Rocketgate PR LLC v. Mack Sullivan
Claim Number: FA1602001662354
Complainant is Rocketgate PR LLC (“Complainant”), represented by Arthur R. Petrie, II, California, USA. Respondent is Mack Sullivan (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rocketpay.com>, registered with GoDaddy.com, LLC.
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.
<<Nathalie Dreyfus>> as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 23, 2016; the Forum received payment on February 23, 2016.
On February 24, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <rocketpay.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 February 25, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 21, 2016 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 February 25, 2016, 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 Response was received and determined to be complete on March 21, 2016.
On March 23, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nathalie Dreyfus as Panelist.
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 states that it is the owner of the US trademark RocketPay No. 86436336 filed on October 27, 2014, registered on January 19, 2016, and designating the following services in class 36: “providing online payment wallet, namely, providing electronic processing of credit card transactions and electronic payments via a global computer network, financial transaction services in the nature of providing secure commercial transactions and payment options, and providing on-line stored value accounts in an electronic environment; electronic processing of credit card transactions and electronic payment services.”
Complainant indicates that the first use of this trademark was made on January 10, 2014.
Complainant raises the fact that the domain name incorporates the trademark and that the domain name is inactive.
Respondent would have no legitimate interest or rights in respect of the domain name, since the latter is apparently making no business or other use of this domain name. The domain is indeed inactive.
Complainant concludes to Respondent’s bad faith, stating that the domain name subject to the complaint was registered on November 5, 2002 and has apparently never been used for business or any other purpose. Also, client status codes set by the registrar include “clientRenewProhibited”, which, according to Complainant, is unusual and is usually enacted during legal disputes or when a domain name is subject to deletion.
For the foregoing reasons, Complainant asks for the transfer of the domain name <rocketpay.com>.
On March 21, 2016, Respondent submitted a response to the complaint filed by Complainant.
Respondent affirms that he registered the domain name in 2002 and that he has maintained this registration ever since. He notes that Complainant filed the trademark RocketPay 12 years after this registration (namely, in 2014). He also says that although his domain name is inactive, no regulation requires him to use it.
On the question of having rights or legitimate interests in the domain name, Respondent argues that he registered the domain name in 2002 with the intent of developing, alone or in partnership with another entity, a “portal similar to Paypal”. He indicates that there is no time limit to develop a website in relation with the domain name <rocketpay.com>. He also responds that unless he was a “psychic”, he could not have registered a domain name to tarnish a trademark filed 12 years later.
Regarding the element of bad faith, Respondent says that in view of the registration date of the domain name, which precedes the trademark registration of more than a decade, he could have not acted in bad faith.
Finally, Respondent claims that he contacted the Registrar regarding the status of his domain name and indicates that the Registrar informed him that the domain name was locked only because of the complaint filed by Complainant.
In conclusion, Respondent asks the Panel to recognize that the case submitted before the Forum is a case of reverse domain-name hijacking.
Complainant owns the US trademark RocketPay No. 86436336 filed on October 27, 2014, registered on January 19, 2016, and designating services in class 36. It was firstly used in 2014.
However, the Disputed Domain Name <rocketpay.com> was registered on November 5, 2002, namely almost 12 years before the filing of the above-mentioned trademark.
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.
There are two parts to the inquiry under the first element of the Policy. Firstly, Complainant must demonstrate that it has rights in a trademark and secondly, that the Disputed Domain Name is identical or confusingly similar to such trademark.
The Panel recognizes that Complainant is the owner of the following trademark: US trademark RocketPay No. 86436336 filed on October 27, 2014, registered on January 19, 2016, and designating services in class 36.
Thus, the Panel turns to the second part of the inquiry.
Here, the Disputed Domain Name identically reproduces Complainant’s above-mentioned trademark, with no other element to distinguish it from Complainant’s trademark.
Regarding the addition of the gTLD “.com” to the Disputed Domain Name <rocketpay.com>, Panels have previously held that the addition of a gTLD does not distinguish a domain name from the trademark to witch the gTLD is attached. See The Gillette Company v. RFK Associates., FA 05060000492867 (Nat. Arb. Forum, July 28, 2005) and Vanguard Trademark Holdings USA LLC v. Sergey Khromov FA1602001661904 (Nat. Arb. Forum, March 19, 2016).
In these circumstances, the Panel finds that the Disputed Domain Name is identical to the trademark in which Complainant has rights and that the requirements of Paragraph 4(a)(i) of the Policy have been satisfied.
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name.
“Complainant must make a prima facie case 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 AOL LLC v. Gerberg, FA 0608000780200 (Nat. Arb. Forum, Sept. 25, 2006).
In the present case, Complainant only argues that Respondent is “apparently making no business or other use of the registered domain” and that “there is no active web-page at the address”.
Besides, the Panel formulates the following observations:
- the Disputed Domain Name was registered on November 5, 2002 whereas the RocketPay trademark invoked by Complainant was filed on October 27, 2014. In other words, the Disputed Domain Name was registered more than a decade before the filing of the trademark, as pointed out by Respondent. It has already been stated by former Panels that the system of domain name registration is, in general terms, a “first come, first served system” and, absent pre-existing rights which may be implacable to impugn a registration, the person who registered the domain name first is entitled to use it for any legitimate purpose. See Eric B. Delisle v. Domain Administrator, Terra Serve No. D2015-2022 (WIPO Arbitration and Mediation Center, Dec. 21, 2015).
- Complainant waited over thirteen years after the registration of the domain name to initiate these proceedings;
- Respondent has not engaged in activities that could induce one to believe that he registered the Disputed Domain Name without rights or for a non-legitimate purpose. Indeed, Complainant only states that the Disputed Domain Name is inactive without any further argumentation.
In light of these elements and given the poor argumentation provided by Complainant, the Panel considers that Complainant has failed to prove a prima facie case that the Respondent lacks legitimate interest or rights in the Disputed Domain Name <rocketpay.com>.
Therefore, the Panel finds that Complainant has failed to fulfill the requirements of Paragraph 4(a)(ii) of the Policy.
In view of the finding made in respect of whether Respondent lacks rights or legitimate interests, it is not necessary to reach a conclusion on this element.
In respect of Paragraph 15(e) of the Rules, if “after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”.
The Rules define Reverse Domain Name Hijacking as the fact of “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
According to former Panels, the burden of proof of Complainant’s bad faith lies on Respondent. Mere lack of success of the complaint is not sufficient to consider that there is Reverse Domain Name Hijacking. See Florim Ceramiche S.p.A. v. Domain Hostmaster, Customer ID: 24391572426632, Whois Privacy Services Pty LTD / Domain Administrator, Vertical Axis Inc. No. D2015-2085 (WIPO Arbitration and Mediation Center, Feb. 11, 2016).
Indeed, “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 fact of such knowledge’”. See NetDepositVerkaik v. Crownonlinemedia.com No. D2001-1502 (WIPO Arbitration and Mediation Center, March 19, 2002). See also LeBoeuf Corporation v. DOMAIN ADMIN No. FA16001001655243 (Nat. Arb. Forum, Feb. 11, 2016).
Presently, given Respondent’s lack of argumentation, the Panel considers that a case of Reverse Domain Name Hijacking has not been proven.
Besides, the Disputed Domain Name is identical to Complainant’s trademark. Thus, it is not “blatantly obvious,” as stated by Respondent, that Complainant acted in bad faith.
In consequence, the Panel finds that Respondent has failed to fulfill the requirements of Paragraph 15(e) of the Policy. Respondent’s request is thus denied.
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 <rocketpay.com> domain name REMAINS WITH Respondent.
Nathalie Dreyfus, Panelist
Dated: April 5, 2016
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