Darren Findling Law Firm PLC v. Kevin Wade / App Developers
Claim Number: FA1910001866821
Complainant is Darren Findling Law Firm PLC (“Complainant”), represented by Darren Findling Law Firm PLC, Michigan, USA. Respondent is Kevin Wade / App Developers (“Respondent”), represented by Jason Schaeffer of ESQwire.com, P.C. The Domain Name Law Firm, New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <probatepro.com>, registered with Wild West Domains, Llc.
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.
Hon. Karl V. Fink (Ret). (Chair); Nathalie Dreyfus and Darryl C. Wilson as Panelists.
Complainant submitted a Complaint to the Forum electronically on October 15, 2019; the Forum received payment on October 15, 2019.
On October 16, 2019, Wild West Domains, Llc confirmed by e-mail to the Forum that the <probatepro.com> domain name is registered with Wild West Domains, Llc and that Respondent is the current registrant of the name. Wild West Domains, Llc has verified that Respondent is bound by the Wild West Domains, 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 October 21, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 15, 2019 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 firstname.lastname@example.org. Also on October 21, 2019, 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 November 15, 2019.
On November 21, 2019, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed Hon. Karl V. Fink (Ret). (Chair); Nathalie Dreyfus and Darryl C. Wilson 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The complainant provides legal services and conducts business online. The Complainant has common law rights in THE PROBATE PRO mark through the use of its mark in commerce. Respondent’s <probatepro.com> domain name is identical or confusingly similar to Complainant’s mark as it only omits the word “the” and adds the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <probatepro.com> domain name. The Respondent is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s disputed domain name resolves to an inactive webpage.
Respondent registered and uses the <propbatepro.com> disputed domain name in bad faith. Respondent registered the domain name for the purpose of selling, renting, or transferring the domain name for more than its market value. Respondent also registered the disputed domain name in order to prevent Complainant from reflecting its mark in a corresponding domain name. In addition, Respondent attempts to disrupt Complainant’s business and attract for commercial gain users to its website by creating a likelihood of confusion with the Complainant’s mark.
Respondent is a citizen of the United States who has been in the business of registering and developing common word domain names for investment and development since 2002. Respondent has registered several domain names similar to the disputed domain name. Respondent purchased the disputed domain name <probatepro.com> from its previous owner on a domain marketplace in 2006. Complainant’s common law rights argument fails because Complainant’s marks have not acquired secondary meaning because the purported mark is merely descriptive according to the USPTO. Additionally, Respondent’s domain name is not identical or confusingly similar.
Respondent has rights and legitimate interests in the <probatepro.com> domain name. The domain name was not registered with a trademark in mind as Respondent has a pattern of descriptive domain name registration. Additionally, Respondent responded to Complainant’s inquiries regarding purchasing the domain.
Respondent did not register the <probatepro.com> domain name in bad faith. Respondent purchased the domain name from its prior owner and registered the domain name because it incorporates descriptive terms. Additionally, Respondent did not register the domain name in an attempt to target Complainant as Respondent did not know of the Complainant’s alleged trademark. Further, Complainant submitted an unsolicited offer to purchase the domain name from Respondent. Finally, Complainant’s inaction for ten years to obtain the domain name fails to demonstrate the domain name was registered in bad faith. Complainant engages in reverse domain name hijacking.
After reviewing Complainant’s and Respondent’s submissions, the Panel finds that Complainant has not proved it is entitled to a transfer of the domain name.
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 and Rights or Legitimate Interests
Since the Panel concludes that Complainant has not established that the domain name was registered and used in bad faith, the Panel will not analyze the other two elements of the Policy. See Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) (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); see also Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) (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)).
Registration and Use in Bad Faith
According to the WHOIS information, the disputed domain name was created on October 28, 1998 and acquired by Respondent on September 25, 2006. Complainant’s first use of the mark was in 2009. Since Respondent’s registration of the <probatepro.com> domain name predates Complainant’s first claimed rights in THE PROBATE PRO mark, Complainant cannot prove registration in bad faith per Policy ¶ 4(a)(iii), as the Policy requires a showing of bad faith registration and use. See Platterz v. Andrew Melcher, FA 1729887 (Forum Jun. 19, 2017) (“Whatever the merits of Complainant’s arguments that Respondent is using the Domain Name in bad faith, those arguments are irrelevant, as a complainant must prove both bad faith registration and bad faith use in order to prevail.”); see also Faster Faster, Inc. DBA Alta Motors v. Jeongho Yoon c/o AltaMart, FA 1708272 (Forum Feb. 6, 2017) (“Respondent registered the domain name more than a decade before Complainant introduced the ALTA MOTORS mark in commerce. Respondent therefore could not have entertained bad faith intentions respecting the mark because it could not have contemplated Complainant’s then non-existent rights in [the mark] at the moment the domain name was registered.”).
Complainant has not proved this element.
Reverse Domain Name Hijacking
Although the Panel has found that Complainant has failed to satisfy its burden under the Policy, this does not necessarily require a finding of reverse domain name hijacking by Complainant in 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). The Panel finds that Respondent has not proved that Complainant knew it could not establish all three elements. Therefore, reverse domain name hijacking has not been proved.
Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall NOT BE GRANTED.
Accordingly, it is ORDERED that the <probatepro.com> domain name REMAIN with Respondent.
Hon. Karl V. Fink (Ret). (Chair); Nathalie Dreyfus and Darryl C. Wilson as Panelists as Panelists.
Hon. Karl V. Fink (Ret.), for the Panel
Dated: December 2, 2019