WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hitcents.com v. Bob Blackard
Case No. D2012-0063
1. The Parties
Complainant is Hitcents.com, Bowling Green, Kentucky, United States of America, self represented.
Respondent is Bob Blackard, Austin, Texas, United States of America, represented by PirkeyBarber LLP, United States of America.
2. The Domain Name and Registrar
The disputed domain name <omniprise.com> is registered with Register.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 16, 2012. On January 16, 2012, the Center transmitted by email to Register.com, Inc. a request for registrar verification in connection with the disputed domain name. On January 16, 2012, Register.com, Inc. transmitted by email to the Center its verification response. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on January 19, 2012. The Center verified that the Complaint together with the amendment to the 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 January 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 13, 2012. The Response was filed with the Center on February 9, 2012.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on February 27, 2012. 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
Complainant has registered the word and design trademark OMNIPRISE on the Principal Register of the United States Patent and Trademark Office (USPTO), registration number 3,630,311, dated June 2, 2009, in international class 9, covering "enterprise resource planning software". The trademark consists of a circular design formed by six inward pointing arrows of different colors situated to the left of the word "Omniprise”. In its application for registration, Complainant asserted date of first use of December 7, 2006, and date of first use in commerce of October 7, 2007.
Complainant asserts that it is a producer and vendor of computer software, including "an ERP, CRM and HRM solution”. Complainant states that it owns a number of domain names incorporating various forms of its trademark (e.g., <omniprise.net>, <omniprise.org> and <omni-prise.com>), although it has not provided evidence of such domain name registrations. Complainant has not provided concrete evidence of its use of its trademark in commerce.
According to the Registrar verification, Respondent is registrant of the disputed domain name. According to that verification, the record of registration of the disputed domain name was created on August 14, 2002. Respondent asserts that it is the initial registrant of the disputed domain name.
Respondent has provided evidence (in the form of a webarchive.org printout) of use of the disputed domain name in connection with an Internet website on November 20, 2002. The initial web page included dictionary definitions of the terms forming the disputed domain name (“omni” and “enterprise”), and referred to the concept of "Pervasive Computing". The single web page indicated that the site was under construction, with a contact link for Respondent. Respondent has provided evidence of the use of the disputed domain name in connection with a web page as of February 1, 2012, with a substantially more extensive explanation of its business model, which principally involves providing "technical consulting services including enterprise, technical and solution architecture; software development using Java and C++; and website design and development”.
Respondent has provided evidence of use of the disputed domain name in an email address dating back to November 27, 2005.
Respondent has provided evidence of its certification with the Travis County Clerk, Texas, of ownership of the proprietorship "OmniPrise", dated May 12, 2004. Respondent has provided evidence of organization of a Texas Limited Liability Company named “OmniPrise, LLC”, effective July 22, 2010.
Respondent (Bob Blackard) has furnished a declaration dated January 18, 2012 stating, in addition to those matters referred to above, that he provides consulting services under the name "OmniPrise" to various clients (direct and indirect) including Dell and the City of Austin, Texas. Respondent declares that he receives requests for services at the email address [….]@omniprise.
According to Complainant, it approached Respondent expressing an interest in purchasing the disputed domain name, and Respondent requested payment of $150,000. According to Respondent, Complainant has made "repeated" requests to purchase the disputed domain name.
The registration agreement in effect between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use. (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant alleges that it has rights in the trademark OMNIPRISE as evidenced by registration at the USPTO, and that the disputed domain name as used by Respondent causes confusion for its customers. Complainant also asserts a copyright in its computer software product.
Complainant argues that Respondent is using the disputed domain name as a "squatting landing page" leading to the perception that Respondent is the owner of the "Omniprise software suite", and that Respondent is diverting Internet traffic from Complainant.
Complainant contends that Respondent requested payment for the disputed domain name that "is grossly in excess" of its out-of-pocket costs directly related to the disputed domain name. Complainant argues that this leads to the conclusion that the disputed domain name is being used to attract commercial gain for Respondent. Complainant also alleges that the web page operated by Respondent "turns [users] off to [Complainant's] software due to the webpage design".
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent concedes that the disputed domain name is confusingly similar to the trademark OMNIPRISE. Respondent states that Complainant's assertions regarding copyright are irrelevant to this proceeding.
Respondent contends that it has rights or legitimate interests in respect of the disputed domain name because: (1) Respondent’s use of the term “omniprise” for his business long predated Complainant's adoption of its trademark and its registration; (2) Respondent has used the OMNIPRISE trade name and mark since at least as early as 2004 in connection with an active business of public record; (3) Respondent's business model (technical consulting services) does not require more than minimal information to be displayed at its website; (4) information concerning Respondent's registration of the disputed domain name and its website was readily available to Complainant when it selected its trademark, and (5) Complainant knowingly ignored Respondent's prior use of the disputed domain name when it registered its trademark (e.g., Complainant is a junior user of the name and mark OMNIPRISE). Respondent alleges that because it has bona fide legitimate rights in the disputed domain name the Complaint must fail.
Respondent argues that it did not register and use the disputed domain in bad faith because: (1) Respondent's registration of the disputed domain name on August 14, 2002, long predated Complainant's asserted first use of the OMNIPRISE trademark in commerce in late 2007 and, consequently, Respondent could not have taken advantage of rights asserted by Complainant that did not exist; (2) Respondent has bona fide rights and legitimate interests in the disputed domain name, precluding a finding of bad faith, and (3) because of the foregoing facts, Respondent is entitled to retain the disputed domain name and to set whatever price it elects to sell it at.
Respondent requests a finding of reverse domain name hijacking pursuant to Rule 15(e) because Complainant has been aware of the factual basis of Respondent’s asserted rights, has attempted to purchase the disputed domain name numerous times, and must have known that it could not succeed in a proceeding under the Policy. Complainant "apparently was hoping it can use the UDRP process to strip Respondent of his rightfully held domain name."
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent, and Respondent filed a timely Response. The Panel is satisfied that Respondent had adequate notice of these proceedings and an opportunity to respond.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has asserted rights in the word and design trademark OMNIPRISE (see Factual Background supra), and that the disputed domain name is confusingly similar to its trademark. Respondent has not challenged the validity of Complainant's trademark registration, and has conceded that the disputed domain name is identical or confusingly similar to that trademark.
The Panel is satisfied that Complainant has sufficiently demonstrated rights in a trademark and that the disputed domain name is identical to that trademark for purposes of the Policy.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c))
Complainant’s contention that Respondent lacks rights or legitimate interests in the disputed domain name appears to be grounded in the idea that Respondent is making deceptive or unfair use of its trademark in the disputed domain name by causing Internet user confusion. Complainant appears to argue that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Complainant may implicitly suggest that Respondent did not make a bona fide offering of goods or services under the disputed domain name prior to notice of this dispute. Complainant has not addressed the extent to which Respondent has been commonly known by the disputed domain name, even if it has not acquired trademark or service mark rights. The Panel gives Complainant a certain benefit of the doubt in finding that Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has provided substantial evidence that it established and operated a business under the name "OmniPrise" as early as 2004, including by filing a certificate of ownership of that proprietorship with authorities in the State of Texas. Respondent has provided evidence of use of the disputed domain name in its email address dating back substantially earlier than Complainant's asserted first use in commerce of the OMNIPRISE mark. The webpage initially posted by Respondent in November 2002, and the webpage posted by Respondent as late as February 2012, do not refer to the offering of a suite of computer software such as is allegedly offered by Complainant, but rather to the provision of technical computer services, including website design. While there might be some element of confusion between the website operated by Respondent and Complainant's computer software business because both Complainant and Respondent are operating businesses associated with computers, there does not appear to be an effort by Respondent on its website to specifically confuse Internet users regarding a relationship with Complainant or its product.
Respondent has demonstrated that it adopted and was known by the term “OmniPrise” substantially before Complainant used and/or registered its trademark. Respondent filed a public notice of its usage. Respondent maintained at least a rudimentary webpage under the disputed domain name as early as 2002. Complainant could (and should) have identified Respondent and the disputed domain name at the time it adopted its trademark. (As a computer software producer and vendor, Complainant presumably had the capability of performing a simple Internet search). There is credible evidence that Respondent made bona fide use of the trade name “OmniPrise” before notice of this dispute, even if the nature of its business was not clearly spelled out on its initial webpage. Paragraph 4(c)(i) of the Policy refers to use of, or preparations to use, a name "corresponding to the domain name" in connection with a bona fide offering of services, and Respondent has provided unrebutted evidence that it operated a business corresponding to the domain name prior to notice of this dispute (even if it did not clearly manifest itself on its web page).
The Panel determines that Complainant has failed to establish that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
In order to prevail under the Policy, Complainant must demonstrate that the disputed domain name “has been registered and is being used in bad faith” (Policy, paragraph 4(a)(iii)). Paragraph 4(b) enumerates a nonexhaustive list of factors that may constitute evidence of bad faith registration and use.
Respondent registered the disputed domain name on August 14, 2002. By its own evidence, Complainant did not make any use of the OMNIPRISE trademark before 2006, or use in commerce before October 2007. Respondent did not "register" the disputed domain name with the intent to take unfair advantage of Complainant and its trademark because Complainant had no OMNIPRISE trademark or rights in an OMNIPRISE trademark when Respondent registered the disputed domain name in August 2002. There are no extenuating circumstances that might justify deviation from the general principle that a complaining party must demonstrate rights in a trademark at the time of registration of a domain name by a third party in order for bad faith to be found.1
Complainant should have been aware that Respondent owned registration of the disputed domain name when Complainant adopted its trademark. Complainant is not now in a position to claim that Respondent is taking unfair advantage of it by refusing to relinquish the disputed domain name on Complainant's terms.
The Panel finds that Complainant has failed to establish that Respondent registered and used the disputed domain name in bad faith.
D. Reverse Domain Name Hijacking
The Panel acknowledges that, under the totality of the circumstances, Complainant filed a Complaint with marginal prospects for success. However, because Complainant does have ownership of rights in a trademark that is identical to the disputed domain name and has made (an albeit weak) prima facie case of lack of rights or legitimate interests, and because Complainant is not represented by counsel, the Panel is disinclined to make a formal finding of Reverse Domain Name Hijacking.
For all the foregoing reasons, the Complaint is denied.
Frederick M. Abbott
Dated: March 11, 2012
1 The Panel acknowledges that some panelists have proposed to modify this long-standing principle by finding that bad faith "use" alone can be sufficient to establish bad faith "registration and use". This Panel does not endorse that proposal. The Panel does not find reason here to engage in a particularized analysis of Respondent’s post-registration use of the disputed domain name from the standpoint of bad faith. It is worth noting, however, that Respondent has established rights or legitimate interests in the disputed domain name.