Aqua Engineering & Equipment, Inc. v. DOMAIN ADMINISTRATOR / PORTMEDIA HOLDINGS LTD
Claim Number: FA1805001785667
Complainant is Aqua Engineering & Equipment, Inc. (“Complainant”), represented by Marianne Marianne of Aqua Engineering & Equipment, Inc., Florida, USA. Respondent is DOMAIN ADMINISTRATOR / PORTMEDIA HOLDINGS LTD (“Respondent”), represented by Ari Goldberger of Esqwire.com, New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aquafx.com> (“Disputed Domain Name” or “DDN”), registered with Uniregistrar Corp.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
David L. Kreider, Esq., as the Chair of the three-member Panel, along with Ho-Hyun Nahm, Esq., and The Honorable Neil Anthony Brown QC, as Panelists.
Complainant submitted a Complaint to the Forum electronically on May 9, 2018; the Forum received payment on May 9, 2018.
On May 11, 2018, Uniregistrar Corp confirmed by e-mail to the Forum that the <aquafx.com> domain name is registered with Uniregistrar Corp and that Respondent is the current registrant of the name. Uniregistrar Corp has verified that Respondent is bound by the Uniregistrar Corp registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 17, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 11, 2018 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to email@example.com. Also, on May 17, 2018, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on June 11, 2018.
On June 20, 2018, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed:
David L. Kreider, Esq., as Panelist;
Ho-Hyun Nahm, Esq., as Panelist; and
The Honourable Neil Anthony Brown QC, as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
[a.] The Respondent has no rights or legitimate interests in the domain name <AquaFX.com>.
- i) A complainant must prove that a respondent has “no rights or legitimate interests in respect of the domain name.” UDRP Rule 3(b)(ix)(2). The AquaFX URL is associated exclusively with Complainant and has no independent dictionary meaning. Therefore, Respondent had no reason to choose the Domain Name except to create the impression of an association with, or to trade off of the goodwill of, Complainant.
- ii) The term “AquaFX” is not a descriptive or geographically significant word in which Respondent might have a claim to rights of use. Further, Respondent is not making a legitimate noncommercial or fair use of the AquaFX name and URL. Instead, Respondent registered and is using the Domain Name in connection with multiple websites that are in direct competition with AquaFX.
iii) The Respondent has not used the domain in connection with any bona fide offering of good or services. Instead the respondent is clearly attempting to capitalize on using the AquaFX name and domain name to gain revenue from paid advertisements that act against the better interest of AquaFX causing harm and loss of income to AquaFX directly.
- iv) A complainant must prove that a respondent has “no rights or legitimate interests in respect of the domain name.” UDRP Rule 3(b)(ix)(2). The AquaFX name is associated exclusively with Complainant and has no independent dictionary meaning. Therefore, Respondent had no reason to choose the Domain Name except to create the impression of an association with, or to trade off of the goodwill of, Complainant
- v) Respondent is not commonly known by the Domain Name according to Policy ¶ 4(c)(ii). Instead, the WHOIS information for the Domain Name lists the registrant as “PRIVACYDOTLINK CUSTOMER 409147” and the registrant’s organization as “PORTMEDIA HOLDING, LTD”. Further, Respondent is not an authorized licensee, distributor, retailer or subsidiary of Complainant. Respondent has never been authorized to use Complainant’s AquaFX, nor has Complainant authorized or licensed Respondent to supply or distribute Complainant’s goods. Previous panels have found no rights or legitimate interests where (a) respondent is not a licensee of complainant; (b) complainant’s prior rights in the mark precede respondent’s registration of the domain name; and (c) respondent is not commonly known by the domain name in question.
[b.] The Domain Name Has Been Registered and is Being Used in Bad Faith
- i) Respondent continues to increase the sales price for the domain and is presently accepting offers for the Domain Name with a “minimum offer” price of $10,000. A fair market analysis has found that the respondent’s attempt to sell a domain for an amount that exceeds its out-of-pockets costs to acquire the domain is evidence of bad faith registration and use under Policy ¶ 4(b)(i).
- ii) Further, Respondent acquired the Domain Name without any bona fide basis for such registration in an attempt to capitalize unfairly on the goodwill of Complainant’s AquaFX name. Prior Panels have held that bad faith is found if it is unlikely that the registrant would have selected the relevant domain name without knowing of the reputation of the trademark in question. Respondent is and has historically used the Domain Name to redirect web traffic to websites that are in direct competition with the Complainant. Such conduct indicates that Respondent had actual knowledge of Complainant’s AquaFX name and reputation at the time it acquired the Domain Name.
iii) Simply by using the Domain Name with Complainant’s AquaFX trademark, Respondent makes prominent trademark use of the AquaFX name without authorization from Complainant. This use creates the false impression that the links and information provided on Respondent’s website are sponsored or endorsed by Complainant.
- iv) As noted above, Respondent has used and is currently using the Domain Name to resolve to a pay-per-click website from which it derives revenue through Internet advertising. Complainant submits that the revenue derived from such advertising is the primary reasons Respondent registered and was using the Domain Name — to ride freely on the goodwill associated with Complainant’s AquaFX name. Such use constitutes bad faith use and registration on the part of Respondent.
- v) Moreover, Respondent has never used the Domain Name to resolve to any active content. Respondent’s failure to use the Domain Name is further “evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).” State Farm Mut. Auto. Ins. Co. v. Anderson, FA 1613011 (FORUM May 21, 2015); see also Boch Imports, Inc. and Boch Imports West, Inc. and Boch New To You, Inc. v. Westboro Motors, Inc., FA1002001308051 (FORUM April 6, 2010)(finding that failure to make active use of the disputed domain name is passive holding and supports a finding of bad faith registration and use under Policy ¶ 4(a)(iii)); DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy.
[a.] Complainant’s Rights to a Trademark Identical or Confusingly Similar to the Disputed Domain
First, Complainant’s design trademark was registered in 2007, six (6) years after Respondent purchased the Disputed Domain. Second, it is important to note that Complainant does not have rights to a word mark for AQUAFX. Instead, it holds a stylized design mark for “Aqua Fx The Leaders in Reverse Osmosis.” Complainant’s logo is shown below:
The registration of a stylized design mark itself does not provide Complainant with rights to the generic/descriptive term contained therein. Weil Lifestyle, LLC v. Vertical Axis, Inc., No. 926455 (NAF May 9, 2007)(complainant’s U.S. registered mark for vitamin advisor “applie[d] only to a design plus word mark and not to a word mark alone.” Deutsche Post AG v. NJDomains, D2006-0001 (WIPO Mar. 6, 2006)(Design mark with word POST not identical or confusingly similar to domain name post.com). Here, Complainant’s design mark is distinguishable from the Disputed Domain, and given the USPTOs willingness to register a word mark for AQUAFX to a third party after Complainant’s registration indicates that the USPTO did not find Complainant’s logo to be confusingly similar to a third-party seeking to use the words/term AQUAFX. Accordingly, the Panel should find that Complainant lacks enforceable rights to a trademark identical or confusingly similar to the Disputed Domain and, accordingly, deny the Complaint.
[b.] Respondent has Rights and a Legitimate Interest in The Domain Name
- i) Registration of a Common Word Domain Name and Use in Connection with its Descriptive Meaning Establishes Rights and a Legitimate Interest.
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant is required to make out a prima facie case that respondent lacks rights or legitimate interests in the Disputed Domain. For the reasons set forth fully below, Respondent has rights and a legitimate interest in the Disputed Domain.
First, the registration of descriptive term domain names, such as <aquafx.com>, ipso facto establishes the Respondent’s legitimate interest, provided the domain was not registered with a trademark in mind. In cases such as these, where a domain name consists of generic words or descriptive words the key factor is whether a respondent registered and is using a domain name to describe his product/business or to profit from the generic value of the word without intending to take advantage of a complainant’s rights in that word. Metro Sportswear Limited v. Vertical Axis, Case No. D2008-0754 (WIPO August 4, 2008). See also, Baccus Gate Corp. et al v. CKV et al, No. D2008-0321 (WIPO May 20, 2008); Energy Source Inc. v. Your Energy Source, Case No. 96364 (NAF Feb. 19, 2001); Car Toys, Inc. v. Informa Unlimited, Inc. No. 93682 (NAF Mar. 20, 2000)(Respondent “has demonstrated that the name is in use elsewhere”). Russell Moran et al. v. The Boating Information Bureau Ltd., No. 102179 (NAF Jan. 14, 2002)(extensive third party use evidenced by Google search). HP Hood LLC v. Hood.com, No. 313566 (NAF Oct. 20, 2004).
Several panels have noted that the more descriptive a mark, the more difficult becomes Complainant’s burden of proof to establish registration and use with Complainant’s mark as a target. BrightSign LLC v. Administrator, Domain / Vertical Axis, Inc., FA1103001379395 (May 4, 2011). Moreover, Complainant has failed to show that its trademark would be well known all over the world. Fundación Santa María-Ediciones SM v. M.A. Stenzel, D2013-0818 (WIPO July 24, 2013). Complainant’s foreign trademark and lack of brand recognition (outside of, perhaps a discreet industry use), support a finding that Respondent did not target Complainant. AGL Energy Limited v. James M. Van Johns, D2013-1871 (WIPO Feb. 21, 2014).
Furthermore, where a party acquires a domain name from its prior owner, and the domain name is generic word, or is one that not associated with a single entity, it should support a finding of that party’s rights or a legitimate interest within the meaning of the Policy. Career Guidance Foundation v. Ultimate Search, D2003-0323 (WIPO July 21, 2003).
Here, Respondent has provided sworn testimony that he had no knowledge of Complainant or its trademark and did not register the Domain to target Complainant. Indeed, if there is any doubt that Respondent registered the Disputed Domain solely based on its descriptive nature and relationship to water or “aquatic” related services [recte] — and not because of Complainant’s trademark – the Panel should consider Respondent’s many other non-trademark domain names it has registered that include a generic word followed by “Fx” include:
Additionally, Respondent has also registered many other domain names which include the word “aqua”, such as:
The only reasonable inference to be drawn leads to the conclusion that Respondent does not target trademarks. Such pattern of descriptive domain name registration supports an inference that the descriptive disputed domain was not registered with the intent to target a trademark. On the balance of probabilities, the fact that Respondent purchased the Disputed Domain from its prior owner (indicating that the domain name was free for use and registration), Respondent’s good faith use for advertising purposes, and Respondent’s other, non-trademark, related domain names, Respondent has established rights and a legitimate interest in the Disputed Domain. Game Truck Licensing, LLC v. Chris Hampton,D2012-1964 (WIPO Jan. 12, 2013). See also Hotel Plaza Limited et al. v. Vertical Axis, Inc. et al., D2008-1760 (WIPO March 18, 2009) (finding that upon review of other registrations, there is no evidence that the Respondent has engaged in a pattern of conduct or any other activity in which the objective was to benefit from the Complainant’s trademark).
- ii) Use of Advertising Links Establishes Rights and a Legitimate Interest.
Contrary to Complainant’s assertion, Respondent’s legitimate interest is bolstered by the fact that it uses the Disputed Domain in connection with the bona fide provision of advertising services. Respondent is not alone in having such a business model and it is an accepted and not unusual practice. See e.g. Instrumentation Northwest, Inc. v. INW.com c/o Telepathy, Inc., D2013-0454 (June 1, 2012); Rocky Mountain Health Maintenance Organization, Incorporated v. PortMedia, FA 01418881 (NAF Jan 26, 2012). It has been held that the use of common word domain names in connection with pay-per-click advertising establishes a legitimate interest.
PPC links establish legitimacy where they are selected as a result of the generic or descriptive meaning of terms contained in a domain, as opposed to being selected with a trademark in mind. See Tomsten Inc. v. Registrant 7281 a/k/a Star Access Inc. No.0925448 (NAF April 20, 2007). Such is the case here. The PPC Ads were not selected by Respondent at all. Rather, they were auto-generated by Google’s or parking provider software and relate to topics of general interest. As noted in Mariah Media Inc. v. First Place Internet Inc. No. D2006-1275 (WIPO Dec. 6, 2006), the appearance of links created by a third-party domain monetization service does not constitute bad faith on the part of the domain owner. As the 3-member panel there explained:
In the face of the Respondent’s denials and the automated nature of the advertising links, the Panel considers these particular links insufficient to prove the Respondent’s intent to mislead Internet users by means of the Domain Name itself.
In short, the Panel is unwilling to attribute bad faith to this search software. And it does not feel warranted in presuming bad faith on the part of a company using such software when the “keywords” it provides are merely dictionary words.
The evidence is that Respondent registered the Disputed Domain because of its inherent value as a descriptive domain used in connection with the bona fide offering of goods and services in the form of PPC Ads. Any recent changes in links were due to changes in parking providers and not intentional. In any event, to the extent the new parking provider recently served questionable links Respondent took corrective action when it became aware of such issue.
Complainant presented a screen shot showing “water filtration” to “show” that Respondent is a nefarious actor. While it may be the case that Respondent made changes in its parking provider around May, 2017, and settings for the Disputed Domain changed at some point thereafter. Respondent has also attested that it was not aware of such activity and any such activity was removed when it became aware of such links. The existence of such links was not intentional and was certainly de minimus when compared to Respondent’s good faith use since July 2001. Indeed, it should also not be surprising to see links related to water or aquariums given that “aqua” is the dictionary keyword in the Disputed Domain. Contrary to Complainant’s claim the facts support a finding that for over sixteen (16) years the Disputed Domain has been used in a proper manner with PPC and search advertising unrelated to Complainant in any manner.
Respondent has not targeted Complainant’s trademark. A screen shot of the Respondent’s current website is below: [screenshot omitted]
Accordingly, Respondent has demonstrated that it has rights and a legitimate interest in the Disputed Domain and the Complaint must, therefore, be dismissed.
3) Sale of Commercially Valuable Domain Names Without Targeting of Trademark Holders is a Legitimate Interest.
Moreover, contrary to the allegations in the Complaint, the fact Respondent responded to Complainant’s inquiries to purchase the domain is not improper and it does not make its use of the domain illegitimate. To the contrary, a business based on reselling domain names satisfies the legitimate interest prong of the Policy, provided there is no evidence a trademark was targeted by the registrant. X6D Limited v. Telepathy, Inc.,Case No. D2010-1519 (Nov. 16, 2010) (given “the commercial value of descriptive or generic domain names it has become a business model to register and sell such domain names to the highest potential bidder.”); Trans Continental Records, Inc. v. Compana LLC, No. D2002-0105 (WIPO April 30, 2002)(“use of [LFO.COM] . . . even for sale, is a legitimate business.”). See also Micron Technology, Inc. v. Null Int’l Research Center, No. D2001-0608 (WIPO June 20, 2001)(no evidence respondent “was targeting Complainant or its mark); See Also Audiopoint, Inc. v. eCorp, Case No.D2001-0509 (WIPO June 14, 2001)(“speculation in domain names . . . may itself constitute a bona fide activity under paragraph 4(c)(i)”); Incorp Services, Inc. v. RareNames, WebReg, 559911 (NAF Nov. 10, 2005)(“selling domain names consisting of generic or descriptive terms is a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)”).
Accordingly, Respondent has demonstrated that it has rights and a legitimate interest in the Disputed Domain and therefore, the Complaint must be dismissed.
[c.] The Disputed Domain Was Not Registered or Used in Bad Faith
- i) No Bad Faith –Purchase of Common Word Descriptive Domain Name from Its Prior Owner is Evidence of Good Faith.
Here, there is no evidence of bad faith registration or use. Respondent registered the Disputed Domain simply because it incorporated a descriptive term that became available when its prior owner decided to sell the Disputed Domain. This is not a case of a cybersquatter looking for trademarks upon which to prey. To the contrary, Respondent has simply purchased many descriptive term domain names that were available or offered for sale by their prior owner. Registration of domain names in this manner not only fails to support a finding of bad faith registration, it negates such a finding. Previous Panels have held that the expiration of a domain name raises the presumption that any trademark rights in such domain name have been abandoned, signaling to prospective registrants that it is available and can be registered in good faith. Corbis Corporation v. Zest, No. 98441 (NAF Sept. 12, 2001). The 3-member panel there stated:
The Panel holds that a domain registrant who knows a domain name has been abandoned should be more confident, not less so, that there is no competing trademark claim relating to the domain name; a person in the position of Respondent should be more confident than a registrant who selects a previously unregistered name.
The 3-member panel in CB Publishing, LLC v. Akway Int’l et al., No. 926506 (NAF Apr. 18, 2007 went farther in its statement:
[W]here a party registers a lapsed domain name, and it is not attempting to use the name to compete with the mark holder or disrupt its business, we believe that ordinarily the trademark holder should be denied relief, whether the mark is a common law or a registered mark, whether the mark is ‘strong’ or’ weak.’
Absent specific proof of intent to profit from Complainant’s mark, bad faith registration cannot be established. Ultrafem, Inc. v. Warren Royal, No. 97682 (NAF Aug. 2, 2001).
Following the above line of reasoning, here, the presumption of good faith registration is even stronger. Where the prior owner is using the domain name in connection with its common meaning and offers it for sale, it is a signal to Respondent that there is no competing third-party trademark claim. Likewise, similar to the case of Career Guidance Foundation v. Ultimate Search, D2003-0323 (WIPO July 21, 2003), Respondent purchased the Disputed Domain based on its descriptive or common meaning relating to the popular “aquatic” industry. Accordingly, the Panel should find that facts support Respondent’s good faith purchase and negates a claim of bad faith registration.
- ii) No Bad Faith – No Specific Knowledge of Complainant
Moreover, there is no evidence that Respondent had knowledge of Complainant’s alleged mark when it purchased the Disputed Domain. Indeed, Complainant did not have a registered trademark until 2007 – at least six (6) years after Respondent purchased the Disputed Domain. Absent evidence of knowledge of Complainant’s mark on the part of Respondent, bad faith cannot be proven. Streetprices.com v. Nett Corp., No. 1280020 (NAF Nov. 10, 2009)(finding no evidence of bad faith where the domain is descriptive and where there is no evidence that Respondent knew of Complaint’s mark at the time of registration); Futureworld Consultancy Pty Ltd. v. Online Advice, No. D2003-0297 (WIPO July 18, 2003)(“there is no evidence to show that the disputed domain was registered with the Complainant in mind…”); Kis v. Anything.com Ltd., supra. (“there are no indications that Respondent knew of Complainant or its trademark when registering the Disputed Domain Name.”). Indeed, the Complaint is devoid of any evidence to the contrary.
Accordingly, the Panel should conclude that Respondent did not have knowledge of Complainant’s trademark and that Respondent, therefore, did not target Complainant with the registration of the Disputed Domain. Accordingly, bad faith registration cannot be established.
iii). A Response to an Offer to Purchase Is Not Evidence of Bad Faith.
Complainant is wrong that responding to an inquiry to purchase a domain is evidence of Respondent’s bad faith. Gigglesworld Corporation v. Mrs Jello, D2007-1189 (Nov. 16, 2007). Complainant’s unsolicited offer to purchase the Disputed Domain is itself an acknowledgement of Respondent’s legitimate interest in the Disputed Domain. Prom Software, Inc. v. Reflex Publishing, Inc., No. D2001-1154 (WIPO Mar. 4, 2002) (“Complainant actually has established the apparent legitimacy of Respondent’s interest,” with offer to purchase domain name.) These facts militate against a finding of bad faith. Moreover, as set forth fully in Legitimate Interest section above, the reselling of domain names (without a registration to target a trademark holder) also satisfies the legitimate interest prong under the Policy. There is no evidence Respondent had (or even could have had) any knowledge of Complainant before the filing of this Complaint. Accordingly, the Panel should find that Respondent’s actions are not evidence of bad faith and the Complaint must be denied.
- iv) Appropriate Use of PPC Links Militates Against a finding of Bad Faith.
The evidence is that Respondent registered the Disputed Domain because of its value as a descriptive domain name, and it has used it in connection with the bona fide offering of goods and services in the form of PPC Ads. Any recent changes in links were due to changes in parking providers around May, 2017 and not intentional. In any event, to the extent the new parking provider recently served questionable links Respondent took corrective action when it became aware of such issue.
Complainant seems to present a more recent screen (though undated) screenshot as evidence that Respondent is a nefarious actor. While it may be the case that Respondent made changes in its parking provider and settings for the Disputed Domain changed as well, these links were immediately remedied. Respondent has also attested that it was not aware of such activity and any such activity was removed when it became aware of such links. The existence of such links was not intentional and was certainly de minimus when compared to Respondent’s good faith use since June 2001. Contrary to the Complainant’s claim, the facts support a finding that for over sixteen (16) years the Disputed Domain has been used in a proper manner with PPC and search advertising related to aquatic concepts.
v)Complainant’s 17 Year Delay Indicates a Lack of Belief of Bad Faith.
Complainant’s delay in taking action over the past 17 years raises the inference that Complainant did not truly believe the Disputed Domain was registered or used in bad faith or “its intellectual property.” Rolling Stone LLC v. Robbins Carnegie Inc., No. 318048 (NAF Oct. 14, 2004)(delay could indicate that Complainant “did not seriously believe” that Respondent had violated the Policy.”); See also Bosco Prod., Inc. v. Bosco email Servs., No. 94828 (NAF June 29, 2000)(“Without determining if the passage of considerable time would alone bar Complainant from relief in this proceeding, the Panel notes that Complainant does not explain why it has waited nearly four years to try and resolve [the domain name dispute].”); New Piper Aircraft, Inc. v. Piper.com, supra. (Complainant’s failure to initiate a suit in over two years indicated that Complainant did not believe that Respondent intended to attract customers through confusion).
Factually, Complainant has failed to present any specific evidence as to why it chose to act against Respondent or how Respondent did anything other than purchase the Disputed Domain and have its broker respond to an unsolicited inquiry to purchase the Disputed Domain. Thus, it is more likely than not that this case is about a Complainant that slept on its rights and then decided to see if it could purchase the Disputed Domain from the current owner. When it was unsuccessful in purchasing the Disputed Domain or did not like the response from the independent broker, Complainant filed this action.
Like the above referenced cases, this panel should find that Complainant’s inaction raises the inference that Complainant did not believe Respondent’s (or other parties’) registration and use of the Disputed Domain was truly improper. Only after it was unable to purchase the Disputed Domain did Complainant seek relief before the NAF. Accordingly, Complainant has failed to demonstrate that the Disputed Domain was registered or used in bad faith, and the Complaint should, therefore, be denied.
[d.] Reverse Domain Name Hijacking
There is absolutely no basis for this claim and Complainant knew or should have known that before filing its Complaint. It certainly had an obligation to understand the rules and present a valid claim. Any amount of due diligence would have shown that it was a claim calculated and designed to steal a highly valuable domain name from its rightful owner. Given the rise of questionable claims brought by sophisticated counsel on highly aged domain names a finding of reverse domain name hijacking is very important for the UDRP and domain owners to deter future claims and abuses of the system.
Complainant knew when it filed the Complaint that it could not prove two of the three, of the elements to prevail. In cases with more favorable facts than the instant matter, allegations of reverse domain name hijacking have been upheld. Panelists have found RDNH in circumstances where a respondent’s use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy. See Goldline International, Inc. v. Gold Line, D2000-1151 (Jan. 4, 2001); and Deutsche Welle v. DiamondWare Limited, D2000-1202 (Jan. 2, 2001)
Here the facts also present this filing as a “Plan B” case — using the Policy after failing in the marketplace to acquire the disputed domain name. This stratagem has been described in several earlier UDRP cases as “a highly improper purpose” and it has contributed to findings of RDNH. Bernina International AG v. Name Administration Inc. D2016-1811 (WIPO Nov. 7, 2016); See also, Patricks Universal Export Pty Ltd. v. David Greenblatt, D2016-0653 (WIPO Jun. 21, 2016) (holding “Plan B” approach as a basis for a finding of RDNH) and Nova Holdings Limited, Nova International Limited, and G.R. Events Limited v. Manheim Equities, Inc. and Product Reports, Inc., D2015-0202 (WIPO Apr. 23 2015)(use of UDRP proceeding to increase bargaining leverage in sale negotiations called “a highly improper purpose”). When coupled with the fact that Complainant appears to have slept on its purported rights for 17 years, this strongly militates against Complainant’s good faith believe in its claim or that Respondent is not a good faith purchaser of the Disputed Domain.
Reverse Domain Name Hijacking is defined under the Rules as ‘using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name’… WIPO panels have found Reverse Domain Name Hijacking in circumstances including where: the complainant in fact knew or clearly should have known at the time that it filed the complaint that it could not prove one of the essential elements required by the UDRP.” Javier Zetter Casillas v. Vertical Axis, Inc. D2014-0400 (WIPO Jun. 6, 2014); Planate Management Group LLC v. Vertical Axis, Inc., D2011-1535 (Dec. 6, 2011)(stating, [i]n the circumstances, the Complainant clearly knew or should have known at the time it filed the Complaint that it could not prove one of the essential elements required by the Policy, i.e. bad faith registration); The Realty Alliance v. Vertical Axis, Inc., No. 296997 (NAF Feb. 12, 2010); CNRV, Inc. v. Vertical Axis, Inc., No. 1300901 (NAF May 3, 2010) (“Complainant must have known it could not demonstrate bad faith registration and use”).
Thus, for the aforementioned reasons, the panel should find that Complainant abused this administrative proceeding when it filed this claim and a finding of reverse domain hijacking should be awarded.
The Panel finds that Respondent registered the Disputed Domain Name <aquafx.com> on July 29, 2001, and that on August 10, 2005, Complainant applied to the United States Patent and Trademark Office (USPTO) for a design mark incorporating the words “Aqua FX The Leaders in Reverse Osmosis”. Complainant’s design mark was thereafter registered on January 2, 2007. The Panel notes that the trademark AQUAFX was granted to two (2) third-parties by the USPTO, and that, accordingly, Complainant does not have exclusive rights in the AQUAFX mark. The Complaint alleges no common law trademark right.
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
Complainant claims no word mark which might be compared to the Disputed Domain Name. Moreover, Complainant’s design mark appears to this Panel to be so generalized in nature that a comparison with the Disputed Domain Name compels the conclusion that Complainant’s mark is neither identical, nor is it confusingly similar to the Disputed Domain Name.
As noted above, the AQUAFX trademark was granted to two third-parties by the USPTO, and that the Complainant does not have exclusive rights in the mark. Complaint alleges no common law trademark right.
For the above reasons, the Panel finds that Complainant has not satisfied the first element, Policy Paragraph 4(a)(i).
Rights or Legitimate Interests
The Disputed Domain Name is substantially generic and descriptive and is being used for promoting goods and services that generally come within the meaning of the domain name, which is water and various general activities associated with it.
Complainant did not apply for its design mark until August 10, 2005, more than four (4) years after Respondent had registered the Dispute Domain Name on July 29, 2001.
The Panel accepts Respondent’s evidence that there was no targeting of Complainant’s mark. Moreover, it appears to this Panel that any links to Complainant’s competitors on Respondent’s website were de minimus and that the content posted on Respondent’s website was overwhelmingly generic in nature.
The Panel finds that Complainant has not satisfied the second element, Policy Paragraph 4(a)(ii).
Registration and Use in Bad Faith
Even if Complainant were able to satisfy Policy ¶ 4(a)(i) and ¶ 4(a)(ii), Complainant could not prevail in these administrative proceedings. Complainant would be unable, in any event, to show that Respondent, who registered the DDN before Complainant had acquired any trademarks right, acted in bad faith in registering the DDN.
Respondent registered the DDN prior in time to Complainant acquiring rights in and to its trademark, thereby precluding a finding of bad faith registration and use.
The Panel finds that Complainant has not satisfied the third element, Policy Paragraph 4(a)(iii).
Reverse Domain Name Hijacking
The Panel concludes that Complainant instituted these UDRP proceedings knowing that the Respondent was prior in time in registering the DDN and that Complainant could not possibly establish the element of bad faith registration by Respondent, which is required under the Policy Paragraph 4(a)(iii).
It appears to the Panel likely that Complainant instituted the present UDRP action as a “Plan B”, knowing full well that Complainant could not establish the required element of bad faith registration and use by Respondent, as a means of exerting pressure unfairly on Respondent with a view to acquiring the Disputed Domain Name for itself.
The Panel finds that Complainant has engaged in Reverse Domain Name Hijacking.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED. The Panel further finds that Complainant engaged in reverse domain name hijacking.
Accordingly, it is Ordered that the <aquafx.com> domain name REMAIN WITH Respondent.
David L. Kreider, Esq., as the Chair, along with Ho-Hyun Nahm, Esq.,
and The Honorable Neil Anthony Brown QC, Panelists.
Dated: June 25, 2018