WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Topcon Positioning Systems, Inc. v. Jason W. Evans

Case No. D2015-0708

1. The Parties

The Complainant is Topcon Positioning Systems, Inc. of Livermore, California, United States of America (“USA” or “US”), represented by Tully Rinckey PLLC, USA.

The Respondent is Jason W. Evans of Skaneateles, New York, USA, represented by Tor Ekeland, P.C., USA.

2. The Domain Names and Registrar

The disputed domain names <topcontotalcare.com>, <topconuniversity.com> and <tuid.co> (the “Domain Names”) are registered with Tucows Inc., Melbourne IT Ltd and 1&1 Internet AG (the “Registrar”), respectively.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2015. On April 20, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On April 20 and 21, 2015, the respective 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”). The Panel notes that the Policy and Rules apply equally to the two Domain Names with the generic Top-Level Domain Name (“gTLD”) “.com” and to the Domain Name with the country code Top-Level Domain Name (“ccTLD”) “.co”, as the administrator of the “.co” ccTLD has also adopted the UDRP and designated WIPO as a domain name dispute resolution service provider.

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 May 1, 2015, with an original Response due date of May 21, 2015. On May 20, 2015, the Center received a request to extend the Response due date from the Parties. On May 22, 2015, the Center notified the Parties that the Response due date was extended to June 4, 2015 as requested by the Parties. The Response was filed with the Center on June 4, 2015.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on June 12, 2015. 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 the laws of the State of California, USA and headquartered in Livermore, California, USA. It manufactures optical, laser, and satellite-based geopositioning devices and related products for civil engineers, land surveyors, and companies in fields such as construction, agriculture, mining, and logging. The Complainant operates a website at “www.topconpositioning.com”.

The Complainant’s ultimate parent company, Topcon Corporation, is a Japanese public company listed on the Tokyo Stock Exchange. It owns trademark registrations in many countries for marks consisting of or incorporating the name TOPCON, and it licenses these marks for use by the Complainant. These registrations include US Trademark Registration Number 1698799 (standard characters, registered July 7, 1992) and US Trademark Registration Number 3856815 (words and design, registered October 5, 2010).

The Respondent is a former employee of the Complainant who resides in the State of New York, USA. It is undisputed that the Respondent was employed by the Complainant from 2008 until February, 2015, working remotely from his home to develop and maintain the Complainant’s domain names. The parties agree that during this time the Respondent registered all three Domain Names for the Complainant as part of his job responsibilities. The Domain Name <topcontotalcare.com> was used for the Complainant’s principal website. There is no evidence in the record concerning the use, if any, of the other two Domain Names.

The Respondent registered the Domain Names with the following details, as shown in the Registrar’s WhoIs database:

It is undisputed that the Complainant terminated the Respondent’s employment in February 2015. The Respondent contends that the termination was without cause, and the Complainant asserts that the termination resulted from the Respondent’s refusal to release control of the Domain Name <topcontotalcare.com> and the Complainant’s associated website. That Domain Name subsequently expired on April 14, 2015, and the Complainant’s website went offline.

The Complainant contacted the Respondent by telephone on April 15, 2015, demanding that he transfer the Domain Name <topcontotalcare.com> or allow the Complainant to renew the registration and continue operating the website. The Respondent emailed to the Complainant on the same day a “scope of work” for “requested” consulting services with respect to all three Domain Names (the “Respondent’s Consulting Proposal”). The Respondent’s Consulting Proposal states that he would perform consulting services with the following “Goals”:

“Topcon Positioning Systems, Inc. (TPS) would like Jason Evans to renew the above domains, transfer the registrant to a duly appointed agent working for TPS, and move the domains to a registrar chosen by TPS for the above-referenced sites.”

The Respondent’s Consulting Proposal required payment in advance with respect to the three Domain Names, as follows:

Renew Domain: 3 names at USD 97,153.30 each, for a total of USD 291,459.90

Transfer Registrar: 3 names at USD 95,591.33 each, for a total of USD 286,773.99

Assign Registrant: 3 names at USD 96,432.33 each, for a total of USD 289,296.99

Grand Total: USD 867,530.9 [sic].

The Complainant ultimately restored its website presence with a different domain name. Two days after receiving the Respondent’s Consulting Proposal, the Complainant submitted this UDRP Complaint. A week later, the Complainant also filed a civil lawsuit against the Respondent, Topcon Positioning Systems, Inc. v. Jason W. Evans, No. 5:15-CV-549 (GLS/ATB) (US District Court, Northern District of New York (Complaint, April 25, 2015)). That action, which is discussed further below, remains pending at the time of this Decision.

5. Parties’ Contentions

A. Complainant

The Complainant asserts without explanation that the Domain Names are confusingly similar to its TOPCON mark. According to the Complaint, the Respondent registered all three Domain Names for the Complainant’s use in carrying out his duties as an employee and, in this respect, as a fiduciary of the Complainant. The Complainant contends that the Respondent registered the disputed domain names in his own name, without the Complainant’s knowledge and against company policy. Therefore, the Complainant argues, the Respondent has no rights or legitimate interests in retaining the Domain Names for himself.

The Complainant contends that the Domain Names were registered and used in bad faith, with the ultimate aim of selling them to the Complainant “for profit to which he is not entitled.”

B. Respondent

The Respondent observes that the Domain Name <tuid.co> is not identical or confusingly similar to the Complainant’s TOPCON mark. The Response does not otherwise challenge the Complainant’s assertions under the first element of the Complaint.

The Respondent agrees with the Complainant that he registered all three Domain Names as part of his job responsibilities as an employee of the Complainant. He argues that he registered the Domain Names using his personal name and “home office” address to “effectively maintain” the Domain Name registrations. He states that he paid the registration fees himself and did not request reimbursement. The Respondent asserts that there was no company policy against this practice and that the Complainant never expressed concern over this form of registration. The Respondent states that at least one other employee similarly registered a domain name for the company “in a personal capacity”.

The Respondent states that he registered the Domain Names for the Complainant’s business and not for the purpose of selling them to the Complainant or disrupting the Complainant’s business. The Respondent says that he did not “refuse to turn over the registration to the Complainant”, but he does not offer any explanation for why he proposed to do so only in return for payment of more than USD 867,000.

The Respondent argues as well that the UDRP proceeding should be suspended or terminated in light of the pending litigation in federal court.

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. Pending Litigation

As recounted above, the Complainant filed a civil action against the Respondent in a federal district court on April 25, 2015. The Complaint is grounded on the US federal Anti-Cybersquatting Protection Act (“ACPA”), 15 United States Code sections 1125 et seq, and includes claims under New York law for breach of fiduciary duty and fraudulent concealment by a fiduciary. The judicial complaint does not expressly request transfer of the Domain Names to the Complainant. It seeks monetary damages as well as “any further relief allowed by law or which this Court deems just and equitable.”

The Policy (paragraph 4(k)) provides that the mandatory administrative dispute resolution procedure does not preclude either party from submitting the dispute to a court of competent jurisdiction. UDRP administrative panel decisions issued before the resolution of the judicial complaint are not binding on the courts. Panel decisions have a very limited scope: they are speedy determinations of whether a disputed domain name should be retained, cancelled, or transferred, based on whether the complainant establishes all three elements of the UDRP complaint. If a panel orders cancellation or transfer of a disputed domain name, the registrar is required to wait ten days before taking such action (Policy, paragraph 4(k)). If the registrar receives documentation within that time showing that that the domain name holder has commenced litigation against the UDRP complainant (which could conceivably be in the form of a counterclaim, in this instance), the registrar takes no further action until receiving evidence that the litigation has been settled, withdrawn, or dismissed, or has resulted in a judicial order declaring that the respondent does not have the right to use the domain name.

The Rules (paragraph 18(a)) provide that, “[i]n the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.”

The Panel in this instance finds that the Complaint can be evaluated under the Policy on the current record, without awaiting resolution of the Complainant’s judicial complaint. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.14. Hence, the Panel declines to terminate or suspend this proceeding and will proceed to a decision. As noted above, however, the Respondent is provided the opportunity under the Policy to forestall the implementation of any decision to cancel or transfer one or more of the Domain Names pending resolution of relevant judicial proceedings.

B. Identical or Confusingly Similar

The Complainant has rights as a licensee in its parent company’s registered TOPCON trademarks, which the Complainant uses in its business. Two of the Domain Names, <topcontotalcare.com> and <topconuniversity.com>, contain the TOPCON mark in its entirety, adding relevant generic words. The Domain Name <topcontotalcare.com> was in fact used for the Complainant’s website for a number of years. The Domain Name <topconuniversity.com> could be seen as indicating a detailed source of educational information about the Complainant’s products; it could also be viewed as relevant to the Complainant’s offerings to educational institutions, as summarized on the “Education” page of its website under the “All Industries” tab on the home page. On the other hand, the Complaint does not explain how the Domain Name using the string “tuid” is confusingly similar to its TOPCON mark, and that is not evident from a perusal of the Complainant’s website.

UDRP panels customarily treat the first element of a Policy complaint as a standing requirement, which simply requires “a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name”. See WIPO Overview 2.0, paragraph 1.2. The Panel finds that this test is satisfied in the present case with respect to the Domain Names <topcontotalcare.com> and <topconuniversity.com> and concludes that the first element of the Policy has been established for those two Domain Names. The Panel does not find that the Domain Name <tuid.co> is confusingly similar to the Complainant’s TOPCON mark and therefore dismisses the Complaint with regard to that Domain Name. However, as the underlying facts are similar, the Decision will continue to address the second and third elements of the Complaint with regard to all three Domain Names to the extent such discussion would be useful in the pending litigation.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy gives non-exhaustive 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 2.0, paragraph 2.1.

Here, the parties agree that the Domain Names were registered by the Respondent for use in the Complainant’s business, not for any business or noncommercial interests of the Respondent personally. This establishes the Complainant’s prima facie case that the Respondent has no rights or legitimate interests in the Domain Names. In reply, the Respondent has not demonstrated any such rights or legitimate interests. The Respondent contends that the Complainant was aware that he registered all of the Domain Names with his own name and address, for the Complainant’s use. But the Respondent does not claim that the Complainant authorized him to register, use, or retain the Domain Names for his own benefit. He is not a licensee of the Complainant’s mark, and he has not used a corresponding name in connection with a legitimate commercial offering or noncommercial fair use. The Panel finds particularly in light of the findings below, therefore, that the Respondent has not established rights or legitimate interests in the Domain Names and concludes that the second element of the Complaint has been established.

D. 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:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.

The Complainant does not expressly rely on this example but argues that the Respondent acted in bad faith by “secretly” registering the Domain Names in his personal name and then trying to sell them to the Complainant for an undeserved profit. Given that the registration fees for the three domain names amounted to a relatively nominal cost (probably less than USD 150), given the published fee schedules of the Registrar’s relevant reseller, the demand for “consulting” fees of more than USD 867,000 simply to transfer the Domain Names is clearly far in excess of the Respondent’s direct “out-of pocket” costs.

The Respondent does not deny prior knowledge of the TOPCON mark and concedes that he registered all three Domain Names for the Complainant’s business, as part of his job responsibilities for the Complainant. Advancing no plausible claim of a legitimate personal interest in the Domain Names, the Respondent argues simply that it was more “effective” to use his personal name and address in order to fulfill his job responsibilities to the Complainant and maintain the Domain Names on the Complainant’s behalf.

The Policy, paragraph 4(a)(iii), requires the Complainant to demonstrate that each Domain Name “has been registered and is being used in bad faith.” The conjunctive “and” suggests that the evidence must indicate the likelihood of bad faith both at the time of registration and subsequently in the use of the Domain Names. See WIPO Overview 2.0, paragraph 3.2 as relevant insofar as it states:

“The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. .[…]Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.”

Here, the Respondent concedes that he registered the Domain Names on behalf of his employer, and he does not advance rights or legitimate interests in the Domain Names, as discussed in the preceding section of this Decision. The Respondent does not articulate the supposed advantages to the Complainant of registering the Domain Names in his personal name. That is not obviously the most “effective” approach, as he claims, and cannot be accepted as usual commercial practice. For example, he could have given the Complainant’s name as the “Organization” and still listed his name and home office address for contacts, while he was charged with maintaining his employer’s website. The Respondent claims that the Complainant was aware that he registered the Domain Names in his own name, but he offers no evidence in support. He does not claim that the Complainant agreed to have him own the Domain Names personally so that he could eventually resell them to the Complainant, which would be a highly improbable business decision.

The Respondent’s conduct on termination lends credence to the inference that he maintained the Domain Name registrations in his personal name as leverage against his employer. He balked at turning over control of the Domain Names and website (for months, according to the Complaint) and then allowed one of the Domain Names to expire, crashing the Complainant’s website. He declined to restore it or transfer the Domain Names unless he was paid more than USD 867,000, a sum that exceeded his salary (according to the Complainant’s uncontested allegations) over the period of some seven years that he worked as an employee and had the responsibility for maintaining the Domain Names and website on the Complainant’s behalf. The Panel cannot read the Respondent’s mind, of course, but this behavior is so extreme that it warrants an inference of planned, bad faith conduct in the registration and use of the Domain Names (including the <tuid.co> Domain Name, although the Panel has been unable to conclude on the available record that this Domain Name is confusingly similar to the Complainant’s marks.)

The Panel concludes on this record that the third element of the Complaint has been established.

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 Domain Names <topcontotalcare.com> and <topconuniversity.com> be transferred to the Complainant.

For the foregoing reasons, the Complaint is denied with respect to the Domain Name <tuid.co>.

W. Scott Blackmer
Sole Panelist
Date: June 24, 2015