WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Matias Eduardo Araya Varela v. Jason Newby
Case No. D2021-4256
1. The Parties
The Complainant is Matias Eduardo Araya Varela, Chile, represented by Luis Armando Alvarez Urbina, Chile.
The Respondent is Jason Newby, Canada, represented by Law Office of Howard M. Neu, PA, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <reimex.com> is registered with GoDaddy Online Services Cayman Islands Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2021. On December 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 20, 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 sent an email communication to the Complainant on December 30, 2021 informing the Complainant of some deficiencies in the Complaint, and inviting the Complainant to submit an amendment to the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on December 30, 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 January 4, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 24, 2022. The Response was filed with the Center on January 13, 2022.
The Center appointed Reyes Campello Estebaranz, James W. Dabney, and Gerald M. Levine as panelists in this matter on February 11, 2022. 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.
On February 25, 2022, the Panel issued a Panel Order (“Panel Order No. 1”) requesting the Parties to provide additional information and evidence. The Complainant was requested to provide such documents as will show any connection between himself and any registrant or user of <reimex.com> prior to 2018; and the Respondent was requested to provide such documents as will show the results of his investigation, if any, of the first and third Google search results listed in Exhibit A to the response. The Parties were given a common deadline to provide their response to Panel Order No. 1, by March 1, 2022, and the Parties provided their respective responses within the indicated deadline.
On March 4, 2022, the Respondent sent an additional unsolicited supplemental communication to the Center, providing various observations regarding the Complainant’s response to Panel Order No. 1. On March 7, 2022, the Complainant sent an email communication to the Center indicating that the Respondent had not provided the information requested in Panel Order No. 1. On March 8, 2022, the Complainant sent an additional unsolicited communication to the Center responding to the Complainant’s additional allegations.
4. Factual Background
The Complainant is a Chilean individual operating a business that provides various services in the field of agricultural product import-export, including credit information services in the agricultural field. The Complainant’s business is conducted exclusively online, providing an under subscription online platform for agro-industry players, under the trademark REIMEX. The Complainant’s platform allows its users to network and share experiences in their respective businesses, including a worldwide directory of companies in the agro-industry sector, as well as commercial credit information and reliability report services regarding these companies. The Complainant’s platform aims to promote trade of agricultural products globally, helping its users in their decision-making process regarding exports and imports worldwide to reduce their commercial risk. The Panel under its general powers, articulated, inter alia, in paragraph 10 of the Rules, has consulted the Complainant’s website “www.reimex.cl”.
The Complainant owns trademark registrations for its REIMEX trademark, including Chilean Trademark Registration No. 1255780, REIMEX, figurative, registered on August 7, 2017, in Classes 35 and 36; and Chilean Trademark Registration No. 1350680, REIMEX, figurative, registered on July 29, 2021, in Classes 35 and 36, (collectively the “REIMEX mark”).
The Complainant further owns various domain names comprising its REIMEX mark, including <reimex.cl> (registered on October 24, 2003) and <reimexworld.com> (registered on May 3, 2021), which resolve to its corporate website, in the Spanish and English languages, where the REIMEX mark is featured and used.
The disputed domain name was initially registered on October 4, 2003, and, per the Response, it was acquired by the Respondent on November 2018. The disputed domain name resolves to a landing page, which indicates that it “may be for sale” including a contact form for more information.
Between October 17, 2021 and October 26, 2021, the Parties exchanged various email communications regarding the possible transfer of the disputed domain name.
5. Parties’ Contentions
A. Complainant
Key contentions of the Complaint may be summarized as follows:
The abusive registration of the disputed domain name obstructs the Complainant’s business and the use of its trademarks online.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not use the disputed domain name for commercial purposes. The Respondent’s only purpose is to sell the disputed domain name to a known prior user thereof.
The disputed domain name was registered and is being used in bad faith. The disputed domain name was registered or acquired mainly for the purpose of selling, renting or transferring its registration, to the Complainant (owner of the REIMEX mark) or to another prior user thereof, and it was offered for sale for the sum of USD 28,000, which exceeds its out-of-pocket registration costs, as corroborated by an exchange of emails between the Parties.
The Complainant request the transfer of the disputed domain name.
In response to Panel Order No. 1, the Complainant’s allegations may be summarized as follows:
The Complainant provides additional evidence regarding his ownership of the disputed domain name prior to 2018. This evidence includes an invoice for the renewal of the disputed domain name in 2012, various publications related to the launch of his platform under the disputed domain name in 2006, and evidence of his trademark registrations, including an additional recent registration for the REIMEX mark in China.
The Complainant further provides additional information and evidence in support of his allegations in connection to the bad faith registration and use of the disputed domain name. The Respondent’s usual practice is to acquire domain names not renewed by their respective owners, with the aim of selling them to the legitimate corresponding trademark owners, taking advantage of acquiring them due to their expiration dates and selling them at high costs. The Respondent acted with knowledge of the Complainant’s prior rights, in order to take advantage of its existing brand, which existed in the market at the time the Respondent acquired the disputed domain name, with the purpose of forcing the Complainant to purchase the disputed domain name. The Complainant provides an extract of a list of domain names owned by the Respondent (around 20,000), and a copy of a publication referring of the selling of another domain name to a third party by the Respondent that the Complainant considers a similar case.
The Complainant admits that he does not have any trademark registration in the United States or in Canada, but contends that his Chilean and Chinese trademark registrations should suffice under the Policy.
In various subsequent additional unsolicited communications, the Complainant alleges that the Respondent has not responded to the Panel Order No. 1. The Complainant has carried out business under the REIMEX mark with the disputed domain name. The Respondent acquired the disputed domain name with no intention to use it, but to sell it at a high price to the Complainant or another prior user thereof.
B. Respondent
Key contentions of the Response may be summarized as follows:
Selling domain names is the Respondent’s primary source of income. The Respondent acquired the disputed domain name in a “Snapnames auction in November, 2018”. The Respondent is a Canadian resident, so he searched the Canadian as well as the United States trademark databases for possible trademarks for the word “reimex”, finding none. The Respondent asserts that he was unaware of the Complainant’s trademarks when he acquired the disputed domain name; he “made a thorough search of Google to determine if there was a market for the name”; and he “found that a number of companies around the world were using the word ‘reimex’ for their corporate names or products” (six according to the annexed evidence of record). The Respondent included a “domain may be for sale” form in the disputed domain name, doing only “incoming sales”, but never contacted the Complainant.
Over 3 years after the acquisition of the disputed domain name, the Respondent received a request of purchase from the Complainant, and answered that its price was USD 28,000. There was some correspondence between the Parties, and the Complainant appeared to agree to purchase the disputed domain name. Though the Doctrine of Laches may or may not apply to this case, the fact that the Complainant did not bring the Complaint for more than 3 years is indicative that the Respondent did not act in bad faith.
The Complainant has failed to state a prima facie case that the Respondent has no legitimate interest in the disputed domain name and that the disputed domain name was registered and is being used in bad faith. There is no evidence that the Respondent registered the disputed domain name with intent to sell it to the Complainant specifically, disrupt his business specifically, to prevent him from registering his trademark or to confuse consumers. “Domain investing” is a legitimate business under the UDRP if the complainant's trademark is not targeted by any links in the parked domain name website, and “domain investors” can sell their domain names for whatever they believe the market will bear.
The Complaint has abused the UDRP Rules, being guilty of Reverse Domain Name Hijacking (“RDNH”). The Complainant, represented by counsel, knew or should have known that the Complaint would fail.
The Respondent has cited previous decisions under the Policy that it considers supportive of its position, and requests that the Complaint be dismissed, and the Complainant be found guilty of RDNH.
The Respondent’s response to Panel Order No. 1 may be summarized as follows:
Prior to bidding upon the disputed domain name at a Snapnames auction in November, 2018, the Respondent conducted a Canadian and United States trademark and Google searches for the word “reimex”. The Respondent is unable to reproduce the results of these searches of November 2018, and provided a Google search conducted on January 13, 2022, as Exhibit A to his Response, which results, as the Respondent recalls, “were nearly identical to the search results in November 2018, and the first 2 pages of Exhibit A reflect the results of that search”. There are no other documents that could be obtained that would show the results of the investigation of November 2018.
The Exhibit A of the Response reflects the use of the word “reimex” by various companies around the world, none of whom had registered the trademark “reimex” in the United States or Canada.
The purpose of these searches was to determine if there was a market for the word “reimex” as the Respondent is an investor of domain names, and he was able to determine that there were a number of industries and companies around the world that were using that word in their logos and corporate names.
In a subsequent additional unsolicited supplemental filing, the Respondent provides various observations to the Complainant’s response to Panel Order No. 1, which may be summarized as follows:
In response to Panel Order No. 1, the Complainant filed evidence that appear to be irrelevant to the Panel’s request, and makes false accusations of bad faith, uncalled for by the Panel and mostly repetitive of the Complaint.
The Complainant does not provide any explanation as to: (i) why he failed to renew the registration of the disputed domain name after 2012; (ii) why he did not bid on the disputed domain name at the Snapnames Auction in 2018 (where it was acquired by Respondent); (iii) why he waited three years to offer to purchase the disputed domain name from the Respondent; or (iv) why he thought that the price was too high for the disputed domain name and preferred to file the Complaint to attempt to acquire it.
6. Discussion and Findings
The Complainant has made the relevant assertions as required by the Policy and the dispute is properly within the scope of the Policy. The Panel has authority to decide the dispute examining the three elements in paragraph 4(a) of the Policy, taking into consideration all of the relevant evidence, annexed material and allegations, and performing some limited independent research under the general powers of the Panel (articulated, inter alia, in paragraph 10 of the Rules).
A. Unsolicited Supplemental Filings
Unsolicited supplemental filings are generally discouraged, unless specifically requested by the Panel. See section 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
However, taking into consideration the circumstances of the case, with the aim to ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case, the Panel, under its general powers, articulated, inter alia, in paragraph 10 of the Rules, admits the supplemental filings of the Parties.
B. Identical or Confusingly Similar
The Complainant indisputably has rights in the REIMEX mark as a result of his trademark registrations and his use of this mark on the market.
In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered identical or confusingly similar to that mark for purposes of the Policy. Furthermore, the applicable generic Top-Level-Domain (“gTLD”) in a domain name is considered a standard technical registration requirement and, as such, is generally disregarded under the first element confusing similarity test. See sections 1.7, and 1.11, WIPO Overview 3.0.
The disputed domain name incorporates the REIMEX mark in its entirety, and the gTLD “.com” is a technical requirement, generally disregarded for the purpose of the analysis of the confusing similarity. Accordingly, the Panel finds that the disputed domain name is identical to the Complainant’s trademark, and the first element of the Policy under paragraph 4(a)(i) has been satisfied.
C. Rights or Legitimate Interests
In general, the Policy shifts to the respondent the burden of production to come forward with relevant evidence of rights or legitimate interests in the disputed domain name, once the complainant has made a prima facie case that the respondent lacks rights or legitimate interests.
However, in this case, the Respondent has not only not provided any evidence of rights or legitimate interests in the disputed domain name, but also, he has alleged that, before deciding to put in an order to buy the disputed domain in November 2018, he conducted “a thorough search of Google to determine if there was a market for the name” and found “that a number of companies around the world were using the word ‘reimex’ for their corporate names or products”. As evidence of this “search”, the Respondent provided an extract of an undated search over the Internet for the term “reimex” (as Exhibit A to the Response).
The Panel, after noting that the Internet search provided by the Respondent (as Exhibit A to the Response), showed, as first result, a reference to the Complainant’s LinkedIn page, and, as third result, a reference to the Complainant’s website “www.reimex.cl”, gave the Respondent the opportunity to provide any explanation or evidence related to these circumstances in Panel Order No.1.
In reply to Panel Order No. 1, the Respondent indicated that he is unable to reproduce the results of the search conducted in November 2018. However, the results of the Google search (conducted on January 13, 2022) provided as Exhibit A to his Response “were nearly identical to the search results in November 2018, and the first 2 pages of Exhibit A reflect the results of that search”.
The majority of the Panel, under its general powers, has consulted the Internet web archive WayBackMachine regarding the Complainant’s website “www.reimex.cl”, to check whether this website was active in 2018 (at the time the Respondent has alleged conducting his investigation over the term “reimex”, before acquiring the disputed domain name).
In this respect, the majority of the Panel notes that the Complainant’s website “www.reimex.cl” appears to be continuously active since at least May 2004, in connection to the same business, offering services in the field of agricultural products import-export and credit information services in the agricultural field, featuring and using the REIMEX mark with various graphic representations over the years. Particularly, in 2018, the Internet web archive shows three captures of the Complainant’s website (“www.reimex.cl”), dated April 20, 2018, August 4, 2018, and December 24, 2018.
The majority of the Panel further notes that the term “reimex” is a coined term with no meaning in any language.
The majority of the Panel, under its general powers, has further conducted a search in the WIPO Global Brand Database for the term “reimex”, obtaining only four results of registered trademarks including this term, only one result of them consisting of the term “reimex” (with no other additional word elements), which is owned by the Complainant. Similarly, the majority of the Panel has conducted a search in the TMview Database for the term “reimex”, obtaining only six results of valid registered trademarks including this term, three of them owned by the Complainant, being two of the Complainant’s trademarks the only ones consisting of the term “reimex” alone (with no additional word elements).1
The majority of the Panel considers that the use of a domain name in connection with a bona fide business of trading in domain names may, in appropriate circumstances, confer rights or legitimate interests under the Policy. However, in this particular case, the Respondent has admitted knowing about the Complainant and his prior rights, and targeting the Complainant and his REIMEX mark, together with other third parties’ trademarks containing or consisting of the term “reimex”, when he acquired the disputed domain name. Furthermore, by his own self-admission, the Respondent’s sole interest in the disputed domain name was its potential value to pre-existing brand owners, because of the identity or similarity of the disputed domain name with existing trademarks or corporate names owned by various parties (one of them the Complainant).
In this respect, the Respondent has admitted conducting a search over the Internet prior to the acquisition of the disputed domain name, finding the existence of the Complainant’s prior rights (which appeared in first and third position of his search). After being given the opportunity to clarify these circumstances, the Respondent has corroborated that the provided search results were “nearly identical” to the search results of his prior investigation to the acquisition of the disputed domain name. The Respondent has further repeatedly indicated that the purpose of his searches “was to determine if there was a market for the word reimex”, taking the decision to acquire the disputed domain name because “there were a number of industries and companies around the world that were using that word in their logos and corporate names”.
The majority of the Panel therefore considers (as the Respondent has admitted), that the Respondent acquired the disputed domain name in sole consideration to the value that the disputed domain name would have to the Complainant and other third parties’ trademark owners, due to the identity or similarity of the disputed domain name with their respective brands. This conduct implies an attempt to take advantage of these existing brands and their respective owners, and the value that the disputed domain name would have for them due to its identity or similarity to their respective brands. The majority of the Panel considers that such conduct cannot be considered a bona fide business of trading in domain names, and cannot confer rights or legitimate interests under the Policy.
The majority of the Panel considers that it is further to be noted that a core factor in assessing potential fair use of the disputed domain name is that it does not falsely suggest affiliation with the Complainant’s trademark. See section 2.5.1, WIPO Overview 3.0. However, the disputed domain name incorporates the REIMEX mark in its entirety, being identical to this trademark, generating a risk of implied affiliation.
The Presiding Panelist considers further remarkable that the Respondent has not provided any evidence regarding his acquisition of the disputed domain name and/or his alleged activity as an investor in domain names (like information about number of domain names owned (although the Complainant says this is around 20,000 and the Respondent does not address or refute this), pattern followed for the selection of domain names, etc.).
All the above-mentioned circumstances lead the majority of the Panel to conclude that the Respondent has not rebutted the Complainant’s prima facie case. Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established.
D. Registered and Used in Bad Faith
The Policy, paragraph 4(a)(iii), requires that the Complainant establish that the disputed domain name has been registered and is being used in bad faith.
The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”, being the Panel prepared to draw certain inferences in light of the particular facts and circumstances of the case. See section 4.2, WIPO Overview 3.0.
The Complainant has alleged that the Respondent acquired and used the disputed domain name in bad faith, primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the Complainant or to another prior user thereof, for valuable consideration in excess of the documented out-of-pocket costs directly related to its acquisition. In this respect, the Complainant provides various emails that the Parties exchanged (between October 17, 2021 and October 26, 2021), regarding the potential transfer of the disputed domain name, in which the Respondent requested the sum of USD 28,000.
The Respondent has admitted that he acquired the disputed domain name knowing “there were a number of industries and companies around the world that were using that word in their logos and corporate names”. One of these companies and trademarks were the Complainant and his REIMEX mark, that appeared in the first and third position of the Internet search results provided by the Respondent (as Exhibit A of the Response).
These Google search results, submitted by the Respondent himself, and the active presence of the Complainant’s website (“www.reimex.cl”) over the Internet at the time the disputed domain name was acquired by the Respondent,2 indicate to the majority of the Panel that that the Respondent acted in bad faith when he acquired the disputed domain name.
The Respondent acquired the disputed domain name knowing about the existence of the Complainant’s trademark, acquiring the disputed domain name in consideration to the disputed domain name identity to the Complainant’s REIMEX mark, as well as its identity or similarity to other brands owned by third parties including or consisting of the term “reimex”. The Respondent acquired the disputed domain name due to the value that he knew it would have for the Complainant and other third parties, due to the fact that the disputed domain name is identical to the Complainant’s trademark and identical or similar to other existing trademarks.
The majority of the Panel considers that the fact that the Respondent targeted the Complainant’s trademark in bad faith cannot be cured by the allegation that this target was not alone or exclusively to the Complainant and his trademark, but included as well other third parties’ brands. In this respect, the majority of the Panel finds that the fact that the Respondent targeted more than one trademark does not cure or dilute his existing bad faith in relation to each of the targeted brands. In other words, the Respondent has admitted he had specifically in mind the Complainant and his REIMEX mark when he acquired the disputed domain name; and this fact cannot be cured by the Respondent’s allegation that he had also in mind other potential interested parties in the disputed domain name.
Furthermore, the circumstances of this case and the evidence provided by the Complainant, lead the majority of the Panel to consider that the disputed domain name was owned and used by the Complainant or by his business, in connection to the Complainant’s platform, for approximately 12 years prior to its acquisition by the Respondent. The majority of the Panel considers that this circumstance increases and aggravates the likelihood of confusion of the disputed domain name with respect to the Complainant and his trademark, disrupting the Complainant’s business, and placing the Complainant as the main target of the Respondent, as the Complainant would be the main interested party in recovering the disputed domain name.
In this respect, the majority of the Panel, noting that the disputed domain name was registered on October 4, 2003, and the Respondent acquired it on November 2018, conducted a search over the Internet web archive WayBackMachine in relation to the disputed domain name. This Internet web archive revels that since, at least, March 26, 2004, until, at least March 8, 2016, the disputed domain name resolved to the Complainant’s platform or was redirected to the Complainant’s website “www.reimex.cl”. This evidence leads the majority of the Panel to consider that the disputed domain name was owned by the Complainant and/or was linked to his business at least since March 26, 2004 (and probably since its initial registration one year before, on October 4, 2003), and, until, at least March 8, 2016.
Additionally, in reply to Panel Order No. 1, the Complainant has provided various evidence that lead the majority of the Panel to conclude that the disputed domain name was owned and used by the Complainant or his business, prior to its acquisition by the Respondent in 2018.3
The Complainant has further alleged that the Respondent acquired the disputed domain name, after the Complainant’s registration for it expired; indicating that the Respondent’s way to proceed consists precisely in acquiring expired domain names to sell them for a high sum to the respective legitimate trademark owners. In this respect, the majority of the Panel notes that the platform where the Respondent alleged he acquired the disputed domain name, provides services for the acquisition of expired domain names, allowing its users to place notices to be informed about the expiration of a certain domain name. The majority of the Panel further notes that the Respondent has reiterated that he acquired the disputed domain name “at a Snapnames auction in November, 2018”, not providing, however, any evidence regarding this acquisition, when it would have been easy for him to provide any evidence related to it.
In these circumstances, the majority of the Panel considers that the Respondent’s offer for sale of the disputed domain name for USD 28,000, constitutes bad faith use of the disputed domain name.
All the circumstances of the case, lead the majority of the Panel to conclude that, in a balance of probabilities, the Respondent acquired the disputed domain name, as he has admitted, primarily for the purpose of selling or transferring it to the Complainant (owner of an identical trademark, prior owner and user of the disputed domain name), or to any third party owning any other similar or identical trademark, for valuable consideration in excess of its out-of-pocket acquisition costs.
In light of the above, taking into consideration all cumulative circumstances of this case, on the balance of probabilities, the Panel concludes that the Complainant has met its burden of establishing that the disputed domain name has been registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy.
E. Reverse Domain Name Hijacking (“RDNH”)
The Respondent alleges that the Complaint was filed in bad faith, indicating that the Complainant thought that the price for the disputed domain name was too high, and preferred to file the Complaint to attempt to acquire it. On the contrary, the Complainant indicates that he contacted the Respondent requesting the transfer of the disputed domain name, only in an effort to find out its price, obtain information and evidence for the Complaint.
The majority of the Panel considers that the Complainant’s conduct is not uncommon. The Complainant evidently and understandably wanted to recover the disputed domain name (which appears to have been owned by the Complainant and used in connection to his business prior to its acquisition by the Respondent for more than 12 years). It is not uncommon, to contact the owner of a domain name before filing a Complaint under the UDRP, in order to find information for the preparation of the Complaint.
In a balance of probabilities, taking into consideration all circumstances of the case, the majority of the Panel considers that the Complainant contacted the Respondent to get information about its price, and obtain evidence for the Complaint. In this respect, the majority of the Panel notes that the exchange of emails between the Parties regarding the potential transfer of the disputed domain name lasted only a few days (between October 17, 2021 and October 26, 2021). In these emails, the Complainant requested information about price and possible methods of payment, but did not tried to reduce or negotiate the price, and never agreed to the purchase, indicating that he was “going to evaluate the fee and get back to” the Respondent, which he never did.
The facts that the Complainant’s registrations for the mark REIMEX are recent (2017 and 2021), although the REIMEX mark appears to have been used by the Complainant or his business since at least 2006, or that the Complainant did not claim the disputed domain name during the period between 2018 and 2021, do not imply bad faith. Furthermore, trademark owners cannot reasonably be expected to permanently monitor for every instance of potential trademark abuse, nor to instantaneously enforce each such instance they may become aware of.
Therefore, the majority of the Panel finds that the Complaint was not brought abusively.
7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the majority of the Panel orders that the disputed domain name, <reimex.com> be transferred to the Complainant.
Reyes Campello Estebaranz
Presiding Panelist
James W. Dabney
Panelist
Gerald M. Levine
Panelist (Dissenting)
Date: March 21, 2022
DISSENTING OPINION
Panelist Gerald M. Levine disagrees with the decision of the majority of the Panel and submits the following Dissenting Opinion under paragraph 15 of the Rules.
The Panel majority has delivered an opinion forfeiting <reimex.com> to Complainant on a theory of liability that is inconsistent with UDRP jurisprudence. It is based on a subjective conclusion that in registering an expired domain name corresponding to a mark that is multiply used by other parties to market their goods or services Respondent acted in bad faith. The majority’s theory is that “the disputed domain name was registered or acquired mainly for the purpose of selling, renting or transferring its registration, to the Complainant (owner of the REIMEX mark) or to another prior user thereof” (my emphasis) and that “target[ing] more than one trademark does not cure or dilute [Respondent’s] existing bad faith in relation to each of the targeted brands” (my emphasis). In other words, even if Respondent did not specifically have Complainant in mind but another rights holder when it registered the dropped domain name, nevertheless the registration must have been in bad faith.
This view of the law is a departure from consensus. This is particularly so since there is no evidence that “Respondent’s only purpose [was] to sell the disputed domain name to [Complainant or] a known prior user thereof” (my emphasis). Respondent’s purpose as it alleges in the response is that it recognized an opportunity to add the expired domain name to its portfolio of domain names for possible future sale to any party who might find it attractive for their new brand.
It is not disputed that Complainant registered <reimex.com> in 2012 (a fact Complainant fails to mention in the complaint but proffered elliptically in its subsequent submission) and redirected it to Reimex’s Internet presence at <reimex.cl> which he registered in 2004. For reasons not explained by Complainant (for example that he inadvertently forgot to renew its registration) <reimex.com> lapsed and was offered for sale by one of the domain expiration services, Snapnames, and in a subsequent auction in November 2018 Respondent (a Canadian resident) was the high bidder.
Respondent is a professional domainer. The UDRP does not condemn the business practice of arbitraging domain names as the Panel majority would have it. Indeed, in the absence of proof that a respondent acquired a disputed domain name intentionally to target a specific complainant—that is, having a particular rights holder “in mind”—the consensus view is that the registration supports a Paragraph 4(c)(i) defense.
In setting forth its account of the facts, the Panel majority “notes that the term ‘reimex’ is a coined term with no meaning in any language”. This Panelist does not pretend to know that “Reimex” is coined or not. It only knows as a fact that the word is being used by many others than Complainant. That a word may not be found in a dictionary cannot be the end of the inquiry. In this case, there is proof positive that “Reimex” is part of the linguistic landscape. This is known because many others have adopted it as their market sign. If as the Panel majority conjectures “reimex” is coined it certainly was not Complainant’s coinage because if it were Complainant would surely have alleged it in its pleading and subsequent submissions. But let it be assumed that “Reimex” is a coinage, it must logically follow that coinages when used by multiple others can be diluted and any distinctiveness lost to genericide. The fact that “Reimex” is not a one-of-a-kind word associated with any one particular rights holder is precisely the reason why Respondent found it attractive.
To find a registrant of a dropped domain name liable for cybersquatting because a particular complainant comes forward three years later and claims it has a trademark for REIMEX and is being targeted defies the law. Where an apparently uncommon word is employed by many users to market their goods or services, it cannot be said that any one of them—or in the Panel majority’s words, “any third party owning any other similar or identical trademark”—is better positioned than any of the others to claim it is the targeted victim.
In its response to the complaint and in subsequent submissions, Respondent alleged that it performed due diligence by searching for “Reimex” on the Canadian and US trademark databases which showed no registrants alive or dead and made a Google search which informed it of the many other users of “Reimex”. Admittedly, this search included Complainant in the first and third positions. However, the Panel majority misstates the evidence of record when it states that “the Respondent has admitted knowing about the Complainant and his prior rights, and targeting the Complainant and his REIMEX mark, together with other third parties’ trademarks containing or consisting of the term ‘reimex’, when he acquired the disputed domain name”. There is no evidence of any “admission” in the record. First of all, “knowing about” is not the same as “actual knowledge of”.
While the Google search included Complainant, and to that extent it could be argued (as the Panel majority does) that he was aware of it, Respondent had no reason to know that Complainant in particular any more than the dozen other users of the term was the prior registrant of the domain name. The Panel majority presumes that those using the mark presently are the universe of probable users of the mark in the future whereas the market for attractive domain names is not limited to the parties presently captured by the Google search.
Objectively, all that bidders know or must be aware of is that another person held the registration immediately prior. It would not have known whether the prior registrant abandoned the domain name or it dropped through inadvertence. Thus, its denial of any actual knowledge of Complainant or his company, Reimex, is highly plausible in light of the others who find this “coinage” an attractive brand sign. There is no logical reason to believe that a company operating out of Santiago in a niche market would make any impression on a respondent residing in Canada. If Reimex is expanding its business to other continents, which appears to be the case since it registered a Chinese trademark in 2021 and registered REIMEX anew in Chile in 2020, it is still operating a niche business.
Reference to the EU TMView noted by the Panel majority supports the conclusion that Complainant is one of several Reimexes. This and the Google Search discussed above shows other persons around the world using “Reimex” to market their goods or services, not all of them rights holders. The other Reimexes which are no way related to Complainant operate in a variety of businesses including importation of goods, waste, chemicals, etc. and are located in Cyprus, Italy, Tunisia, the US (in Arizona, California, and Florida). These facts that “Reimex” is used by others around the world are a part of the record. This Panelist finds Respondent’s conclusion that “reimex” did not belong to anyone in particular equally plausible.
It is a foundational principle of the UDRP that a complainant has the burden of proving that it is the targeted rights holder. The essence of the Complaint is an allegation of bad faith, bad faith targeted at the Complainant. Asset Mktg. Sys., LLC v. Silver Lining, WIPO Case No. D2005-0560. There is a long history of decisions on this issue. There is no proof in the record of this case that supports targeting. Terana, S.A. v. RareNames, WebReg, WIPO Case No. D2007-0489 (Holding that “Unless the trademark owner or its mark are targeted by the domain name registrant, the offering for sale to the general public of a domain name and the generation of pay-per-click advertising revenue from a domain name do not constitute evidence of bad faith registration or use”); Tarmac Trading Limited v. Maureen Twist / Michael & Paul Wilson trading as Abbey Tarmac & Asphalt, WIPO Case No. D2021-3768 “It is an essential requirement of the third element of the Policy that both registration in bad faith and use in bad faith must be proved by the Complainant on the balance of probabilities. In respect of registration in bad faith, the Complainant must show that the Respondent had the Complainant’s rights in mind when it registered the disputed domain name and that it proceeded with bad faith intent to target such rights)”; Flexspace No 2 LLP v. Michael Angelo Justiniano, Flexspace AS, WIPO Case No. D2021-4135 (“[I]n essence a finding of bad faith requires that there is a degree of targeting of the Complainant or its mark, or at the very least that the Respondent must have had the Complainant or its trademark in mind when selecting the disputed domain name.”). See also Mountain Top (Denmark) ApS v. Contact Privacy Inc. Customer 0133416460 / Name Redacted, Mountaintop Idea Studio, WIPO Case No. D2020-1577 (WIPO September 1, 2020) (<mountaintop.com>) holding that “[t]o succeed in a complaint under the Policy, it is well established that under the third element of the Policy, a complainant must prove on the preponderance of the evidence is that the domain name in issue was registered in bad faith, i.e., was registered with the complainant and/or its trade mark in mind”.
The views reflected in these citations are reported in WIPO Jurisprudential Overview. Sec. 3.2.1 lists seven indicia of bad faith. The last two are particularly pertinent: “(vi) a clear absence of rights or legitimate interests coupled with no credible explanation for the respondent’s choice of the domain name (my emphasis), or (vii) (mistakenly indicated as ‘viii’) other indicia generally suggesting that the respondent had somehow targeted the complainant” (my emphasis). In (vi) as this Panelist has already noted, Respondent offers a credible explanation for its choice, namely there were a number of actors marketing their goods or services under the Reimex sign which meant that there was no particular association of the term to Complainant or any one of the others. Sec. 3.2.2 states that “where the Complainant’s mark is not inherently distinctive and […] is otherwise inherently attractive as a domain name . . . , if a respondent can credibly show that the complainant’s mark has a limited reputation and is not known or accessible in the respondent’s location, panels may be reluctant to infer that a respondent knew or should have known that its registration would be identical or confusingly similar to the complainant’s mark”.
As with the Panel majority this Panelist exercised a panelist’s right to perform limited factual research on the Internet (Overview, Sec 3.8). The disputed domain name resolves to a website announcing that “This domain name may be for sale”. The research showed that Respondent has a portfolio of over 35,000 domain names and the UDRP databases indicated that Respondent has never been charged with infringing any complainants’ marks; in fact, this case appears to be a solitary case alleging cybersquatting against him. Although not included in WIPO Overview, Sec. 3.2.1, but it well could be is the question of solicitation. A respondent’s solicitation of complainant would be an indicia of bad faith. Here, there is no allegation of solicitation, but there is proof that Complainant approached Respondent to purchase the domain name and in its disappointment with the price commenced this UDRP proceeding.
The cited cases and the WIPO Overview illustrate the consensus view of the law, namely, to have an actionable claim there must be targeting. The evidence in this record does not support such a claim for the reason that “Reimex” is not a sign associated alone with Complainant. The Panel majority emphasizes the length of time Complainant previously held <reimex.com> before Complainant allowed it to drop. While the Panel majority may find this a compelling and sympathetic fact, it cannot be the legal basis for reclaiming <reimex.com> in a UDRP proceeding. Had “Reimex” truly been a coined word solely associated with this Complainant this Panelist would have joined the majority. This Panelist dissents not because the word is not coined which at some point in the past it may have been but because the coinage has become common property as evidenced by the many who are using it to market their goods or services.
On the issue of reverse domain name hijacking, the record reflects that Complainant reached out to Respondent to purchase the domain name, and then finding that the price was unacceptable commenced this UDRP proceeding. This is generally regarded as a Plan B scheme that supports sanctioning complainant. In this case, Complainant most likely genuinely believed that because it was the prior registrant of the domain name which it lost by inadvertence in renewing it, it had the right to recover what it had lost. It was mistaken because, as the record reflects, “reimex” was not a one-of-a-kind word solely associated with this rights holder. Its attempt to recover <reimex.com> by approaching the Respondent is probably attributed to inexperience in dealing with domain name disputes under the UDRP. It was represented by professional counsel. For this reason, a reverse domain name hijacking sanction is the appropriate remedy.
Gerald M. Levine
Panelist (Dissenting)
Date: March 21, 2022
1 The search in the TMview Database lists as well one result related to an ended trademark registration (belonging to the Complainant), one result related to an expired trademark registration, and several other results related to trademark registrations that include or consists of terms different to the term “reimex”, like “acreimex” or “zepreimex”, which the majority of the Panel do not consider relevant.
2 Corroborated by various captures of the Complainant’s website “www.reimex.cl” archived in WayBackMachine, dated April 20, 2018, August 4, 2018, and December 24, 2018.
3 This evidence includes an invoice for the annual registration of the disputed domain name dated October 9, 2012, and various third parties’ publications dated in 2004, related to the launch of the Complainant’s business platform displayed in the disputed domain name since March 26, 2004, until, at least March 8, 2016.