Brightwurks, Inc. v. Andy Eder
Claim Number: FA1302001487567
Complainant is Brightwurks, Inc. (“Complainant”), represented by Sheri S. Mason of Morse, Barnes-Brown & Pendleton, P.C., Massachusetts, USA. Respondent is Andy Eder (“Respondent”), represented by Ruediger Plegge of Plegge, Gebauer, Lohr, Rechtsanwalte & Notar, Germany.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <helpscout.com> and <help-scout.com>, registered with Key-Systems GmbH.
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.
Dr. Reinhard Schanda as Panelist.
Complainant submitted an English and German language Complaint to the National Arbitration Forum electronically on February 27, 2013; the National Arbitration Forum received payment on March 20, 2013.
On March 21, 2013, Key-Systems GmbH confirmed by e-mail to the National Arbitration Forum that the <helpscout.com> and <help-scout.com> domain names are registered with Key-Systems GmbH and that Respondent is the current registrant of the names. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 March 26, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 15, 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@helpscout.com, postmaster@help-scout.com. Also on March 26, 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, English language, Response was received and determined to be complete on April 10, 2013.
On April 16, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dr. Reinhard Schanda 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that it provides software for e-mail integration under the United States Patent & Trademark Office (“USPTO”) registered HELP SCOUT mark, Reg. No. 4,092,655 registered on Jan. 31, 2012. Complainant began its continuous use of the HELP SCOUT mark at least as early as July 14, 2010. Complainant owns and operates a domain name <helpscout.net> which it has used for its business since March 28, 2010. Complainant has made substantial investments in the advertising, marketing, and promotion of the HELP SCOUT mark.
Complainant contends, that Respondent’s <helpscout.com> and <help-scout.com> domain names are confusingly similar to the HELP SCOUT mark. The <help-scout.com> domain name featured only the addition of a hyphen. The <helpscout.com> domain name merely deletes the spacing in the HELP SCOUT mark. Both domain names feature the mandatory addition of a generic top-level domain (“gTLD”)—“.com.”
Complainant further contents that Respondent is not commonly known by the <helpscout.com> and <help-scout.com> domain names. Respondent’s WHOIS information does not indicate that Respondent is commonly known by these domain names.
Respondent has never used the<helpscout.com> and <help-scout.com> domain names in connection with any bona fide offering of goods or services, or legitimate noncommercial or fair use. Both domain names are being held passively, and have been undeveloped for roughly three-and-a-half years.
Respondent has offered to sell one of the domain names to Complainant for around $335,000.00. Respondent’s use of the domain name simply to sell it undermines any claim of rights and legitimate interests in the domain name.
Finally Complainant contends that Respondent seeks to sell the domain names to Complainant in bad faith. Complainant attempted to negotiate with Respondent, and ultimately offered Respondent $5,000.00 for one of the domain names. Respondent replied to this offer by claiming the highest offer was 245,000.00 Euros, and suggested that Complainant provide Respondent with a greater sum than 245,000.00 Euros if it wished to obtain Respondent’s “Premium-Top-Level-Domain.” Respondent’s correspondence with Complainant suggests that Respondent’s only purpose in registering and using either of the domain names was to subsequently force a future business to pay Respondent excessive fees for the domain names.
Respondent willfully and repeatedly registered over 400 domain names in bad faith and continues to retain these domain names. Complainant conjectures that these domain names are in bad faith, and further conjectures that Respondent is probably trying to sell them. Respondent’s passive holding of both domain names for over three years illustrates evidence of bad faith use and registration.
Respondent had actual knowledge of Complainant’s rights in the mark before renewing the domain name, as evidenced by Respondent’s decision to renew the domain names after the failed purchase negotiations with Complainant.
B. Respondent
Respondent admits that the trademark is identical to the domain names in dispute. However, Respondent intends to use this domain name at some point in time. Respondent and his sister will start a helpdesk for abused and socially underprivileged children, and have started to assemble a team of therapists and social workers.
Respondent contends that it did not register the domain name with the intention of selling it, no offers were made in regards to the domain name until Complainant began the negotiations. Respondent has a right to begin his negotiations where he sees fit.
Respondent contends that it registered the domain name in August 2009, prior to Complainant’s use of its mark. Respondent could not have known of any interests owned by Complainant when registering the domain name because Complainant had not started using its mark yet.
The Panel finds that:
1. the Domain Names <helpscout.com> and <help-scout.com> are confusingly similar to Complainant’s mark,
2. the Respondent has not established rights and legitimate interests in the Domain Names <helpscout.com> and <help-scout.com>, and
3. the Respondent has not registered the Domain Names <helpscout.com> and <help-scout.com>, in bad faith.
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: Foreign Language Response
The Panel notes that while the proceeding is in the German language, both Complainant and Respondent have provided copies of their materials in English. The Panel notes that while the dispute was supposed to be in German, the submission of English language materials gives the Panel the option to elect to continue with these proceedings in English or German.
Complainant provides software for e-mail integration under the USPTO registered HELP SCOUT mark. See Reg. No. 4,092,655 registered on Jan. 31, 2012 (filed on May 31, 2011). The Panel agrees that USPTO registration illustrates Complainant’s Policy ¶ 4(a)(i) rights in the mark dating back to the May 31, 2011 filing date. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (Stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant argues that it began its continuous use of the HELP SCOUT mark at least as early as July 14, 2010. Complainant asserts that it owns and operates a domain name <helpscout.net> which it has used for its business since March 28, 2010. Complainant claims that it has made substantial investments in the advertising, marketing, and promotion of the HELP SCOUT mark. Since the Panel agrees it finds that Complainant’s commercial enterprise under the HELP SCOUT mark dates Complainant’s Policy ¶4(a)(i) rights in the mark back to March 28, 2010. See Goepfert v. Rogers, FA 861124 (Nat. Arb. Forum Jan. 17, 2007) (“[T]here is no particular amount of evidence required in order to establish common law rights. The determination of what is sufficient is ad hoc based on the specific facts and circumstances involved, as is the scope of the rights once established.”).
Complainant argues that Respondent’s <helpscout.com> and <help-scout.com> domain names are confusingly similar to the HELP SCOUT mark. Complainant notes that the <help-scout.com> domain name featured only the addition of a hyphen. Complainant also notes that the <helpscout.com> domain name merely deletes the spacing in the HELP SCOUT mark. Both domain names feature the mandatory addition of a gTLD—“.com.” The Panel agrees that the general removal of spacing for the domain names, the addition of a hyphen in the <help-scout.com> domain name, and the addition of the gTLD “.com” all render the domain names confusingly similar to the HELP SCOUT mark under Policy ¶ 4(a)(i). See Teleplace, Inc. v. De Oliveira, FA 95835 (Nat. Arb. Forum Dec. 4, 2000) (finding that the domain names <teleplace.org>, <tele-place.com>, and <theteleplace.com> are confusingly similar to the complainant’s TELEPLACE trademark).
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
(a) He has made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute;
(b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Panel determines that the Complainant has discharged the onus of proof for the second criterion: The Respondent has failed to demonstrate any legitimate right or interest.
According to the majority of Panel decisions this Panel also takes the position that while Complainant has the burden of proof on this issue, once the Complainant has made a prima facie showing, the burden of production shifts to the Respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue. See Document Technologies, Inc. v. International Electronic Communications, Inc., D2000-0270 (WIPO June 6, 2000); Inter-Continental Hotel Corporation v. Khaled Ali Soussi, D2000-0252 WIPO July 5, 2000); Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the Complainant has asserted that the Respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the Respondent”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant contends that Respondent is not commonly known by the <helpscout.com> and <help-scout.com> domain names. Complainant asserts that Respondent’s WHOIS information does not indicate that Respondent is commonly known by these domain names. The Panel notes that the WHOIS information lists “Andy Eder” as the registrant of the domain names. The Panel agrees that Respondent is not commonly known by the <helpscout.com> and <help-scout.com> domain names because there is nothing to suggest otherwise. 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 further argues that Respondent has never used the <helpscout.com> and <help-scout.com> domain names in connection with any bona fide offering of goods or services, or legitimate noncommercial or fair use. Complainant notes that both domain names are being held passively, and have been undeveloped for roughly three-and-a-half years. The Panel agrees that Respondent’s failure to use or make any demonstrable plan to use the disputed domain names shows that Respondent has neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use planned for the domain names. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that when the respondent declares its intent to develop a website, “[Policy ¶] 4(c)(i) requires Respondent to show 1) ‘demonstrable’ evidence of such preparations to use the domain name, and 2) that such preparations were undertaken ‘before any notice to [Respondent] of the dispute’”).
Complainant also argues that after Complainant offered to buy the <helpscout.com> domain name for $5,000.00, Respondent offered to sell the domain name to Complainant for around $335,000.00. Complainant argues Respondent’s use of the domain name simply to sell it undermines any claim of rights and legitimate interests in the domain name. Since the Panel agrees it finds that Respondent’s willingness to sell the domain name in such an excess of out-of-pocket expenses illustrates a lack of Policy ¶ 4(a)(ii) rights and legitimate interests. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name).
Respondent asserts that it registered the domain names in August 2009, prior to Complainant’s use of its mark. Respondent asserts that it could not have known of any interests owned by Complainant when registering the domain names because Complainant had not started using its mark yet. Since the Complainant was not able to prove the contrary, the Panel agrees that Respondent did not register this domain name in bad faith when Complainant had not started using the mark when the domain names were registered. See Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb. Forum May 16, 2007) (determining 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).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <helpscout.com> and <help-scout.com> domain names REMAIN WITH Respondent.
Dr. Reinhard Schanda, Panelist
Dated: April 29, 2013
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