Optimatum Group, LLC v. Brian Hansen / Optimatum Consulting, Inc.
Claim Number: FA1608001686452
Complainant is Optimatum Group, LLC (“Complainant”), represented by Adam C. Sherman of Vorys, Sater, Seymour and Pease LLP, Ohio, USA. Respondent is Brian Hansen / Optimatum Consulting, Inc. (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <optimatum.com> and <optimatum.org>, registered with GoDaddy.com, LLC.
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.
Dr. Reinhard Schanda as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 1, 2016; the Forum received payment on August 1, 2016.
On August 1, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <optimatum.com> and <optimatum.org> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 August 3, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 23, 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 postmaster@optimatum.com, postmaster@optimatum.org. Also on August 3, 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 August 23, 2016.
On September 7, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dr. Reinhard Schanda 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that it has used the OPTIMATUM mark in connection with its HR supply chain vendor management services since 2007. Complainant has established common law rights in the OPTIMATUM mark through extensive promotion, media coverage, and business dealings using the mark. Respondent’s domains are identical to the OPTIMATUM mark.
Complainant further contends, that Respondent has no rights or legitimate interests in the disputed domain names. Respondent has not operated a business using the Optimatum name for over ten years. Respondent’s use of the disputed domains, to attempt to sell the domains or inactively use the domains, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Finally Complainant contends, that Respondent registered and used the disputed domains in bad faith. Respondent acquired the domains for the purpose of selling the domains for an amount in excess of out-of-pocket costs. Domain renewals are equivalent to registrations and thus Respondent’s renewal of the disputed domains demonstrates bad faith as Respondent no longer used the domains.
B. Respondent
Respondent contends that the disputed domain name <optimatum.com> was created on March 6, 1999. Therefore this domain name could not have possibly been registered in bad faith. Respondent did not register the domain name <optimatum.com> with an intent to sell or divert Costumers away from Complainant’s organization.
The domain name <optimatum.org> was recently purchased by Respondent due to offering by a Provider.
Respondent contends that it has not registered the domain names at issue primarily for the purpose of disrupting the business of a competitor. The Respondent has not attempted to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark.
Finally Respondent alleges Reverse Domain Name Hijacking.
The Panel finds that:
(1) The domain names <optimatum.com> and <optimatum.org> are confusingly similar to Complainant’s common law trademark.
(2) The Respondent has not established rights or legitimate interests in the domain names <optimatum.com> and <optimatum.org>.
(3) The Respondent has registered and is using the domain name <optimatum.org> in bad faith, but he has not registered the domain name <optimatum.com> in bad faith.
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 has used the OPTIMATUM mark in connection with its HR supply chain vendor management services since 2007. Complainant has not registered the mark with any governmental entity. However, trademark registrations are not necessarily required to establish rights under Policy ¶ 4(a)(i). See Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (holding, “A Complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out.”).
Complainant contends that it has established common law rights in the OPTIMATUM mark through extensive promotion, media coverage, and business dealings using the mark. Panels have found common law rights must be established through a demonstration of a secondary meaning achieved through a number of means. See generally Gordon & Rees LLP v. Peter Smith, FA 1618345 (Forum June 14, 2015) (finding that Complainant’s evidence is sufficient to establish secondary meaning, and thus Complainant holds common law rights in the GORDON & REES mark pursuant to Policy ¶ 4(a)(i) because “Complainant has provided evidence of its first use of the GORDON & REES mark for the purpose of practicing law beginning in Sept. 1974. Complainant has also provided evidence of media and consumer recognition, and business filings in several states in the United States.”). Here, Complainant has provided media recognition, promotional material and advertising, and other documents featuring the OPTIMATUM trademark in its attached Annexes A–I. Annex A demonstrates that Complainant was formed as “Optimatum Group, LLC” on May 22, 2007, and has since invested significant resources to accrue goodwill in the OPTIMATUM mark. In light of the evidence provided by Complainant, the Panel agrees that Complainant has demonstrated common law rights in the mark.
Complainant next argues that Respondent’s domains are identical to the OPTIMATUM mark. While the domains merely add the “.com” or “.net” gTLD suffix to a fully incorporated and unaltered mark, the Panel agrees that confusing similarity exists under Policy ¶ 4(a)(i). See Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”).
While Respondent argues that its registration of the <optimatum.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 names are 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 (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).”).
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
(a) He has made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute;
(b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Panel determines that the Complainant has discharged the onus of proof for the second criterion: The Respondent has failed to demonstrate any legitimate right or interest.
According to the majority of Panel decisions this Panel also takes the position that while Complainant has the burden of proof on this issue, once the Complainant has made a prima facie showing, the burden of production shifts to the Respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue. See Document Technologies, Inc. v. International Electronic Communications, Inc., D2000-0270 (WIPO June 6, 2000); Inter-Continental Hotel Corporation v. Khaled Ali Soussi, D2000-0252 WIPO July 5, 2000); Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the Complainant has asserted that the Respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the Respondent”); see also G.D. Searle v. Martin Mktg., FA 118277 (Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
It is Complainant’s position that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). In so arguing, Complainant alleges that Respondent is no longer commonly known by the disputed domain name under Policy ¶ 4(c)(ii). Complainant notes that Respondent has been neither licensed nor authorized to use the OPTIMATUM mark in any way. The Panel notes that “Optimatum Consulting, Inc.” is listed as Registrant Organization of the disputed domain name, however, Complainant has provided evidence that said organization was dissolved in 2006. The Panel agrees that such evidence indicated that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Moneytree, Inc. v. Matt Sims / MoneyTreeNow, FA1501001602721 (Forum Mar. 3, 2015) (finding that even though the respondent had listed “Matt Sims” of “MoneyTreeNow” as registrant of the <moneytreenow.com> domain name, the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii), because he had failed to list any additional affirmative evidence beyond the WHOIS information).
Complainant next contends that the websites resolving from both disputed domains are the same. Attached screenshots of the resolving pages displaying an offer for sale. In addition, the only “active” content Respondent is alleged to have arranged through the domains is an RSS feed from TechCrunch that is automatically imported via source code. Respondent’s use therefore represents a generic website template or rather a copy of another company’s website. Panels have agreed that generally, there must be some evidence of a bona fide offering of goods or services or a legitimate noncommercial or fair use; and where a complainant demonstrates that there is no such case, it is incumbent upon the respondent to rebut. See generally Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Therefore, this Panel finds that Respondent’s use of the disputed domains does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Additionally, Complainant argues that Respondent has offered the disputed domain name for sale to Complainant for $30,000, which is additional evidence of Respondent’s lack of rights or legitimate interests in the disputed domain name. The Panel finds that such an offer indicates a further lack of rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)).
With regard to the <optimatum.com> domain name the Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (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 (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).
Respondent states that it has used the <optimatum.com> domain name for over 15 years, which predates Complainants rights in the mark. The registration of the domain name <optimatum.com> could not have been in bad faith because Respondent could not have contemplated the Complainant's then non-existent right. The Panel agrees with Respondent’s contention and therefore finds that Respondent has not acted in bad faith under Policy ¶ 4(a)(iii). See Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Forum May 16, 2007) (determining 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).
The other domain name at issue <optimatum.org> has to be judged differently. First of all this domain name was not created on March 6, 1999, but rather on March 3, 2016, after Complainant inadvertently failed to renew it. Further Respondent’s allegations are not really convincing. Since Respondent admits, that in June 2007 there already was a filing against the <optimatum.com> domain name, Respondent should have been aware, that the registration of the <optimatum.org> domain name in March 2016 could cause problems. The Panel reminds that Respondent is also subject to paragraph 2 of the UDRP, which provides: "It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights." As result the Panel finds that with regard to the <optimatum.org> domain name Complainant has met the third criterion as per paragraph 4(a)(iii) of the Policy.
Since the Panel finds that Complainant has satisfied all of the elements of Policy ¶ 4(a) regarding the <optimatum.org> domain name, the Panel is of the view that Complainant has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
Having considered all three elements required under the ICANN Policy, the Panel concludes that relief shall be PARTLY GRANTED and PARTLY DENIED.
Accordingly, it is Ordered that the <optimatum.org> domain name be TRANSFERRED from Respondent to Complainant and the domain name <optimatum.com> REMAIN WITH Respondent.
Dr. Reinhard Schanda, Panelist
Dated: September 21, 2016
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