The Sinclair Group Nevada, LLC v. behnam tabrizi
Claim Number: FA1606001679802
Complainant is The Sinclair Group Nevada, LLC (“Complainant”), represented by John C. Cain of Fleckman & McGlynn, PLLC, Texas, USA. Respondent is behnam tabrizi (“Respondent”), represented by Roberto Ledesma of Lewis & Lin, LLC, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The Domain Name at issue is <rapidtransformation.com> (the “Domain Name”), registered with Wild West Domains, 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.
Clive Elliott QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 16, 2016; the Forum received payment on June 16, 2016.
On June 17, 2016, Wild West Domains, LLC confirmed by e-mail to the Forum that the <rapidtransformation.com> Domain Name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, 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 June 20, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 11, 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 firstname.lastname@example.org. Also on June 20, 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 timely Response was received and determined to be complete on July 7, 2016.
Complainant submitted an Additional Submission on July 12, 2016.
On July 15, 2016 Respondent submitted an Additional Submission in reply to Complainant’s additional submission.
On July 19, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Clive Elliott QC 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 registered owner of a federal registration in the USA of the mark RAPID TRANSFORMATION (“Complainant’s Mark”) in the following classes:
a) Technical consulting services to improve the manufacturing processes for chemicals, crude substances, textiles, foods, fragrances and energy (I.C. 42 - reg no. 3,100,474, dated June 6, 2006); and
b) Business consultation: Business management consultation; Business organizational consultation (I.C. 35); Business training: Training in the use and operation of industrial manufacturing and processing equipment; Training services in the field of industrial plant operations (I.C. 41 - Reg No. 3,168,689, dated November 7, 2006)
Complainant further states that since 2004 it has offered operations management consultancy services and related services under the Complainant’s Mark, details of which are set out at its website at www.SinclairGroup.com.
Complainant contends that Complainant’s Mark has been extensively advertised and it has expended considerable effort and expense in offering quality services under its mark. Complainant further contends that as a result of its efforts, and long term use, it has developed substantial goodwill in Complainant’s Mark which is now recognized as a designation that identifies and distinguishes the quality operations management consultancy services offered by Complainant.
Complainant asserts that the Domain Name is identical or confusingly similar to Complainant’s Mark as it consists of Complainant’s Mark in full with the addition of the gTLD “.com.”
Complainant asserts that Respondent, on its website <rapidtransformation.com> (“Respondent’s Website”), which is accessible through the Domain Name at www.RapidTransformation.com, purports to offer directly competing business consultation services “to plan, mobilize, and implement transformational initiatives to elevate organizational performance and create unprecedented business results.” Complainant submits that this is likely to cause confusion among consumers as to source, sponsorship, or affiliation as it is virtually identical to Complainant’s Mark.
Complainant believes that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website at the Domain Name by creating a likelihood of confusion and therefore Respondent should be considered as having no rights or legitimate interests in respect of the Domain Name.
Complainant contends that Respondent acquired the Domain Name in April 2009 and (with the exception of Respondent’s non-trademark use of “Rapid Transformation” as the title of a book published in 2007, which also post-dates Complainant’s registrations) Respondent has not previously used the mark RAPID TRANSFORMATION and therefore has no established prior rights.
Complainant further contends that Respondent has not previously been known by the name RAPID TRANSFORMATION prior to acquiring the Domain Name and understands that Respondent changed its business name from “Tabrizi, LLC” to “Rapid Transformation, LLC” some time later in 2009 after the acquisition of the Domain Name.
Complainant states that Respondent has not been authorized or licensed to use Complainant’s Mark, nor has it any connection or affiliation with Complainant, and use of the Domain Name to redirect web users to a website offering directly competing services does not constitute a bona fide offering of goods or services.
Complainant asserts that Respondent’s attempt to capitalize on the goodwill associated with Complainant’s Mark evidences the fact that Respondent is not making a legitimate noncommercial or fair use of the Domain Name.
Respondent states that he is a best-selling author, award-winning scholar and a global business consultant, who is internationally recognized as an expert on organizational and leadership transformation. He has written five books on how organizations and businesses manage change and transformation and steps that can be taken to improve the process.
Respondent further states that his book entitled “Rapid Transformation: A 90-day Plan for Fast and Effective Change”, was published in November 2007. He contends that he has used the phrase “rapid transformation” as part of his global business consulting services since 2002.
Respondent contends that he acquired the Domain Name in April 2009 in order to promote his book and his new consulting business and that later that same year he changed his trade name to “Rapid Transformation, LLC”. He further contends that since that time, a period of over seven years, he has used the Domain Name to promote his scholarly work, books, speaking engagements and business consulting services, and to espouse his “Rapid Transformation” model.
Respondent denies Complainant’s contention that he registered the Domain Name to target Complainant or to sell it to Complainant and states that he has never used the Domain Name to refer to Complainant or Complainant’s services, and nor has he offered to sell the Domain Name to Complainant, Complainant’s competitors, or any other party.
Respondent claims that he had not heard of Complainant or Complainant’s Mark at the time he registered the Domain Name, and he first became aware of Complainant and its trademark when he received a demand letter from Complainant on September 10, 2015, which is more than six years after acquiring and using the Domain Name.
Respondent states that he informed Complainant’s counsel in a written response dated September 25, 2015 that he would not comply with Complainant’s demands, as they were unfounded, however, in a good faith attempt to try to amicably resolve the matter, he would be open to transferring the Domain Name for adequate compensation.
The wording “rapid transformation” is a common descriptive phrase and Respondent states that he registered and uses the Domain Name based on its dictionary meaning.
Respondent is not aware of any consumer confusion between his use and Complainant’s use of the phrase, and notes that Complainant did not submit evidence of consumer confusion or any evidence to support its assertion that Respondent registered the Domain Name to capitalize on Complainant’s Mark.
On June 2, 2016, Complainant filed Section 8 & 9 declarations of use and renewals for its trademark registrations with the USPTO. However, as of the date of the filing of this response, the USPTO had not yet reviewed or accepted the specimens of use submitted by Complainant. The specimens appear questionable in that they are merely “slides” with no apparent context and Complainant submitted the same four slides for each Class of services listed in its registrations.
Respondents points out that from a review of Complainant’s website it does not show any use of “Rapid Transformation” on the landing page, and further notes that Complainant’s primary mark is SINCLAIR GROUP and its services are marketed under the SINCLAIR GROUP mark. Respondent asserts that the use of the phrase “rapid transformation” appears to be buried deep, not only in Google search results, but also within Complainant’s own website and contends that Complainant’s lack of use indicates that the phrase is not uniquely associated with Complainant.
Respondent suggests that Complainant has engaged in Reverse Domain Name Hijacking as Complainant waited until 6 years after Respondent had registered the Domain Name, and nearly 10 years after release of his Rapid Transformation book, before raising the claim.
Respondent accepts that the Domain Name comprises words (“rapid” and “transformation”) identical to a trademark in which Complainant alleges it has rights, however argues that he has rights and legitimate interests in the Domain Name. The words “rapid” and “transformation” are common use, generic, dictionary words. The word “rapid” is commonly used and defined as “happening in a short amount of time: happening quickly.” The word “transformation” is commonly used and defined as “a complete or major change in someone's or something's appearance, form, etc.” The combined phrase “rapid transformation” descriptively refers to a change that happens in a short period of time. Respondent states that accordingly he registered the Domain Name for its common generic and descriptive significance and not to take advantage of Complainant’s Mark.
Given Respondent’s demonstrated business interests, the title of his book, and genuine use of the Domain Name in connection with its dictionary word meaning, plus the lack of any evidence of fame or status for Complainant’s Mark, Respondent asserts that he has legitimate rights and interests in the Domain Name.
Respondent goes on to state that his business name is Rapid Transformation, LLC, a limited liability company organized in the state of California, which evidences that he has been known by the Domain Name since 2007.
Respondent submits that Complainant has failed to put forth any evidence that Respondent is seeking to capitalize on Complainant’s goodwill.
Respondent claims his counsel advised Complainant that Respondent “may be willing to work something out, subject to “(i) adequate compensation to reimburse [Respondent] for the expense of a name change, (ii) an extended period of time to transition, and (iii) adequate compensation for any transfer of the URL.” Respondent notes that Complainant did not respond to this letter and instead initiated this proceeding nine months later.
Respondent claims he was not interested in selling the Domain Name and was merely responding to Complainant’s demands in a good faith attempt to amicably resolve the matter, and as such, Respondent’s settlement proposal represented a good faith effort to compromise and not a bad faith effort to extort.
Respondent further claims that Complainant has not provided evidence to support a finding of bad faith registration and use.
C. Complainant’s Additional Submissions
Complainant responds claiming that Respondent has not provided sufficient evidence demonstrating use of "rapid transformation" prior to the publication of his book in November 2007, and further claims that use of a phrase in a book title does not constitute trademark use. Furthermore, Complainant notes from a search of the Internet Archive Wayback Machine that Respondent's use of "rapid transformation" on its website appears to have actually begun no earlier than August 20, 2009.
Complainant contends that Respondent has been misleading regarding the history of use, as he omits mention of the fact that before he published his book in 2007 and registered the Domain Name in 2009, in 2006 he obtained a trademark registration for the mark 90 DAYS TRANSFORMATION for "Business consulting and advisory services with regard to assessing business problems, business planning and guidance, and recommending and implementing changes for optimizing performance and business turnaround."
Respondent's web site at the time the specimen was obtained was operating at the domain www.90daystransformation.com, and the specimen, which appears to be the landing page or first page of the web site, prominently bears the 90 DAYS TRANSFORMATION mark. Notably, the specimen is completely devoid of the phrase "rapid transformation."
In view of the above facts, all evidence suggests that Respondent's use of a phrase incorporating the term "transformation" prior to August, 2009 was of the mark "90 DAYS TRANSFORMATION", not "rapid transformation."
Complainant notes that Respondent argues it had no prior knowledge of Complainant's valid trademark rights when it registered the Domain Name, however points out that in 2007, before Respondent published his book, a trademark search for "rapid transformation" would have disclosed Complainant's two federal trademark registrations.
Complainant disputes Respondent’s allegations that its website displays lack of use of the mark RAPID TRANSFORMATION, and points out that use of Complainant's Mark is made on prominent portions of its website as the "About Us" and "Operational Excellence" pages. Complainant goes on to state that it makes prominent use of its RAPID TRANSFORMATION mark on a wide range of advertising materials and promotional presentations.
Complainant also denies Respondent assertions that it waited over seven years to raise a claim of cybersquatting and contends that this is an overestimation of the relevant timeline. Complainant states that the fact that it did not object to the title of the book in 2007 has no bearing on the question of delay and indeed, Complainant sent the cease & desist letter just 6 years after Respondent's apparent first use of "Rapid Transformation" on its website and shortly after Complainant first became aware of such online use.
Complainant denies Respondent’s claims that the Complaint was filed in bad faith and that Complainant has engaged in Reverse Domain Name Hijacking and argues that Respondent has provided no evidence that Complainant has acted in bad faith or filed the Complaint for purposes of harassment or abuse of the administrative proceeding.
Complainant denies that it has acted with malicious intent and either recklessness or knowing disregard, nor has it engaged in harassment or similar conduct.
D. Respondent’s Additional Submissions
Respondent refutes each of Complainant’s claims in its Additional Submission.
Complainant opens its Additional Submission with a paragraph titled “Respondent Has Not Provided Any Evidence of Prior Use of ‘Rapid Transformation’” and a following paragraph in which it notes that Respondent owned a prior trademark registration for 90 DAYS TRANSFORMATION. Respondent claims that this has no relevance to this proceeding, as it is not a priority dispute, but a UDRP proceeding.
At issue is whether Respondent registered and used the Domain Name in bad faith and for an illegitimate purpose. Complainant bears the burden of proof in this proceeding and has failed to substantiate its claim that Respondent engaged in cybersquatting.
Respondent notes that Complainant ignores that Respondent’s Response included a signed declaration from Behnam Tabrizi attesting to his having used the phrase “rapid transformation” since 2002. In 2007, the Harvard Business Review Press published Respondent’s book titled “Rapid Transformation: A 90-day Plan for Fast and Effective Change” and in 2009 Respondent acquired the Domain Name.
Respondent argues that whether or not Complainant’s use of the phrase “Rapid Transformation” in the title of his book is a trademark use is irrelevant to this proceeding.
The facts and evidence in this case support that the Domain Name has always been used by Respondent for a legitimate purpose, which is strong evidence of Respondent’s good faith intent at the time of registration.
Respondent considers that as Complainant claims to have only recently become aware of Respondent’s use of RAPID TRANSFORMATION, then this demonstrates that the parties respective uses have co- existed for over six years without any actual consumer confusion, otherwise Complainant would have been on notice earlier. Respondent suggests that this evidences that there is no likelihood of confusion nor cybersquatting.
For the reasons set out below the complaint fails and relief is denied.
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 RAPID TRANSORMATION mark (Complainant’s Mark) in connection with business and management consultation services. Complainant has provided evidence of its registration of Complainant’s Mark with the USPTO (Reg. No. 3,100,474, registered June 6, 2006). Registration of a mark with the USPTO is sufficient to establish rights under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). The Panel accepts Complainant’s proffered USPTO registration is attributable to Complainant, and that Complainant has satisfied Policy ¶ 4(a)(i)’s rights requirement.
Complainant asserts that the Domain Name is identical to Complainant’s Mark. The Domain Name incorporates the entire mark while removing a space between the words of the mark and affixing the gTLD “.com.” This is however inconsequential. The Panel concludes that Complainant has established that the Domain Name is identical to Complainant’s Mark under Policy ¶ 4(a)(i).
Complainant must establish at least a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). Respondent asserts that it is commonly known by both the Domain Name and the RAPID TRANSFORMATION mark. Respondent has submitted Respondent’s profile from Stanford University associating Respondent with the RAPID TRANFORMATION mark, the <Amazon.com> page for the 2007 book “Rapid Transformation,” by Respondent, and <google.com> search results for “rapid transformation” where Respondent is the top returned results.
Complainant has provided evidence of Respondent’s business registration with the state of California under the name “Rapid Transformation” in 2009. Further, a review of Complainant’s resolving webpages as offered by both Complainant and Respondent, provide little evidence of Complainant’s use of the term “rapid transformation”.
The Panel is satisfied that Respondent has demonstrated that it is commonly known by and doing business under the RAPID TRANSFORMATION mark.
Respondent asserts the terms making up the Domain Name are common and generic, and therefore, Complainant does not have an exclusive monopoly on the terms on the Internet. Respondent submits the generic terms “rapid” and “transformation” are more closely related to Respondent’s self-help business than Complainant’s offerings.
On the basis of these submissions and evidence, the Panel is satisfied that Respondent has established sufficient rights or legitimate interests in the Domain Name pursuant to Policy ¶ 4(a)(ii). See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (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).
Respondent contends that the Panel can and should take into consideration its nearly seven year use of the Domain Name to operate and support its business. It is Respondent’s position that, the length of use in business as well as the goodwill Respondent has cultivated around the Domain Name demonstrates Respondent has rights and a legitimate interest in the Domain Name. See Chicago Bd. Options Exch. Inc. v. Private, FA 804703 (Forum Nov. 29, 2006) (finding it a persuasive factor that the respondent had used the disputed domain name for over seven years in concluding that the respondent had rights or legitimate interests in the disputed domain name).
The Panel sees merit in the above approach and finds that Respondent has established rights under Policy ¶ 4(a)(ii).
Having found that Respondent has rights or legitimate interests in the Domain Name the Panel may also find that Respondent did not register or use the 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). There is obvious logic in this reasoning.
Respondent denies that its offer to resolve this issue outside of the UDRP context should be construed as an offer to sell the Domain Name. Respondent insists it was attempting in good faith to settle this issue amicably. See Collegetown Relocation, L.L.C. v. Concept Software & Techs. Inc., FA 96555 (Forum Mar. 14, 2001) (finding that offers to sell a domain name made during settlement discussions are inadmissible). Rather than work with Respondent, Complainant filed the instant proceeding nine months after sending the initial cease and desist letter.
Respondent submits that it did not register and is not using the Domain Name in bad faith. Respondent denies having knowledge of Complainant’s rights in the RAPID TRANSFOMATION mark and denies having targeted the mark for commercial gain.
For these reasons, the Panel concludes that Complainant has not established the grounds for a finding of bad faith under Policy ¶ 4(a)(iii).
Doctrine of Laches
Respondent asserts that Complainant waited over seven years to raise a claim of cybersquatting. During that time, Respondent has become associated with the phrase “rapid transformation.” Respondent published a book with the phrase as its title in 2007 and purchased and used the disputed domain name in good faith since 2009. Respondent has taken steps to develop his own goodwill in association with the phrase and advance its own interest under the “rapid transformation” wording. During which time the Complainant did nothing.
Under the circumstances, the Panel may consider the doctrine of laches as evidence for Respondent in its considerations of the elements of the Policy. See Square Peg Interactive Inc. v. Naim Interactive Inc., FA 209572 (Forum Dec. 29, 2003) (“Although laches by itself is not a defense to a complaint brought under the Policy, Complainant's delay in seeking relief is relevant to a determination of whether Respondent has been able to build up legitimate rights in the Domain Name in the interim, and whether it is using the Domain name in bad faith.”).
In the Panel’s view the doctrine has application in this case and it helps put the Complaint into proper context.
Reverse Domain Name Hijacking
The Panel is not convinced that, on balance, this is a genuine case of reverse domain name hijacking. The Panel is entitled to conclude that Complainant has satisfied Policy ¶ 4(a)(i), or any or all of the elements of Policy ¶ 4(a), and that being the case that Complainant has not engaged in reverse domain name hijacking. See Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
Even if the Panel finds that Complainant has failed (as it has here) to satisfy its burden under the Policy, this does not necessarily render a finding of reverse domain name hijacking on behalf of Complainant in bringing the instant claim. See Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001) (noting that a finding of reverse domain name hijacking requires bad faith on the complainant’s part, which was not proven because the complainant did not know and should not have known that one of the three elements in Policy ¶ 4(a) was absent).
In the present case Complainant has succeeded on one ground and in the Panel’s view that entitled it to bring this complaint. The fact the complaint failed should not, in and of itself, require the Panel to infer reverse domain name hijacking.
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 <rapidtransformation.com> Domain Name REMAIN WITH Respondent.
Clive Elliott QC, Panelist
Dated: August 3, 2016
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