WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Neo4j, Inc. v. Domains By Proxy, LLC / Benjamin Nussbaum
Case No. D2018-1193
1. The Parties
The Complainant is Neo4j, Inc. of San Mateo, California, United States of America (“USA” or “US”), represented by Pragmatica Law LLP, USA.
The Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, USA / Benjamin Nussbaum of Los Angeles, California, USA, self-represented.
2. The Domain Name and Registrar
The disputed domain name <neo4jcloud.com> (the “Domain Name”) 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 30, 2018. On May 30, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 31, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 4, 2018, 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 June 14, 2018.
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 June 14, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 4, 2018. The Response was filed with the Center July 3, 2018.
The Center appointed W. Scott Blackmer, Geert Glas, and David J. Steele as panelists in this matter on July 24, 2018. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is a corporation established under the laws of the US state of Delaware and headquartered in San Mateo, California, USA. The Complaint and the Response both characterize the Complainant’s products as the world’s leading graph database software system, software that allows organizations to better analyze and visualize data in large databases. As described in the Complainant’s website at “www.neo4j.com” and the Wikipedia article on the Complainant, the Complainant makes these software solutions available in an open-source “community edition” and also licenses extensions under closed-source commercial terms.
The Complainant holds US Trademark Registration Number 4,784,280 for NEO4J as a standard-character trademark. The registration was granted on August 4, 2015, following an application filed on April 30, 2014 based on actual use and claiming first use in commerce in May 2007. The Complainant claims pre-existing common law rights as well for the mark, reporting that “by 2015” thousands of organizations, “from startups to Fortune 500 companies”, were using the Complainant’s product, which had been downloaded more than 20 million times.
The Domain Name was created on February 12, 2015 using the name of a domain privacy service, which has expressed no connection to the Domain Name. After receiving notice of this dispute, the Registrar identified as the registrant the Respondent Mr. Nussbaum, an individual residing in Los Angeles, California, USA, who will be referred to hereafter as the “Respondent.” The Respondent did not list an organization in the WhoIs data, but the Response states that the Respondent registered the Domain Name on behalf of his company, AtomRain, Inc. (“AtomRain”), for which the Respondent is the president and chief technology officer. The postal address given in the WhoIs data was the then-current address for AtomRain. As noted below, the Response suggests that AtomRain should be considered as the Respondent, and the facts concerning its relationship to Mr. Nussbaum and to the Complainant will be taken into account. However, orders in this proceeding are directed to Mr. Nussbaum as the Respondent, as he alone is listed as the registrant of the Domain Name.
AtomRain is one of many approved “solutions partners” named on the Complainant’s website as part of its “Graph Ecosystem”. The Complainant’s website features AtomRain’s logo with the description, “Product development across SaaS, PaaS and private cloud platforms”, along with a link to the AtomRain website on a separate page headed “Neo4j at AtomRain.” AtomRain, which provides software development and consulting services, promotes itself on its own website at “www.atomrain.com” as “an official Solution Partner of Neo4j Inc, the company behind the Neo4j graph database.” AtomRain assists clients in implementing the Complainant’s software: “By having our certified Neo4j professional software engineers collaborating closely with you, you’ll be able to maximize the business and technical benefits of the world’s most popular graph database.”
It is undisputed that the Respondent has never developed a website associated with the Domain Name. Instead, the Domain Name has been “parked for free” by the Registrar, as indicated at the top of the landing page associated with the Domain Name. According to terms available on the Registrar’s website, this means that the Domain Name resolves by default to a landing page used as an advertising portal for automatically delivered pay-per-click (“PPC”) third-party advertising links. It appears that the registrant does not share in the revenues generated by these PPC links unless the registrant enters into one of the available subscription advertising programs, in which case the parking is presumably no longer labelled “free.” The advertising links displayed on the landing page associated with the Domain Name have concerned a variety of products, from software to perfumes. The landing page also advertises the Registrar’s services and advertises the possibility of purchasing the Domain Name itself.
The Complaint attaches a Declaration by Kurt Freytag, the Complainant’s Director of Product Management, concerning the Complainant’s discovery of the Domain Name, its engagement of a broker in 2017 in an attempt to acquire the Domain Name, and communications with the Respondent, whose identity was not known to the Complainant at that time. Copies of the text exchanges are attached to the Complaint. The Respondent initially rejected an offer and said he expected to get “seven digits” for the Domain Name. Later, in an exchange in 2018, the Respondent said he “still expects six digits.” In a Supplemental Declaration, Mr. Freytag reports that he spoke with the Respondent when the Respondent was identified after the initial Complaint was filed in this UDRP proceeding. According to Mr. Freytag, the Respondent said he initially expected to sell the Domain Name for USD 5 million but ultimately offered to settle the dispute for USD 50,000. The Respondent characterizes this account as “hearsay” but does not offer different details.
5. Parties’ Contentions
The Complainant asserts that the Domain Name is confusingly similar to its coined NEO4J mark, for which the Respondent lacks permission to incorporate in the Domain Name. The Complainant argues that the Respondent Mr. Nussbaum, as an individual, has no legitimate interests in the Domain Name and appears only to have been motivated by a desire to extort money from the Complainant. The Complainant observes that the Domain Name has not been used for a relevant website. The Complainant cites the Policy, paragraph 4(b)(i), arguing that the Respondent acquired the Domain Name primarily for the purpose of selling it to the Complainant or a competitor for a price in excess of out-of-pocket costs.
The Respondent contends that AtomRain rather than Mr. Nussbaum should be deemed the Respondent in this proceeding, as Mr. Nussbaum registered the Domain Name only on behalf of the company and did so for its ultimate use in connection with services relating to cloud-based applications of the Complainant’s Neo4J software. The Respondent argues that “Neo4j Cloud” is “a common, nominative phrasing” used by cloud service providers referring to the Complainant’s open-source, community product. The Respondent points out that the Respondent and many others were building products and services around the open-source software called “Neo4j” for years before the Complainant registered its trademark. The Respondent observes that the Respondent registered the Domain Name before the NEO4J trademark was published for opposition or registered.
The Respondent recounts that AtomRain established a website specifically for cloud-based Neo4j solutions at “www.graphgrid.com.” (GraphGrid, Inc., apparently related to AtomRain, is also listed on the Complainant’s website as a “solutions partner.”) The Respondent states that the Domain Name was registered with the intention of using it as a “parallel domain” to <graphgrid.com>, specifically to focus on “the Neo4j cloud service offering.” According to the Respondent, the Domain Name “is a descriptive domain name that in fact predates Complainant’s trademark. This vision is nearing reality as AtomRain has successfully taken steps to grow the business to the point where that dual presence could be effectively executed.” In effect, the Respondent claims a legitimate interest in making nominative reference to Neo4j cloud applications.
The Respondent denies bad faith because of this legitimate interest and also argues that in any event there was no trademark at the time the Domain Name was registered, and thus there could be no intent to acquire the Domain Name in order to sell it to the trademark owner. The Respondent notes that the Sedo domain broker did not disclose the names of the parties in the earlier exchanges and states that the Respondent mentioned “ridiculous” sales prices only “because he had no intentions to sell the domain.”
The Respondent requests a finding of reverse domain name hijacking.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a 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.
Under 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”.
A. Identical or Confusingly Similar
The Complainant indisputably holds a registered NEO4J trademark, and there is substantial evidence in the record of an identical, prior common law mark. The Complainant’s rights in its NEO4J trademark predate the registration of the Domain Name by many years. The Domain Name incorporates this mark in its entirety and adds the dictionary word “cloud.” The Panel does not find that this generic addition avoids confusing similarity with the mark, which here is a distinctive, coined term, especially since the mark is registered, among other things, for “cloud computing featuring software for use in managing, storing, and accessing data from a database”, and the Complainant advertises such capabilities on its website. As in most cases, the generic Top-Level Domain (“gTLD”) “.com” is not a distinguishing feature. See WIPO of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.
The first element of a UDRP complaint “serves essentially as a standing requirement” and entails “a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name”. See WIPO Overview section 1.7. The Panel concludes under this test that the Domain Name is confusingly similar for purposes of the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, as it has here, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1.
The Respondent in this case implicitly relies on paragraph 4(c)(i), asserting an intent to use the Domain Name “at the right time” in the future in connection with a Neo4j cloud services business. But in three and a half years since registering the Domain Name, the Respondent has not established such a website arguably making nominative fair use of the “Neo4j” name and does not offer evidence of demonstrable preparations for such use of the Domain Name. See WIPO Overview 3.0, sections 2.2 and 2.8. The Registrar may well have parked the undeveloped Domain Name for PPC advertising without the Respondent’s gain or specific direction, but the Respondent remains responsible for allowing this commercial use of the Domain Name for years. The fact remains that the Domain Name, misleadingly based on the trademark of another, has been used only commercially and not for the fair-use purposes claimed by the Respondent. That is inimical to the fundamental notion of fairness underlying the Policy. See WIPO Overview 3.0, sections 2.4 and 2.5. Any website associated with the Domain Name on a claim of nominative fair use would have to meet other conditions of fairness, such as prominently disclosing the relationship with the Complainant and being used only to sell the trademarked goods or services (WIPO Overview 3.0, section 2.8.1). None of these conditions of fairness can be tested here, because the Respondent has not prepared or launched such a website.
The Complainant prevails on the second element, and many of the same facts are relevant in considering the issue of bad faith, below.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):
“(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;
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online 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 Respondent does not deny prior awareness of the Complainant’s Neo4j software, on which the Respondent’s business largely depends, but argues that “Neo4j” was not being used in a trademark sense at the time the Domain Name was registered; thus, there could be no bad faith exploitation of a mark. According to the Respondent, the Domain Name “is a descriptive domain name that in fact predates Complainant’s trademark”.
This reasoning is not persuasive. The Respondent was well aware of the reputation and success of the Complainant’s product, as the Respondent’s own business was tied to that success. There were thousands of customers and 20 million Neo4j downloads by 2015, supporting the Complainant’s claim of common law trademark rights by that time. (The US trademark registration granted on August 4, 2015 was based on actual use and established legal priority from the application date of April 30, 2014). The United States Patent and Trademark Office did not find that “Neo4j” was descriptive or generic. The Respondent suggests that the “cloud” version of the name was generic, but that would not avoid confusion in using “Neo4j” in the Domain Name. The Respondent also suggests that companies building products around an “open source” system could not be viewed as encroaching on trademark by referring to the system by name. Of course, the fact that the Complainant licenses patented or copyrighted software for some purposes on an open source basis does not mean that it forgoes trademark rights to branding that software. On the available record, the Panel concludes that the NEO4J mark was established as a common law mark by the time the Domain Name was registered in February 2015, and that the Respondent was aware of this mark and intentionally incorporated it in the Domain Name.
As discussed above in connection with the second element of the Complaint, the Respondent, as an officer of AtomRain, an approved “solutions partner” for Neo4j graph software, conceivably might have made an argument for nominative fair use of the Complainant’s mark if the Respondent had put the Domain Name to appropriate use or shown demonstrable preparations to do so, as outlined in WIPO Overview 3.0, sections 2.2 and 2.8. But the Respondent has not done so. The Response simply contends that “[t]his vision is nearing reality as AtomRain has successfully taken steps to grow the business to the point where that dual presence could be effectively executed”. This is not a satisfactory explanation for the neglect of the Domain Name. The Respondent or associates already use “www.graphgrid.com” to advertise Neo4j cloud consulting services, and the Respondent reports using other domain name variants “to drive traffic to the main GraphGrid brand or as parallel white-label sites as the organization grows”, including <neo4jgrid.com>, <neo4jhost.com>, and <hostedneo4j.com>. However, at the time of this Decision, each of those other “variant” domain names redirect to “www.graphgrid.com”, rather than being parked at a PPC advertising portal as the Domain Name has been since 2015.
The Respondent denies profiting from the Domain Name, but it is undisputed that the Respondent has allowed it to be parked for the past three and a half years at a PPC advertising portal and used for the commercial gain of third parties benefitting from the Complainant’s reputation. The Respondent represented in the registration agreement that “neither the registration of the domain name nor the manner in which it is directly or indirectly used infringes the legal rights of any third party.” Even if the Respondent did intend eventually to make fair use of the Domain Name for consulting services related to Neo4j cloud applications, such a plan would require careful execution to avoid violating the Complainant’s trademark rights. For example, UDRP panels considering the question of fair use under the second element have repeatedly observed that domain names incorporating a trademark carry a high risk of “implied affiliation”, and the lack of a clarifying term such as “consulting” or “implementation” in the Domain Name itself heightens the risk of that implication (see WIPO Overview 3.0, section 2.5.1). “Fundamentally, a respondent’s use of a domain name will not be considered ‘fair’ if it falsely suggests affiliation with the trademark owner” (WIPO Overview 3.0, section 2.5).
The point is that the Respondent registered a Domain Name that was highly likely to be misleading, and then parked it with a Registrar who would use it indefinitely for commercial purposes. This corresponds to the example of the Policy, paragraph 4(b)(iv), which does not require that the registrant is the only party that may gain commercially from misdirection over the life of the Domain Name. The Panel notes that the Respondent could easily have posted instead a “coming soon” or “under construction” message, or redirected it to an existing, relevant website, if the Respondent was intent on making a claim for legitimate, nominative fair use.
The Complainant looks elsewhere for bad faith, inferring an intention from the outset to sell the Domain Name for an extortionate price. However, that does not accord with the facts that the Respondent held the Domain Name for years without approaching the Complainant and that the Respondent does in fact advertise and offer relevant Neo4j cloud services. It seems more likely that the Respondent allowed the Domain Name to languish, even while later registering (and redirecting) similar domain names. This very carelessness with another’s trademark, however, contributes to the Panel’s conclusion that the Respondent acted with the required bad faith. Simply put, registering a Domain Name that mimics a distinctive trademark, and using the Domain Name to attract Internet users for the benefit of third-party advertisers with the idea of parking it indefinitely, until “the right time”, supports a finding of bad faith under the policy.
The Panel concludes that the third element of the Complaint, bad faith, has been established within the meaning of the Policy.
D. Reverse Domain Name Hijacking
The Respondent has requested a finding of Reverse Domain Name Hijacking. Paragraph 15(e) of the UDRP Rules provides that, 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”. Reverse Domain Name Hijacking is defined under the UDRP Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
There are no grounds here for finding that the Complainant engaged in such abusive or harassing behavior and, in fact, the Panel concludes that the Complaint is well founded.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <neo4jcloud.com>, be transferred to the Complainant.
W. Scott Blackmer
David J. Steele
Date: August 7, 2018