WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hedera AB v. Support Desk, Captive Media
Case No. D2013-2102
1. The Parties
The Complainant is Hedera AB of Lund, Sweden, represented by Advokatbyrån Gulliksson AB, Sweden.
The Respondent is Support Desk, Captive Media of Irvine, California, United States of America (“USA”), represented by Rodenbaugh Law, USA.
2. The Domain Name and Registrar
The disputed domain name <stabletable.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 December 4, 2013. On December 4, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 5, 2013, the Registrar 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 on December 9, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 29, 2013. On December 11, 2013 the Center received an email communication from the Respondent requesting the dismissal or suspension of the present administrative proceeding in light of the fact that on December 9, 2013 the Respondent filed a civil action against the Complainant in the United States District Court, Northern District of California, for unfair competition and for a declaratory judgment of noninfringement with respect to the Respondent’s registration, use and ownership of the disputed domain name. In the alternative, the Respondent requested more time to provide a complete Response.
On December 11, 2013 the Center replied to the Respondent acknowledging receipt of its email of the same date, reminding the Respondent of the due date for Response and informing it of the process for requesting an extension to such date pursuant to paragraph 5(d) of the Rules. The Center further informed that “[i]n accordance with paragraph 18 of the UDRP Rules, in the event of any legal proceedings initiated during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.”
On December 18, 2013 the Center received an email communication from the Respondent requesting the extension of the Response due date to January 7, 2014. On the same date, the Center received an email communication from the Complainant confirming its agreement to such extension. The new Response due date was January 7, 2014. The Response was filed with the Center on January 7, 2014.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on January 10, 2014. 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
The Complainant is a Swedish company which states that it has introduced a patented, self-stabilizing table base for all kinds of tables in hotels, restaurants, bars and cafés. The said table base, branded “StableTable”, is said to automatically adjust to any floor surface without the need for manual adjustment.
The Complainant is the owner of a variety of registered trademark rights with regard to the mark STABLETABLE, namely; (1) South African Trademark Registration No. 1997/04925, STABLETABLE (word), filed on April 2, 1997 and registered on August 2, 2001 for goods in class 20; (2) European Community Trademark Registration No. 008755531, STABLETABLE (figurative), filed on December 14, 2009 and registered August 18, 2010 for goods and services in classes 6, 20 and 45; and (3) International Trademark Registration No. 1049912, STABLETABLE X (word and device), registered on July 1, 2010 for goods and services in classes 6, 20 and 45 in respect of various designated countries including the USA. The said international mark was registered in the USA on September 27, 2011 with a designation containing the rider “NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE “STABLETABLE” APART FROM THE MARK AS SHOWN”. The Complainant’s said South African trademark was assigned to the Complainant on September 12, 2011 by a company named Orbijet (Pty) Limited.
According to WhoIs records, the disputed domain name was created on November 24, 2007 and the registrant’s contact details have shown the same address and telephone number over that period.
The Respondent is a California corporation. The Respondent does not go into detail as to the nature of its business although in its Request for Dismissal or Suspension of the administrative proceeding it describes itself as “a prominent and respected web development company”. The Respondent adds in the Response that it provides advertising and online search services to Internet users. The Respondent states that it, then doing business as “Crosspath”, registered the disputed domain name in good faith on or about November 24, 2007 and that the Respondent ultimately changed its name to Captive Media in 2012. The Respondent therefore maintains that it has retained unbroken ownership and possession of the disputed domain name since the date of its creation.
On November 14, 2008, a representative of the Complainant approached the Respondent by email indicating that it was “looking for a new domain name for a planned new business” and referencing the Complainant’s interest in the disputed domain name. The Complainant’s representative made an offer of USD 500 to purchase the disputed domain name; however it appears that the Parties were not able to agree on a price and negotiations ceased on about November 18, 2008.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical to trademarks in which it owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name has been registered and is being used in bad faith.
The Complainant notes that it has not given its consent to the Respondent in respect of the use of the Complainant’s STABLETABLE trademark. The Complainant asserts that there is no evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding thereto in connection with a bona fide offering of goods or services. The Complainant states that it has found nothing to indicate that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name and submits that the disputed domain name is directed to a typical pay-per-click site which appears to have no apparent link to the disputed domain name as such. The Complainant also submits that to its knowledge the Respondent has not been commonly known by the disputed domain name.
The Complainant submits that the disputed domain name leads Internet users to an unauthorized site which appears to be a pay-per-click site. The Complainant states that the disputed domain name was registered well after the date of the Complainant’s initial South African trademark registration. The Complainant suggests that the Respondent must have acquired the disputed domain name some time after the middle of 2011 because the Complainant’s previous contacts with the holder of the disputed domain name from 2010 and in the middle of 2011 were with an entity called Crosspath. The Complainant states that the previous holder of the disputed domain name provided links to other manufacturers and distributors of furniture on the website linked to the disputed domain name and offered to sell the disputed domain name for USD 14,000. The Complainant contends that the Respondent appears to switch the use of the website linked to the disputed domain name between a pay-per-click site and a login page, the purpose of which is unclear.
The Complainant submits that the Respondent must, or at least should have been aware of the Complainant’s rights when acquiring the disputed domain name. The Complainant states that there has been no use of the disputed domain name which suggests a legitimate interest and good faith registration and use and that this suggests that the Respondent registered the disputed domain name in order to prevent the Complainant from reflecting its registered trademark in a corresponding domain name. The Complainant contends that bad faith registration and use of the disputed domain name is demonstrated by the Respondent having no rights and legitimate interests in the disputed domain name and appearing to intermittently use the disputed domain name for a pay-per-click site.
The Complainant asserts that evidence of bad faith registration and use is confirmed by the fact that the Respondent currently has 6,634 domain names registered which are not in active use, which it states is typical of a cyber-squatter. The Complainant states that if the Respondent had conducted a trademark search in the Community Trademark database or the International register of trademarks, the trademark rights of the Complainant would have been evident. The Complainant relies upon paragraph 2 of the Policy, by virtue of which the Respondent warrants not to infringe any intellectual property right of a third party.
The Respondent contends that the administrative proceeding should be dismissed or suspended in light of the civil action which the Respondent has brought against the Complainant. The Respondent notes that the Court will review the case de novo and will give no deference to a decision in the present administrative proceeding. The Respondent cites various cases under the UDRP whereby, in light of court action, the panel decided to terminate the proceeding pending resolution or discontinuance of such action without prejudice to the complainant’s rights to file a new complaint against the respondent following termination of the court action.
The Respondent states that the Complainant has no trademark rights on which to base the Complaint as it has admitted its trademark is descriptive under USA law. The Respondent notes that disclaimed words are only protected when the mark is used as a whole. The Respondent adds that the descriptive nature of the Complainant’s trademark is further evidenced by its use on the Complainant’s website in a descriptive manner. The Respondent says that it owns the disputed domain name as part of its legitimate business enterprise and as part of a bona fide offering of goods and services. The Respondent notes that a legitimate interest may be established where a domain name is used to profit from the generic value of the word without intending to take advantage of the complainant’s rights therein.
The Respondent notes that the term “StableTable” is composed of two dictionary words which are commonly used in the English language in a large number of generic or descriptive ways and as part of other companies’ trademarks. The Respondent asserts that at best the Complainant’s trademark rights are exceptionally weak and could only be narrowly limited to the corresponding goods and services. The Respondent submits that the words “Stable” and “Table” have a natural relation to one another and are found in third party active websites such as “www.stabletables.com” and “www.iwantastabletable.com”. The Respondent contends that any party has a legitimate interest in owning and using a domain name composed of two generic dictionary words that the Complainant itself has admitted are merely descriptive of its products.
The Respondent asserts that it has never used the disputed domain name to associate its business with that of the Complainant and adds that the Complainant’s sole evidence of use of the disputed domain name shows only one English language advertisement for riding tours in Iceland.
The Respondent contends that where a respondent registers a domain name before a complainant’s trademark rights have been established, the registration cannot be made in bad faith because the respondent could not have contemplated a non-existent right. The Respondent submits that all of the Complainant’s trademark rights arose subsequent to the Respondent’s registration of the disputed domain name except for the South African trademark, which was only assigned to the Complainant in 2011, does not pertain to the Complainant’s goods and has no effect on the Respondent or its business in the USA. The Respondent suggests that the assignment of the said trademark was a sham transaction designed to give the Complainant a basis for attempting to hijack the disputed domain name. The Respondent supplies a Google search showing no online reference to the assignor of the trademark registration in connection with the trademark.
The Respondent states that it had no knowledge or constructive notice of the Complainant’s trademark and notes that bad faith may only be inferred if such trademark is well-known or widely used on the Internet at the time the disputed domain name was registered, or when a denial of knowledge is highly improbable. The Respondent adds that the Complainant has admitted that it had no such business until one year after the disputed domain name was registered by the Respondent and has offered no evidence that it is well-known in the Respondent’s jurisdiction.
The Respondent states that it has not used the disputed domain name in connection with goods or services related to those registered in connection with the Complainant’s mark and has never offered to sell the disputed domain name to the Complainant. The Respondent submits that it has not attempted to disrupt the Complainant’s business by confusing customers trying to find the Complainant’s website. The Respondent points to a list of some forty “stabletable” formative domain names which are currently registered.
The Respondent argues that its acts do not constitute bad faith based on the theory of passive holding, noting that the Complainant has failed to establish bad faith registration which is required to move forward on a theory of passive holding. The Respondent contends that its behavior does not satisfy any of the requirements articulated in paragraph 4(b) of the Policy. The Respondent adds that it has never tried to conceal its identity, nor has it provided false contact information.
The Respondent contends that the Complainant’s claim of bad faith is barred by its unexplained undue delay in bringing the Complaint. The Respondent submits that even in cases where laches does not apply, a considerable delay can color the merits of a dispute. The Respondent notes that it registered the disputed domain name in November 2007, received a first contact from the Complainant in November 2008 and that the Complainant filed for its USA trademark in 2010 in the full knowledge that the Respondent owned the disputed domain name. The Respondent points to a three year period thereafter before the Complaint was brought and a five year period during which the Complainant knew of the Respondent’s ownership of the disputed domain name. The Respondent adds that it has owned the disputed domain name for six years and has invested substantial time and resources into its maintenance and development.
The Respondent seeks a finding of reverse domain name hijacking in respect of the Complainant in light of the latter’s knowledge at the time it filed the Complaint that it could not sustain a finding of bad faith. The Respondent points to the Complainant’s statement that the disputed domain name was registered “well after the date of the Complainant’s initial South African trademark registration” and submits that this is misleading as the registration was not the Complainant’s initial one and was acquired by assignment. The Respondent also points to the Complainant’s awareness of the disclaimer in the Complainant’s USA trademark registration.
6. Discussion and Findings
A. Preliminary issue: Effect of Court Proceedings
On December 9, 2013, the date on which it received notification of the Complaint, the Respondent filed the civil action described in the Procedural History above. The Respondent seeks termination or suspension of the administrative proceeding in light of such action. It is clear from the Respondent’s submissions that the Respondent’s representative has adopted this type of approach in several previous cases under the Policy, namely ATRYA v. Stanley Pace / Whois Privacy Services Pty Ltd, WIPO Case No. D2012-0946; Navista S.A. v. Virtual Point Inc. dba CrossPath, It Manager, WIPO Case No. D2012-1157; and Shandong Lingong Construction Machinery Co., Ltd. v. Stanley Pace and Whois Privacy Service Pty Ltd., WIPO Case No. D2012-1626.
Paragraph 4(k) of the Policy provides:
“Availability of Court Proceedings.
The mandatory administrative proceeding requirements set forth in Paragraph 4 shall not prevent either you or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded. If an Administrative Panel decides that your domain name registration should be canceled or transferred, we will wait ten (10) business days (as observed in the location of our principal office) after we are informed by the applicable Provider of the Administrative Panel's decision before implementing that decision. We will then implement the decision unless we have received from you during that ten (10) business day period official documentation (such as a copy of a complaint, file-stamped by the clerk of the court) that you have commenced a lawsuit against the complainant in a jurisdiction to which the complainant has submitted under Paragraph 3(b)(xiii) of the Rules of Procedure. (In general, that jurisdiction is either the location of our principal office or of your address as shown in our Whois database. See Paragraphs 1 and 3(b)(xiii) of the Rules of Procedure for details). If we receive such documentation within the ten (10) business day period, we will not implement the Administrative Panel's decision, and we will take no further action, until we receive (i) evidence satisfactory to us of a resolution between the parties; (ii) evidence satisfactory to us that your lawsuit has been dismissed or withdrawn; or (iii) a copy of an order from such court dismissing your lawsuit or ordering that you do not have the right to continue to use your domain name.”
Paragraph 18 of the Rules provides:
“Effect of Court Proceedings
(a) In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.
(b) In the event that a Party initiates any legal proceedings during the pendency of an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, it shall promptly notify the Panel and the Provider. See Paragraph 8 above.”
The Panel notes in particular that paragraph 18(a) of the Rules expressly contemplates the fact that legal proceedings may be initiated prior to or during an administrative proceeding and that the proceeding may be terminated or suspended in consequence, or the Panel may proceed to a decision, according to the exercise of its discretion. The question of how such discretion should be exercised has been considered in detail in a number of cases under the Policy, most notably by the learned panelist in DNA (Housemarks) Limited v. Tucows.com Co, WIPO Case No. D2009-0367. Further considerations were raised by the learned panelist in Navista S.A, supra, which involved the same underlying respondent as the present case.
For the sake of brevity, the Panel does not propose to rehearse all the considerations set out in these cases. It is clear in any event from the Respondent’s detailed and extensive “Request for Dismissal or Suspension of proceedings or extension of Response due date” that its representative has a familiarity with the relevant authorities. This Panel is supportive of the notion described in Navista, supra, which is originally found in BD Real Hoteles, SA de C.V. v. Media Insights aka Media Insight, WIPO Case No. D2009-0958, that the Policy generally obliges a panel to make a decision on a complaint. The Panel further considers that the disposal of this issue by the panel in Navista, supra is entirely appropriate for the present circumstances. Quoting the panel in that case:
“The present Panel takes the view that the Complainant has made a valid Complaint under the UDRP and, absent circumstances to the contrary, is entitled to a decision on the merits of its Complaint without delay. The Panel entertains no notion of what may be done with the Decision after the Panel is functus officio and does not address its Decision to the attention of any other forum. The Panel is also concerned that as a general principle, and without any aspersion as to the motivation of either Party in this case, diversions that may create inordinate delay, and thereby negate the best intentions of the UDRP, should be avoided unless the circumstances are exceptional. Partly for this reason the Panel does not consider a significant stay of the proceeding to be a viable option.”
For the same reasons, the Panel in the instant case denies the Respondent’s request for suspension or termination of this administrative proceeding and will therefore proceed to a Decision on the Complaint and Response.
B. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has rights in its registered trademark for the word mark STABLETABLE. The Panel takes no account under this head of the fact that none of the Complainant’s marks with the exception of the South African trademark, itself acquired by assignment in 2011, pre-date the creation of the disputed domain name (on that topic, see paragraph 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)). Disregarding the generic Top-Level Domain (gTLD) suffix, “.com” in the disputed domain name as is customary in cases under the Policy, the Panel notes that the disputed domain name is identical to the Complainant’s trademark.
In these circumstances, the Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
C. Rights or Legitimate Interests
The requirements of paragraph 4(a) of the Policy are conjunctive. A consequence of this is that failure on the part of a complainant to demonstrate one element of the Policy, including that the disputed domain name has been registered and is being used in bad faith, will result in failure of the complaint in its entirety. Accordingly, in light of the Panel’s finding under the next head, it is unnecessary for the Panel to address the issue of the Respondent’s rights or legitimate interests in the disputed domain name.
D. Registered and Used in Bad Faith
As noted below in the section on Reverse Domain Name Hijacking, the Complainant’s case relies upon the premise that the disputed domain name changed hands at some point during 2011. If such a change of ownership had taken place, the question of registration in bad faith would require to be assessed as at the date when the current registrant took possession of the disputed domain name (see paragraph 3.7 of the WIPO Overview 2.0). However, while the Complainant is correct that there was a formal change in registration data, the evidence clearly establishes an unbroken chain of underlying ownership by a single entity, namely the Respondent. The Panel is satisfied that the change identified on the WhoIs relates to the Respondent’s registered fictitious business names, sometimes characterized as “doing business as” names, whereas the Respondent’s contact details have remained the same throughout the period of registration. In these circumstances, the Complainant has not demonstrated that the question of registration in bad faith should be assessed as at any date other than the original date of registration of the disputed domain name.
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove the conjunctive requirement that the disputed domain name has been registered and is being used in bad faith. It follows that if the Complainant fails to prove registration in bad faith the Complaint must fail. That is the position in the present case. The Complainant is the holder of a single trademark that predates the disputed domain name, namely the South African trademark dating from August 2001. The Complainant did not become the holder of this mark until it acquired it by assignment in September 2011. As such, the Respondent could not have contemplated and intended to target the Complainant in 2007 when the disputed domain name was created. While it is theoretically possible that the Respondent might have intended to target the rights of the Complainant’s predecessor in title at that time there is no such evidence before the Panel.
For its part, the Respondent has given a plausible explanation as to why it registered the disputed domain name by its showing that the term “stable table” is in use by a variety of third parties who are not referencing the Complainant’s trademarks but have come upon the term independently as a combination of two ordinary English words.
In these circumstances the Panel finds that the Complainant has failed to establish the third element under the Policy.
E. Reverse Domain Name Hijacking
“Paragraph 15(e) of the UDRP Rules 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”. Reverse Domain Name Hijacking is defined under the UDRP Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
WIPO panels have found that the onus of proving complainant bad faith in such cases is generally on the respondent, whereby mere lack of success of the complaint is not itself sufficient for a finding of Reverse Domain Name Hijacking. To establish Reverse Domain Name Hijacking, a respondent would typically need to show knowledge on the part of the complainant of the complainant’s lack of relevant trademark rights, or of the respondent's rights or legitimate interests in, or lack of bad faith concerning, the disputed domain name. Evidence of harassment or similar conduct by the complainant in the face of such knowledge (e.g. in previously brought proceedings found by competent authorities to be groundless, or through repeated cease and desist communications) may also constitute a basis for a finding of abuse of process against a complainant filing under the UDRP in such circumstances.
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...”
In the present case, the Panel does not agree with the Respondent’s submission that the Complainant’s awareness of the disclaimer in the Complainant’s USA trademark registration leads to a finding of Reverse Domain Name Hijacking. While the disclaimer may demonstrate the weakness of the Complainant’s USA trademark, as the Respondent contends, it is not conclusive of the question of whether the Respondent was or was not targeting the Complainant’s rights in that mark, or in its other trademarks. As such, the Panel does not believe that the Complaint was bound to fail on this point.
The Respondent’s other criticism is of the Complainant’s characterization of its South African trademark as its “initial […] trademark registration”. The Panel agrees that this appears at first sight to be disingenuous; the Complainant must have been aware that it had acquired this trademark by assignment some two years after the disputed domain name was created, yet chose to overlook this in its submissions. However, it occurs to the Panel that the reason why it may have done so is that, from the point of view of the Complainant’s case as pled, that detail was not particularly important. It is clear from the Complaint that the Complainant was working on the incorrect basis throughout that the disputed domain name had changed hands at some point after the middle of 2011. The Complainant believed this to be the case as it had previously dealt with what it thought was a different organization, named “Crosspath.” In fact, this is one of the Respondent’s registered fictitious business names. Had the Complainant been correct in its assumption, the Panel would have been required to assess the question of registration in bad faith at a date when the Complainant’s rights were more established. The Complaint might still have failed in light of the Respondent’s extensive rebuttals of the remainder of the Complainant’s case, with which the Panel has not required to deal in its analysis; however mere lack of success of the Complaint is not itself sufficient for a finding of Reverse Domain Name Hijacking.
In all of these circumstances, the Respondent’s request that the Panel enter a finding of Reverse Domain Name Hijacking is denied.
For the foregoing reasons, the Complaint is denied.
Andrew D. S. Lothian
Date: January 24, 2014