WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cloudfm Group Limited v. Barry Garner, MyMailer Ltd
Case No. D2021-3251
1. The Parties
The Complainant is Cloudfm Group Limited, United Kingdom (“UK”), represented by Sandersons, UK.
The Respondent is Barry Garner, MyMailer Ltd, UK.
2. The Domain Name and Registrar
The disputed domain name <cloudfm.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 30, 2021. On October 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 1, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 the Respondent of the Complaint, and the proceedings commenced on October 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 1, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 4, 2021. The Respondent submitted a late response on November 12, 2021.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on November 16, 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. The Panel issued Procedural Order No. 1, described in section 6A below, on November 30, 2021.
4. Factual Background
The Complainant is a limited company established and existing under the laws of England and Wales, UK, under registration number 09095504, which provides facilities management services. The Complainant is the owner of three UK registered trademarks for, or incorporating, the term CLOUDFM, namely (1) No. 3058975 for the device and word mark CLOUDFM GROUP in stylized typeface colored blue with the letters “FM” in a lighter color and the word “Group” beneath the other words, also featuring a blue circular device, registered on September 19, 2014; (2) No. 3333515 for the device and word mark CLOUDFM, largely identical to No. 3058975 but missing the word “Group”, registered on November 16, 2018; and (3) No. 3404190 for the word mark CLOUDFM, registered on October 25, 2019. Each of said trademarks is registered in classes 9, 35, 37 and 42, covering services such as software design and computer platforms, business management and operation services, and environmental control and related systems. The Complainant also claims unregistered rights “acquired through extensive use of the mark CLOUDFM since June 2014” but does not provide corresponding evidence of such alleged extensive use.
According to the Registrar’s verification response, the disputed domain name was registered on February 8, 2009. The Respondent provides evidence that it acquired the disputed domain name on March 14, 2020 via the Registrar’s “Expiry Domain Name Purchase” service. The Respondent notes that this was an aftermarket auction in which there were bids from competing participants. The Respondent operates websites at “www.playfm.com” and “www.rockfm.com” and asserts that the disputed domain name was to be used in connection with those sites.
The Respondent provides a transcript between the Complainant and Respondent covering the Parties’ negotiations for the purchase of the disputed domain name dating from between July 31, 2021 to September 21, 2021. The dialog consists of a back-and-forth series of offers and counter offers for the disputed domain name in connection with which the Parties were unable to agree a price.
On August 1, 2021, the Respondent’s broker advised the Complainant that the Respondent owned a number of “fm” domain names, such as <100fm.com>, <playfm.com> and <rockfm.com>. On August 17, 2021, the Respondent’s broker advised the Complainant that the Respondent had indicated that it planned to develop the disputed domain name as it had with its other “fm” related domain names. On August 18, 2021, the Respondent itself replied to the Complainant stating that it planned to use the disputed domain name as “the hub of our cloud based radio services; and connecting all our other FM related websites to it.” On August 19, 2021, the Respondent gave further details of its plans to the Complainant, including the fact that it had developed a free streaming service in the cloud and mentioning one of its related domain names, <100fm.com> as a possible candidate for its proposed “hub”. On August 26, 2021, the Complainant noted “[…] We’re not in the radio industry and as such our valuation and the research we’ve done does differ from yours […]”. The Complainant responded along similar lines on September 21, 2021 after the Respondent’s broker had notified the Respondent that it would ask the Complainant to stop sending further offers for the disputed domain name.
5. Parties’ Contentions
The Complainant contends as follows:
Identical or confusingly similar
The Complainant has prior rights in the CLOUDFM mark by way of registered and unregistered rights. The disputed domain name is <cloudfm.com> and the Complainant’s trademarks consist of or predominantly comprise the word CLOUDFM. Even in the logo trademarks, the word CLOUDFM is the dominant element. The “.com” component in the disputed domain name is a generic Top-Level Domain identifier and may be ignored when making a comparison. The disputed domain name is therefore identical to, or at the very least confusingly similar to, the prior rights of the Complainant.
Rights or legitimate interests
The disputed domain name is not being used in connection with a bona fide offering of goods or services. The Respondent is offering to sell the disputed domain name at an inflated price. The Complainant has made a reasonable offer to purchase the disputed domain name for USD 10,000 but has been informed that the lowest price which would be acceptable is USD 75,000. This is unreasonably high for such a specific domain name.
Investigations have failed to find evidence that the Respondent has been commonly known by the name “Cloudfm”. On the contrary, the Respondent trades under the name “MyMailer” and offers a number of email marketing services through the domain name <mymailer.com>. None of those services is provided under the name “Cloudfm”. Investigations have also failed to locate any trademark registrations for CLOUDFM in the name of the Respondent. The Respondent also is not licensed to use the Complainant’s trademarks, nor is the Respondent in any way associated with the Complainant.
The use of the disputed domain name is not a legitimate noncommercial or fair use. Cybersquatting and attempting to sell the disputed domain name at an inflated price is unfair and commercial in nature.
Registered and used in bad faith
The disputed domain name was previously owned by a competitor of the Complainant which is engaged in the same field of facilities management (historic WhoIs records provided). Said competitor is based in the same county of the UK as the Complainant and both companies serve the same markets. The Respondent acquired the disputed domain name from said competitor on March 22, 2020, presumably in the knowledge of the Complainant’s trademarks and interest, and with the expectation of selling the disputed domain name to the Complainant or a competitor for an amount in excess of its out of pocket costs, as supported by the Respondent’s refusal to entertain the Complainant’s reasonable offers therefor.
The director of the Respondent may be linked to another company named Garner Media Limited. Said company has been the respondent in a number of domain name disputes which resulted in the transfer of the domain names in question, and which indicate a pattern of bad faith actions on the part of said director.
The Respondent has no legitimate interest in the disputed domain name that would indicate good faith actions. The word “cloudfm” does not have any standard definition or generally recognized meaning in any language. There was no reason for the Respondent to acquire the disputed domain name except for the bad faith reason of cybersquatting and/or attempting to sell the disputed domain name to the Complainant, or to another competitor of the Complainant so as to disrupt the Complainant’s business, at an inflated price.
In its Response, the Respondent contends as follows:
False allegations have been made by the Complainant surrounding the acquisition of the disputed domain name. The disputed domain name was not purchased from the Complainant’s alleged competitor and the Respondent has no knowledge of this entity or its relationship to the Complainant. The disputed domain name was acquired via the Registrar’s aftermarket auction, in which the Respondent was the winning bidder (partially redacted evidence provided).
The disputed domain name was not registered in bad faith. The Respondent owns a number of domain names containing the letters “fm”, and has been running developed websites at “www.playfm.com” and “www.rockfm.com” (links to historic online data provided). The Respondent also owns <100fm.com> which is parked for future development on the same aftermarket site as the disputed domain name. The Complainant made the initial contact with the Respondent on July 31, 2021 in order to enter into negotiations to acquire the disputed domain name. The Complainant was made aware from August 13, 2021 that the Respondent owned unspecified related “fm” domain names and planned to develop these. The Complainant acknowledged the Respondent’s planned use for the disputed domain name during these negotiations.
The Respondent is not infringing the Complainant’s trademarks and the Complainant stated in negotiations that the Complainant does not operate within the same industry sector as the Respondent’s websites, namely radio. The words “cloud” and “fm” are generic in nature, and various music websites use this term, such as, <soundcloud.com>, <cloudbounce.com>, <cloudstream.com>, <mixcloud.com>, <loopcloud.com> and the “Cloudbeats” music player. The disputed domain name did not display any advertising or promotional material which could be deemed as passing off or misleading to visitors.
The Complainant is engaging in Reverse Domain Name Hijacking and has gone to great lengths to make up a story as to how the Respondent acquired the disputed domain name from the Complainant’s competitor. This is deceitful, as is the fact that the Complainant did not mention the Respondent’s other “fm” domain names in the Complaint.
C. Complainant’s reply to Procedural Order
In summary, the Complainant contends as follows:
Identical or confusingly similar
The Respondent has not disputed the fact that the disputed domain name is identical or confusingly similar to the Complainant’s trademarks. The alleged difference in industry sector or the question of trademark infringement are not relevant to the analysis.
Rights or legitimate interests
The Respondent has failed to provide evidence relevant to paragraph 4(c) of the Policy. The Respondent’s websites at “www.playfm.com” and “www.rockfm.com” are not developed and present a false front. They do not constitute a bona fide offering of goods or services. Links for various policies do not work or are missing. No consent is sought for cookie usage and no contact details are provided for the Complainant, contrary to UK company law. Said websites do not generate any revenue as they use embedded content via an API in respect of which users cannot be charged. Both of the related domain names and the Respondent’s other “fm” domain name are being offered for sale and the Respondent’s failure to mention this indicates bad faith. The lack of development and offer for sale is not consistent with the Respondent’s asserted desire to use these in connection with a bona fide radio service.
The Respondent explained its alleged intent with reference to using the disputed domain name “at some point” for “cloud based radio services”. This is contrived, given that cloud computing and radio services are different things and would not usually be combined. The specific combination “cloud” and “fm” is unusual and not generic. The expression “at some point” does not meet the high bar of “demonstrable preparations” to use the disputed domain name. The comment is inconsistent with parking the disputed domain name for sale. When parking a domain name for development, a holding page is typically used.
The Respondent or its company is a domain name investor, as is demonstrated by its website, on which there is a list of domain names for sale. This is where the Respondent’s true interests lie. The Respondent’s failure to mention this is also indicative of bad faith, and the mention of radio services in the Parties’ negotiations seems to have been made artificially to inflate the price of the disputed domain name or to foreshadow a potential domain name complaint.
Registered and used in bad faith
The Complainant does not dispute the assertion that the disputed domain name was acquired via an aftermarket auction but believes that the Respondent could and should have been aware of the previous owner of the disputed domain name. The Complainant held this genuine belief because the disputed domain name was acquired directly from the ownership of the Complainant’s competitor. The Respondent could have determined such ownership easily along with the existence of the Complainant’s trademark. This, and the Respondent’s history of past bad faith in domain name dealing still supports the Complainant’s said belief.
The Respondent is willing to acquire domain names in which trademark rights exist with the primary purpose of selling those domain name registrations for valuable consideration in excess of documented out-of-pocket costs. Failure to perform a trademark search before acquiring a domain name can be an indicator of bad faith and the obligation to perform such search would be greater on the Respondent, which is a serial domain name investor. Had the Respondent performed such a search, it would have discovered the Complainant’s rights and this, and likewise any failure to conduct a search, would both be indicators of bad faith.
Bad faith is also indicated by the fact that the Respondent is not in the radio business and its comments otherwise are disingenuous.
Reverse Domain Name Hijacking
The Respondent’s accusation is denied. The Complaint has been brought in good faith. The Complainant has highly relevant trademark rights that pre-date the acquisition of the disputed domain name, the Complaint is properly supported by evidence regarding paragraph 4(a)(i) and 4(a)(ii) of the Policy, the Respondent initiated the offer for sale by parking the disputed domain name with a broker, at no point has the Complainant accepted the Respondent’s assertions of legitimate use or plans to use the disputed domain name, and the Complainant has at no point knowingly made any misrepresentations or sought to harass the Respondent.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(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.
A. Preliminary Matter – Late Response
As noted above, the due date for Response was November 1, 2021. The Respondent did not submit any formal response ahead of the deadline and the Center notified the Respondent’s default on November 4, 2021. According to the late Response, at some point during the week of November 1 to November 7, 2021, the Respondent telephoned the Center to explain that it had only just discovered the Complaint as the email to which it was attached had been directed to another folder on the Respondent’s computer due to the number of attachments contained within the email body. Following said telephone call, the Respondent submitted a late Response on November 12, 2021.
Paragraph 14(a) of the Rules provides that in the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint. The Panel may therefore consider the Respondent’s late Response in its discretion if it finds that exceptional circumstances are present. Furthermore, paragraph 10(b) of the Rules provides that in all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case. Paragraph 10(c) of the Rules notes that the Panel shall ensure that the administrative proceeding takes place with due expedition, although it may, at the request of a Party or on its own motion, extend, in exceptional cases, a period of time fixed by the Rules or by the Panel.
There is evidence before the Panel that the Center notified the Complaint by email to the Respondent’s email address and by courier. The evidence also indicates that the written notification issued by courier did not reach the Respondent. The Panel must decide if the Respondent’s explanation for its delay of 12 days in filing the Response constitutes “exceptional circumstances” as provided in paragraph 14(a) of the Rules. Many panels have disregarded late-filed responses making clear that it is important to apply the Rules as written, absent a good reason, otherwise parties will feel free to disregard deadlines and respondents will regularly submit late responses (see Museum of Science v. Jason Dare, WIPO Case No. D2004-0614). In the present case, however, the Panel is satisfied that there are exceptional circumstances arising from the configuration of the Respondent’s email systems and that the Respondent took prompt action as soon as it discovered the email containing the Complaint. Furthermore, the Respondent acted promptly by calling the Center as soon as it discovered said email.
The Panel therefore allows the Response to be received, although late, and will consider this in its deliberations. However, mindful of the requirements of paragraph 10(b) of the Rules, the Panel considered that in order to treat the Parties with equality, the Complainant should be informed of the Panel’s decision to allow the late Response and the Complainant should also be invited to comment upon this if it wished to do so. The Panel accordingly issued Procedural Order No. 1 to that effect on November 30, 2021. The deadline for the Complainant to submit comments was December 7, 2021. The due date for the Decision was extended to December 14, 2021. The Complainant submitted its comments on December 7, 2021, which are summarized in the Parties’ contentions section above.
B. Identical or Confusingly Similar
The first element inquiry under the Policy has two strands. First, the Panel considers whether the Complainant has demonstrated that it has UDRP-relevant rights in a trademark. Secondly, the trademark concerned is compared to the disputed domain name, typically in a straightforward side-by-side comparison in order to determine whether the former is recognizable in the latter. During the comparison process, the generic Top-Level Domain (in this case, “.com”) is usually disregarded as being required for technical purposes only.
In the present case, the Panel is satisfied that the Complainant has UDRP-relevant rights in its CLOUDFM registered trademark. The details of several relevant registered trademarks, including a word mark for this term, are noted in the factual background section above. Comparing such word mark to the Second-Level of the disputed domain name, the Panel finds this to be alphanumerically identical. The Complainant’s mark is therefore clearly recognizable in the disputed domain name. There is no particular opposition from the Respondent to the Complainant’s contentions on this topic.
In all of these circumstances, the Panel finds that the disputed domain name is identical to the Complainant’s mark and therefore that the Complainant has carried its burden in terms of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The requirements of paragraph 4(a) of the Policy are conjunctive. A consequence of this is that failure on the part of a complainant to demonstrate one element of the Policy will result in failure of the complaint in its entirety. Accordingly, in light of the Panel’s finding in connection with registration and use in bad faith, discussed below, it is unnecessary for the Panel to address the issue of the Respondent’s rights or legitimate interests in the disputed domain name.
D. Registered and Used in Bad Faith
In terms of the third element inquiry under the Policy, the Complainant must prove, on the balance of probabilities, (i) that the disputed domain name has been registered in bad faith and (ii) that the disputed domain name is being used in bad faith. These two elements are conjunctive and must both be proved for the Complainant to carry its burden in terms of paragraph 4(a)(iii) of the Policy. If the Panel decides that only one, or neither, of these components are proved, the Complaint will fail.
This is a case of acquisition of a domain name subsequent to its original registration date. Accordingly, the question of registration in bad faith falls to be determined at the date of acquisition of the disputed domain name by the Respondent, namely March 14, 2020.
The essence of the Complainant’s case is that the Respondent acquired the disputed domain name with knowledge of the Complainant and its rights, and with intent to target these by selling the disputed domain name to the Complainant for valuable consideration in excess of its documented out-of-pocket costs. In support of this contention, the Complainant points out that (i) a company controlled by or under common control with the Respondent has a number of findings of registration and use in bad faith against it in previous cases under the Policy, indicating that the Respondent is a serial cybersquatter; (ii) the Respondent acquired the disputed domain name at auction but should have investigated the identity of the previous registrant, allegedly a competitor of the Complainant; (iii) the Respondent is a domain name investor and should thereby be expected to have searched for the existence of the Complainant’s trademark before acquiring the disputed domain name; and (iv) the Respondent’s claim to have registered other similar “fm” domain names for purposes connected with radio streaming is either irrelevant or pretextual, and is designed to obscure its cybersquatting activity. The essence of the Respondent’s case is that it acquired the disputed domain name without knowledge of the Complainant or its rights in order to augment its family of “fm” domain names. The Respondent adds that the disputed domain name was potentially in line for development into the hub for the Respondent’s existing developed websites, “www.playfm.com” and “www.rockfm.com”.
With regard to the previous findings of bad faith against a different company of which the Respondent’s director is also a director, the Panel does not consider these as necessarily leading to a finding of registration and use in bad faith in the present case. Each case under the Policy must be taken on its own merits. In any event, the Complainant has not pointed out any notable features of the present case, being common to the previous cases which it cites, that would be evidence of any particular pattern of cybersquatting activities incorporating the disputed domain name. For example, no indication has been put forward that the other “fm” domain names registered by the Respondent correspond to third party trademarks, well-known or otherwise.
The Panel accepts the Complainant’s contention that the Respondent could potentially have investigated the past use of the disputed domain name and/or the identity of its previous registrant. However, the Panel asks itself why the Respondent would have had any particular reason to do so. Even if the Respondent had discovered the identity of the previous registrant, the Panel asks itself why the Respondent should then be expected to have conducted further research in order to connect this entity to the Complainant, allegedly one of the previous registrant’s competitors. It is entirely feasible, from the Panel’s perspective, that the Respondent may only have known that the disputed domain name had expired in the hands of its original registrant and was now being auctioned by the Registrar. There is no suggestion arising from the facts and circumstances of this case that the Respondent ought to have been on notice of the Complainant’s identity or of its trademark rights at the point when it acquired the disputed domain name. Thereafter, the Respondent notably did not approach the Complainant to initiate any discussions regarding the disputed domain name. The Respondent merely listed the disputed domain name for general sale, as it appears to do with its other domain names. It did not place any content or advertising on the associated website keyed to the Complainant’s line of business. It was the Complainant which approached the Respondent, or its broker, to enter into purchase negotiations.
Turning to the Respondent’s case, the Respondent says that the letters “fm” in the disputed domain name denoted radio to it at the point of acquisition, and not facilities management in general, or the Complainant’s trademark in particular. This carries some weight with the Panel, which (in isolation) would have seen the disputed domain name in much the same light. As far as the Panel is aware from its own knowledge, the letters “fm” are much more commonly associated by the general public with radio stations, streaming over the Internet or otherwise, than they are with facilities management, which is the Complainant’s line of business. There is nothing contained in the Complaint or the Complainant’s reply to the Procedural Order which alters the impression which the Panel has formed of the disputed domain name.
There is some evidence that the Respondent registered the disputed domain name to augment an existing portfolio of “fm” domain names. Much of this is factual and relatively straightforward. Checking the registration dates of the domain names concerned,1 the Panel notes that <100fm.com> was registered on December 31, 1999, <playfm.com> was registered on July 4, 2003, and <rockfm.com> was registered on September 13, 1998. Of course, the Respondent might have acquired those domain names more recently by way of a similar auction whereby the domain names have retained their original registration dates. Further information on the background of two of these domain names is available to the Panel, as the Respondent has placed the website history of “www.playfm.com” and “www.rockfm.com” into evidence by way of offering links to the Internet Archive “Wayback” Machine.
The history of “www.playfm.com” does not suggest that the Respondent registered the disputed domain name on its original registration date. However, there is a “website coming soon” page displayed as at May 30, 2018, which is followed by an entry showing the Respondent’s website in a similar appearance to the present dated November 22, 2018, suggesting to the Panel that the Respondent acquired the domain name concerned no later than the latter date. The history of “www.rockfm.com” is somewhat clearer in that there is a footer on the corresponding archived website dating from January 11, 2010 stating that the site is “part of [the Respondent-controlled company]”. From February 25, 2011, said site states that a new site would be going live in early 2011 and adds that due to other projects, the domain name concerned may also be available for purchase.
The dates upon which it can be identified that the Respondent was already controlling two of its “fm” websites are well before the date of the Respondent’s acquisition of the disputed domain name, in one case preceding this by over a decade. Any suggestion that the Respondent acquired these domain names on the dates concerned as part of a plan to provide a smokescreen for a domain name expiring on a later date, which it acquired at auction on March 14, 2020, could not be supported on the present record.
The Parties’ submissions in this case have been complicated by the Respondent’s alleged “developed” websites and the Complainant’s assertion that these are merely pretextual due to the fact that they are somewhat incomplete and may not comply with local law. The Panel considers that the incomplete nature of the websites concerned does not further the Complainant’s case. It may suggest that the Respondent has not been entirely serious about developing the websites itself, or possibly that the right opportunity to do so did not come the Respondent’s way, but this would not on its own make the Respondent a cybersquatter in the circumstances of the present case. If the Respondent had acquired the disputed domain name simply as an “fm” domain (in the radio sense) which it thought was likely to have value on the secondary market and which it reasonably believed was targeting no-one in particular, this could not be considered to be a registration made in bad faith whether or not the Respondent had or had not taken any steps to develop this or any other domain name. In any event, the record supports the notion that the Respondent invests in “dictionary word plus “fm”” domain names and has done so for at least a decade.
Turning to the nature of the disputed domain name itself, the Complainant seeks to counter the Respondent’s general proposition that this was intended to augment its existing portfolio of “fm” domain names by submitting that it does not fit the pattern of a radio-focused domain. The Complainant asserts that the term “cloud” would be an unusual partner for “fm” in a radio sense, due to the fact that cloud-based computing has nothing to do with radio. The Panel does not accept that assertion. It is a matter of general knowledge that the initials “fm” (standing for the radio broadcasting method named frequency modulation) are commonly placed with numerous different dictionary words for use in a radio sense, both in connection with broadcast and Internet radio. The Respondent would be entitled to invest in a domain name of this type provided there is no reason on the facts of the case to believe that, in doing so, it was engaging in trademark-abusive activity. The Panel notes, in passing, that the examples supplied by the Respondent of the use of the word “cloud” in connection with online streaming services and apps are broadly supportive of the Respondent’s position on this topic.
Despite the indications in the Respondent’s favor, however, this case does represent a close call in the sense that the Respondent did not mention that it was a domain name investor and had offered all of its “fm” related domain names for sale via the website of the other company which it controls, something which could not be said to be wholly consistent with its submission that it has plans to develop them. This is somewhat of concern to the Panel, as it raises the possibility that the Respondent is being less than candid in its submissions. That said, the Panel does not believe that this omission necessarily means that the Respondent registered the disputed domain name in bad faith. It does not lead to a reasonable inference that the Respondent knew or should have known of the Complainant’s rights in the mark CLOUDFM or that it registered the disputed domain name with intent to sell it to the Complainant in particular. It seems more probable to the Panel that the Respondent was intent upon offering the disputed domain name for general sale in respect of its value as a radio-focused domain name comprised of a dictionary word and an acronym widely understood to denote radio. In other words, whether the Respondent is genuinely serious about developing this and its other domain names is not conclusive of the position on bad faith as regards the disputed domain name.
The fact that the Respondent is a domain name investor could in some limited circumstances impose a duty on it to make trademark searches before registering a domain name. For example, should the Respondent engage in bulk purchases or automated registrations of domain names, it could not allow itself to be willfully blind to the trademark value of those domain names.2 Nevertheless, that is not the situation in the present case and the Panel does not find that the Respondent was under any duty to research the history of the disputed domain name, nor, in the circumstances of the present case, that the Respondent had, or ought to have had, any awareness of the Complainant or its rights which might render its registration of the disputed domain name a registration in bad faith. The Panel notes in particular that while the Complainant asserts that it has unregistered trademark rights in CLOUDFM it offers neither submissions nor evidence3 demonstrating these and showing their extent or reach, such that they might reasonably have come to the Respondent’s notice.
In these circumstances, the Panel finds that the Complainant has not carried its burden in connection with paragraph 4(a)(iii) of the Policy and the Complaint fails.
E. Reverse Domain Name Hijacking
Essentially, a declaration of Reverse Domain Name Hijacking constitutes a sanction that a panel may impose upon a complainant which has been found to have brought a complaint under the Policy in bad faith.4 The Respondent requests such a finding here, due to the fact that the Complainant suggested that the Respondent had acquired the disputed domain name from one of the Complainant’s competitors in order to sell it to the Complainant and that the Complainant concealed the fact that it was aware of the Respondent’s other “fm” related domain names. The Complainant answers this challenge by pointing out that the Respondent’s director has been found to be in bad faith in previous cases under the Policy and that it was reasonable for the Complainant to infer that the Respondent had researched the previous history of the disputed domain name and had acquired it to target the Complainant and its rights, regardless of its other “fm” domain names, while the development of the “fm” websites was incomplete and was potentially pretextual.
The Panel finds that both of the Parties in this particular case have not been entirely candid with the Panel in certain specific respects. The Complainant did not address the topic of the Respondent’s other “fm” domain names in the original Complaint despite knowing of these from the Parties’ negotiations. In the event that no Response had been filed, or that the Panel had not considered the late Response, the Panel may have been misled by that omission. The Respondent has also been selective in what it placed before the Panel. It was at pains to suggest that it was developing a family of “fm” domain names for the purposes of a streaming/radio service when that was, at best, only part of the story. The Respondent has only partially developed two of its “fm” domain names into websites but has made them all available for general sale on the website at “www.garnermedia.com”. As far as the Panel can see, it has done this not because it is, or necessarily plans to be, in the radio business as such but because it is a domain name investor first and foremost. While, as noted above, this does not necessarily mean that the Respondent was engaging in cybersquatting in the circumstances of this particular case, it is easy to understand why the Complainant may have considered that it was being targeted by the Respondent’s acquisition of the disputed domain name.
In light of the Parties’ conduct as outlined above, the Panel considers that the appropriate course here is to leave the Parties as it found them.5
In all of these circumstances, the Respondent’s request for a finding of Reverse Domain Name Hijacking is declined.
For the foregoing reasons, the Complaint is denied.
Andrew D. S. Lothian
Date: December 14, 2021
1 The Panel checked the registration dates of these domain names via the ICANN WhoIs lookup tool at “lookup.icann.org” by way of conducting limited factual research into matters of public record (on this topic, see section 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
4 See the definition of Reverse Domain Name Hijacking in paragraph 1 of the Rules, paragraph 15(e) of the Rules, and section 4.16 of the WIPO Overview 3.0 for further details on this topic. Note, in particular, that lack of success of a complaint is typically not sufficient on its own for a finding of this nature.