WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Avomex, Inc. v. Barry Pierce / Tina D. Pierce Widow of Barry E. Pierce

Case No. D2011-1253

1. The Parties

Complainant is Avomex, Inc. of Saginaw, Texas, United States of America, represented by Bracewell & Giuliani LLP, United States of America.

Respondent is Barry Pierce / Tina D. Pierce Widow of Barry E. Pierce of Baltimore, Maryland, United States of America, represented by Michael Justin Pierce, United States of America.

2. The Domain Name and Registrar

The disputed domain name <whollyguacamole.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2011. On July 22, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Disputed Domain Name. On July 24, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced July 26, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 15, 2011. The Response was filed with the Center on August 15, 2011.

The Center appointed Maxim H. Waldbaum, David Perkins and Alistair Payne as panelists in this matter on September 2, 2011. 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 Avomex, Inc. (“Complainant”) owns a United States registered trademark for WHOLLY GUACAMOLE (the “Mark”). Complainant uses the Mark in connection with pre-made guacamole, sold throughout the United States. Complainant does not allege a use of the Mark in connection with its goods prior to October, 2007.

In January, 2004, Barry Pierce registered the Domain Name with registrar GoDaddy.com. Tina D. Pierce Widow of Barry E. Pierce acquired the Disputed Domain Name after Barry Pierce died in 2006, receiving ownership through Barry Pierce’s estate. Barry Pierce / Tina D. Pierce Widow of Barry E. Pierce (“Respondent”) have continuously and properly renewed the domain registration during the period relevant here, but have not changed the registrant’s name to reflect the new owner.

Complainant offered Michael Justin Pierce, Tina D. Pierce’s son who identified himself as acting on behalf of Tina, USD 2,500 to purchase <whollyguacamole.com>. Respondent, acting through Michael Justin Pierce, rejected this offer. Complainant then offered USD 5,000. Respondent also rejected this offer, stating that “since [Complainant] needed an answer this week,” he must decline the offer, but that “my mother may be willing to consider any future offer your client is willing to make.”

5. Parties’ Contentions

A. Complainant

Complainant contends that Respondent has improperly refused to sell or transfer the Disputed Domain Name, and that Respondent’s conduct constitutes bad faith. First, Complainant argues that the Disputed Domain Name is identical to the Mark used by Complainant in conjunction with its guacamole products.

Second, Complainant argues that Respondent has no rights in the Disputed Domain Name. Citing, among others, Jappy GmbH v. Satoshi Shimoshita, WIPO Case No. D2010-1001 (September 28, 2010), Complainant alleges that Respondent’s use of the Disputed Domain Name to resolve to a GoDaddy parking page, from which Complainant alleges Respondent receives revenue, is not a defensible use under the Policy. Complainant also alleges that Respondent’s use is for its trademark value, only to attract a buyer of the domain, and thus is not a bona fide or fair use. Finally, Complainant argues that it is the party with legitimate rights, and therefore Respondent cannot be the legitimate rights holder.

Third, Complainant alleges that Respondent acted in bad faith. Complainant alleges four primary bases for bad faith. First, that Respondent failed to properly update the registration WhoIs information after Barry Pierce’s death. Second, Complainant comments that the Disputed Domain Name has always resolved to a parking website since its registration by Barry Pierce in January, 2004, and has never been used in connection with any business, product or service. Complainant contends that it is bad faith that the Disputed Domain Name shows sponsored advertisements that lead to other websites, and alleges that Respondent receives revenue from clicks leadings from <whollyguacamole.com> to those websites. Third, Complainant alleges Respondent “attempt[ed] to extort from Complainant” and “squeeze as much money as possible” by refusing Complainant’s offers to purchase the Disputed Domain Name. Finally, citing Ticketmaster Corporation v. Global Access, WIPO Case No. D2007-1921 (February 13, 2008), Complainant alleges that when Barry Pierce died, Respondent effectively acquired the domain name “in 2007, after Complainant filed” its trademark application. Therefore, interpreting Ticketmaster, supra, Complainant alleges that Respondent failed in a duty to perform due diligence to ensure that the new domain name “acquisition” would not violate existing trademark rights.

B. Respondent

Respondent denies that it has acquired or used the Disputed Domain Name improperly.

First, Respondent admits that <whollyguacamole.com> incorporates the Mark.

Second, Respondent replies that it has rights and legitimate interests in the Disputed Domain Name, and that Complainant’s allegations otherwise are conclusory. Additionally, citing Comservice SA v. Mdnh Inc., Brendhan Height, WIPO Case No. D2010-1591 (November 11, 2010), Respondent argues that because Complainant has failed to make a prima facie showing of rights or legitimate interests, the Panel need not render substantive judgment on this issue.

Third, Respondent disputes Complainant’s allegations of bad faith. Respondent argues that bad faith registration may not be inferred here, because cases cited by Complainant infer bad faith registration only either from later bad faith conduct, not present or shown here by Complainant, or from intentional bad faith conduct in the registration itself, such as by knowingly registering a domain with false credentials. Respondent also argues that Complainant’s allegations that it received revenue from the parked domain page are speculative, conclusory and unsupported by any evidence. Finally, Respondent argues that there was no attempt to extort money in exchange for the Disputed Domain Name and that these allegations are similarly speculative and unsupported.

Respondent additionally claims that Complainant filed this case to attempt reverse domain name hijacking, and that Complainant’s conduct warrants such a finding by this Panel. Respondent claims that Complainant has threatened and “belittled” Respondent in order to compel a sale, and is using the present proceeding as a tool to bully it into selling the Disputed Domain Name.

6. Discussion and Findings

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(1) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to a trademark or service in which Complainant has rights;

(2) that Respondent has no rights or legitimate interests in respect to the Disputed Domain name; and

(3) that the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant has established the requirements of paragraph 4(a)(i) of the Policy. At the date the Complaint was filed it held a nationally-registered trademark for WHOLLY GUACAMOLE. The existence of trademark rights is measured as of the date the Complaint is filed, not the date Respondent registered the Disputed Domain Name. As the Disputed Domain Name is identical to Complainant's Mark except for the top level domain designation “.com”, this Policy element has been met.

B. Rights or Legitimate Interests

The substantial evidence is that Complainant has not shown that Respondent has no right or legitimate interest in the Disputed Domain Name.

Paragraph 4(c) of the Policy provides a list of circumstances that show a right or legitimate interest. They are: “(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” Importantly, this list is not exhaustive, but merely examples of how a respondent may show a right or legitimate interest. Policy, paragraph 4(c).

Respondent has shown such a legitimate interest here. While a desire to retain the Disputed Domain Name for “sentimental” value would likely be insufficient under other circumstances not present here, in this case there is no reason to doubt Respondent’s verisimilitude. Complainant has not shown evidence of a financial interest in the parked Disputed Domain Name; Complainant is the party initiating and pursuing purchase of the Disputed Domain Name; Respondent has not changed its conduct with respect to the Disputed Domain Name since it was first registered, years before Complainant’s first use of the Mark.

The cases relied upon by Complainant are distinguishable. Notably, the Jappy case, supra, relied upon heavily by Complainant involved a respondent whose domain name, which incorporated the complainant’s trademark, resolved to a website offering social networking services in competition with those of the complainant. The respondent began using said domain name for click-through revenue three years after the complainant began using its trademark. Unlike Jappy, supra, Respondent has been using its website for the same purposes for years prior to Complainant’s use of the Mark in connection with its guacamole products.

Complainant’s other substantive argument is that Respondent’s only use is for its trademark value. This is again belied by the facts. As explained above, Respondent’s primary response – that the Disputed Domain Name is held for “sentimental value” – is not commercially compelling, but neither has Complainant shown any evidence that Respondent intended to extract payments from Complainant. Complainant was the subsequent user of the phrase “Wholly Guacamole,” and itself initiated and gratuitously made two offers for purchase of the Disputed Domain Name. Here, Respondent’s refusal to accept an offer does not show intent to extract payment.

In any case, we agree with Respondent that where a panel finds a Complainant has not shown bad faith, as described below, it is not necessary to issue a finding on this element. CP Masters B.V. v. RareNames, WebReg, WIPO Case No. D2009-1673 (February 11, 2010); WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 3.1.

C. Registered and Used in Bad Faith

Complainant has not shown convincing evidence of bad faith conduct by Respondent. The parties do not dispute that (i) Barry Pierce acquired the Disputed Domain Name before Complainant’s first use of the Mark in connection with its products; (ii) Respondent has always used the Disputed Domain Name as a parked domain name for substantially the same purposes; (iii) Respondent did not alter its use of the Disputed Domain Name in response either to the trademark’s use or the offer to purchase it; (iv) Respondent does not offer any product or service through the parking website at the Disputed Domain Name, and hence does not offer any competing product or service; and (v) Respondent is not a professional domain reseller who routinely acquires and sells domains.

Complainant’s arguments under Ticketmaster, supra, are similarly unavailing. Complainant alleges that the Ticketmaster, supra, ruling holds that Respondent would be held to have “registered” the Disputed Domain Name as of the date it was “acquired” from Barry Pierce. This would mean, Complainant argues, that Respondent should have conducted a due diligence search before any continued use of the Disputed Domain Name, and when the Mark was found, would have subservient rights to Complainant.

Complainant misconstrues the holding of Ticketmaster, supra, a situation involving facts substantially different from those here. Ticketmaster, supra, involved a respondent that purposefully acquired the domain name at issue in a commercial acquisition of a domain name portfolio. There is no doubt that in such a circumstance, a domain name acquirer should expected to perform due diligence to ensure future uses do not infringe existing trademarks, where the very use is competitive to an existing mark. Respondent in this case, on the other hand, acquired the Disputed Domain Name only through the death of Barry Pierce, an involuntary and entirely dissimilar mode of acquisition, and with no commercial motivation.¹

Similarly, Complainant alleges bad faith because the parked Disputed Domain Name allegedly generates income through clicks. Unlike the situations in cases cited by Complainant, here Complainant has failed to show evidence of any enrichment or improper benefit gained by the Respondent through its use of the parked Disputed Domain Name. Finally, Complainant’s cases regarding Respondent’s alleged “hold up” of Complainant for fees are uniformly distinguishable and merit little further attention.

In light of these facts, Complainant’s accusations of bad faith are unconvincing. Indeed, all of Respondent’s conduct is in substance the same as it was prior to Complainant having any right to the trademark. The facts that Complainant simply acquired the same name as a trademark, and that Respondent refused to sell the Disputed Domain Name, do not alone give Complainant the right to have the Disputed Domain Name transferred to it pursuant to the Policy.

7. Reverse Domain Name Hijacking

Paragraph 1 of the Rules defines Reverse Domain Name Hijacking as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” See also paragraph 15(e) of the Rules. For this Panel to find attempted reverse domain name hijacking, Respondent must show that Complainant knew or must have known of Respondent’s “unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith.” See, e.g., Sydney Opera House Trust v. Trilynx Pty. Ltd., WIPO Case No. D2000-1224 (October 31, 2000).

Here, there is some evidence that Complainant knew that Respondent had a legitimate interest in the Disputed Domain Name, or should have known that Respondent lacked bad faith, and nonetheless filed the present Complaint. Certainly many of Complainant’s allegations of bad faith on the part of Respondent are not supported by the evidence before the Panel. However, a finding of attempted reverse domain name hijacking is only appropriate where it should have been clear to a complainant that it could not prove one of the essential elements under the Policy, or where there has been an apparent attempt to mislead the Panel, or to bully a respondent into handing over a domain name. See, e.g., IUNO Advocatpartnerselskab v. Angela Croom, WIPO Case No. D2011-0806 (July 4, 2011). Reverse domain name hijacking has also been described as occurring “where a respondent’s use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith.” Prime Pictures LLC v. DigiMedia.com L.P., WIPO Case No. 02010-1877 (February 2, 2011) (emphasis added), citing Yell Limited v. Ultimate Search, WIPO Case No. D2005-0091 (April 6, 2005).

In the Panel’s opinion, the facts in this case do not reach the standard required for a finding of reverse domain name hijacking. Even though Complainant has failed to persuasively argue it is entitled to the Disputed Domain Name pursuant to the Policy, Complainant’s actions do not overall amount to it having brought the Complaint in bad faith. As the panel in IUNO, supra, noted, there will always be cases which are brought speculatively because the complainant cannot necessarily know what a respondent’s true intentions and motivations were at the time of registration. Similarly, a complainant will not always know or be able to reasonably believe or infer the motivations for a respondent’s use of a domain name. Giving the Complainant the benefit of the doubt in the somewhat unusual circumstances of this case, the Panel considers that, on balance, the Complaint was speculative, but does not constitute reverse domain name hijacking.

8. Decision

For all the foregoing reasons, the Complaint is denied.

Maxim H. Waldbaum
Presiding Panelist

David Perkins
Panelist

Alistair Payne
Panelist

Dated: September 23, 2011

¹ For these reasons, Complainant’s other cited case, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. 2000-0003 (February 18, 2000), is similarly unhelpful. The panel in Telstra, supra, specifically noted that that the respondent could not but have been aware of the complainant’s trademark at the time of registration. Here, it is undisputed that Complainant did not even first use the trademark until three years after the registration, in 2004.