WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pilotfish Networks AB v. Dynamo.com
Case No. D2017-0891
1. The Parties
The Complainant is Pilotfish Networks AB of Göteborg, Sweden, represented by Ports Group AB, Sweden.
The Respondent is Dynamo.com of Austin, Texas, United States of America ("United States"), internally represented.
2. The Domain Name and Registrar
The disputed domain name, <pilotfish.com> (the "Domain Name"), is registered with eNom, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 3, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 4, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's 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 May 8, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 28, 2017. The Response was filed with the Center May 28, 2017.
The Center appointed Nicholas Smith, Robert A. Badgley and Tony Willoughby as panelists in this matter on June 23, 2017. 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 limited liability company incorporated in Sweden. The Complaint provides no details as to what business the Complainant is in other than it operates from the website "www.pilotfish.se", which states that the Complainant supplies connectivity and cloud based services to public transport vehicles. The Complaint states that the "Complainant has been doing business under the PILOTHISH [the Panel assumes this is a typo] name since 1999 and through the domain pilotfish.se since 2000" though the Complaint provides no evidence of the extent of or reputation in its business prior to 2005 (or indeed at all).
The Complainant owns three registered trade marks that consist of the word "pilotfish" (the "PILOTFISH Mark"), the earliest being registered in Sweden in classes 9, 38, 42 and 45, with an application date of July 7, 2005, and a registration date of December 15, 2006.
The Respondent states that it executes name conception, logos and brand graphics, trade mark research, and promotional copy for new startups and corporations including Intel, Samsung, Procter and Gamble, Netflix, and Time Warner, Inc. The homepage of the Respondent's website at "www.dynamo.com" contains a graphical showcase of its name creation and logo work product, including the Centrino name for Intel and the logo for Wiki.com.
The Domain Name <pilotfish.com> was created on October 2, 2001. While there is a dispute between the Parties as to when the Respondent became the owner of the Domain Name, as of March 18, 2004, according to the WhoIs record maintained by Domain Tools, the registrant of record was MarketPoints.com - New Media Branding Svcs. ("Marketpoints.com"). As of July 11, 2006, according to the WhoIs record maintained by Domain Tools, the registrant of record was "ID Protect via Dynamo.com LLC". The Domain Name does not resolve to an active website and there is no evidence before the Panel that it has ever resolved to an active website.
5. Parties' Contentions
The Complainant makes the following contentions:
(i) that the Domain Name is identical to the Complainant's PILOTFISH Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the PILOTFISH Mark having applied to register the PILOTFISH Mark in 2005, with registration having been formally granted in 2006 and having used the PILOTFISH Mark since 1999. The PILOTFISH Mark is identical to the Domain Name.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent does not have any rights in the PILOTFISH Mark, nor is the Respondent a licensee of the Complainant. The Complainant has not given the Respondent any permission to register the PILOTFISH Mark as a domain name. Since the registration of the Domain Name, the Domain Name has never redirected to an active website. By reason of those facts the Respondent holds no rights or legitimate interests in the Domain Name.
The Domain Name was registered and is being used in bad faith. The Domain Name is identical to the PILOTFISH Mark other than the addition of the ".com" top-level domain. While the Domain Name was registered in 2001, the WhoIs records show that the Respondent did not become registrant of the Domain Name until 2006, seven years after the Complainant commenced use of the PILOTFISH Mark. The Respondent has no intention of using the Domain Name, and indeed the Respondent is in the business of registering company names as ".com" domain names. Collectively and individually the Respondent's conduct amounts to registration and use of the Domain Name in bad faith.
The Domain Name was registered on October 2, 2001, by the Respondent. The Respondent's branding company was formerly known as Eyetooth and Marketpoints.com is a WhoIs holder name formerly used by the Respondent. The Respondent changed its name to Dynamo in 2006. Proof of this is that the Respondent continues to hold all correspondence and contact addresses in respect of the communications that took place in 2005 between the Complainant and the Respondent, then known as Eyetooth, as well as the retention of the email addresses and phone numbers of that earlier entity. The Domain Name has never been made available for public sale and when the Complainant contacted the Respondent in 2005, 2015 and 2017 seeking the sale of the Domain Name, the Respondent refused.
The Complainant has made multiple statements publically that it was founded in 2003, not 1999 as set out in the Complaint. There is no evidence of any public use of the PILOTFISH Mark prior to its registration in 2006.
The Respondent executes name conception, logos and brand graphics for new start-ups and large corporations such as Intel, Samsung, Procter and Gamble and Netflix. As part of its business the Respondent holds generic and coined domain names for use in its business. The Domain Name reflects the name of a pilot fish, a common marine animal, in dictionary use dating back to the 1600s and a literary reference dating back to 1964. The Respondent registered the Domain Name in 2001 for use by an animation team serving the children's market, but the project was later abandoned. The Respondent did not know of the Complainant when it registered the Domain Name in 2001; the Parties were in different countries and in any event the Complainant did not exist and did not use the PILOTFISH Mark in trade or commerce. The Respondent has not placed an active website on the Domain Name since then in order to prevent any risk of confusion. As the Respondent did not register the Domain Name (which is a dictionary word) with the Complainant in mind, has consistently refused to sell the Domain Name and has never had an active website on the Domain Name it cannot be said to have registered or used the Domain Name in bad faith. It has rights and legitimate interests in respect of the Domain Name.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant has the burden of proof in respect of the following three elements:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant's trade or service mark.
The Complainant is the owner of the PILOTFISH Mark, having registrations for PILOTFISH as a trade mark in countries including Sweden. As the ".com" generic Top-Level Domain ("gTLD") may be discarded in considering the identity or confusing similarity between a domain name and a mark, the Domain Name is identical to the PILOTFISH Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Given the Panel's finding that the Respondent has not registered and used the Domain Name in bad faith (see below), the Panel concludes that in these circumstances it is not necessary to make a finding under this element of the Policy.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b) provides that for the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) Circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) The Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website or location. (Policy, paragraph 4(b)).
In this case, the date at which the Respondent acquired the Domain Name is a disputed issue between the Parties. The Respondent's evidence is that it has registered and held the Domain Name since 2001. The documentary evidence before the Panel, being past WhoIs reports annexed to the Complaint, is that the named Respondent was the registrant of the Domain Name in 2006, and that the named registrant of the Domain Name in at least 2004 was Marketpoints.com. In 2005, there was correspondence in relation to the Domain Name between the Complainant and an entity known as Eyetooth.
The Respondent has stated in its Response that it was formerly known as Eyetooth, which used Marketpoints.com as a WhoIs holder name and that it changed its name to Dynamo in 2006, hence that a single entity has held the Domain Name since 2001. While the Respondent does not provide formal corporate documents to support this claim, it provides strong circumstantial evidence to suggest that the Respondent is the same entity, or at a minimum, the entities Eyetooth, Marketpoints.com and the Respondent have at all times been under common control. When the name of the registrant of the Domain Name was changed from Marketpoints.com to Dynamo.com, the registrant contact phone number stayed the same. The Respondent has provided evidence that it holds the same email addresses as Eyetooth and retains a copy of the correspondence that took place between the Complainant and Eyetooth. Furthermore, the similarity of the Eyetooth website in 2005 and the Dynamo website, both in 2006 and presently, is strong evidence that the present Respondent is the successor to Eyetooth/Marketpoints.com. There is no reason for the Panel not to accept the Respondent's evidence that it has registered and held the Domain Name since 2001.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), states in response to the question "Can bad faith be found where a domain name was registered before the complainant acquired trademark rights?" that:
"Subject to scenarios described in 3.8.2 below [which do not apply in the present proceeding], where a respondent registers a domain name before the complainant's trademark rights accrue, panels will not normally find bad faith on the part of the respondent."
The Panel finds on the balance of probabilities that the Domain Name was registered in 2001 by the Respondent. The PILOTFISH Mark was first applied for in July 2005. The only evidence the Complainant provides as to its reputation in 2001 is that its company name was registered in 1999 and its domain name at <pilotfish.se> was registered in 2000. The Complainant provides no evidence of any use of the PILOTFISH Mark sufficient for the Panel to find that it held common law rights in the PILOTFISH Mark in 2001, and indeed the only evidence that it used the PILOTFISH Mark at all prior to July 2005 arises from a single media release annexed to the Response indicating that the Complainant commenced supplying solutions for public transport and car-sharing in 2003. For this reason, the Domain Name was not registered in bad faith.
For completeness it should be added that even if the Panel were to accept the Complainant's contention that the Respondent first acquired the Domain Name after the Complainant first acquired its trade mark rights, on the evidence before the Panel there is nothing to indicate that the Respondent had the Complainant or its trade mark in mind when it registered the Domain Name. On the face of the evidence the Respondent has a legitimate business registering domain names, some of which, like the Domain Name, are dictionary words. For the Complaint to succeed, the Complainant would have had to produce something by way of evidence to show that at the very least the Respondent had the Complainant's PILOTFISH Mark in mind when registering the Domain Name, but there is nothing of that kind before the Panel.
As to the Complainant's claim that the Respondent's alleged passive holding of the Domain Name amounts to bad faith, the Panel also rejects this claim. The WIPO Overview 3.0, section 3.3 (addressing passive holding), provides that the panel must examine the totality of the circumstances of the case to determine whether the respondent is acting in bad faith. Factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant's mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent's concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. Here there is no evidence that the Complainant had any trade mark rights at the time of registration and hence that the Domain Name was registered in an attempt to take advantage of the Complainant's PILOTFISH Mark. The Respondent has not concealed its identity. Importantly, the Respondent has submitted a comprehensive Response in this case and provided credible reasons for why the Domain Name has always resolved to a blank webpage and been held in support of the Respondent's branding business. In view of all of these circumstances, the Panel finds there is no abusive passive holding of the Domain Name.
The Panel does not accept the Complainant's argument that the Respondent has registered the Domain Name in order to prevent it from reflecting its mark in a corresponding domain name, and has engaged in a pattern of such conduct. Even if the Panel were to accept that the examples included in the Complaint of domain names that correspond to company names are examples of cybersquatting (and it does not – none of the companies are particularly well-known and according to the evidence of record many of the domain names pre-dated the establishment of the corresponding companies), this does not show that the Respondent had registered the Domain Name in order to prevent the Complainant from reflecting its mark in the Domain Name. The evidence before the Panel is that registration of the Domain Name took place prior to the Complainant acquiring of trade mark rights to the PILOTFISH Mark or acquiring any reputation in the PILOTFISH Mark.
While there have been cases where bad faith has been found when the registration took place prior to the acquisition of trade mark rights, such cases involve situations where, at the time of registration the respondent is clearly aware of the complainant and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights. This is not such a matter. The Complainant did not hold any registered rights in the PILOTFISH Mark at the time the Respondent registered the Domain Name in 2001 (and has presented insufficient evidence of common law rights, to the extent they existed). Furthermore, over the last 16 years there has been no evidence that the Respondent has used the Domain Name in bad faith. The Respondent has rebuffed any requests to sell the Domain Name. The Domain Name has never redirected to an active website and thus there is no evidence that the Respondent has taken advantage of any consumer confusion. The Panel finds that the Respondent has not registered and used the Domain Name in bad faith.
F. Reverse Domain Name Hijacking
Paragraph 15(e) of the Policy 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.
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 the mere lack of success of the complaint is not of itself sufficient to constitute reverse domain name hijacking. The majority in Jazeera went on to note 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 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 view of the Panel this is a Complaint which has a number of significant issues. The Complainant, who is represented by legal practitioners, provides no evidence of its use or reputation in respect of the PILOTFISH Mark prior to 2005. It has asserted that the present Respondent and Eyetooth/Marketpoints.com are different entities despite being clearly notified by the Respondent, twice, in communications preceding this administrative proceeding that they were the same entity and that the Respondent held copies of the email communications between Eyetooth and the Complainant. The Respondent's present website at "www.dynamo.com" is strikingly similar to the website at "www.eyetooth.com" in 2005, both of which the Complainant must have visited as part of any fact finding prior to the submission of the Complaint.
There is no evidence that the Respondent has ever attempted to target the Complainant (the Domain Name has at all times resolved to a blank page), and to the extent the Complainant sought to argue that the Respondent had registered other domain names corresponding to company names, none of these domain names stand out as obviously in bad faith and the Panel notes that many of these domain names were registered before the corresponding companies came into existence. Furthermore, the Respondent in 2005, 2015 and 2017 very clearly indicated to the Complainant that the Domain Name was not as such for sale.
The Panel finds that the decision to file a Complaint when the Complainant was aware through pre-Complaint correspondence that the Domain Name corresponded to a dictionary word, had never been used to target its business, was registered prior to (on the evidence the Complainant puts before the Panel) any reputation arising in the PILOTFISH Mark and was registered to an entity that indicated in the strongest terms that it was not interested in selling the Domain Name to it, constitutes reverse domain name hijacking. Any reasonable investigation would have revealed that this was a Complaint that could not have possibly succeeded.
The Panel finds that the Complaint was brought in bad faith.
For the foregoing reasons, the Complaint is denied.
Robert A. Badgley
Date: June 28, 2017