WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

New Forests Asset Management Pty Limited v. Kerry Schorsch, Global Advertizing, LLC

Case No. D2015-1415

1. The Parties

The Complainant is New Forests Asset Management Pty Limited of North Sydney, Australia, represented by Clayton Utz Solicitors, Australia.

The Respondent is Kerry Schorsch, Global Advertizing, LLC of New England, North Dakota, United States of America, represented by Stokes Lawrence, P.S., United States of America.

2. The Domain Name and Registrar

The disputed domain name <newforests.com> is registered with eNom (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 11, 2015. On August 11, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 19, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 8, 2015. By agreement between the Parties, the due date for Response was extended until September 21, 2015. The Response was filed with the Center September 21, 2015. The Complainant and Respondent both submitted Supplemental Filings on September 24, 2015.

The Center appointed Luca Barbero, David Stone and Tony Willoughby as panelists in this matter on October 14, 2015. 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

The Complainant is a real assets investment manager offering edge strategies in forestry, land management and conservation.

The Complainant is the owner of the Australian Trademark application Nos. 1672987 for NEWFORESTS & device, filed on February 5, 2015, in classes 9, 19, 31, 35, 36, 40 and 44, and 1673655 for NEW FORESTS filed on February 10, 2015, in classes 9, 19, 31, 35, 36, 40 and 44.

On August 4, 2015, the Complainant filed an application under the Madrid Protocol to extend protection of the Australian Trademark application No. 1672987 to the following jurisdictions: China, Switzerland, United States of America, the European Union, Japan and New Zealand.

The Complainant is also the owner of the Malaysian trademark application No. 2015062211 for NEWFORESTS & device, filed on July 28, 2015, in class 44.

The Respondent registered the disputed domain name <newforests.com> on January 28, 1999.

5. Parties’ Contentions

A. Complainant

The Complainant states that its company was founded in 2005 and offers institutional investors targeted opportunities in the Asia-Pacific region and the United States of America. It claims to have over AUD 2.5 billion in assets under management, including timber plantations, rural land and conservation investments related to ecosystem restoration and protection.

The Complainant claims that the trademark NEW FORESTS has been used by its predecessor-in-title since 2000 and by the Complainant since July 2005 and that, as a result of the significant use made by the Complainant of the trademark NEW FORESTS, it has built up goodwill, reputation and common law rights in relation to the trademark NEW FORESTS over the years, in Australia and in a range of other jurisdictions.

The Complainant contends that the disputed domain name is identical to its trademark NEW FORESTS as it uses the trademark without additional distinctive elements.

The Complainant asserts that the trademark NEW FORESTS has been used by the Complainant in the following manners:

- in the domain name <newforests.com.au>, owned by the Complainant’s parent company New Forests Pty Ltd, since as early as June 2006;

- on the web site “www.newforests.com.au” since at least June 19, 2006;

- on the web site “www.newforests-us.com” since at least as early as April 8, 2008;

- to market and promote the Complainant’s services, including via print media such as newspapers and trade magazines, television, online and digital media such as LinkedIn and Twitter, at industry conferences, during corporate sponsorship activities including corporate events, scholarships, publications, policy forums, community forums and donations to non-government organizations, through corporate social responsibility initiatives such as community outreach, support for land care and environmental programming, charity event speaking and sponsorship, corporate annual sustainability reports, leadership and promotion of responsible investment and sustainable forestry, direct mail-outs to potential customers and investment consultants. The Complainant further states that the trademark NEW FORESTS features regularly in the news and industry commentary, submitting a list of its press releases and of the Complainant’s media mentions.

The Complainant submits that the Respondent has not demonstrated any rights or legitimate interests in the disputed domain name and that the Respondent’s use of the disputed domain name is not legitimate. The Complainant claims that the Respondent’s web site appears to relate to the purchase and sale of New Forest horses but, on further observation, it is clear that it contains a random selection of advertisements relating to the sale of farms, pet resorts, equestrian complexes and other properties. The Complainant also claims that the Respondent’s use of the disputed domain name is artificial since a note on the web site informs users that the disputed domain name is offered for sale.

The Complainant avers that the Respondent registered and used the disputed domain name in bad faith since the web site to which it resolves has nothing to do with the sale or purchase of New Forest horses despite the introductory paragraphs of the home page.

The Complainant submits that the Respondent’s use of the disputed domain name has not changed significantly since at least May 27, 2009, as the introductory paragraphs on the home page were the same and the advertisements placed on the web site related to a whole host of different matters including horses, properties and other animals offered for sale.

The Complainant informs the Panel that it made an offer to purchase the disputed domain name from the Respondent for the amount of USD 4,000 but it was rejected on the basis that the offer was too low, and that the Respondent indicated it would consider an offer of at least USD 88,000. As an alternative option, the Respondent proposed licensing exclusive use of the disputed domain name for USD 2,000 per month for a term of 48 months.

The Complainant also states that a subsequent, anonymous, offer to purchase the disputed domain name from the Respondent for the amount of USD 1,000 was made by the Complainant’s solicitors on July 15, 2015, but was rejected by the Respondent since it was considered too low.

In view of the above, the Complainant concludes that the Respondent registered the disputed domain name in bad faith and that there is no bona fide use of the disputed domain name as the Respondent acquired it for the sole purpose of selling or leasing it to third parties and the price requested is excessive and exceeding the out-of-pocket costs related to the disputed domain name.

B. Respondent

The Respondent states that its registration of the disputed domain name predates the Complainant’s claimed 2000 first use date of the “New Forests” designation by the Complainant’s predecessor-in-title by at least one year, and predates the Complainant’s apparent corporate formation and claimed first use of the “New Forests” designation by at least six years.

The Respondent states that it has since 1999 provided Internet advertising, web site construction and hosting, media and advertising, domain name leasing, and related services to its costumers. With specific reference to its advertising services, the Respondent asserts that users may purchase advertisements to be placed on one or more of the Respondent’s network of web sites, based upon relevance of a particular client’s goods or services.

The Respondent claims that, as part of its business, it owns a number of domain names that incorporate descriptive or generic words, and that it has no intent to infringe or trade upon any third party trademark rights.

The Respondent contends that the disputed domain name consists primarily of the term “New Forests” which commonly refers to a breed of horse or pony, and alleges that the disputed domain name is one of the several horse-related domain names that have been owned for many years by the Respondent, that are being used to sell advertising on the correspondent horse-related web sites.

As to the use of the disputed domain name, the Respondent states that it has published on the correspondent web site advertising and information relating to the sale of horses, equestrian property, horse training and boarding services, equine farm equipment and other similar goods and services, but has never included any reference to the Complainant and its services.

The Respondent alleges that it did not publicly offered the disputed domain name for sale or lease prior to 2015 and that a notice informing that the disputed domain name was offered for sale was published on the web site at the disputed domain name only in January 2015, after receipt of the Complainant’s unsolicited offers.

The Respondent denies confusing similarity between the disputed domain name and the trademark NEW FORESTS, stating that there is not even a remote likelihood that consumers will, upon reaching the Respondent’s site, be confused as to whether there is any association between the Respondent’s horse-related advertising web site and the Complainant’s real asset investment management services.

The Respondent further asserts that, despite having coexisted for at least ten years, the Respondent is not aware of a single inquiry by anyone who was confused as to whether there was an association between the Respondent and the Complainant or their respective web sites or services.

The Respondent claims a legitimate interest in the disputed domain name stating that it purchased the disputed domain name before the claimed first use of the trademark NEW FORESTS by the Complainant or its predecessor-in-title and has used it with a bona fide business endeavor, as the Respondent is in the business of offering Internet advertising and related services, including through a network of topically-named domain names, and has used the disputed domain name in connection with a web site offering horse-related advertisement and information without making reference to the Complainant and its services.

The Respondent further states that it’s declared willingness to sell the disputed domain name after being contacted by the Complainant does not negate the Respondent’s legitimate interest in the disputed domain name.

The Respondent denies the Complainant’s allegations as to the Respondent’s bad faith, stating that it registered the disputed domain name without any knowledge of the Complainant or its predecessor-in-interest. It reiterates that the disputed domain name consists of the common name for a breed of horse and that the Respondent’s registration was for use in the Respondent’s Internet advertising business.

The Respondent denies to have registered the disputed domain name for the purpose of selling or leasing it to the Complainant or any third party owning prior trademark rights and also denies that the Respondent’s refusal to sell the disputed domain name for the price offered by the Complainant might be indicative of bad faith.

The Respondent further argues that the Complainant’s delay of many years in filing the Complaint weighs against the transfer.

The Respondent requests that the Panel make a finding of Reverse Domain Name Hijacking since the Complainant must have known that it could not establish any bad faith registration and has failed to show the Respondent’s intention to use the disputed domain name for any purpose other than to provide a forum through which paying clients can advertising horse or equestrian related goods or services. The Respondent thus concludes that the Complainant has brought this action in bad faith to deprive the Respondent of its legitimate rights in the disputed domain name and to harass the Respondent.

C. Complainant’s Supplemental Filing

The Complainant submitted a Supplemental Filing to respond to certain allegations made in the Response.

As the Respondent contended that the Complainant did not substantiate whether the trademark rights in NEW FORESTS arose from use by the Complainant since 2005 or use by its predecessor-in-title, the Complainant annexed a copy of the statutory declaration of the Complainant’s Chief Executive Officer dated July 23, 2015 and a news release dated July 1, 2005 where it is stated, in the final paragraph of the first page, that the “New Forests Program” was established “almost five years ago”.

The Complainant contends that, since the disputed domain name ends with the letter “s”, it does not refer to New Forest ponies or horses as the breed name “New Forest” is not in the plural as it derives from the area of New Forest in Hampshire, England. The Complainant also states that the Respondent is not limiting its advertising on its site to New Forest horses or ponies, as the majority of the listings are directed at other advertising that include those related to the sale of equestrian facilities, books and a dog grooming, boarding and animal care facility.

The Complainant alleges that the Respondent’s business model involves a vast array of domain names and contends that allowing such extensive caches of domain names to remain with one registrant, thereby locking out legitimate trademark owners, is against good public policy and ought not to be rewarded.

The Complainant further asserts that the Respondent is not known as or under the name “New Forests” but trades as “Global Advertizing” and has no trademark rights in NEW FORESTS. It also reiterates that the Respondent’s request of USD 88,000 highlights the Respondent’s bad faith.

The Complainant also requests that the Respondent’s counterclaim that the Complainant is engaging in Reverse Domain Name Hijacking be rejected, stating that the Complainant has built up both common law and unregistered rights in the trademark NEW FORESTS while the Respondent does not have such rights, and has engaged in parasitic behavior to obtain a financial benefit for the transfer of the disputed domain name that is far beyond the commercial value of the disputed domain name to the Complainant.

D. Respondent’s Supplemental Filing

The Respondent states that the Complainant’s Supplemental Filing should be disregarded since the Complainant has not identified any good cause or exceptional circumstances to support its late, unsolicited submission, nor has the Complainant submitted any new information that could not have been included in the Complaint.

The Respondent further asserts that, even if considered by the Panel, the Complainant’s submissions do not support transfer, since they do not demonstrate that the Respondent registered the disputed domain name with the purpose of infringing or trading upon the trademark rights of the Complainant or any third party or for an unlawful purpose.

As to the Complainant’s argument that the Respondent’s registration amounts to bad faith since it includes the plural of the descriptive term “new forest”, the Respondent states that such assertion is unsupported by any evidence and that the plural of a descriptive or generic term is just as descriptive or generic as the singular.

The Respondent also underlines that the mere registration of multiple domain names comprised of generic or descriptive words without the intent to trade upon any conflicting third party rights does not establish bad faith under the Policy.

The Respondent concludes that the Complainant’s persistence in pursuing the Complaint despite the undisputed evidence that the Respondent did not register the disputed domain name in bad faith evidences the Complainant’s own bad faith and abuse of the UDRP process.

6. Discussion and Findings

A. Preliminary issue: the Parties’ Supplemental Filings

According to the consensus view of UDRP panels as summarized in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.2, it is in the panel’s discretion whether to accept Supplemental Filings, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. The party submitting the Supplemental Filing would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response. In addition, most UDRP panels that have allowed unsolicited Supplemental Filings have also tended to require some showing of “exceptional” circumstances.

The Panel has reviewed the Supplemental Filings of the Parties and has determined that they are irrelevant to decide the present case save to the extent that they deal with the Respondent’s allegation that the Complainant has been guilty of Reverse Domain Name Hijacking.

As to the rest, the Complainant has failed to raise any circumstance that could justify a supplemental submission, such as new evidence that the Complainant could not reasonably have known at the time of the filing of the Complaint or other exceptional circumstances.

It is important to note that the purpose of the Policy and Rules is to provide an expeditious and relatively inexpensive procedure for determining a certain type of domain name dispute, in which each party is entitled to make only one submission. As highlighted, amongst others, in The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447, “the admission of a further submission from one party may lead the other party to submit a further document in reply, which may lead to a further submission by the first party, and so on, thereby compromising the procedural economy sought to be established by the Policy and the Rules”.

Accordingly, save to the extent that the Complainant’s Supplemental Filing seeks to address the issue of Reverse Domain Name Hijacking, the Panel has ignored the Parties’ Supplemental Filings.

In any event, had the Panel considered these they would not have changed the outcome of the Decision.

B. Identical or Confusingly Similar

In this case, the Complainant does not rely on any registered trademark. As highlighted in the paragraphs above, the Complainant has filed trademark applications for NEW FORESTS and NEWFORESTS & device in Australia in February 2015, and, in August 2015, filed an application under the Madrid Protocol to extend protection of the Australian trademark NEWFORESTS & device to China, Switzerland, United States of America, the European Union, Japan and New Zealand.

As consistently found in prior UDRP decisions, the ownership of trademark applications does not fulfill the requirement prescribed by paragraph 4(a)(i) of the Policy.

However, in order to successfully establish rights in a trademark, a complainant can assert common law rights or unregistered trademark rights, substantiating its claim with adequate evidence to show that the name on which it relies has become a distinctive identifier associated with the complainant or its goods or services.

As stated in paragraph 1.7 of the WIPO Overview 2.0, “relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant’s rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required. Some panels have also noted that in cases involving claimed common law or unregistered trademarks that are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness. Some panels have noted that the more obvious the viability of a complainant’s claim to common law or unregistered trademark rights, the less onus there tends to be on that complainant to present the panel with extensive supporting evidence. However, unless such status is objectively clear, panels will be unlikely to take bald claims of trademark fame for granted”.

In the case at hand, based on the statements submitted by the Complainant and the supporting documents attached to the Complaint as highlighted in section 5A, the Panel finds that, for the purpose of this proceeding, the Complainant has established common law rights in the trademark NEW FORESTS for real assets investments in Australia.

The Panel notes that most of the relevant material submitted, such as press releases, brochures and reports are dated in the years 2014 or 2015, although they mention that the first use of the mark by the Complainant dates back to January 2005.

However, determining the date from which the Complainant can claim common law rights is not relevant for the purpose of assessing the requirement prescribed by Paragraph 4(a)(i) of the Policy since, as highlighted in paragraph 1.1 of the WIPO Overview 2.0, “if the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights. The location of the trademark, its date of registration (or first use)…and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP. However, such factors may bear on a panel’s determination whether the respondent has registered and used the domain name in bad faith under the third element of the UDRP”.

The Panel notes that the disputed domain name incorporates the trademark NEW FORESTS in its entirety, and the addition of the Top-Level suffix “.com”, which may be disregarded in the test for identity or confusing similarity being a mere technical requirement of registration.

In view of the above, the Panel finds that the Complainant has demonstrated that the disputed domain name is identical to a trademark in which the Complainant has rights according to paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interest

In light of the Panel’s finding under section 6D below, it is unnecessary for the Panel to address this element.

D. Registered and Used in Bad Faith

As mentioned in the earlier paragraphs, the disputed domain name was registered by the Respondent on January 28, 1999.

The Complainant stated that the trademark NEW FORESTS has been used by the Complainant since 2005 and by its predecessor-in-title since 2000. The Complainant argues that the Respondent registered the disputed domain name in bad faith as the disputed domain name is offered for sale, the correspondent web site is unconnected to New Forest horses, the web site content has changed from time to time and the Respondent rejected the Complainant’s offer to purchase the disputed domain name.

The Panel finds that the Complainant has failed to demonstrate how the Respondent could have had knowledge of the Complainant and its trademark at the time of the registration of the disputed domain name since, according to the documents and statements submitted by the Complainant, both the Complainant and its predecessor-in-title did not even exist and the trademark was not yet in use at that time.

Moreover, it is not as if there is anything in the evidence supplied by the Complainant to demonstrate that the Respondent might have had the Complainant in mind at any stage prior to the Complainant’s first attempt to purchase the disputed domain name from the Respondent.

In the circumstances of this case, the Panel finds that the Respondent’s request, in reply to the Complainant’s unsolicited inquiry, of an amount over the out-of-pocket costs for transferring the disputed domain name, is not sufficient to demonstrate that the Respondent registered the disputed domain name in bad faith with the intention to sell it to the Complainant. In the absence of any evidence to suggest that the Respondent registered the disputed the domain name for that purpose, the sale price sought by the Respondent is of no relevance however excessive it might seem to be.

In view of the above, the Panel finds that the Complainant has failed to demonstrate that the disputed domain name was registered and used by the Respondent in bad faith.

7. Reverse Domain Name Hijacking

Paragraph 15(e) of the Rules provides that, 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". Reverse Domain Name Hijacking is defined under the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”.

In Jazeera Space Channel TV Station v. AJ Publishing aka Aljazeera Publishing, WIPO Case No. D2005-0309, the majority of the three-member panel noted that “Allegations of reverse domain name hijacking have been upheld in circumstances where a respondent’s use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy (see Goldline International, Inc v. Gold Line, WIPO Case No. D2000-1151). See also Deutsche Welle v. DiamondWare Limited, WIPO Case No. D2000-1202, where an allegation of reverse domain name hijacking was upheld in circumstances where the complainant knew that the respondent used the at-issue domain name as part of a bona fide business, and where the registration date of the at-issue domain name preceded the dates of the complainant’s relevant trademark registrations. The three-member panel in Yell Limited v. Ultimate Search, WIPO Case No. D2005-0091 noted that whether a complainant should have appreciated at the outset that its complaint could not succeed, will often be an important consideration”.

In the case at hand, the Panel considers that the Complainant is represented by a Counsel who knew or should have known, at the time of the filing of the Complaint, that it could not prove at least one of the essential elements required by the Policy, namely the Respondent’s bad faith registration, as the Respondent’s registration of the disputed domain name predates the creation and first use of the Complainant’s trademark. Moreover, the Complaint does not even address the disparity in dates, merely mentioning that the trademark was used by the Complainant’s predecessor-in-title since 2000, i.e., one year after the registration of the disputed domain name.

Furthermore, there is no indication, also in the pre-complaint correspondence exchanged between the Parties, that the Respondent might have expressly intended to target the Complainant’s trademark, and it appears that the Complaint was filed in an attempt to obtain the transfer of the disputed domain name from the Panel after the Complainant’s negotiations with the Respondent were unsuccessful.

As found in Proto Software, Inc. v. Vertical Axis, Inc/PROTO.COM, WIPO Case No. D2006-0905, “Initiating domain name dispute resolution proceedings necessarily involves putting the parties to a considerable expenditure of time and in many cases cost and the Policy must not be used unless the complainant has a reasonable and credible belief it is entitled to succeed. In particular, proceedings must not be commenced in a brash and totally unjustifiable attempt to pressure a domain name owner into releasing a legitimately held domain name that considerably pre-dates any trademark rights held by the complainant, see Sustainable Forestry Management Limited v. SFM.com and James M. van Johns ‘Infa dot Net’ Web Services, WIPO Case No. D2002-0535”.

In view of the above, the Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

8. Decision

For the foregoing reasons, the Complaint is denied.

Luca Barbero
Presiding Panelist

David Stone
Panelist

Tony Willoughby
Panelist
Date: November 13, 2015