Versa Capital Management, LLC v. Affordable Webhosting, Inc.
Claim Number: FA0903001250988
Complainant is Versa Capital Management, LLC (“Complainant”), represented by David
M. Perry, of Blank
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <versacapital.com>, registered with Dotster.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 6, 2009; the National Arbitration Forum received a hard copy of the Complaint on March 9, 2009.
On March 6, 2009, Dotster confirmed by e-mail to the National Arbitration Forum that the <versacapital.com> domain name is registered with Dotster and that the Respondent is the current registrant of the name. Dotster has verified that Respondent is bound by the Dotster registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 11, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 31, 2008 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
A timely Response was received and determined to be complete on March 27, 2009.
On March 31, 2009, Complainant submitted an Additional Submission that was deemed to be timely and in compliance with Supplemental Rule #7.
On April 6, 2009, the Respondent submitted an Additional Submission that was deemed to be timely.
On April 3, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Richard Hill as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The Complainant alleges that, through continuous and exclusive use of the distinctive service mark VERSA CAPITAL since at least as early as September 2007, its marks have acquired significant goodwill and it has thus become well-known as VERSA CAPITAL in connection with its business and financial services. Versa Capital is a well-known and successful investment firm desirous of the domain name consisting of its service mark. Complainant’s VERSA CAPITAL mark has been widely used by Complainant since at least 2007.
According to the Complainant, there is no evidence that the Respondent has ever been known by VERSA CAPITAL or that Respondent has any other rights or legitimate interests in the mark. Rather, it appears that Respondent has registered and currently uses the domain to generate “click-through” advertising fees. At all times relevant to the registration and use of the domain, the Respondent was or should have been aware that a legitimate business was using or would be using the mark at a future time. Thus, the Respondent registered and uses the mark with the bad faith intent to benefit from the goodwill developed by another, in this case the Complainant, as customers would look for the Complainant’s website and thereby generate revenue for the Respondent. The Respondent likely hoped to ultimately sell the domain to a rightful trademark holder for an amount in far excess of the cost of obtaining the domain.
Further, says the Complainant, the Respondent’s bad faith motives were confirmed when the Complainant reached out to make an offer to purchase the disputed domain name. The Respondent confirmed that he operates an “advertising business” – this is an obvious euphemism for a click-through revenue generator, as there is no evidence that Respondent ever used VERSA CAPITAL in a legitimate business or for any purpose other than as a domain name to host third-party links and to enjoy an elevated level of traffic and click-through revenue on the basis of trademark rights developed by another. Further, the Respondent offered to sell the domain to Complainant for the lofty price of $175,000.
The Complainant goes on to argue that it has trademark rights in the mark VERSA CAPITAL, that the disputed domain name is confusingly similar to that mark, that the Respondent lacks rights or legitimate interests in the disputed domain name, and cites UDRP precedents to support its arguments. For the reasons set forth below, the Panel finds that these arguments are not relevant for the present case, so they will not be summarized in detail here.
The Complainant alleges that the Respondent registered and is using the disputed domain name in bad faith because parking pages such as the one employed by the Respondent are presumed to indicate bad faith as these links generate click-through revenue. That is, it can be inferred from the third-party links at the disputed domain name that the Respondent is using the domain to intentionally attempt to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the Complainant’s mark. The Complainant cites UDRP cases to support its argument.
Further, says the Complainant, when circumstances indicate that a registrant registered or has acquired a 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, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name, there is evidence of bad faith. Here, the Respondent sought to sell the domain name for valuable consideration: $175,000, which is in extreme excess of any likely out-of-pocket costs. Because the Respondent has never developed legitimate content on the website, the circumstances indicate that obtaining this valuable consideration was the Respondent’s primary purpose at the time it acquired the domain name. The Complainant cites UDRP cases to support its argument.
According to the Complainant, there is no provision in the Policy barring a Complainant from prevailing where its trademark rights were acquired subsequent to the domain name registration, see CDG v. WSM, FA 933942 (Nat. Arb. Forum May 2, 2007).
The Respondent states that it is a corporation specializing in Internet advertising. It lawfully registered the disputed domain name on September 20, 2002 and has been using it in connection with its advertising business since that date.
The Respondent alleges that the Complainant fails to demonstrate that it has common-law rights in the VERSA CAPITAL mark. The evidence it presents does not show that the mark has been used in commerce. Further, its 2007 application to register the mark with the U.S. Patent and Trademark Office (USPTO) is an “intent-to-use” application; therefore, the Complainant acknowledged in its application that at the time it filed, it had no common-law trademark rights in the VERSA CAPITAL mark.
The Respondent states that its offer to sell the disputed domain name was made in response to an unsolicited e-mail from the Complainant in which the Complainant expressed a desire to purchase the disputed domain name. It should be noted that in none of those e-mails did the Complainant make a claim that the Respondent was infringing its trademark rights. The Complainant did not demand that the Respondent cease and desist or that the Respondent turn the disputed domain name over to it. Thus, the evidence submitted by the Complainant shows not only that the Respondent registered and is using the disputed domain name in good faith, but also that, just weeks before filing the complaint, the Complainant treated the Respondent as the good faith owner of the disputed domain name.
The evidence submitted by the Complainant establishes that it knew or should have known that it could not prove one or more of the three elements needed to succeed in this arbitration. Thus, it is clear that the Complainant filed the Complaint in bad faith and is engaging in reverse domain name hijacking.
The Respondent goes on to argue that the Complainant does not have trademark rights in the string VERSA CAPITAL. It cites UDRP cases to support its arguments. For the reasons set forth below, the Panel finds that these arguments are not relevant for the present case, so they will not be summarized in detail here.
According to the Respondent, it engages in a bona fide offering of a service, although it generates revenue through links to third-party sites. The Respondent uses the disputed domain name as a portal for users who are seeking ways to advertise. When arriving at the Respondent’s site, a user is presented with two options. The links on the right side are for businesses that can handle all of a user’s advertising needs. The links on the left are more narrowly focused on advertising in a specific medium. By visiting the Respondent’s site, a user can easily find sites to handle its advertising needs without needless searching. The Respondent charges a modest fee per click in exchange for bringing these links together in an easy-to-use format.
Further, says the Respondent, generally, it is impossible to register a domain name in bad faith with respect to a trademark that did not exist at the time of registration. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Paragraph 3.1 (“Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right.”) A possible exception exists where the respondent registers a domain name that it knows is identical or similar to a mark to which complainant will have rights in the future. See WIPO Overview, Paragraph 3.1 (“In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found.”)
According to the Respondent, it registered the disputed domain name in good faith years before the Complainant even existed. The exception discussed by the WIPO Overview does not apply because it would be impossible for the Respondent to be aware of the Complainant’s future trademark rights when it would be years before either the Complainant or its licensee existed.
The Respondent notes that the Complainant
alleges that the Respondent could have registered the disputed domain name in
bad faith with the hope that the Respondent could sell it to a future company
with a similar name. The merits of this
argument are dubious because the case cited by the Complainant states this
proposition in dictum while discussing another element of the ICANN
Policy. See CDG v.
According to the Respondent, the Complainant alleges no evidence in support of the allegation of registration in bad faith other than the Respondent’s asking price for the disputed domain name. Because the Respondent’s offer was in response to the Complainant’s unsolicited e-mail asking to purchase the disputed domain name, this cannot on its own be evidence of bad faith. The Respondent cites UDRP precedents to support its argument.
The Respondent states that it is using the disputed domain name in good faith. The Complainant alleges that because the Respondent has “click-through” advertising on its website, the Respondent is using the disputed domain name in bad faith. However, the ICANN Policy and all of the decisions cited by the Complainant state that in order to establish use in bad faith, the Complainant must show that the Respondent is “intentionally attempt(ing) to attract … Internet users … by creating a likelihood of confusion with the complainant's mark.”
But, according to the Respondent, it makes no effort to capitalize on the Complainant’s nonexistent mark. Any reasonable person seeking the Complainant’s site would know that s/he had accidentally reached the wrong website.
Further, says the Respondent, because it purchased the disputed domain name years before the Complainant or its licensee existed, let alone had trademark rights in the VERSA CAPITAL mark, it is clear that the Respondent purchased the disputed domain name in good faith. Further, the Respondent is using the domain name in good faith. It is neither attempting to cause confusion with the Complainant nor to divert users away from the Complainant’s website.
The Respondent alleges that the Complainant is engaging in reverse domain name hijacking because it knew that it had no rights in the mark when it filed its application to register the VERSA CAPITAL mark with the USPTO as an “intent-to-use” application. And the Complainant also knew that the Respondent registered the disputed domain name in good faith. The Complainant submitted evidence showing that the Respondent registered the dispute domain name years before either the Complainant or its licensee even existed. The Respondent cites UDRP cases to support its arguments.
C. Additional Submissions
It its Additional Submission, the Complainant presses its arguments to the effect that it does have trademark rights in the string VERSA CAPITAL, it disputes that the Respondent has rights or legitimate interests in the disputed domain name, and it insists that the offer to sell the disputed domain name for $175,000 is evidence of bad faith registration and use. Further, the Complainant states that the Respondent has changed the content of the web site at the disputed domain name in order to deceive the Panel. For the reasons set forth below, the Panel finds that these arguments are not relevant for the present case, so they will not be summarized in detail here.
The Panel notes that the Complainant does not attempt to rebut the Respondent’s main argument, namely that it is impossible to find bad faith registration of a domain name when it was registered prior to the acquisition of trademark rights by a complainant.
Nor does the Complainant address the Respondent’s argument regarding reverse domain name hijacking.
In its Additional Submission, the Respondent presses its case and states that the fact that it modified the website at the disputed domain name after the Complaint was filed does not indicate bad faith. The Complainant does not allege that the Respondent is seeking, by virtue of the new layout of the website, to trade on the Complainant’s alleged trademark or to confuse the Complainant’s customers or potential customers. And use of the new layout does not change the fact that the Respondent registered the website years before the Complainant existed.
For the reasons set forth below, the Panel finds that it is not necessary to summarize in more detail the Respondent’s arguments.
The disputed domain name was registered in 2002.
The Complainant first started doing business under the name VERSA CAPITAL in 2007.
The Complainant was aware of these facts when it filed its Complaint.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
For the reasons set forth below, the Panel finds that it need not analyze this element of the Policy.
For the reasons set forth below, the Panel finds that it need not analyze this element of the Policy.
As the Respondent correctly notes, it is well-established case-law under the UDRP that, in general, a finding of bad faith registration cannot be made with respect to a trademark that did not exist at the time of registration of the disputed domain name. As the WIPO Overview of WIPO Panel Views on Selected UDRP Questions says at 3.1:
Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right.
In support of this, see Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb.Forum May 16, 2007) (finding 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); see also Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001) (finding that it is “impossible” for the respondent to register disputed domain name in bad faith if the complainant company did not exist at the time of registration).
A possible exception exists where the respondent registers a domain name that it knows is identical or similar to a mark to which complainant will have rights in the future. But the Complainant provides no evidence to indicate that such was the case here. For sure, the Complainant asserts that this was the case, but mere assertions do not amount to evidence. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
The Complainant knew, when it filed the Complaint, that the registration of the disputed domain name preceded by several years any rights that the Complainant may have acquired in the string VERSA CAPITAL. This is sufficient to find reverse domain name hijacking. See Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001) (finding that when the complainant knows it has no rights in the mark but brings a complaint despite this fact, the complainant has acted in bad faith and attempted Reverse Domain Name Hijacking which constitutes an abuse of the administrative proceeding); see also NetDeposit, Inc. v. NetDeposit.com, D2003-0365 (WIPO July 22, 2003) (finding reverse domain name hijacking because “Respondent's domain name registration preceded the Complainant's creation of its trademark rights”).
Having analyzed the relevant elements of the ICANN Policy, the Panel concludes that relief shall be DENIED.
The Panel finds the Complainant has attempted Reverse Domain Name Hijacking.
Richard Hill Panelist
Dated: April 14, 2009
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