WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bulbs 4 East Side Inc., d/b/a Just Bulbs v. Fundacion Private Whois/ Gregory Ricks
Case No. D2013-1779
1. The Parties
Complainant is Bulbs 4 East Side Inc., d/b/a Just Bulbs of New York, New York, United States of America, represented by Kaufman & Kahn, LLP, United States of America.
Respondent is Fundacion Private Whois of Panama, Panama, Gregory Ricks of College Station, Texas, United States of America.
2. The Domain Name and Registrar
The disputed domain name <justbulbs.com> (the “Domain Name”) is registered with Internet.bs Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 14, 2013. On October 16, 2013, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. On October 23, 2013, the Registrar transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 November 1, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 21, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 22, 2013.
The Center appointed Robert A. Badgley as the sole panelist in this matter on December 6, 2013. 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.
On December 9, 2013, Respondent sent the Center an e-mail, addressed to the Panelist, which stated as follows: “I did not register JustBulbs.com in bad faith 10 years ago when the complainant attempted to reverse hijack this generic domain name. Now 10 years later I still did not register JustBulbs.com in bad faith and I should not be subjected legal expenses resulting from repeated reverse hijacking attempts.” The message was signed “Gregory A. Ricks.”
4. Factual Background
In 2003, a company known as Superiority, Inc. filed a complaint under the Policy against none/Motherboards.com seeking a transfer of the same Domain Name as is at issue in the instant case. See Superiority, Inc. d/b/a Just Bulbs v. none/Motherboards.com, WIPO Case No. D2003-0491. Since 1983, Superiority, Inc. or its predecessor (Just Bulbs Ltd.) had held the registered service mark, JUST BULBS, United States Patent and Trademark Office registration number 1,234,998, in connection with “retail store service specializing in light bulbs.”
The panel in the Superiority case denied the complaint. The panel found that the complainant had failed to prove that the respondent lacked legitimate interests in respect of the Domain Name, because the respondent was selling light bulbs and using that term in its descriptive sense and there was no evidence that, at the time of the Domain Name registration, the respondent was aware of the complainant’s JUST BULBS service mark. The panel in the Superiority case also noted that the respondent there “evinced good faith by removing light bulb advertisements from its site subsequent to being notified of the dispute” and commencing to advertise flower bulbs at the website. Accordingly, the panel held, “Respondent has a legitimate interest in using the domain name for flower bulbs.”
Observing further that “this is not a case where Respondent is deliberately benefitting from the use of the trademark meaning of JUST BULBS by funneling traffic to its site,” the panel in Superiority concluded as follows: “Since Respondent has represented that it will not resume advertising light bulbs, Respondent’s use of the domain name as a portal for customers interested in flower bulbs is sufficient to demonstrate a legitimate interest and a bona fide use of the domain name.”
In October 2008, the entire interest in the JUST BULBS service mark was transferred to Complainant Bulbs 4 East Side Inc. Complainant is also in the business of selling light bulbs. Complainant has been using a website located at “www.justbulbsnyc.com” in connection with its business.
According to the WhoIs database, the Domain Name is currently registered to “Fundacion Private Whois” based in Panama and Gregory Ricks of College Station, Texas, United States. It is not clear from the record of this case when the registrant of the Domain Name changed from “none/Motherboards.com” from the time of the Superiority case to the present. In any event, the e-mail address listed for Gregory Ricks in the WhoIs database is [….]@motherboards.com.
The Domain Name currently resolves to a fairly undeveloped website which indicates, among other things, that the Domain Name is for sale. In addition, the website contains several hyperlinks, most of which deal with light bulbs (such as “Hard to Find Light Bulbs,” “Buy Sylvania Light Bulbs,” “LED Light Bulbs for Home,” and the like).
It is alleged, and not disputed, that Respondent Gregory Ricks has been named as respondent in at least 142 prior cases under the Policy and is a serial cybersquatter.
5. Parties’ Contentions
Complainant argues that this refiled complaint (it being considered “refiled” because the same Respondent and the same Domain Name were involved in the Superiority case discussed above) should be accepted because “relevant new actions have occurred since the original decision” in 2003. These allegedly new developments include the fact that Respondent is now using the Domain Name to advertise light bulbs, not flower bulbs, and the fact that Respondent transferred the Domain Name from one privacy/proxy service (NameSecure.com) to another (Internet.bs Corp.).
Complainant also asserts that Respondent should be deemed to have registered the Domain Name anew – as opposed to having merely renewed his prior Domain Name registration – because Respondent changed privacy/proxy services. As such, the argument goes, Respondent’s conduct subsequent to the Superiority decision should be considered in determining whether Respondent registered and is using the Domain Name in bad faith.
Complainant asserts that all three elements required for a transfer under the Policy are present, and Complainant seeks a transfer of the Domain Name.
Respondent did not reply to Complainant’s arguments as set forth above. Rather, as noted earlier, Respondent merely sent a brief message to the Center denying that he is acting in bad faith and providing no elaboration.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant holds rights in the registered service mark JUST BULBS. The Domain Name is identical to Complainant’s mark.
Accordingly, the Panel finds that Policy paragraph 4(a)(i) is satisfied.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in a Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [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; or
(ii) you [Respondent] (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 [Respondent] 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.
In view of the Panel’s discussion in the next section on the question of “bad faith,” the Panel need not address the “rights or legitimate interests” issue.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
Before proceeding further into the substance of this “bad faith registration and use” element, it is necessary to decide whether this refiled complaint should be entertained on the merits, and whether Respondent’s conduct ought to be judged on the basis of conduct subsequent to the Superiority decision handed down in October 2003.
The Panel first concludes that the merits of this refiled complaint should be considered. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) sets forth in relevant part the following consensus view of refiled complaints under the Policy:
A refiled case concerns the complainant submitting a second complaint involving the same domain name(s) and the same respondent(s) as in an earlier complaint that had been denied. A refiled case may only be accepted in limited circumstances. These circumstances include when the complainant establishes in the complaint that relevant new actions have occurred since the original decision, or that a breach of natural justice or of due process has occurred, or that there was other serious misconduct in the original case (such as perjured evidence). A refiled complaint would usually also be accepted if it includes newly presented evidence that was reasonably unavailable to the complainant during the original case.
In certain, highly limited circumstances (such as where a panel found the evidence in a case to be finely balanced, and that it was possible that the future behavior of the respondent might confirm bad faith registration and use after all), a panel in a previous case may have found it appropriate to record in its decision that, if certain conditions were met, a future refiled complaint may be accepted. Where this has occurred, the extent to which any such previously-stipulated panel conditions may have been met in any refiled complaint may also be a relevant consideration in determining whether such refiled complaint should be accepted.
WIPO Overview 2.0 paragraph 4.4. See generally Gassan Diamonds B.V. v. Internet-Dating.Com, WIPO Case No. D2011-0774 (transferring domain name in refiled case and discussing standards applicable to refiled cases).
Complainant asserts here that “relevant new actions” have occurred since the Superiority complaint was dismissed. As noted above, these new developments include the fact that Respondent is now using the Domain Name to advertise light bulbs, not flower bulbs, and the fact that Respondent transferred the Domain Name from one privacy/proxy service (NameSecure.com) to another (Internet.bs Corp.). Complainant also asserts that the panel in the Superiority case based its decision at least in part on the fact that Respondent had ceased using the Domain Name to advertise light bulbs, and had represented that he would not do so in the future.
Respondent made no effort to rebut Complainant’s assertions on this score, and the Panel finds the new developments to be potentially relevant, at least for purposes of deciding to entertain this refiled complaint. The Panel also agrees with Complainant’s assertion that the Superiority decision hinged in part on the representation by Respondent that he would be keeping clear of the light bulb business. Accordingly, the Panel concludes that this refiled complaint is appropriately filed and should be considered at least in part on the basis of Respondent’s post-Superiority conduct.
However, consideration of a refiled complaint under the Policy does not necessarily mean that the findings and conclusions from the first case are irrelevant. Rather, as circumstances demand, the context of the first case may inform and color the Panel’s consideration of the merits of a refiled complaint.
The next question for the Panel is whether Respondent’s alleged “bad faith” registration of the Domain Name should be judged at the time of the initial registration prior to the Superiority case, or whether it should be judged at some point in time subsequent to the Superiority case. In this connection, Complainant argues that the Panel should consider Respondent to have “registered” the Domain Name (as opposed to having merely “renewed” it) since the time of the Superiority decision, because Respondent changed its privacy/proxy service at some point in time after that decision. There has also been a change of the formal registrant details (from “none/Motherboards.com” to “Gregory Ricks”). Respondent does not dispute that he has changed his privacy/proxy service, and offers no explanation why he did so.
The WIPO Overview 2.0 addresses this issue, setting forth the consensus view as follows:
While the transfer of a domain name to a third party does amount to a new registration, a mere renewal of a domain name has not generally been treated as a new registration for the purpose of assessing bad faith. Registration in bad faith must normally occur at the time the current registrant took possession of the domain name. (Movement of a domain name registration from one privacy or proxy service to another may in certain circumstances constitute evidence of a new registration for this purpose.) Panels have tended to the view that formal changes in registration data are not necessarily deemed to constitute a new registration where evidence clearly establishes an unbroken chain of underlying ownership by a single entity or within a genuine conglomerate, and it is clear that any change in WhoIs registrant data is not being made to conceal an underlying owner's identity for the purpose of frustrating assessment of liability in relation to registration or use of the domain name.
WIPO Overview 2.0 paragraph 3.7. The parenthetical above – “Movement of a domain name registration from one privacy or proxy service to another may in certain circumstances constitute evidence of a new registration for this purpose” – appears to be the only hope for Complainant’s argument. That parenthetical, though, is qualified by the remainder of the paragraph, which suggests that movement from one privacy/proxy service to another does not result in a new registration where the record otherwise shows that the same party has maintained the ownership of the Domain Name registration. In this case, it appears to be common ground between the parties that Respondent here is the same underlying owner as in the Superiority case. Accordingly, the Panel determines that the original registration of the Domain Name – which was the subject of the Superiority case – is the relevant registration here.
The next question is whether Respondent’s registration of the Domain Name before the 2003 Superiority decision was in bad faith. To reiterate, the panel in Superiority found that the complainant had failed to prove that the respondent lacked legitimate interests in respect of the Domain Name, because the respondent was selling light bulbs and using that term in its descriptive sense and there was no evidence that, at the time of the Domain Name registration, the respondent was aware of the complainant’s JUST BULBS service mark. There is no new evidence in the record of the present case that Respondent’s state of knowledge of Complainant’s mark back in 2003 was different from how the Superiority panel considered it. In other words, there is no more reason now than there was in 2003 to conclude that Respondent registered the Domain Name in bad faith. (The fact that, since 2003, Respondent has emerged as a serial cybersquatter does not, in this Panel’s view, upset the conclusion under the particular circumstances of this case that Respondent’s initial registration of the Domain Name – the second-level domain of which [“just bulbs”] is a fairly descriptive term – was not in bad faith.)
With respect to Complainant’s allegation that Respondent is in bad faith because he has resumed his use of the Domain Name in connection with light bulb advertisements (as opposed to flower bulb advertisements) and has offered it for sale, the Panel is prepared to accept that Respondent is now using the Domain Name in bad faith, since today Respondent is clearly aware of Complainant’s mark. Again, however, the Policy requires a showing of bad faith registration and use. This conjunctive requirement is fatal to Complainant’s complaint in this refiled proceeding. Respondent’s bad faith use of the Domain Name since the Superiority decision does not by itself alter the fact that Respondent’s initial registration of the Domain Name was held to be legitimate and nothing on the current record allows this Panel to find otherwise.
Finally, the Panel observes that the Policy is not the appropriate vehicle for resolving all disputes involving domain names. The courts of law remain open to address the needs of aggrieved trademark owners in a much wider array of circumstances. Further, unlike courts of law, panels serving under the Policy are not well equipped to retain supervisory jurisdiction over parties to ensure that they will carry out their promises, such as the representation by Respondent in the Superiority case that he would cease using the Domain Name in connection with light bulbs (although such actions may be relevant, as is the case here, to a panel when considering use in bad faith under the Policy). In short, under the circumstances of this refiled case, Complainant must seek its relief elsewhere.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel denies the complaint.
Robert A. Badgley
Date: January 13, 2014