3rd Aug 2013

NATIONAL ARBITRATION FORUM

 

DECISION

Consuela, LLC v. Alberta Hot Rods

Claim Number: FA1306001504547

 

PARTIES

Complainant is Consuela, LLC (“Complainant”), represented by Erik Paul Belt of McCarter English, LLP, Massachusetts, USA.  Respondent is Alberta Hot Rods (“Respondent”), represented by Ari Goldberger of Esqwire.com Law Firm, New Jersey, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <consuela.com>, registered with GoDaddy.com, LLC.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Diane Cabell and the Hon. Carolyn Johnson as Panelists.  Richard Hill as Presiding Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 12, 2013; the National Arbitration Forum received payment on June 12, 2013.

On June 18, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <consuela.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name.  GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 June 21, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 11, 2013 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@consuela.com.  Also on June 21, 2013, 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 July 11, 2013.

The Complainant submitted an Additional Submission on July 16, 2013.  This Additional Submission was deemed compliant with Supplemental Rule 7.

The Respondent submitted an Additional Submission on July 19, 2013.

On July 24, 2013, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Diane Cabell and the Hon. Carolyn Johnson as Panelists; and Richard Hill as Presiding Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the National Arbitration 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

The Complainant alleges that it sells home décor, clothing, and accessories under the trademark CONSUELA.  It has continuously used its marks in interstate commerce in connection with home décor, clothing and accessories since at least as early as February 2006.  It first registered its trademark in 2008.

The Complainant states that the disputed domain name was registered in 1999.

According to the Complainant, the disputed domain name is identical to its mark.

The Complainant states that the Respondent has no rights or legitimate interests in the disputed domain name, in particular because it is not making any use of that domain name.

The Complainant alleges that the disputed domain name was registered in bad faith, in particular because the Respondent has been involved in approximately 25 UDRP proceedings and has been found to have registered and used several domain names in bad faith, and because the Respondent has not used the disputed domain name.

  1. Respondent

The Respondent points out that it registered the disputed domain name well before the Complainant claims to have trademark rights in the mark CONSUELA. 

The Respondent states that it is in the business of registering common names as domain names for investment, and the disputed domain name is indeed a common first name in Spanish.  The disputed domain name has resolved to active web sites at various times in the past.

The Respondent invokes the doctrine of laches.  For the reasons set forth below, the Panel will not summarize those arguments.

The Respondent alleges that the Complainant has attempted to engage in Reverse Domain Name Hijacking.

  1. Additional Submissions

In its Additional Submission, the Complainant presses its case, but states that the disputed domain name did indeed resolve to some web sites in the past, in particular adult entertainment web sites.  It states that this is not a legitimate use of the disputed domain name.  The Complainant asserts that it did not engage in Reverse Domain Name Hijacking and it states that the laches defense does not apply in the present case.  It does not address the issue, raised by the Respondent, that previous panels have consistently held that bad faith cannot be found when the registration of the disputed domain name precedes the complainant’s trademark rights.

In its Additional Submission, the Respondent reiterates that it registered the disputed domain name well before the Complainant first used its mark in business, and it states that its use of the disputed domain name for adult sites was legitimate in the sense of the Policy.  It also reiterates that the Complainant has attempted to engage in Reverse Domain Name Hijacking. 

FINDINGS

The disputed domain name was registered in 1999.

The Complainant first used its mark in 2006.

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.

Before discussing the three elements of the Policy, the Panel will deal with the issue of laches, raised by the Respondent.  For the reasons set forth below, the Panel finds that it need not consider this matter: other elements suffice to dispose of the case.

Identical and/or Confusingly Similar

The disputed domain name is obviously identical to the Complainant’s trademark.

Rights or Legitimate Interests

For the reasons set forth below, a majority of the Panel will not consider this element of the Policy.  See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary).

A minority of the Panel finds that both parties have established rights in the disputed domain name.

Registration and Use in Bad Faith

The Respondent notes that it registered the disputed domain name in 1999, while the Complainant first applied for its trademark in 2008 and has cited a first use date of February, 2006.  Because the Respondent’s registration of the disputed domain name predates the Complainant’s mark, the Panel unanimously finds that the Respondent could not have registered the disputed domain name in bad faith.  See Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001) (finding that it is “impossible” for the respondent to register disputed domain name in bad faith if the complainant company did not exist at the time of registration); see also Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb. Forum May 16, 2007) (determining the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark).

Indeed, this is well settled case law under the Policy, see 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, at:

  http://www.wipo.int/amc/en/domains/search/overview2.0/index.html

This paragraph states:

… when a domain name is registered by the respondent before the complainant’s relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant’s then non-existent right.

Reverse Domain Name Hijacking

Paragraph 1 of the Rules defines Reverse Domain Name Hijacking:

Reverse Domain Name Hijacking means using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.

The Respondent invokes this provision when it requests the Panel to find that the Complainant is using the Policy in a bad faith attempt to deprive a registered domain name holder of a domain name.

The general conditions for a finding of bad faith on the part of the Complainant are well stated in Smart Design LLC v. Carolyn Hughes, D2000-0993 (WIPO, October 18, 2000):

Clearly, the launching of an unjustifiable Complaint with malice aforethought qualifies, as would the pursuit of a Complaint after the Complainant knew it to be insupportable.

These conditions are confirmed in Goldline Int’l, Inc. v. Gold Line, D2000-1151 (WIPO, January 4, 2001) and Sydney Opera House Trust v. Trilynx Pty. Ltd., D2000-1224 (WIPO, October 31, 2000) (where the condition is stated as “the respondent must show knowledge on the part of the complainant of the respondent’s right or legitimate interest in the disputed domain name and evidence of harassment or similar conduct by the complainant in the face of such knowledge”), which in turn cites Plan Express Inc. v. Plan Express, D2000-0565 (WIPO, July 17, 2000).

The Respondent notes that its registration of the disputed domain name far predates Complainant’s claim of rights in the CONSUELA mark, and that the Complainant knew this and acknowleged it in the Complaint.  Thus the Complainant should have known that it was unable to prove that the Respondentregistered and is using the disputed domain name in bad faith.  A majority of the Panel finds that this alone suffices to establish Reverse Domain Name Hijacking.  See Futuris Auto. Interiors (Australia) Pty Ltd v. X9 Interactive LLC, D2011-0596 (WIPO June 20, 2011) (“On the contrary, the Complainant’s own researches as described in the Complaint clearly demonstrate that the Respondent (or its corporate predecessor) began to use the disputed domain name in the context of a business using the term “Futuris” within a short period after registration of the disputed domain name and furthermore that this use continued over a period of many years. […] Accordingly, it is clear to a majority of the Panel that the Complainant knew or ought to have known that the Respondent’s registration and use of the disputed domain name could not, under any fair interpretation of the reasonably available facts, have constituted registration and use in bad faith.  The majority of the Panel therefore finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”); see also Pick Enters., Inc. v. Domains by Proxy, LLC, DomainsByProxy.com / Woman to Woman Healthcare / Just Us Women Health Ctr. f/k/a Woman to Woman Health Ctr., D2012-1555 (WIPO Sept. 22, 2012) (“Regardless of actual intent, Respondent has been put to time and expense to address a Complaint that the Panel finds objectively groundless, one as to which this Panel believes ‘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.’  These circumstances justify a finding of RDNH in this case, which the Panel accordingly makes.”)

According to the majority of the Panel, not only did the Complainant present its Complaint when it was obvious that it could not succeed, it actually pressed its case by submitting an Additional Submission which did not address the key issue raised by the Respondent.  The Complainant thus harassed the Respondent by pursing the Complaint after the Complainant knew it to be insupportable.

A minority of the Panel is of the view that reverse domain name hijacking should not be found without evidence of some knowing effort to seize someone else’s intellectual property.  However, the minority accepts the majority’s view.

Consequently, the Panel finds that the Complaint was submitted in an attempt to the hijack the Respondent’s domain name. 

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 <consuela.com> domain name REMAIN WITH Respondent.

The Panel finds that the Complainant attempted to engage in Reverse Domain Name Hijacking.

Richard Hill, Presiding Panelist

Diane Cabell                                                                         the Hon. Carolyn Johnson
Panelist                                                                                  Panelist

Dated:  August 3, 2013