WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Soda LLC v. SIMPLEDOLLAR.COM
Case No. D2016-0038
1. The Parties
Complainant is Soda LLC of Seattle, Washington, United States of America, represented by DuBois, Bryant & Campbell, LLP, United States of America.
Respondent is SIMPLEDOLLAR.COM of Foster City, California, United States of America, represented by Brinks Hofer Gilson & Lione, United States of America.
2. The Domain Name and Registrar
The disputed domain name <simpledollar.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 8, 2016. On January 8, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amended Complaint on January 15, 2016.
The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on January 19, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 8, 2016. The Response was filed with the Center on February 7, 2016.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on February 12, 2016. 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 is the owner of the domain name, <thesimpledollar.com>, as well as the website to which this domain name resolves, which focuses on providing information and resources concerning personal finance. Complainant and its predecessor, Mr. Trent Hamm, have continuously used this domain name since early 2006 for a website focused on personal finance. On December 9, 2011, Complainant acquired the <thesimpledollar.com> domain name and all goodwill associated with it and the related website from Mr. Hamm, who continues to work with Complainant, providing content for the site related to credit, debt, insurance, banking and investing.
All of Complainant’s services are offered through the domain name, <thesimpledollar.com>. Complainant has developed a large following for its site, averaging over 2 million visitorsper month. Complainant has also received recognition for the services provided through its site in media publications such as Kiplinger, The Chicago Tribune, The Guardian, and Inc. Magazine, and has been selected as one of only four content partners for Google’s new “Expert Answers” product in the areas of credit cards and mortgages. Complainant also has a presence on social media sites such as Facebook (“www.facebook.com/TheSimpleDollar”), Twitter (“www.twitter.com/TheSimpleDollar”), Linked In (“www.linkedin.com/company/the-simple-dollar”) and other social media sites.
The Domain Name was registered by Respondent on February 16, 2000.
5. Parties’ Contentions
(i) Identical or confusingly similar
Complainant contends that it has established rights in its unregistered, common law mark, THE SIMPLE DOLLAR. In particular, Complainant maintains that through its significant efforts, skills and experience, it has acquired and enjoys substantial goodwill and reputation in its THE SIMPLE DOLLAR mark. Complainant states it has acquired common law rights because of the length of time it has operated its website at <thesimpledollar.com>; the vast, unique and high quality personal finance resources available through this site; its large following of two million visitors per month and widespread media recognition; and the significant amount of time and money Complainant has expended to advertise and promote its services through its THE SIMPLE DOLLAR common law mark. Complainant urges that its continuous usage of this mark for over nine years has resulted in substantial goodwill and has caused the mark to become a significant asset of Complainant.
Complainant further contends that the WIPO Final Report on the Internet Domain Name Process (The Management of Internet Names and Address: Intellectual Property Issues, April 1999), from which the Policy was derived, does not distinguish between registered and unregistered trademarks, and that it is well established that unregistered common law rights in a mark will suffice for purposes of the Policy. It is enough that a complainant shows that a mark or name has become a distinctive identifier associated with that complainant or its goods and services. Such evidence includes, amongst other things, the length of use of the mark, the nature and extent of any such use in advertising, and media recognition.
Complainant asserts that, except for the addition of the article “the”, the Domain Name <simpledollar.com> is phonetically identical to Complainant’s THE SIMPLE DOLLAR mark. Prior panels have consistently held that the mere addition or deletion of the article “the” is not enough to overcome a finding of confusing similarity pursuant to the Policy. Further, users of the Domain Name would likely perceive that the registrant of the Domain Name is an affiliate or successor of Complainant. Consumers who are searching for Complainant’s home page may enter “simpledollar.com” in an effort to reach Complainant’s home page. The Domain Name does not resolve, and to Complainant’s knowledge never has resolved, to an active website. Consumers who search for “simpledollar.com” and arrive at an inactive website, as is currently the case, might conclude that Complainant’s site is no longer active, when that is not the case. As a result, consumers are likely to be confused as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. For these reasons, Complainant has met its burden in demonstrating that the Domain Name is confusingly similar to Complainant’s THE SIMPLE DOLLAR mark as required under Policy paragraph 4(a)(i).
(ii) Rights or Legitimate Interests
Complainant states that it must make a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name under the Policy, paragraph 4(a)(ii). Then the burden of production shifts to Respondent to establish that it has rights or legitimate interests in the Domain Name. Complainant asserts that the arguments above establish Complainant’s prima facie case that Respondent lacks rights in the THE SIMPLE DOLLAR mark. Further, Complainant states that Respondent has no rights or legitimate interests in respect of the Domain Name. Complainant has not licensed, permitted or authorized Respondent to use Complainant’s THE SIMPLE DOLLAR mark or any derivative thereof in connection with the Domain Name or for any other use. Respondent is not endorsed, sponsored by or affiliated with Complainant. The Domain Name does not reflect the name of Respondent’s personal identity, nor does Respondent have any rights to any trade names or trademarks consisting in whole or in part of the THE SIMPLE DOLLAR mark.
Further, Complainant states that Respondent is not making any legitimate use of the Domain Name for his own commercial or noncommercial activities. Respondent is not using the Domain Name in connection with any bona fide offering of goods or services and the Domain Name does not resolve to an active website, nor does it appear that Respondent is making any preparations to use the Domain Name. Since Respondent does not promote his own commercial activities through the Domain Name, Respondent has not been able to become known under this Domain Name. The absence of any legitimate use constitutes prima facie evidence of a lack of rights to or legitimate interests in the Domain Name.
For these reasons, Complainant argues that Respondent has no rights or legitimate interests in the Domain Name as required under Policy paragraph 4(a)(ii).
(iii) Registered and Used in Bad Faith
Complainant states that whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four non-exhaustive factors set forth in the Policy, paragraph 4(b).
Complainant contends that Respondent’s passive use of the Domain Name is evidence of usage in bad faith. There is no evidence to show that Respondent has ever used the Domain Name for any purpose. The UDRP panel in the decision, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, found that passive holding of a domain name can constitute use in bad faith. In Telstra the panel noted that the domain name in issue did not resolve to any web site or other on-line presence; there was no evidence that a site or other on-line presence was being established using the domain name in issue; there was no evidence of any advertising, promotion or display to the public of the said domain name; and finally there was no evidence that the respondent had offered to sell, rent or otherwise transfer the said domain name to the complainant, a competitor of the complainant, or any other person. Just as in the present case, no positive action was being taken by the respondent in relation to the domain name and the panel concluded that such non-use constituted bad faith.
Complainant argues that the Domain Name is being used in bad faith because the totality of the circumstances indicates bad faith. As discussed above, Respondent is not authorized or licensed by Complainant to use the Domain Name, Respondent is not affiliated, sponsored or endorsed by Complainant, Respondent’s WhoIs information does not suggest that Respondent is commonly known by the Domain Name and extensive Google searching has not uncovered any legitimate reason for Respondent to be using the Domain Name.
For the reasons discussed above, Complainant has met its burden of proving that Respondent has acted in bad faith by registering the Domain Name, as required under Policy, paragraph 4(a)(iii).
(i) Identical or Confusingly Similar
Respondent states that Complainant did not provide evidence that it owns a trademark registration and instead relies on alleged common law trademark rights as the basis for its claim. However, Respondent contends that Complainant has provided no evidence of the amount of sales under the mark, little evidence of the nature and extent of advertising, no consumer surveys, and no evidence of consumer recognition. Further, because the alleged mark consists of generic dictionary terms descriptive of Complainant’s services, a greater onus is placed on Complainant to prove unregistered rights. Without convincing evidence of consumer recognition, Complainant cannot establish such rights. Here, Complainant failed to provide evidence of consumer recognition, and thus Complainant fails to satisfy the first requirement.
(ii) Rights or Legitimate Interests
Respondent argues that under paragraph 4(a)(ii) of the Policy, Complainant must establish that Respondent has no rights or legitimate interests in respect of the Domain Name. Complainant is required to make out a prima facie case showing that Respondent lacks rights or legitimate interests. Here, Complainant has submitted no evidence to show that Respondent is not known by the Domain Name or does not have a legitimate interest in the Domain Name. Respondent asserts that the “Registrant organization” for the Domain Name, as indicated in the Domain Name’s registration, is “SimpleDollar.com”. Further, Respondent has priority of ownership dating back to February 2000 – over six years prior to Complainant’s alleged priority date. Respondent claims that its right of seniority is a recognized equitable right which previous panels have held sufficient to find that a respondent has rights to or legitimate interests in a domain name.
Respondent further contends that the boilerplate allegations of Complainant are insufficient to meet its burden. Complainant’s own evidence demonstrates that the Domain Name was registered nearly 16 years before the Complaint was filed; the Domain Name consists of two generic terms (“simple” and “dollar”); and Respondent registered the Domain Name years before Complainant could possibly have acquired rights. Respondent states that a UDRP panel in a prior similar case found complainant’s conduct so egregious that it skipped the legitimate interest factor and moved onto consider the respondent’s lack of bad faith and the complainant’s reverse domain name hijacking.
Respondent states that even if Complainant has established a prima facie case on this factor, Respondent nevertheless has a legitimate interest in the Domain Name. Respondent registered the Domain Name in February 2000. At the time, Respondent was a graduate student looking for ways to earn additional money. Respondent found different websites where he could earn money online by taking surveys or participating in other studies (for example, by watching advertisements online and providing feedback). The companies that sponsored these programs used referral codes to encourage participants to recruit others to participate in the surveys. Respondent created a website at the Domain Name that would refer visitors from his website to the websites running these surveys, using his referral code, so that he could earn additional referral money during graduate school. Evidence from the Wayback machine indicates shows the page title for his old website was “Simple Dollar World!” and the page read, “Build Up your referal [sic] network on all kind of get Paid program for FREE.” Respondent states the Domain Name was chosen (over six years before any alleged use of Complainant’s alleged mark) because the website was intended to be a “simple” method of earning an extra “dollar.” Respondent maintains this is precisely the type of use that previous panels have found to be a legitimate interest. After some time, Respondent removed the website linked to the Domain Name because he did not have time to maintain it. However, Respondent states he continued to renew the Domain Name because he thought he may use it for similar content in the future.
Respondent thus claims that before Complainant owned any trademark rights (and before any notice to Respondent of a dispute over the Domain Name), Respondent had made a bona fide offering of services at the Domain Name under a website titled “Simple Dollar World”. Complainant either failed to investigate the matter, or checked the WayBack Machine and knew that Respondent, well prior to any dispute, had an active page at the Domain Name and nevertheless filed its Complaint. Accordingly, Respondent argues that not only does Complainant fail to establish the second element of the Policy, but this element demonstrates Complainant’s bad faith in filing the Complaint.
(iii) Registered and Used in Bad Faith
Respondent states that Complainant bears the burden of showing that the Domain Name (1) was registered in bad faith and (2) is used in bad faith. Here, Respondent claims that Complainant has failed to provide evidence of either requirement. It is undisputed that the Domain Name was registered in 2000 and the earliest possible date for Complainant to have established trademark rights is 2006, if it ever has. Respondent states that the consensus view of UDRP panels is that the registration of a domain name prior to the establishment of any trademark rights could not have been made in bad faith, because the registrant could not have contemplated the complainant’s then non-existent right. In this case, Respondent registered the Domain Name at least six years prior to the alleged acquisition of any trademark rights, and for a time operated a website at the Domain Name, as described above. Accordingly, there is no bad faith registration.
Moreover, Complainant provides no evidence of bad faith use, instead relying on boilerplate assertions about Respondent’s lack of content at the website linked to the Domain Name. An inactive website located at a domain name that is composed of generic dictionary words – and registered over six years prior to Complainant’s first alleged use of its “mark” – is not use in bad faith. Accordingly, Complainant has failed to proof bad faith under the Policy.
(iv) Reverse Domain Name Hijacking (“RDNH”)
Respondent argues that Complainant is engaging in RDNH, stating that Complainant filed this case with knowledge that Respondent had registered the Domain Name in 2000. Here, Complainant knew that the Domain Name was registered prior to Complainant’s acquisition of rights, because Annex 1 to Complainant’s Complaint shows that the Domain Name was registered in 2000. Complainant’s allegation of first use of the alleged mark, THE SIMPLE DOLLAR, is over six years after Respondent registered the Domain Name. Complainant makes no effort to demonstrate any rights prior to the registration of the Domain Name in 2000. Therefore, it is impossible that the Domain Name was registered in bad faith, and Complainant must have known at the time it filed its Complaint that it could not prove an essential element of its claim. Moreover, because Respondent operated a website at the Domain Name prior to Complainant’s use of the mark, Respondent has a legitimate interest in the Domain Name. Respondent requests that the Complaint be denied and that the Panel find RDNH.
Respondent also asserts that a cursory investigation would have shown that Respondent previously had a website located at the Domain Name and thus had a legitimate interest. On similar facts, other panels have not hesitated to find that a complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. According to Respondent, evidence of Complainant’s bad faith in this case goes further. The evidence of Complainant’s webpage submitted with the Complaint shows that the mark used on Complainant’s website was THE SIMPLE DOLLAR. However, a screen capture from 2016 shows that the mark now used on Complainant’s website is SIMPLE DOLLAR. This rebranding likely drives Complainant’s desire to acquire Respondent’s Domain Name. For these reasons, the Complaint was brought in bad faith, and Respondent respectfully requests that the Panel find RDNH is present in this case.
6. Discussion and Findings
In order to succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith.
A. Identical or Confusingly Similar
The Panel must first determine whether the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), provides, in paragraph 1.7, that in order for a complainant to successfully assert unregistered trademark rights, the consensus view is that the complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such secondary meaning can include the length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. On the other hand, a conclusory allegation of unregistered rights would not normally suffice. Further, some UDRP panels have noted that in cases involving claimed unregistered trademarks that are comprised of descriptive words (and therefore not inherently distinctive), there might be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness.
Here, the evidence shows that Complainant and its predecessor have acquired unregistered trademark rights in the mark, THE SIMPLE DOLLAR, in relation to the field of finance. This finding is based on the length of time Complainant has operated its website “www.thesimpledollar.com”; the large, unique and high quality personal finance resources available through that site; and Complainant’s large following of approximately two million visitors per month and widespread media recognition.
The Panel also finds that the Domain Name <simpledollar.com> is confusingly similar to Complainant’s THE SIMPLE DOLLAR mark, with the only difference being the noun marker “the”, which is present in Complainant’s mark but not in the Domain Name.
Accordingly, the Panel finds that the Domain Name is confusingly similar to a trademark in which Complainant has rights.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the Domain Name. A complainant is normally required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel finds that Complainant made out its prima facie case in the Complaint that Respondent lacks rights or legitimate interests in the Domain Name. Respondent is not affiliated with nor authorized by Complainant to use its THE SIMPLE DOLLAR mark or to incorporate it in a domain name. There is no evidence that Respondent is commonly known by the Domain Name or that Respondent has any rights to any trade names or trademarks consisting in whole or in part of the Domain Name. Finally, Complainant showed that the Domain Name is currently inactive, does not resolve to a website, and Respondent is thus not making any legitimate use of the Domain Name for commercial or noncommercial activities.
In response to this prima facie showing, Respondent asserted that the “registrant organization” for the Domain Name, as indicated in the Domain Name’s registration, is “SimpleDollar.com”; that Respondent has an equitable right in the Domain Name due to priority of ownership dating back to February 2000, over six years prior to Complainant’s alleged priority date for its unregistered trademark; that the Domain Name consists of two generic terms, “simple” and “dollar”; and that Respondent had previously created a website linked to the Domain Name (in 2001), which was used by Respondent to earn money during graduate school by referring site visitors (using his referral code) to other websites where a user could earn money by taking online surveys. Respondent stated that he eventually removed the website linked to the Domain Name because he did not have time to maintain it, but he continued to renew the Domain Name as he might use it for similar content in the future.
The Panel finds that Respondent has gone a reasonable way toward rebutting Complainant’s prima facie case. However, on this record, the Panel nonetheless considers that it is difficult to find that Respondent has established any right or legitimate interest in the Domain Name, which has been held inactive by Respondent for many years and consists of the combination of two descriptive words, which do not refer to a trade or personal name associated with Respondent and together are confusingly similar to Complainant’s THE SIMPLE DOLLAR mark. The Panel also notes that merely listing “SimpleDollar.com” as the registrant organization does not by any stretch demonstrate that Respondent is “commonly known as” the Domain Name.
The Panel concludes that it does not have to reach a decision on the second element of the Policy because, as explained below, Complainant has failed to demonstrate that Respondent registered and has used the Domain Name in bad faith.
C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Name in bad faith. The Panel determines that Complainant has failed to establish both elements.
There is no dispute that the Domain Name was registered by Respondent years before Complainant established its unregistered trademark rights in THE SIMPLE DOLLAR mark. Further, perhaps unknown to Complainant, Respondent has provided evidence that it used the Domain Name, at least for a short period after registration, in connection with a website as described above. That use, which took place in or around 2001, took place before Complainant had acquired any unregistered rights.
Complainant has contended that the totality of the circumstances, including Respondent’s passive holding of the Domain Name, indicates bad faith in this case. The Panel disagrees. While Complainant has referred to the Telstra case, where the respondent’s passive holding of the disputed domain name was found to be in bad faith, that case is clearly distinguishable from this one. In contrast to the present case, in Telstra, the disputed domain name, <telstra.org>, was identical to the complainant’s pre-existing well-known trademark, TELSTRA; the respondent had taken active steps to conceal its true identity by operating under a name that is not a registered business name; the respondent had actively provided, and failed to correct, false contact details, in breach of its registration agreement; and it was not possible to conceive of any plausible actual or contemplated active use of the domain name by the respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the complainant’s rights in its TELSTRA mark.
Here, there was no identical or confusingly similar, pre-existing well-known mark when Respondent registered the Domain Name. Respondent has not attempted to conceal his identity or provide false contact details. And the two words comprising the Domain Name are descriptive, not distinctive as was the case for the term “telstra” (making it possible to conceive of plausible good faith uses of the Domain Name). In sum, the circumstances surrounding the passive holding by Respondent in this case differ fundamentally from those that were found to amount to bad faith in the Telstra case.
Accordingly, the Panel finds that Complainant has failed to satisfy the third element of the Policy.
D. Reverse Domain Name Hijacking (“RDNH”)
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 RDNH 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. RDNH is defined under the Rules as using the UDRP in a bad faith to attempt to deprive a registered domain name holder of a domain name.
Here, the Panel makes a finding of RDNH on the part of Complainant. Had Complainant considered prudently the elements of bad faith under the third element of the Policy, and done its homework regarding the Telstra case on which Complainant relied, Complainant should have been able to determine easily that the circumstances in this case differ fundamentally from those in Telstra, and there could be no finding of bad faith. In particular, (i) Respondent registered the Domain Name consisting of two descriptive words six years prior to Complainant’s earliest use of its unregistered THE SIMPLE DOLLAR mark, as compared to the registration of the domain name in Telstra in the face of Telstra’s pre-existing well-known TELSTRA trademark rights, and (ii) there were no indications in this case of special circumstances such as those giving rise to bad faith use in Telstra (e.g., hiding identity and using false contact details in relation to passive holding).
For the foregoing reasons, the Complaint is denied.
Christopher S. Gibson
Date: March 17, 2016