WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
iVenture Solutions, Incorporated v. Earl Kelly
Case No. D2019-1619
1. The Parties
The Complainant is iVenture Solutions, Incorporated, United States of America, represented by Marks Gray, P.A., United States of America.
The Respondent is Earl Kelly, United States of America, self-represented.
2. The Domain Name and Registrar
The disputed domain name <iventuresolution.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 July 10, 2019. On July 10, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 11, 2019, 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 July 15, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 4, 2019. On August 4, 2019, the Respondent requested for an extension of the response due date. On August 5, 2019, the Center notified the Parties that the response due date was extended to August 8, 2019. The Respondent sent an email communication on August 5, 2019. The Response was filed with the Center on August 9, 2019.
The Center appointed William R. Towns as the sole panelist in this matter on August 19, 2019. 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 operates in the information technology industry. The Complainant is the owner of a United States (“U.S.”) trademark registration for IVENTURE, U.S. Reg. No. 4,674,759, applied for on May 23, 2014, and registered on January 20, 2015, for use with computer services, management of information technology systems, software applications, electronic messaging systems, and private cloud services. The letter “i” in the IVENTURE word mark is stylized to resemble a person. The Complainant has used the IVENTURE mark since 2014, and has a website at “www.iventuresolutions.com”.
The Respondent offers managed information technology services and solutions doing business as EK3 Technologies. The Respondent maintains a website at “www.ek3tech.com”. The Respondent registered the disputed domain name <iventuresolution.com> on October 15, 2018. The disputed domain name then was redirected to the Complainant’s website, and continued to be until the Respondent was contacted by the Complainant’s counsel, at which time the Complainant also requested the transfer of the disputed domain name. On or about July 9, 2019, the Respondent through his counsel offered to sell the disputed domain name to the Complaint for USD 10,000.
5. Parties’ Contentions
A. Complainant
The Complainant submits that the disputed domain name <iventuresolution.com> is confusingly similar to the Complainant’s IVENTURE mark. The Complainant observes that disputed domain name incorporates the Complainant’s mark and is likely to cause consumer confusion as to the source of information and services offered by the Respondent.
The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant avers that the Respondent has not been commonly known by the disputed domain name, is not making a legitimate noncommercial or fair use of the disputed domain name, and has redirected the disputed domain name to the Respondent’s “www.ek3tech.com” website, on which the Respondent offers information technology services in competition with the Complainant. The Complainant asserts that the Respondent is using the disputed domain name with the intent for commercial gain to misleadingly divert customers away from the Complainant.
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Complainant reiterates that the Respondent is using the disputed domain name to divert Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark. The Complainant further asserts that the Respondent registered the disputed domain in order to sell or otherwise transfer the disputed domain name to the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name.
B. Respondent
The Respondent submits that the disputed domain name is neither identical or confusingly similar to any trademark or service mark in which the Complainant has rights. The Respondent observes that the Complainant’s registered trademark features a stylized letter “i” that resembles a person. According to the Respondent, since the Complainant’s mark features a stylized “i” and the disputed domain name does not, the Respondent’s registration of the disputed domain name cannot violate the Complainant’s trademark.
The Respondent asserts rights in the disputed domain name. The Respondent maintains he registered the disputed domain name in November 2018 expressly to use at some point in the future. The Respondent further contends that the disputed domain name was registered before any notice of the dispute and only after checking the trademarks in use by the Complainant.
The Respondent maintains he has neither registered nor used the disputed domain name in bad faith. According to the Respondent, he was not aware that the disputed domain name was being redirected to the website at “www.ek3tech.com” but changed the settings once so advised by the Complainant. The Respondent also states that he was contacted by the Complainant’s representative around June 24 or 25, 2019, at which time the Complainant demanded the transfer of the disputed domain name.
The Respondent states that he refused the transfer request, but advised the Complainant through his counsel that the disputed domain name could be acquired for the sum of USD10,000. The Respondent explains that he did not seek out the Complainant to purchase the disputed domain name and does not wish to sell the disputed domain name to anyone. According to the Complainant, he sought to dissuade the Complainant from purchasing the disputed domain name by making it too expensive. The Respondent insists the disputed domain name was not registered in order to sell the disputed domain name to the Complainant or to any competitor of the Complainant.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”, see Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the 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 with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name are deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds that the disputed domain name <iventuresolution.com> is confusingly similar to the Complainant’s IVENTURE mark, in which the Complainant has established rights through registration and use in commerce. In considering identity and confusing similarity, the first element of the Policy serves essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name.
In this case, the Complainant’s IVENTURE mark is clearly recognizable in the disputed domain name.2 The Respondent’s inclusion in the disputed domain name of the descriptive term “solution,” does not dispel the confusing similarity of the disputed domain name to the Complainant’s mark. When the relevant trademark is recognizable in the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.3 Generic Top-Level Domains (“gTLDs”) generally are disregarded in determining identity or confusing similarity under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the gTLD.4 Given that the Respondent is a direct competitor of the Complainant, the Panel considers that the Respondent’s registration and use of the disputed domain name reflects targeting of the Complainant’s IVENTURE mark.5
The Respondent contends that the disputed domain name cannot be confusingly similar to the Complainant’s registered IVENTURE mark because the letter “i” in the mark is stylized. The Respondent’s argument is without merit and arguably specious. See generally WIPO Overview 3.0, section 1.10 (design elements may be taken into account when the domain name comprises a spelled-out form of the relevant design element). In this instance, the stylized letter “i” is by no means the dominant feature or element of the IVENTURE mark, and the USPTO consistently has recognized that consumers encountering a stylized mark are far more likely to use the words of the mark in reference to trademarked goods or services.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to come forward with relevant evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been licensed or otherwise authorized to use the Complainant’s IVENTURE mark. Nevertheless, the Respondent, registered the disputed domain name, which appropriates the Complainant’s IVENTURE mark, and which was redirected to the Complainant’s website. The Respondent and the Complainant are competitors, and the Respondent has offered no explanation how the disputed domain name could have been redirected to without the Respondent’s knowledge or consent. Further, upon being contacted by the Complainant the Respondent attempted to sell the disputed domain name to the Complainant for USD 10,000.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a 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 disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if 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.
Having regard to all of the relevant circumstances in this case, the Panel concludes that the Respondent was aware of the Complainant and had the Complainant’s IVENTURE trademark in mind when registering the disputed domain name. As noted earlier, the disputed domain name has been used to target the Complainant’s mark. The Respondent’s use of the disputed domain name with the “www.ek3tech.com” website could easily convey to Internet users the impression that the Respondent’s website is affiliated with, sponsored, or endorsed by the Complainant. And the Respondent’s redirection of the disputed domain name to the Complainant’s website appears to have been calculated to create initial Internet user confusion.
The Panel accordingly finds that the Respondent’s use of the disputed domain name does not constitute use in connection with a bona fide offering of goods or services within the contemplation of paragraph 4(c)(i) of the Policy. Nor, in light of the foregoing, is the Respondent making a legitimate noncommercial or fair use of the disputed domain name within the meaning of paragraph 4(c)(iii) of the Policy. As previously noted, the Respondent has not been authorized to use the Complainant’s mark and has not been commonly known by the disputed domain name within the contemplation of paragraph 4(c)(ii) of the Policy.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. Based on the record, the Panel finds that the Respondent had the Complainant’s IVENTURE trademark in mind when registering the disputed domain name. The Panel concludes that the Respondent most likely registered the disputed domain name in an attempt to exploit or otherwise capitalize on the Complainant’s rights in its IVENTURE mark.
In the attendant circumstances of this case, the Panel considers that the Respondent has intentionally attempted for commercial gain to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or services offered thereon. The Panel further concludes that the Respondent registered and has used the disputed domain name in an effort to disrupt the Complainant’s business. The Respondent also attempted to sell the disputed domain name to the Complainant in an amount in excess of any out-of-pocket costs directly related to the disputed domain name.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <iventuresolution.com> be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: August 30, 2019
1 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7 .
2 Id. When the relevant trademark is recognizable in the disputed domain name, the domain name normally will be considered confusingly similar to the mark for purposes of paragraph 4(a)(i) of the Policy.
3 See WIPO Overview 3.0, section 1.8 and cases cited therein.
44 See WIPO Overview 3.0 , section 1.11.2 and cases cited therein.
5 See WIPO Overview 3.0, section 1.15.