The Preferred Prepaid, Inc. dba TPP v. Matt Serlin / DNStination Inc.
Claim Number: FA1509001638598
Complainant is The Preferred Prepaid, Inc. dba TPP (“Complainant”), represented by Clifford D. Hyra, Virginia, USA. Respondent is Matt Serlin / DNStination Inc. (“Respondent”), represented by Alexandre A. Montagu of MontaguLaw, P.C., USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tpp.com>, registered with MarkMonitor Inc.
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.
The Honourable Neil Anthony Brown QC, Clive Elliott, QC and Darryl C. Wilson, Chair, as Panelists.
Complainant submitted a Complaint to the Forum electronically on September 18, 2015; the Forum received payment on September 18, 2015.
On September 23, 2015, MarkMonitor Inc. confirmed by e-mail to the Forum that the <tpp.com> domain name is registered with MarkMonitor Inc. and that Respondent is the current registrant of the name. MarkMonitor Inc. has verified that Respondent is bound by the MarkMonitor 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 September 29, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 19, 2015 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 email@example.com. Also on September 29, 2015, 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 19, 2015.
Complainant’s Additional Submission was received and determined to be compliant on October 26, 2015.
Respondent’s Additional Submission was received and determined to be compliant on October 29, 2015.
On October 27, 2015, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC, Clive Elliott, QC and Darryl C. Wilson as Panelists.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant uses the TPP mark in connection with telecommunication services, namely with respect to prepaid cellphones. Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”), (Registry No. 4,498,389, registered Mar. 18, 2014). Respondent’s <tpp.com> domain name is identical / confusingly similar to the TPP mark as it incorporates the mark entirely and merely appends the generic top-level domain (gTLD) “.com”.
Respondent has no rights or legitimate interests in the <tpp.com> domain name. Respondent is not commonly known by the <tpp.com> domain name. Additionally, Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use of the domain. Instead, the resolving page has no content associated with it as Respondent has failed to make any active use of the <tpp.com> domain name (displaying, “This webpage is not available”).
Respondent has registered and used the <tpp.com> domain name in bad faith. Respondent’s inactive holding of the <tpp.com> domain name imputes all other paragraph 4(b) elements. Respondent had actual knowledge of the TPP mark and Complainant’s rights in the mark at the time of registration.
Complainant further contends the Panel should take note of Complainant’s assertion under Policy 4(a)(iii) that historically, the <tpp.com> domain name was acquired by Thomson Reuters Holdings Inc. between March 23, 2012 and June 19, 2012. Complainant argues that Respondent acquired the <tpp.com> domain name on August 19, 2015. The Panel should find, as past panels have, that a transfer of a domain name is a new “registration” such that the good faith of the registration must be evaluated pursuant to the date of the transfer. See Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (determining that, even though the disputed domain name was registered earlier, the respondent’s rights in the disputed domain name began when the domain name was transferred to the respondent, which complainant’s rights in the mark predated).
Respondent is a global, multinational corporation that consists of a number of corporate entities in the business fields of finance, law, tax, accounting, science, and media. Respondent consolidated its domain name portfolio in 2012, which resulted in a change in the formal listing of the “registrant” of the disputed domain name. Respondent has provided a Whois history of the disputed domain from August 2001, the beginning of Whois data collection. Respondent replied to Complainant’s demand letter, indicating its registration of the disputed domain name in 1994.
Complainant’s USPTO registration seems to satisfy the threshold requirement of Policy ¶ 4(a)(i).
Respondent has satisfied the requirements of Policy ¶ 4(a)(ii). First, Respondent has demonstrated that it has had rights in the <tpp.com> domain name since at least 2001, and its use has constituted a bona fide offering as the TPP mark is used as an acronym for “Thomson Professional Publishing.” TPP is a generic three (3)-letter term that has been used not only by Complainant, but by Respondent and many others. Respondent has provided numerous examples of how other companies have used the TPP mark.
Complainant’s assertions of bad faith are unsupported by evidence. Respondent had rights to the <tpp.com> domain name long before Complainant asserted rights in the TPP mark. Complainant has not proven Respondent’s lack of rights and legitimate interests in the <tpp.com> domain name and therefore a finding of bad faith is precluded.
Complainant’s actions in bringing this claim constitute reverse domain name hijacking.
C. Additional Submissions
Respondent has merely conjured up the “Thomson Reuters” entity to connect all domain registrants in the relevant WHOIS history. Respondent has not, in fact, provided evidence of any connection “Thomson Reuters” has to Respondent or to any actual entity. Even if all relevant transferees in question shared a parent entity, each transfer itself would not constitute legal fiction, and would need to be recognized by the Panel.
Despite Respondent’s inability to apparently understand or properly weigh the chain of title of ownership evidence Complainant provided in its exhibits, Complainant has provided a supplemental affidavit further proving the domain name’s origins and its successors in ownership. Complainant misses the point that Respondent’s rights predate Complainant’s interests and thus reflect a legitimate interest that is incapable of reflecting bad faith registration or use.
Complainant is The Preferred Prepaid, Inc. dba TPP of Irvine, CA, USA. Complainant is the owner of the March 2014 domestic registration for the mark TPP which it uses in connection with its provision of goods and services in the telecommunications business, principally providing prepaid minutes for cell phone services. Complainant states, “The Mark has been in use at least since May 17, 2013 with the listed services, including via the domain thepreferredprepaid.com”.
Respondent is Matt Serlin / DNStination Inc. of San Francisco, CA, USA. Respondent’s registrar’s address is listed as San Francisco, CA, USA as well. Respondent indicates that Matt Serlin/DNStination Inc. is named in this proceeding as a result of a privacy service for the true registrant Thomson Reuters Global Resources and authorizes the panel to recognize the true registrant for these proceedings.
Respondent Thomson Reuters Global Resources is a global leader in providing information for professionals in the fields of finance, law, tax and accounting, science and media. Respondent, formed as a result of a 2007 merger, employs approximately 55,000 people in more than 100 countries. Prior to 2007 Thomson and Reuters were two separate companies owning a variety of assets including domain names. Thomson Professional Publishing was one of the companies on the Thomson side and the owner of the domain name <tpp.com> which it registered in 1994. Respondent stopped hosting an active site for the domain name in 2002 and in 2015 decided to offer the domain name for sale to the public. Whois, Wayback, affidavits and supplemental resources indicate a chain of title dating back from the present to 1994 in which ownership of the disputed domain has continuously resided in the hands of the Respondent or one of its corporate predecessors in interest.
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.
Complainant uses the TPP mark in connection with telecommunication services, namely with respect to prepaid cellphones. Complainant owns a trademark registration with the USPTO, as evidenced by USPTO Registry No. 4,498,389, registered Mar. 18, 2014. Prior panels have agreed that USPTO registrations confer rights in a mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”). The Panel here finds that Complainant has rights in the TPP mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <tpp.com> domain name is identical / confusingly similar to the TPP mark as it incorporates the mark entirely and merely appends the gTLD “.com.” Past panels have found that the addition of gTLD’s provide no distinction from registered marks. 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 here finds that Respondent’s <tpp.com> domain name is identical / confusingly similar to the TPP mark under Policy ¶ 4(a)(i).
While Respondent argues that its registration of the <tpp.com> domain name predates Complainant’s alleged rights in the mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).
Although Respondent further contends that the <tpp.com> domain name is comprised of a common and generic/descriptive acronym, the Panel finds that such a determination is also not necessary under Policy ¶ 4(a)(i) as this portion of the Policy again considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
Complainant has proven this element.
The Panel recognizes 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), 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 Complainant has NOT met this burden.
Respondent argues it has satisfied the requirements of Policy ¶ 4(a)(ii). Respondent’s proofs demonstrate that it has had rights in the <tpp.com> domain name since at least 1994, and its use has constituted a bona fide offering as the TPP mark was used as an acronym for “Thomson Professional Publishing.” Respondent has provided various historical screenshots of resolving pages with respect to the <tpp.com> domain name). Complainant does not dispute the time of the domain name’s registration but instead seeks to have the Panel treat changes in Respondent’s business structure along with concomitant changes in its use of the domain name as a series of new transactions leading up to the most recent offer for public sale in August 2015. The Panel refuses Complainant’s invitation to engage in such a charade to enable Complainant to claim that it’s trademark rights were not predated by Respondent’s registration and use of the disputed domain. Although Complainant should have known of the folly of its position through due diligence prior to filing this case, it is beyond question that Complainant was made fully aware of Respondent’s position through correspondence with Respondent. It is patently obvious that Respondent has demonstrated it has been commonly known by the disputed domain name through its bona fide offerings as “Thomson Professional Publishing” or “TPP.” See Kryton Mktg. Div., Inc. v. Patton Gen. Contracting, FA 123868 (Nat. Arb. Forum Oct. 21, 2002) (holding that the respondent had rights and legitimate interests in the disputed domain name as it had been commonly known by the domain name and has been using the name "liquid siding" in marketing its goods and services since the 1990s); see also Inter-Tel, Inc. v. Marcus, FA 727697 (Nat. Arb. Forum July 27, 2006) (finding that the respondent’s use of the disputed domain name in the resale of complainant’s products constitutes a bona fide offering of goods or services in accord with Policy ¶ 4(c)(i) where the respondent actually offered the goods or services at issue, the respondent used the site to sell only the trademarked goods, the site accurately disclosed the registrant’s relationship with the trademark owner, and the respondent did not try to corner the market in all domain names, (which would have thus deprived the trademark owner of reflecting its own mark in a domain name)).
Respondent also argues that the <tpp.com> domain name is common and generic/descriptive, and therefore, Complainant does not have an exclusive monopoly on the acronym, TPP, on the Internet. Complainant’s only argument regarding the nature of its mark is that it cannot be generic because it does not denote a genus. This rather farcically myopic statement clearly illustrates a misstatement, misunderstanding and/or purposeful misdirection in regards to fundamental trademark law. Marks that are used to indicate a genus are indeed one type of mark deemed generic but those certainly are not the only type of generic marks. Complainant fails to undertake the substantial, and necessary, burden of defending its three letter acronym as distinctive. In light of Respondent’s evidence of TPP’s common usage by others, Complainant does correctly state that such use does not automatically equate to a finding that its mark is generic. But again instead of indicating why its mark is distinctive Complainant favors circumvention, essentially stating that even if its mark is generic Respondent’s failure to actively use the disputed domain recently should outweigh that trait. In light of the evidence provided by Respondent and Complainant’s failure to directly address Respondent’s assertions, the Panel finds it agrees with Respondent that Complainant’s mark is generic here, and thus Respondent through its prior use in association with Thomson Professional Publishing has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Nat. Arb. Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes); see also Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Nat. Arb. Forum July 23, 2004) (stating that “Complainant’s rights in the QWEST mark are limited to its application to the tele-communications industry,” where a variety of other businesses used the mark in unrelated fields).
Complainant has NOT proven this element.
Because the Panel concludes that Respondent has rights or legitimate interests in the <tpp.com> domain name pursuant to Policy ¶ 4(a)(ii), the Panel finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). 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.”).
Complainant has NOT proven this element.
Respondent alleges that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute. Respondent contends that Complainant is attempting to deprive Respondent, the rightful, registered holder of the <tpp.com> domain name, of its rights to use the disputed domain name. Respondent has shown that it notified Complainant in writing that it had registered the <tpp.com> domain name in 1994 in connection with its Thomson Professional Publishing business. Further, Respondent argues that Complainant did not use its purported mark until May 2013, almost twenty (20) years after Respondent demonstrated rights in the TPP mark. Additionally, the <tpp.com> domain name consists of a generic three (3)-letter term that has legitimately been used by Respondent and many others prior to Complainant’s trademark registration. Therefore Respondent’s registration and use cannot be said to constitute deliberate targeting of Complainant and its alleged rights. Finally, after filing this case, Complainant inexplicably contacted Respondent with an offer to purchase the disputed domain name further raising confusion as to Complainant’s good faith and intentions regarding this proceeding. The Panel finds that Complainant clearly knew or should have known that it was unable to prove that Respondent lacked rights or legitimate interests in the <tpp.com> domain name or that Respondent registered and is using the disputed domain name in bad faith. The Panel finds the facts of this case present overwhelming evidence that Complainant has engaged in reverse domain name hijacking. See NetDepositVerkaik v. Crownonlinemedia.com, D2001-1502 (WIPO Mar. 19, 2002) (“To establish reverse domain name hijacking, Respondent must show knowledge on the part of the complainant of the Respondent’s right or legitimate interest in the Domain Name and evidence of harassment or similar conduct by the Complainant in the fact of such knowledge.”); see also Labrada Bodybuilding Nutrition, Inc. v. Glisson, FA 250232 (Nat. Arb. Forum May 28, 2004) (finding that complainant engaged in reverse domain name hijacking where it used “the Policy as a tool to simply wrest the disputed domain name in spite of its knowledge that the Complainant was not entitled to that name and hence had no colorable claim under the Policy”).
As the Complainant has failed to establish all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be DENIED.
Accordingly, it is Ordered that the <tpp.com> domain name REMAIN WITH Respondent.
The Honourable Neil Anthony Brown QC, Clive Elliott, QC and Darryl C. Wilson, Chair, as Panelists.
Dated: November 5, 2015
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