WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Emazing B.V. v. Joe Pierce
Case No. D2015-1252
1. The Parties
1.1 The Complainant is Emazing B.V. of Baarn, Netherlands, represented by Van der Goen advocaten B.V., Netherlands.
1.2 The Respondent is Joe Pierce of Louisville, Kentucky, United States of America, self-represented.
2. The Domain Name and Registrar
2.1 The disputed domain name <emazing.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2015. On July 20, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 21, 2015, 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.
3.2 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”).
3.3 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 July 24, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 13, 2015. The Response was filed with the Center on August 11, 2015.
3.4 A supplemental filing was filed with the Center by the Complainant on August 19, 2015.
3.5 The Center appointed Matthew S. Harris as the sole panelist in this matter on August 20, 2015. 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.
3.6 Later that day the Respondent filed a supplementary filing in response to the Complainant’s supplemental filing of August 19, 2015.
4. Factual Background
4.1 The Complainant is a company founded in 2000 and based in the Netherlands. It has since that date provided various Internet-related services, including marketing and web design in the Netherlands and elsewhere in Europe.
4.2 The Complainant is the owner of the following trade marks:
(i) Benelux registered trade mark 687727 filed on May 29, 2000 for the term “Emazing” in stylised text in classes 35, 41 and 42; and
(ii) Community Trade Mark 003493111 filed on November 20, 2003 for the word mark EMAZING in classes 35, 41 and 42;
4.3 The Complainant promotes its activities from a website operating from the domain name <emazing.nl>. The website is predominantly in Dutch.
4.4 The Respondent is an individual located in the United States.
4.5 The Domain Name was registered on June 7, 1997. Since 1998 the Domain Name has been used for a website that promoted a newsletter business that used the name “Emazing”. The operator of this site was Emailing LLC, a Kentucky Limited Liability Company of which the Respondent was a managing member, although rights in the Domain Name may not have passed to this company until April 1999.
4.6 On April 26, 1999 Emazing LLC filed a trade mark application at the United States Patent and Trademark Office for the term “Emazing”. The application proceeded to grant on February 8, 2000 with registered trade mark no. 2316782 (the “US Emazing Mark”).
4.7 On May 27, 1999 Emazing LLC sold its rights to the Domain Name and the US Emazing Mark to Emazing Inc, a subsidiary of Sony Music Entertainment and the Respondent was appointed Senior Vice President and General Manager of Emazing Inc.
4.8 On April 17, 2003 the Domain Name and associated business of Emazing Inc was acquired by Information Outfitters Inc, another company with which the Respondent was associated. Press coverage at this time characterised this transaction as:
“Emazing.com’s founders [having] bought the assets of the company back from Sony Music Entertainment Inc.”
4.9 The “Emazing” newsletter business was discontinued in September 2003, at which point a web page was displayed from the Domain Name that displayed a logo which took the form of a stylised red letter “E” in a yellow circle and a statement that “Emazing” was a registered trade mark of Information Outfitters Inc. Minor changes were subsequently made to this logo in about 2006, after which it took the following form:
4.10 In February 2012 the US Emazing Mark was subject to cancellation.
4.11 At some point after about May 2014 the references to Information Outfitters Inc on the webpage operating from the Domain Name were removed, leaving the logo identified at paragraph 4.9 above as the only thing displayed on the webpage.
5. Parties’ Contentions
5.1 The Complainant contends that the Domain Name is “confusingly identical” to the Complainant’s registered trade marks.
5.2 The Complainant further contends that as the only use being made of the Domain Name is to display the logo identified at paragraph 4.9 above, the Respondent does not have a right or legitimate interest in the Domain Name for the purposes of the Policy and claims that the Domain Name is simply being held to make a profit by selling it to a party that does have a legitimate interest in the Domain Name.
5.3 Further the Complainant contends that the registration in this case is one of opportunistic bad faith. According to the Complainant:
“This is confirmed by the fact that the domain is identical to the well known trademarks of [C]omplainant and has no connection to [R]espondent, the fact that respondent must have had actual knowledge of the trademarks given the fact that Emazing is a well known company in Internet services and holder of the European Community trademark ‘Emazing’, and given the fact that it would be very easy for the [R]espondent to check the domain, trademarks and tradename on the Intermit, before registering [the Domain Name]”.
5.4 The Respondent provides a relatively detailed description of when the Domain Name was registered and how it was used subsequent to registration. This is supported by printouts from the Internet Archive and other documentation, and this history has for the most part already been recounted in the Factual Background section of this decision above. The Respondent claims that the Domain Name has never been used for a business directed to persons in the Netherlands or the European Union.
5.5 The Respondent also claims that the Domain Name was used in recent years for the purpose of providing personal email addresses for the Respondent and members of his family. This is said to provide the Respondent with a legitimate interest in the Domain Name.
5.6 Further, the history of the use of the Domain Name is said by the Respondent to demonstrate that the Domain Name cannot have been registered and used in bad faith. So far as registration is concerned, the Respondent relies upon the fact that the Domain Name was initially registered more than two years prior to the date the Complainant’s business was founded. It also asks that the Panel make a finding of reverse domain name hijacking.
C. The Parties’ Supplemental Submissions
5.7 Both Parties have submitted supplemental submissions in these proceedings. None of these were called for by the Panel. The position as to the admissibility of unsolicited supplemental submissions is addressed in paragraph 4.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) as follows:
“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. In either scenario, or on its own initiative, a panel may in its discretion request further evidence, information or statements from one or other of the parties by way of administrative panel order.”
5.8 In large part the supplemental submission of the Complainant comprises argument that attempts to counter various points made by the Respondent in the Response. However, there is one key additional piece of evidence that the Complainant seeks to raise in this document; namely that on October 21, 2003 the Respondent sent an email (describing himself as the CEO of Information Outfitters Inc) to the Complainant’s lawyer that read as follows:
“I just received your letter regarding the EMAZING.COM domain. We have operated an email newsletter publishing business @ EMAZING.COM since July 1998. Additionally, we hold a registered trademark on the term EMAZING in the United States. This mark (2316782) was granted by the United States Patent and Trademark Office on February 8, 2000.”
If you’re interested in extending an offer for the domain and trademark, we’re more than willing to listen. However, please know that the offer would have to be substantial.”
5.9 No attempt is made in the supplemental submission to explain why this email could not have been brought to the attention of the Panel in the Complaint. Accordingly, the Panel would have been entitled to simply ignore this material. In fact, for reasons that the Panel will go on to explain, the Panel has formed the view that this material even if admitted to these proceedings undermines rather than assists the Complainant in this case. It, therefore, is prepared to allow this into these proceedings.
5.10 There is no need for the Panel to record the contents of the Respondent’s supplemental submission in response to the Complainant’s supplemental submission save to record the fact that the Respondent contends (as is already reasonably obvious from the text of the October 21, 2013 email) that the Respondent in sending that email was responding to an approach made by the Complainant to the Respondent at that time.
6. Discussion and Findings
6.1 To succeed in these proceedings the Complainant must make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.2 The Panel will address each of these requirements in turn and then address the Respondent’s allegations of reverse domain name hijacking.
A. Identical or Confusingly Similar
6.3 The Complainant has registered trade mark rights in at least one word trade mark for the term “Emazing”. The Domain Name takes the form of that term in combination with the “.com” Top-Level Domain. Given this, the Domain Name is clearly confusingly similar, if not identical, to that trade mark. In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.4 The Respondent puts forward a case to the effect that although the Domain Name has not in recent years been used to promote any goods or services, it has been used as part of email addresses for the Respondent and members of his family. This is said to provide a right or legitimate interest for the purposes of the Policy.
6.5 However, given the Panel’s findings so far as bad faith is concerned, it is not necessary to consider this issue further.
C. Registered and Used in Bad Faith
6.6 At first sight the question of whether there has been bad faith registration in this case appears to be very simple. The Respondent (or perhaps a company with which the Respondent was connected), registered the Domain Name not only before the Complainant possessed any registered trade mark rights but before the Complainant had even been created. Except in limited circumstances (see e.g. WIPO Overview 2.0, paragraph 3.1). There cannot be bad faith registration where the domain name registrant could not know of the existence of the complainant or its likely rights because neither the complainant nor its rights yet existed and had no knowledge that the complainant or those rights were likely to come into existence.
6.7 The position is, however, a little more complicated than this. The reason is that according to the Respondent’s own case, ownership in the Domain Name has been transferred on a number of occasions. As is recorded in paragraph 3.7 of the WIPO Overview 2.0, “transfer of a domain name to a third party does amount to a new registration”. Who or what constitutes a “third party” has been the subject of some debate among UDRP panels, but this Panel has tended to adopt a strict view on this issue. In the opinion of the Panel a transfer to a separate legal entity will constitute a fresh registration for the purposes of the Policy, even if that separate legal entity has close connections with the person in whose name the domain name was previously registered. The reasons for this were explained at some length by the Panel in ehotel AG v. Network Technologies Polska Jasinski Lutoborski Sp.J., WIPO Case No. D2009-0785, where it held that a transfer to a corporate entity was a fresh registration even though that corporate entity appeared to be the corporate alter ego of the previous registrant.
6.8 Although the Respondent has provided a detailed and very helpful explanation of how the Domain Name has been used since initial registration, there is no explanation or disclosure of when exactly the Domain Name formally transferred on the WhoIs register into the name of the Respondent. Nevertheless, even if one assumes in the Complainant’s favour this was relatively recent, and perhaps even after the email correspondence between the Complainant and the Respondent in October 2003, referred to in the parties’ supplementary submissions, the Panel is not persuaded that such registration was in bad faith.
6.9 The reason is that it is clear not only that the Respondent (or perhaps a company with which the Respondent was connected) registered the Domain Name before the Complainant existed but it was then used for a genuine business in the United States that lasted (albeit it would appear under different corporate ownership) for a significant number of years. That business appears to have come to an end as long ago as September 2003, but it is a business with which the Respondent was closely associated and it is not surprising that the Respondent might want to acquire the Domain Name that had been used for and incorporated the name of that business.
6.10 In the ehotel case mentioned supra, the Panel held that the transfer to a new corporate entity was in bad faith for the following reasons:
“Ultimately, the Panel is of the view that regardless of what may have been the original motivations for the registration of the Domain Name, by March 2004 [i.e., the date of transfer to a new corporate entity], [the previous registrant of the relevant domain name and the person who controlled the new corporate entity] had come to the conclusion that the real value to him of the Domain Name lay in taking advantage of its associations not with any business of his own but with the Complainant’s business.”
6.11 The Panel is unconvinced that it was with similar motives in mind that the Domain Name was transferred into the hands of the Respondent. The term “emazing” in the Domain Name can be read as portmanteau of the words “email” and “amazing”. Presumably it was for this reason that the term “emazing” was initially adopted for a newsletter business. Even if the Complainant’s business activities would result in many (European) Internet users associating that term with the Complainant (and the Panel notes that the Complainant has filed no evidence which would support that conclusion), there would still be potential uses of the term “emazing” in future that would or could take advantage of that portmanteau meaning and which would not in some way trade off of that reputation.
6.12 The fact that in October 2003 there was an exchange of correspondence between the Parties in which the Respondent expressed a willingness to consider offers to sell the Domain Name to the Complainant, does not improve the Complainant’s case. As the Respondent points out, it was the Complainant that approached the Respondent. This occurred only a month after the business use of the term “emazing” had ceased. It is a document that is consistent with the Respondent’s case as to how the Domain Name had up to that time been used. Further, the fact that the Respondent was prepared to consider offers for that name (together with the then still extant US Emazing Mark) at that time is neither surprising nor suspicious.
6.13 Even if one were to accept that from this date the Domain Name was held with a view to its possible subsequent sale to others that would not justify a finding of bad faith. The holding of a domain name for the purposes of sale is not per se in bad faith. What is required is for the Complainant to show that the Respondent acquired and then held that Domain Name with a view to taking some unfair advantage of the reputation of the Complainant’s marks (whether through by sale to the Complainant or its competitors or otherwise). The October 2003 correspondence gets nowhere near showing this. Further, there is no evidence before the Panel that at any time after that correspondence the Domain Name has been used in a manner that takes some unfair advantage of the reputation of the Complainant’s marks
6.14 Given this the Complainant has failed to show that the Domain Name was registered or used in bad faith and has failed to make out the requirements of paragraph 4(a)(iii) of the Policy.
D. Reverse Domain Name Hijacking
6.15 The Respondent has requested that the Panel make a finding of reverse domain name hijacking in this case. Paragraph 4.17 of the WIPO Overview 2.0 summarises what UDRP panels have generally considered to be the circumstances in which a finding of reverse domain name hijacking may be made. In particular, it states, inter alia, as follows:
“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; the complainant failed to notify the panel that the complaint was a refiling of an earlier decided complaint [see further discussion regarding refiled complaints in paragraph 4.4 above] or otherwise misled the panel; a respondent’s use of a domain name could not, under any fair interpretation of the reasonably available facts, have constituted bad faith; the complainant knew that the respondent used the disputed domain name as part of a bona fide business for which the respondent obtained a domain name prior to the complainant having relevant trademark rights [see further paragraph 3.1 above with respect to bad faith and complainant trademark rights which post-date domain name registration].
The fact of default by a respondent does not necessarily prevent a finding of Reverse Domain Name Hijacking in appropriate cases, and WIPO panels have on occasion entered such findings on their own initiative, especially where the complainant has intentionally attempted to mislead the panel by omitting material evidence.
WIPO panels have declined to find Reverse Domain Name Hijacking in circumstances including where: the complainant has succeeded in establishing each of the three essential elements required under the UDRP; the complainant’s argument under a required element of the UDRP fails, but not by such an obvious margin that the complainant must have appreciated that this would be the case at the time of filing the complaint; there is a question of clean hands or factual accuracy on the part of both parties; the respondent’s website contains commercial links explicitly referable to the complainant for the purpose of generating revenue, providing a basis for the complainant to be aggrieved; or there appears to be another relevant factual basis for filing the complaint.”
6.16 The Complainant or its advisors must have known from the start that the Domain Name was registered before the Complainant’s business even came into existence. This would have been apparent from the WhoIs registration details that were included by the Complainant as an Annex to the Complaint.
6.17 For the reasons that have been explained in the context of bad faith above, this of itself would not inevitably have been fatal to the Complainant’s case. Even if the initial registration could not have been in bad faith, the Complainant might have argued that a subsequent transfer constitutes a fresh registration in bad faith. However, the Complainant should have known that if it was to succeed in these proceedings, this was an issue that needed to be directly addressed. The Complainant did not do so. Indeed, the issue of transfer only raised its head at all because of the detailed and helpful description of events that was provided by the Respondent in his Response.
6.18 Further, there is the email from the Respondent in October 2003. Even if in October 2003 the Complainant had been unaware that the Domain Name had previously been used in connection with a United States business that used the term “emazing”, this email would have made this clear. Indeed, the Respondent even provided details of the trade mark that had been registered in the United States in that term in respect of that use.
6.19 That email was not disclosed in the Complaint and no attempt was made in the Complaint to disclose or address the previous use of the term “emazing”. Although that email was sent over twelve years ago, there has been no material change in the use of the Domain Name since that date. Therefore, the Panel considers the failure to disclose the email or address this issue to be a significant and material omission on the part of the Complainant. No excuse or explanation is offered for that failure in the Complainant’s supplementary submission.
6.20 Therefore, in short, these proceedings were commenced by the Complainant when it or its advisors should have known that the Complainant would have difficulty in showing bad faith registration and where it had in its possession, but initially decided not to disclose, correspondence that not only was relevant to the question of bad faith, but tended to undermine its case in this respect. Given this, the Panel concludes on the balance of probabilities that these proceedings were commenced speculatively with little belief that on any proper analysis they had a real prospect of success.
6.21 Accordingly, the Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. This Respondent’s allegation of reverse domain name hijacking is made out.
7.1 For the foregoing reasons, the Complaint is denied.
Matthew S. Harris
Date: August 25, 2015