WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

RXGear, LLC v. Domains by Proxy, Inc. / Scrubology

Case No. D2011-1568

1. The Parties

The Complainant is RXGear, LLC of Quincy, Massachusetts, United States of America (“U.S.”) represented by Wolf, Greenfield & Sacks, P.C., U.S.

The Respondent is Domains by Proxy, Inc. / Scrubology of Scottsdale, Arizona, U.S. and Bellaire, Texas, U.S., respectively.

2. The Domain Name and Registrar

The disputed domain name <scrubology.com> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2011. On September 19, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On September 19, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 20, 2011, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on September 30, 2011.

The Center verified that the Complaint together with the amendment to 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 3, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 23, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 26, 2011.

The Center appointed William F. Hamilton as the sole panelist in this matter on November 4, 2011. 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.

On November 4, 2011, the Respondent made an online submission that was transmitted to the Panel by the Center.

4. Factual Background

On May 3, 2011, the Complainant obtained a U.S. federal registration for the mark SCRUBOLOGY asserting first use on March 11, 2010 in connection with online retail services. The Complainant also obtained a U.S. federal registration of the mark SCRUBOLOGY & DESIGN on June 21, 2011, alleging a first use date of November 3, 2010. The Complainant was incorporated on April 30, 2011. The Complainant operates a website at <scrubologyshop.com>.

The disputed domain name was registered on June 30, 2005.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the disputed domain name incorporates entirely and solely the Complainant’s registered mark SCRUBOLOGY and is thus identical to its mark with the exception of its TLD identifier which is generally disregarded when considering identity or similarity to a trademark. The Complainant asserts that the Respondent registered the disputed domain name in 2005 with the intent to passively hold the disputed domain name until it became valuable to a third party, such as the Complainant, in the future. Alternatively, the Complainant asserts that even if the disputed domain name was registered in good faith, the Respondent is now acting in bad faith because the Respondent has directed the disputed domain name to resolve to a parking page offering links advertising the Complainant’s competitors’ products. The Complainant surmises that the Respondent is obtaining click-through revenue associated with such advertising. The Complainant thus contends that the Respondent has “retroactively” engaged in bad faith registration by virtue of the current bad faith use of the disputed domain name that is being used to attract Internet users to the Respondent’s website by creating confusion with the Complainant as to the source of goods and services and thereafter directing business away from the Complainant to the Complainant’s competitors through the “sponsored” links on the Respondent’s landing page. The Complainant accordingly asserts that the Respondent has, or has forfeited, any rights or legitimate interest in the disputed domain name.

B. Respondent

The principal of the Respondent Scrubology is L. Hamlin. In a late-filed, online submission she contends that she is a nursing graduate student with entrepreneurial aspirations. She claims she “organically generated” the name “Scrubology.” She claims she registered the disputed domain name in good faith in anticipation of forming a company to “manufacture and sell custom tailored medical clothing.” Ms. Hamlin further asserts that she had taken a “number of steps towards opening her business over the last few years, but those plans are currently on hold until she completes her graduate studies.” She asserts that she is “not a cyber-squatter” and has every intention to open a small business in the future utilizing the disputed domain name. The Respondent thereby asserts legitimate rights and interests in the disputed domain name and asserts the disputed domain name was registered in good faith.

6. Discussion and Findings

Paragraph 4(a) of the Policy articulates three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and to obtain relief. These elements are that:

i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, and

ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name, and

iii) The disputed domain name has been registered and is being used in bad faith.

As an initial matter, the Panel must first determine whether the Respondent’s online submission should be considered. UDRP proceedings are designed to expeditiously resolve claims under the Policy so that meaningful relief may be promptly granted where appropriate. Normally, absent exceptional circumstances, a late submission will not be considered. However, the Panel will consider the Respondent’s submission for a number of reasons. First, although late, the submission has not disrupted the schedule for the Decision. Second, Ms. Hamlin appears not to be a legal professional and not to have previously been involved in any UDRP disputes. Finally, the Panel does not believe that considering the online response will encourage future disregard of the Rules by the Respondent or by other parties to UDRP proceedings or that accepting the late submission would prejudice the Complainant. See Internationale Spar Centrale B.V. v. Scientific Process & Research, Inc., WIPO Case No. D2005-0603 and cases cited therein.

A. Identical or Confusingly Similar

The disputed domain name is identical to the Complainant’s registered trademarks. Accordingly, the Panel finds that the Complainant has established the first requirement under the Policy. Credit Management Solutions, Inc. v. Collex Resource Management, WIPO Case No. D2000-0029.

B. Rights or Legitimate Interests

Whether the Respondent has legitimate rights or interests in the disputed domain name is closely connected to the issue of bad faith. If the Panel finds that the disputed domain name has been registered and is being used in bad faith, the Respondent could not have rights or legitimate interests in the disputed domain name. Busy Body, Inc. v. Fitness Outlet, Inc., WIPO Case No. D2000-0127.

C. Registered and Used in Bad Faith

The Complainant relies on two theories to establish the Respondent’s bad faith registration and use. The Complainant’s first theory is that the Respondent registered the disputed domain name with an intent to sell the disputed domain name once it became valuable and that the Respondent has been passively holding the disputed domain name for that purpose only. The Complainant’s proffered evidence in this regard is insubstantial and consists of speculations made on information and belief. Even absent the Respondent’s late submission, the Complainant’s proof would fail. The Complainant has presented no evidence that the Respondent was aware of the Complainant’s future business plans or had an inkling that “scrubology” would become a valuable domain name for the Complainant or others. Moreover, the Respondent has provided a plausible explanation for her initial registration of the disputed domain name, although the Panel notes with some concern that the Respondent’s submission lacks any evidentiary support establishing that Ms. Hamlin is, in fact, a graduate nursing student or the efforts she made to establish her yet to be operational business.

The Complainant’s second theory relies on developing UDRP jurisprudence under what has been referred to as the “Octogen trio of cases” that articulate grounds whereby subsequent bad faith use, regardless of the initial registration intent, may establish that a domain name “was registered and is being used in bad faith.” See Ville de Paris v. Jeff Walter, WIPO Case No. D2009-1278; see generally, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), Section 3.1.

The Complaint implies that after the Complainant registered the SCRUBOLOGY mark, the disputed domain name began resolving to a landing page advertising and providing links to the Complainant’s competitors. The Complainant thus believes that regardless of initial intent, the Respondent started utilizing the disputed domain name to attract and divert Internet traffic to the Complainant’s competitors presumably in order to obtain click-through fees after the Complainant commenced business under the mark SCRUBOLOGY. The Panel finds the Complainant’s argument unpersuasive, notwithstanding the jurisprudence articulated in the Octogen trio of cases. For example, In Ville de Paris v. Jeff Walter, supra, the panel rejected the respondent’s argument of initial good faith registration and further found that the respondent’s alteration of the content of the website at a critical juncture confirmed the suspicious explanation for the initial registration. In Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, WIPO Case No. D2009-0786, the panel similarly rejected the Respondent’s claims of initial good faith registration after reviewing early content of the website at issue on the Internet Archive WayBack Machine. Whether or not one takes the view that under some circumstances subsequent bad faith usage may be sufficient to meet the requirements of the Policy, under either approach the Panel would find Complainant’s case to fail. The facts of this case, however, are different and fail to meet the requirements of the Policy.

Contrary to factual patterns presented in the Octogen trio of cases relied upon by the Complainant, the Panel in this case is faced with a facially plausible explanation as to why the Respondent registered the disputed domain name. She was a nurse who wore “scrubs” and anticipated a business selling such clothing. Additionally, this is not a case where the Respondent reconstructed the website to intentionally feature competitive products to obviously take advantage of the Complainant’s business good will after the Complainant registered SCRUBOLOGY. The disputed domain name resolves to a typically generic landing page automatically generated by the registrar. “Scrubs” is a common name for medical related clothing. That the disputed domain name would be populated with auto-generated links to web sites selling medical related clothing should come as no surprise to the Complainant. The Complainant has not established that the Respondent intentionally acted to take advantage of the Complainant’s trademark SCRUBOLOGY. The Complainant has not even established that the Respondent at any time had any knowledge of the Complainant’s business, which did not commence until 2010, long after the registration of the disputed domain name.

UDRP jurisprudence has established that willful blindness in registering domain names may not relieve a party from application of the Policy. Additionally, passive domain holding may constitute bad faith. However, the important facts of this case are much different than those in the seminal set case of Grundfos A/S v. Texas International Property Associates, WIPO Case No.D2007-1448, where the domain name was registered after rights in the complainant’s mark had been established and where the complainant’s mark was well known. The Complainant in this case has failed to provide evidence that the disputed domain name began resolving to a website showing competitors’ links and advertisements after the Complainant obtained the SCRUBOLOGY trademark registration. Additionally, the Complainant would place the burden on the Respondent to continually assure that the disputed domain name is not identical or substantial similar to the Complainant’s, or any other party’s, trade or service marks registered after the disputed domain name registration. This Panel does not believe the Policy reaches that far or that the Policy requires domain name holders to quickly deploy their businesses or risk the potential forfeiture of their domain names to subsequent users of identical or similar terms who may obtain mark registrations.

Moreover, assume that the Respondent, without knowledge of the Complainant’s business, had actually commenced its own online business of selling medical related clothing under the disputed domain name after the Complainant’s registration of SCRUBOLOGY. The Panel fails to see, absent other compelling facts, how such use by the Respondent would be in bad faith. Generally, “when a domain name is registered by the respondent before the complainant’s relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right.” WIPO Overview 2.0, Section 3.1. The Panel fails to see how such a scenario is materially different, for the purposes of applying the Policy, from auto-generating and populating in this case the disputed domain name with links to various companies selling a common medical related clothing item.

Indeed, the Policy’s protective reach should not be turned into a sword. In this case, either the Complainant became aware, or should have become aware, of the disputed domain name when doing its due diligence in connection with registering SCRUBOLOGY. The Complainant nonetheless chose to proceed with the registration and its business plans. Presumably the Complainant also came across the disputed domain name when registering <scrubologyshop.com>. Indeed, significantly, the Complainant fails to allege when the Complainant first became aware of the disputed domain name. Having proceeded with its business knowing of the disputed domain name, can the Complainant now fairly complain of its self-created plight? Could the Complainant reasonably believe that the disputed domain name would be used for anything other than the sale and promotion of medically related clothing? The Panel answers these questions in the negative.

Finally, the use of a privacy shield, as did the Respondent, when registering a domain name does not by itself establish bad faith.

The Panel finds that the Complainant has failed to establish that the Respondent has no legitimate rights or interests in the disputed domain name or that the disputed domain name was registered and is being used in bad faith.

7. Decision

For the foregoing reasons, the Complaint is denied.

William F. Hamilton
Sole Panelist
Dated: November 21, 2011