5th Sep 2014

 

NATIONAL ARBITRATION FORUM

 

DECISION

 

Globeway LLC v. Domain Administrator / Vertical Axis Inc.

Claim Number: FA1407001571651

 

PARTIES

Complainant is Globeway LLC (“Complainant”), West Virginia, USA.  Respondent is Domain Administrator / Vertical Axis Inc. (“Respondent”), represented by Ari Goldberger and Jason Schaeffer of Esqwire.com, New Jersey, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <globeway.com>, registered with FABULOUS.COM PTY LTD.

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.

Nathalie Dreyfus, G. Gervaise Davis and The Honourable Neil Anthony Brown QC, as Panelists. 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 25, 2014; the National Arbitration Forum received payment on July 25, 2014.

On July 27, 2014, FABULOUS.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <globeway.com> domain name is registered with FABULOUS.COM PTY LTD. and that Respondent is the current registrant of the name.  FABULOUS.COM PTY LTD. has verified that Respondent is bound by the FABULOUS.COM PTY LTD. 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 July 28, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 18, 2014 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@globeway.com.  Also on July 28, 2014, 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 August 18, 2014.

Respondent submitted for a three-member Panel, which was timely filed on August 18, 2014. 

Following the submission of the response, Complainant informally requested that the pending proceeding be withdrawn. 

On August 27, 2014, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Nathalie Dreyfus, G. Gervaise Davis and The Honourable Neil Anthony Brown QC, as Panelists. 

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

A. Complainant

a) Complainant contends that this action is based on the trademarked name of GLOBALWAY in which Complainant purportedly holds common law rights based on use. Complainant first registered GLOBEWAY, a Limited Liability Corporation, in Delaware on January 28, 2014. Complainant provides that on February 5, 2014, materials were sent to clients stating that a corporation called GLOBEWAY had been formed. A logo was created and delivered on April 14, 2014.  Complainant has done business in two states. The purpose of Complainants business is to enhance Internet users’ ability to conduct better web searches. Complainant asserts its common law rights based on the mentioned use above to the trademarked name of GLOBEWAY.

b) Complainant contends that the disputed domain name <globeway.com> should be transferred “because it is identical, or in the alternative, confusingly similar to the trademark in which the Complainant has rights.” As a result of the Respondent’s use of this domain name, Complainant has had to suspend progress in business performance.  
c) Complainant contends that the Respondent has no rights to the domain name already in use and trademarked by GLOBEWAY and that Respondent is “cybersquatting on the name and now offering it for sale or lease, even after being informed that GLOBEWAY is a trademarked name.”  The Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name and the domain name should be transferred to Complainant as the domain name was only registered after Complainant laid out its plan to use the GLOBEWAY LLC mark for its business.
d) It should be considered, as being used in bad faith since, according to the Complainant, Respondent is not using the domain name “for any other purpose except to attempt to exhort money in bad faith to sell it to GLOBEWAY or the highest bidder.”     

B. Respondent

a) Respondent contends that there is not enough supporting evidence to demonstrate that there is a GLOBEWAY trademark or furthermore, that Complainant is the exclusive user of such a mark.
b) Respondent has a legitimate interest in the domain name. Respondent’s <globeway.com> is a common and generic term which corresponds to Respondent’s business of investing in such domain names. Respondent gained this domain name between June 25 and June 27 2005, nearly 4 years after its original registration on April 11, 2001 and nearly 10 years before Complainant made any use of the alleged mark. 

c) Respondent asserts that there can be no finding of bad faith registration when the domain name was registered nearly a decade before Complainant formed its business.  Also, an offer to sell a domain name is not ipso facto evidence of bad faith. 

d) Complainant has embarked on reverse domain name hijacking.  There is no trademark filing for GLOBEWAY and the alleged business only first used a logo on April 4, 2014.  Respondent notes that a basic investigation by Complainant would have shown that the domain name existed for years prior to the Complainant’s business formation. Complainant’s failure to investigate the registrar of the domain name <globeway.com> before forming and registering its business is not what the UDRP is intended to remedy.

C. Additional Submissions

Following the submission of the Respondent’s response, Complainant informally requested that the pending proceeding be withdrawn. 

DISCUSSION & FINDINGS

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.

Preliminary Issue: Request to Withdraw

On August 21, 2014, following the submission of the response on August 18, 2014, Claimant informally requested that the pending proceeding be withdrawn.  As revealed in email correspondences between Complainant and a NAF Case Coordinator, Complainant’s reason for requesting a withdrawal was because, as stated “new information has come to light and circumstances have changed.” Complainant thereby requests to “let the respondent enjoy the fruits of having the Globeway.com domain name.”

This Panel is not in favor of allowing Complainant’s request to withdraw and dismiss the complaint. This Panel’s investigation of this complaint aims to uphold and protect the order and integrity of the UDRP process. See Jessica Perkins and James Perkins – Mama May I, LLC. v. Chris Phillips FA 1445335 (Nat. Arb. Forum July 2, 2012) (running parallel to the maxim, “Equity delights to do justice and not by halves,” the findings in this case provide that withdrawal is an unacceptable outcome for Complainants ruled to have engaged in Reverse Domain Name Hijacking.  In light of the facts presented by Respondent in the response, to which the Panel will address in due course, it is this Panel’s right to dismiss Complainant’s request for withdrawal.  

Identical and/or Confusingly Similar

Complainant admits that at one point “we believed we had actually registered the name, but a mistake was made for an unknown reason and the name was not registered as we had believed.” This is irrelevant. Complainant must demonstrate its right in the mark in some way. See Zee TV USA, INC. v Siddiqi FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Either trademark registration or a common law rights through secondary meaning and continuous use must be proved for Complainant to establish rights in a mark.

There is insufficient evidence in the record to show that Complainant’s mark has achieved the prerequisite notoriety necessary to be viewed as a trademark under Policy ¶ 4(a)(i). See Chicago Rest. & Entm’t Guide, Inc. v. Polat, FA 1310901 (Nat. Arb. Forum Apr. 22 2010) (failing to find the common law rights as “the claimed mark is comprised of two common and generic, descriptive or geographic terms, requiring very strong evidence in order to establish secondary meaning” and Complainant failed to provide the required evidence to show secondary meaning).   

Complainant provides business registration certificates in two states, a patent filing receipt dated 5/23/2014, a logo and an example of the body of a letter sent to a client.  Complainant, however, has not established sufficient secondary meaning in the mark to create common law rights in the mark. See Lawrence Gurreri v. To Thai Ninh, FA 1328554 (Nat. Arb. Forum July 12, 2010) (where Complainant’s submission of a screen shot of a website was deemed to be insufficient evidence in determining secondary meaning).

The Complainant has not submitted any documents that qualify as sufficient evidence of actual and continuous commercial use.  Complainant does not demonstrate that the mark has attained the requisite secondary meaning under Policy ¶ 4(a)(i). See Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (failing to find common law rights where the complainant provided little evidence showing the extent of its use of the mark over the three years that the complainant claimed to have been using the mark); see also Build-A-Bear Workshop, Inc. v. Pallone, FA 874279 (Nat. Arb. Forum Mar. 1, 2007) (finding that the complainant did not establish common law rights in the BEAR BUILDER or BEAR BUILDERS marks because the evidence it submitted was insufficient to show the mark had acquired any secondary meaning); Best Little Sites, LLC v. Adobo Games / Argene Tanyong, FA 1394617 (Nat. Arb. Forum Aug. 11, 2011) (Complainant provided no evidence of secondary meaning beyond the assertion that the mark has been in actual and continuous commercial use).

The Panel finds that Complainant has failed to satisfy Policy ¶ 4(a)(i).

The Panel, having found that Complainant has not established rights in its GLOBEWAY mark under Policy ¶ 4(a)(i), finds it unnecessary to consider Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii). 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 elements unnecessary).

Rights or Legitimate Interests

Because of the reasons the Panel gives in its discussion of Policy ¶ 4(a)(i), the Panel declines to analyze Policy ¶ 4(a)(ii).  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 elements unnecessary).

Registration and Use in Bad Faith

Based on the Panel’s finding that Complainant has not satisfied Policy ¶ 4(a)(i), the Panel has declined to analyze Policy ¶ 4(a)(iii), See Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).

Reverse Domain Name Hijacking

Within the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), Rule 1 defines reverse domain name hijacking as “using the Policy in bad faith to attempt to deprive a registered domain‑name holder of a domain name”.  See also Rule 15(e).  To prevail on such a claim, it has been held that a respondent must show either that the complainant knew of the respondent’s unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith:  Sydney Opera House Trust v. Trilynx Pty. Ltd., WIPO Case No. D2000‑1224 and Goldline International, Inc. v. Gold Line, WIPO Case No. D2000‑1151 or that the Complaint was brought in knowing disregard of the likelihood that the respondent possessed legitimate interests: Smart Design LLC v. Carolyn Hughes, WIPO Case No. D2000‑0993; or that the complainant knew it had no rights in the trademark or service mark upon which it relied and nevertheless brought the Complaint in bad faith:  Dan Zuckerman v. Vincent Peeris, WIPO Case No. DBIZ2002‑00245;  HER MAJESTY THE QUEEN, in right of her Government in New Zealand, as Trustee for the Citizens, Organisations and State of New Zealand, acting by and through the Honourable Jim Sutton, the Associate Minister of Foreign Affairs and Trade v. Virtual Countries, Inc., WIPO Case No. D2002‑0754.

Complainant states that “the unknown domain owner registered Globeway.com on June 13, 2014.” Yet, Respondent provides sufficient evidence including a WHOIS Record for Disputed Domain that the domain name was originally registered on November 4th, 2001 and purchased by the Respondent on June 25, 2005.  This is over nine years before Complainant formed its alleged business. The Complainant is incorrect about the date of registration of the domain name.  Before filing a complaint to the UDRP, Complainants ought to take precautions to present valid facts, which Complainant has not done as Complainant could have conducted a WHOIS search, which would have provided the needed information.  UDRP Rule 3 (xiv) is not complied with, as Complainant has not submitted a complaint to the best of Complainants knowledge.  It is neither complete nor accurate. 

A simple search of the WHOIS directory, to which Complainant had legal support, but still managed to get the date wrong, would have showed the Complainant that the domain name had in fact been registered since 2001. See HTL Automotive, Inc. v. Techshire, FA 1435046 (April 16, 2012), where the Panel distinguishes the types of knowledge held by a layman compared to any reasonable attorney:

While a layman might not recognize the implications of not being able to support its contentions or perhaps not be familiar with UDRP’s requirements, any reasonable attorney would have known that the Complaint could not succeed on its merit…

It should also be noticed that Complainant had legal representation on the record in this matter, although for some unexplained reason the Complainant itself was filed not by or in the name of its attorneys but by the major shareholder in the Complainant. However, Complainant’s attorneys were clearly acting for Complainant when they sent the Respondent a letter of demand on July 18, 2014 alleging “Trademark Infringement”, that the Respondent had registered the domain name on June 13, 2014 and that it was currently in violation of the relevant United States statute. Any reasonable attorney could have conducted a WHOIS search in order to verify the registration date of the domain name before sending a letter to the Respondent containing such allegations.  Since Complainant had sought and obtained legal counsel, there is no reasonable excuse for such a grave and fundamental error. See Futureworld Consultancy (Pty) Limited v. Online Advice, WIPO Case No. D2003-0297 andPersonally Cool Inc. v. Name Administration Inc. (BVI) FA 1474325 (Nat. Arb. Forum January 17, 2013) (where it is stated that a finding of Reverse Domain Name Hijacking may be made if the Complainant “knew or should have known at the time it filed the Complaint that it could not prove that the domain name was registered or used in bad faith”).

Despite the fact that Complainant and the respective legal counsel evidently did not know at the time that the Respondent had in fact registered the domain name nine years prior, they should have known and could have established that fact as the skills for verifying this matter should be possessed by any reasonable lawyer.

The Complainant had or could easily have obtained knowledge of all these facts before it brought its Complaint to the Forum. See carsales.com.au Limited v. Alton L. Flanders, D2004-0047 (WIPO April 8, 2004) (“In the Panel’s view 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,”); see also Labrada Bodybuilding Nutrition, Inc. v. Glisson, FA 250232 (Nat. Arb. Forum May 28, 2004) (finding that complainant engaged in reverse domain name hijacking where it used “the Policy as a tool to simply wrest the disputed domain name in spite of its knowledge that the Complainant was not entitled to that name and hence had no colorable claim under the Policy”).

However, it did not verify those facts and when the Complaint was prepared and filed, it perpetuated the same mistake as had been made in the attorney’s letter of demand. Thus it was alleged in the Complaint that Complainant was incorporated on January 28, 2014, that a “search” had revealed that at that time the corresponding domain name was available, but that after January 28, 2014 and in fact on June 13, 2014 the domain name had been registered by a “cybersquatter”, that it was Respondent who had done this and that the domain name had then been put up for sale. The clear thrust of Complainant’s argument was that Respondent had registered the domain name to frustrate Complainant’s new business venture and to make money improperly by selling the domain name.

All of those allegations, in so as far as they concerned Respondent were false and contrary to the facts that could easily have been obtained. Moreover, perhaps the most egregious aspect of the way in which Complainant presented its case is that its allegations were said to be based on “searches” and “research” when in fact the root cause of its problems is the apparent lack of any research having been done at all.

Finally, it should also be noted that Complainant’s new business endeavor is the development of a new Internet search engine; that being so, it could reasonably be expected that Complainant and its advisers would be familiar with WHOIS searches and related matters that could have avoided the factual mistakes and unsubstantiated allegations they have made .

In the Panel’s view the Complainant’s actions lacked attention and imposed burdens and costs upon the Respondent. The Panel is also concerned that abusive complaints risk diminishing the credibility of the entire UDRP process.

The Panel therefore finds reverse domain name hijacking.

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 <globeway.com> domain name REMAIN WITH Respondent.  The Panel also makes a finding of reverse domain name hijacking against the Complainant.

Nathalie Dreyfus, G. Gervaise Davis and The Honourable Neil Anthony Brown QC

Panelists

Dated:  September 5, 2014