AgreeYa Solutions, Inc. v. Domain Privacy Group
Claim Number: FA1301001479037
Complainant is AgreeYa Solutions, Inc. (“Complainant”), represented by Tyler Barrett of Loza & Loza, LLP, California, USA. Respondent is Domain Privacy Group (“Respondent”), represented by Vinod Kumar Singh, India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <agreeya.com>, registered with Domain.com, LLC.
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.
Scott R. Austin, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 7, 2013; the National Arbitration Forum received payment on January 7, 2013.
On January 8, 2013, Domain.com, LLC confirmed by e-mail to the National Arbitration Forum that the <agreeya.com> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name. Domain.com, LLC has verified that Respondent is bound by the Domain.com, 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 January 9, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 29, 2013 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@agreeya.com. Also on January 9, 2013, 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 January 29, 2013.
Complainant’s Additional Submission was received and determined to be compliant on January 30, 2013.
Respondent’s Additional Submission was received and determined to be compliant on January 31, 2013.
On February 5, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Scott R. Austin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following contentions:
1. According to the declaration of its Managing Partner, Sanjay Khosla, Complainant was founded in November 2000 though a predecessor entity, which began using the company name AgreeYa Solutions, LLC in 2001 and moved to the corporate form for his business in 2005 when he formed, AgreeYa Solutions, Inc., as shown in the records of the Secretary of State of California.
2. Complainant coined its common law mark, AGREEYA, based on the Sanskrit word, “agriya,” meaning “leader”, but changed the spelling to a combination of “AGREE” and “YA” to distinguish its partnership approach to client relationships.
3. Complainant purchased the <agreeya.com> domain name on November 1, 2000 and lost control of the domain name as of December 12, 2012. The registrar reinstated the domain name to Complainant’s control, and on December 26, 2012, Complainant again lost control of the <agreeya.com> domain name, due to the registrar’s failure to process Complainant’s payment. Respondent then purchased the <agreeya.com> domain name on or around December 26, 2012.
4. Complainant has used its AGREEYA mark in commerce “continuously and substantially” since 2001 in connection with its business services, such as staffing solutions, software development and testing, application development, and cloud and infrastructure services, has spent millions of dollars to promote its mark and claims common law rights in the mark due to its use of the mark in connection with its business.
5. Complainant contends that the mark was used online at <agreeya.com> until December 26, 2012 and is still in use by Complainant at <agreeya.net>.
6. The <agreeya.com> domain name purchased by Respondent is identical to Complainant’s AGREEYA mark and Respondent does not have legitimate rights in the domain name and is not commonly known by the <agreeya.com> domain name.
7. Respondent has failed to make a bona fide offering of goods or services at the disputed domain name or a legitimate noncommercial or fair use, using the domain only to mislead consumers to other sites, whose services are similar to those offered by Complainant.
8. Respondent acted in bad faith by taking advantage of Complainant’s failure to renew the <agreeya.com> domain name’s registration by purchasing the domain three days after Complainant’s ownership lapsed.
9. Respondent’s offer to sell the domain name back to Complainant just three days after the lapse in Complainant’s registration for a starting offer of $300,000 and a more recent offer of $50,000, shows Respondent’s bad faith.
B. Respondent makes the following contentions
1. The <agreeya.com> domain name expired and was available for auction.
2. Respondent acquired the domain name for a “huge amount.”
3. Respondent is the founder and managing director of Maxx Media Private Limited, which plans to launch an online retail portal within three months, and invested in the <agreeya.com> domain name for e-commerce.
4. Respondent denies approaching Complainant and claims to be unfamiliar with Complainant.
5. Respondent had no plans of acquiring the disputed domain name in order to sell or rent it to Complainant.
6. Respondent is “planning to derive an online retail website so there is no way of gaining for likelihood by complainant mark.”
C. Additional Submissions – Complainant
1. Complainant’s AGREEYA mark is coined and has been in use for 12 years.
2. Respondent was aware of Complainant’s trademark rights at the time it registered the <agreeya.com> domain name because Respondent signed up to purchase the <agreeya.com> domain name before it expired and was aware that it was owned by another entity.
3. Many of the business objectives identified by Respondent are similar to the business operations of Complainant, which indicates that Respondent does not have a legitimate interest in the mark but instead wishes to use the goodwill associated with Complainant’s mark to promote Respondent’s business or hinder Complainant’s business.
4. Respondent purchased the <agreeya.com> domain name for $5,751 on December 26, 2012.
5. Respondent offered to sell the domain name several times for sums between $50,000 and $300,000
D. Additional Submissions – Respondent
1. Respondent was not aware of Complainant’s rights in the mark at the time it acquired the <agreeya.com> domain name.
2. Complainant’s allegation that Respondent is similar to Complainant’s business and competing with it is incorrect as Respondent is going to launch an online retail portal which is not similar to Complainant’s business.
3. Complainant’s claim of bad faith registration and use is incorrect as Respondent was not aware of Complainant’s company and did not communicate any offer to sell Complainant the disputed domain name.
The disputed domain name, <agreeya.com> is based on the coined “fanciful term” AGREEYA.
Complainant’s continuous and substantial use of the mark AGREEYA in relation to its business, and its ownership of the <agreeya.com> domain name since 2000 until December 2012, is adequate to establish Complainant’s common law rights in the mark.
The term AGREEYA was in use as Complainant’s common law mark many years before Respondent’s registration of the disputed domain name in December 2012.
The <agreeya.com> domain name is identical to Complainant’s mark
because the disputed domain name contains the AGREEYA mark in its entirety and adds only a gTLD.
Respondent uses the <agreeya.com> domain name to offer hyperlinks to other businesses’ websites, advertising services that are similar to or in competition with Complainant’s offered services of staffing solutions and software solutions.
The products and services offered by Complainant under the AGREEYA trademark are confusingly similar to at least some of the identified business objectives of Respondent.
Respondent purchased the <agreeya.com> domain name for $5,751 on or about December 26, 2012, shortly after Complainant’s registration in the domain name had lapsed.
Within several days after Respondent’s purchase, Respondent entered into negotiations with Complainant for the sale of the domain name, for an amount between $300,000 and $500,000, amounts far in excess of the out-of-pocket cost of $5,751 associated with purchase of the domain name by Respondent.
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.
The at-issue domain name is confusingly similar to a mark in which the Complainant has trademark rights.
While the Panel notes that Complainant does not assert trademark rights in the AGREEYA name through registration with a government agency, this Panel agrees with previous panels that a federal trademark registration is unnecessary in order for Complainant to establish rights in its mark pursuant to Policy ¶ 4(a)(i). See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist).
Complainant contends in both its Complaint and its Additional Submission that it has common law rights in the AGREEYA mark due to its use of the mark in connection with its business since November 1, 2000. Complainant argues that it was founded in November 2000, at which time it purchased the <agreeya.com> domain name and began using the mark AGREEYA in connection with various services, including staffing solutions, software development and testing, application development, and cloud and infrastructure services. Complainant asserts that it also owns several related domain names, including <agreeya.net>, <agreeyamobility.com>, <agreeyamobility.net>, <agreeya-staffing.com>, <agreeya-mobility.com>, and <agreeya-mobility.net>. Complainant asserts in its Additional Submission that its AGREEYA mark is coined and has been in use for 12 years. Complainant provides evidence of its registration with the California Secretary of State for its current business entity, filed June 7, 2005, as well as a predecessor entity using the name AgreeYa Solutions, LLC since at least as early as 2001. Complainant claims that it has used its AGREEYA mark in commerce “continuously and substantially” since 2001. Complainant contends that the mark was used online at <agreeya.com> until December 26, 2012 and is still in use by Complainant at <agreeya.net>. Complainant alleges that it has spent millions of dollar advertising and promoting the mark.
Based on the foregoing, the Panel finds that Complainant’s continuous and substantial use of the mark in relation to its business, and its ownership of the <agreeya.com> domain name since 2000 until December 2012, is adequate to establish Complainant’s common law rights in the mark under Policy ¶ 4(a)(i). See Congregation Shuvah Yisrael, Inc. v. Neckonoff, FA 1043126 (Nat. Arb. Forum Sept. 7, 2007) (finding that a complainant’s mark had established secondary meaning where the complainant had previously held the registration for a domain name identical to the mark); see also Surecom Corp. NV v. Rossi, FA 1352722 (Nat. Arb. Forum Nov. 29, 2010) (holding that complainant had acquired secondary meaning in the mark, thereby establishing common law rights in the mark for purposes of Policy ¶ 4(a)(i), as a result of complainant’s continuous use of the CAM4 mark since 1999).
The Panel also finds that because the disputed domain name contains the entire AGREEYA mark and includes only a gTLD, the <agreeya.com> domain name is identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Panel concludes, therefore, that Respondent’s <agreeya.com> domain name is confusingly similar to Complainant’s AGREEYA mark under Policy ¶ 4(a)(i). See Am. Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd., D2001-0443 (WIPO May 22, 2001) (finding the <ouricq.com> domain name to be confusingly similar to the complainant’s ICQ mark); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
Respondent lacks rights and legitimate interests in respect of the at-issue domain name.
Under Policy ¶ 4(a)(ii) Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name and then the burden, in effect, shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent is not commonly known by the <agreeya.com> domain name as the domain name is based on the “fanciful term” AGREEYA, which renders it unlikely that Respondent is commonly known by the disputed domain name. The Panel also observes that the WHOIS information for the domain discloses that “Domain Privacy Group” is the registrant and therefore finds that Respondent is not commonly known by the <agreeya.com> domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant alleges that Respondent uses the <agreeya.com> domain name to offer hyperlinks to other businesses’ websites, advertising services that are similar to or in competition with Complainant’s offered services of staffing solutions and software solutions. Complainant claims that this is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. The panel in Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007), stated that the respondent’s operation of a pay-per-click website at a confusingly similar domain name did not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. Like the Panel in Disney, this Panel finds that maintaining a website that features hyperlinks leading to businesses that compete with Complainant is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant also asserts that its prior ownership of the disputed domain name evidences Respondent’s lack of rights and legitimate interests. Prior panels have held that a respondent’s registration of a domain name previously held by a complainant indicates a lack of rights and legitimate interests. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (“Respondent’s opportunistic registration of the Complainant’s domain name, within 24 hours of its lapse, weighs strongly in favor of a finding that Respondent has no rights or legitimate interests in the disputed domain name.”). Based on the similar timing of Respondent’s registration of the disputed domain name shortly after the lapse of Complainant’s prior registration, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Given Complainant’s uncontroverted evidence, Complainant satisfies its initial burden and conclusively demonstrates that Respondent lacks both rights and interests in respect of the disputed domain name under Policy ¶4(a)(ii).
Respondent registered and uses the at-issue domain name in bad faith.
Complainant makes the argument that Respondent acted in bad faith by registering the <agreeya.com> domain name with the intention of selling it to Complainant at a starting offer of $300,000. Complainant alleges in its Additional Submission that Respondent offered to sell the domain name several times for amounts between $50,000 and $300,000 and that such amounts equate to an “astronomical amount [which] reeks of bad faith.” The panel in George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007), stated that the respondent’s registration and use of the disputed domain name was in bad faith when it offered to sell the domain name for more than its out-of-pocket costs related to initially registering the domain name. The Panel similarly concludes that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(i) as a result of its attempt to make a substantial profit by offering the domain name for sale at a price far more than the registration costs of the domain name.
Complainant makes the claim in its Policy ¶ 4(a)(ii) section that Respondent uses the <agreeya.com> domain name to offer hyperlinks to competing commercial entities whose services are similar to Complainant’s. The Panel infers that operating the resolving website in such a manner results in a profit to Respondent by way of “pay-per-click” fees and is persuaded that Respondent uses the <agreeya.com> domain name to confuse Internet consumers and attract traffic to its website in order to generate revenue, which is evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
Complainant asserts in its Additional Submission that Respondent was aware of Complainant’s rights in the AGREEYA mark at the time Respondent registered the <agreeya.com> domain name, and Complainant’s use of the mark in commerce for twelve years gave Respondent notice of Complainant’s rights in the mark. While the Panel recognizes that Complainant’s common law rights in the mark may confer upon Respondent the burden of constructive knowledge of Complainant’s rights in the mark, the Panel concludes that constructive knowledge is insufficient to establish Respondent’s bad faith registration and use under Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."). The Panel is persuaded, however, that Respondent’s actual notice of the AGREEYA mark is demonstrated by its similar business operations and services to those of Complainant, and its registration of the domain name in the short time frame after Complainant’s lapse in registration, which the Panel concludes shows Respondent’s bad faith registration of the <agreeya.com> domain name under Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <agreeya.com> domain name be TRANSFERRED from Respondent to Complainant.
Scott R. Austin, Panelist
Dated: February 18, 2013
|
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page