WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Randy A. Leslein v. Domain Hostmaster, Customer ID: 69323121876872, WhoIs Privacy Services Pty Ltd / Lisa Katz, Domain Protection LLC
Case No. D2017-1233
1. The Parties
The Complainant is Randy A. Leslein of Seattle, Washington, United States of America (“United States”), represented by Kercsmar & Feltus PLLC, United States.
The Respondent is Domain Hostmaster, Customer ID: 69323121876872, WhoIs Privacy Services Pty Ltd of Fortitude Valley, Queensland, Australia / Lisa Katz, Domain Protection LLC of Dallas, Texas, United States.
2. The Domain Name and Registrar
The disputed domain name <chambong.com> (the “Disputed Domain Name”) is registered with Fabulous.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 27, 2017. On June 27, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 29, 2017, 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 June 29, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 3, 2017.
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 July 5, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 25, 2017. The Respondent did not submit any Response by that deadline. Accordingly, the Center notified the Respondent’s default on July 26, 2017.
The Center received an email communication from the Respondent on July 26, 2017 in which the Respondent asserted that it did not receive notification of the Complaint. The Center responded to the Respondent on July 26, 2017 noting that the Complaint had been properly notified. Subsequently, the Respondent signed for the package that was sent to the Respondent by courier; there is no explanation in the record for why the Respondent did not sign for the package earlier. As of the date of this decision, the Respondent has not further communicated with the Center, has not refuted the Center’s explanation that the Complaint had been properly notified, has not provided any explanation for why it did not sign for the Center’s courier package earlier, and has not sought leave to file a Response after the deadline.
The Center appointed David H. Bernstein as the sole panelist in this matter on July 31, 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.
The Panel has reviewed the Center’s notification to the Respondent and finds that the Center did properly notify the Complaint to the Respondent, including to the same email address to which the Center sent the notification of Respondent default (to which the Respondent did reply).
4. Factual Background
The Complainant is Chief Executive Officer of Chambong Industries LLC, a small glassware company based in Seattle, Washington. The Complainant manufactures and sells champagne flutes with a glass straw as the stem, allowing “for the rapid and enhanced experience of sparkling wine/champagne consumption.” The Complainant currently operates at the domain name, <chambong.co>.
On November 12, 2014, the Complainant filed for registration of the CHAMBONG mark with the United States Patent and Trademark Office (“USPTO”). The Complainant applied to register the CHAMBONG mark with the USPTO on November 12, 2014; he first used the mark in commerce on June 1, 2015; and the USPTO registered the trademark on September 29, 2015. The Complainant’s products marketed under the CHAMBONG mark have been featured in Forbes, New York Magazine, Mashable, BuzzFeed, Business Insider, Huffington Post,andFood & Wine FWx.
The Respondent registered the Disputed Domain Name in November 2005. The Disputed Domain Name currently resolves to one of various websites via a dynamic redirect.
In November 2014, the Complainant reached out to the Respondent inquiring whether the Respondent was interested in selling the Disputed Domain Name. The Respondent replied that the Disputed Domain Name was not for sale but that it would consider a “serious offer.” The Complainant offered USD 200; the Respondent rejected that offer. The Complainant later offered USD 600, but the Respondent rejected that offer as well. Instead, the Respondent inquired as to whether the Complainant would be interested in leasing the name or entering into a joint venture. The Complainant declined.
In March 2017, the Complainant offered the Respondent USD 1,500 while noting its trademark registration and concerns that the Respondent’s use of the CHAMBONG mark was damaging the goodwill associated with the Complainant’s CHAMBONG mark. The Respondent replied that it registered the domain name almost a decade before the Complainant launched its business and inquired, “What do you think we can do to resolve this?” The Complainant did not reply.
5. Parties’ Contentions
The Complainant’s case can be summarized as follows.
The Disputed Domain Name is identical to the CHAMBONG trademark.
The Respondent does not have any rights or legitimate interests in the Disputed Domain Name. Specifically, the Complainant did not give the Respondent a license or permission to use the CHAMBONG mark, and there is no evidence whatsoever that the Respondent has ever been commonly known by the Disputed Domain Name (in part because past use of the Disputed Domain Name through the Internet Wayback Machine is unavailable due to the Respondent’s use of “robots.txt”). Additionally, the Respondent has never used the Disputed Domain Name in connection with a bona fide offering of goods or services. Rather, as of May 25, 2017, the Disputed Domain Name redirected browsers through several links before landing on a page that claims to have found a virus on the user’s computer.
The Respondent has used and uses the Disputed Domain Name in bad faith. This is established by subsequent use of the Disputed Domain Name to intentionally and misleadingly attract Internet users to the Disputed Domain Name for commercial gain. The Complainant relies upon Milly, LLC v. Domain Admin, Mrs. Jello, WIPO Case No. D2014-0377 (“Milly”) and Camilla Australia Pty Ltd v. Domain Admin, Mrs. Jello, WIPO Case No. D2015-1593 (“Camilla Australia”) to assert that subsequent use of a domain name can establish both bad faith use and registration even where registration predates the trademark.
In connection with its discussion of Camilla Australia, the Complainant draws attention to the language of paragraph 2 of the Policy. Paragraph 2(d) of the Policy states that a registrant “represent[s] and warrant[s] that [he] will not knowingly use the domain name in violation of any applicable laws or regulations. It is [the registrant’s] responsibility to determine whether [the] domain name registration infringes or violates someone else’s rights.” The Complainant argues that this is a representation and warranty as to the registrant’s future conduct made at the time the registrant applies for registration of a domain name. Under this paragraph, the registrant represents and warrants that, in the future he will not use the domain name at issue in bad faith. Relying on Camilla Australia, the Complainant submits that the Respondent is now aware of the CHAMBONG mark, continues to use the Disputed Domain Name in a confusing manner, and, as such, both bad faith registration and use have been demonstrated.
The Complainant also refers to paragraph 4(b)(iv), as discussed in Camilla Australia. Specifically, the Complainant notes that the paragraph is informative in that it refers only to “use” of the domain name (“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.”). The Complainant argues that the circumstances listed in paragraph 4(b) of the Policy are disjunctive—using “or” not “and.” On this basis, the Complainant says the third element of the Policy, in particular bad faith in the terms of paragraph 4(b)(iv), which treats “bad faith registration and use” as a unitary concept, has been satisfied.
The Complainant also alleges that, in a Northern District of Texas action, the Respondent made several claims suggesting that there had been an underlying change in registration that occurred after the Complainant filed for trademark registration. In relevant part, in that action, the Respondent argued: “By leveraging his personal relationship at [Registrar Fabulous.com], [a third party] was able to access without authorization, and by exceeding his authorization to access the facility, to prevent the authorized access by [the Respondent]. By his unauthorized access of the facility, [a third party] has prevented [the Respondent] from being able to properly sell domain names, manage the domain names, or generate income from the domain names it owns.”
Finally, in the alternative, the Complainant alleges circumstances suggesting that the Respondent had the requisite bad faith when it registered the Disputed Domain Name. Specifically, the Complainant asserts that the Respondent registered the Disputed Domain Name after the domain name <champong.com> and a Canadian trademark for the term CHAMPONG had been registered.
As noted above, the Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that 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;
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith.
In light of the Respondent’s default, the Panel may treat as uncontested the Complainant’s factual assertions. The Panel does not, however, accept as true the Complainant’s conclusory allegations that are unsupported by appropriate factual assertions or the Complainant’s factual assertions that are contradicted by the other facts and evidence submitted by the Complainant. For example, the Complainant says at one point that the Respondent’s claim to have registered the domain name in 2005 is “incredible[”] and “against the weight of all evidence,” and suggests that something in the RICO complaint in the Texas court shows that there has since been a change in ownership of the Disputed Domain Name, but the Complainant later concedes that “[the] Respondent registered the disputed domain name in 2005.”
A. Identical or Confusingly Similar
The Complainant has submitted evidence that establishes its ownership of the CHAMBONG trademark, with priority back to November 2014. The Complainant has also provided evidence to show that its mark has achieved recognition following the commencement of its business. The Panel observes that the Disputed Domain Name was registered in November 2005, predating the Complainant’s trademark. However, for the purposes of the first element under paragraph 4(a) of the Policy, the “UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired rights.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.1.3 (noting that trademark rights need only be in existence at the time the complaint is filed).
It is undisputed that the Disputed Domain Name is identical to the CHAMBONG trademark owned by the Complainant.
Accordingly, the Panel concludes the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
The Complainant has asserted that it never licensed or permitted the Respondent to use its CHAMBONG trademark, that the Respondent has no independent trademark rights that correspond to the Disputed Domain Name and that the Respondent has not been commonly known by that name nor has the Respondent made any attempt to establish an Internet presence using the Disputed Domain Name. The Complainant also submits that, far from using the Disputed Domain Name in respect of any bona fide offering of goods or services, the Respondent redirects Internet traffic using a “domain parking system” that employs several other sites before landing on either an advertisement, a malware phishing site, an offer to download an application, or a page claiming to have found a virus on the user’s computer. These assertions are sufficient to establish a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name.
Where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.
Given that the Respondent has failed to come forward with any evidence to refute the Complainant’s prima facie showing that the Respondent lacks rights or legitimate interests, the Panel concludes that the Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, 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 Respondent has registered or has acquired the Disputed Domain Name primarily for the purpose of selling, renting or otherwise transferring the Disputed Domain Name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the Disputed Domain Name; or
(ii) The Respondent has registered the Disputed 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 Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Disputed Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location. Policy, paragraph 4(b).
It is by now well accepted that paragraph 4(b) requires both bad faith use and bad faith registration. Accordingly, the Complainant must prove both elements in order to prevail under the third element of the Policy. Failure to prove either would be detrimental to the Complainant’s case. Dreamlines GmbH v. Darshinee Naidu/World News Inc, WIPO Case No. D2016-0111 (denying transfer of the domain name because the complainant failed to prove bad faith registration).
On the facts of this case, the Complainant cannot possibly prove bad faith registration given that the Disputed Domain Name was registered nearly a decade before the Complainant established its trademark rights. As the WIPO Overview 3.0 makes clear, the consensus view of WIPO UDRP panels is that, “where a Respondent registers a domain name before the Complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the Respondent.” WIPO Overview 3.0, section 3.8.1; see also id. section 1.1.3 (only in exceptional cases would a complainant be able to prove respondent’s bad faith where a domain name has been registered before a complainant has acquired trademark rights). The exception to which those provisions refers is where the Respondent’s intent in registering the domain name was to unfairly capitalize on the Complainant’s nascent (typically as yet unregistered) trademark rights, see WIPO Overview 3.0, section 3.8.2; that exception does not apply here.
The Complainant nevertheless makes three arguments to try to avoid the finding that there was no bad faith registration here.
First, the Complainant relies on Milly, supra, and Camilla Australia, supra, to argue that the Respondent’s business model, based on redirected websites and generated advertising, can establish both bad faith use and registration where the Disputed Domain Name registration predates the trademark.
The Panel acknowledges that a handful of UDRP decisions have explored the possibility of finding bad faith registration and use even if the domain name registration predates the creation of trademark rights. Those cases have considered a number of different arguments in support of a finding of bad faith, including an argument that “and” can mean “or” in the context of the Policy, an argument that bad faith registration and use is a unitary concept that can be established based on bad faith registration or bad faith use given the structure of paragraph 4(b) of the Policy, or that paragraph 2 of the Policy can make subsequent bad faith use retroactive to the original registration. See generally WIPO Overview 3.0 at section 3.2.1.
Whatever the possible merits of some of those arguments, the fact is that those arguments have been considered by many panels since then, and the overwhelming consensus of panelists has been to reject those arguments and to reaffirm the conjunctive requirement. That is because the plain language of paragraph 4(a)(iii) of the Policy requires a showing that the domain name has been “registered” and “used” in bad faith. Reading “registered” as a continuous act that can be abused at any time would appear to make it essentially synonymous with “use” and deprive the conjunctive phrase of its meaning. Given the importance of maintaining consistency in the application of the UDRP, see WIPO Overview 3.0 at section 4.1, this Panel joins the many others that have concluded that the efforts to avoid application of the conjunctive requirement, such as those espoused in Milly and Camilla Australia, must be rejected. Instead, this Panel follows the consensus and reaffirms that paragraph 4(a)(iii) of the Policy requires a showing of bad faith at the time of registration or acquisition of the Disputed Domain Name. See e.g., Charter Communications, Inc., Charter Communications Holding Company, LLC and Charter Communications Operating LLC v. Perfect Privacy, LLC / Sheri K Corwin, WIPO Case No. D2017-0040; Greenvelope, LLC v. Virtual Services Corporation, WIPO Case No. D2017-0006; Coolside Limited v. Get On The Web Limited, WIPO Case No. D2016-0335; Centroamerica Comercial, Sociedad Anonima de Capital Variable (CAMCO) v. Michael Mann, WIPO Case No. D2016-1709; Intellect Design Arena Limited v. Moniker Privacy Services / Daniel Wieland, iEstates.com, WIPO Case No. D2016-1349; Kids & US English, S.L. v. Target Success.Com, Incorporated, WIPO Case No. D2016-0356; and Dreamlines GmbH v. Darshinee Naidu / World News Inc., WIPO Case No. D2016-0111.
Second, the Complainant argues that the Respondent registered the Disputed Domain Name in bad faith in 2005 because the registration was designed to take advantage of the Canadian trademark for CHAMPONG. Any such bad faith registration, though, was not targeted against the Complainant and thus is not relevant to the Complainant’s claim that the Respondent registered the Disputed Domain Name with bad faith towards the Complainant. Whether the owners of the CHAMPONG mark might have a basis for challenging the Respondent’s domain name is outside the scope of the Complainant’s claim in this proceeding.
Third, the Complainant argues that bad faith registration may be found here because the Disputed Domain Name has had a change in ownership since its initial registration in 2005 (though, the Complainant argues, the use of a proxy service has masked the details of the ownership change). If there has been a change in ownership, that may well change the analysis, since bad faith registration would be assessed as of the time of the latest acquisition of the Disputed Domain Name, rather than the time of its original registration in 2005. WIPO Overview 3.0, section 3.9 (“In cases where the domain name registration is masked by a privacy or proxy service and the Complainant credibly alleges that a relevant change in registration has occurred, it would be incumbent on the Respondent to provide satisfactory evidence of an unbroken chain of registration.”). Here, though, the Complainant has not alleged facts that credibly support a finding that a change in registration has occurred. For instance, the Complainant has not alleged a change in the content of the website to which the Disputed Domain Name directs to take advantage of the Complainant’s CHAMBONG mark nor does it allege unsolicited attempts to the sell the Disputed Domain Name to the Complainant following the asserted change in the identity of the registrant. See e.g., WIPO Overview 3.0, section 3.9. Further, the Complainant’s references to the Northern District of Texas action involving the Respondent do nothing to support an inference that there has been any change in ownership since the Complainant concedes that the Respondent registered the Disputed Domain Name in November 2005.
In sum, none of the Complainant’s arguments are sufficient to establish bad faith registration. That is not to say that the Respondent’s conduct has been in good faith. To the contrary, the Respondent does appear to be using the Disputed Domain Name in bad faith. But, under the stringent rules of the Policy, which was designed to combat abusive cybersquatting, bad faith use is not enough; the Complainant must also show bad faith registration to prevail under the Policy. The Complainant may well have a basis for challenging the Disputed Domain Name in other forums and on other bases, but the Complainant cannot prevail under the UDRP given that the Disputed Domain Name was registered nearly a decade before the creation of the Complainant’s trademark rights, with no apparent intent to take advantage of the Complainant’s future trademark rights, and with no showing that there was a transfer of ownership of the Disputed Domain Name since the creation of the Complainant’s trademark rights.
The Panel therefore finds that the Disputed Domain Name has not been registered in bad faith in terms of paragraph 4(a)(iii) of the Policy and accordingly the Complaint fails.
For the foregoing reasons, the Complaint is denied.
David H. Bernstein
Date: August 14, 2017