Timothy Edward Jones v. Joshua Eisenhower
Claim Number: FA1808001800144
Complainant is Timothy Edward Jones (“Complainant”), Texas. Respondent is Joshua Eisenhower (“Respondent”), Pennsylvania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <certassured.com>, registered with DropCatch.com 1375 LLC (sometimes referred to herein as the “Disputed Domain Name”).
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.
Kendall C. Reed as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 6, 2018; the Forum received payment on August 6, 2018.
On August 7, 2018, DropCatch.com 1375 LLC confirmed by e-mail to the Forum that the <certassured.com> domain name is registered with DropCatch.com 1375 LLC and that Respondent is the current registrant of the name. DropCatch.com 1375 LLC has verified that Respondent is bound by the DropCatch.com 1375 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 13, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 4, 2018 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@certassured.com. Also, on August 13, 2018, 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 September 4, 2018.
Complainant filed an additional submission, which was timely filed and has been considered by the Panel.
Respondent filed an additional submission, which was timely filed and has been considered by the Panel.
On August 13, 2018, Complainant filed an additional correspondence consisting of an email exchange between Complaint and Respondent dated that same day and concerning the parties’ respective positions with respect to ownership of the Disputed Domain Name. This additional correspondence has been considered by the Panel.
On September 5, 2018, Complainant filed an additional correspondence providing a list to a website at <afternic.com> on which the Disputed Domain Name was then offered for sale and the price being asked. This additional correspondence has been considered by the Panel.
On September 5, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kendall C. Reed 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.
A. Complainant
Claimant is an entrepreneur developing a business involving certain automated software processes with respect to property management and insurance certificates. The name for this business is “CertAssured.” The development efforts for this business began in 2014, and in furtherance of this effort, Complainant registered the Disputed Domain Name, <certassured.com>.
This development effort did not progress smoothly, however, and in 2017 Complainant dissolved his company and allowed the registration of the Disputed Domain Name to lapse.
Complainant has recently renewed his efforts to develop his business and anticipates launching it in November of 2018 under the name of CertAssured, LLC.
The Disputed Domain Name is the exact name of Complainant’s software product currently under development.
Complainant originated the idea of using of the expression “certassured” as a product a name.
Respondent is not the owner of any product or service called CertAssured, owns no company called CertAssured, and is not participating in a business going concern called CertAssured.
When Complainant renewed his efforts to start his business, he researched the availability of the Disputed Domain Name, and he learned that it was not being offered for sale. He also learned the name and contact information for the current owner, Respondent. Complainant attempted to contact the Respondent on several occasions. Thereafter, Complaint again researched the availability of the Disputed Domain Name and learned that it was for sale for $2,519, which demonstrates that Respondent is attempting to benefit from Complainant’s business using the Disputed Domain Name, which belongs to Complainant, and which also demonstrates Respondent’s bad faith.
B. Respondent
Respondent is a domain name investor with more that 20,000 .com domains. One of these is the Disputed Domain Name that Complainant admits he failed to renew.
In registering the Disputed Domain Name, Respondent was not in any way responding to Complainant specifically or attempting to register the Disputed Domain Name hoping Complainant would want it back. At the time, Respondent did not know about Complainant and Complainant’s efforts to start a business. Respondent does not have time to research such matters. Rather, in registering lapsed domain names, Respondent examines each prospect to decide whether such might eventually be desirable to some business or brand.
In situations in which previous domain name owners wish to re-acquire their lapsed domain names, Respondent generally will, as a matter of curtesy, sell the involved domain name back to the original owner for a nominal fee associated with the Respondent’s costs, provided the person or entity can prove that they were in fact the previous owner.
Respondent has rights to the Disputed Domain Name because registering and selling expired domain names is his business.
Respondent has not committed bad faith because he had no way of knowing about the Complaint and his failed software project, and as such, he could not be attempting to interfere with Complainant’s rights.
Of course, the Disputed Domain Name is for sale; such is Respondent’s business.
Respondent did not initially see Complainant’s emails to him. With respect to the first, Complainant failed to mention the Disputed Domain Name, and Respondent did not see the second email until after the current action was filed.
C. Complainant’s Additional Submission
Respondent’s point that he does not have time to research failed ventures hoping that the previous owners will eventually want back abandoned domain names is contradicted by his statement that he examines lapsed domain names for potential value to somebody; previous owners are an obvious pool of such prospective buyers.
Respondent attempted to sell the Disputed Domain Name back to Claimant for an amount far in excess of Respondent’s costs. After Complainant contacted Respondent about re-acquiring the Disputed Domain Name, the price jumped to $2,519, whereas before it was not even listed for sale.
Complainant is not engaged in reverse domain name hijacking. Reverse domain name hijacking applies only to situations in which “…a company or individual attempts to assert a trademark claim against the owner of a domain whose ownership of the domain pre-dates the other party’s ownership of the trademark.” This is not what is happening in this case. Complainant owned the Disputed Domain Name for approximately 4 years before Respondent acquired it.
Respondent’s statement that he has rights in the Disputed Domain Name because he is in the business of investing in domain names is irrelevant. Such does not, by itself, impart rights to any domain name.
Respondent’s asserts that he could not have acted in bad faith because he could not have known about Complainant’s failed business. This is false. Respondent did know this at the time of Complainant’s efforts to reacquire the Disputed Domain Name because Complainant told Respondent about Complainant’s previous business and his future plans to re-start his business.
Respondent’s statements that he did not see Complainant’s emails is false. The Disputed Domain Name became available for purchase after these emails, which means Respondent must have seen them.
Respondent’s statement that he will return a domain name for a small fee is false. As of September 5, 2018, the public auction asking price was $15,500, with a reserve price of $2,750; neither is a “small fee.”
D. Respondent’s Additional Submission
Respondent is an ethical investor in domain names. He does not extort or hold them hostage.
Respondent recognized the potential value of the Disputed Domain Name when he decided to register it, and at that time he had no knowledge of Complainant. Contrary to what Complainant asserts, Respondent did not recognize the potential value of the Disputed Domain Name only after and because of Complainant’s efforts to contact Respondent.
Complainant is attempting reverse domain name hijacking because he is attempting to use the UDRP to take what he has no right to have and for which he does not wish to pay.
The price for the Disputed Domain Name Respondent is asking for is in line with the general prices for domain names, which is in the $2,000 to $5,000 range.
Respondent is not willing to offer Complainant any other arrangement, such as a small fee, as noted above, because Complainant has behaved badly in this matter.
The Panel finds that Claimant does not have trademark rights in the expression “certassured.”
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.
A necessary element of Policy ¶ 4(a)(i) is the existence of a trademark in which Complainant has rights.
Trademark rights can be established for purposes of the Policy by proving a national trademark registration. See Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Privacy Ltd. Disclosed Agent for YOLAPT / Domain Admin, FA 1625582 (Forum July 23, 2015) (holding that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i), even though Respondent reportedly resides in the Isle of Man).
Alternatively, trademark rights can be established for purposes of the Policy by demonstrating that an association has developed in the minds of the public between the mark and Complainant, commonly called “secondary meaning.” See AOL LLC v. DiMarco, FA 1275978 (Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”). The required connection in the mind of the public is generally demonstrated by presenting evidence of usage of the mark in the marketplace over time, sales figures, expenditures on advertising, etc. all to a level deemed sufficient by the Panel. See Gourmet Depot v. DI S.A., FA 1378760 (Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”).
In the present case and with respect to the expression “certassured,” Complainant has failed to present any evidence of a trademark registration or of the development of secondary meaning.
As such, Complainant has failed to establish that he has rights in a trademark, and as such, he has failed to establish the first element of the Policy.
This being the case, the Panel respectfully declines to analyze the remaining two elements of the Policy. See Netsertive, Inc. v. Ryan Howard/Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Reverse Domain Name Hijacking is defined in the ICANN Rules for the Policy, as “…using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” See Rules ¶ 1. This concept can apply to the circumstance described by Complainant, as noted above, in which “…a company or individual attempts to assert a trademark claim against the owner of a domain whose ownership of the domain pre-dates the other party’s ownership of the trademark.” However, the concept is broader than this and applies to other situations as well, including situations in which a complainant knows or should have known at the time the complaint was filed that he could not prove one of the essential three elements of Policy ¶ 4(a). See Personally Cool Inc. v. Name Administration Inc. (BVI), FA1212001474325 (Forum Jan. 17, 2013)(“Examples of Reverse Domain Name Hijacking include when the complainant knew or clearly should have known at the time that it filed the complaint that it could not prove one of the essential elements required by the UDRP…”).
Although reverse domain name hijacking might arguably be found in this matter, the Panel declines to do so. After reviewing the record as a whole, the Panel is convinced that in filing the complaint and pursuing this matter Complainant has been misguided as opposed to malicious. See Instrumentation Northwest, Inc. v. INW.COM c/o Telepathy, Inc., D2012-0454, (WIPO June 1, 2012)(“Finally, the Panel declines to find reverse domain name hijacking on this record, although a finding of RDNH could arguably be supported here. Be that as it may, after carefully weighing all of the circumstances of the case, the Panel chooses to interpret this Complaint as misguided inasmuch as it was doomed from the start and should not have been brought. There is no hard evidence, though, that Complainant was ill motivated in lodging the Complaint.”)
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED, and further, the Panel Concludes that the Complainant has not committed reverse domain name hijacking.
Accordingly, it is Ordered that the <certassured.com> domain name REMAIN WITH Respondent.
Kendall C. Reed, Panelist
Dated: September 18, 2018
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