WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Clearly Agile, Inc. v. Jonathan Jenkins, Clearly Agile, Corp
Case No. D2018-2087
1. The Parties
The Complainant is Clearly Agile, Inc. of Tampa, Florida, United States of America (“United States”), represented by Trenam Kemker, United States.
The Respondent is Jonathan Jenkins, Clearly Agile, Corp. of Jackson, Wyoming, United States, represented by New Columbia Law Group PLLC, United States.
2. The Domain Name and Registrar
The disputed domain name <clearlyagile.com> (the “Domain Name”) is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 12, 2018. On September 13, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 13, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 17, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on September 17, 2018.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 8, 2018. Upon request by the Respondent, the Center granted an extension of Response due date until October 25, 2018. The Response was filed with the Center on October 26, 2018.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on November 1, 2018. 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 a business corporation established under Florida law in July 2014 and headquartered in Tampa, Florida, United States. As described in the Complaint and the Complainant’s website at “www.clearlyagileinc.com”, the Complainant’s service offerings include “agile training, agile coaching, transformation services, and software development reinforcing Scrum, Lean, and Kanban concepts.”
The Wikipedia article on “Agile software development” explains that these are approaches to software development and project management that emphasize collaboration, iterative and evolutionary development, and flexible response to change. They are largely derived from techniques developed in the 1990s and articulated in the 2001 “Manifesto for Agile Software Development”. The Complainant states that it has used the “Clearly Agile” name for its services since its formation in July 2014, spending more than USD 70,000 to market online and in media in Tampa, Florida and Washington, D.C.
The Complainant holds United States Trademark Registration Numbers 5073260 and 5352986 (registered on November 1, 2016 and December 12, 2017, respectively) for design marks featuring the name “Clearly Agile” (the “CLEARLY AGILE marks”).
The Respondent is “a boutique consulting firm” that provides clients (largely in the federal government and regulated industries) with quantitative agile software development tools. According to the Response, and consistent with domain research furnished by the Complainant, the Respondent registered the Domain Name on January 11, 2014. The Registrar lists the registrant’s organization as Clearly Agile, LLC. The online database operated by the Wyoming Secretary of State shows that Clearly Agile LLC, formed in July 2012, was the prior name of Clearly Agile, a business corporation under Wyoming law in active status, with its principal office in Jackson, Wyoming; the Respondent J. Jenkins is shown as its president. The Response explains that Clearly Agile LLC was transformed into a corporation in 2015, with offices in Jackson, Wyoming and Germantown, Maryland. The Respondent states that it has used the Domain Name since then for email addresses for the company and its employees. It appears from screenshots in the Internet Archive that the Respondent did not publish a fully developed website until 2017. However, the Response attaches evidence that the Respondent purchased web hosting services from the Registrar from January 2014, posted several versions of a “Coming Soon” landing page in 2015 and 2016 describing the services that the Respondent offers, and engaged the services of a website developer in 2015 and 2016 at a cost of more than USD 5,000 to develop the main website for the Respondent’s business, using the Domain Name.
In July 2016, an officer of the Complainant contacted the Respondent to point out the possibility of confusion between the two similarly named companies and websites:
“For the last two years, you've had clearlyagile.com in an endless countdown. I've watched it over the years as I own clearlyagileinc.com. Our company was founded in 2014, the same year you purchased the domain. We're not that big of a company yet, but we've grown from 2 to just over 10 employees since then. We're both in the same industry. Agile Training, Coaching and we also do software development. I'm even in the process of trademarking the name with the logo. There is also a Clear Agile on linked in, but the biggest problem is when someone searches for Clearly agile, there's confusion on your site and our company. … so I wanted to reach out and ask you, one agileist to another. Is there something we could work out to purchase your clearlyagile.com domain?”
The Respondent replied in part as follows:
“Appreciate you reaching out and understand your concern. We have been working under the radar due to a few contraction issues I had with an employee but are expecting to launch by end of the summer. We are incorporated in WY so there is no conflict. However, again I do understand the concern. If we were to even entertain this, your company would need to pay for any re-branding work …”
The parties did not agree to change names or domain names, however, and both continued to build their respective businesses. In 2017, counsel for the Complainant sent demand letters to the Respondent, which went unanswered.
The Domain Name resolves to a website providing Agile training and related services.
5. Parties’ Contentions
The Complainant asserts that it holds registered CLEARLY AGILE trademarks and that the Respondent has no permission to use them in the Domain Name. The Complainant acknowledges that the Respondent registered the Domain Name before the Complainant established its business but argues that its own marks nevertheless are “superior” because the Respondent did not actually use its own “Clearly Agile” brand in commerce until late 2017. The Complainant’s argument seems to be that the Respondent therefore has no rights or legitimate interests for Policy purposes.
The Complainant contends that the Respondent is a competitor that registered and used the Domain name in an effort to disrupt the Complainant’s business and exploit the Complainant’s reputation.
The Respondent does not challenge the Complainant’s trademarks but argues that it has its own prior common law rights in CLEARLY AGILE. The Respondent claims rights and legitimate interests in using a Domain Name corresponding to the name of its business, which was established in 2012. The Respondent denies that there could be any bad faith, as the Complainant and its marks did not exist at the time the Respondent registered the Domain Name.
Given the impossibility of concluding that the Respondent registered the Domain Name in contemplation of the Complainant’s marks, the Respondent asks the Panel to enter a finding of Reverse Domain Name Hijacking.
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 indisputably holds registered figurative trademarks in which the words CLEARLY AGILE are the dominant feature and are therefore relevant for purposes of the first Policy element. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11. The Domain Name is almost identical, lacking only the space that cannot be included in DNS addresses. As in most cases, the generic Top-Level Domain (“gTLD”) “.com” is not a distinguishing feature. See WIPO Overview 3.0, section 1.11.
The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant's trademark and the disputed domain name”. See WIPO Overview 3.0, section 1.7. The Panel concludes under this test that the Domain Name is confusingly similar for purposes of the first element of the Policy.
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 non-commercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent claims rights in CLEARLY AGILE as a common law trademark, although there is relatively little evidence in the record of the history of sales and advertising under this mark. There is, however, ample evidence that the Respondent organization has been known by a corresponding name since 2012 (Policy, paragraph 4(c)(ii)), and also that the Respondent has used the Domain Name (for email and a website) in connection with a bona fide offering of consulting services, after making demonstrable preparations for such use following registration of the Domain Name in 2014 (Policy, paragraph 4(c)(1)), before notice of the dispute. These facts meet the plain requirements of paragraph 4(c), and the Complainant’s strained arguments about the superiority of its trademark are immaterial.
Accordingly, the Panel finds in favor of the Respondent on the second element of the Complaint.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):
“(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 unpersuasively that the Respondent, a competitor, meant to disrupt the Complainant’s business and exploit its reputation. In 2014, both companies were small consultancies getting a start in a similar field, based on agile software development methodologies, as reflected in the 2016 email exchange quoted above. Correspondence in the record reveals that at least one of the Respondent’s clients was confused and sent a payment by mistake to the Complainant. For the most part, however, the Parties appear to work in different geographic and business markets.
In any event, it is undisputed that the Respondent chose its name and established its business in 2012, two years before the Complainant was established, and that the Respondent created the corresponding Domain Name in January 2014, more than half a year before the Complainant was established and more than two years before the Complainant obtained its first trademark registration. There is no allegation in the record that the Respondent had advance knowledge of the Complainant or its marks. It is simply not possible, therefore, to support an accusation that the Respondent registered the Domain Name in bad faith to disrupt the business or exploit the reputation of a company that did not yet exist and of which the Respondent had no advance knowledge.
Thus, the Complainant has failed to establish the third element of the Complaint.
D. Reverse Domain Name Hijacking
Paragraph 15(e) of the UDRP Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking (“RDNH”) or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. The Respondent has requested such a finding here.
Reverse Domain Name Hijacking is defined under the UDRP Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”. Mere lack of success of a complaint is not sufficient to find Reverse Domain Name Hijacking. See WIPO Overview 3.0, section 4.16. A finding of RDNH is warranted, for example, when a panel finds that the complainant (especially one represented by counsel) should have recognized that it could not succeed on one of the three elements of the complaint under any fair interpretation of the available facts or brings a complaint based “on only the barest of allegations without any supporting evidence” (id.). That is the case here, where the Domain Name was registered before the Complainant business was even formed, and the Respondent already had its own established business with a corresponding name. Hence, the Panel grants the request for a finding of Reverse Domain Name Hijacking.
For the foregoing reasons, the Complaint is denied.
Date: November 13, 2018