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DECISION

 

Winklevoss Technologies, LLC v. MARK JOHNSON

Claim Number: FA1701001713934

PARTIES

Complainant is Winklevoss Technologies, LLC (“Complainant”), Connecticut, USA.  Respondent is MARK JOHNSON (“Respondent”), represented by Ari Goldberger of Esqwire.com, New Jersey, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <wintech.com>, registered with eNom, Inc.

 

PANEL

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.

 

Jaime Delgado (Chair), The Honourable Neil Antony Brown QC, Michael A. Albert, Panelists.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on January 24, 2017; the Forum received payment on January 24, 2017.

 

On January 25, 2017, eNom, Inc. confirmed by e-mail to the Forum the <wintech.com> domain name is registered with eNom, Inc. and Respondent is the current registrant of the name.  eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 January 26, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 21, 2017 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 postmaster@wintech.com.  Also on January 26, 2017, 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 February 21, 2017.

 

On March 3, 2017 pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed Jaime Delgado (Chair), The Honourable Neil Antony Brown QC and Michael Albert, as Panelists.

 

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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

 

  1. Complainant

Complainant, Winklevoss Technologies, LLC, is a computer programming company. In connection with this business, Complainant uses its WINTECH mark to provide and market its software solutions. Complainant has rights to the WINTECH mark based upon multiple registrations with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,145,935, registered Mar. 24, 1998). See Compl., at Attached Annexes. 2–4. Respondent’s <wintech.com> is identical to Complainant’s WINTECH mark, as it consists of the mark in its entirety, merely adding the generic top-level domain (“gTLD”) “.com” to form a domain name.

 

Respondent has no rights or legitimate interests in the <wintech.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant granted Respondent permission to use the WINTECH mark. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services nor a legitimate noncommercial or fair use. In fact, Respondent has not actively used the domain name since its registration.

 

Respondent has registered and used the disputed domain name in bad faith. Respondent has failed to actively use the disputed domain name and has shown no demonstrable preparations to use the domain name. Such inactive use is evidence of bad faith registration and use.

 

 

  1. Respondent

Respondent contends the disputed domain name should not be considered to be identical to Complainant’s mark, as it consists of a descriptive combination of “win,” for (Microsoft) Windows, and “tech” for technology. The word “win” may also have a meaning derived from the English verb “win.” Respondent also points to extensive third-party use of the term WINTECH that is completely unrelated to Complainant as further evidence of the common descriptive nature of the term.

 

Respondent does have a legitimate interest in the disputed domain name. Respondent is a registrant of many common word domains and purchased <wintech.com> due to its inherent value as a descriptive term. Respondent’s business of investing in domain names amounts to a legitimate interest as Respondent did not target Complainant or its marks in registering the disputed domain name.

 

Respondent also did not register or use <wintech.com> in bad faith. Since the disputed domain name consists of common words and Respondent had no knowledge of Complainant prior to receiving its cease and desist letter, it is clear Respondent did not target Complainant.

 

Additionally, Respondent claims that the delay of seventeen years from its registration of the disputed domain name to the initiation of this proceeding has prejudiced Respondent and bars the Complaint under the doctrine of laches. Further, Complainant has abused this administrative proceeding when it filed this claim and a finding of reverse domain name hijacking should be awarded against Complainant.

 

 

 

 

FINDINGS

Complainant has rights to the WINTECH mark based upon multiple registrations with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,145,935, registered Mar. 24, 1998).

Respondent is the current registrant of the Domain Name <wintech.com>

 

DISCUSSION

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 or Confusingly Similar: Policy ¶ 4(a)(i).

Complainant claims rights in the WINTECH mark based upon registration of the mark with the USPTO (e.g. Reg. No. 2,145,935, registered Mar. 24, 1998). See Compl., at Attached Annexes 2–4. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Paisley Park Enters. v. Lawson, FA 384834 (Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). The Panel therefore holds that Complainant’s registration of the WINTECH mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).

 

Complainant next claims that Respondent’s <wintech.com> is identical to Complainant’s WINTECH mark, as the disputed domain name consists of the mark of its entirety, merely differing through the addition of the gTLD “.com.” Addition to a mark of a gTLD in order to form a domain name is irrelevant under Policy ¶ 4(a)(i) for the purposes of this comparison and does not distinguish the domain name from the mark. See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). Accordingly, the Panel finds the disputed domain name to be identical to the WINTECH mark pursuant to Policy ¶ 4(a)(i).

 

Respondent also contends the disputed domain name should not be considered to be identical to Complainant’s mark, as it consists of a descriptive combination of “win,” for (Microsoft) Windows, and “tech” for technology. This question is best decided under Policy ¶¶ 4(c) (ii) and (iii).

 

 

Rights and Legitimate Interests: Policy ¶ 4(a)(ii).

 

The Panel holds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii).  See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).

 

Respondent contends the fact that it registered <wintech.com> along with a wide variety of other descriptive domain names is evidence it did not target Complainant’s WINTECH mark and has demonstrated legitimate interests in the disputed domain name as an investor in generic, descriptive domain names. Evidence of rights or legitimate interests in a disputed domain name can be determined under Policy ¶ 4(c)(i) by a finding that the respondent is a generic domain name reseller with numerous similar domain names. See Franklin Mint Fed. Credit Union v. GNO, Inc., FA 860527 (Forum Mar. 9, 2007) (concluding that the respondent had rights or legitimate interests in the <fmcu.com> domain name because it was a generic domain name reseller who owned numerous four-letter domain names). Respondent points to a list of other descriptive domain names it owns. See Compl., at Attached Ex. 1, ¶ 6. The Panel agrees that Respondent’s position as a domain name investor, together with the totality of evidence indicates it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).

 

Respondent also argues that the <wintech.com> domain name consists of a descriptive combination, and therefore, Complainant does not have an exclusive monopoly on the term on the Internet.  In support of its argument, Respondent points to extensive third-party use of the term.  See  Resp. at Attached Ex. 4.T.

The Panel finds that Respondent has established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).  See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes); see also Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Forum July 23, 2004) (stating that “Complainant’s rights in the QWEST mark are limited to its application to the tele-communications industry,” where a variety of other businesses used the mark in unrelated fields).

 

Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).

          

            The Panel finds that Complainant has failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii).  See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).

 

As the Panel has concluded that Respondent has rights or legitimate interests in the <wintech.com> domain name pursuant to Policy ¶ 4(a)(ii), the Panel also finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).

 

 

Respondent contends that the <wintech.com> domain name is comprised entirely of descriptive terms that have many meanings apart from use in Complainant’s WINTECH mark.  Moreover, Respondent contends that the registration and use of domain names comprising such common terms is not necessarily done in bad faith, that Respondent is free to register a domain name consisting of common terms and that the domain name currently in dispute contains such common terms, The Panel agrees and finds that Respondent did not register or use the <wintech.com> domain name in bad faith under Policy ¶ 4(a)(iii).  See Zero Int’l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) (“Common words and descriptive terms are legitimately subject to registration as domain names on a ‘first-come, first-served’ basis.”); see also Target Brands, Inc. v. Eastwind Group, FA 267475 (Forum July 9, 2004) (holding that the respondent’s registration and use of the <target.org> domain name was not in bad faith because the complainant’s TARGET mark is a generic term); see also Miller Brewing Co. v. Hong, FA 192732 (Forum Dec. 8, 2003) (finding that because the respondent was using the <highlife.com> domain name, a generic phrase, in connection with a search engine, the respondent did not register and was not using the disputed domain name in bad faith).

 

Respondent further argues that it had no knowledge of Complainant or Complainant’s rights in the WINTECH mark until Respondent received Complainant’s cease-and-desist letter before the initiation of this proceeding. Absence of knowledge of a Complainant can be evidence that a respondent did not register a disputed domain name in bad faith. See It Takes 2 v. C.,J., FA 384923 (Forum Feb. 15, 2005) (“[I]n the absence of any evidence of knowledge on the part of Respondent of Complainant, its mark or its services at the time Respondent acquired the domain name, the Panel finds Complainant has failed to establish registration in bad faith.”). The Panel therefore finds Respondent did not register the disputed domain name in bad faith.

 

Doctrine of Laches

 

The Panel finds the application of this doctrine does not arise for consideration in this proceeding as Complainant failed to prove two of the three elements required to be proved for transfer of the domain name to Complainant.

 

 

Reverse Domain Name Hijacking

Complainant has satisfied Policy ¶ 4(a)(i), but has not satisfied the elements required by Policy ¶ 4(a)(ii) and (iii).

Having regard to the whole of the evidence and exercising its discretion, the Panel finds that Complainant has not engaged in reverse domain name hijacking.  See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy). That is so for the following reasons. Although Complainant has failed to satisfy the whole of its burden under the Policy, this does not necessarily result in a finding of reverse domain name hijacking against Complanant for bringing the instant claim.  See ECG European City Guide v. Woodell, FA 183897 (Forum Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.”); see also Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001) (noting that a finding of reverse domain name hijacking requires bad faith on the complainant’s part, which was not proven because the complainant did not know and should not have known that one of the three elements in Policy ¶ 4(a) was absent).

Having regard to the totality of the evidence, the Panel is unable to find that Complainant was motivated by bad faith in filing the proceeding.

 

 

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <wintech.com> domain name REMAIN with RESPONDENT

 

 

Jaime Delgado, Panel Chair

The Honourable  Neil Anthony Brown QC

Michael A. Albert

 

Dated:  March 13, 2017

Source: World Intellectual Property Organization (WIPO) and National Arbitration Forums (NAF)

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