WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tinynova LLC v. Chris Edwards, Orion Interactive
Case No. D2016-0804
1. The Parties
The Complainant is Tinynova LLC of Seattle, Washington, United States of America ("United States"), represented by Stanton T. Mathews and Associates, United States.
The Respondent is Chris Edwards, Orion Interactive of Pacific Pines, Queensland, Australia.
2. The Domain Name and Registrar
The disputed domain name <backit.com> 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 April 22, 2016. On April 22, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 25, 2016, 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 Complainant sent a further communication to the Center on April 28, 2016, to correct an administrative formality regarding the Respondent's corporate identity.
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 April 29, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 19, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 20, 2016.
The Center appointed Luca Barbero as the sole panelist in this matter on May 26, 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
The Complainant is the owner of the United States trademark registration No. 4868167 for BACKIT (figurative mark), filed on November 2, 2014 and registered on December 8, 2015 for "Consulting services in the field of software as a service (SAAS); Software as a service (SAAS) services featuring software for public investing and donations, and gathering, processing and use of analytical data to connect interested parties with another" in international class 42. According to the description of the mark published in the trademark records, the trademark "consists of the term 'BACKit' wherein the 'K' is formed by nesting chevrons".
The disputed domain name <backit.com> was registered on December 18, 2000. At the time of the drafting of the decision, the disputed domain name is pointed to a web page where a statement informs users that the site is not currently available.
5. Parties' Contentions
The Complainant relies on its United States trademark registration for BACKIT and states that, where the Complainant owns a trademark, it generally satisfies the threshold requirement of having trademark rights.
The Complainant describes a bad faith conduct as the one which "unfairly frustrates an agreed common purpose and disappoints the reasonable expectations of other third parties thereby depriving them of the benefits of the common agreement".
The Complainant claims that the Respondent's bad faith can be inferred from its lack of active use of the disputed domain name since the registration in 2000. The Complainant asserts that it attempted to contact the Respondent by phone and email without success and that it also requested the Registrar's help in contacting the Respondent, who "sometime after parking the domain name disappeared from all usual and customary means of contact".
The Complainant further alleges that the Respondent has breached the registration agreement since it has failed to provide updated contact details in the WhoIs records.
The Complainant concludes that, as a consequence of the Respondent's retention of the disputed domain name with no active use since its registration, the Complainant cannot move forward with the commercial use of the disputed domain name "under this cloud of uncertainty".
The Complainant also claims to have made a prima facie case and requests the panel to shift the burden of production to the Respondent to come forward with appropriate allegations or evidence demonstrating by a preponderance of the evidence that all allegations are untrue.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable". Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided evidence of ownership of a United States trademark for BACKIT (figurative mark), filed on November 2, 2014, and registered on December 8, 2015, for consulting and software-related services in International class 42.
As stated in paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), ownership of a trademark generally satisfies the threshold requirement of having trademark rights, the location of the trademark, its date of registration, and the goods and/or services for which it is registered being irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP.
In addition, as indicated in paragraph 1.11 of the WIPO Overview 2.0, figurative, stylized or design elements in a trademark are typically disregarded for the purpose of assessing identity or confusing similarity, being generally incapable of representation in a domain name.
The Panel notes that the disputed domain name incorporates the denominative part of the mark BACKIT in its entirety, with the mere addition of the generic Top-Level Domain suffix ".com", which can be disregarded being a mere technical requirement of registration.
Therefore, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar a trademark (BACKIT) in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
In light of the Panel's findings below, it is not necessary to address the issue of whether the Respondent has rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Panel finds that the Complainant has not proven that the Respondent was or could have been aware of the Complainant's trademark at the time of registration of the disputed domain name. Indeed, the disputed domain name was registered in 2000, i.e.,fourteen years before the filing of the Complainant's trademark in the United States, and the Complainant has not provided any evidence to demonstrate its use of the trademark BACKIT at any time prior to its trademark registration.
Furthermore, the disputed domain name is currently not actively used and there is no evidence that the Respondent might have registered it with the intention to sell it to the Complainant, to prevent it from reflecting its mark in a corresponding domain name or to derive profit from any potential confusion with the Complainant.
In view of the above and of the nature of the Complainant's mark, which is constituted of two dictionary words in a stylized format, the Panel finds that the Complainant has not proved on the record before the Panel that the Respondent has intended to take, or actually has taken, advantage of the disputed domain name for its significance in relation to the Complainant's trademark.
Therefore, the Panel finds that the Complainant has failed to prove that the disputed domain name was registered and is being used by the Respondent in bad faith.
For the foregoing reasons, the Complaint is denied.
Date: June 10, 2016