Versa Capital Management,
LLC v. Affordable Webhosting, Inc.
Claim Number: FA0903001250988
PARTIES
Complainant is Versa Capital Management, LLC (“Complainant”), represented by David
M. Perry, of Blank
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <versacapital.com>, registered with Dotster.
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.
Richard Hill as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on March 6, 2009; the
National Arbitration Forum received a hard copy of the Complaint on March 9, 2009.
On March 6, 2009, Dotster confirmed by e-mail to the National
Arbitration Forum that the <versacapital.com> domain name is
registered with Dotster and that the
Respondent is the current registrant of the name. Dotster
has verified that Respondent is bound by the Dotster
registration agreement and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute
Resolution Policy (the “Policy”).
On March 11, 2009, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of March 31, 2008 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 postmaster@versacapital.com by e-mail.
A timely Response was received and determined to be complete on March 27, 2009.
On March 31, 2009, Complainant submitted an Additional Submission that
was deemed to be timely and in compliance with Supplemental Rule #7.
On April 6, 2009, the Respondent submitted an Additional Submission
that was deemed to be timely.
On April 3, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Richard Hill as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant alleges that, through continuous and exclusive use of
the distinctive service mark VERSA CAPITAL since at least as early as September
2007, its marks have acquired significant goodwill and it has thus become
well-known as VERSA CAPITAL in connection with its business and financial
services. Versa Capital is a well-known
and successful investment firm desirous of the domain name consisting of its
service mark. Complainant’s VERSA
CAPITAL mark has been widely used by Complainant since at least 2007.
According to the Complainant, there is no evidence that the Respondent
has ever been known by VERSA CAPITAL or that Respondent has any other rights or
legitimate interests in the mark. Rather,
it appears that Respondent has registered and currently uses the domain to
generate “click-through” advertising fees. At all times relevant to the registration and
use of the domain, the Respondent was or should have been aware that a
legitimate business was using or would be using the mark at a future time. Thus, the Respondent registered and uses the
mark with the bad faith intent to benefit from the goodwill developed by
another, in this case the Complainant, as customers would look for the Complainant’s
website and thereby generate revenue for the Respondent. The Respondent likely hoped to ultimately sell
the domain to a rightful trademark holder for an amount in far excess of the
cost of obtaining the domain.
Further, says the Complainant, the Respondent’s bad faith motives were
confirmed when the Complainant reached out to make an offer to purchase the
disputed domain name. The Respondent
confirmed that he operates an “advertising business” – this is an obvious
euphemism for a click-through revenue generator, as there is no evidence that
Respondent ever used VERSA CAPITAL in a legitimate business or for any purpose
other than as a domain name to host third-party links and to enjoy an elevated
level of traffic and click-through revenue on the basis of trademark rights
developed by another. Further, the Respondent
offered to sell the domain to Complainant for the lofty price of $175,000.
The Complainant goes on to argue that it has trademark rights in the
mark VERSA CAPITAL, that the disputed domain name is confusingly similar to
that mark, that the Respondent lacks rights or legitimate interests in the
disputed domain name, and cites UDRP precedents to support its arguments. For the reasons set forth below, the Panel
finds that these arguments are not relevant for the present case, so they will
not be summarized in detail here.
The Complainant alleges that the Respondent registered and is using the
disputed domain name in bad faith because parking pages such as the one
employed by the Respondent are presumed to indicate bad faith as these links
generate click-through revenue. That is,
it can be inferred from the third-party links at the disputed domain name that the
Respondent is using the domain to intentionally attempt to attract, for
commercial gain, Internet users to a website by creating a likelihood of
confusion with the Complainant’s mark.
The Complainant cites UDRP cases to support its argument.
Further, says the Complainant, when circumstances indicate that a
registrant registered or has acquired a domain name primarily for the purpose
of selling, renting, or otherwise transferring the domain name registration to
the complainant who is the owner of the trademark or service mark, for valuable
consideration in excess of documented out-of-pocket costs directly related to
the domain name, there is evidence of bad faith. Here, the Respondent sought to sell the
domain name for valuable consideration: $175,000, which is in extreme excess of
any likely out-of-pocket costs. Because the
Respondent has never developed legitimate content on the website, the
circumstances indicate that obtaining this valuable consideration was the Respondent’s
primary purpose at the time it acquired the domain name. The Complainant cites UDRP cases to support
its argument.
According to the Complainant, there is no provision in the Policy
barring a Complainant from prevailing where its trademark rights were acquired
subsequent to the domain name registration, see
CDG v. WSM, FA 933942 (Nat.
Arb. Forum May 2, 2007).
B. Respondent
The Respondent states that it is a
corporation specializing in Internet advertising. It lawfully registered the disputed domain
name on September 20, 2002 and has been using it in connection with its
advertising business since that date.
The Respondent alleges that the Complainant fails to demonstrate that it has common-law rights in the VERSA CAPITAL mark. The evidence it presents does not show that the mark has been used in commerce. Further, its 2007 application to register the mark with the U.S. Patent and Trademark Office (USPTO) is an “intent-to-use” application; therefore, the Complainant acknowledged in its application that at the time it filed, it had no common-law trademark rights in the VERSA CAPITAL mark.
The Respondent states that its offer to sell the disputed domain name
was made in response to an unsolicited e-mail from the Complainant in which the
Complainant expressed a desire to purchase the disputed domain name. It should be noted that in none of those e-mails
did the Complainant make a claim that the Respondent was infringing its
trademark rights. The Complainant did
not demand that the Respondent cease and desist or that the Respondent turn the
disputed domain name over to it. Thus,
the evidence submitted by the Complainant shows not only that the Respondent
registered and is using the disputed domain name in good faith, but also that,
just weeks before filing the complaint, the Complainant treated the Respondent
as the good faith owner of the disputed domain name.
The evidence submitted by the Complainant establishes that it knew or
should have known that it could not prove one or more of the three elements
needed to succeed in this arbitration.
Thus, it is clear that the Complainant filed the Complaint in bad faith
and is engaging in reverse domain name hijacking.
The Respondent goes on to argue that the Complainant does not have trademark
rights in the string VERSA CAPITAL. It
cites UDRP cases to support its arguments.
For the reasons set forth below, the Panel finds that these arguments
are not relevant for the present case, so they will not be summarized in detail
here.
According to the Respondent, it engages in a bona fide offering of a service, although it
generates revenue through links to third-party sites. The Respondent uses the disputed domain name
as a portal for users who are seeking ways to advertise. When arriving at the Respondent’s site, a
user is presented with two options. The
links on the right side are for businesses that can handle all of a user’s
advertising needs. The links on the left
are more narrowly focused on advertising in a specific medium. By visiting the Respondent’s site, a user can
easily find sites to handle its advertising needs without needless
searching. The Respondent charges a modest
fee per click in exchange for bringing these links together in an easy-to-use
format.
Further, says the Respondent, generally, it
is impossible to register a domain name in bad faith with respect to a
trademark that did not exist at the time of registration. See WIPO Overview of WIPO Panel
Views on Selected UDRP Questions, Paragraph 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.”) A possible exception exists where the
respondent registers a domain name that it knows is identical or similar to a
mark to which complainant will have rights in the future. See WIPO Overview, Paragraph 3.1
(“In certain situations, 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, bad faith can be found.”)
According to the Respondent, it registered
the disputed domain name in good faith years before the Complainant even
existed. The exception discussed by the WIPO
Overview does not apply because it would be impossible for the Respondent
to be aware of the Complainant’s future trademark rights when it would be years
before either the Complainant or its licensee existed.
The Respondent notes that the Complainant
alleges that the Respondent could have registered the disputed domain name in
bad faith with the hope that the Respondent could sell it to a future company
with a similar name. The merits of this
argument are dubious because the case cited by the Complainant states this
proposition in dictum while discussing another element of the ICANN
Policy. See CDG v.
According to the Respondent, the Complainant
alleges no evidence in support of the allegation of registration in bad faith
other than the Respondent’s asking price for the disputed domain name. Because the Respondent’s offer was in
response to the Complainant’s unsolicited e-mail asking to purchase the disputed
domain name, this cannot on its own be evidence of bad faith. The Respondent cites UDRP precedents to
support its argument.
The Respondent states that it is using the disputed
domain name in good faith. The Complainant
alleges that because the Respondent has “click-through” advertising on its
website, the Respondent is using the disputed domain name in bad faith. However, the ICANN Policy and all of the
decisions cited by the Complainant state that in order to establish use in bad
faith, the Complainant must show that the Respondent is “intentionally
attempt(ing) to attract … Internet users … by creating a likelihood of
confusion with the complainant's mark.”
But, according to the Respondent, it makes
no effort to capitalize on the Complainant’s nonexistent mark. Any reasonable person seeking the Complainant’s
site would know that s/he had accidentally reached the wrong website.
Further, says the Respondent, because it
purchased the disputed domain name years before the Complainant or its licensee
existed, let alone had trademark rights in the VERSA CAPITAL mark, it is clear
that the Respondent purchased the disputed domain name in good faith. Further, the Respondent is using the domain
name in good faith. It is neither
attempting to cause confusion with the Complainant nor to divert users away
from the Complainant’s website.
The Respondent alleges that the Complainant
is engaging in reverse domain name hijacking because it knew that it had no
rights in the mark when it filed its application to register the VERSA CAPITAL
mark with the USPTO as an “intent-to-use” application. And the Complainant also knew that the Respondent
registered the disputed domain name in good faith. The Complainant submitted evidence showing
that the Respondent registered the dispute domain name years before either the Complainant
or its licensee even existed. The
Respondent cites UDRP cases to support its arguments.
C. Additional Submissions
Complainant
It its Additional Submission, the Complainant presses its arguments to
the effect that it does have trademark rights in the string VERSA CAPITAL, it
disputes that the Respondent has rights or legitimate interests in the disputed
domain name, and it insists that the offer to sell the disputed domain name for
$175,000 is evidence of bad faith registration and use. Further, the Complainant states that the
Respondent has changed the content of the web site at the disputed domain name
in order to deceive the Panel. For the
reasons set forth below, the Panel finds that these arguments are not relevant
for the present case, so they will not be summarized in detail here.
The Panel notes that the Complainant does not attempt to rebut the
Respondent’s main argument, namely that it is impossible to find bad faith
registration of a domain name when it was registered prior to the acquisition
of trademark rights by a complainant.
Nor does the Complainant address the Respondent’s argument regarding
reverse domain name hijacking.
Respondent
In its Additional Submission, the Respondent presses its case and states that the fact that it modified the website at the disputed domain name after the Complaint was filed does not indicate bad faith. The Complainant does not allege that the Respondent is seeking, by virtue of the new layout of the website, to trade on the Complainant’s alleged trademark or to confuse the Complainant’s customers or potential customers. And use of the new layout does not change the fact that the Respondent registered the website years before the Complainant existed.
For the reasons set forth below, the Panel finds that it is not necessary
to summarize in more detail the Respondent’s arguments.
FINDINGS
The disputed domain name was registered in
2002.
The Complainant first started doing business
under the name VERSA CAPITAL in 2007.
The Complainant was aware of these facts when
it filed its Complaint.
DISCUSSION
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.
For the reasons set forth below, the Panel finds
that it need not analyze this element of the Policy.
For the reasons set forth below, the Panel finds
that it need not analyze this element of the Policy.
As the Respondent correctly notes, it is
well-established case-law under the UDRP that, in general, a finding of bad
faith registration cannot be made with respect to a trademark that did not
exist at the time of registration of the disputed domain name. As the WIPO Overview of WIPO Panel Views
on Selected UDRP Questions says at 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.
In support of this, see Telecom
Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb.Forum May 16, 2007)
(finding 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); see also 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).
A possible exception exists where the respondent registers a domain name that it knows is identical or similar to a mark to which complainant will have rights in the future. But the Complainant provides no evidence to indicate that such was the case here. For sure, the Complainant asserts that this was the case, but mere assertions do not amount to evidence. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. 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 (Nat. Arb. 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).
The Complainant knew, when it filed
the Complaint, that the registration of the disputed domain name preceded by
several years any rights that the Complainant may have acquired in the string
VERSA CAPITAL. This is sufficient to
find reverse domain name hijacking. See Aspen Grove, Inc. v. Aspen Grove,
D2001-0798 (WIPO Oct. 5, 2001) (finding that when the complainant knows it has
no rights in the mark but brings a complaint despite this fact, the complainant
has acted in bad faith and attempted Reverse Domain Name Hijacking which
constitutes an abuse of the administrative proceeding); see
also NetDeposit,
Inc. v. NetDeposit.com, D2003-0365 (WIPO
July 22, 2003) (finding reverse domain name hijacking because “Respondent's
domain name registration preceded the Complainant's creation of its trademark
rights”).
DECISION
Having analyzed the relevant elements of the ICANN Policy, the Panel
concludes that relief shall be DENIED.
The Panel finds the Complainant has attempted Reverse Domain Name Hijacking.
Richard Hill Panelist
Dated: April 14, 2009
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