WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Screen-It Graphics of Lawrence, Inc. d/b/a Grandstand v. Registration Private, Domains By Proxy, LLC / Dorinda Brews, Spadion Corporation
Case No. D2017-1709
1. The Parties
The Complainant is Screen-It Graphics of Lawrence, Inc. d/b/a Grandstand of Lawrence, Kansas, United States of America ("United States"), represented by Hovey Williams LLP, United States.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States / Dorinda Brews, Spadion Corporation of Chapel Hill, North Carolina, United States, self-represented.
2. The Domain Name and Registrar
The disputed domain name <grandstand.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 September 1, 2017. On September 6, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 7, 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 September 11, 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 September 15, 2017.
The Center verified that the Complaint together with the amended Complaint1 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 September 19, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 9, 2017. The Response was filed with the Center on October 9, 2017.
The Center appointed Richard G. Lyon as the sole panelist in this matter on October 12, 2017. The Panel finds that it was properly constituted and has jurisdiction to decide this administrative proceeding. The Panel has submitted his 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 provides a wide array of services in the areas of marketing and product branding, such as glassware, apparel, promotional items, and related creative services. The Complainant's principal website is <egrandstand.com>, which was launched in 2006. From that website it appears that a customer of the Complainant may order a product that will be marked with the customer's logo or brand – a beer mug featuring a brewer's brand, for instance. The Complainant has offered its products and services in this manner since 1991, throughout this time under the brand name GRANDSTAND.
The Respondent registered the disputed domain name in 1995. At present the disputed domain name resolves to a Registrar-generated placeholder page that contains an offering of the Registrar's services and a few hyperlinks promoting "cheap" airline and event tickets. At some point of time in the past the disputed domain name resolved to a page under which the Respondent offered web development and consulting services under the name of "The Spadion".
5. Parties' Contentions
The Complainant contends as follows:
1. The Complainant holds common law trademark rights in GRANDSTAND by reason of its continuous use of that word as its brand since 1991. The disputed domain name is identical to this mark except for the addition of the generic Top-Level Domain ("gTLD") ".com", which is not considered under paragraph 4(a)(i) of the Policy.
2. The Respondent is not commonly known by the word GRANDSTAND and holds no registered trademark rights in it. The Complainant has never authorized the Respondent to use its GRANDSTAND mark. The Respondent or the Registrar has used the disputed domain name for commercial purposes via hyperlinks. Thus the Respondent lacks rights or legitimate interests in the disputed domain name.
3. The Complainant cites the following as evidence of registration and use of the disputed domain name in bad faith:
- Use of a proxy service to hide its identity.
- Providing inaccurate registration information and later "Respondent has used the domain name in bad faith because it has been administratively dissolved and has not updated the registrar with current ownership information and/or renewed the domain name without updating the registration with current ownership information."
- Use of the disputed domain name only as "an inactive parked page" with commercial hyperlinks.
- Passive use, standing alone.
- Bad faith under the warehousing doctrine first articulated in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
These, individually or cumulatively, constitute bad faith because "[i]t appears that the disputed domain name has been acquired for the sole purpose of profitable sale to either Complainant or one of its competitors. Respondent's passive holding of the disputed domain name without any other use or intended use has been made (i) for the purpose of disrupting Complainant's business and (ii) in order to prevent Complainant from reflecting its trademarks in a corresponding domain name."
The Respondent contests the Complainant's case under each Policy head, contending as follows:
1. GRANDSTAND is a common "dictionary word" with multiple meanings, and a term often used as a brand or product or service identifier. Many companies – but not the Complainant – have incorporated the word into registered trade or service marks. Hence "[t]hat Complainant is alleging any trademark rights for such a generic term that is so widely used in commerce is unsupportable in fact, and consequently, in law."
2. The Respondent has used the disputed domain name legitimately in two different ways. At one time it served as a website for Spadion Corporation, now dissolved. Spadion, a Latin and Greek antecedent of "stadium" is complementary to one common meaning of "grandstand". In 2008–2009 the Respondent granted permission and access for the noncommercial use of the domain name for use as "an email server and account management platform for an enterprise collaboration tool called Connect." Further "[t]he fact that Respondent has registered the domain name and has not recently used it does not give Complainant any right to the name."
3. The Respondent was not aware and had no reason to be aware of any right of the Complainant to GRANDSTAND in 1995, when the disputed domain name was registered. Replying to the Complainant's specific allegations of bad faith the Respondent contends:
- The Parties are not competitors and none of the Respondent's use of the disputed domain name targeted the Complainant or its goods or services.
- Use of a proxy service is not per se indicative of bad faith (citing to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 3.6).
- The Respondent has never used the disputed domain name for commercial gain.
- Passive use or non-use does not per se constitute bad faith.
- The Respondent has never offered the disputed domain name for sale to anyone and has in fact not responded the occasional inquiry as to whether the disputed domain name was for sale.
- The dissolution of Stadion Corporation has nothing to do with bad faith. The contact information for the Respondent Dorinda Brews as owner of the disputed domain name has always been accurate.
The Respondent concludes by requesting a finding of reverse domain name hijacking. "Respondent considers this claim is not an action with any legal basis, but constitutes bullying by a well-endowed corporation against an individual to obtain a domain name for which they have no right to acquire."
6. Discussion and Findings
Although the merits of the Complainant's case are quickly resolved in subsection C below, the Panel elects also to address the other two Policy elements in order fully to consider the Respondent's request for a finding of reverse domain name hijacking.
A. Identical or Confusingly Similar
The Complainant has demonstrated common law rights in its GRANDSTAND brand sufficient to invoke the Policy. It supports its claims of continuous use with an officer's sworn statement of continuous sales and promotion, and an examination of the Complainant's website demonstrates use of the word as its commercial identifier of goods and services. Whether a complainant holds rights in a mark is a matter determined as of the date the complaint is filed. The operative portion of the disputed domain name is identical to this word, so the Panel considers the Complainant has carried its burden of proof under paragraph 4(a)(i). The fact that GRANDSTAND is a common word in common commercial use matters naught under this Policy element, though as discussed below the Respondent's evidence to this effect is highly relevant under paragraphs 4(a)(ii) and 4(a)(iii).
B. Rights or Legitimate Interests
The Complainant has never authorized the Respondent to use its GRANDSTAND mark and there is no evidence that the Respondent has been known by the word GRANDSTAND independently of the disputed domain name. This makes out a prima facie case that the Respondent lacks a right or legitimate interest in the disputed domain name. The burden of production thus shifts to the Respondent to provide proof of legitimate use, with the ultimate burden of proof remaining with the Complainant.
Here the Respondent offers two putative legitimate uses. The first is for web services by Stadion Corporation, supported by an archived screen shot of the disputed domain name from some time in the past. The second is internal email use in 2008–2009, supported by contemporaneous email correspondence allowing such use. This evidence, while somewhat thin, in the Panel's view suffices to demonstrate past use for purposes unrelated to the Complainant or its mark, not contrived, and accordingly enough to overcome the Complainant's prima facie case. Under the strict wording of paragraph 4(c)(i) as well as Policy precedent a respondent's "use" need be neither continuous nor current to come within that paragraph's safe harbor.
Other circumstances of this case bolster the Respondent's defense. The Complainant's mark is as the Respondent contends an everyday word, not famous even in the dictionary (rather than trademark law) sense of the word, and used often by others in commercial identifiers. In this context, there is no evidence to support the Complainant's conclusionary charge that the Respondent selected the disputed domain name to take advantage of its mark's goodwill or someday to sell it to the Complainant or a competitor. There is no evidence that the Respondent was or should have been aware of the Complainant or its mark at any time prior to receiving the Complaint.
The Complainant has not met its burden of proof under Policy paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
To meet the requirements of paragraph 4(a)(iii) the Complainant must separately prove that the Respondent registered and used the disputed domain name in bad faith. In this case the former item, registration in bad faith, requires proof that the Respondent knew of and targeted the Complainant and its mark when she registered the disputed domain name in 1995. WIPO Overview 3.0, section 3.2.2.
The Complainant's proof falls far short of what is required. There is no evidence at all of the extent in 1995 of the Complainant's use of its mark, the amount or geographic areas of its sales, or its advertising. Its officer's affidavit gives as hard facts only the content of the Complainant's current website and Facebook page, some current advertising exemplars, and a statement that the Complainant established its principal website in 2006. The only sales and advertising figures come from the Complaint, are not verified by any proof,2 and are cumulative from 1991 to date, with nothing indicating the state of affairs in 1995. The officer's statements that the GRANDSTAND mark "is strong and has acquired significant goodwill" is nothing more than a desired legal conclusion that must be proven, not simply alleged. Similar allegations in the Complaint may be similarly described and are similarly discounted by the Panel.
The Complainant's brand consists of a common word, one which the Respondent has demonstrated is used in many brands and registered trademarks. Nothing in the record indicates that this word is uniquely or specially associated with the Complainant today, much less twenty-plus years ago. There is not even an allegation of targeting from the Complainant, and no proof that the Respondent ever rode or tried to ride free on the goodwill of the Complainant's mark.
For this reason alone the Complainant has failed to prove registration in bad faith.
D. Abuse of the Administrative Proceeding
The Rules, paragraph 15(e), list two non-exclusive examples of abuse of the administrative process. "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 or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding." (emphasis supplied) Reverse Domain Name Hijacking (RDNH) is defined in the Rules, paragraph 1, as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name." The first of these examples obtains upon the record in this case.
Numerous panels have identified a number of factors supporting a finding of abuse of the administrative process that are present in this case:
- "Ordinarily if the face of the complaint itself demonstrates a settled reason why the complaint must be denied, a panel may make a finding of RDNH." Tarheel Take-Out, LLC v. Versimedia, Inc., WIPO Case No. D2012-1668, citing Liquid Nutrition Inc. v. liquidnutrition.com/Vertical Axis Inc., WIPO Case No. D2007-1598. The obvious and fatal omission from the Complainant's case is any allegation or proof of targeting.
- The Complainant's "case has failed by a large margin." Central Media S.C. v. Valentin Lotrean, WIPO Case No. D2016-2598. Here, because of a failure to allege targeting, the Complainant's case was dead on arrival.
- The Complainant has utterly ignored settled Policy precedent on several matters fundamental under the language of the Policy and longtime Policy precedent. Coolside Limited v. Get On The Web Limited, WIPO Case No. D2016-0335 ("The Complainant ignored settled Policy precedent in presenting its case as it does"). A few of the more egregious examples are failure to allege or prove targeting, failure to provide proof of either registration or use of the disputed domain name in bad faith, and citing a number of Policy provisions and precedent misleadingly out of context. The circumstances of this case, consisting most significantly of the facts that the GRANDSTAND mark is also a word with dictionary meaning, the Respondent having registered the disputed domain name over 20 years ago, and the lack of targeting demonstrated on the record, at a minimum calls out for an explanation from the Complainant.
- The Complainant has advanced arguments, on both facts and Policy precedent, that are at best misleading and at worst intended to mislead the Panel. Skyline Communications NV v. WebMagic Staff, WebMagic Ventures LLC, WIPO Case No. D2016-1667 ("Finally there are several of the Complainant's factual and legal contentions that border on the misleading"). While admittedly the Complainant's assertions under this point are ancillary to its primary (albeit flawed) bad faith arguments,in the former category are the reference to use of a proxy service as conclusive evidence of bad faith, an unsupported allegation that the word GRANDSTAND is "distinctive," and relying upon the example of bad faith set out in paragraph 4(b)(ii) of the Policy without bothering to allege much less offer proof to support the "pattern of such conduct" required under that provision. In the latter category is reference to the Telstra doctrine, which among other things absent from the Complainant's proof demands that "the Complainant's trademark has a strong reputation and is widely known . . . and the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name." Telstra, supra.Both these Telstra conditions are conspicuously absent from this case.
- The Complainant is represented by counsel, who should have recognized these shortcomings before signing the Complaint. If the Complainant's or its representative's undertaking under paragraph 3(b)(xiii) of the Rules3 is to mean anything more than a rote and boilerplate addition to its pleading this obligation requires at a minimum a basic understanding of the Policy's limited scope, the Policy and Rules themselves, and basic Policy precedent. BERNINA International AG v. Domain Administrator, Name Administration Inc. (BVI), WIPO Case No. D2016-1811 ("The Complainant is represented by counsel, who ought to know better and who is under an obligation imposed by paragraph 3(b)(xiii) of the Rules to undertake at least minimal due diligence before filing a complaint.")
To be sure, unlike a number of cases in which abuse has been found there is no evidence here of a clear intent to harass, such as pre-Complaint hounding of the Respondent, a Plan B approach, or staged trickery intended to set up an example of bad faith.
But as with any other Policy element a panel's consideration of whether a party has abused the administrative proceeding should be based on evidence or, as in this case, lack of evidence, and not upon any subjective sense of the complainant's motive. On any objective analysis the fact remains that the Respondent has been put to time and trouble to defend a proceeding the Panel considers groundless. Even the Complainant's research, selective and cursory as it is, demonstrates an awareness of the Respondent's prior commercial structure and its activity in an unrelated and noncompeting field. This, together with the fundamental flaws in the Complainant's case and lack of proof on key Policy elements, convinces this Panel that this Complaint should not have been brought, and the Complainant and its professional representative should have known it.
For the foregoing reasons, the Complaint is denied and the Panel finds that the Complainant has abused this administrative proceeding by filing it.
Richard G. Lyon
Date: October 16, 2017
1 Any references in the Panel's decision to the "Complaint" are to the Complaint as amended.
2 Though the Complainant's chief financial officer submitted an affidavit on the Complainant's website and other promotional activities, that affidavit includes no financial figures. The citation in the Complaint to the officer's affidavit as support for sales and advertising totals is inaccurate.
3 "Complainant certifies that the information contained in this Complaint is to the best of Complainant's knowledge complete and accurate, that this Complaint is not being presented for any improper purpose, such as to harass, and that the assertions in this Complaint are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument."