WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Questex, LLC v. Domains By Proxy, LLC / Ryan Lewis, SSGH LLC
Case No. D2020-1253
1. The Parties
Complainant is Questex, LLC, United States of America (“United States”), represented by Burns & Levinson LLP, United States.
Respondent is Domains By Proxy, LLC, United States / Ryan Lewis, SSGH LLC, United States.
2. The Domain Name and Registrar
The disputed domain name <questexweb.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 18, 2020. On May 19, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 20, 2020, 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 Complainant on May 20, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on May 25, 2020.
The Center verified that the Complaint together with the amendment to the 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 May 26, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 15, 2020. Respondent sent an email to the Center on June 3, 2020. On June 15, 2020, Respondent requested to extend the Response due date. The Center acknowledged receipt of the request and extended the Response due date to June 19, 2020. Respondent submitted the Response on June 20, 2020. Accordingly, the Center acknowledged of receipt of Response on June 22, 2020. On June 24, 2020, Complainant filed the supplemental filing. On the same day, the Center acknowledged the receipt of the supplemental filing by the Complainant and proceeded with the panel appointment. In its discretion, the Panel considered the supplemental filing.
The Center appointed Robert A. Badgley as the sole panelist in this matter on June 26, 2020. 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
According to Complainant, it “produces a variety of publications, media and events directed to the pharmaceutical/life sciences, healthcare, wellness, hospitality, travel and technology industries” generally. Complainant asserts that it has provided such services under the common law trademark QUESTEX since 2005. Annexed to the Complaint is an April 29, 2005 screenshot of Complainant’s main website, located at the domain name <questex.com>, which states, under the header “ABOUT QUESTEX”, as follows:
“Questex Media Group is a global, diversified business-to-business integrated media provider, headquartered in Newton MA. Questex Media serves multiple industries including technology, travel, beauty, home entertainment, landscaping, and industrial and specialty markets through a range of well established, market leading products and services. The company’s properties include 23 trade publications, 25 conferences and tradeshows as well as a host of databases and online media brands. Questex Media has more than 400 employees in offices throughout North America, Latin America, Asia, and Europe.”
According to a sworn declaration by Complainant’s Chief Marketing Officer, Complainant’s websites collectively received approximately 10.5 million impressions in April 2020. This declarant also states that Complainant has used QUESTEX as its mark continuously on its publications, websites, business cards, and in other ways since 2015. Complainant has submitted into evidence various screenshots of its websites offering various services, such as travel services, using the QUESTEX mark to identify such services.
Complainant originally owned the Domain Name beginning on January 30, 2015, but inadvertently allowed the registration to lapse. Respondent registered the Domain Name on or about March 19, 2020.
The Domain Name resolves to a website named “Global Cannabinoids”. This website indicates that Respondent’s business is the production and sale of “industrial hemp-derived CBD products of the highest quality”. The site also states: “Questexweb.com Website Assets Acquired By CBD Wholesale Globalcannabinoids.io.”
On March 20, 2020, Complainant’s representative communicated with the Registrar’s domain name brokerage service, which was in communication with Respondent. The broker advised Complainant’s representative that Respondent sought USD 100,000 for the Domain Name. On April 10, 2020, Respondent conveyed through the broker that Respondent would not accept less than USD 250,000 to transfer the Domain Name.
5. Parties’ Contentions
Complainant contends that it has satisfied all three elements required under the Policy for a transfer of the Domain Name.
Respondent disputes that Complainant has demonstrated common law trademark rights. Respondent also argues that he has a legitimate interest in the Domain Name, and that he did not register or use the Domain Name in bad faith.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel concludes that Complainant has common law rights in the mark QUESTEX through use demonstrated in the record. The Panel also finds that the Domain Name is confusingly similar to the mark. The Domain Name fully incorporates the QUESTEX mark, and adds the term “web”. The mark is clearly recognizable within the Domain Name, and is the dominant element of the Domain Name.
Respondent also asserts, in his challenge to Complainant’s common law trademark claim, that there are “many other companies that utilize the term ‘Questex’ in their domain names”. Respondent supplied three examples of such domain names. In its supplemental filing, Complainant demonstrated that those three domain names were, in fact, owned by Complainant. This fact certainly undermines Respondent’s argument on this score.
Complainant has established Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name. Respondent makes the false claim on his website that “Questexweb.com Website Assets Acquired By CBD Wholesale Globalcannabinoids.io”. In point of fact, Respondent acquired the Domain Name, and only the Domain Name, and the term “website assets” misleadingly suggests that there was some type of negotiated deal between those parties which included the Domain Name and other website-related “assets”.
The Respondent moreover seeks to establish its bona fides less by explaining its own interest in the Domain Name, and instead suggests that the Complainant does not need this “peripheral” domain name as its primary domain for web traffic is <www.questex.com> contrary to the Complainant’s assertions that it “used the domain name as part of its extensive marketing and promotional activities”. This is plainly beside the point as far as this element goes. The Respondent also claims to have concrete plans to expand its business but no supporting evidence is provided.
In any event, the Panel concludes from this record that Respondent opportunistically snapped up a lapsed Domain Name registration with the motivation of selling the Domain Name back to Complainant at a hefty profit. Remarkably, in his Response, Respondent does not even address the USD 100,000 and USD 250,000 demands to transfer the Domain Name back to Complainant.
Complainant has established Policy paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent registered and used the Domain Name in bad faith. The record here, on a balance of probabilities, indicates that Respondent registered the Domain Name primarily for the purpose of selling it to Complainant for consideration in excess of the out-of-pocket expenses directly related to the Domain Name, in violation of Policy paragraph 4(b)(i). As noted above, the undisputed record shows that Respondent demanded USD 100,000, and later USD 250,000, to part with the Domain Name; the Respondent for his part merely claims to have paid “fair market value” for the Domain Name. As the Complainant puts it: the Respondent’s “demand for $100,000 under threat that ‘going the legal route’ will end up costing [the] Complainant more money clearly suggests that the sole interest [the] Respondent has in the [ ] Domain Name is to use it to extort money from [the] Complainant, which does not give rise to a legitimate interest or right in the [ ] Domain Name.”
The Panel also notes that the Respondent takes issue with the Complainant’s characterization of the Respondent’s CBD products as “illicit” but that this is not the case pursuant to the Agriculture Improvement Act of 2018 (known popularly as the Farm Bill); while the Respondent may be technically correct about the legality of the sale of his products, this misses the point as far as bad faith vis-à-vis the Complainant goes.
Complainant has established Policy paragraph 4(a)(iii).
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 <questexweb.com> be transferred to Complainant.
Robert A. Badgley
Date: July 10, 2020