WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hippie Tours LLC v. Mansour Elseify and Crystal Elseify
Case No. D2014-1975
1. The Parties
Complainant is Hippie Tours LLC of San Francisco, California, United States of America ("U.S."), represented by LeonardPatel PC, U.S.
Respondents are Mansour Elseify and Crystal Elseify, of Laguna Beach, California, U.S., represented by John Berryhill, Ph.d., Esq., U.S.
2. The Domain Name and Registrar
The disputed domain name <hippiebus.com> (the "Domain Name") is registered with Tucows Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 7, 2014. On November 10, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 10, 2014, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on November 19, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 9, 2014. The Response was filed with the Center on December 9, 2014.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on December 15, 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
Complainant is the owner of U.S. trademark no. 4355545 for the word mark HIPPIE BUS, with a filing date of August 28, 2012 and a registration date of June 18, 2013 in class 35 of the Nice Classifications in relation to "Advertising and marketing; Talent agencies for models."
The WhoIs record indicates that the Domain Name was registered on May 2, 2003. Respondents have submitted evidence from the Registrar that the Domain Name was renewed by Respondents on May 19, 2008.
5. Parties' Contentions
Complainant contends that Respondents do not have rights or legitimate interest in respect to the Domain Name and they have registered and used it in bad faith.
(i) Identical or confusingly similar
Complainant states that it is in the business of advertising and marketing and has used its federally registered HIPPIE BUS trademark in connection with its services since at least January 2013 and has thus established goodwill in its mark. According to Complainant, consumers of advertising and marketing services are familiar with Complainant due to the presence of its brand. Therefore, Complainant contends that its activities establish rights to the HIPPIE BUS trademark.
Moreover, Complainant argues that its HIPPIE BUS trademark is strong, arbitrary, and fanciful, and deserves the highest level of protection against infringers. Similarities between the Domain Name and Complainant's trademark are likely to cause confusion. Though Respondents do not appear to have uploaded any viewable material to the Domain Name, the fact remains that the Domain Name incorporates the term "HippieBus". Consumers are likely to perceive this term as the separate words "hippie" and "bus". The words "hippie" and "bus" in the Domain Name are identical to those terms in Complainant's trademark. This similarity supports a finding that consumers are likely to be confused as to the source of Complainant's and Respondents' services.
As part of its business, Complainant created a free website on <webs.com>, using the domain name <hippiebus.webs.com>. Complainant states that the Domain Name is confusingly similar to Complainant's <hippiebus.webs.com> domain name. The words "hippie" and "bus" in the Domain Name are identical to the words "hippie" and "bus" in Complainant's domain name. Consumers may be confused when an Internet search engine identifies Respondents' Domain Name in response to the consumers' web search for "Hippie Bus".
Complainant maintains that since the Domain Name contains Complainant's trademark verbatim, and both the registered HIPPIE BUS trademark and the Domain Name can be used in connection with advertising and marketing services, the Domain Name is confusingly similar to Complainant's registered trademark.
(ii) Rights or legitimate interests
Complainant contends that, as previous UDRP decisions have held, Complainant's burden in demonstrating Respondents' lack of legitimate rights in the Domain Name is light, since it is difficult to prove a negative. Complainant needs to make a prima facie showing that Respondents lack rights or legitimate interests in the Domain Name. If Respondents then fail to present evidence that they have rights or legitimate interests, Complainant will have demonstrated Respondents' lack of rights or legitimate interests.
Complainant states that on or about February 1, 2012, Complainant communicated to Respondents via email a request to purchase the Domain Name. On or about March 6, 2012, Respondents communicated via email instructing a representative of Complainant to submit an offer for the Domain Name for no less than USD 1,200 on GoDaddy.com. On or about January 3, 2014, Respondents changed the registrar from GoDaddy.com to Tucows Domains. Complainant states that from December 23, 2013 to February 11, 2014, through persistent efforts, it attempted to purchase the Domain Name from Respondents via numerous email communications. As shown in these emails, Respondents have repeatedly increased the required purchase price for the Domain Name from USD 1,200 to USD 60,000.
Complainant urges that Respondents lack rights or legitimate interests in the Domain Name, since there is no evidence that Respondents have made use of the Domain Name for the bona fide sale of goods or services of any kind. Complainant has never granted Respondents any rights in the Domain Name since Complainant has not licensed or otherwise permitted Respondents to use its trademark, nor has it licensed or otherwise permitted Respondents to apply for or use any domain names incorporating any of Complainant's trademarks. Based on the foregoing, Complainant states it is clear that Respondents do not have any legitimate interests with respect to use of the Domain Name.
(iii) Registered and used in bad faith
On or about January 9, 2014, Respondents admitted that they purchase numerous domain names for the purpose of reselling or otherwise profiting from them. Respondents admitted that they own reseller accounts including "www.domainsnext.com" and "www.mydiscountdomains.com".
Currently, the Domain Name is inactive. Previous decisions have held that for a domain name to be considered "being used in bad faith", a positive action need not be taken. Rather, in some circumstances, Respondents' lack of use of the domain name constitutes bad faith. The panel in Telstra Corporation Limited held that inaction or passive holding of a domain name can be considered use in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Here, Complainant contends that the fact that the Domain Name is currently inactive and that Respondents have engaged in discussions with Complainant to sell the Domain Name for valuable consideration, and have withheld the Domain Name from Complainant, demonstrates Respondents' bad faith. Based on the foregoing, Complainant argues it is clear that Respondents had bad faith in registering and using the Domain Name.
Respondents contend that this dispute is really about how Complainant allegedly agreed to purchase the Domain Name and then subsequently allegedly breached its purchase obligation by refusal to follow instructions in relation to escrow services. Respondents assert that the contractual issues involved, about which Complainant is allegedly far from candid, may render this dispute to be outside the scope of the UDRP.
(i) Identical or confusingly similar
Respondents contend that Complainant's claimed "advertising and marketing" business is sham, asserted solely for the purpose of obtaining a U.S. trademark registration upon which to premise this UDRP case. While Complainant claims that it conducts business via a "free web site" at "www.hippiebus.webs.com", Respondents have submitted detailed evidence to show that Complainant's supposed "free website" is composed of plagiarized text taken from the well-established advertising agency in San Francisco known as Gumas (maintaining a website at "www.gumas.com"), with references to "Hippie Bus" inserted in place of the name "Gumas". According to Respondents, Complainant did such a poor job of copying and pasting text to create its fake website that Complainant did not bother to check for consistency in certain terms.
Since Complainant's U.S. trademark registration long post-dates Respondents' registration of the Domain Name, Respondents assert that it would be necessary for Complainant to show senior common law rights as a foundational proposition for the "bad faith" element in the Complaint. However, Respondents argue that Complainant provides no evidence of volume of sales, extent of advertising, or any commercial data whatsoever in support of a claim to have acquired common law trademark rights through use of a free website service. None of the evidence expected of a common law claim is present in the Complaint.
Complainant has presented a U.S. trademark registration issued in June 2013, claiming to be for talent agency and advertising and marketing services. However, after a first attempt to purchase the Domain Name from Respondents during the period from January to March 2012, Complainant had filed U.S. trademark application no. 85579578 on an intent-to-use basis for transportation and tour services, as follows:
"Transportation services, namely, airport ground, charter, and door-to-door transportation services of passengers by motor vehicles; Providing travel information services via a global computer network ; Travel agency services, namely, checking availability and making reservations and bookings for transportation via a global computer network; Travel agency services, namely, making reservations and bookings for transportation for people; Transportation services, namely, providing shuttle services by bus; Tour conducting; Conducting sightseeing tours for others"
Respondents have submitted evidence to show that Complainant's initial trademark application was refused registration and abandoned as of July 2013 (according to Respondents, the USPTO's final notice of abandonment was returned as undeliverable because Complainant used a fake mailing address for the application). Respondents further contend that, having had its trademark application for "tour services" refused in July 2013, in August 2013 Complainant stated that it was in the "advertising and marketing" business instead of the tour business. Complainant filed a second trademark application for supposed "advertising and marketing" services. Respondents argue that this was done by Complainant in the belief that specifying a service for which the mark is non-descriptive would enable a successful registration from the USPTO. With that application, Complainant filed as a "specimen of use" a printout of its allegedly plagiarized website.
Respondents state that Complainant's U.S. trademark registration includes a "first use" allegation of January 2012 and a "first use in commerce" claim of January 2013. While Respondents' stated 2008 registration of the Domain Name is senior to Complainant's alleged "first use" date, Respondents highlight that such first use allegations are an unexamined formality in U.S. trademark application practice and do not constitute probative evidence of rights or distinctiveness as of such dates. Respondents contend that Complainant's U.S. trademark registration would be evidence of possession of an enforceable right as of its issue date, if the registration is supported by actual use of the mark, of which Complainant has given no evidence except its allegedly fake website. Complainant shows no earlier evidence of rights of any kind. According to Respondents, is not necessary for the Panel to determine whether Complainant's trademark registration, itself allegedly based on a sham website, satisfies the first element of the Policy, given the seniority of the registration of Respondents' Domain Name.
In sum, Complainant has provided a U.S. trademark registration in which the "first use" date, the filing date, and the date of enforceability are all junior to the date of registration of Respondents' Domain Name. According to Respondents, Complainant's shift from being a tour operator, consistent with its "Hippie Tours LLC" name, to becoming an "advertising and marketing" business within a few days after its first trademark application was refused, was a sham motivated for the purpose of positioning Complainant's trademark application with different goods and services in order to obtain a trademark registration, and in order to assert it in this case. Complainant has provided no showing of rights beyond claiming to have operated a slapdash, plagiarized "free website" since 2013. The trademark registration is not supported by the actual conduct of business under the claimed mark.
(ii) Rights or legitimate interests
Respondents contend that rights and legitimate interests can include equitable interests such as seniority, expectation and reliance interests. Respondents are the senior party in this case. Respondents registered the Domain Name prior to May 19, 2008. Because Respondents could not locate the original purchase receipt, Respondent contacted the Registrar to confirm that Respondents were the party to whom renewal of the Domain Name was charged in May 2008. Among the legitimate rights recognized in UDRP proceedings is the equitable right of priority, and Respondents have senior rights in the Domain Name. Prior to Complainant coming into existence and the selection of its trade name, Complainant was perfectly capable of ascertaining Respondents' then-existing registration of the Domain Name. Complainant's first approach to Respondent was within days of Complainant's formation of "Hippie Bus LLC" in January 2012.
Respondents maintain that the term "hippie bus" and variations thereof are commonly used in San Francisco and other areas to refer to a type of tour service or bus service. The archetypical "hippie bus" was that of author Ken Kesey and his "Merry Pranksters", who in the 1960's used a school bus converted into a traveling LSD dispensary, which travelled around the country and would accompany concert tours, notably those of the Grateful Dead rock group. The bus was named "Furthur", which is currently used by the "Futher Festival" that continues musical performances in the style of the Grateful Dead. This "bus" theme begun with Kesey and associated with late 1960's was further reflected in the bus board adventures of the Beatles' Magical Mystery Tour; The Who's Magic Bus album and title single; and the US television series The Partridge Family, featuring teen idol David Cassidy and fictional family as traveling musicians in a hand-painted bus. The term "hippie bus" as a Google search term yields some 1.14 million results featuring all manner of hippie buses, along with certain Volkswagen vans from the 1960's and early 1970's, decked out in resplendent charm. Respondents have been unable to find anything associated with Complainant's supposed "advertising and marketing" services among the Google search results. What one does find is that nostalgia for the "flower child" days of San Francisco and elsewhere has given rise to a number of commercial tour and transportation operators engaged in touristic recreations of the original "hippie bus". These include:
- Magic Bus, at "www.magicbussf.com", which states: "Our hippie hostess will guide you through time and space, sharing the cultural landmarks and secrets of San Francisco's hippie movement."
- Hippie Van Man, at "www.hippievanman.com", which provides touring services and purports to be "about the spirit of adventure, and spreading smiles and good vibes 1km at a time."
- Hippie Bus, at "www.hippiebus.org", which advertises "A Trip With Other Hippies As You Journey Through 1968."
- The "Hippy Buses" at "www.sanfranciscolovetours.com/hippy-buses", which feature tours aboard a "1972 VW Bus with big bay windows."
Additional examples can be found among the search results. According to Respondents, the USPTO's refusal of Complainant's original trademark application for tour services was refused under the Lanham Act Section 2(d) on the basis of confusion with a "hippie camper" service. Respondents argue that that is why Complainant then proceeded to pretend it was an "advertising and marketing" company in its second trademark application, to avoid reciting a service for which the name is not distinctive.
Respondents emphasize that Complainant makes no allegation that the Domain Name has been used by Respondent (the senior party in interest) to infringe Complainant's mark. Respondents assert that Complainant instead claims it is entitled to the Domain Name as a consequence of an alleged breach of contract to sell the Domain Name to Complainant. However, a dispute concerning an alleged breach of contract is not within the scope of the UDRP.
Accordingly, Respondents assert that Complainant has failed to demonstrate that Respondents lack rights or legitimate interest in the Domain Name, which is based on a common term used in association with vintage vehicles and themed bus tours. Nowhere does Complainant address Respondents' seniority of rights. Instead, Complainant claims entitlement to the Domain Name under a contract theory, which is not within the scope of the Policy.
(iii) Registered and used in bad faith
Respondents emphasize that the final criteria required to be proven by Complainant is that the Domain Name was (a) registered in bad faith, and (b) used in bad faith by Respondents. According to Respondents, the "bad faith" criterion in the Policy is an element of specific intent directed toward Complainant and arising from rights known by Respondents to have belonged to Complainant. Respondents argue that because the Domain Name was registered before Complainant even existed, it was impossible for Respondents to take advantage of a then non-existent entity.
Respondents state that the Complaint omits much from the extensive correspondence between the parties concerning the attempted sale of the Domain Name. According to Respondent, Complainant, who claims to have begun using its trademark in 2013, first approached Respondent to purchase the Domain Name on January 31, 2012, in the same week Complainant formed "Hippie Tours LLC". Respondents have submitted a complete record of the detailed correspondence between the parties. The parties' dispute in this area concerns the price allegedly agreed for purchase of the Domain Name, the arrangements that were allegedly agreed (including escrow services) to implement the purchase and transfer of the Domain Name, whether Respondents shifted their position regarding the price and arrangements for purchase of the Domain Name, and whether Complainant ever funded the escrow account to be used to facilitate the transfer. Respondents argue that the parties do not communicate well, but that does not excuse Complainant's use of the UDRP in an attempt to obtain enforcement of a claimed sale agreement, when the UDRP provides no mechanism for securing the payment obligation on the part of the purchaser.
Respondents state that Complainant filed it first trademark application for "tour services" on March 29, 2012, just days after the first attempted sale of the Domain Name had fallen apart. Respondents urge that Complainant's belief that it could file a trademark application and obtain a registration, and then file this case, explains why Complainant allegedly failed to follow simple instructions for using escrow services. Since Complainant's first trademark application for "tour services" was refused, Respondents contend that Complainant has created a fake "advertising and marketing service", obtained a trademark registration for that fictitious business, and is now trying to use its junior mark registration to deprive Respondents of the Domain Name comprised of a common term, and for which Complainant had agreed to pay USD 4,000.
Respondents state that the relevant UDRP principle relating to such circumstances is whether "you have registered or you have 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 trademark or service mark". Policy, 4(b)(i). Here, Respondents registered the Domain Name before 2008, while Complainant claims to have been operating since 2013. Accordingly, it is not possible for the Domain Name to have been acquired "primarily for the purpose" of extorting a trademark that was non-existent when the Domain Name was registered. Additionally, it should be noted that Complainant had approached Respondents before filing its duo of trademark applications, offering a price in excess of registration cost, and claiming no trade or service mark rights. Accordingly, the Domain Name cannot have been registered in bad faith, and is certainly not in any sense "diversionary" of customers to Complainant's allegedly cursory and plagiarized website, which does not appear in search results. Respondents argue there is bad faith in this case; however, it is that of Complainant's assertion of a junior trademark claim, obtained solely for this purpose, knowing full well Respondents' registration of the Domain Name pre-dated Complainant's existence.
6. Discussion and Findings
In order to succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith.
A. Identical or Confusingly Similar
The Panel must first determine whether the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights. Complainant has submitted evidence that it owns a U.S. federally registered trademark for HIPPIE BUS, registered in June 2013 in relation to "Advertising and marketing; Talent agencies for models." Respondents have challenged that Complainant obtained this trademark under false pretenses, after an initial trademark application by Complainant for travel and tour services was denied by the USPTO. Respondents also claim that Complainant's "free" website at "www.hippiebus.webs.com", a page of which was submitted in support of Complainant's trademark application, contains plagiarized text and is a sham.
The Panel is aware that if a complainant owns a U.S. federally registered trademark (included on the principal register), UDRP panels have generally considered that it satisfies the threshold requirement of having trademark rights. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.1. In certain, highly limited circumstances, some panels have opted to examine the circumstances of trademark registration in considering whether the registration satisfies UDRP requirements. Ibid. However, the Panel here determines that for purposes of the first element of the Policy, deference is owed to Complainant's federally registered HIPPIE BUS mark. The Panel is not in position to second-guess the trademark examination process that resulted in registration of this mark. However, the factors that have been raised by Respondents, including date of registration (or first use), the extent of usage, and the goods and/or services for which the mark was supposedly registered, can be considered by the Panel in relation to whether or not Complainant acquired any common law rights in the mark prior to its registration, as well as whether or not Respondent registered and used the Domain Name in bad faith under the third element of the Policy. Ibid.
Here, Complainant has not sought to prove, nor does the record support, that Complainant acquired common law rights in its HIPPIE BUS mark pre-dating registration of the mark in June 2013. Consequently, the record is clear that the Domain Name was registered by Respondents at least 5 years (if not more) before Complainant acquired any trademark rights in the HIPPIE BUS mark. Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity under the UDRP. However, here again, this timing can be considered for other purposes, such as whether or not the Domain Name was registered in bad faith under the third element of the Policy. See WIPO Overview 2.0, paragraph 1.4.
The Panel finds that the Domain Name <hippiebus.com> is visually virtually identical to Complainant's HIPPIE BUS mark, the only difference being that the space is omitted between the terms "hippie" and "bus" in the Domain Name, which is a common approach in many domain names. Accordingly, the Panel concludes that the Domain Name is identical to Complainant's HIPPIE BUS mark.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the Domain Name. A complainant is normally required to make out a prima facie case that a respondent lacks rights or legitimate interests in a domain name. Once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
In support of its prima facie case, Complainant contends that Respondents lack any right or legitimate rights in the Domain Name because it is inactive and has not been used by Respondents in connection with a bona fide offering of goods or services; that Complainant has not licensed or otherwise permitted Respondents to use its HIPPIE BUS mark; and that Respondents purchase numerous domain names for the purpose of reselling them. Moreover, Complainant alleges that it engaged in negotiations with Respondents to purchase the Domain Name but Respondents repeatedly increased the purchase price and then improperly frustrated the transaction and withheld the Domain Name.
Respondents, in rebuttal, do not deny that they sell domain names. However, they dispute whether they acted improperly in relation to the unsuccessful attempt to sell the Domain Name to Complainant and that, in any event, a contractual dispute concerning an alleged breach of obligation to sell the Domain Name falls outside the scope of the UDRP. Complainant has made no allegation that Respondents have used the Domain Name to infringe Complainant's mark. Respondents claim a legitimate interest in the Domain Name (i) through an equitable right of priority, as Respondents' registration of the Domain Name pre-dates Complainant's trademark rights by at least 5 years, if not more, and (ii) because it is comprised of a common term, "hippie bus", used in connection with vintage vans and buses and themed bus tours reflecting the psychedelic era of the late 1960's.
The Panel considers that although Respondents have not used the Domain Name but have held it inactive for the purposes of reselling it, in the circumstances of this case, where the Domain Name has been held by Respondents for many years and pre-dates registration of Complainant's trademark by at least 5 years, and where the Domain Name is comprised of descriptive terms as described above, Respondents have established a legitimate equitable seniority interest in the Domain Name.
C. Registered and Used in Bad Faith
Given the Panel's finding that Respondents have a legitimate interest in the Domain Name, the Panel does not need to address the third element of the Policy. However, for completeness, the Panel determines that Complainant has failed to establish bad faith registration and use of the Domain Name by Respondents.
The record shows that Complainant did not even attempt to file an application for the HIPPIE BUS trademark until after the negotiations for purchase of the Domain Name from Respondents had broken down. There is no evidence that Respondents targeted Complainant and its trademark because the mark did not exist when the Domain Name was registered. Instead, Complainant was specifically aware of Respondents' Domain Name when it sought to obtain trademark rights in the identical terms. Further, in the circumstances of this case as described above, there is no evidence of bad faith use of the Domain Name by Respondent, even though it has been held inactive. The Panel does not address the allegations raised by Respondents concerning whether Complainant created a sham website and used false pretenses to achieve registration of its trademark. Moreover, any contractual dispute concerning an alleged breach of obligation by Respondents to sell the Domain Name to Complainant falls outside the scope of the UDRP.
For the foregoing reasons, the Complaint is denied.
Christopher S. Gibson
Date: January 2, 2015