WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Michael Jastremski v. Jaisen Mathai
Case No. DME2014-0006
1. The Parties
The Complainant is Michael Jastremski of Philadelphia, Pennsylvania, United States of America ("United States"), represented by Markery Law LLC, United States.
The Respondent is Jaisen Mathai of Sunnyvale, California, United States.
2. The Domain Name and Registrar
The disputed domain name <openphoto.me> (the "Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 18, 2014. On September 19, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. The same day, 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") as adopted by doMEn, d.o.o. ("doMEn"), the registry operator of the .me TLD on April 30, 2008, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") approved by doMEn on October 1, 2012, and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 30, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 20, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 21, 2014.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on October 24, 2014. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is an individual who resides in Philadelphia, Pennsylvania, United States. According to the Complaint, the Complainant has provided "peer-to-browser photosharing services that enables [sic] users to upload, view and download digital photos on its website "www.openphoto.net" and under its mark OPENPHOTO since 2002."
The Complainant registered the domain name <openphoto.net> in 2001 and states that he has used it continuously since January 2002 for his website (the "Complainant's website"), which displays photographs contributed by a variety of photographers and includes a photography blog. The Complaint claims 300,000 page views monthly. The Complainant's website describes his service as follows:
"The Open Photo Project is a photo sharing platform created in 1998 by Michael Jastremski. Contributors have offered their images free of charge under terms of Creative Commons licensing."
It is not clear from the Complaint or from the Complainant's website if and how the website generates revenues. However, the Panel notes that the Complainant's website displays third-party advertising links, which presumably produce some pay-per-click ("PPC") advertising revenues for the Complainant.
The Complainant holds United States Trademark Registration No. 4253868 (registered December 4, 2012) for OPENPHOTO as a standard character mark. The Complainant claims January 1, 2002 as the date of first use in commerce and asserts that the mark was protected under common law for years before it was registered.
The Domain Name was created on February 18, 2011 and is currently registered in the name of the Respondent, who appears to be an individual residing in Sunnyvale, California, United States. At the time of this Decision, the Domain Name redirects Internet users to a website at "www.trovebox.com" (the "Respondent's website").
The Respondent's website does not display a name corresponding to the Domain Name; rather, it displays the "Trovebox" name and logo. The Respondent's website offers a commercial photo sharing service:
"Trovebox is an online photo and video management service for businesses that is used by small businesses, non-profits and enterprises. We offer secure photo sharing, group photo collaboration features, multi-user accounts and whitelabeling."
Monthly subscriptions are priced according to the number of users, the size of data storage, and customer support options.
Screen shots attached to the Complaint show that the Respondent sought crowd funding on the Kickstarter website ("www.kickstarter.com") for an "OpenPhoto" photo sharing technology project starting in June 2011. At that time, as demonstrated by an archived screen shot attached to the Complaint, the Domain Name resolved to a website using the name "OpenPhoto" and describing a software-based service, apparently still under development, for managing and sharing access to photos and videos stored on the Amazon S3, Box.com, and Dropbox cloud services. The Kickstarter description of the "project" identified the Respondent as a former Yahoo! engineer who was developing the software with the assistance of several "volunteers", some of whom are named in subsequent Kickstarter entries about the project. A January 2014 update on the Kickstarter website indicated that this attempt to create a consumer offering "fell short" and that the Respondent was now offering "Trovebox for Businesses", which appears to refer to the service currently offered through the Respondent's website associated with the Domain Name.
In the course of 2012, several emails were exchanged between the Complainant and the Respondent, some of which are attached to the Complaint. The Complainant pointed out that he had operated an "openphoto" website for ten years and that the logo displayed on the Respondent's website at that time was similar to the Complainant's logo. In May 2012 the Respondent wrote, "It was never my intention to take credit from or misrepresent your work," offering to change the name of his project as well as his logo within three months. The Complainant sent an email in December 2012 noting that that this had not happened yet and stating that the Complainant would take action to "defend my brand". Eventually, this UDRP proceeding followed.
5. Parties' Contentions
The Complainant asserts that the Domain Name is identical to the Complainant's OPENPHOTO mark, which is now registered, and that the Respondent has no rights or legitimate interests in the Domain Name.
The Complainant argues "on information and belief" that the Respondent had prior knowledge of the Complainant's mark, unregistered but allegedly protected by common law, when the Domain Name was registered in 2011. The Complainant suggests that the Respondent selected the Domain Name in order to disrupt the Complainant's business and misdirect Internet users for commercial gain. In any event, the Complainant asserts, the Respondent has a "continuing duty" to ensure that the Domain Name is not used in a way that infringes another's rights, apparently contending that the Respondent acted in bad faith by using and refusing to transfer the Domain Name after being informed of the Complainant's trademark claims.
The Respondent did not reply to the Complaint.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, "A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
A. Identical or Confusingly Similar
The Complainant holds a United States trademark registration for OPENPHOTO. The Domain Name consists of the identical string of characters before the Top-Level Domain ("TLD") ".me".
In determining whether a domain name is identical or confusingly similar to a complainant's mark, WIPO panels have typically disregarded the generic TLD ("gTLD") or country code TLD ("ccTLD") in the URL address. This is appropriate in most cases involving popular and relatively unrestricted TLDs, such as ".com" or ".org", where it can be assumed that the TLD itself signifies little if anything to Internet users. That assumption may not always be valid where the TLD is highly specific or restrictive, signifying a country of origin, for example, or corporate sponsorship, or a particular interest group.
The Domain Name in this proceeding includes the ccTLD assigned to Montenegro, ".me", but this does not create a materially distinctive impression. The ".me" ccTLD is available to registrants located anywhere in the world and is marketed globally, especially in English-speaking countries where the string suggests the English pronoun "me" and can be added to a domain name string as a kind of "domain hack", creating an apparent phrase such as <about.me>, <contact.me>, and <insure.me>. (See the ".me" registry operator's website at "www.domain.me" and the Wikipedia article on ".me".) The effect is similar to beginning a domain name string with the word "my", simply suggesting personalization rather than a particular topic or sponsor. Thus, English-speaking Internet users would not likely assume that a domain name consisting of a trademark followed by the TLD ".me" had nothing to do with the trademark's owner outside Montenegro. Consequently, the Panel finds that the ".me" portion of the Domain Name does not materially affect the determination that the Domain Name is identical or confusingly similar to the Complainant's mark.
The Panel concludes that the first element of the Complaint has been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent's use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production to show rights or legitimate interests in the disputed domain name shifts to the respondent. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.
In this proceeding, the Complainant demonstrates that the material portion of the Domain Name is identical to the Complainant's mark and that the Respondent uses the Domain Name for a commercial photo sharing service. This is sufficient to make a prima facie case. The Respondent has not come forward with rebuttal evidence of rights or legitimate interests in the Domain Name, and such rights or legitimate interests are not self-evident on this record. The website currently associated with the Domain Name is clearly commercial, but it uses a different name, "Trovebox", and it is operated by a company with yet another name, Wide Angle Labs, Inc. The Respondent earlier used "OpenPhoto" as the name of his "project" described on the Kickstarter website and on an earlier version of the Respondent's website, but the available record does not demonstrate that the Respondent was known by that name, advertised a product with that name, or actually made sales under that name.
Hence, the Panel concludes that the second element of the Complaint has been established.
C. Registered and Used in Bad Faith
The Policy contains a non-exhaustive list of circumstances that "shall be evidence of the registration and use of a domain name in bad faith", including these ones on which the Complainant relies:
"(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
The Complainant argues "on information and belief" that the Respondent had prior knowledge of the Complainant's mark and so registered the Domain Name with the intent to disrupt and mislead. Assertions "on information and belief" are not helpful in the context of a UDRP proceeding. "Information and belief" is a formula that is common in "notice pleading" at the commencement of legal actions in the United States. It is designed only to put opposing parties on notice of the claims and defenses to be asserted and tested in the course of the proceeding. See, e.g., United States Federal Rules of Civil Procedure, Rules 7-10, and the Wikipedia article on "Pleading (United States)". American civil litigation typically continues with the discovery of documents and witnesses, depositions under oath with opportunities for cross-examination, motions decided by the judge or magistrate, and ultimately a settlement or trial. In this process, the parties and the judge or jury have the opportunity to test those assertions initially advanced "on information and belief" and can assess the credibility of the relevant documents, physical evidence, and witnesses.
UDRP dispute resolution is very different. It has a limited scope: to determine quickly, on the basis of submitted documentary evidence, whether a contested domain name should be retained, transferred, or cancelled. This is done without prejudice to any subsequent judicial proceedings that might more fully explore the relationships and intentions of the parties. In the UDRP proceeding, there is normally only a single pleading on each side, a complaint and a response, with strict time limits and page limits for each. There is normally no discovery procedure and no opportunity to present and examine witnesses in person. The complaint represents the only assured opportunity for the complainant to establish the three elements of its claim and meet its burden of persuasion on each. Thus, it is generally insufficient to make assertions "on information and belief" in a UDRP complaint. Instead, the complainant must cite the evidence submitted simultaneously to the UDRP panel and argue reasonable inferences therefrom. Only in exceptional cases will there be further opportunities to submit evidence or challenge the opposing party's evidence or arguments. See Rules, paragraphs 3, 12, 13, and 15.
On the record here, the evidence for the Respondent's prior knowledge of the Complainant's mark is inconclusive. The Respondent might well have found the Complainant's website, which concerned a different kind of photo-sharing service. However, the Complainant did not have a registered mark at the time the Respondent registered the Domain Name, and the mark simply combines two dictionary words that are relevant to both the Complainant's service and the Respondent's service. Archived screenshots of the Complainant's website do not show that the name or logo displayed on the Complainant's website were accompanied by a "TM" or "SM" symbol or language indicating that the Complainant claimed trademark rights. The Complaint does not include historical evidence of the level of sales, advertising, or publicity associated with the name. See WIPO Overview 2.0, paragraph 1.7. Thus, it is not established if and when the name became protectable as a common law mark before it was registered in December 2012. Moreover, the available evidence does not establish the probability that the Respondent was aware of the Complainant or its claimed mark when registering the Domain Name in early 2011.
It is certainly not evident on this record that the Respondent had any intention to "disrupt" the Complainant's business, and it is also not clear that the Respondent would have found reason to misdirect Internet users familiar with the Complainant's website. It appears that the Complainant's website is popular with professional and amateur photographers interested in displaying their works and making them publicly available on a royalty-free basis. The Respondent, on the other hand, seems first to have contemplated a service allowing consumers to manage their photos and videos stored in cloud services and then to have offered a service designed for companies and nonprofit organizations to share their photos and videos of events within a controlled group. It is conceivable that these services could compete in some instances, but the features and focus differ substantially. Thus, it is not self-evident that the Respondent would gain materially from targeting the Complainant's asserted common law mark. Further, the mark is comprised simply of two English words that are relevant to both services, so it is not particularly surprising that the Respondent would choose the same two words for his photo sharing project.
The Complainant argues that the graphic logo used by the Respondent on its website in 2011 is suspiciously similar to one used by the Complainant. Both display the words "openphoto" without an intervening space, with the words in grey and blue, next to a graphic that appears to be a camera lens in one case and a camera in the other. The Complainant's logo displays the name in lowercase letters, while the Respondent's capitalizes "Open" and "Photo". Although there is some similarity between the two logos, the Panel does not find this compelling evidence of an intent to mislead, largely for the reasons outlined above: it is not clear why the Respondent would consider it worthwhile to misdirect the Complainant's website visitors to a substantially different service, even assuming the Respondent was aware of the Complainant's website when the Respondent registered the Domain Name. On the available record, the Panel considers it more likely that the Respondent named his own photo sharing project with relevant dictionary words, rather than with an intention of capitalizing on another party's trademark.
The Complainant also asserts that in any case the Respondent has a "continuing duty" to ensure that the Domain Name is not used in a way that infringes another's rights, citing Octogen Pharmacal Company Inc. v. Domains by Proxy, Inc. v. Rich Sanders and Octogen e-Solutions, WIPO Case No. D2009-0786 ("Octogen"). The Complainant's theory seems to be this: the Respondent acted in bad faith by continuing to use the Domain Name to redirect visitors to the Respondent's photo sharing service after being informed of the Complainant's trademark rights, which became more substantial when the Complainant's trademark was finally registered in December 2012. Thus, according to the Complainant, the Respondent is guilty of "retroactive bad faith", even if it cannot be established that he initially registered the Domain Name in bad faith.
It does not appear that Octogen represents a consensus view of WIPO panels. See WIPO Overview 2.0, paragraph 3.1. The concept of "retroactive bad faith" rests uneasily with the Policy's requirement that a Complainant must establish that "the disputed domain name has been registered and is being used in bad faith." As the three-person panel concluded in Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011, "The consensus view since the Policy was implemented in 1999 has been that the conjunctive 'and' indicates that there must be bad faith both at the time of registration and subsequently." In this case, the evidence is not persuasive that the Respondent targeted the Complainant's unregistered mark at the time the Domain Name was registered, and the Panel accordingly declines to find bad faith at the time of registration.
The Panel concludes that the third element of the Complaint fails on the available record.
For the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Date: November 10, 2014