WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tip Vy Spots LLC Vy v. Super Privacy Service c/o Dynadot
Case No. D2016-0872
1. The Parties
Complainant is Tip Vy Spots LLC Vy ("Complainant") of Wilmington, Delaware, United States of America, represented by Scherrer Patent & Trademark Law, P.C., United States of America.
Respondent is Super Privacy Service c/o Dynadot ("Respondent") of San Mateo, California, United States of America, represented by John Berryhill, Ph.D., Esq., United States of America.
2. The Domain Name and Registrar
The disputed domain name <reveel.com> is registered with Dynadot, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 29, 2016. On May 2, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 4, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 24, 2016. The Response due date was extended through May 28, 2016. The Response was filed with the Center on May 28, 2016.
The Center appointed Michael A. Albert, Barbara A. Solomon, and Richard G. Lyon as panelists in this matter on June 23, 2016. 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 is the owner of U.S. Trademark Registration No. 4,933, 647 for the word mark REVEEL ("REVEEL mark") which registration issued April 5, 2016. Complainant uses the REVEEL mark in connection with "computer software that, based on geographic location, is used for the purposes of driving off-line retail traffic in the nature of physical visits to retail locations, and for e-commerce in the nature of allowing users to perform electronic business transactions via a global computer network."
Respondent through Dynadot, a privacy service, owns the disputed domain name <reveel.com>. The domain name was originally purchased by Respondent on February 19, 2014 and transferred to the Registrar on January 8, 2015.
On July 5, 2016, Complainant submitted a supplemental filing. On July 6, 2016, Respondent submitted an email, asking for an opportunity to respond should Complainant's supplemental filing be admitted. The Center advised the parties that it would refer the supplemental filings to the Panel, which would consider whether or not to allow them. The Panel declines to admit Complainant's supplemental filing as either re-argument of matters asserted in the Complaint or as material that could have been included with the Complaint, noting that nothing in such filing would alter its Decision. In these circumstances Respondent's request to file its supplemental filing is denied as moot.
5. Parties' Contentions
A. Complainant
Complainant contends the disputed domain name <reveel.com> is identical or confusingly similar to its REVEEL mark.
Respondent does not have, nor has it ever had, authorization to use Complainant's REVEEL mark. Respondent does not use the disputed domain name <reveel.com> in connection with a bona fide offering of goods or services, and has registered the domain as a parked site. As such, Respondent has not acquired any trademark or service mark rights in the REVEEL mark.
Respondent has registered the disputed domain name <reveel.com> in bad faith. Respondent knew of the existence of Complainant's trademark when Respondent registered the disputed domain name <reveel.com> with Dynadot on January 8, 2015, violating paragraph 2 of the Policy. Therefore, Respondent acted in bad faith. Respondent also acted in bad faith under paragraph 4(b)(i) of the Policy, as Respondent registered the disputed domain name <reveel.com> for the primary purpose of selling, renting, or otherwise transferring the disputed domain name to Complainant, or potentially to a competitor of Complainant, for consideration in excess of documented out-of-pocket costs. On November 11, 2014, Complainant offered to purchase the disputed domain name <reveel.com> for USD 350 and the owner countered with USD 120,000. On February 8, 2015, after the transfer of the registration of disputed domain name <reveel.com> to a new registrar Complainant attempted again to purchase the disputed domain name and was countered with an asking price of USD 500,000. Respondent intends to commercially gain from the disputed domain name <reveel.com> in which it has no rights, and, as such, Respondent has acted in bad faith.
Complainant requests the disputed domain name <reveel.com> be transferred from Respondent to Complainant.
B. Respondent
Complainant claims to be a Delaware entity with an address corresponding to the Corporation Service Company of Wilmington, Delaware. However, Complainant does not appear to exist. Respondent conducted searches with the Delaware Secretary of State and found no entity with the name "Tip Vy Spots LLC Vy." Similarly, Complainant's counsel is the counsel of record for an Illinois entity with the name "Tip CW LLC Vy." This entity is the registered owner of U.S. Trademark Registration No. 4,948,196 ("CONTENT WINDOW"), but a similar search with the Illinois Secretary of State produces no results. Complainant is non-compliant with the Policy. If Respondent wished to file suit against "Tip Vy Spots LLC Vy" and served Complainant's registered agent in Delaware or the Delaware Secretary of State, such suit, and service thereof would be ineffective as to a non-existent party. Further, there is no party to whom the Panel may order transfer of the disputed domain name <reveel.com> as the Panel cannot adjudicate the claims of, nor order the transfer of the domain name to a nullity. Therefore, the present claim on behalf of a non-entity is void as it is non-compliant with the UDRP.1
Respondent is a partnership of two individual residents of the United States who have been doing business since 2010 pursuant to a written partnership agreement. Respondent declines to identify itself, claiming that it should not need to do so in response to an "invalid claim" brought by a "non-entity". It relies on provision 3.7.7.3 of the ICANN Registrar Accreditation Agreement.
Respondent contends that Complainant provides no information about itself, its products or services, its market recognition, or any other evidence of trade or service mark rights in <reveel.com> other than citing U.S. Trademark Registration No. 4,933,647 which issued thirteen days before the Complaint filed in this proceeding. The application of the aforementioned REVEEL mark was filed on an intent-to-use basis on December 22, 2014, and amended to claim a "first use" date of June 13, 2014. Complainant provides no evidence of common law use or rights prior to the date of issuance of its trademark registration in April 2016.
Respondent contends it has legitimate rights and interests in the disputed domain name <reveel.com> because its purchase of the disputed domain name on February 19, 2014, along with domain names <revealy.com> and <revele.com> constitutes a hedge against future typosquatting. Respondent asserts that it does not offer, pass off as, or conduct any trade in anything resembling Complainant's business of geographic location-driven e-commerce software.
Respondent claims there can be no finding of bad faith because the registration of the disputed domain name precedes any claim of right by Complainant. Respondent notes that Complainant attempted to purchase the disputed domain name <reveel.com> through an intermediary, GoDaddy, and as such, Respondent would not have been aware that Complainant was the entity attempting to purchase the disputed domain name <reveel.com>, and thus the replies could not have been premised on any "knowledge" of a trademark. Finally, Respondent asserts that Complainant has not demonstrated any enforceable right prior to April 5, 2016 of which Respondent had any reason to know.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to "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 requires that Complainant prove each of the following three elements to obtain an order that a domain name be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant's federal trademark registration sufficiently establishes its rights in the REVEEL mark pursuant to paragraph 4(a)(i) or the UDRP. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (FORUM Aug. 4, 2015) (finding that Complainant's USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy paragraph 4(a)(i).).
Under paragraph 4(a)(i), the disputed domain name <reveel.com> is identical or confusingly similar to Complainant's REVEEL mark because it contains the identical mark, with only the addition of the generic Top-Level Domain (gTLD) name ".com". See Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503.
Complainant has therefore shown the disputed domain name <reveel.com> is identical or confusingly similar to Complainant's REVEEL mark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out, without limitation, circumstances which, if proved, establish a registrant's rights or legitimate interests to a disputed domain name. Under the Policy, legitimate interests in a domain name may be demonstrated by showing: (i) before any notice of this dispute, Respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; (ii) Respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or (iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue. Policy 4(c) (emphasis added).
Prior to this dispute, Respondent had not used or prepared to use the disputed domain name in connection with an offer of goods or services nor had Respondent been commonly known by the disputed domain name. Indeed, Respondent concedes it is not, nor has it ever been, known by the name REVEEL. Instead, Respondent has owned the domain name <reveal.com> (under that spelling) since it purchased it for nearly USD 30,000 in 2012.
Respondent points to the purchase of other similar domain names, such as <revealy.com> and <revele.com> as evidence of its, Policy of buying domain names that are homophonically identical or similar and typographically similar to a primary domain name. While such protective domain name acquisition is understandable, it does not itself confer the kinds of rights or legitimate interests that would arise from a "bona fide offering of goods or services" or from "legitimate noncommercial or fair use" of the domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") paragraph 2.6; seealso Trade Me Limited v. Vertical Axis Inc., WIPO Case No. D2009-0093.
That said, as discussed below, Respondent appears to have registered the disputed domain name before Complainant established any rights. If so, it would seem that Respondent had a legitimate interest in registering the disputed domain name, given that it appeared to be available and not in violation of any rights of which Respondent had reason to be aware. Moreover, the protective reason for registering it offered by Respondent is plausible and adds to the apparent legitimacy of its claim.
Accordingly, Complainant has failed to establish that Respondent lacked rights or legitimate interests in the disputed domain name <reveel.com>.
C. Registered and Used in Bad Faith
Complainant's REVEEL trademark registration issued in April 2016. The latest date on which Complainant asserts Respondent engaged in bad-faith registration is January 2015 – the date Respondent transferred the disputed domain name to the new registrar Dynadot. Indeed, the disputed domain name was likely acquired much earlier, as set out in the Response; but even the January 2015 date predates the earliest date as of which Complainant has proven rights in the REVEEL mark.
Complainant alleges actual use going back to June 2014, but offers no evidence to support that date of first use. Indeed, official trademark databases reflect one specimen of use dated January 16, 2016, well after the latest date for measuring bad faith. See Sensis Pty Ltd., Telstra Corporation Limited v. Yellow Page Marketing B.V., WIPO Case No. D2011-0057; WIPO Overview 2.0 paragrap 4.5.
In sum, the disputed domain name <reveel.com> was registered by Respondent before Complainant's relied-upon trademark right in the REVEEL mark is shown to have been first established. Therefore Respondent could not have contemplated Complainant's then non-existent right, and the registration of the domain name <reveel.com> cannot have been in bad faith. See WIPO Overview 2.0 paragraph 3.1; Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827.
The only evidence offered under paragraph 4(b)(i) of the Policy on the issue of bad faith is an email in which Respondent replied to an offer to purchase the disputed domain name <reveel.com> initiated by Complainant (with no claim of trademark right) with an offer in excess of what the Complainant wished to pay. But mere negotiations over the possible purchase or sale of a domain name, without more, do not ipso facto establish bad faith (particularly when Complainant, not Respondent, initiates the negotiation).
In sum, Complainant has failed to establish bad faith.
7. Decision
Complainant having failed to establish two of the three factors required under the Policy, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel decides that the Complaint is denied.2
Michael A. Albert
Presiding Panelist
Richard G. Lyon
Panelist
Barbara A. Solomon
Panelist
Date: June 29, 2016
Concurring Opinion of Richard G. Lyon
I join the Panel Decision and opinion without reservation, but believe the Panel should include in the Decision a finding the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. Rules, paragraph 15(e).
Panel Initiative to Consider RDNH: "For a finding of Reverse Domain Name Hijacking ('RDNH') it is not necessary that the Respondent should have sought such a finding." Timbermate Products Pty Ltd v. Domains by Proxy, LLC / Barry Gork, WIPO Case No. D2013-1603. Rule 15(e) "specifically put[s] the burden on the Panel to determine whether a complainant has tried to use 'the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.'" Goway Travel Limited v. Tourism Australia, WIPO Case No. D2006-0344 (citation omitted). A finding may be appropriate even in a default case, see WIPO Overview 2.0, paragraph 4.17; Clearwater Systems, Inc. v. Glenn Johnson / Clear Water Systems of Remington Inc., WIPO Case No. D2014-0878.
A respondent is concerned primarily with winning his case and keeping his domain. A panel bears broader responsibilities. One of these is to preserve the integrity of the entire UDRP process. Another is to call out irresponsible behavior by a complainant. And a third is to identify blameworthy conduct for the benefit of future panels and thus create Policy precedent. When the Rules require a panel to examine the record for abuse, I see no reason for a panel to superimpose a requirement that a respondent expressly request a finding. That condition will frustrate rather than promote full and fair consideration of all issues in a case. Who knows, the proper finding in the proper case might even deter future abuses.
This Case. The Complaint in this case lays out several circumstances that warrant a finding of abuse. I would make these three findings, each of which standing alone has been held sufficient for a finding of abuse, even if no Response had been filed:
- "Ordinarily if the face of the complaint itself demonstrates a settled reason why the complaint must be denied, a panel may make a finding of RDNH." Tarheel Take-Out, LLC v. Versimedia, Inc., WIPO Case No. D2012-1668, citing Liquid Nutrition Inc. v. liquidnutrition.com/ Vertical Axis Inc., WIPO Case No. D2007-1598.
- The Complainant, which is represented by counsel, has not even tried to explain why ordinary precedent should not apply, which is directly contrary to its undertaking (Complaint paragraph 21, required by Rule 3(b)(xiii)) "that the assertions in this Complaint are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument." Coolside Limited v. Get On The Web Limited, WIPO Case No. D2016-0335.
- This is a classic "Plan B" case – using the Policy to harass after receiving an offer deemed excessive. See Patricks Universal Export Pty Ltd. v. David Greenblatt, WIPO Case No. D2016-0653.
As argued by the Respondent, "the Complainant admits it was aware of the Respondent's registration of the domain name prior to having filed the intent-to-use trademark registration application on which the Complainant's entire claim of rights is premised. This is not a domain name that was registered to exploit a trademark, it is a trademark claim that was ginned up, fictionally, for the purpose of obtaining a domain name. It is the literal meaning of Reverse Domain Name Hi-Jacking" (emphasis deleted). That is another reason for a finding of abuse.3
In the words of the WIPO Overview 2.0, paragraph 4.17, this is a case in which "the complainant in fact knew or clearly should have known at the time that it filed the complaint that it could not prove one of the essential elements required by the UDRP."
Richard G. Lyon
Panelist
1 Respondent raises complicated and serious issues regarding the Complainant's bona fides, even challenging its very existence. Whether there is credence to these charges, it goes beyond the limited jurisdiction of this Panel to resolve issues of corporate identity. In any event, in view of the ultimate decision of the Panel which turns on other grounds, it is not necessary to reach this question.
2 The Concurring Panelist would find reverse domain-name hijacking. While we share his view that the record raises concerns about possible abuses, we do not read the Response as expressly requesting such a finding. Inasmuch as proceedings under the Policy are adversarial and party-driven, we believe it is not up to the panel to make findings not expressly requested by a party.
3 Some might deem this paragraph a request for an RDNH finding.