WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nextbite Brands, LLC v. Nextbite LLC, Nextbite General Trading Company
Case No. D2021-3114
1. The Parties
The Complainant is Nextbite Brands, LLC, United States of America (“United States” or “US”), represented by Novian & Novian LLP, United States.
The Respondent is Nextbite LLC, Nextbite General Trading Company, Kuwait, represented by Al Tamimi & Company, United Arab Emirates.
2. The Domain Name and Registrar
The disputed domain name <nextbite.com> (the “Disputed 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 September 21, 2021. On September 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 22, 2021, 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 24, 2021, providing the registrant and contact information disclosed by the Registrar, and requesting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 27, 2021.
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 October 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 24, 2021. The Response was filed with the Center on October 20, 2021.
The Center appointed Nick J. Gardner as the sole panelist in this matter on November 11, 2021. 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.
On November 4, 2021 the Complainant filed a request to file a Reply brief. In this it explained it wished to do so because it contended matters set out in the Response were untrue and were based upon documentary evidence which was forged. On November 11, 2021 the Respondent requested that if the Panel granted leave for the Complainant to file a Reply it should be allowed to file a further Response to it. On November 17, 2021 the Panel issued a Procedural Order (the “Procedural Order”) in the following terms:
“The Panel has reviewed the Amended Complaint and the Response. The Panel notes the Complainant’s request to file a Reply on the basis that it alleges the Response includes evidence which has been fabricated. In view of the seriousness of the allegation and its likely relevance (if shown to be correct, on the balance of probabilities) the Panel will allow a Reply of the type indicated in the Complainant’s Request dated November 4, 2021 to be filed. The Panel will also allow the Respondent to file a further statement in response to the Reply.
The Panel requests that the Complainant’s Reply also addresses the following:
1. The chronological history of the Complainant, its business and its adoption of the term “nextbite” in respect of its business, setting out all relevant dates with supporting evidence where appropriate.
2. The email correspondence produced by the Respondent in Annex 7 to the Response and in particular stating whether or not the Complainant was the substantive attempted purchaser of the <nextbite.com> domain name involved in those emails.
3. All relevant activity shown on ‘www.archive.org’ in relation to ‘www.nextbite.com’ with effect from 2016 onwards (including its apparent redirection on occasion to “www.nextbite.co”).
The Respondent in its further statement may also address any of the above matters.
The Complainant should provide its reply filing by November 26, 2021.
The Respondent should provide its further filing by December 3, 2021.
Accordingly, the Decision due date is extended to December 10, 2021. The Panel reserves the right to take any additional procedural steps as it considers necessary”.
On November 21, 2021 the Respondent requested the Center issue a letter asking the Swiss Embassy to attest to the authenticity of certain documents. On November 23, 2021, the Center replied indicating that as a neutral dispute provider it was not able to issue such a letter.
The Complainant filed a Reply (the “Reply” on November 26, 2021. The Respondent file a further Response (the “Further Response”) on December 2, 2021 with a revised version filed on December 3, 2021. The contents of these filings are discussed below.
On December 7, 2021, the Respondent sent an email communication regarding the numbering of the annexes.
4. Factual Background
The Panel will set out in this section matters derived from the Parties filings and evidence which do not appear to be in dispute.
The Complainant’s origins derive from a company called Ordermark, Inc. (“Ordermark”). It is a company that provides hardware and software for restaurants to receive digital orders from a number of ordering services in a single terminal. This makes it easier for restaurants to receive and process a higher volume of services. In 2018, Ordermark decided that it could offer restaurants an opportunity to sell food from a branded menu. It says this is known as a “ghost kitchen.” The ghost kitchen business began as “Ghost Systems, LLC” on October 12, 2018 and changed its name to Nextbite Brands, LLC (“Nextbite”) on February 12, 2019. Since that time, Nextbite has supplied menus for restaurants to provide (the Panel has no information as to the scale of this business). The Complainant is the owner of US registered trademark no. 6030397 for the word Nextbite (the Complainant’s NEXTBITE trademark”) registered on April 7, 2020. This trademark was filed on “02-06-2019” which the Panel takes to mean February 6, 2019. The trademark claims a date of first use in commerce of “8-00-2019”. The Panel does not understand this reference – it possibly refers to August 2019 but the Panel does not see how a claimed first use date can be after the date of filing. In any event, on the evidence it appears the earliest date on which the Complainant publicly adopted the name “nextbite” was February 6, 2019. This date is important – see below.
The Disputed Domain Name was originally registered on January 14, 2003. The date on which it was acquired by the Respondent is in dispute (see below). It is now linked to a website (the “Respondent’s Website”) which on the landing page contains the slogan “we put food on your table” and which has a login facility. There are also terms and conditions (governed by the law of Kuwait) which say the Respondent’s Website is operated by “Nextbite LLC”. The landing page also has a section headed “our clients” which shows a number of logos which would appear to be those of third party restaurants.
5. Parties’ Contentions
As originally filed the Complaint is relatively brief and does not do much more than set out the formal requirements under the Policy that the Complainant has to show. It says the Disputed Domain Name is identical to the Complainant’s Nextbite trademark and that the Respondent has no rights or legitimate interests in the name “nextbite”. It says the Respondent does not sell any goods or services via the Respondent’s Website. It says the designation “LLC” in the Respondent’s identity as shown on the Respondent’s Website suggests it is a US entity but there is no US entity called Nextbite LLC. It says pretending to be a company that does not exist cannot amount to a bona fide offering of goods or services.
The Complainant says the Respondent has registered the Disputed Domain Name in bad faith because the Respondent is attempting to attract Internet users by falsifying the origin of goods and services. It says the Respondent has used the Disputed Domain Name to intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the domain). It also says the Respondent is trying to confuse the public by using a similar color scheme as the Complainant as well as claiming the source of the website is a name confusingly similar to the Complainant’s name.
Additionally, the Respondent says the only thing one can do on the Respondent’s Website is enter an email address, which appears to be a phishing scam of sorts. An email received from an email account using the Disputed Domain Name included in its address is likely to mislead users into believing that the email address is associated with the Complainant. In these circumstances, it is clear that the Disputed Domain Name has been registered in bad faith and for the purpose of intentionally attempting to mislead in order to commit fraud.
The Complaint so far as the Panel can see does not provide any information about what domain names the Complainant uses, what its website or websites look like (despite alleging the Respondent is using a misleadingly similar color scheme) or as to when it says the date of the Respondent’s acquisition of the Disputed Domain Name occurred.
The Respondent’s case is that it is a bona fide Kuwait entity called “Nextbite LLC”, and it independently derived the name Nextbite and it did so before the Complainant adopted that name. It says it offers a bona fide service to restaurants (see below).
The Respondent says it has operated in Kuwait since 2016. It says “Nextbite” was officially established on September 25, 2016 as a One Person Company (OPC) with the Kuwait Ministry of Commerce and Industry.
On December 20, 2018 the OPC registration was canceled upon request of Mr. Mohammad Alhamdan to change the registration of the company to a “LLC” by joining another investor Mr. Abdulrahman Alhamdan. Nextbite LLC was officially registered on January 2, 2019. The Respondent says it has used NEXTBITE as a trade name since 2016. The Respondent provides copies of what it says are translated Trade Licenses issued in 2016 and of the “LLC” company issued in 2019 by the Kuwait Ministry of Commerce and Industry in Annex 3 to the Response.
The Respondent says it acquired the Disputed Domain Name in July 2017, from a company called B52 Media LLC (a US based company) which was before the Complainant was established.
The Respondent says it owns trademark registrations for the NEXTBITE Logo in classes 35, 42 and 43 in Kuwait which were applied for on February 2, 2019, which is more than one year prior to the registration of the Complainant’s US trademark. It says that in addition, the Respondent also owns trademark registrations for the NEXTBITE Logo in classes 9, 35 and 43 in Saudi Arabia since May 2021; in Bahrain (August 2021) and in Oman (September 2021). It provided copies of the Respondent’s trademark registration certificates as Annex 1 to the Response.
The Respondent says it provides innovative cloud solutions for the food and beverage (“F&B”) industry. It says that the first product it launched enabled customers ordering from restaurants tables in a unique and innovative way. It says it collaborates with many restaurants and that its operations are mainly focused on the Kuwaiti F&B market at present.
The Respondent also says it has an active app on the Apple store registered under Nextbite LLC, for customer ordering, and it also offers a mobile app available for download on the Apple Store. This is called NextBite Waiter and is an app developed for waiters (“the App”); the App is used for Restaurant’s floor managements and to receive orders from clients. It says that for instance, between September 18 and October 15 2021, the App had 142,000 users.
The Respondent says that the Respondent’s Website is a B-to-B website, which exclusively provides what it calls Clients Dashboard. The Disputed Domain Name is used for a website available for client’s dashboard login only (Restaurants), for this reason when the public access the home webpage, there is little information publicly available. The Respondent says it is currently working with more than 32 outlets and serves daily an average of 6,000 customers.
As a result, before the Respondent received any notice of the dispute, there was evidence of the Respondent’s use of the Disputed Domain Name in connection with a bona fide offering of goods or services.
The Respondent denies registering and using the Disputed Domain Name in bad faith. It also says that the Disputed Domain Name was not registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the Disputed domain Name registration to the Complainant for valuable consideration. It says the opposite is true in that the Respondent believes that the Complainant attempted to reach out to the Respondent at least twice to attempt to purchase the Disputed Domain Name. The first negotiation attempt was initiated on September 17, 2020; when the Respondent received a request through a Godaddy Domain Broker, to sell the Disputed Domain Name. The Respondent declined the offer and confirmed not being interested in selling the Disputed Domain Name as it was attached to its business. The broker revealed information about the identity of the purchaser stating “They are also in the restaurant technology space, but in a different market and is not competing with your All in one Restaurant Management System. The client has over 5000 restaurant customers in the US and Canada with plans to expand internationally. Would you be open to a partnership discussion that may involve cash compensation in addition to stock options in the client’s business?” The Respondent replied that such partnership shall have terms and conditions and should involve lawyers aiming to obtain details about the purchaser. The broker replied by offering USD 100,000 USD to purchase the Disputed Domain Name. That offer was declined by the Respondent.
The second negotiation attempt started on May 6, 2021. The Respondent received a request through “[...]@godaddy.com” to purchase the <nextbite.com> and the Respondent again declined the offer.
The Respondent requests a finding of Reverse Domain Name Hijacking on the grounds that the Complainant is harassing the Respondent, making offers to purchase the Disputed Domain Name and filing a baseless Complaint. It says that the Complaint is actually just another means to exhaust available resources so as to enable the Complainant to acquire ownership of the Disputed Domain Name, which the Respondent is refusing to sell.
C. Complainant’s Reply
In its Reply, the Complainant unequivocally alleges that the Response is untrue and is based on documentary material that has been forged. For reasons discussed in more detail below the Panel regards this as an extremely serious allegation. The Panel considers it appropriate to set out verbatim what the Complainant alleges in this regard.
The Reply states: “The Respondent claims it, ‘owns trademark registrations for the NEXTBITE Logo in classes 35, 42 and 43 in Kuwait since February 2, 2019, which is more than one year prior to the registration of the Complainant’s US trademark.’ This is false. Kuwait Trademark Application 2021-6325 was filed in international Class 42 on May 31, 2021. Kuwait Trademark Application 2021-5689 was filed in International Class 43 on May 14, 2021. There is no application in International Class 35. A copy of a trademark search is attached as Annex F. The certificate bearing that date is fraudulent and cannot be verified in any public or private database. A search of the Kuwait trademark records is in Annex G.” The content of the searches in question is discussed below.
The Reply goes on to state “Next Respondent alleges that it, ‘acquired the <nextbite.com> Domain Name back in July 2017, from B52 Media LLC (a US based company); which is even before the Complainant was established.’ The Whois record for the domain shows that Respondent obtained ownership on May 15, 2019. A copy of the historical whois metadata can be found in Annex H. This metadata was extracted from the publicly available website 42metadata which is simply a more detailed version of the Whois metadata in Annex B. Again, Respondent’s allegation is easily provably false and the form is fraudulent as well”.
The Reply concludes with the following submission: “The panel has an obligation to determine if a factual controversy exists between the parties. However, where “one party’s allegations are unsupported by any objective evidence or even fabricated for purposes of thwarting a claim” that evidence may be disregarded for the purpose of resolving the dispute. Edward G. Linsky v. Brian Valentine, WIPO Case No. D2006-0706. A panel in proper circumstances may discount evidence, even sworn testimony, as self-serving or incredible based on other evidence in the case. Salt River Community Gaming Enterprises (d/b/a Casino Arizona) v. Fort McDowell Casino, WIPO Case No. D2007-0416. Here, the Complainant’s evidence exists entirely in publicly available databases. The panel is free to verify any fact stated by the Complainant and can easily do so. Some of the Respondent’s evidence is verifiable, such as some late filed trademark applications. However, all of the relevant evidence regarding use of the domain and the mark is incredible based on the verifiable third-party data in the present case. The panel should discount the evidence of the Respondent and order the domain be transferred to the Complainant”.
The Reply also provides various other information pursuant to the requests the Panel made in the Procedural Order. Further detail is provided as to the establishment of the Complainant. This has been set out in the factual background above. As to information about any purchase approaches made by the Complainant it says “Nextbite did make at least one purchase overture to Respondent” and “A review of the Complainant’s is consistent with Respondent’s emails about the September 2020 purchase request for the domain. There were not records for the early May 2021 purchase request. These emails are attached as Annex B”.
So far as historical use of the Disputed Domain Name is concerned the Complainant says as follows: “No records indicate Respondent used the domain prior to June 22, 2019. From January 12, 2016 to June 24, 2017, Whois record abstracts show that B52 Media owned the domain. These extracts are attached as Annex C. However, the Wayback Machine shows nothing for the Domain prior to September 23, 2017. Records from the Internet Archive taken on September 23, 2017, March 27, 2018, August 5, 2018, and November 4, 2018 show a redirect to <nextbite.co>. Copies of these redirect pages are attached as Annex D. The Wayback Machine shows a splash page for Nextbite.com starting on June 22, 2019 which is similar to screenshots taken on August 10, 2019, and September 11, 2020. These records are attached as Annex E. There are no records that the Respondent made any use of the domain prior to June 22, 2019”.
Finally the Reply goes into some detail about statistics as to how much traffic the Complainant says the Respondent’s Website generates and the nature and accessibility of the Respondent’s associated apps on the Apple store. For reasons discussed below the Panel considers all of this to be ultimately irrelevant and does not propose to analyse it further.
D. Further Response
In the Further Response the Respondent categorically denies the allegations of forgery and untruth and produces a significant quantity of evidence. Where relevant this evidence is detailed in the discussions below.
6. Discussion and Findings
A. Alleged Forgery
The Panel proposes to deal first with the allegation of alleged forgery as determination of that issue is likely to be of overall significance to the Panel’s reasoning and the outcome of this Complaint.
So far as the standard of proof to be applied in this analysis see Total S.A. v. Gustavo Cerda WIPO Case No. D2011-2073: “In all cases under the Policy a complainant must prove its case on the balance of probabilities. The test is no different when fraud or dishonesty is alleged. However, as many legal systems have recognised, the more serious the allegation, the less likely it is to be true and therefore the more cogent the evidence must be before the balance of probabilities test is satisfied”.
The Panel regards the Complainant’s allegation as extremely serious. It has not actually said how it alleges the forgery was effected or who it says did it but it seems to the Panel that the only logical possibility is that the Complainant’s case is that the Respondent acting in collusion with its legal advisers perpetrated the alleged forgery. The Respondent’s legal advisers would appear to be a major international law firm. According to its website Al Tamimi & Company, describes itself as the “leading law firm in the Middle East and Africa region” with 16 offices in 9 countries across the Middle East and Africa and with a staff of some 450 legal professionals. An allegation of forgery (either directed at the Respondent or at this firm), in the Panel’s opinion, should not be made lightly and needs to be taken seriously.
The underlying issue that has led to the allegation is that the official records of the Kuwait Trade Mark office are not available on line. This can be confirmed by visiting the Kuwait Government Ministry of Commerce and Industry website where the procedure to enquire about a trademark is identified as “Visit the Ministry of Commerce, Sharq area, Al Shuhada st., KIPCO tower, Trademark Control Department, Patents Office and submit the documents [i.e. the details of the trademark in question]”.
Pausing at this point the Panel would say that in view of the seriousness of this allegation it would have expected the Complainant to instruct appropriately qualified local agents to make this enquiry in person about the trademarks in issue and provide appropriate evidence as to the result. It has not done so.
Although Kuwaiti trademark records are not directly searchable it is clear those records are replicated into various third party databases. How that happens and how accurate or up to date that process is, is not in evidence before the Panel. The Respondent however says it is a process with significant delays and omissions.
With this background the Panel turns to the alleged forgeries themselves. The Panel proposes to analyse this issue by reference to one of the trademarks relied upon, namely KW1615076 filed on February 2, 2019 in class 35 for the word nextbite together with a spoon and fork device (the “076 trademark”). The same principles are however applicable to the other alleged forgeries.
The document originally placed in evidence annexed to the Response as the trademark certificate appear as a matter of visual observation to look like an authentic trademark certificate. It comprises 4 pages, 2 in English and two in Arabic and all relevant details are present. There is no obvious sign of editing or tampering. The document contains a QR code which if scanned links to an official Kuwaiti webpage (in Arabic). The Complainant has not attempted to explain in forensic terms in what way this document is likely to be a forgery.
The Respondent in the Further Response has now produced a certified copy of the same document and invited the Panel to contact the certifying officer to confirm its authenticity. The Panel does not consider it either necessary or appropriate to do so.
The basis for the Complainant’s allegation is that it says this trademark cannot be found in the database searches it has carried out. It must therefore be a forgery. The Panel is not convinced this is necessarily correct when the searches are carried out indirectly rather than on the official Kuwaiti register. The Panel accepts that the failure to find the trademarks the Respondent relies upon invites further enquiry. The Panel does not however think it justifies an immediate conclusion that the Respondent has produced a forgery. The Panel would also add that trademark searching is a skilled activity where a degree of expertise and experience may be necessary especially in difficult cases. The Panel has not been told who carried out the searches in question or what their experience is. Evidence in this respect would also have been appropriate before alleging forgery.
The Respondent in the Further Response produced its trademark search carried out by third party provider Corsearch via its proprietary “trademarknow” system. It identifies the registries/records searched as follows :- “Amazon appstore: 587,681 Apple iTunes Apps: 2,085,833 Companies: 0 Google Play: 5,238,566 Kuwait MOCI (2021-08-18): 190,956 Steam: 21,776”. That search locates the trademark KW MOCI 2019_000856 in class 35 as registered and shows an application date of February 2, 2019. This is precisely consistent with the certificate the Respondent has placed in evidence.
On the basis of the above analysis the Panel would conclude the Complainant has failed to discharge its burden of proof in showing that the trademark certificates the Respondent relies upon are forgeries. There is however further material that adds to the Panel’s conclusion in this regard. In particular the overall time line as to the Respondent’s activities show clearly that it adopted the name Nextbite in respect of its commercial venture well before 2019. This timeline is considered in more detail below but by way of example the Respondent has produced a Kuwaiti trade licence – this is in Arabic but a translation has been provided and the Complainant has not challenged this – which shows the name nextbite first being adopted in October 2016. The Complainant has not suggested that this document (or others the Respondent has produced in this regard – see below) are forgeries. Also of relevance is the information contained on the “archive.org” database as to historical use of the Disputed Domain Name – see discussion below. The timeline is entirely consistent with the Respondent having applied for the trademarks when it says it did.
Taking all of this in account the Panel rejects the Complainant’s claim that the trademark certificates the Respondent relies upon are forgeries. It will proceed on the basis they are genuine.
The second area where the Complainant alleges forgery relates to the date the Respondent acquired the Disputed Domain Name. The Complainant says “the form is fraudulent as well”. The reference to “the form” is not very clear but the Panel thinks it must mean the signed purchase agreement the Respondent placed in evidence showing purchase of the Disputed Domain Name from a company called “B52Media LLC” dated July 27, 2017. Once again there is no attempt by the Complainant to show forensically what is wrong with this document. The basis for its allegation is that “The Whois record for the domain shows that Respondent obtained ownership on May 15, 2019”. That allegation is based on the fact that the WhoIs data shows an “updated Date” of May 15, 2019. That argument, as the Respondent correctly observes, is fallacious. The “updated Date” shows the date that any kind of change was last made to WhoIs data – whilst a change of registrant would lead to an entry so will any other changes (for example a change of nameserver). On its own an entry under “updated Date” does not prove that is when the Respondent acquired the Disputed Domain Name. The Respondent in its further Response placed in evidence its correspondence with B52media LLC leading up to the purchase and this concludes with up to an email of acceptance dated July 26, 2017. The Respondent has also provided GoDaddy.com LLC receipt no. 1170806611 dated August 5, 2017 showing the Disputed Domain Name transferring to GoDaddy and the ownership of the Disputed Domain Name to the Respondent.
Furthermore the way records for the Disputed Domain Name appear on “www.archive.org” is consistent with the Respondent’s acquisition in July 2017. The Panel raised this in the Procedural Order and invited comment from the parties. The Complainant in its Reply says “Records from the Internet Archive taken on September 23, 2017, March 27, 2018, August 5, 2018, and November 4, 2018 show a redirect to <nextbite.co>”. That is correct. The Complainant appears to think that is consistent with its case that the Disputed Domain Name did not belong to the Respondent at this time. If so it is mistaken. The Respondent in its Further Response has confirmed that it owns <nextbite.co> and it purchased it on July 16, 2016, which is a year prior to its purchase of the Disputed Domain Name, and places in evidence GoDaddy.com LLC Receipt No. 1001442398 dated July 16, 2016. Accordingly a redirect to “www.nextbite.co” from at least September 23, 2017 is consistent with the Respondent acquiring the Disputed Domain Name prior to that date. It says this redirect occurred whilst it was developing its website.
Taking this evidence as a whole the Panel finds the Complainant has failed to establish that the Respondent’s evidence is fraudulent. The evidence overwhelmingly supports the conclusion the Disputed Domain Name was acquired by the Respondent around July 26, 2017.
B Substantive Application of the Policy
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
A. Identical or Confusingly Similar
The Complainant has rights in the Complainant’s Nextbite Trademark. The Disputed Domain Name is identical to that trademark – it is well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
It does not matter for the purposes of this element that the Disputed Domain Name was acquired by the Respondent before the Complainant’s Nextbite trademark was registered (see below) – the Panel agrees with the consensus approach as explained in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) section 1.1.3:
“1.1.3 While the UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired its rights, such rights must be in existence at the time the complaint is filed.
Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity under the UDRP. The UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired rights. However, in such circumstances it may be difficult to prove that the domain name was registered in bad faith under the third element of the UDRP.” See below as to bad faith issues.
Accordingly the Panel finds that the Disputed Domain Name is identical or confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, 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) the respondent has been commonly known by the 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 domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent argues that (i) applies. It has not sought to argue that (ii) also applies. For reasons that are discussed above in the section related to the Alleged Forgery and below in relation to bad faith the Panel concludes that the Respondent commenced a bona fide business which involved registration and use of the Disputed Domain Name before any notice of the present dispute and indeed before the Complainant had itself adopted the term “nextbite”. In those circumstances the Panel agrees that (i) applies. Accordingly the Panel finds the Respondent has rights and legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has not been fulfilled.
C. Registered and Used in Bad Faith
The Panel observes that “nextbite” is formed by conjoining two ordinary English words. It seems entirely possible that the term could be independently derived without knowledge of the Complainant especially in the context of restaurant services.
Under paragraph 4(a)(iii) of the Policy, the Complainant must establish both that the Disputed Domain Name was registered in bad faith and that it has been used in bad faith Registration in this context means the date the Respondent acquired the Disputed Domain Name. If that date was, as the Respondent claims, prior to the Complainant’s adoption of the term Nextbite then (absent certain exceptional circumstances which do not apply here) the registration cannot have been in bad faith – see WIPO Overview 3.0 at section 3.8.1. As indicated above, on the evidence, the earliest date on which the Complainant publicly adopted the term Nextbite is February 6, 2019. As discussed above in the section of Alleged Forgery, the Panel concludes the Respondent acquired the Disputed Domain Name around July 26, 2017.
Once that timing is appreciated it becomes clear the Complaint cannot succeed. All other matters (including the dating of the trademark certificates, the availability of the Respondent’s App, and the amount of traffic generated by the Respondent’s Website) becomes irrelevant.
A further point that is however of some relevance is that following the Procedural Order the Complainant has placed in evidence its correspondence in September 2020 with a broker it instructed at Godaddy when it attempted to purchase the Disputed Domain Name. That shows the Complainant instructing the broker to make a series of increasing offers (culminating in an offer of USD 100,000) on behalf of the Complainant. At no point in this correspondence is there any suggestion by the Complainant that it has any prior rights to the Disputed Domain Name or that there is anything wrong with the Respondent’s ownership of it. It also seems the Complainant may have made a further attempt to purchase the Disputed Domain Name in May 2021 but the evidence on this is unclear.
The Panel therefore finds that the Complainant has failed to establish that the Disputed Domain Name was registered in bad faith.
7. Reverse Domain Name Hijacking
The Respondent seeks a finding of Reverse Domain Name Hijacking (“RDNH”). RDNH constitutes “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name” – see the Rules, paragraph 1, definition of RDNH. Paragraph 15(e) of the 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 RDNH, 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.
As set out in the WIPO Overview 3.0 section 4.16, reasons articulated by panels for finding RDNH include: (i) facts which demonstrate that the complainant knew it could not succeed as to any of the required three elements – such as the complainant’s lack of relevant trademark rights, clear knowledge of respondent rights or legitimate interests, or clear knowledge of a lack of respondent bad faith (such as registration of the disputed domain name well before the complainant acquired trademark rights, (ii) facts which demonstrate that the complainant clearly ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint, including relevant facts on the website at the disputed domain name or readily available public sources such as the WhoIs database, (iii) unreasonably ignoring established Policy precedent notably as captured in this WIPO Overview – except in limited circumstances which prima facie justify advancing an alternative legal argument, (iv) the provision of false evidence, or otherwise attempting to mislead the panel, (v) the provision of intentionally incomplete material evidence – often clarified by the respondent, (vi) the complainant’s failure to disclose that a case is a UDRP refiling, (vii) filing the complaint after an unsuccessful attempt to acquire the disputed domain name from the respondent without a plausible legal basis, (viii) basing a complaint on only the barest of allegations without any supporting evidence”.
The Panel considers the Complainant’s conduct warrants a finding of RDNH. It considers the Complaint as filed overstated the Complainant’s case and failed to consider properly the likely evidence as to when the Respondent acquired the Disputed Domain Name. It also made unsubstantiated allegations of “phishing” and fraud and claimed (incorrectly) that the Respondent’s use of the term “llc”. indicated it was a (non-existent) US corporation. Faced with a Response which clearly set out the Respondent’s case and which would, if correct, be likely to succeed, the Complainant then sought to deal with the problems with its case by making allegations of forgery and fraud. These were not properly made out and were not in the Panel’s view sustainable – see discussion above. They should never have been made. The Respondent must have been placed to considerable cost and effort in dealing with them.
It is also appropriate to note that the Respondent in its Further Reply places in evidence further correspondence from the Complainant to the Respondent received whilst the present proceeding was underway, seeking once again to initiate discussions in order to purchase the Disputed Domain Name. Taken as whole the Panel reaches the conclusion this Complaint was brought to harass the Respondent as part of a strategy to acquire the Disputed Domain Name, earlier attempts to purchase it having failed. Accordingly the Panel finds RDNH.
For the foregoing reasons, the Complaint is denied. The Panel finds the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Nick J. Gardner
Date: December 10, 2021