WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Brian Rayle v. Portmedia Holdings Ltd
Case No. D2014-2122
1. The Parties
The Complainant is Brian Rayle of Apollo Beach, Florida, United States of America (“USA”) self-represented.
The Respondent is Portmedia Holdings Ltd of Hong Kong, China, represented by ESQwire.com P.C., USA.
2. The Domain Name and Registrar
The disputed domain name, <cargowiz.com> (the “Domain Name”), is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 4, 2014. On December 4, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 4, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 8, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On December 8, 2014, the Center sent a notification of Complaint deficiency by email to the Complainant. The Complainant filed an amended Complaint on December 8, 2014.
The Center verified that the Complaint (together with the amended 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 December 12, 2014. On December 26, 2014, the Complainant submitted a supplemental filing. In accordance with the Rules, paragraph 5(a), the due date for Response was January 1, 2015. At the Respondent’s request and with the agreement of the Complainant, the Center granted the Respondent an extension until January 14, 2015 to file a response. The Response was filed with the Center on January 14, 2015.
The Center appointed Tony Willoughby, R. Eric Gaum and The Hon Neil Brown Q.C. as panelists in this matter on February 4, 2015. 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.
Having read the Response and noted that it was unusually lengthy, the Panel conducted a word count on the substantive section and found that it exceeded by approximately 25% the word limit set out in the Supplemental Rules, paragraph 11(b). As such it was a non-compliant document. Had the deficiency been a trivial one, the Panel would have overlooked it, but in this case the deficiency was substantial. The Panel had the option of either ignoring the document altogether as if it did not exist or directing the Center to remit it to the Respondent’s representative for redrafting into a compliant form. In all the circumstances of this case the Panel decided that the latter option was the appropriate one. A duly compliant amended Response was filed with the Center on February 6, 2015.
One of the matters giving rise to the amendment of the original Complaint was the fact that the Respondent had been utilizing a privacy service, which was identified as the registrant of the Domain Name in the original Complaint. For the purposes of this decision all references to the Respondent are references to the above-named Portmedia Holdings Ltd, the underlying registrant whose name was disclosed by the Registrar, who was named as the sole Respondent in the amended Complaint and on whose behalf the Response was filed.
On December 26, 2014 the Respondent submitted a supplemental filing to the Center. The Rules make no provision for unsolicited supplemental submissions, but the Panel has discretion to accept such filings. The issue is addressed in paragraph 4.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions Second Edition (“WIPO Overview 2.0”), which insofar as relevant reads as follows:
“Will the WIPO Center put an unsolicited supplemental filing before a panel, and in what circumstances would a panel accept such filing?
Consensus view: As the UDRP Rules grant the panel sole discretion to request further statements and determine the admissibility of evidence which may include an unsolicited filing, such filings, when received from a party, would typically be put before the panel upon the panel's appointment - at no additional charge - for determination as to admissibility, and assessment of need for further procedural steps (if any). Normally in such cases, a panel would include a ruling on admissibility of any such received filings in its decision, or in the event that an opportunity to reply is offered to the other party, in an administrative panel order. Panels have discretion whether to accept an unsolicited supplemental filing from either party, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. The party submitting its filing would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response. Most panels that have allowed unsolicited filings have also tended to require some showing of ‘exceptional’ circumstances. Panels which accept a supplemental filing from one side typically allow the other party the opportunity to file a reply to such supplemental filing.”
The reason given by the Complainant for the need for the supplemental filing was as follows:
“Despite many days spent searching the internet, WIPO and ICANN for guidance on how to file a complaint, the valuable information in WIPO Overview of WIPO Panel Views on Selected UDRP Questions was missed. The presentation of the complainant’s case will be more correct and complete with the allowance of this supplement. For example Bad Faith was covered in just one sentence.”
While the reason given by the Complainant can barely be described as an exceptional circumstance, the document is short, it corrects an error in the Complaint and has caused no delay, the Respondent having sought an extension for the filing of the Response, a request to which the Complainant did not object. Moreover, the Respondent has not sought to have the Complainant’s supplemental filing excluded. In these circumstances the Panel has decided to accept the supplemental filing.
4. Factual Background
The Complainant resides in Florida, USA, and is engaged in the design and marketing of load planning software, software geared to assisting with the loading of trucks, freight containers and the like. He formed his business, SoftTruck on March 22, 2001. Since January 2004 he has been marketing his software under and by reference to the name, “CargoWiz”.
The Complainant is the registered proprietor of United States Trade Mark Registration No. 3,422,048 CARGOWIZ (standard character mark) filed August 15, 2007, registered May 6, 2008 in class 9 for “computer software for finding a tight layout of items in a given space or on a given surface.”
The Domain Name was initially registered by an unconnected third party in 1999. Another unconnected third party acquired the registration in 2004, but allowed the registration to lapse.
The Respondent, which is based in Hong Kong and is engaged in the acquisition and monetization of domain names, registered the Domain Name on July 26, 2005 and connected it to a parking page hosted by the Registrar.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical to his CARGOWIZ trade mark in which he claims common law rights from 20041 and registered rights from the date of his trade mark registration details of which are at section 4 above. The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. Finally, the Complainant contends that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(i) of the Policy.
The Complainant contends that it is probable that the Respondent conducted a search in relation to the Domain Name, found that it was likely to be profitable and preferable to a number of other closely similar names, which were available at the time and proceeded knowing that the Domain Name was likely to be a trade mark, the intent being to sell it to the trade mark owner at a significant profit.
The Complainant acknowledges that he was aware of the Respondent’s registration of the Domain Name in 2005, but states that he did not then have the funds to support a complaint.
In essence the Respondent denies the Complainant’s contentions. It contends that the Complainant acquired no trade mark rights until 2007, the filing date of its United States Trade Mark Registration. The Respondent contends that it has a legitimate interest in respect of the Domain Name, having used it commercially and fairly since acquiring it in 2005, when it had no knowledge of the existence of the Complainant or his trade mark.
The Respondent criticises the Complainant’s delay in pursuing this Complaint and contends that the Panel should apply the laches doctrine. The Respondent further contends that the Complainant is guilty of Reverse Domain Name Hijacking.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
Moreover, in writing its decision, the Panel has to have regard to paragraph 15(e) of the Rules and in particular the following sentence namely:
“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 in paragraph 1 of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”.
B. Identical or Confusingly Similar
The Domain Name comprises the Complainant’s trade mark, CARGOWIZ, and the “.com” generic top level domain identifier. It being permissible for the panel to ignore the “.com” generic top level domain identifier for the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, the Panel finds that the Domain Name is identical to a trade mark in which the Complainant has rights.
In addition to the Complainant’s registered trade mark rights in respect of the name “CargoWiz” dating back to 2007, the Complainant claims unregistered trade mark rights dating back to 2004, the year in which he commenced sales of his CargoWiz software. For the purposes of this element of the Policy, the date of the Complainant’s acquisition of trade mark rights is unimportant provided that they were in existence at the date of the Complaint. However, for the purposes of the second and third elements (paragraphs 4(a)(ii) and (iii) of the Policy) that date could be of great significance. In the case of the third element, for example, it will be very much more difficult for the Complainant to prove bad faith registration of the Domain Name if the Complainant’s trade mark rights were not in existence at that date. This issue is addressed further in 6D below.
C. Rights or Legitimate Interests
The Panel are not ad idem here, one member being satisfied that the Respondent has done enough to establish that it has a right and legitimate interest in respect of the Domain Name on the basis of its consistent use of the Domain Name in line with its generic meaning, which this member of the Panel describes as “the means of speeding cargo along quickly”.
The majority of the Panel is not so sure. The name, “CargoWiz”, is certainly strongly suggestive, but it is not wholly descriptive. It was sufficiently distinctive in 2007 for the Complainant to have acquired registered trade mark rights in respect of it. If the Complainant is correct that the Respondent adopted the Domain Name knowing of the Complainant’s CargoWiz product and/or knowing that the name was likely to be a trade mark, the Respondent is unlikely to have acquired rights or legitimate interests in respect of it.
However, the Panel is agreed that in light of its finding under 6D below, it is unnecessary for the Panel to come to a concluded view on this element of the Policy.
D. Registered and Used in Bad Faith
The Panel is agreed that for this Complaint to succeed, the Complainant must satisfy the Panel that when the Respondent registered the Domain Name, it had the Complainant and/or its “CargoWiz” software product in mind.
What reason did the Respondent have for knowing of the existence of the Complainant and/or its software product on July 26, 2005 when it registered the Domain Name? The Complainant’s evidence of sales prior to that date stops at the end of March, 2005 and total something under USD 100,000 for the previous fifteen months. The sales are widely spread both within the USA and internationally. The Respondent is based in Hong Kong and the only sale to Hong Kong over that period was a USD 1,578 sale on December 30, 2004.
Irrespective of whether the Complainant had conducted sufficient trade to give rise to unregistered trade mark rights in the USA prior to July, 2005 (as to which a majority of the Panel has severe doubts), the Complainant has produced insufficient evidence to establish that the Respondent, based in Hong Kong, knew or is likely to have known of the Complainant or its CargoWiz product when registering the Domain Name.
The Respondent has not only denied all knowledge of the Complainant at that time, but has produced evidence to show that there were two prior owners of the Domain Name, preceding the Complainant’s adoption of its trade mark, thereby indicating that the name had been found attractive by others who could not have known of the Complainant’s interest in the name. Furthermore, the Respondent has produced evidence of other domain names in its portfolio featuring the words “cargo” and “wiz”.
The Complainant argues that even if the Respondent was not aware of the Complainant’s interest in the “CargoWiz” name, it could very readily have made itself aware of that interest if it had conducted a simple online search against the name. While that may well be so, this Panel is not persuaded that the Respondent was under any duty to conduct such a search.
The Panel is not satisfied that the Domain Name was registered and is being used in bad faith.
For completeness, it should be added that the Respondent’s claim to a “laches” defence, based on the Complainant’s delay in bringing this Complaint, was considered by the Panel, but the Panel was able to come to a decision without exploring that issue.
E. Reverse Domain Name Hijacking
The Respondent contends that the Complaint was fundamentally flawed in that it was bound to fail and should never have been brought. The Respondent prays in aid the delay in bringing the Complaint, the fact that the Complainant acknowledges having attempted to purchase the Domain Name several times since 2005 and the “fact” that the “Complainant’s use of the term CargoWiz hardly predates the creation of the Disputed Domain.” The Respondent contends that this Complaint was designed to hijack from the Respondent a highly valuable generic name.
The Complainant explains his delay in bringing the Complaint by saying that the filing fees were beyond him in the early days. He says that he tried to acquire the Domain Name by purchase, but the price put on it was beyond his means. He asserts that by July, 2005 he was making substantial sales of his CargoWiz and asks forensically why the Respondent selected the Domain Name when at that time similarly styled names such as <FreightWiz.com>, <LoadingWiz.com>, <PalletWiz.com> and <LoadWiz.com> were all available but not acquired. The Complainant suggests that at that time the Respondent would prudently have conducted searches to check on the commercial desirability of these names and found that the Domain Name outstripped them in value on the back of the Complainant’s trade mark.
Suffice it to say that the Panel is not persuaded that the Complainant’s objective in filing this Complaint was actuated by anything other than a genuine good faith belief that it had a reasonable chance of success.
For the foregoing reasons, the Complaint is denied as is the Respondent’s request for a finding of Reverse Domain Name Hijacking.
R. Eric Gaum
The Hon Neil Brown Q.C.
Date: February 9, 2015
1 In fact he claims common law rights from 2003, but the Panel takes this to be a typographical error given that he claims first sales from January 2004.