ActivSure A/S v. Rikhardur Brynjolfsson
Claim Number: FA1308001516453
Complainant is ActivSure A/S ("Complainant"), represented by Gorm Lykke Østergaard, Denmark. Respondent is Rikhardur Brynjolfsson ("Respondent"), Iceland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <activsure.com>, registered with Ascio Technologies, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Dennis A. Foster as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 26, 2013; the National Arbitration Forum received payment on August 26, 2013.
On August 29, 2013, Ascio Technologies, Inc. confirmed by e-mail to the National Arbitration Forum that the <activsure.com> domain name is registered with Ascio Technologies, Inc. and that Respondent is the current registrant of the name. Ascio Technologies, Inc. has verified that Respondent is bound by the Ascio Technologies, 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 October 2, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 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@activsure.com. Also on October 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 October 21, 2013.
On October 31, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dennis A. Foster 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
- Complainant created the ACTIVSURE trademark to protect Complainant's investment in a new company that is distributing non-toxic, chemical-free cleaning and disinfecting products and solutions.
- In connection with its business, Complainant has registered the ACTIVSURE mark with the proper Danish authority and the European Union Office For Harmonization of the Internal Market ("OHIM").
- Respondent, a technical service provider to a group that invested in Complainant, forgot to update and transfer the registration of the disputed domain name, <activsure.com.>, to Complainant. Subsequent to a date set for transfer of ownership of the disputed domain name as suggested in an email sent by Respondent to Complainant, Complainant paid for such ownership rights in the name.
- Respondent has never obtained Complainant's permission to use the ACTIVSURE mark in a domain name and has never been commonly known as <activsure.com>.
- Respondent has failed to make an active use of the disputed domain name.
- Respondent has made the disputed domain name available for general sale to the public, further demonstrating Respondent's lack of rights or legitimate interests in that name.
- While it is unclear to Complainant as to whether Respondent registered the disputed domain name in bad faith, Respondent's subsequent attempt to sell the name to the public is indicative of bad faith registration and use of that name under the Policy.
B. Respondent
- Respondent built the website for and registered the disputed domain name under a contract with a third party (i.e., Icetiming Ltd.), who had an agreement with Complainant. Said contract and agreement call for transfer of registration of the disputed domain name only upon payment by Complainant to that third party of some specified sums. To date, Complainant has failed to render such payment.
- Respondent has rights and legitimate interests in the disputed domain name because he obtained it on behalf of Complainant; and, per his agreement with Icetiming Ltd., Respondent should remain the legal owner until paid for his work.
- Respondent registered the disputed domain name not in bad faith but on Complainant's behalf per prior agreements. The disputed domain name has never been used in bad faith.
Complainant is a Danish company that operates a business which distributes non-toxic, chemical-free cleaning and disinfecting products and solutions. To further its endeavors, Complainant has obtained a registration with the OHIM for the ACTIVSURE trademark (i.e., Reg. No. 11,036,779, registered Dec. 18, 2012).
Respondent is the owner of the disputed domain name, <activsure.com>, which was registered September 19, 2012. Respondent has not put the name into use.
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: Business/Contractual Dispute Outside the Scope of the UDRP
Respondent argues that the current dispute is outside the scope of the UDRP and is governed instead by a contract dated September 15, 2012 (Response Annex entitled "Contract-15-sept."). The Amended Complaint does not refer to said contract, but does suggest that some form of relationship—as technical service provider to a potential investor group of Complainant —did exist between Respondent and Complainant prior to Respondent's registration of the disputed domain name.
The Panel notes that several prior panels declined to render decisions in UDRP cases where complex contractual and/or business disputes underlay the domain name dispute brought before those panels. See Fuze Beverage, LLC v. CGEYE, Inc., FA 844252 (Nat. Arb. Forum Jan. 8, 2007) ("The Complaint before us describes what appears to be a common-form claim of breach of contract or breach of fiduciary duty. It is not the kind of controversy, grounded exclusively in abusive cyber-squatting, that the Policy was designed to address."); see also Everingham Bros. Bait Co. v. Contigo Visual, FA 440219 (Nat. Arb. Forum Apr. 27, 2005) ("The Panel finds that this matter is outside the scope of the Policy because it involves a business dispute between two parties. The UDRP was implemented to address abusive cybersquatting, not contractual or legitimate business disputes."). On the other hand, previous panels have gone on to rule in UDRP cases involving underlying business/contractual disputes where the evidence presented to those panels was sufficiently clear to allow for those rulings. See CHHJ Franchising LLC d/b/a College Hunks Hauling Junk v. Shaun Robinson, FA 1437943 (Nat. Arb. Forum May 17, 2012); see also Draw-Tite, Inc. v. Plattsburgh Spring Inc., D2000-0017 (WIPO Mar. 14, 2000) (This Panel well recognizes that its jurisdiction is limited to providing a remedy in cases of 'the abusive registration of domain names,' or 'Cybersquatting…' Like any other tribunal, however, this Panel can determine whether it has jurisdiction only from the facts and arguments presented to it. In this case, Complainant did allege bad-faith use and registration of the domain name at issue. Had Complainant proved those allegations, there would be no proper question as to this Panel's jurisdiction.").
In this case, Respondent was not a party to the agreement referred to above and there is no other evidence in the record of a direct contract between Complainant and Respondent. Also, the letter (Response Annex entitled "Letter") which appears to allege a breach of contract by Complainant and put into evidence by Respondent, again does not mention Respondent or his involvement with Complainant. Accordingly, The Panel believes that the underlying business/contract issues are not so complex in this case as to prevent a decision under the guidelines of the Policy. Thus, the Panel is inclined to follow the latter precedent cited above and shall render of a decision based upon the evidence as presented by the parties.
Complainant has presented sufficient evidence (Amended Complaint Annex D) to the Panel of Complainant's valid OHIM registration of the ACTIVSURE trademark to establish the rights necessary to satisfy Policy ¶ 4(a)(i). See Reuters Global Res. v. Gilbert, FA 1460782 (Nat. Arb. Forum Oct. 17, 2012) ("The Panel finds that Complainant has established rights in the THOMSON-REUTERS mark under Policy ¶ 4(a)(i) through its trademark registration with the OHIM."); see also Aktieselskabet af 21. Nov. 2001 v. Jack Sun, FA 1423051 (Nat. Arb. Forum Feb. 15, 2012) ("The Panel determines that Complainant owns rights in its JACK JONES mark under Policy ¶ 4(a)(i) by virtue of its trademark registration with the OHIM…regardless of where Respondent resides or operates.").
Complainant asserts that it has given Respondent no permission to use Complainant's trademark in a domain name, and the Panel has ascertained that the disputed domain name is identical to that trademark. Thus, the Panel believes that Complainant has sustained a prima facie case that Respondent has no rights or interests in the disputed domain name, which case Respondent must rebut to prevail as to this second element of the Policy. See 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."); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
Respondent claims that he is neither using nor making preparations to use the disputed domain name in any commercial or noncommercial manner. Ergo, Respondent cannot assert rights or interests in that name in accordance with the criteria set forth in Policy ¶¶ 4(c)(i) or (iii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) ("The Panel finds that the passive holding of a domain name that is identical to Complainant's mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii)."); see also Am. Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding that the respondent had no rights or legitimate interests in the disputed domain name per Policy ¶¶ 4(c)(i) or (iii) where respondent made no use of that name). Moreover, Respondent fails to contend that he, or a company that he owns, is commonly known as the disputed domain name, eliminating Policy ¶ 4(c)(ii) as a rationale to support such rights or interests.
Respondent's line of defense is the contention that he registered the disputed domain name on Complainant's behalf in furtherance of a business arrangement between Complainant and a third party. Given that Respondent does not assert that Complainant has ever relinquished its intent to use the disputed domain name, the Panel views this contention as an admission by Respondent that he neither sought nor now possesses any rights or legitimate interests in the disputed domain name. The Panel believes that Respondent's professed role as a mere conduit does not grant him those rights or interests.
As a result, the Panel concludes that Complainant has satisfied the second element required under the Policy.
As Complaint contends, and as it has been established, that Respondent has been making no use of the disputed domain name, the Panel notes that Complainant cannot rely on Policy ¶ 4(b)(iv) for support in demonstrating that Respondent has registered and is using the name in bad faith. Furthermore, Complainant has also failed to invoke Policy ¶¶ 4(b)(ii) or (iii) in this vein.
Rather, Complainant contends that Respondent is offering the disputed domain name for sale —presumably for an amount significantly in excess of Respondent's out-of-pocket acquisition costs—as evidence of bad faith registration and use of the name per Policy ¶ 4(b)(i). However, the only evidence (Amended Complaint Annex B) that Complainant has produced to support this contention is an email in which—under the reading most favorable to Complainant —Respondent's agent makes reference to one rejected third party solicitation to purchase the disputed domain name. The Panel finds that such a minimal production is simply insufficient to satisfy Complainant's burden of proof as to the contention that Respondent's primary purpose in registering the disputed domain name was to sell, rent or otherwise transfer it. Thus, the Panel rules that ¶ 4(b)(i) is also inapplicable in this case. See First Showing v. Localposts, FA 1366306 (Nat. Arb. Forum Feb. 18, 2011) (finding that evidence that the respondent received an unsolicited offer from a third party to purchase the disputed domain name did not constitute bad faith registration and use of the name under Policy ¶ 4(b)(i)); see also Mark Warner 2001 v. Larson, FA 95746 (Nat. Arb. Forum Nov. 15, 2000) ("…simply considering to sell or even offering to sell a domain name is insufficient to amount to bad faith under the ICANN Policy, because the domain name must be registered primarily for the purpose of selling it to the owner of trademark for an amount in excess of out-of-pocket expenses.").
The Panel acknowledges that, outside the criteria suggesting bad faith as delineated in Policy ¶ 4(b), prior Policy panels have found nonuse of a disputed domain name sufficient in some circumstances to constitute bad faith registration and use of such a name. See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) ("The Respondent has made no use of the domain name or website that connects with the domain name. Passive holding of a domain name permits an inference of registration and use in bad faith."); see also Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) ("…it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith."). However, almost all of those cases involve respondents who are completely unconnected with the respective complainant. In this case, Complainant concedes that Respondent registered the disputed domain name pursuant to a business arrangement in which Complainant was willingly engaged, and thus the nonuse rationale of those prior cases does not control here.
The Amended Complaint actually avers that "We do not believe that the Respondent [has] registered the domain in bad faith…”A majority of prior UDRP panels have noted that for a complainant to prevail regarding the third element of the Policy, that complainant must establish that both (i) the domain name in question be registered in bad faith and (ii) the domain name in question be used in bad faith. See Limco, Inc. v. Jenkins GMC, FA 115082 (Nat. Arb. Forum Sept. 4, 2002) ("The Panel notes that paragraph 4(a)(iii) of the Policy requires both registration in bad faith and use in bad faith."); see also Telstra, supra ("The significance of the use of the conjunction 'and' is that paragraph 4(a)(iii) requires the Complainant to prove use in bad faith as well as registration in bad faith."). Therefore, it would appear to the Panel that Complainant is itself unsure as to whether it should prevail as to the totality of circumstances required to be proved under Policy ¶ 4(a)(iii).
As a result, the Panel concludes that Complainant has failed to satisfy the third element required under the Policy.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Dennis A. Foster, Panelist
Dated: November 14, 2013
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