WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Michael Heald v. Al Perkins
Case No. D2017-0959
1. The Parties
The Complainant is Michael Heald of Portland, Oregon, United States of America (“United States”), self-represented.
The Respondent is Al Perkins of Saint Helier, Jersey, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
2. The Domain Name and Registrar
The disputed domain name <perfectdaypublishing.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 May 12, 2017. On May 12, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 15, 2017, the Registrar transmitted by email to the Center its verification response confirming:
(a) it is the Registrar for the disputed domain name;
(b) the disputed domain name is registered in the name of the Respondent and the contact details are correct;
(c) the disputed domain name has been registered in the name of the Respondent since at least April 16, 2017;
(d) the language of the registration agreement is English;
(e) the disputed domain name was registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), and the UDRP applies to the disputed domain name.
The Center verified that the Complaint satisfied the formal requirements of the Policy, 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 May 16, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 5, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 6, 2017.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on June 12, 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.
4. Factual Background
The Complainant registered the business name “Perfect Day Publishing” in the State of Oregon in the United States on April 21, 2011. Since about that date he has been conducting a publishing business under that name. His business specializes in personal nonfiction. Under that name, he typically publishes one new book each year with an initial print run of 1,500 copies per title.
The Complainant has arranged promotional activities with booksellers under the name “Perfect Day Publishing”. Titles published under the name “Perfect Day Publishing” have received reviews in the press. Many of these have been in the Portland, Oregon area. Reviews have also included media in other cities in the United States including San Francisco, Los Angeles, Brooklyn, Baltimore, Charleston in South Carolina and internationally in Australia, the United Kingdom and Canada. There have also been reviews in publications like Slate and Vice.
In addition to these activities, the Complainant promoted his business through a website at the disputed domain name. He initially registered the disputed domain name in March 5, 2011. At some point, the registration was transferred into the name of his webmaster. However, the registration lapsed inadvertently on April 15, 2017.
On April 16, 2017, the Respondent registered the disputed domain name. According to correspondence passing between the Complainant’s webmaster and the Registrar, the Respondent had the disputed domain name on “back order” some time prior to its expiry so that payment and transfer occurred automatically. Since then, the disputed domain name has redirected to his website at <siska.tv>, which features explicit pornographic material.
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
No response has been filed. The Center has employed all reasonably available means to achieve notice to the Respondent, including on the physical and electronic coordinates specified in the WhoIs record (and confirmed as correct by the Registrar) in accordance with paragraph 2(a) of the Rules. Accordingly, the Panel finds that the Complaint has been properly notified to the Respondent.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant does not have any registered trademarks. The evidence of sales volumes for the Complainant’s business under the name “Perfect Day Publishing” which the Complainant has provided are not large in absolute numbers. However, the evidence that the Complainant has submitted shows that his business under the name “Perfect Day Publishing” has developed a valuable reputation and goodwill, particularly in the circles interested in the fields in which he publishes. The Panel is satisfied, therefore, that the Complainant has rights in PERFECT DAY PUBLISHING as an unregistered trademark.
The second stage of this inquiry simply requires that the trademark is recognizable in the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top Level Domain (“gTLD”) component as a functional aspect of the domain name system: WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of bad faith are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
Disregarding the “.com” gTLD, the disputed domain name is identical to the Complainant’s trademark. Accordingly, the Panel finds that the Complainant has established the requirement under the first limb of the Policy.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See, e.g., section 2.1 of the WIPO Overview 3.0.
The Complainant states that it has not authorized the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it. The disputed domain name is plainly not derived from the Respondent’s name. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name. On the other hand, the Complainant’s trademark has been in use for many years before the Respondent registered the disputed domain name. Moreover, the evidence indicates that the Respondent was well-aware of the Complainant’s trademark when he placed the disputed domain name on “back order”. As discussed below, there is evidence that the Respondent intentionally targeted the disputed domain name with the intention of selling it back to the Complainant or using it to redirect people to his website.
All of these factors combine to provide a sufficient basis to find a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent has not sought to rebut that prima facie case. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see, e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
In this case, the Respondent had placed the disputed domain name on “back order” in case it became available for registration, apparently with knowledge of the Complainant’s use.
When contacted by the Complainant, the Respondent offered the disputed domain name for sale for the price of USD 4,800. In response to the question from the Complainant:
“Before taking legal action against you for using my registered business name in bad faith, I'm curious to find out how much money you would sell it back to me for”, the Respondent initially replied:
“Yeah go for arbitration it will cost you $1500 to file plus lower [sic] costs and about 8 to 10 weeks for a decision but as you seem smart it makes more sense in just buying it but thats [sic] your choice I’m not fussed.”
When it was pointed out that the Respondent had not stated a price, the Respondent replied:
“I can do this one for just $4800...its probably costing you more than this in lost business so hurry up.”
It appears reasonably clear from this exchange that the Respondent was well aware of how the Complainant was using the disputed domain name before the registration lapsed and was seeking to take advantage of the expiry of the registration opportunistically.
For the reasons set out in Section 5B above, the Respondent has been found not to have rights or a legitimate interest in the disputed domain name. It also appears that the Respondent registered the disputed domain name with knowledge of the Complainant’s business and trademark. The demand for payment of USD 4,800, presumably exceeding the Respondent’s out-of-pocket costs, in the circumstances outlined above falls within the example of registration and use in bad faith provided by paragraph4(b)(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”.
Furthermore, it appears that the Respondent has registered at least 1,420 other domain names. The Complainant has also submitted evidence that the Respondent has been the unsuccessful respondent in at least 12 other disputes under the Policy. At least some of these appear to have involved the same practice of opportunistically registering someone else’s trademark and offering to sell it back at a substantial mark up. Accordingly, this appears to be a case where the circumstances identified in paragraph 4(b)(ii) also apply:
“(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”.
Accordingly, the Complainant has established the third requirement under 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 <perfectdaypublishing.com> be transferred to the Complainant.
Warwick A. Rothnie
Date: June 26, 2017