WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Connecting Open Time, LLC v. Domains By Proxy, LLC / Kyle Burns
Case No. D2016-2328
1. The Parties
Complainant is Connecting Open Time, LLC of Lewisville, Texas, United States of America (“United States” or “U.S.”), represented by Lewis & Lin, LLC, United States.
Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States / Kyle Burns of Port Charlotte, Florida, United States, represented by Steven Rinehart, United States.
2. The Domain Name and Registrar
The disputed domain name <opentime.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 November 15, 2016. On November 16, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 17, 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 Complainant on November 18, 2016, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amended Complaint. Complainant filed an amended Complaint on November 23, 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 Respondent of the Complaint, and the proceedings commenced on November 25, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 15, 2016. The Center received an email communication from Respondent on November 26, 2016. The Response was filed with the Center on December 15, 2016.
The Center received an email communication from Complainant on December 19, 2016, regarding a possible withdrawal of the Complaint. Respondent provided comments regarding the proposed withdrawal on December 27, 2016, and sent a further communication on January 11, 2017, regarding the possible withdrawal. On January 13, 2017, Complainant rescinded its initial request for a possible withdrawal of the Complaint and submitted a Supplemental Filing for the matter.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on January 23, 2017. 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.
Respondent submitted a Supplemental Filing on January 24, 2017 and Complainant submitted an additional Supplemental Filing on January 27, 2017. On February 10, 2017, the Panel issued Administrative Panel Procedural Order No. 1 that invited Respondent to make a limited Supplemental Filing to further clarify certain points raised by Respondent and addressed by Complainant in its January 27, 2017 Supplemental Filing. On February 13, 2017, Respondent submitted a Supplemental Filing.
4. Factual Background
Complainant Connecting Open Time, LLC is a company that develops and provides time management software. Complainant is based in Lewisville, Texas and was founded in October 2014. Complainant has a pending U.S. trademark application for the OPENTIME mark, which was filed on May 20, 2015 and issued to registration on January 3, 2017. Complainant also owns the domain name <opentimeapp.com>, which is used to direct commercial and individual consumers to Complainant’s website concerning Complainant’s services and mobile application products. The <opentimeapp.com> domain name was registered by Complainant on October 20, 2014.
The disputed domain name <opentime.com> was originally registered on or about September 26, 2000 and according to Respondent was purchased by Respondent through Afternic in or around May 2016 (Complainant claims this happened in July 2016). The disputed domain name resolves to a web page with click-through links and includes a legend in a banner at the top of the web page offering the disputed domain name for sale.
5. Parties’ Contentions
Complainant asserts that it adopted and first started using the OPENTIME trademark in or about November 2014 when it launched its website at “www.opentimeapp.com”. Complainant also asserts that it has, since November 2014, continuously and extensively used the mark OPENTIME in connection with its time management software, and that, as a result, it owns common law rights in the OPENTIME mark. Complainant also claims rights in OPENTIME by virtue of a trademark application it filed in the United States in May 2015 for the mark OPENTIME. That application matured to registration on January 3, 2017.
Complainant contends that the disputed domain name <opentime.com> is identical to Complainant’s OPENTIME mark.
Complainant argues that Respondent lacks any rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the disputed domain name, has not used the disputed domain name in connection with a bona fide offering of goods and services, has not made legitimate noncommercial or fair use of the disputed domain name, and acquired the disputed domain name in or about July 2016, a date after Complainant had established trademark rights in OPENTIME. Complainant further argues that Respondent lacks any legitimate interests in the disputed domain name as Respondent was aware of Complainant’s OPENTIME name and mark when Respondent acquired the disputed domain name and then used such for a landing page that features links and advertisements from third parties offering services competitive to Complainant and/or offered the disputed domain name for sale.
Finally, Complainant asserts that Respondent registered and has used the disputed domain name in bad faith since Complainant has prior established trademark rights in OPENTIME, the disputed domain name is identical to Complainant’s OPENTIME trademark, and the disputed domain name has been used by Respondent to earn advertising dollars from traffic mistakenly diverted to the disputed domain name. Complainant also asserts that Respondent has a pattern of having registered and used domain names in bad faith given that Respondent has registered at least one other domain name based on a registered trademark owned by a third party. Complainant also maintains that Respondent’s bad faith is established by its attempts to profit from the disputed domain name, including by making the disputed domain name available for purchase, and through the use of a privacy service to mask Respondent’s identity.
Respondent contends that Complainant’s claims are baseless and that this proceeding presents a case of Reverse Domain Name Hijacking.
Respondent claims that it has senior rights in the OPEN TIME mark as Respondent is the owner of a Japanese trademark registration for OPEN TIME (filed on March 31, 2016 and issued to registration on October 21, 2016) and because Respondent created and has been the registrant of the disputed domain name since September 26, 2000. Respondent also maintains that it has used the mark OPEN TIME in Japan for several years and that it registered the disputed domain name for the purpose of providing publications dedicated to the public domain and open source computer programs, particularly in Asia.
Respondent further asserts that Complainant’s assertions as to its first use of the OPENTIME mark are false as Complainant filed a sworn declaration with the United States Patent and Trademark Office (“USPTO”) asserting that it first began using the OPENTIME mark in commerce on October 7, 2016 – a date well after Respondent registered the disputed domain name. Respondent also asserts that Complainant does not have common law rights in OPENTIME, as “open time” is a descriptive term and there exists extensive third-party use of “open time” as either a descriptive term or as a trademark for similar types of products.
Based on the foregoing, Respondent claims that Complainant had no plausible basis for its Complaint and has filed the Complaint in this proceeding in bad faith.
C. The Parties’ Supplemental Filings
In its Supplemental Filing of January 13, 2017, Complainant maintains that Respondent has provided false information by claiming to be the registrant of the disputed domain name since September 2000 when, in fact, ownership of the disputed domain name has changed hands at least five times since September 2000 and was only obtained by Respondent in or about July 2016. Complainant asserts that Respondent purchased the disputed domain on or about July 14, 2016 – a date well after Complainant secured rights in the OPENTIME trademark and after Complainant filed its United States trademark application for OPENTIME.
Complainant also argues that while Respondent has claimed use of OPEN TIME for many years, Respondent has provided no evidence of such claimed use. Complainant further argues that because Complainant owned prior existing trademark rights in OPENTIME when Respondent filed a trademark application in Japan on March 31, 2016 for the OPEN TIME trademark, Respondent’s registration is of no import and was done for purposes of taking advantage of Complainant’s previously existing trademark rights.
Respondent filed a Supplemental Filing on January 24, 2017 in which Respondent further claims priority in OPEN TIME. Respondent argues that its Japanese trademark registration for OPEN TIME was applied for in March 2016, which is well before Complainant’s claimed first use in commerce date of October 7, 2016, as specified in Complainant’s United States trademark application for OPENTIME (which was filed in May 2015 on an intent-to-use basis). Respondent also maintains that it is the prior user of OPEN TIME and as proof of such has submitted (i) a redacted document entitled “Statement of Work for Implementation of OPENTIME” which has a February 20, 2012 date, and (ii) undated screenshots that Respondent asserts are from the dashboard of Respondent’s claimed OPENTIME software product. Respondent further asserts that its rights in the disputed domain name date back to September 26, 2000 because Respondent is a successor-in-interest to the use of the disputed domain name made by his predecessors-in-interest by virtue of the “Afternic Membership Agreement” (pursuant to which Respondent acquired the disputed domain name in or about May 2016).
On January 27, 2017, Complainant filed an additional Supplemental Filing in which Complainant reiterates that Respondent only acquired the disputed domain name in July 2016 which was after Complainant began use of OPENTIME in 2014, registered and used the <opentimeapp.com> domain name since November 2014, filed its United States application for OPENTIME on May 20, 2015, and offered its OPENTIME software in the iTunes app store in June 2015. Complainant also challenges the evidence submitted by Respondent regarding Respondent’s claimed use of OPEN TIME since 2012.
On February 13, 2017, Respondent filed a further Supplemental Filing pursuant to the Panel’s Procedural Order No. 1. In that submission, Respondent confirms that no specimens of use were filed with Respondent’s trademark application for the OPEN TIME mark in Japan. Respondent, however, attaches invoices dated from July 2015 through February 2017 that Respondent maintains show use of OPEN TIME by Respondent and sales of Respondent’s OPEN TIME software product to numerous clients across Asia and the United States. Respondent also advises that it purchased the disputed domain name through Afternic in or about May 2016 and maintains that its rights in the disputed domain name go back to September 2000 by virtue of the Afternic Legal Agreement.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Before addressing the above, the Panel first turns to the Parties’ respective arguments regarding their claimed priority of rights in “OPEN TIME” and “OPENTIME”.
A. Complainant’s Claimed Mark and Respondent’s Claim of Prior Rights
In this proceeding, the Panel is tasked with determining inter alia whether, on the evidence presented, Respondent has rights in the disputed domain name that predate those that Complainant claims in its Complaint. If Respondent, in fact, has priority either by virtue of registering the disputed domain name or owning an OPEN TIME trademark before the date Complainant acquired trademark rights in OPENTIME, then Complainant’s claims would likely fail. Respondent could not be found to have registered the disputed domain name in bad faith if the disputed domain name was registered before Complainant acquired its trademark rights. Similarly, if Respondent has bona fide rights in a pre-existing trademark for OPENTIME, then Complainant would be hard pressed to argue that Respondent lacks a legitimate interest in the disputed domain name that solely consists of OPEN TIME or that Respondent registered the disputed domain name in bad faith.
In a UDRP proceeding the panel is constrained to the record placed before it and does not have the benefit of a full hearing with live witnesses. Given this constraint, the quality of the evidence presented is of paramount importance and a panelist must determine whether the evidence submitted by a party is credible, reliable and/or convincing. Mere factual allegations unsupported by any evidence should not be given any particular weight. To allow a party to merely make factual claims without any supporting evidence would essentially eviscerate the requirements of the Policy as both complainants and respondents could simply claim anything without any proof. For this reason, UDRP panels have generally dismissed factual allegations that are not supported by any bona fide documentary or other credible evidence.
Here, Complainant claims that its first use of OPENTIME was on November 8, 2014. However, Respondent points out that when Complainant filed its trademark application for OPENTIME in the United States, Complainant filed a declaration in which Complainant claimed a date of first use in commerce for the OPENTIME mark of October 7, 2016. What Respondent misses is that there is a distinction between a “date of first use anywhere” and a “date of first use in commerce.” Under United States trademark law practice, the USPTO requires that when an applicant asserts use of a mark it provide both a date of first use anywhere and a date of first use in commerce. The distinction between the two is as follows: (i) the date of first use anywhere is the date when goods were first sold or transported, or the services were first rendered, under the mark anywhere, and such use was bona fide and in the ordinary course of trade; (ii) the date of first use in commerce is the date when the goods were first sold or transported, or the services were first rendered, under the mark in a type of commerce that may be lawfully regulated by the U.S. Congress (such as interstate commerce), and such use was bona fide and in the ordinary course of trade. See Trademark Manual of Examining Procedure (January 2017) at §§ 903.01 through 903.03. Consequently, the dates of first use can be different, as is the case here, as use of a mark anywhere could be a local use in one state only that would not constitute use in interstate commerce for purposes of a first use date in commerce.
Based on the evidence of record, it appears that Complainant first adopted OPENTIME as the name of its time management software in November 2014, when it launched a website at <opentimeapp.com>. Whether that use constituted actual trademark use for purposes of establishing trademark rights in the United States is beyond the scope of this proceeding, but it does evidence that Complainant had adopted the name and mark OPENTIME for its claimed time management software back in November 2014. The evidence of record further shows that Complainant filed its United States trademark application for OPENTIME on May 20, 2015, which perfected to registration on January 3, 2017 – thereby providing Complainant with constructive national priority rights in the United States going back to May 20, 2015. See 15 U.S.C. §§ 1057(c) and 1072. In addition, Complainant claims that its OPENTIME mobile application first appeared in the iTunes Store on June 17, 2015 and the Google Play Store on September 8, 2015. In support of that claim, Complainant has submitted a sworn declaration from one of its founders.
When the evidence taken as a whole is considered, it is not clear when Complainant developed strong common law rights in the United States for OPENTIME. While Complainant appears to claim “continuous and substantial use” since 2014, the evidence presented is limited and in several instances is from 2016. Suffice it to say, that based on the evidence of record, the Panel for purposes of this proceeding only determines that Complainant had some trademark rights in OPENTIME for its time management software going back to at least May or June 2015 and that Complainant at the very least had adopted OPENTIME in November 2014 and was promoting a mobile application for time management under that that name.
Based on the foregoing, the Panel now turns to Respondent’s claimed rights in OPEN TIME. In its submissions, Respondent has made various claims regarding its prior rights in OPEN TIME and the disputed domain name. In its Response, Respondent claimed that the disputed domain name “was created and registered by Respondent on September 26, 2000” (Response at paragraph 4.b.i.3) and that “Respondent, Kyle Burns, has been the registrant of <opentime.com> (the ‘Disputed Domain’) since 2000” (Id. at paragraph 4.b.i.1). However, after Complainant provided evidence that the disputed domain name had been owned by a number of prior parties and only obtained by Respondent in or about July 2016, Respondent admitted that he actually acquired the disputed domain name in May 2016. Respondent then claimed that his rights in the disputed domain name flowed back to September 2000 by virtue of an Afternic Legal Agreement pursuant to which Respondent had purchased the disputed domain name. A review of that claimed Afternic Legal Agreement, however, only provides that a selling party represents that it does not hold any trademark rights in the domain name being sold and that if any rights exist the selling party will transfer such upon request to the purchasing party without charge. Consequently, Respondent, at best, could have only acquired the trademark rights, if any, of the party from whom Respondent purchased the disputed domain name. That being said, Respondent provided no actual agreement transferring trademark rights—if any could even be said to exist—from the party from whom Respondent purchased the disputed domain name in or about May 2016 and provided no evidence, despite being requested to do so in Procedural Order No. 1, on how trademark rights, if any, in the disputed domain name would have flowed to Respondent through at least five prior different owners since September 2000 – parties that Respondent had no privity of contract with. Thus, the Panel concludes that Respondent’s rights in the disputed domain name do not flow back to September 2000, as Respondent misleadingly claimed in its Response, but arose in May 2016, when Respondent acquired the disputed domain name.
Respondent has also argued that it has superior rights in OPEN TIME by virtue of having made use of OPEN TIME prior to Complainant. In its Response, Respondent claimed that it had registered the disputed domain name “for the purpose of providing publications dedicated to the public domain and open source computer programs, particularly in Asia, and has been using the mark OPEN TIME in Japan for several years.” (Response at paragraph 4.b.i.1). Respondent provided no evidence to support or substantiate those claims. Then, in its January 25, 2017 Supplemental Filing addressing Complainant’s January 13, 2017 Supplemental Filing, Respondent claimed use of OPEN TIME going back to 2012 and submitted a document entitled “Statement of Work for Implementation of OPENTIME”, dated February 20, 2012, as well as undated screenshots of the dashboard of Respondent’s claimed software product. The February 20, 2012 document is between a party called “Call Direct K.K.” and another party whose name was redacted. Respondent in its January 25, 2017 Supplemental Filing asserts that the February 20, 2012 document was signed and initialed by Respondent, but provides no explanation as to the relationship between Call Direct K.K. and Kyle Burns let alone any information regarding what this document concerns or relates to. As to the dashboard screenshots, these show use of OPENTIME, but appear to be from 2016, as a copyright notice at the bottom of each page states “OPENTIME Copyright © 2012-2016 Call Direct K.K. All Rights Reserved.” Notably, Respondent provided no evidence that it had registered the disputed domain name “for the purpose of providing publications dedicated to the public domain and open source computer programs, particularly in Asia,” as claimed in its Response.
Respondent also claimed priority in its Response based on a Japanese trademark application it had filed on March 31, 2016 and which matured to registration on October 21, 2016. As that Japanese application and registration was filed and obtained after Complainant secured trademark rights in OPENTIME, such application and registration does not provide Respondent with superior or prior rights in OPEN TIME. What is interesting, though, about the Japanese application is that Respondent apparently filed this application for OPEN TIME (in two words) on or around the time that Afternic was offering the disputed domain name for sale and then claimed in its January 25, 2017 Supplemental Filing that it had use of OPENTIME, as a unitary term, going back to 2012. Respondent also asserted that “Respondent’s specimens filed with its registered trademarks are publicly accessible,” suggesting that there existed actual specimens of use that further proved Respondent’s claimed prior use of OPENTIME. (Respondent’s January 23, 2017 Supplemental Filing at paragraph 2.5).
After Respondent was asked by the Panel in Procedural Order No. 1 to produce these claimed “publicly accessible” specimens of use, Respondent essentially confirmed that, in fact, no specimens had been filed or were publicly accessible. Instead, Respondent submitted a group of invoices that Respondent claimed were relied on when Respondent filed its application in Japan in March 2016 and which “show[ed] sales to numerous clients across Asia and the United States of America as well as showing Respondent has used OPEN TIME in connection with a bona fide offering of goods and services.” (Respondent’s February 13, 2017 Supplemental Filing at paragraph 2.2). A review of those invoices, however, shows that such are from an entity called “Dreamstart” in Hong Kong, China; are all directed to a single entity in El Segundo, California, United States; have a date range from July 1, 2015 through February 1, 2017; and are all sequentially numbered, which suggests that no other invoices were created. Based on these facts, the invoices do not show sales to “numerous” clients across Asia or the United States and do not show prior use of OPEN TIME by Respondent, as the earliest invoice is from July 1, 2015 – a date after Complainant had adopted and commenced use of OPENTIME. In addition Respondent does not provide any explanation regarding the relationship between Dreamstart and Respondent, let alone the relationship between Dreamstart and Call Direct K.K., which is the only party listed in the February 20, 2012 document (i.e., the “Statement of Work for Implementation of OPENTIME”) previously submitted by Respondent.
Given the misrepresentations, conflicting and unsubstantiated statements, and lack of explanations by Respondent, this Panel, based on the evidentiary record placed before it, has doubts about the credibility of Respondent’s claim of prior use of OPEN TIME and thus concludes that Complainant has prior and superior rights in OPENTIME.
B. Identical or Confusingly Similar
Having determined that Complainant has (prior) rights in OPENTIME, the Panel concludes that for purposes of paragraph 4(a)(i) of the Policy, Complainant has established the requisite rights in OPENTIME.
With Complainant’s rights in the OPENTIME mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain “.com”) is identical or confusingly similar with Complainant’s mark. B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842. Here, the disputed domain name only consists of the OPENTIME mark and is thus identical to Complainant’s mark. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the OPENTIME mark and in showing that the disputed domain name is identical or confusingly similar to that trademark.
C. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
While Respondent has unsuccessfully argued that it had prior rights in OPEN TIME, Respondent has also argued that “open time” is a descriptive term used extensively by third parties and that, as such, Respondent’s adoption and use of OPEN TIME in the disputed domain name is a legitimate and a bona fide use. In support of its contention, Respondent has submitted some recent printouts of 100 search results from Google that show, inter alia, some descriptive uses of the phrase “open time” in various contexts for adhesives, drying time, sports events, time slots and the like. Respondent also refers to a listing in the Google search results for Open Time Clock, a web-based free online clock system service and employee attendance software.
Although the phrase “open time” could be seen to be a descriptive phrase to describe e.g. an availability of time, Respondent himself acknowledges that OPEN TIME can function as a trademark in that Respondent has argued that he had prior rights in the mark OPEN TIME and filed a trademark registration for such. Moreover, although Respondent asserts that “numerous organizations” use OPEN TIME and that most uses of OPEN TIME are descriptive, Respondent only provided a reference to one possible use, in the form of a Google search result, that might arguably relate to the use of OPEN TIME with time management software. In all, Respondent’s evidence to support its claim that “open time” is a descriptive term is quite limited at best. Moreover, it does not appear that Respondent used OPEN TIME in any arguable descriptive sense, but used it as a name of an alleged software product, used the disputed domain name with a click-through linking portal that featured links to timesheet software and the like (the very product associated with Complainant’s OPENTIME mark), and offered the disputed domain name for sale.
In addition, while Respondent has claimed that it registered the disputed domain name “for the purpose of providing publications dedicated to the public domain and open source computer programs, particularly in Asia,” Respondent, despite submitting a Response and two Supplemental Filings, did not provide a single piece of evidence to substantiate that claim. From the record in this case, what is apparent is that Respondent acquired the disputed domain name after the disputed domain name was put up for sale by Afternic in or about late March 2016, filed a trademark application in March 2016 in Japan (which requires no proof of use) for OPEN TIME, used a privacy service to shield his identity, used the disputed domain name with a click-through portal that included links to timesheet software and related links, and offered the disputed domain name for sale. It is thus questionable whether Respondent has any rights or a legitimate interest in the disputed domain name.
Given that Complainant has established with sufficient evidence that it owns rights in the OPENTIME mark in connection with its time management software, and given Respondent’s above-noted actions and the several misleading statements made by Respondent regarding his alleged rights in the disputed domain name and OPEN TIME mark, the Panel concludes that Respondent’s registration and use of the disputed domain name does not constitute a right, legitimate interest, or bona fide use and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.
In sum, the Panel finds that in this case Complainant has established a prima facie case showing that Respondent has no rights to or legitimate interests in the disputed domain name. As Respondent, although given an opportunity to present its case, simply asserted factual allegations with little to no credible evidentiary support, the Panel concludes that, based on the available record, Respondent has not rebutted Complainant’s prima facie case. Complainant thus prevails on this element of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(i) circumstances indicating that 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 or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line 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 your website or location.”
In the present case, Respondent has acquired a domain name that fully incorporates Complainant’s OPENTIME mark. Given Respondent’s actions, as noted above, it appears that Respondent, who has software development experience (and who also has an address in the United States), was likely aware of Complainant when he acquired the disputed domain name given that he filed a trademark application in Japan to cover services arguably related to those offered by Complainant and then claimed use of OPENTIME for a software product – a product in the same category as that in which Complainant has used the OPENTIME mark. Moreover, the fact that Respondent has failed to come forward with any documentary or credible evidence to support his claim that he registered the disputed domain name “for the purpose of providing publications dedicated to the public domain and open source computer programs, particularly in Asia,” suggests that Respondent’s claims are pretextual and meant to sweep aside the fact that Respondent has sought to profit from the disputed domain name and targeted Complainant and its OPENTIME mark.
Moreover, given that Respondent has used the disputed domain name since acquiring it in May 2016 with a click-through portal with links to third parties offering services competitive to Complainant and/or offered the disputed domain name for sale, the Panel can only infer that Respondent’s actions have been undertaken in bad faith and for purposes of capitalizing on the goodwill associated with Complainant’s OPENTIME mark for profit. Accordingly, the Panel finds that Complainant succeeds under this element of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <opentime.com> be transferred to Complainant.
Date: February 27, 2017