WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Foundation Fitness LLC v. Jiang Zhou
Case No. D2015-1054
1. The Parties
The Complainant is Foundation Fitness LLC of Portland, Oregon, United States of America (“US”) represented by Dorsey & Whitney, LLP, US.
The Respondent is Jiang Zhou of Auckland, New Zealand, represented by ESQwire.com P. C. Law Firm, US.
2. The Domain Name and Registrar
The disputed domain name <stages.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 19, 2015. On June 19, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 19, 2015, 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 received two email communications from the Respondent on June 20 and June 24, 2015.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 30, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 20, 2015. The Respondent did not submit a formal Response by that date. Accordingly, the Center sent the parties a procedural update regarding the due date for Response on July 21, 2015.
On the same day, the Respondent’s legal representative, Jason Schaeffer of ESQwire.com P. C. Law Firm, filed a Response by email. On July 22, 2015, Mr. Schaeffer filed a “Petition for the panel to exercise its discretion under UDRP Rule 10 to give full consideration to response unintentionally filed late due to excusable neglect” explaining the delay as having been caused by a technical error. The Petition was supported by a personal declaration of Mr Schaeffer.
The Center acknowledged receipt of the Respondent’s belated Response and Petition on July 23, 2015 and correctly informed the Respondent that the Panel, once appointed, would decide whether to admit and consider the Response.
The Complainant requested that the dispute be decided by a single-member Panel. Exercising its right under the Rules, paragraph 5(b)(iv) and (v), the Respondent requested a three-member Panel. In accordance with the Rules, paragraph 6(e) and the Supplemental Rules, paragraph 8, the Center accordingly appointed Timothy Casey, the Honorable Neil Brown Q.C., and John Swinson as panelists in this matter on August 20, 2015. The Panel finds that it was properly constituted. Each member of 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, Foundation Fitness LLC, specializes in the creation and distribution of indoor bicycles and bicycle accessory products. It was established in the US in 2009.
The Complainant owns trade mark registrations for:
– STAGES (European Union (“EU”) No. 011360591; US No. 4508230; and Australia No. 1588177) (the “STAGES Trade Mark”);
– STAGES CYCLING (US No. 4511822 and No. 4512714; Japan No. 5687475; Republic of Korea No. 40-1039510) and STAGES POWER (US No. 4511823 and Republic of Korea (stylized) No. 40-1039414) (together the “STAGES Marks”)
These registrations are in respect of bicycle meters, bicycle parts and associated accessories (and in some cases fitness services).
The earliest of the Complainant’s registrations is the STAGES Trade Mark registered in the EU in November 2012 (No. 011360591), the remaining STAGES Marks were registered by the Complainant in 2014. The Complainant also operates a website at the domain names <stagescycling.com> and <stagesindoorcycling.com>, at which it promotes its products.
The Respondent is Jiang Zhou, an individual of New Zealand who operates a number of online business and holds registrations for many domain names.
The Disputed Domain Name was created on December 10, 2001. The Respondent purchased the Disputed Domain Name on or around December 17, 2014. The website at the Disputed Domain Name currently alternately resolves to a website advertising a computer program for the trading of stocks, a survey relating to “Telstra Internet” or a survey supposedly giving participants the chance to win vouchers for the Australian department store “MYER”.
5. Parties’ Contentions
The Complainant’s contentions are as follows.
Identical or Confusingly Similar
The Complainant’s first STAGES Marks registration dates back to November 20, 2012 and the Complainant has used the STAGES Marks in connection with its business and products since 2011. The Complainant currently sells and markets products under its STAGES Marks in Australia, New Zealand, Europe, South Africa and the US.
The Complainant’s products have been featured in various media outlets (such as the Wall Street Journal) and the STAGES Marks have become known by consumers and identify exclusively the products of the Complainant.
Given it is identical to the STAGES Trade Mark, the Disputed Domain Name is likely to confuse consumers into believing the Respondent is affiliated with, endorsed by, or sponsored by the Complainant, or that the Respondent’s use of the Disputed Domain Name is authorized by the Complainant.
Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name for the following reasons:
– Respondent has not made use of, or demonstrable preparations to use, the Disputed Domain Name or any other similar name in connection with a bona fide offering of goods or services. Before any notice of the dispute, the Respondent used the Disputed Domain Name to resolve to a pay-per-click website (a screenshot from 2012 is exhibited as proof) (“2012 Screenshot”) and at the time of the Complaint being filed the Disputed Domain Name re-directed users to <beijing2022.com> and did not resolve to an active website.
– The Respondent has not been commonly known by the Disputed Domain Name. Given that the Respondent is known by the names of Jiang Zhou or John Zhou, consumers accessing the website are not likely to associate the Disputed Domain Name with the Respondent rather than with the Complainant. The Complainant refers to Dell Computer Corp. v. Logo Excellence, WIPO Case No. D2001-0361.
– The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. The Disputed Domain Name has been alternately inaccessible, used as a pay-per-click site or parked with an auction site since its registration in 2001 (a screenshot from 2014 showing the Disputed Domain Name parked with Sedo is exhibited) (“2014 Screenshot”).
– The Respondent is a speculator who has registered over 200 domain names in hopes of later selling them for profit and speculation does not constitute a legitimate interest (referring to the UDRP decision J.Crew International, Inc. v crew.com, WIPO Case No. D2000-0054).
Registration and Use in Bad Faith
The Complainant submits that the Disputed Domain Name was acquired by the Respondent primarily for the purpose of selling it to the Complainant or another trade mark owner for valuable consideration well in excess of the Respondent’s out-of-pocket costs related to the Disputed Domain Name. The Complainant has provided evidence of an exchange between the Complainant and the Respondent initiated by the Complainant, in which the Complainant made an offer to purchase the Disputed Domain Name for USD 800. The Respondent replied: “I will not consider any offer below $xxxxxx, hope it is in your budget range.”
The Complainant also relies on the following factors to prove that the Respondent has registered and uses the Disputed Domain Name in bad faith:
– The Respondent has exhibited a pattern of registering domain names featuring names and trade marks in which he has no legitimate interests. Including <directtvsports.com>, <bellavita.com>, <nicolekidman.org>, <peterjackson.co.nz>, <tekkenmovie.com> and <wphone.com>.
– The Respondent’s use and registration of the Disputed Domain Name disrupts the Complainant’s business by depriving it of the right to host a website at <stages.com> to provide information about the Complainant’s products and services.
– The Respondent, by renewing the Disputed Domain Name registration, has breached the Respondent’s continuing duty to ensure that the Disputed Domain Name is not used in violation of another’s rights under paragraph 2 of the UDRP Policy (referring to Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, WIPO Case No. D2009-0786).
The Respondent submits the following:
Identical or Confusingly Similar
The Complainant has, to date, predominantly used the trade marks STAGES CYCLING and STAGES POWER to market its products, as opposed to the STAGES Trade Mark. Further, there is no evidence of long extensive and well known use by the Complainant.
In any event, the Disputed Domain Name is composed solely of the English dictionary word “Stages”. The Complainant does not have exclusive rights to this commonly used dictionary word and may not prevent others from using the term in its purely descriptive sense.
Rights or Legitimate Interests
The Respondent claims he purchased the Disputed Domain Name from its prior owner on or around December 17, 2014 and that he acquired the Disputed Domain Name because of the plain meaning of the word and his own professional and personal interest developing a performance and theater related website.
At the time of registration, he had no knowledge of the Complainant or the STAGES Marks or had any trade mark in mind. The Respondent has provided sworn testimony to this effect. The Complainant’s STAGES Marks are not well known to the general public (particularly not outside of the sport of cycling), and not well known in New Zealand where the Respondent resides. The Respondent refers to a number of UDRP decisions to support the argument that a party cannot infer that their mark is well known in another country just because they have a trade mark in their home country.
Prior to receiving the Complaint, the Respondent claims the Disputed Domain Name resolved to a website hosting videos of his children’s on stage performances and later to a domain name parking page that showed descriptive links related to theater and the stage.
The fact that the Respondent had a link offering the Disputed Domain Name for sale is not improper and does not make the Respondent’s use of the Disputed Domain Name illegitimate. The business of creating and subsequently selling generic domain names is a legitimate business endeavor. Accordingly, the Respondent’s offer to sell the Disputed Domain Name and response to an unsolicited offer without any evidence of targeting the Complainant is a bona fide activity under paragraph 4(c)(i) of the Policy.
Registration and Use in Bad Faith
There is a no evidence of bad faith registration or use. The Respondent simply registered the Disputed Domain Name because it incorporated a common English word.
The Respondent has not used the Disputed Domain Name for cycling products or anything remotely related to the Complainant’s business or to target the Complainant in any bad faith manner.
The Respondent did not contact the Complainant to sell the Disputed Domain Name, rather there was an unsolicited offer made to the Respondent indicating the Complainant’s desire to purchase it to which the Respondent simply replied.
The Respondent does not target trade marks, it has registered many common word domain names and created websites for such domains, and is currently creating online businesses for <megastage.com>; <complain.com> and <kebabs.com>.
Reverse Domain Name Hijacking
The Respondent also submits that the Complainant has abused the UDRP process by bringing a case which it must have known had no basis, in the hope of obtaining a default judgment against the Respondent and securing the Disputed Domain Name despite its failed attempt to purchase it. The Respondent submits this warrants a finding of reverse domain name hijacking under the UDRP Rules.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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.
The onus of proving these elements is on the Complainant.
A. Procedural Issues
Notwithstanding the Respondent’s failure to submit his Response in a timely fashion, the Panel considers it appropriate to exercise its discretion under paragraph 10 of the Rules to admit and consider the Response.
The Response, containing attached documentary evidence, was received by the Center prior to the appointment of the Panel and was properly transmitted to the Complainant. The Response was filed late due to no fault of the Respondent. The Panel concludes that consideration of the Response will serve the interests of justice, by affording the Respondent a full opportunity to be heard, and that, in the circumstances, such consideration will neither prejudice the Complainant nor engender delay in the proceedings. Accordingly, the Response will be admitted and its contents will be taken into account by the Panel.
B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Complainant’s trade marks.
The Complainant’s STAGES Trade Mark consists solely of the word “Stages”. The Disputed Domain Name is <stages.com>. It is well established that the “.com” addition is not sufficient to separate the domain name from the mark under the Policy.
The Disputed Domain Name is thus identical to the Complainant’s STAGES Trade Mark, in accordance with paragraph 4(a)(i) of the Policy.
The Complainant succeeds on the first element of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
It is unclear, based on the evidence submitted by the parties and the Panel’s independent searches, what use the Respondent has made of the Disputed Domain Name to date. It does not appear that the Respondent has ever used the Disputed Domain Name for its common or dictionary meaning.
Common words and descriptive terms have been repeatedly held by UDRP panels to be legitimately subject to registration as domain names on a “first come, first served” basis (Zero International Holding GmbH & Co. Kommanditgesellschaft v. Beyonet Services and Stephen Urich, WIPO Case No. D2000-0161) and where the goods or services offered on a website specifically relate to the generic or descriptive meaning of the domain name, the registrant is making the very kind of bona fide offering that is sufficient to establish legitimate interests under the Policy (see, e.g., EAuto, L.L.C. v. EAuto Parts, WIPO Case No. D2000-0096 and Commune of Zermatt and Zermatt Tourismus v. Activelifestyle Travel Network, WIPO Case No. D2007-1318).
The 2012 Screenshot put on by the Complainant pre-dates ownership of the Disputed Domain Name by the Respondent and is therefore irrelevant. It is also unclear whether the 2014 Screenshot predates the Respondent’s acquisition of the Disputed Domain Name.
The evidence supporting the Respondent’s claims of previously using the Disputed Domain Name to resolve to a website hosting videos of his son’s performances and to display advertising links related to the common meaning of the Disputed Domain Name is thin. Equally, the Panel would have expected the Respondent’s claim that he has contacted programmers and website developers in preparation for the development of a business around the descriptive meaning of the Disputed Domain Name to be substantiated by demonstrative evidence.
At the time of filing their respective submissions, both parties submitted that the Disputed Domain Name pointed at an empty page, yet a Panel member observed that it currently alternately resolves to websites displaying third-party advertisements unrelated to the meaning of the word “stages”, and on a few occasions, leads to dubious “survey” type windows appearing in the viewer’s browser.
The Panel is thus sceptical as to whether the Respondent’s allegations of use can amount to a right or legitimate interest in the Disputed Domain Name under paragraph 4(c)(i) or otherwise. However, the Panel does not find it necessary to reach a conclusion on this question, given the Panel’s unanimous view that Complainant has not established registration and use of the Disputed Domain Name in bad faith.
D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
Subparagraph 4(b) of the Policy states that any of the following circumstances in particular (but without limitation) shall be considered evidence that the registration or use of the Disputed Domain Name is in bad faith:
(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; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(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 has not demonstrated any of the indicators of bad faith registration and use listed at paragraph 4(b) of the Policy. In particular, the Complainant’s arguments do not support an inference that the Respondent must have registered the Disputed Domain Name in an effort to exploit the STAGES Marks.
(i) Registered primarily for selling to the Complainant
The Complainant has submitted that the Disputed Domain Name was acquired by the Respondent primarily for the purpose of selling it to the Complainant or another trade mark owner for valuable consideration well in excess of the Respondent’s out-of-pocket costs related to the Disputed Domain Name. The Panel finds that this submission is not made out.
The Complainant has not suggested or submitted evidence proving that the Respondent contacted the Complainant in order to sell the Disputed Domain Name on his own initiative, before the Complainant contacted the Respondent in February 2015. The Panel regards the following comments in Barlow Lyde & Gilbert v. The Business Law Group, WIPO Case No. D2005-0493, as applicable to this proceeding:
“Standing alone, there is nothing wrong with offering to sell a domain name at a high price. It is a very common business practice. Respondent did not initiate contact with Complainant. It responded to contact from Complainant concerning the domain name. There is nothing here to show that Respondent took any interest in Complainant prior to being contacted by it. The Panel finds that Complainant has failed to establish that Respondent registered the disputed domain name with the intention to sell it to Complainant.”
There is no indication that the Respondent was aware of or interested in the Complainant at the time of registration, or later, prior to the contact initiated by the Complainant. The Respondent has provided plausible reasons for choosing and using the Disputed Domain Name, namely, its intrinsic value as a dictionary word, his Internet businesses and family interests, and his denial of actual knowledge of the STAGES Marks. That denial is credible in the case of an individual in New Zealand in an unrelated line of business, particularly given the Complainant’s recent establishment.
The Complainant’s earliest claim to the use of the STAGES Marks is 2011, that is, more than ten years after the Disputed Domain Name was first created, and three years prior to the Respondent’s registration of the Disputed Domain Name. Further, the earliest STAGES Mark was registered by the Complainant in the EU in 2012 and the other STAGES Marks were registered in the same year the Respondent purchased the Disputed Domain Name. The Panel adopts the well-established view that nothing in the Policy can be construed as requiring a person registering a domain name to carry out a prior trade mark search in every country of the world for conflicting trade mark rights, whether upon initial registration or renewal.
The evidence supplied by the Complainant in this proceeding does not support the conclusion that the word “Stages” alone, used by thousands of varied businesses, had by 2014 acquired distinctiveness as associated with the Complainant’s products. The Complainant has not provided evidence in support of the claim that it distributes its products in New Zealand. As to the media article provided to support the Complainant’s products have been featured in various media outlets, it mentions the Complainant’s “Stages Power Meter” product in small font, along with seven competitors’ bike gear products. The Respondent’s denial of knowledge of the Complainant is therefore not discredited.
(ii) Registered in order to prevent the owner
The Complainant contends that the Respondent’s 200 domain name registrations, including six domain names specifically highlighted by the Complainant, establish a pattern of bad faith conduct. Past UDRP panels have noted that similar fact evidence – in the nature of an alleged “pattern of conduct” – must be viewed with a high degree of scrutiny (see, e.g., Investone Retirement Specialists, Inc. v. Motohisa Ohno, WIPO Case No. D2005-0643).
A review of the domain names currently owned by the Respondent reveals a pattern of registering names comprised of attractive ordinary single words or multiple words combined in attractive ways. The Panel has reviewed the full list and views the vast majority of the names as innocuous; for example, <ancientwood.co.nz>; <betterfilm.com>; <bestfragrance.com>; <cphone.com>; and <dreamdesign.com>.
The fact that the Respondent has a large portfolio of such domain names, some of which he obviously intends not to use, but to sell, is not in itself probative of bad faith. It is well established that mere registration (or general offers to sell) of domain names which consist of generic, common, or descriptive terms is not of its own account an act of bad faith (Allocation Network GmbH v Steve Gregory, WIPO Case No. D2000-0016).
The Panel does not believe that the registration of the six examples cited by the Complainant gives rises to the level of a “pattern” of conduct, particularly where some of the names in question are relatively obscure from a trade mark perspective (for example, <wphone.com>).
Given that the Panel’s searches have not revealed any previous UDRP proceedings involving the Respondent and in light of the Respondent sworn evidence of creating websites for a number of common word domain names which he has registered, the Panel is not prepared to find a pattern of abusive registrations.
(iii) Registered to create confusion
The Panel adopts the view expressed in Investone Retirement Specialists, Inc. v. Motohisa Ohno (WIPO Case No. D2005-0643) that “it will not be sufficient to demonstrate that the Respondent’s conduct was directed to a mark in the abstract; rather, there must be a nexus between the mark and the Complainant, which is known to the Respondent, before a finding of intentional misappropriation of the rights of that brand owner can be made.”
Given the significant third party use pointed to by the Respondent (including that Google search results for “Stages” provide 1,250,000,000 results of which, at least the first two pages show no reference to Complainant) and the Panel’s finding that the Respondent’s denial of knowledge of the Complainant has not been discredited, the Panel is not willing to find that the Respondent intentionally attempted to attract business to his site by creating a likelihood of confusion with the STAGES Marks as to the source, sponsorship, affiliation or endorsement of the web site or related services.
Thus, the Panel finds that the Complainant has not established that the Disputed Domain Name has been registered, or is being used in bad faith.
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 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”. 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”.
A finding of reverse domain name hijacking is warranted if the Complainant 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 (Futureworld Consultancy (Pty) Limited v. Online Advice, WIPO Case No. D2003-0297). The Panel finds that, in light of the lack of evidence brought forward to substantiate the allegation of bad faith by the Respondent, the Complainant should have known, before it filed this case, that it lacked a genuine claim under the UDRP.
The Panel is also of the opinion that this proceeding was brought in bad faith for reasons identical to those found in carsales.com.au Limited v. Alton L. Flanders, WIPO Case No. D2004-0047, namely:
– the Complainant produced no evidence that it had attempted to contact the Respondent and negotiate a resolution of the matter prior to initiating the proceeding;
– the Disputed Domain Name consists of a common, descriptive English word; and
– the Complainant knew that Respondent had registered other domain names of which an overwhelming majority consist of common and/or descriptive words and phrases together with the generic Top Level Domain names.
The Panel is also concerned that this is a case where the Complainant adopted a very generic term as its trade mark, one that is also descriptive of the different stages of a bike tour race, in full knowledge that it did not have the “.com” domain at the time of adoption, and then filed the Complaint in an attempt to remove it from someone that appears to have bought it legitimately. The Panel therefore finds that the proceedings diminishing the credibility of the entire UDRP process and constitutes an attempt at Reverse Domain Name Hijacking.
For the foregoing reasons, the Complaint is denied.
The Honorable Neil Brown Q.C.
Date: September 3, 2015