WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

GWG Holdings, Inc. v. Jeff Burgar, Alberta Hot Rods

Case No. D2016-1420

1. The Parties

The Complainant is GWG Holdings, Inc. of Minneapolis, Minnesota, United States of America (“United States”), represented internally.

The Respondent is Jeff Burgar, Alberta Hot Rods, High Prairie, Canada, represented by ESQwire.com P.C., United States.

2. The Domain Name and Registrar

The disputed domain name <gwg.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2016. On July 13, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 14, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 25, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 14, 2016. At the request of the Respondent, the due date for Response was extended to August 18, 2016. The Response was filed with the Center on August 13, 2016.

The Center appointed Assen Alexiev, Jonathan Turner and The Hon Neil Brown Q.C. as panelists in this matter on September 28, 2016. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a publicly traded company formed in 2006 and incorporated in 2008. It operates on the secondary market for life insurance, and offers financial services to life insurance policyholders, including viatical and life settlement contracts.

The Complainant is the owner of the following United States trademark registrations of the sign GWG (the “GWG trademark”):

- the word trademark GWG with registration number 4,454,872, registered on December 24, 2013 for services in International Class 36, first used in commerce on February 1, 2012;

- the combined trademark GWG with registration number 4,363,738, registered on July 9, 2013 for services in International Class 36, first used in commerce on February 1, 2012; and

- the combined trademark GWG with registration number 4,121,054, registered on April 3, 2012 for services in International Class 36, first used in commerce on October 10, 2007.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it has extensively used “GWG” in advertising its services and is recognized in the marketplace as “GWG.”

The Complainant contends that the disputed domain name is identical to the GWG trademark because it incorporates it in its entirety, and the “.com” generic Top-Level Domain (“gTLD”) may be disregarded for the purposes of the comparison.

According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has never licensed or authorized the Respondent to use the GWG trademark, and the Respondent does not have any trademark rights in the disputed domain name. The Respondent has not used, or prepared to use the disputed domain name in connection with any bona fide offering of goods or services and has not made a legitimate noncommercial use or fair use of it. In 2015, the Complainant’s counsel attempted to notify the Respondent of its infringement of the GWG trademark and offered to purchase the disputed domain name from the Respondent, but the Respondent did not respond and since then has not used or made preparations to use the disputed domain name. In 2016, the Complainant again communicated to the Respondent the Complainant’s trademark rights in the disputed domain name and offered to purchase the disputed domain name, and the Respondent refused. The Respondent did not at that time mention any use or plan to use the disputed domain name. The Complainant also submits that the Respondent has not acquired any public reputation in association with the disputed domain name, and is not known by the disputed domain name. According to the Complainant, the only intent of the Respondent is to tarnish the GWG trademark of the Complainant.

The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Respondent is cybersquatting and has no intent on using the disputed domain name, which has remained parked with no content. The Respondent has registered the disputed domain name in order to prevent the Complainant from reflecting its GWG trademark in a corresponding domain name. The Respondent has engaged in a pattern of conduct of registering the names of celebrities and companies as domain names in bad faith and with the intent to prevent the trademark owners from registering their trademarks as domain names.

B. Respondent

The Respondent submits that it registered the disputed domain name on March 3, 1997 because it represented a combination of three letters to which it believed no party could claim exclusive rights, and which it believed was permissible to be registered on a first-come, first-served basis. The Respondent did not register the disputed domain name with the Complainant’s trademark in mind and had no knowledge of the Complainant, its website, its business name or trademark when it registered the disputed domain name over nineteen years ago.

The Respondent maintains that it did not register the disputed domain name with the intent to sell it to the Complainant, to disrupt the Complainant’s business, or to confuse consumers seeking to find the Complainant’s website. The Respondent did not register the disputed domain name to prevent the Complainant from owning a domain name incorporating its trademark. For over a decade the Respondent managed its own website construction business and holding company, General Web Group, through the domain names <generalwebgroup.com> and <gwg.com>. The Respondent operated both domain names in a manner similar to companies that use both their initials and corporate name online. In 1998, GWG - General Web Group became the “umbrella” for several of the Respondent’s websites. The Respondent’s first website at the disputed domain name went up in 1999 and was in place until 2009. General Web Group pointed to the same website during the period 2002 to 2005. GWG - General Web Group was incorporated from a proprietorship to a limited liability company under Alberta Provincial Corporate Registry, as 831651 Alberta Ltd. in May of 1999 and has continued its corporate affairs to the present.

The Respondent states that it has been registering common word domain names for investment and development since the late 1990s, before the advent of pay-per-click advertising, and before there were domain name parking services. The Respondent registers common word and three-letter domain names because it believes such domain names best fulfill the purpose of a domain name, which is to be easy to remember. Common word and three-letter domain names serve well as online identities and are commercially valuable. The Respondent continues to invest in three-letter “.com” domain names because they are inherently valuable being short and memorable. Three-letter acronyms have diverse commercial uses and do not belong exclusively to anyone. An important factor in the Respondent’s decision to invest in and own three-letter “.com” and generic domain names are the many decisions by impartial panels that a business strategy of investing in three-letter “.com” domain names is an acceptable practice and legitimate business enterprise.

The Respondent states that it receives frequent offers to purchase its three-letter “.com” or generic domain names from companies and individuals that place a value on these domain names outside of any trademark use that may be made for a particular letter combination or acronym. At no time did the Respondent solicit the Complainant to purchase the disputed domain name or target the Complainant in any manner. Contrary to the Complainant’s assertions, the Respondent has over a decade of use of the disputed domain name in connection with its bona fide site building and hosting business with links and information unrelated to the Complainant.

The Respondent points out that the Complainant is not the exclusive user of the three-letter combination “gwg”, and there is no evidence that this combination is a well-known brand of the Complainant. It cannot be argued that the Respondent targeted the Complainant as the Respondent’s ownership and use of the disputed domain name predates the Complainant’s trademark registrations by over a decade. “GWG” is also a three-letter combination and a common acronym for many entities unrelated to the Complainant. This third-party use is evidence that the Complainant does not have exclusive rights to the letters “gwg” and thus supports the Respondent’s legitimate interest in the disputed domain name.

The Respondent contends that it has rights and legitimate interests in the disputed domain name. It is well‑established that anyone is entitled to register domain names incorporating letter combinations to which others have no exclusive rights. For ten years, the Respondent operated a website development business and advertised other active web businesses under its company name “General Web Group”, and utilized the disputed domain name as its site for its web businesses. The Respondent’s Alberta Provincial company continues to operate. This decade-long use of the disputed domain name establishes the Respondent’s legitimate interest in the disputed domain name. As the Respondent also invests in domain names, its ownership of the disputed domain name with the intent to resell it satisfies the legitimate interest prong of the Policy, provided there is no evidence a trademark was targeted by the registrant.

According to the Respondent, the Complainant has not demonstrated that the disputed domain name was registered and is being used in bad faith. Because of the substantial third-party use of and association with the three-letter combination, the Complainant must produce specific evidence of the Respondent’s bad faith. Being a common acronym, the registration of the disputed domain name is similar to registering a common word domain name, which is permitted on a first-come, first-served basis. Since the Respondent’s registration pre-dates the Complainant’s GWG trademark by almost a decade, this claim must fail. The Respondent owned and operated a business as “GWG and “General Web Group”. It is clear there is no likelihood of confusion with the Complainant’s later developed insurance and investment product. As a three‑letter combination, the lack of advertisements targeting goods or services offered by the Complainant indicated that the Respondent did not intend to confuse Internet users into thinking that the Complainant was somehow associated with the Respondent’s website. Without establishing any such intent, the Complainant’s claim cannot succeed under 4(b)(iv). Absent direct proof that a common term or combined letter domain name was registered or acquired solely for the purpose of profiting from the Complainant’s trademark rights, there can be no finding of bad faith registration or use. The evidence is that the Respondent registered the disputed domain name long prior to the Complainant’s creation, was using the disputed domain name in connection with its website development company “General Web Group” and has never targeted the Complainant in any manner.

The Respondent also submits that the Complainant’s long inaction supports inference that there is no bad faith. It is notable that the Complainant waited nearly twenty years from the date the Respondent registered the disputed domain name to initiate this Complaint. Such a long delay in taking action raises the inference that the Complainant did not truly believe the disputed domain name was registered in bad faith.

The Respondent requests the Panel to declare in its decision that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. In support of this request, the Respondent points out that there is no basis for the Complaint and that when it filed the Complaint the Complainant knew that it could not prove two of the three of the elements to prevail. Under the circumstances, even a cursory review of the Policy and the decisions under it would have alerted the Complainant that its case was devoid of merit. Had the Complainant reviewed the archive records for the disputed domain name it would been even clearer that the Respondent had operated a business for over a decade utilizing the disputed domain name. The fact that the Complaint shows no evidence of the Respondent’s wrongdoing is itself proof of the bad faith of the Complainant in filing this action.

6. Discussion and Findings

Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:

(i) the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the Respondent has registered and is using the disputed domain name in bad faith.

A. Identical or Confusingly Similar

The Panel is satisfied that the disputed domain name is effectively identical to the GWG trademark, in which the Complainant has rights. Since the gTLD “.com” is generally disregarded for the purposes of the test of confusing similarity, the only relevant part of the disputed domain name is the section “gwg”, and it coincides with the word element of the GWG trademark of the Complainant.

B. Rights or Legitimate Interests

The Policy requires the Complainant to make at least a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant makes such a showing, the Respondent has to provide evidence to demonstrate that it has rights or legitimate interests in the disputed domain name. The burden of proof, however, always remains on the Complainant to establish by a preponderance of the evidence that the Respondent lacks rights or legitimate interests in the disputed domain name. See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.

The Complainant alleges that the Respondent has no rights and legitimate interests in the disputed domain name, as it is not commonly known or identified by the name “GWG” and is not the holder of any trademark rights in this name. The Complainant states that it has never licensed or authorized the Respondent to use the GWG trademark, and alleges that the Respondent has not used, or prepared to use the disputed domain name in connection with any bona fide offering of goods or services and has not made a legitimate noncommercial use or fair use of it.

On its part, the Respondent has asserted that “gwg” is a three-letter combination over which no party can claim exclusive rights. The registration of the disputed domain name was permissible on a first-come, first‑served basis, and such registration establishes the Respondent’s legitimate interest, provided the disputed domain name was not registered with a trademark in mind. The Respondent has not targeted the Complainant as the Respondent’s ownership and use of the disputed domain name predates the registration of the GWG trademark by over a decade. For ten years, the Respondent operated a website development business and advertised other active web businesses under its company name “General Web Group”, and utilized the disputed domain name for the website for its web businesses, and no links related to the Complainant or its business have ever been placed on this website. The Respondent has claimed that this conduct represents a bona fide provision of advertising services that gives rise to a legitimate interest in the disputed domain name.

The Panel has carefully considered the arguments of the parties and the evidence submitted by them. Although the Complainant has alleged that the registration and use of the disputed domain name by the Respondent is illegitimate and was made with the intention to tarnish the GWG trademark and to prevent the Complainant from reflecting its GWG trademark in a corresponding domain name, the Complainant has not referred to any concrete details in this regard and has not submitted any evidence that the Respondent has targeted with its conduct the Complainant or the GWG trademark. As submitted by the Respondent, the Complainant does not appear to be the exclusive user of the three-letter combination “gwg”, and the Complainant has not provided evidence that this combination is a well-known brand of the Complainant.

In view of the above, and in light of the fact that the disputed domain name was registered eleven years before the incorporation of the Complainant, the Panel is of the opinion that the Respondent has not had the Complainant in mind when it chose to register the disputed domain name, and that the Respondent had registered and used the disputed domain name because it represented an abbreviation of the company name “General Web Group”. The evidence submitted by the Respondent about the content of its website confirms its statement that it had not contained any reference to the Complainant or to the GWG trademark.

Taking the above into account, the Panel finds that the Complainant has failed to show that the Respondent lacks rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the holder has registered or has 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 or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on the holder’s website or location.

The Complainant argues that the Respondent has registered and used the disputed domain name in bad faith because the main motive behind the actions of the Respondent was to tarnish the GWG trademark of the Complainant and to prevent the Complainant from reflecting its GWG trademark in a corresponding domain name.

The evidence brought before the Panel does not lead to the conclusion that the Respondent’s behavior with respect to the disputed domain name is in bad faith. The Complainant has not supported its blank statements with any evidence and has not established that the Respondent has registered the disputed domain name in order to tarnish the GWG trademark of the Complainant and to prevent the Complainant from reflecting its GWG trademark in a corresponding domain name. The Complainant has not provided evidence that the combination is a well-known brand of the Complainant.

As asserted by the Respondent, the disputed domain name represents an abbreviation of its company name “General Web Group”, and it is not conceivable that the Respondent could have known of the Complainant at the time of the registration of the disputed domain name, which took place eleven years before the incorporation of the Complainant. Instead, it appears that the Respondent has registered and used the disputed domain name because it represents an abbreviation of its company name and without targeting the Complainant.

Taking the above into account, the Panel finds that the Complainant has failed to establish that the Respondent has registered and used the disputed domain name in bad faith.

D. Reverse Domain Name Hijacking

In this matter, the Respondent has requested that the Panel make a finding of Reverse Domain Name Hijacking.

Paragraph 15(e) of the 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 … 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 (“RDNH”) 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.”

The onus of proving a complainant’s bad faith is generally on the respondent and, consequently, the mere lack of success of the complaint is not itself sufficient for a finding of RDNH. Indeed, even if a complainant were over-optimistic in filing the complaint, that would not by itself necessarily justify a finding of RDNH. What must be shown, as paragraph 1 of the Rules makes plain, is that the Complainant was actuated by bad faith in bringing the complaint. In Jazeera Space Channel TV Station v. AJ Publishing aka Aljazeera Publishing, WIPO Case No. D2005-0309, the majority of the panel stated that: “Allegations of reverse domain name hijacking have been upheld in circumstances where a respondent’s use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy (see Goldline International, Inc v. Gold Line, WIPO Case No. D2000-1151). See also Deutsche Welle v. DiamondWare Limited, WIPO Case No. D2000-1202, where an allegation of reverse domain name hijacking was upheld in circumstances where the complainant knew that the respondent used the at-issue domain name as part of a bona fide business, and where the registration date of the at-issue domain name preceded the dates of the complainant’s relevant trademark registrations.”

Applying those principles to the facts of the present case, the Panel’s view is that there are several reasons why a finding of RDNH should be made.

First, as the Panel has already pointed out, there is and always was a complete absence of evidence or any facts from which an inference could reasonably be drawn that the Respondent registered the disputed domain name to tarnish the GWG trademark of the Complainant, to prevent the Complainant from reflecting its GWG trademark in a corresponding domain name or for any other improper reason. In particular, there was no evidence that the combination of letters making up the trademark was a well-known brand of the Complainant or from which an inference could be drawn that the Respondent was targeting the Complainant or was minded to do so when it registered the disputed domain name.

Secondly, the Respondent registered the disputed domain name some eleven years before the Complainant was incorporated, making it impossible for the Respondent to have known of the Complainant or to have been motivated by bad faith towards a non-existent company when it registered the disputed domain name.

Thirdly, the disputed domain name is clearly an abbreviation of the business name “General Web Group” which, the evidence shows, is the name of the Respondent’s business and in connection with which it used the disputed domain name for many years before even the Complainant’s stated first use of the GWG trademark in commerce. The Respondent’s explanation for registering the disputed domain name, namely that it represented an abbreviation of its business name, was therefore clearly plausible and verifiable to a reasonable observer who was prepared to make inquiries as to the facts before filing the Complaint.

Not only do the above circumstances militate against any notion that the Respondent’s acquisition of the disputed domain name was illegitimate or that it was motivated by bad faith, but the same circumstances must have been known to the Complainant or could have been ascertained by reasonable inquiries on behalf of the Complainant before the Complaint was filed.

The Panel’s conclusion therefore is that the Complainant was motivated by making a claim that it knew or should have known after reasonable inquiries was baseless and that, in making the claim, it could not succeed.

The other factor that the Panel has taken into account is the importance of preserving the integrity of the UDRP for legitimate claims, an objective that is not enhanced by declining to make a finding of RDNH in an appropriate case, of which this is one.

For the above reasons, the Panel finds that there has been RDNH in this case.

7. Decision

For the foregoing reasons, the Complaint is denied and the Panel declares that the Complaint was brought in bad faith in an attempt at Reverse Domain Name Hijacking.

Assen Alexiev
Presiding Panelist

Jonathan Turner
Panelist

The Hon Neil Brown Q.C.
Panelist
Date: October 13, 2016