2000-1224 (October 31, 2000) (where the condition is stated as “the respondent must show knowledge on the part of the complainant of the respondent’s right or legitimate interest in the disputed domain name and evidence of harassment or similar conduct by the complainant in the face of such knowledge”), which in turn cites Plan Express Inc. v. Plan Express, WIPO Case No. D2000-0565 (July 17, 2000).

The Complainant knew when it filed the Complaint that the registration of the disputed domain name preceded by several years any rights that the Complainant may have acquired in the mark WEB PASS. Indeed, the Complainant annexes a printout of the WhoIs registration to the Complaint, and that printout indicates that the domain name was created well before the Complainant’s first use in commerce of its mark. In this Panel’s view, this is sufficient to find reverse domain name hijacking. See NetDeposit, Inc. v. NetDeposit.com, WIPO Case No.D2003-0365 (July 22, 2003) (finding reverse domain name hijacking because “Respondent's domain name registration preceded the Complainant's creation of its trademark rights”).

The Panel finds that the Complainant has attempted Reverse Domain Name Hijacking.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Richard Hill
Sole Panelist
Dated: December 2, 2010

 

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