national arbitration forum

DECISION

 

Webanywhere Ltd. v. Marchex Sales, LLC / Brendhan Hight

Claim Number: FA1303001491617

PARTIES

Complainant is Webanywhere Ltd. (“Complainant”), Nevada, USA.  Respondent is Marchex Sales, LLC / Brendhan Hight (“Respondent”), represented by John Berryhill, Pennsylvania, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <webanywhere.com>, registered with eNom, Inc.

 

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflicts in serving as Panelists in this proceeding.

 

Ms. Dawn Osborne, Hon. Bruce Meyerson (Ret.), Darryl C. Wilson, Chair, as Panelists.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 26, 2013; the National Arbitration Forum received payment on March 26, 2013.

 

On March 27, 2013, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <webanywhere.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the names.  eNom, Inc. has verified that Respondent is bound by the eNom, 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 April 2, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 22, 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@webanywhere.com.  Also on April 2, 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 April 16, 2013.

 

On April 29, 2013 pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Ms. Dawn Osborne, Hon. Bruce Meyerson (Ret.), Darryl C. Wilson, Chair, as Panelists.

 

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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Policy ¶ 4(a)(i): Complainant’s Rights / Confusing Similarity

• Complainant holds United Kingdom Intellectual Property Office (“UKIPO”) trademark registrations for the WEBANYWHERE mark.  See Reg. No. 2,558,489 registered on Sept. 13, 2010; Reg. No. 2,558,493 registered Sept. 13, 2010. 
• The domain name is identical to the WEBANYWHERE mark. 

Policy ¶ 4(a)(ii): Respondent’s Rights & Legitimate Interests

• The domain name has no relevant information on it.  There is no evidence of a charitable or noncommercial offering via this domain name.  The domain name’s content pages provide the Internet user with the ability to make an attempt to buy the domain name.  Complainant contacted Respondent, inquiring about purchasing the domain name, and was told the domain name is for sale for $30,000.

Policy ¶ 4(a)(iii): Respondent’s Bad Faith Use & Registration

• Respondent’s only purpose in holding this domain name is to sell the site to the legitimate trademark owner, far in excess of any reasonable cost.  Respondent’s counter-offer to sell the domain name for $30,000.00 evidences this offer.

 

B. Respondent

Policy ¶ 4(a)(i): No Need for Confusingly Similar Analysis

• Ordinarily a complainant must have established trademark rights before the domain name in dispute was registered.  Respondent acknowledges that chronology of registrations is typically recognized under elements of the Policy other than ¶ 4(a)(i), but the Respondent merely wishes to note up front that Complainant’s failure to render evidence proving the seniority of its mark makes an investigation into confusing similarity a non-issue.

Policy ¶ 4(a)(ii): Respondent’s Rights & Legitimate Interests

• There is nothing neither surprising nor unusual about the use of the term “web anywhere” to provide general interest links to web development and hosting services.  Respondent does acquire revenues through these advertisements, and has done so for eight years—longer than Complainant alleges using its WEBANYWHERE mark.  Respondent is merely using two dictionary terms, in conjunction, to make an offer of general advertisements.  It is tiresome that Complainant exhibits the inability to conduct a simple search through the Forum’s UDRP database to learn that this use has been found to be legitimate.  Respondent cites to several UDRP decisions in which it has prevailed in its use of the generic-word domain names to host advertisements.
• Respondent’s rights are also shown by the fact that it has used the domain name in offering these general hyperlinks for a period of time that exceeds Complainant’s use of the WEBANYWHERE mark.
• Complainant has provided scant allegations in the Complaint to find in favor of its arguments.  Complainant simply states that there is “no relevant information” on the domain name, while also providing evidence that Respondent is in fact using the domain name to provide general advertisements that correlate to the generic phrase “web anywhere.”

Policy ¶ 4(a)(iii): Respondent Lacks Bad Faith

• Respondent’s possession and of domain names is not in bad faith even though it gets offers to sell those domain names.  Respondent gets so many requests from parties wishing to buy its domain names that it has placed contact information on the domain names’ websites to aide users in contacting Respondent.  There is no evidence that Respondent’s primary purpose in registering this domain name was to sell it, and it only provided its counter-offer to Complainant after Complainant initiated communications with Respondent.
• Respondent acquired this domain name in its acquisition of the registrant, Ultimate Search Inc., and the domain name was registered on April 7, 2002.  Complainant’s mark was not used, filed, or registered until years later.  Respondent thus could not have had any bad faith intent in registering the domain name because Respondent could have had no conceivable duty of notice of Complainant’s then-nonexistent mark.

 

FINDINGS

The Panel finds that Complainant has failed to establish that Respondent lacks rights or legitimate interests in its registration of <webanywhere.com>.

 

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.

 

Identical and/or Confusingly Similar

Because Complainant has failed to establish that Respondent lacks rights or legitimate interests in the disputed domain it is not necessary for the Panel to address this element in detail.

Rights or Legitimate Interests

The Panel notes that 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), and then the burden 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). The Panel finds that Complainant has failed to make the required prima facie case.

 

Ordinarily the requirements of Policy ¶ 4(a)(i), require the complaining party to have trademark rights before the domain name in dispute was registered. See Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001) (“under ICANN rules, a trademark must predate the domain name”); see also The New York Times Company v. Name Administration Inc. (BVI) FA 1349045 (Nat. Arb. Forum Nov. 17, 2010) (“While registration of a domain name before a Complainant acquires trademark rights is not specifically identified in the UDRP Policy as an automatic defense to a complaint, the Panel does not believe that the intent of the Policy requires a Panel to move forward on a complaint when the Complainant’s rights in the disputed domain name are at best junior to the rights of the Respondent.”).

 

Respondent has owned the domain name since acquiring it in an asset purchase in November 2004. The WHOIS data indicates that the domain name was originally registered in 2002. Nowhere does the Complainant address the fact that Respondent’s registration and use of the domain name, pre-date any evidence of trade or service mark rights proffered in the Complaint. Complainant merely relies on its 2010 trademark registrations as well as later registered domains.

Complainant’s establishment of rights in its WEBANYWHERE mark and related domains is patently insufficient to negate Respondent’s evidence of legitimate senior rights in the disputed domain name.

 

Registration and Use in Bad Faith

Because Complainant has failed to establish that Respondent lacks rights or legitimate interests in the disputed domain it is not necessary for the Panel to address this element in detail. See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”); see also Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001) (finding that it is “impossible” for the respondent to register the disputed domain name in bad faith if the complainant company did not exist at the time of registration)

 

DECISION

Because the Complainant has failed to establish all three elements as required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be DENIED.

 

Accordingly, it is Ordered that the <webanywhere.com> domain name REMAIN WITH Respondent.

 

 

Ms. Dawn Osborne, Hon. Bruce Meyerson (Ret.), Darryl C. Wilson, Chair, Panelists

Dated:  May 13, 2013