WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dividex Management, LLC v. Rory Blake
Case No. D2016-2574
1. The Parties
Complainant is Dividex Management, LLC of Westwood, Massachusetts, United States of America (“United States”), represented by BLA Schwartz, PC, United States.
Respondent is Rory Blake of Charlotte, North Carolina, United States, self-represented.
2. The Domain Name and Registrar
The disputed domain name <dividex.com> is registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2016. On December 20, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 20, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amended Complaint on January 9, 2017.
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 10, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 30, 2017. On January 11, 2017, the Center received an email communication from Respondent. The Response was filed with the Center on January 29, 2017. On February 4, Respondent sent an additional email to the Center with attached documents.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on February 3, 2017. 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 DIVIDEX mark, which was registered with the United States Trademark Office on April 19, 2016. The mark is associated with a number of uses relevant to fields such as securities and financial management. Complainant filed an intent to use application for the DIVIDEX mark in May 2013 and the first use of the mark in commerce occurred in May 2015.
In addition to the mark, Complainant owns the domain names <dividex.net> and <dividexmanagement.com>. Complainant offers various services, including business data collection, securities research, and financial analysis, through the website accessible by the following URLs: “www.dividex.net” and “www.dividexmanagement.com”.
Respondent first registered the disputed domain name <dividex.com> on October 7, 2002. On August 22, 2016, Complainant sent a letter to Respondent demanding that the domain name <dividex.com> be transferred to Complainant. Thereafter, on October 5, 2016, Respondent renewed the registration for the domain name <dividex.com>. The registration is due to expire on October 7, 2017.
5. Parties’ Contentions
Complainant alleges that the domain name <dividex.com> is identical to the DIVIDEX trademark registered to Complainant in that the domain name is a complete and exact reproduction of the mark. Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name because Respondent renewed the registration for the domain name <dividex.com> after Complainant had already registered the DIVIDEX mark and after it sent Respondent a demand letter seeking the transfer of the domain name. Moreover, Complainant asserts that the word Dividex is an arbitrary word with no meaning outside its use as an identifier of Complainant’s products and services and that Respondent is not commonly known as “dividex.com” or “dividex” and does not use the disputed domain name in connection with the bona fide offering of any goods or services.
Finally, Complaint contends that Respondent registered and renewed and is using the disputed domain name in bad faith as part of a scheme to take advantage of the good-will generated by trademark holders. According to Complainant, Respondent’s bad-faith scheme can be inferred from the fact that Respondent has registered over 100 domain names and that in May 2013, the week after Complainant filed its trademark application for the use of the DIVIDEX mark in conjunction with financial services, Respondent changed the use of the <dividex.com> domain from a site that redirected visitors to another domain <bondom.com> to a forum for pay-per-click links to financial services. Complainant also argues that Respondent’s actions surrounding the October 2016 renewal of the domain name registration support a finding of bad faith registration.
Respondent argues that the general public would not be confused between the domain names <dividex.com> and <dividex.net> as the “.com” generic Top-Level Domain is a superior designation. Respondent also claims a right to use the disputed domain name as it was registered to Respondent over a decade before Complainant’s first use of its DIVIDEX mark. Moreover, Respondent argues that the word Dividex is not merely an identifier for Complainant’s products and services. Rather, according to Respondent, the word Dividex represents a combination of diverticulitis and dexamethasone and the domain name <dividex.com> was reserved for a formulation of low dose dexamethasone for diverticulitis, which Respondent intends to develop and market in the future.
As to Complainant’s contention of bad faith registration and use, Respondent argues that Respondent could not have acted in bad faith with respect to trademark rights that did not exist at the time Respondent registered the domain name and that instead of registering the <dividex.com> domain name “along with over 100 other domain names,” as Complainant contends, Respondent only registered a single domain name (<dividex.com>) on October 7, 2002. Respondent also contends that the links accessible on “dividex.com” do not offer services that compete with Complainant’s business.
Finally, Respondent urges the Panel to make a finding of reverse domain name high jacking on the basis that the Complaint is “abusive and fraudulently motivated.”
6. Discussion and Findings
The panel has reviewed but will not consider the email and documents Respondent sent to the Center on February 4, 2017, after it submitted its response. Respondent made no request for an additional filing after it filed its response and made no effort to justify its late submission.
A. Identical or Confusingly Similar
The Panel finds that Complainant has rights in the DIVIDEX mark in view of its trademark registration. The mark is recognizable in the domain name <dividex.com>, which, in relevant part, is nearly identical to Complainant’s registered DIVIDEX mark. Further, the Panel finds that the disputed domain name is confusingly similar to the DIVIDEX mark as it incorporates the trademark fully and as the addition of the “.com” generic Top-Level Domain does nothing to ameliorate the entire reproduction of the DIVIDEX mark.
Accordingly, the Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy with respect to the disputed domain name.
B. Rights or Legitimate Interests
Because the Panel finds that Complainant has failed to satisfy paragraph 4(a)(iii) of the Policy and, thus, is not entitled to the relief sought in the Complaint, the Panel need not definitively decide whether Respondent lacks rights and legitimate interests in the disputed domain name. However, for completeness, given the inherent lack of credibility in some of Respondent’s claims as to his intended pharmaceutical use of the domain name, the Panel would likely find that Complainant has met its burden here.
C. Registered and Used in Bad Faith
The Panel finds that Complainant has not proved that Respondent registered the disputed domain name bad faith. “Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent rights.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 3.1. Here, Respondent registered the domain name <dividex.com> in 2002, more than a decade before Complainant filed an intent to use application for the DIVIDEX mark.
In its amended Complaint, Complainant did not address the consensus that “[a] mere renewal of a domain name does not amount to registration for the purposes of determining bad faith.” WIPO Overview 2.0, paragraph 3.7. Instead, Complainant relies on Eastman Sporto Group LLC v. Jim and Kelly, WIPO Case No. D2009-1688. Assuming without deciding that the Eastman Sporto facts justify departing from the consensus view, the facts here are distinguishable. The complainant in Eastman Sporto registered its marks in 1951, well before the respondent secured the disputed domain name in 1997. Here, by contrast, Complainant applied to register its mark a full decade after Respondent registered its domain name. Moreover, at the time of Respondent’s switch to alleged bad faith links in May 2013, Complainant had not started using the mark. Complainant filed an intent-to-use application a week before Respondent registered the disputed domain; Complainant's resulting registration recites first use in commerce two years later—in May 2015. There is, therefore, no basis for inferring that in 2013 “respondent was clearly aware of the complainant…” when he allegedly made a significant change in the character of the use of the disputed domain name. WIPO Overview 2.0 paragraph 3.1. See also WIPO Overview 2.0 paragraph 3.4 (constructive knowledge generally not sufficient to knowledge required for bad faith).
Moreover, in Eastman Sporto there was record evidence that respondent there began offering competitive, if not counterfeit, goods prior to its renewal of the domain name. Id. at footnote 3. There is no such evidence here. There is no persuasive evidence of what links were on Respondent’s webpage in 2013. Complainant alleges that in May 2013, prior to renewal and only a week after Complainant filed its intent-to-use application, Respondent started offering on the webpage associated with the disputed domain pay-per-click “links to financial services related to Respondent’s services.” However, Complainant offers no evidence to support this allegation. Complainant’s Annex 4 is a print out of Respondent’s website links, but it is dated December 13, 2016, which is well after the alleged 2013 switch to bad faith links. Even if we disregard Complainant’s failure to offer evidence from the relevant time before the renewal, it is not clear how Respondent’s links relate to Complainant’s services. Complainant’s website recites that the company helps institutional advisors “attempt to recover securities fraud losses arising from their domestic and foreign portfolios.” Respondent’s links are to standard stock indexes provided by, for example Dow Jones and Vanguard. Complainant makes no attempt to explain why linking to them is such egregious bad faith that this Panel should depart from the prevailing view and consider renewal tantamount to registration.
The thoughtful analysis in Eastman Sporto and other similar cases is important to UDRP jurisprudence, and there may be exceptions to the prevailing view that renewal is not tantamount to registration, but the record here is not strong enough to trigger such an analysis.
Accordingly, the Panel finds that Complainant has not satisfied paragraph 4(a)(iii) of the Policy.
D. Reverse Domain Name Hijacking
Respondent has requested a finding of reverse domain name hijacking.
“WIPO panels have found Reverse Domain Name Hijacking in circumstances including where: 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.” WIPO Overview 2.0 paragraph 4.17. Here, Complainant failed to offer any evidence in support of the serious allegation that Respondent also registered “100 other domain names, as part of a bad-faith scheme to trade off of, and take advantage of, the good-will of eventual trademark holders” which if properly evidenced could have cast a certain light on Respondent’s bona fides. However, Complainant presents at least a colorable argument, and its reliance on Eastman Sporto was reasonable, though Complainant has not provided convincing evidence in support of its argument. The Panel accordingly declines to find reverse domain name hijacking.
For the foregoing reasons, the Complaint is denied. The Panel denies Respondent’s request for a finding of reverse domain name hijacking.
Lawrence K. Nodine
Date: February 17, 2017