ImageShack Corp. v. Steven Baxt
Claim Number: FA0710001093913
Complainant is ImageShack Corp. (“Complainant”), represented by Jack
Levin, 236 Santa Cruz Avenue, #228, Los Gatos, CA 95030. Respondent is Steven Baxt (“Respondent”), represented by Erhan
Karabardak, of Cooper Mills Lawyers, Level 4, 459
Little Collins Street,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <imageshack.com>, registered with Fabulous.com Pty Ltd.
Each of the undersigned certifies that he 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.
The Hon. Sir
Complainant submitted a Complaint to the National Arbitration Forum
On October 18, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 7, 2007 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
A timely Response was received in electronic form and determined to be
A timely Additional Submission was submitted by Complainant that was
received and determined to be complete on
The Respondent submitted a timely Additional Submission that was
received and determined to be complete on
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant seeks to re-file a Complaint which it filed with the National Arbitration Forum on May 9, 2005. This Complaint was defended by Respondent and a 3-Person Panel issued a decision on July 8, 2005, dismissing the Complaint (see ImageShack Corp. v. RegisterFly.com – Ref. # 17592297, c/o Whois Protection Services – ProtectFly.com (FA 473833).
Complainant submits that it is entitled to re-file this Complaint on the grounds of discovery of new evidence which could not have reasonably been foreseen or known at the time of filing the first complaint. It relied on such precedents as Grove Broadcasting Co. Ltd v. Tele Systems & Commc’ns Ltd., D2000-0703 (WIPO Nov. 10, 2000) and Creo Products Inc. v. Website & Dev., D2000-1490 (WIPO Jan. 19, 2001).
Essentially, Complainant alleges in support of the refiling:
(a) It now has a registered trademark, whereas the previous Panel had held that it did not have a registered mark in which it could claim rights, and that there was insufficient evidence of a common law mark.
(b) Respondent had concealed information from the previous Panel that showed that he knew of Complainant’s claim to a mark before he purchased the disputed domain name on April 28, 2005.
(c) Representations made by Respondent to the previous Panel concerning the development of his website had not been honoured.
Complainant obtained a trademark from the U.S. Patent & Trademark
Office for the IMAGESHACK mark without opposition from Respondent. The registration date is
Respondent represented to the previous Panel that he was preparing to make a legitimate use of the disputed domain name and would cease using the disputed domain name as a parking site with links to the competitors of Complainant. Such use, however, has never ceased and the site continues today as a parking site with links to Complainant’s competitors. Consequently, Respondent has no rights or legitimate interests in respect of the disputed domain name.
Respondent has held the disputed domain name since the time it was transferred to him. The date of the transfer to him is treated as the date of registration of the disputed domain name for present purposes. (HSBC Fin. Corp. v. Clear Blue Sky Inc. & Domain Manager, D2007-0062 (WIPO June 4, 2007)).
Although the transfer to Respondent was effective on April 28, 2005, at least as early as April 11, 2005, Respondent was not only aware of Complainant and Complainant’s claim to the disputed domain name, but also sought to use the disputed domain name despite confusion with Complainant’s mark. Complainant further alleges that Respondent deliberately misled the previous Panel on evidence of bad faith when he said that he did not know of Complainant or its mark prior to the date of the transfer to him.
The Complaint referred to an internet posting on April 11, 2005 referable to Respondent which stated, inter alia:
“The owner of [ImageShack.net] has an American Corporation with the exact name. The ImageShack.com domain also only gets its traffic because ImageShack.net is very famous in the top 5000 (Alexa).”
Complainant further claims that Respondent’s continuing use of the disputed domain name as a parking site is more than sufficient evidence of changed circumstances and bad faith (see Maruiti Udyog Ltd v. Marut.com, D2003-0073 (WIPO May 5, 2003)).
The Complaint should not be allowed to be re-litigated on principles enunciated in the cases cited. Inasmuch as the chronology of Complainant refers to material either placed before the Panel previously or to material which ought reasonably to have been placed before that Panel, it should be viewed as a clandestine attempt to have the complaint heard de novo. When reproducing the statement from the web posting of April 11, 2005, Complainant omitted the sentence “I will develop it offering a different service to that offered by the owner of the .net furnishing so as not to infringe his TM.”
Complainant misrepresented that it had a registered trademark in April 2005, at a time when it did not have one. The posting demonstrates Respondent’s good faith in entering into the transaction to purchase the disputed domain name. Complainant has not provided any evidence or reasons as to why it did not or could not have placed this material before the previous Panel.
As to the statement that Respondent has concealed from the previous Panel, Respondent has no obligation to make a case for Complainant. Respondent has an obligation to rebut Complainant’s case and answer questions from the Panel. He relies on the following statement from the Creo decision (supra):
The acts in which the re-filed Complaint should not be in substance: the same as the acts on which the previous Complaint was based. When properly applied, this exception will preclude an unsuccessful complainant from lodging, in the hope that the subsequent panel will come to a different conclusion on the facts, the re-filed complaint based on subsequent acts that were either a repetition of or substantially the same as the acts on which the previous complaint was based.
As to new evidence, Complainant relies upon subsequent registration of
Complainant lists work that he has done and payments he has made in developing the website as evidence of legitimate ongoing development of a website since the disputed domain name was first registered in 2002, including work done by the previous owner.
Respondent points to a trademark which a
company of his obtained in
In short, Respondent says that he acquired the disputed domain name legitimately for valuable consideration from the previous owner. He was at the time of the first Complaint, and still is, developing a website for the disputed domain name and has gone to considerable expense to do so. He has since obtained a registered trademark to which Complainant objected but withdrew its opposition.
Respondent seeks a declaration of reverse domain name hijacking. He says this is a frivolous attempt to re-litigate this case without any reasons why the evidence was not provided in the first instance.
C. Complainant’s Supplementary Filing
Complainant draws attention to the certification by Respondent in his original Response to the first Complaint that the information contained is, to the best of his knowledge, complete and accurate. It took long and painstaking work for Complainant to unearth newly-discovered facts, particularly Respondent’s use of an online moniker which did not identify with the actual user. Eventually, after assiduous searching, Complainant was able to identify the moniker with Respondent. It was only after Complainant had discovered that the subject string was able to tie the moniker to Respondent that Complainant could compare the dates in the escrow statement with the facts and dates revealed in the subject string.
At the time of the transfer, Respondent not only knew of the fame of
Complainant’s mark but believed that Complainant had a registered service
mark. This is shown from the entry of
However, in the original Response to the first proceeding, Respondent
stated that Respondent could not have imagined, after he had made an $18,000 investment, that a later
Respondent attached copies of graphics and layouts which were to be used when Respondent’s site is to be launched. These were attached as Exhibit C to the previously filed Response. In fact, these mascot characters were developed for the Respondent for another site, namely <ratemysite.com>. Respondent also registered to the previous Panel that the disputed domain name had been parked while he had been developing a website but that he would control the parking service and disable it upon the conclusion of the proceeding.
By using the WayBack machine system, Complainant claims that the website was used continuously as a parking site with links to Complainant’s competitors. The use of a domain name to resolve to a parking site cannot be regarded as a right or legitimate interest, particularly one that resolves to a parking site with links to competitors. The Internet WayBack Machine access was blocked by Respondent on October 22, 2007, shortly after Respondent’s lawyer had acknowledged receipt of the Complaint. Moreover, since the Complaint was filed and served on him, Respondent has altered the website to which the disputed domain name resolves, in order to make it appear a portal site rather than a parking site. The site indicates it was modified in October 2007 but the history of the site would be easier to see if Respondent had not blocked access.
Respondent was concealing information from the present Panel, as he did in the previous case when he asked the Panel to believe what he had expended for the <ratemysite.com> website was used for the <imageshack.com> website. At the present time, he exhibits generally descriptive invoices and some alleged games which are not tied to a specific project but which are generally descriptive of the parking site on which photographic services are offered. The WayBack machine shows that Respondent has continually used the disputed domain name to resolve to the parking site with links to Complainant’s competitors.
D. Respondent’s Supplemental Response
Respondent notes that Complainant did not faithfully reproduce his April 11, 2005 posting and that Complainant stated that it had been advised by its Australian counsel that it needed to show evidence of secondary meaning in the local Australian market in order successfully to oppose the trademark. No Australian trademark case had ever dealt with the secondary meaning established through fame on the internet. Complainant does not respond to the claim for the reverse domain name hijacking.
In further response, Respondent submits that Complainant is trying to relitigate its case, that the conduct of Respondent has been transparent and he has not attempted to conceal contact information. He notes that Complainant’s claim of breach of natural justice but says there are no details of this claim. Respondent emphasises the finding of the previous Panel that Complainant did not have any common law trademark rights and that the relevant public would not perceive the term IMAGESHACK to function as a mark.
Respondent does not resile from the fact that the disputed domain name has been used as a link until such time as the final website is developed. The WayBack machine is not a reliable archive. The software used by the Archive Association does not capture 100% of the information published on the website at any point in time. The Complainant rehashes matters raised in the Complaint and answered already. The screen shots resolve to the landing page for the website of the disputed domain name. This is incorrect. The screen shots protected by Complainant are sub-pages under the Tab “PhotoSharing” on landing page.”
The website for the disputed domain name is being continually developed. The games being developed for the website have been played on over 260,000 occasions, drawing attention of traffic to the disputed domain name and increasing its fame and exposure for when the final site will be launched.
The Panel finds:
(a) The re-filed Complaint should be admitted.
Complainant succeeds on
majority, the Complaint must be denied because Complainant cannot prove bad
faith registration under
(d) A finding of reverse domain name hijacking should not be made against Complainant.
Complainant has presented fresh evidence not available at the time of the original Complaint, namely, the subsequent grant of a trademark to it. The Panel can now consider the Complaint on the basis that the disputed domain name is identical to a trademark in which Complainant has rights. It is well settled under the UDRP precedent that a domain name registration may precede the granting of the trademark and that the grant of the trademark long after registration of a domain name is still enough to satisfy the requirements of the first limb of the Policy.
In the refiling case relied on by Complainant, A B Svenska Spel v. Andre Czachrov (supra), the panel referred to the Grove Broad. & Creo Prods. precedents and noted that the complainant now had a registered trademark. Therefore, relevant facts had occurred subsequent to the decision of the original complaint. In addition to that the panel in Svenska noted that the preceding complaint had been filed against a different respondent and that, therefore, the new complaint could not be regarded as a re-filing for that additional reason.
The Panel adopts the approach of the panel in Maruiti Udyog Ltd v. Maruti.com (supra). The Panel should first decide whether, prima facie, the additional assertions are such that they should be admitted for consideration. The question then becomes whether the new evidence is sufficiently persuasive to lead to a different decision from that rendered in the previous case.
The obtaining of a registered trademark by Complainant since the original complaint was decided is certainly fresh evidence not available at the time of the first complaint. It would have a bearing on the outcome since the original Panel held that Complainant had no trademark rights at the time of the first complaint.
The case law draws a distinction between re-filed complaints which concern the acts which formed the basis of the original complaint and refiled complaints which concern events subsequent to the decision on the original complaint. See Creo Prods. Inc. v. Website in Dev. (supra).
In the Panel’s view, Complainant’s acquisition of a registered mark plus the additional assertions set out by Complainant are such that, prima facie, the re-filed Complaint should be admitted for consideration. The question will be whether any new evidence is sufficiently persuasive to lead to a different decision. This was the approach taken by the panel in Maruti Udyog Ltd v. Maruti.com, D2003-0703 (WIPO Dec. 16, 2003).
The Panel notes that the respondent in the earlier decision did not bear the same name as the present Respondent. However, it is clear from the parties’ submissions, that the Respondents in both the previous and the present complaints are one and the same individual.
Requirements of Policy
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Now that Complainant has a registered trademark for the expression “ImageShack,” the Panel finds that the disputed domain name is identical to a trademark in which Complainant has rights.
UDRP jurisprudence makes it clear that it does not matter that the trademark was registered after the disputed domain name. (See A B Svenska Spel (supra)). However, it can be difficult for a complainant to prove that a domain name had been registered with the future trademark in mind. The fact that the trademark is not registered worldwide is immaterial.
The first limb of
Complainant gave no rights to Respondent so
that the burden shifts to Respondent to show that he does have rights or
legitimate interests pursuant to
The previous Panel held that Complainant failed to establish that Respondent had no such rights. It accepted that Respondent had undertaken actions, not yet complete, to use the name with a site that would offer bona fide services, also related to photography. The work took place no later than May 12, 2005 – three days before Respondent had received notification of the Complaint.
Complainant, however, now alleges that
Respondent knew of Complainant’s business earlier- i.e. on
The transfer to Respondent was effective on April 28, 2005 and the cases show that a transfer amounts to a new registration.
Respondent points to his own registered
trademark for IMAGESHACK which he acquired in
Respondent has continued to use the site as parking site with ‘click-through’ services. He claims that he is not ready to launch the site and exhibited invoices from website providers to show ongoing work on development. He did represent to the previous Panel that he was then preparing to make a legitimate use of the name on a website.
Complainant’s essential assertions in the re-filed Complaint under the heading of Rights or Legitimate Interests can be summarized thus:
(a) Respondent knew of its then unregistered mark before he had notice of the earlier complaint, albeit, the mark was incorrectly depicted as being a registered trademark.
(b) Respondent has continued to use the website as a parking site which cannot be regarded as a right or legitimate interest in a domain name. Burberry Ltd v. Starrelcom, D2005-1114 (WIPO Jan. 4, 2006).
(c) Since the present Complaint was served, Respondent has altered the website so as to make it appear more a portal site than a parking site by adding navigation links. There is no original content in the site but there are links to parking services.
(d) The invoices provided by Respondent are not tied to a specific project and are generally descriptive of the parking site at which photographic services were offered.
(e) Respondent has blocked access to the Wayback Machine to prevent further investigations.
Under para. 4(c)(i) of the Policy, a respondent can show that before any notice to him of the dispute, he has used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. (Emphasis added.)
The evidence now shows that Respondent knew of Complainant’s assertion
to a trademark on April 11, 2005, before he purchased the domain name on April
28, 2005. It does not matter for these
purposes that Complainant was wrongly representing to the world that it had a
trademark by using the ® symbol.
Respondent, from his Internet posting of April 11, 2005, clearly knew of
Complainant’s claim “before any notice of the dispute.” He had not at that stage made preparations to
use the name, since he did not then own it.
So, therefore, the extent of his preparations –
demonstrable or otherwise – to use the name, taken after
The fact that Respondent’s company obtained a trademark in
Respondent’s trademark application in
However, there is no evidence that Respondent or any company is commonly known by the name IMAGESHACK, despite the ownership of the trademark by his company. He has yet to develop the business using the trademarked name. His website is still evolving.
Accordingly, Respondent has not succeeded in
his defence under
The essential enquiry is whether Respondent purchased the disputed domain name in bad faith on April 28, 2005. At that stage, Complainant had no trademark rights at all as the previous Panel decision shows. It was misrepresenting the mark as registered when it had not been registered.
Respondent paid $18,000 for the mark from a vendor who had already done some development work. It cannot be said that Respondent was acting as a speculative cybersquatter.
Cases such as Digi Int’l v. DDI Sys, FA 124506 (Nat. Arb. Forum Oct. 24, 2002) show that registration of a domain name with actual knowledge of Complainant’s rights can amount to bad faith. However, as at that date, Complainant had no trademark rights, for the reasons discussed by the previous Panel. Consequently, the cases must be taken to refer to actual rights not rights mistakenly believed to exist. Complainant has to bear the consequences of its erroneous assumption of trademark registration.
In Primal Quest LLC v. Salas, D2005-1083 (WIPO Dec. 15, 2005) the Panel said:
The Complainant has not alleged that it had any rights in the Mark prior to the date that Respondent registered the Domain Name. Because the test of whether a respondent registered a domain name in bad faith necessarily focuses on whether the respondent registered the name with the intent of profiting off of complainant’s trademark or interfering with complainant’s use of its mark, bad faith registration generally cannot be found if the disputed domain name was registered before trademark rights were established by the complainant. WIPO overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Decision Overview”). §3.1 (“Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right”).
There are certain limited exceptions to this rule, such as “when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights… This often occurs after a merger between two companies, before the new trademark rights can arise, or when the respondent is aware of the complainant’s potential rights, and registers the domain name to take advantage of any rights that may arise from the complainant’s enterprises.” WIPO Decision Overview §3.1. Complainant, however, does not allege any facts that would cause any of these exceptions to apply.
See also AVN Media Network Inc. v. Hassam Shaltout, D2007-1011 (WIPO Sept. 13, 2007).
Following the above authority, the decision
of the majority is that, bad faith registration has not been established. It is unnecessary to consider bad faith
use. Complainant has failed to establish
the third limb of
Reverse Domain Name Hijacking
Invocation of this remedy requires all the equities to be considered before an order is made. The Panel has found that the re-filing of the Complaint was legitimate. In balancing the equities, the Panel notes that, contrary to the representations by the Response in the previous complaint, by his web posting of April 11, 2005, Respondent did know of Complainant’s interest in the disputed domain name. The Panel, therefore, declines to make such an order in the circumstances.
The Panel concludes that relief shall be DENIED.
Hon. Nelson A. Diaz
Dated: December 11, 2007
The analysis performed by my co-arbitrators is an insightful and detailed review of the re-filed Complaint which initiated this action. My only disagreement is the conclusion that Respondent has not acted in bad faith. The majority reasons that a respondent cannot be in bad faith if the domain name is registered prior to trademark rights being established by a complainant.
The thread which troubles me is that Respondent has continued to park the website to which the disputed domain name resolves on a “click through” basis. Respondent represented to the original panel that the parking would be disabled upon resolution of the original claim. Apparently Respondent continues to park the disputed domain name and has allowed links to Complainant’s competitors. I do believe that the parking of a domain name with a third party who runs optimizing programs to enhance the visibility of the parked domain name by hitting a complainant’s competitors may constitute bad faith and that such activity deserves analysis under paragraphs 4(b)(i)-(iv) as a potential violation of paragraph 4(a)(iii). Without such an analysis, I must respectfully dissent from the majority opinion.
Richard W. Page, Esq.