national arbitration forum

 

DECISION

 

QuiBids Holding, LLC v. Paul Collins / Queensland Soulmates Pty Ltd / Qld Soulmates Pty Ltd t/a C-Products

Claim Number: FA 1353522

 

PARTIES

Complainant is QuiBids Holding, LLC (“Complainant”), represented by Jordan Ashley Smith of QuiBids Holding, LLC, Oklahoma, USA.  Respondent is Paul Collins / Queensland Soulmates Pty Ltd / Qld Soulmates Pty Ltd t/a C-Products (“Respondent”), represented by Paul R. Collins, Australia.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <quibids2.com>, <quibids3.com>, <quibids.biz>, <quibids.info>, and <quibids.ws>, registered with TPP Internet Pty Ltd.

 

The domain names at issue are <quibids.tv> and <quibids.mobi>, registered with Tucows, Inc.

 

The domain name at issue is <quibids.asia>, registered with IP Mirror Pte Ltd.

 

PANEL

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

 

Roberto A. Bianchi as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 20, 2010; the National Arbitration Forum received payment on October 20, 2010.

 

On October 21, 2010, IP Mirror Pte Ltd confirmed by e-mail to the National Arbitration Forum that the <quibids.asia> domain name is registered with IP Mirror Pte Ltd and that Respondent is the current registrant of the name.  IP Mirror Pte Ltd has verified that Respondent is bound by the IP Mirror Pte 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 October 22, 2010, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <quibids.tv> and <quibids.mobi> domain names are registered with Tucows, Inc. and that Respondent is the current registrant of the names.  Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. 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 November 1, 2010, TPP Internet Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <quibids2.com>, <quibids3.com>, <quibids.biz>, <quibids.info>, and <quibids.ws> domain names are registered with TPP Internet Pty Ltd and that Respondent is the current registrant of the domain names.  TPP Internet Pty Ltd has verified that Respondent is bound by the TPP Internet 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 November 5, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 26, 2010 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@quibids2.com, postmaster@quibids3.com, postmaster@quibids.biz, postmaster@quibids.info, postmaster@quibids.asia, postmaster@quibids.mobi, postmaster@quibids.tv, and postmaster@quibids.ws.  Also on November 5, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 19, 2010.

 

On November 22, 2010, The Forum received an Additional Submission from Complainant. This submission was timely and a fee was paid pursuant to Supplemental Rule 7. On November 26, 2010, The Forum received Respondent’s Additional Submission, which also was timely.

 

On November 24, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Roberto A. Bianchi as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain names <quibids2.com>, <quibids3.com>, <quibids.biz>, <quibids.info>, <quibids.mobi>, <quibids.tv> and <quibids.ws> domain names be transferred from Respondent to Complainant, and that the <quibids.asia> domain name be removed from Respondent.

 

Respondent requests that the Panel denies the remedy requested by the ComplainantRespondent also requests that a ruling be given to ensure that Respondent may transfer the twenty domain names in dispute to Complainant at out of pocket expenses, using the services of an escrow service.

 

 

PARTIES' CONTENTIONS

A. Complainant

In its Complaint, Complainant contends as follows:

 

-         Complainant’s trademark QUIBIDS is used in every one of the disputed domain names. The domain names are in fact identical to the QUIBIDS trademark.

 

-         Respondent has no connection with Complainant. Respondent is not a member, employee, or in any other way associated with Complainant. Respondent is not the owner of <quibids.com>, the domain name used by Complainant for its business. Respondent does not make a bona fide use of the disputed domain names. Respondent registered them without Complainant’s permission in the hopes that Complainant would offer him a job heading up Complainant’s expansion to Australia.

 

-         In July 2010 Respondent contacted Complainant’s Director of Public Relations hoping to head up a Complainant’s expansion to Australia. Without being asked, or in any way told to, Respondent registered the eight domain names at issue, plus fourteen others that cannot be claimed using the UDRP process. All these domain names include the word “quibids”. Complainant’s employees politely corresponded with Respondent for a few days, but never suggested that he would be hired in any capacity. Respondent said he was willing to hand the domain names over, less the filing fees he incurred; he said he was not in it for the money. Complainant’s employees informed Respondent that Complainant would not be expanding to Australia at that time, and offered to reimburse this registration costs if he would transfer the domain names to Complainant. They also informed Respondent that what he had done was cybersquatting. Respondent then became very angry and said the domain names were on the open market for $50,000. Complainant contacted Respondent again in October 2010 and asked him to transfer the domain names. Respondent refused, so Complainant started the UDRP process. Respondent then agreed to sell all 22 names to Complainant, but became uncooperative again when he learned the transfer process would take several weeks due to technical issues. Respondent demanded more money, Complainant refused to give in, and the negotiations broke down again.

 

-         Respondent is not commonly known by the domain names. Respondent has never used the QUIBIDS name or mark, which has only been used by Complainant. QUIBIDS is a very unusual and distinctive trademark; Respondent has no legitimate noncommercial or fair use reasons for registering so many domain names containing the QUIBIDS trademark.

 

-         When Complainant expands its operations overseas, not owning the disputed domain names will create a disruption of Complainant’s business.

 

-         Respondent is not currently hosting web pages using the domain names. However, he may plan to use them in the future. Such actions would definitely create a likelihood of confusion.

 

B. Respondent

In its Response, Respondent contends as follows:

 

-         Respondent does not contest that the disputed domain names are identical or confusingly similar to Complainant’s mark.

.

-         Respondent registered all domains in good faith, with full disclosure and with the intent to transfer all domains registered related to Complainant by Respondent, at out of pocket costs only, to Complainant Quibids LLC.

 

-         Respondent refutes the claim by Complainant, that domains were to be registered without the knowledge of Complainant, as hearsay and unproven by the Complainant. Complainant was made fully aware, upon initial contact by Paul Collins to the Director of Public Relations of Quibids LLC, of the registration of quibids.com.au, prior to any additional domains being registered by Respondent. In the circumstances of this case, Respondent has a legitimate right to recoup out of pocket expenses and as such, the right to hold all 20 domains, until the business transaction complete.

 

-         On October 28, 2010 an agreement was reached with Ashley Smith from Quibids, to transfer 20 domain names to the Complainant for below out of pocket expenses of $1500 and on November 3, 2010, the Complainant reduced the amount, without agreement again, to $1000.The Complainant has applied undue pressure to the transfer process as evidenced in the Complaint.

 

-         From initial contact by Paul Collins towards Quibids LLC, he has been on record, as prepared to transfer all domains, not only those under the UDRP, but all other associated top level country domains, approximately 20 in total, at costs and not to profit from the sale of any Quibids LLC related domains.

 

-         At no time was employment with the Complainant sought by Paul Collins. It is irrelevant, hearsay and the Complainant provided no evidence of such. Paul Collins is the sole director of Queensland Soulmates Pty, of Demografix Pty Ltd.

 

-         Respondent does not contest that he has not been commonly known by the domain name.

 

-         The 20 domains do not point beyond the domain registration companies holding pages and there has not been, nor shall be, any intent by Respondent to gain commercially, or to tarnish the trademark of the Complainant.

 

-         Respondent recognizes that Complainant is the rightful owner of the service mark. Respondent did acquire the 20 domain names for consideration of its out of pocket costs as evidenced by Exhibit B of the Complainant, where Paul Collins clearly states as such, reflecting a prior arrangement.

 

-         Paul Collins registered the domain names after a positive, one-hour conversation between Jill Farrand, a senior executive representing Complainant as the Director of Public Relations, who indicated that she would progress the opportunity for the two companies to explore combined opportunities to the CEO, as also evidenced in the Complainants Exhibit E, where Jill emails her response and confirms that she will progress the discussions to the CEO of Quibids.

 

-         Paul was on the record with Jill as stating, in his first conversation and confirmed by follow up email, that he did not intend to profit from the domains, rather, Respondent registered the domains as a demonstration of his companies technical abilities and to address what he perceived as the urgent need to secure the domains on behalf of Complainant Quibids LLC and to continue on with the business arrangement. Time was of the essence and swift decisions, not productive for Respondent now with hindsight, were made by Paul Collins and in good faith towards securing all global domains on behalf of Quibids LLC. Given the different time zones and the detailed discovery that no top-level domains had been registered by Complainant, Paul felt it necessary to immediately secure the domains and to transfer them at out of pocket expenses at the earliest opportunity as already stated.

 

-         Paul’s intent to transfer all current domains names, and any domains to be registered at cost, was made clear to Jill, before any actual registrations took place. Evidenced by her email to Paul on July 21, 2010, where she references the transfer process they discussed in their first phone conversation, before any actual registrations took place. Exhibit E Page 1 from Complainants submission containing Jill’s response; “I have copied our CTO on this matter as he is the one of the ones who would be able to get the transfer done” – Jill Farrand. Paul made the decision, in good faith, to register the domains, partly based on Jill’s positive response to advance the discussions with the CEO and having already stated upfront, that Queensland Soulmates Pty Ltd was more than prepared to transfer all domains to Quibids at costs, also evidenced in the Exhibit B as provided by the Complainant. Much time, effort, intelligence and direct expense went into acquiring all of the domain names by Queensland Soulmates Pty Ltd, and as evidenced by the Complainant’s own application, under the ‘Remedy Sought’, Quibids is still not in a technical position to enable the complete domain registrations that Queensland Soulmates Pty Ltd undertook as part of our business discussions and relationship. As is the case with quibids.asia.

 

-         To respond directly to the Complainants claim that Paul Collins became angry and placed them onto the open market, is false and hearsay. Paul was justifiably very upset at being called a ‘terrorist’ as a potentially slanderous comment from the CFO of Quibids LLC, given Australia’s participation in Afghanistan, and he was not at all disturbed about any business decision not to proceed. Quibids LLC have remained forceful and bullying in their approach with assumptions that Quibids LLC will automatically be transferred the domains, that Queensland Soulmates Pty Ltd is cybersquatting, all without proof, that Paul Collins is a ‘terrorist’, and that Quibids LLC need not now reimburse Queensland Soulmates Pty Ltd’s actual out of pocket costs, as agreed from the beginning of the business relationship.

 

-         All 20 domains have never been for sale for profit purposes to any party, by Queensland Soulmates Pty Ltd and there is no evidence to support such a claim. Quibids LLC agreed to a $1500 payment, below the Queensland Soulmates Pty Ltd out of pocket expenses of approximately $2500, for the complete 20 domains and then continued to make unreasonable demands, false allegations and continued to apply undue pressure, such as claiming the costs of the UDRP process from the out of pocket expenses incurred by Queensland Soulmates Pty Ltd.

 

-         Respondent also acknowledges that Complainant made a direct request to cancel the UDRP process, following an agreement for the transfer of all 20 domains between Queensland Soulmates Pty Ltd and Quibids LLC and to have their application fees refunded by The Forum.

 

-         No intent to profit from or to use the domain names was stated from the start of the business discussions and arrangements by Paul Collins. There has been no attempt to profit from the intellectual property and goodwill of Complainant by Respondent, in fact the offer for all 20 domains, with 12 out of UDRP control, at below out of pocket expenses to Queensland Soulmates Pty Ltd, indicates goodwill and good faith, not bad faith. Queensland Soulmates Pty Ltd remains resolute to transfer the 20 domains in dispute to Quibids LLC, at out of pocket expenses, using the services of an escrow service. Respondent asks that a ruling be given to ensure that this fair and equitable outcome is achieved.

 

-         Queensland Soulmates Pty Ltd did not register the domain names in order to prevent the owner of the QUIBIDS mark, from reflecting the mark in a corresponding domain name. The domain names do not point to any commercial page in competition with the Complainant, and the 20 domain names resolve to the domain registration companies, tppinternet.com.au and crazydomains.com.au.

 

-         Queensland Soulmates Pty Ltd is not using the domain names and they were not registered primarily for the purpose of disrupting the business of a Complainant, rather they were registered in good faith as part of business development discussions with the Complainant. Queensland Soulmates Pty Ltd by not using the domain names in the past, nor with any future intent to use them, has no intention to attempt to attract, for commercial gain, Internet users to its websites or other on‑line locations, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its websites or any other locations or of a product or service on its websites or locations. Respondent attests that the domains, at the time of the registrations, were not registered in bad faith and have not been put to unfair use.

 

C. Additional Submissions

After having reviewed Complainant’s Additional Submission and Respondent’s reply thereto, the Panel concludes that, in essence, these submissions do not add any material elements to those already contended in the Complaint and the Response, respectively. Accordingly, the Panel need not consider the Additional Submissions of the Parties. However, the Panel does admit Exhibits A and B of Complainant’s Additional Submission and Exhibit B of Respondent’s Reply to Complainant’s Additional Submission because they appear to be a part of, and complete the sequence of communications between the parties, and may help the Panel to better understand the facts of this case. 

 

FINDINGS

 

Complainant is an online auction web site based in Oklahoma Cit y, Oklahoma, United States of America. It has been in business since October 2009. Complainant operates the “www.quibids.com” website.

 

Complainant owns a service mark registration on the U.S. Principal Register for QUIBIDS (design plus words, letters and/or numbers), Reg. No. 3,870,521, Reg. Date November 2, 2010, Filing Date March 30, 2010, covering “on-line auction services, on-line retail store services featuring a wide variety of consumer goods and gift cards”, in international class 35. First use and first use in commerce October 23, 2009.

 

Around 19/20 July 2010, Respondent initiated contact with Complainant by telephone and email. On July 19, 2010, Respondent registered the <quibids2.com>, <quibids3.com> and <quibids.ws> domain names. On July 20, 2010 Respondent registered the <quibids.asia>, <quibids.mobi>, <quibids.tv>, <quibids.info> and <quibids.biz> domain names. Correspondence between the Parties by email continued after the commencement of this proceeding.

 

In his letter of July 20, 2010 to Complainant’s CEO Matt Beckham, Respondent Paul Collins stated that he had registered the following domain names: <quibids2.com>, <quibids3.com>, <quibids.biz>, <quibids.info>, <quibids.asia>, <quibids.mobi>, <quibids.com.hk>, <quibids.ae>, <quibids.hk>, <quibids.com.cn>, <quibids.com.tw>, <quibids.com.sg>, <quibids.sg>, <quibids.jp>, <quibids.ws>, <quibids.ru>, <quibids.tw>, <quibids.tv> and <quibids.ch>.

 

On December 1, 2010, the Panel tried to connect its browser to each of the websites corresponding to the disputed domain names. The browser returned a “server not found” message, also stating that the browser could not find the server.

 

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.

 

Preliminary Issue: Remedies Sought

 

In its Complaint, Complainant requested that the <quibids.asia> domain name be “simply removed from Respondent”. Given that according to the Policy ¶ 4(i) a complainant may only request transfer or cancellation of a domain name, the Panel considers that the requested belief is cancellation of the <quibids.asia> domain name.

 

In its Response, Respondent requests that the Panel denies the remedy requested by the ComplainantRespondent also requests that a ruling be given to ensure that Respondent may transfer the twenty domains in dispute to Complainant at out of pocket expenses, using the services of an escrow service.

 

Besides the apparent contradiction between the remedies requested by Respondent, the Panel notes that in accordance with Policy ¶ 4(i) a panel can only either decide transfer or cancellation of a domain name registration, or deny any such remedies.  According to Rules ¶ 15(e) it also can make or deny a finding of reverse domain name hijacking.  The registrar of the disputed domain names is the only one that can enforce the panel’s order to transfer or cancel a domain name registration. In these proceedings, a panel may not order any party to directly transfer a domain name registration.

 

Identical and/or Confusingly Similar

 

In its Response, Respondent recognizes that Complainant is the rightful owner of this service mark. For its part, Complainant has evidenced that it has trademark rights in the QUIBIDS service mark. See section on “Findings” above.

 

Because the <quibids.biz>, <quibids.mobi>, <quibids.tv>, <quibids.info> and <quibids.ws> domain names incorporate Complainant’s QUIBIDS mark in its entirety, with the only addition of the top level domains, the Panel finds that they are identical to Complainant’s QUIBIDS mark.

 

That a number is added to Complainant’s mark in the <quibids2.com> and <quibids3.com> domain names, does nothing to distinguish the domain names from Complainant’s mark. See Pascua Yaqui Tribe v. Jack Muller, FA 1139085 (Nat. Arb. Forum Feb. 27, 2008) (finding that the <casino2sun.com> domain name, adding the number “2” to Complainant’s common law mark, was confusingly similar to such mark); see also AOL LLC v. Andrew Macnamara, FA 1267812 (Nat. Arb. Forum Jul. 28, 2009) (finding that the <aol4.me> domain name is confusingly similar to the complainant’s AOL mark despite the addition of the number “4”, given the AOL trademark remains the dominant portion of the disputed domain name).

 

Respondent does not contest that the disputed domain names are identical or confusingly similar to Complainant’s QUIBIDS mark.

 

Accordingly, the Panel finds that the first requirement of the Policy is met.

 

Rights or Legitimate Interests

 

Complainant contends that Respondent is not a member, employee or in any other way associated with Complainant, and that Respondent is not the owner of the website “www.quibids.com”, used by Complainant for its business. Complainant also says that Respondent does not make a bona fide use of the disputed domain names, and that Respondent registered the domain names without Complainant’s permission in the hopes that Complainant would offer him a job heading up Complainant’s expansion to Australia. Complainant adds that Respondent is not commonly known by the domain names, that Respondent has never used the very unusual and distinctive QUIBIDS name or mark. This trademark has only been used by Complainant. Finally, states Complainant, Respondent has no legitimate noncommercial or fair use reasons for registering so many domain names containing the QUIBIDS trademark.

 

Taken together, these contentions amount to a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain names. Thus, it is up to Respondent to come forward with allegations and evidence that he does have some right or legitimate interest in the domain names. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that before shifting the burden to Respondent, Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4.a.ii); see also AOL LLC v. Jordan Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (holding that the complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light; if the complainant satisfies its burden, then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.)

 

For his part, Respondent contends that he did not intend to profit from the domain names, and that he acquired them for consideration of its out of pocket costs, after a positive one-hour conversation with Ms. Jill Farrand, Complainant’s Director of Public Relations, who indicated that she would progress the opportunity for the two companies to explore combined opportunities to Complainant’s CEO. Respondent adds that the disputed domain names were registered in good faith as part of business development discussions with the Complainant, and as a demonstration of his technical abilities, to address what he perceived as the urgent need to secure the domains on behalf of Complainant and to continue on with the business arrangement. Respondent explains that given the different time zones of Complainant and Respondent’s detailed discovery that no top level domains had been registered by Complainant, he felt it necessary to immediately secure the domains, and to transfer them at out of pocket expenses at the earliest opportunity.

 

The Panel is not convinced that any of these contentions by Respondent, which are not supported by evidence, can give rise to rights or legitimate interests in the disputed domain names.

 

The Panel observes that Respondent may have already registered domain names containing the QUIBIDS mark before he contacted Complainant. According to WHOIS information checked by the Panel, Respondent registered the <quibids2.com>, <quibids3.com> and <quibids.ws> domain names on July 19, 2010, while his conversation with Ms. Jill Farrand of Complainant seems to have taken place on July 20, 2010. Complaint’s Exhibit “B”, email dated July 24, 2010, from Paul Collins to Matt Beckham. 

 

The Panel is aware that given the lack of precision of the Parties as to what exactly happened when, and because of the difference of time zones between Complainant’s and Respondent’s respective locations, it is difficult to determine the time sequence of events. However, even if Respondent had registered all of the disputed domain names after his conversation with Ms. Farrand, there is no evidence on the record that Ms. Farrand or any of Complainant’s officers gave Respondent any permission or authorization to register any of the disputed domain names either in his own name, or on Complainant’s behalf. Clearly, Complainant states that it did not give any authorization, while Respondent does not contend that he received an authorization or permit from Complainant.

 

It does seem that Mr. Collins tried to convince Complainant that the registration of the disputed domain names was necessary or useful for Complainant, but still there is no evidence that he did succeed in convincing Complainant of anything, or that Complainant asked or suggested him to register any domain names.

 

Respondent states that he registered the domain names based on his conversation with Ms. Farrand, but he does not present this Panel with any evidence of the content of such conversation. Although Respondent states in his email of July 24, 2010 to Matt Beckham that he has “direct email from Jill, 20th July, before the registration, as well as part audio recording of our calls, should any legal process require them to be admitted”, the emails signed by Ms. Farrand that are on the record do not contain any authorization to or agreement with Respondent. Nor did Respondent submit any audio recordings, transcripts or affidavits related to recordings. Since Complainant contends that it did not ask or encourage Respondent to register any domain names, the Panel infers that the evidence not submitted or offered by Respondent is also not favorable to him.

 

The Panel concludes that Respondent, unauthorized and unasked by Complainant, registered twenty domain names incorporating Complainant’s mark, including those at issue. This registration was intended to produce a fait accompli, as leverage during his talks and correspondence with Complainant, with the purpose of either getting a job or a business association with Complainant. Respondent’s behavior, combining talks and lack of a real will to proceed with his announced transfer of the domain names for the out-of-pocket costs, suggests bad faith and cannot give rise to rights or legitimate interests in the domain names. Otherwise, merely contacting a mark’s owner, and registering a domain name containing that mark before, during or after the contact, would by itself give rise to rights in the domain name registration “based on that contact” and independently of the nature and results of the contact.  This interpretation of the Policy entails an absurd conclusion, similar to those cases where the respondent tries to base its rights on mere registration. As stated in Educational Testing Service v. TOEFL, D2000‑0044 (WIPO Mar, 16 2000), “If mere registration of the domain name were sufficient to establish rights or legitimate interests for the purposes of Paragraph 4(a)(ii) of the Policy, then all registrants would have such rights or interests, and no Complainant could succeed on a claim of abusive registration. Construing the Policy so as to avoid an illogical result, the Panel concludes that mere registration does not establish rights or legitimate interests in a domain name so as to avoid the application of Paragraph 4(a)(ii) of the Policy.”

 

Given that Respondent openly recognizes that Complainant is the rightful owner of the QUIBIDS mark, and that Respondent states that he didn’t use the disputed domain names domain names in the past and will not use them in the future for any purpose, Respondent cannot avail himself of any bona fide or fair or noncommercial use pursuant to Policy ¶¶ 4(c)(i) or 4(c)(iii). Nor is Respondent commonly known by any of the disputed domain names pursuant to Policy ¶ 4(c)(ii).

 

Absent any other circumstance that might give rise to rights or legitimate interests, the Panel concludes that Complainant has made out its case, that Respondent lacks rights or legitimate interests in the disputed domain names.

 

Registration and Use in Bad Faith

 

Shortly after the contacts between the Parties began in July 2010, Complainant made clear to Respondent that Complainant would not expand to Australia or Asia for the moment, and that no association with Respondent or position for Mr. Collins was being considered. Complainant then required from Respondent an immediate transfer of the disputed domain names for just the out-of-pocket costs. Complainant asked Respondent for receipts proving real, documented out-of-pocket costs related to the domain names at issue. Complainant’s Additional Submission-Exhibit “A”, email from Shaun Tilford to Paul Collins dated July 21, 2010. However, Respondent never provided or showed any receipts. Later, Respondent suggested that he would also charge for “intellectual work” done at registering the domain names. Complaint’s Exhibit “B”, email dated July 24, 2010, from Paul Collins to Matt Beckham. 

 

In short, Respondent failed to effectively transfer the disputed domain names to Complainant, thus contradicting his own statements that the domain name registrations had been made in Complainant’s behalf, and not for the money. On July 24, 2010, Respondent sent an email to Mr. Beckham of Complainant stating: “Your domains are now in the open market. Be smart, admit fault and move on. Now $50K.” This shows that Respondent offered to sell the disputed domain names to Complainant for $50,000.  Even conceding that such sum might have included what Respondent later described as “compensation for slander”, Respondent never stated his out-of-pocket costs. At least, at no moment did Respondent show Complainant any receipts issued by providers of registration services even after canceling his $50,000 price. Thus, the Panel infers that if the price for the disputed domain names was not “$50K”, it must have exceeded the out-of-pockets costs, which means that Respondent registered the disputed domain names in bad faith, as described in Policy ¶ 4(b)(i).  UDRP ¶ 4(b)(i) (“you have registered or you have acquired the 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 or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name”.)

 

In fact, on November 1, 2010, Respondent sent an email to Mark Weigt of Complainant, with copies to Jeff Geurts and Ashley Smith, also of Complainant, stating: “I am now having to put in extra time into this to respond to sub par technical issues and delays. Please note my charge out is $100 per hour”. Complainant’s Additional Submission Exhibit B. This makes clear that Respondent tried to inflate, no matter how, the price for the transfer of the disputed domain names, thus exceeding his out-of-pocket costs.

 

Even if the cancellation of the “$50K” price is considered, Respondent’s behavior demonstrates that his main purpose when he registered the domain names was extracting an economic advantage from Complainant. The Panel notes that a monetary profit exceeding out-of-pocket costs can be obtained not only through a sale or a lease but also by getting a job or position with a complainant in exchange for the domain name. It is clear that Respondent offered Complainant his assistance in the creation of an Australian operation for Complainant. Considering that Respondent is the director of a business corporation, his offer cannot reasonably be interpreted as having been for nothing. To the contrary, it is reasonable to infer that Respondent’s assistance to Complainant should have brought Respondent a substantial monetary reward, exceeding out-of-pocket costs, which shows his real purpose of extracting a profit for the transfer of the domain names. This panelist has held that offering a trademark’s owner to use the domain name incorporating the mark in exchange for a job was registration in bad faith.  See Cervecería Polar los Cortijos, C.A. v. Ronald Rivas Montes de Oca, D2003-0566 (WIPO, Sept. 3 2003) (offering the domain name to the complainant for rent, or allowing the complainant to use the domain name subject to hiring the respondent as a web designer, contains the element of personal profit for a value in a transaction well exceeding the respondent’s documented out-of-pocket expenses; this is a circumstance of bad faith registration pursuant to Policy ¶ 4(b)(i)).

 

In the circumstances of this case, since Respondent registered 20 domain names slavishly reproducing Complainant’s QUIBIDS mark, and apparently intended for use in Asia/Pacific markets, it is reasonable to infer that Respondent intended to obstruct Complainant’s activities in such markets pursuant to Policy ¶ 4(b)(ii), i.e. he “registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent] engaged in a pattern of such conduct”. The Panel believes that the registration of twenty domain names containing a mark belonging to a third party constitutes a “pattern of such conduct” supporting a finding of bad faith registration

 

As to use in bad faith, Respondent put the disputed domain names, in which he had no rights or legitimate interests, on the open market, i.e. he clearly offered the domain names for sale, which is a use in bad faith of the domain names, as found by panels in World Wrestling Federation v. Bosman, D1999-0001 (WIPO Jan. 14 2000), Ellenbogen v. Pearson, D2000-0001 (OMPI Feb. 2000) and British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23 2000), and many other cases.

 

Respondent states, and the Panel confirms, that the disputed domain names do not resolve to any web site. See section on “Findings” above, in fine. Respondent states that the domain names have never been used in the past and will never be used in the future. This does not preclude a finding of bad faith use; given that Respondent knows Complainant, its mark, operation and business perfectly well, the lack of any past or future use amounts to a passive use in bad faith of the disputed domain names, as held in Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000). In the present case, it is relevant that Respondent knew Complainant perfectly well, and indisputably was aiming at Complainant when he registered twenty domain names entirely incorporating Complainant’s mark. Respondent showed bad faith since he began contacts with Complainant: when asked to show his documented expenses, Respondent failed to present any receipts, then put the domain names in dispute on the open market, asking for them “$50K”, thus contradicting his initial position that that he had no purpose to transfer the domain names for a profit, even if he later cancelled this price. As in Telstra, it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain names by Respondent that would not be illegitimate.

 

In his email of October 26, 2010 sent to Shaun Tilford of Complainant, Respondent states: “I recognize that you acknowledge that I did not register any domains in bad faith”. Response Exhibit A. However, the Panel notes that there is no communication on the record, either from Shaun Tilford or from anybody else, containing any such acknowledgment.

 

For all the reasons above, the Panel is satisfied that the disputed domain names have been registered and are being used in bad faith.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered

 

(i)                  that the <quibids2.com>, <quibids3.com>, <quibids.biz>, <quibids.info>, <quibids.mobi>, <quibids.tv> and <quibids.ws> domain name registrations be TRANSFERRED from Respondent to Complainant, and

 

(ii)                that the <quibids.asia> domain name registration be CANCELLED.

 

 

 

 

Roberto A. Bianchi, Panelist

Dated:  December 7, 2010

 

 

 

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