WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Frank Michael Weyer v. DomainSource.com, Inc.
Case No. D2013-0510
1. The Parties
Complainant is Frank Michael Weyer of Los Angeles, California, United States of America (“U.S.”), self-represented.
Respondent is DomainSource.com, Inc. of Lakehead, California, U.S., represented by John Berryhill, U.S.
2. The Domain Name and Registrar
The disputed domain name <ishades.com> is registered with Network Solutions, LLC (“Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on March 14, 2013. On March 14, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 14 and 15, 2013, the Registrar transmitted by email to the Center its responses, confirming that Respondent is listed as the registrant and providing contact information and other details pertaining to the registration.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“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 March 20, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 9, 2013. The Response was filed with the Center on April 9, 2013.
The Center appointed Debra J. Stanek, Andrea Jaeger-Lenz, and Richard G. Lyon as panelists in this matter on April 30, 2013. The Panel finds that it was properly constituted. Each member of 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 owns a U.S. federal trademark registration for the mark ISHADES.
The disputed domain name <ishades.com> was registered in July 2002.
5. Parties’ Contentions
The allegations of the Complaint are reproduced below:
1. Identical or Confusingly Similar
Complainant owns the U.S. Trademark Registration No. 3366489 for the mark ISHADES for Earphones. The disputed domain name is identical to the registered trademark.
2. Rights or Legitimate Interests
Respondent has no legitimate rights in respect of the disputed domain name. Respondent acquired the disputed domain name with the sole interest of reselling the disputed domain name and has no bona fide intent to use the disputed domain name in connection with goods or services. Respondent has made a demand of USD 175000.00 from Complainant to relinquish the disputed domain name to Complainant.
3. Registered and Used in Bad Faith
The disputed domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of the trademark or service mark (normally Complainant) or to a competitor of that Complainant, for valuable consideration in excess of Respondent's out-of-pocket costs directly related to the disputed domain name. Respondent acquired the disputed domain name with the sole interest of reselling the disputed domain name and has no bona fide intent to use the disputed domain name in connection with goods or services. Respondent has made a demand of USD 175000.00 from Complainant to relinquish the disputed domain name to Complainant.
1. Identical or Confusingly Similar
Complainant owns a U.S. federal trademark registration for the mark ISHADES, evidenced by a copy of a printout from the U.S. Trademark Office database evidencing the registration provided by Respondent.
Complainant filed the application to register ISHADES based on an intention to use, rather than actual use, four years after Respondent’s registration of the disputed domain name. Complainant’s registration is supported by only “token use.”
Complainant provides no evidence of sales of its ISHADES earphones or any consumer recognition of the mark.
2. Rights or Legitimate Interests
Complainant has provided no evidence in support of his allegation that Respondent lacks rights or legitimate interests in the disputed domain name <ishades.com> and, as such, has not met its burden of making a prima facie showing that would shift the burden to Respondent.
Respondent acquired the domain name domain name in July 2002 more than four years before Complainant filed its application to register the ISHADES mark and more than five years before Complainant’s claimed “first use” of his ISHADES mark. Respondent’s prior registration is documented in the WhoIs printout for the disputed domain name <ishades.com>.
Since that time, Respondent has used the disputed domain name in connection with advertising window shades, awnings, and as a re-direct to Respondent’s <iglasses.com> domain name, which it uses to advertise and sell eyeglasses through an affiliate relationship with the “www.eyeglasses.com” website.
The disputed domain name consists of a common word, “shades”, preceded by the letter “i”, which is commonly used to refer to availability via the Internet and is part of a portfolio of domain names made up of common words and phrases.
Complainant does not allege that Respondent’s use of the disputed domain name has been illegitimate.
Complainant’s claim that Respondent acquired the disputed domain name for re-sale is incorrect, but even if Respondent had done so, it would not have been illegitimate with respect to Complainant’s mark, which was not in existence when Respondent registered the disputed domain name and not used until several years later.
3. Registered and Used in Bad Faith
Respondent is the “senior party” in this proceeding.
Complainant’s assertion that Respondent registered the disputed domain name for the “primary purpose” of selling it to Complainant is nonsensical. Respondent registered the disputed domain name in 2002, four year before Complainant filed its application to register the ISHADES mark.
Complainant is an intellectual property lawyer who makes no mention of the relevant chronology.
Complainant provides no evidence in support of his claim that Respondent demanded USD 175,000.00 for the disputed domain name. In fact, Complainant made an anonymous offer to purchase the disputed domain name for USD 1,500.00 through a third party marketplace. Respondent made a counter-offer of USD 175,000.00, taking into account that the disputed domain name consists of a common word with a “trendy” prefix—“i”.
That Complainant, who is a lawyer, did not disclose any evidence relating to his initial anonymous offer (which was for an amount that exceeded the cost of registering the disputed domain name), suggests that Complainant intended to deceive the Panel into concluding that Respondent’s demand had been knowingly directed to Complainant.
Further, the 2013 offer and counter-offer is not relevant to Respondent’s purpose at the time it registered the disputed domain name.
6. Discussion and Findings
In order to prevail, a complainant must prove, as to the domain name, that:
(i) It is identical or confusingly similar to a mark in which the complainant has rights.
(ii) The respondent has no rights or legitimate interests in respect to it.
(iii) It has been registered and is being used in bad faith.
Policy, paragraph 4(a). The Policy sets out examples of circumstances that may evidence a respondent’s rights or legitimate interests in a domain name, see paragraph 4(c) of the Policy, as well as circumstances that may evidence a respondent’s bad faith registration and use, see paragraph 4(b) of the Policy.
A. Identical or Confusingly Similar
Apart from the assertion in the Complaint identifying his U.S. federal trademark registration, Complainant has not provided any evidence establishing his rights in the mark ISHADES. In fact, the Complaint does not comply with the Policy, which requires that: “The complaint ... shall: ... (xv) Annex any documentary or other evidence, including ... any trademark or service mark registration upon which the complaint relies....” Policy, paragraph 3(b). However, Respondent has provided the pertinent information from the U.S. Trademark Office website and concedes that Complainant does own a federal trademark registration for the mark ISHADES.
The Panel finds that Complainant has rights in the mark ISHADES by virtue of the trademark registration. The disputed domain name, <ishades.com>, is, in effect (disregarding “.com”), identical to the mark.
The Panel finds that the disputed domain name is identical to a mark in which Complainant has rights.
B. Rights or Legitimate Interests
The Panel, consistent with the Consensus View, finds that a complainant may establish that a respondent has no rights or legitimate interests in respect of a domain name by making a prima facie showing that a respondent lacks rights or legitimate interests. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1 (after the complainant makes a prima facie case, the burden of production to show rights or legitimate interests in the domain name shifts to the respondent).
Paragraph 4(c) of the Policy sets out the following examples:
(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.
The Panel finds that Complainant failed to make a prima facie showing under this element. Complainant merely includes the conclusory assertion, unsupported by any facts, evidence, or argument, that Respondent lacks legitimate rights in the disputed domain name. The remaining assertions of the Complaint (reproduced in Section 5.A.2 and 5.A.3 above) relate to the element of bad faith—and are equally unsupported.
In contrast, Respondent provided documentary evidence that establishes that it acquired the disputed domain name <ishades.com> several years before Complainant sought and obtained his trademark registration. Respondent’s documentary evidence is hardly obscure—the date Respondent acquired the disputed domain name <ishades.com> is found in the WhoIs record and the date that Complainant acquired its trademark rights is found in the U.S. Trademark Office database. Had he not actually known these facts, Complainant could have easily discovered them with minimal due diligence.
The Panel concludes that these facts were in all likelihood known to Complainant at the time he filed the Complaint and that the Complaint itself is frivolous.
Accordingly, the Panel finds that Complainant has not established that Respondent lacked rights or legitimate interests in respect of the disputed domain name. Further, the Panel finds that Respondent has established rights and legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
In light of the conclusion that Complainant failed to establish the second element, it is not necessary to address the issue of bad faith. However, the Panel’s view, consistent with the Consensus View, is that as a general matter, a domain name that is registered before a trademark right has been established cannot be found to have been made in bad faith. See WIPO Overview 2.0, paragraph 3.1. Under these circumstances, there is no reason to depart from this general rule.
D. Reverse Domain Name Hijacking
The Rules, paragraph 15, provide:
If after considering the submissions 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.
The Panel finds that Complainant attempted to engage in Reverse Domain Name Hijacking and that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. The reasons for this finding include the following:
- Complainant knows when he began using, applied to register, and obtained a registration for, the ISHADES mark.
- Complainant either knew or should have known, at the time of filing the Complaint, that Respondent’s rights in the disputed domain name predated his trademark rights.1
- The allegations of the Complaint were unsupported by documentary evidence, despite the fact that such evidence exists, could have been discovered after a few minutes of Internet research or would have been in Complainant’s possession. This includes such basic evidence as a copy of the trademark registration upon which the Complaint is based and copies of the communications between the parties.
- Complainant materially mischaracterized the parties’ communications regarding the possible sale of the disputed domain name.
- Complainant is a lawyer, and thus, should be held to a higher standard than a non-lawyer complainant regarding the Policy and Rules applicable to this proceeding.
For the foregoing reasons, the Complaint is denied.
Debra J. Stanek
Richard G. Lyon
Date: May 14, 2013
1 Complainant attached, as an annex to the Complaint, a copy of the WHOIS printout for the <ishades.com> domain name bearing a date that predated the filing date of his trademark registration.