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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Nightscaping, LLC v. Whoisguard Protected, Whoisguard, Inc. / NIGHTSCAPING SERVICES

Case No. D2016-1643

1. The Parties

The Complainant is Nightscaping, LLC of West Chester, Pennsylvania, United States of America ("United States" or "U.S."), represented by Panitch Schwarze Belisario & Nadel, LLP, United States.

The Respondent is Whoisguard Protected, Whoisguard, Inc. of Panama / NIGHTSCAPING SERVICES of Flushing, New York, United States, represented by Campolo, Middleton & McCormick, LLP, United States.

2. The Domain Name and Registrar

The disputed domain name <nightscaping.com> is registered with eNom, Inc. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 12, 2016. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 15, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 18, 2016, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on August 22, 2016.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 23, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 12, 2016. At the request of the Respondent, and in accordance with paragraph 5(b) of the Rules, the due date for Response was extended to September 16, 2016. The Response was filed with the Center on September 16, 2016.

The Center appointed David H. Bernstein, Michelle Brownlee and Marylee Jenkins as panelists in this matter on October 18, 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, a U.S. company, acquired the rights to the trademark NIGHTSCAPING on June 26, 2014. The trademark assignment is recorded with the United States Patent and Trademark Office (the "USPTO"). The mark NIGHTSCAPING was first registered in the USPTO by the Complainant's predecessor-in-interest on June 2, 1964 under U.S. Registration No. 770,661. Following the June 2014 assignment of the registration to the Complainant, the Complainant renewed the registration on July 23, 2014. In the renewal application, the Complainant stated under oath that it was using the NIGHTSCAPING mark in connection with "Electrical Fixtures and Parts Employed in Illuminating Landscaped Areas-Namely, Illuminating Fixtures, Cables and Transformers".

The disputed domain name <nightscaping.com> was first registered by the Complainant's predecessor in interest on August 28, 1995. The disputed domain name was assigned to the Complainant on June 26, 2014. Following the June 2014 assignment of the disputed domain name to the Complainant, the Complainant failed to renew the domain name registration when it was up for renewal on or about October 19, 2015, which the Complainant says was inadvertent. After the disputed domain name expired, it was acquired by a third party, New Ventures Services Corp.

The Respondent is a U.S. company that sells landscape lighting fixtures and accessories. The Respondent contacted the Complainant's attorney by email early October 2015 (prior to the expiration of the Complainant's registration of the disputed domain name) to inquire about purchasing the disputed domain name. The Complainant's attorney did not respond to the Respondent's inquiry. As noted above, the disputed domain name was thereafter acquired by New Ventures Services Corp. On October 27, 2015, the Respondent purchased the disputed domain name from New Ventures Services Corp. for USD 16,000. After the purchase date, and as of June 16, 2016, the disputed domain name redirected traffic to the Respondent's commercial webpage, "www.waclandscapelighting.com".

5. Parties' Contentions

A. Complainant

The Complainant alleges that the disputed domain name is identical to the NIGHTSCAPING trademark in which it has rights, as the disputed domain name consists only of the trademark in its entirety.

The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant asserts that it has never consented to the Respondent's use of the trademark or the disputed domain name, and that it did not intentionally abandon the disputed domain name when it inadvertently allowed its registration to lapse. Furthermore, the Complainant states that the Respondent used the disputed domain name solely to redirect business to the Respondent's own website, which features competing landscape lighting products. The Complainant claims this use diverts customers who might try to contact the Complainant through "@nightscaping.com" email addresses associated with the disputed domain name.

The Complainant alleges that the Respondent registered the disputed domain name in bad faith, in an attempt to create confusion and trade on the goodwill of the NIGHTSCAPING trademark. The Complainant asserts through, Inter alia, the declaration of its President that the Complainant tried to purchase the disputed domain name but that the Respondent has refused to negotiate a resale of the disputed domain name back to the Complainant. The Complainant's President indicates that he did speak with the Respondent but does not indicate whether or not he said the things attributed to him by the Respondent in its Response (see section 5.B.). The Complainant also acknowledges that its counsel received an email inquiry from the Respondent in which the Respondent indicated that it was interested in acquiring the Complainant's rights in the disputed domain name; the Complainant does not indicate that it responded to that inquiry.

B. Respondent

The Respondent contends that it bought the disputed domain name in good faith for use as a blog on landscape lighting issues, upon a good faith belief that the Complainant no longer conducted business under the trademark or the disputed domain name.

The Respondent alleges that the Complainant's predecessor-in-interest abandoned the NIGHTSCAPING trademark through non-use when it terminated its business in 2013. The Respondent has submitted a printout of the Complainant's predecessor-in-interest's website, as of May 2014 (prior to the Complainant's acquisition of the trademark registration and disputed domain name), which states that the company had closed its business, that its products could still be serviced through certain distributors, and that its intellectual property rights were available for sale.

The Respondent claims that its due diligence investigations revealed that the Complainant did not use the NIGHTSCAPING trademark or the disputed domain name after it acquired the intellectual property rights in June 2014. The Respondent notes that the Complainant did not update the webpage for the disputed domain name at any time from the June 2014 acquisition until the expiration of the disputed domain name's registration in October 2015. Throughout that period, the website to which the disputed domain name resolved continued to say that the Complainant's predecessor-in-interest has closed its business, that its products could still be serviced through certain distributors, and that its intellectual property rights remained available for sale. The Respondent has submitted printouts of the website from the Internet Archive substantiating these assertions.

The Respondent asserts that it called the Complainant's President Ronny Tang in early October 2015 to inquire about purchasing the trademark and the disputed domain name, but Mr. Tang disavowed ownership of the trademark and the disputed domain name. He said that the Complainant was not using the trademark and that it had sold the trademark and the disputed domain name to get out of a bad investment. Mr. Tang said he would pass on the inquiry to the new owners, but the Respondent never heard back. The Respondent then attempted to reach the Complainant and its counsel by email in order to seek to purchase the disputed domain name, but it received no answer. The Respondent has submitted phone records substantiating that calls were made on the dates it identified and has submitted a copy of its email to the Complainant's counsel.

The Respondent acknowledges that the disputed domain name redirects to its website "www.waclandscapelighting.com". The Respondent states that this redirection is a temporary measure until its blog is ready to go live. The Respondent has submitted drafts of the blog that it intends to post once this matter is resolved.

6. Discussion and Findings

To prevail, the Complainant must prove all three elements set out in paragraph 4(a) of the Policy:

(i) the domain name 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 domain name; and

(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Ownership by a complainant of a federally-registered trademark on the Principal Register without disclaimer of the relevant portion constitutes prima facie evidence that the complainant owns trademark rights for purposes of the Policy. That prima facie evidence, though, can be rebutted, including by compelling evidence that the trademark has been abandoned. mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141.

Here, the Respondent submits compelling evidence that the Complainant may well have abandoned its trademark rights. There also is a suggestion, through the Respondent's draft blog posts, that the term "nightscaping" may be a generic term for night-time light-based landscaping. If these issues were determinative in this case, the Panel would have been inclined to ask the Complainant for its response to these allegations in the Response, which the Complainant may not have anticipated. Because of the Panel's conclusion that there was no bad faith registration, though, the Panel need not resolve this issue in order to reach a decision in this matter, and it is therefore inappropriate to put the parties to further expense, and to delay the adjudication of this proceeding, by asking for supplemental submissions on the question of trademark rights. The Panel therefore declines to reach any decision on the first factor.

B. Rights or Legitimate Interests

Whether the Respondent has rights or legitimate interests in the disputed domain name turns, in large part, on whether the trademark remains valid. If NIGHTSCAPING remains a valid trademark for lighting fixtures, the Respondent's use of the disputed domain name and of the trademark on its blog posts would likely be infringing rather than legitimate. If the trademark has been abandoned, or if the term has become generic or is merely descriptive, then the Respondent's use of the disputed domain name and of the term "nightscaping" on its blog would likely be legitimate. In light of the Panel's decision to forgo an adjudication of trademark rights, and given the Panel's decision that, in any event, the Respondent did not register the disputed domain name in bad faith, it is unnecessary for the Panel to decide whether the Respondent has rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides four non-exclusive circumstances that can establish registration and use of a domain name in bad faith. None of those circumstances exist here. The factual record does not show that the Respondent acquired the disputed domain name primarily for the purpose of selling it back to the Complainant; to the contrary, the record supports a finding that the Respondent tried to purchase the disputed domain name directly from the Complainant before the Complainant's registration of the disputed domain name expired. The Respondent did not acquire the disputed domain name in order to prevent the Complainant from reflecting its trademark in a corresponding domain name; to the contrary, the Respondent's due diligence as set forth in the record suggested that the Complainant lacked any continuing trademark rights and that the Complainant expressly abandoned both the trademark and the disputed domain name. The Respondent did not acquire the disputed domain name for the purpose of disrupting the Complainant's business; to the contrary, the Respondent's investigation suggested that the Complainant had discontinued any use of the disputed domain name in connection with its business, and the Respondent actually reached out directly to the Complainant in an effort to purchase the disputed domain name from the Complainant before it expired. And the Respondent did not acquire the disputed domain name with the intent of causing confusion; to the contrary, the Respondent's subjective intent appears to have been to use the disputed domain name to describe a landscaping activity based on its belief that the Complainant was no longer using the disputed domain name or trademark.

The Panel acknowledges that the Complainant's President has submitted a declaration in which he states that the Complainant never intended to abandon its rights in the disputed domain name. The Complainant's President admits to speaking with the Respondent's representative and also admits that the Respondent sent an email to the Complainant's counsel seeking to purchase the disputed domain name. Although the Complainant's President does not say how it responded to that emailed inquiry, the strong suggestion is that the Complainant ignored the request, as the Respondent states, which lends credibility to the Respondent's explanation of its due diligence and the conclusions that it reached. The Complainant's President's declaration does not indicate whether the Respondent's report of the parties' conversation is inaccurate. Although there remains some question, the record tends to support the Respondent's version of the events. If either party disagrees with the Panel's findings in this regard, the Rules specifically contemplate that the parties could litigate heavily-contested factual disputes in an alternative forum that allows for discovery, live testimony and cross-examination, all of which could facilitate the trier-of-fact's ability to make credibility determinations. Policy paragraph 4(k).

The Panel therefore finds, based on the record presented to the Panel, that the Complainant has not proven that the disputed domain name was registered and used in bad faith. The Complainant has failed to satisfy the third element of paragraph 4(a) of the Policy.

7. Decision

For the foregoing reasons, the Complaint is denied.

David H. Bernstein
Presiding Panelist

Michelle Brownlee
Panelist

Marylee Jenkins
Panelist
Date: November 6, 2016

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