G-Hold License B.V. v. Domain Administrator / Vertical Axis Inc.
Claim Number: FA1505001620366
Complainant is G-Hold License B.V. (“Complainant”), represented by Aernoud Bourdrez, The Netherlands. Respondent is Domain Administrator / Vertical Axis Inc. (“Respondent”), represented by Ari Goldberger of Esqwire.com, Australia and Barbados.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gsus.com>, registered with FABULOUS.COM PTY LTD.
The undersigned Panel certifies that they have acted independently and impartially and to the best of their knowledge has no known conflict in serving as Panelists in this proceeding.
Petter Rindforth (Chair), The Honourable Neil Anthony Brown QC and Jonas Gulliksson as Panelists.
Complainant submitted a Complaint to the Forum electronically on May 20, 2015; the Forum received payment on May 21, 2015.
On May 21, 2015, FABULOUS.COM PTY LTD. confirmed by e-mail to the Forum that the <gsus.com> domain name is registered with FABULOUS.COM PTY LTD. and that Respondent is the current registrant of the name. FABULOUS.COM PTY LTD. has verified that Respondent is bound by the FABULOUS.COM PTY LTD. 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 May 26, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 15, 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 May 26, 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.
An Additional Submission from the Complainant was received on June 22, 2015, and determined to have been received in a timely manner according to The Forum's Supplemental Rule #7.
On June 23, 2015, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Petter Rindforth as the Chair of the three-member Panel along with The Honourable Neil Anthony Brown QC and Jonas Gulliksson 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.
Preliminary Issue: Deficient Response
A timely Response was received and determined to be deficient on June 15, 2015 as it exceeds the 15 page limit. Thus the National Arbitration Forum does not consider the Response to be in formal compliance with ICANN Rule 5. Respondent has contended that the overage was a result of non-substantive footnotes (just case citations) and submitted the identical response with the footnotes removed and saved as Appendix five, thus bringing the Response into compliance.
The Panel notes that the corrected Response was filed only one day after the due date, and – although as amended covering 15.5 pages – the Panel sees no reason to not accept and consider this Response. See Victoria’s Secret Stores Brand Mgmt., Inc. v. LaFond, FA 1362225 (Nat. Arb. Forum Jan. 7, 2011) (deciding that while the response was deficient, “the Panel has nonetheless decided to consider the deficient Response.”).
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant uses the G-SUS trademark in connection with its stores and services worldwide involved in the fashion and lifestyle business. Complainant has registered the G-SUS trademark at the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,548,688, filed July 6, 1998, registered March 19, 2002), which establishes its rights in the trademark. Respondent’s <gsus.com> domain name is confusingly similar to the G-SUS trademark as it merely eliminates the hyphenation and adds the generic top-level domain (“gTLD”) “.com.” Complainant further refers to trademark rights in GSUS, being used and registered by Complainant, referring to the initial national Benelux trademark registration No. 724,919 GSUS SINDUST RIES (filed and registered August 9, 2002).
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by <gsus.com>, and is not using the disputed domain name in connection with a bona fide offering of goods or services or for any legitimate noncommercial or fair use. Rather, the resolving website to the <gsus.com> domain name contains multiple pay-per-click hyperlinks, from which Respondent presumably profits.
Respondent has registered and used the disputed domain name in bad faith. Respondent has included an offer for sale of the domain name on its resolving page, which redirects Internet users to <mark.com> where the site is advertised in the price range of $5,000.00 - $50,000.00, evincing bad faith per Policy ¶ 4(b)(i). Additionally, the Respondent has demonstrated a bad faith pattern of domain name registrations under Policy ¶ 4(b)(ii). Next, while Respondent presumably profits from the inclusion of hyperlinks on its resolving site, Policy ¶ 4(b)(iv), attraction, for commercial gain is evidenced. Lastly, Respondent had actual and/or constructive knowledge of the G-SUS trademark and the Complainant’s rights in the trademark prior to registering and using the disputed domain name.
Respondent’s use of the disputed domain name corresponds with the phonetic spelling or Spanish pronunciation for “Jesus”, which Respondent believed could create a valuable and memorable destination for a religious affiliated website. Respondent denies having any knowledge of any registrations which would be infringed by its domain name registration. “Gsus” is simply a common 4-letter acronym which is not well-known as Complainant argues.
Respondent engages in the practice of registering common word domains. Respondent is also engaged in the practice of locking its domains in parking services, which financially benefit both the parking service and Respondent via pay-per-click links, an accepted practice.
Respondent’s use of the website is a bona fide offering of advertising services, which is an accepted business model and not an unusual practice in connection with common and generic domain names.
Complainant has failed to provide sufficient evidence of Respondent’s bad faith registration and use of the <gsus.com> domain name. Respondent’s attempt to sell the disputed domain name is part of its legitimate business model, failing to evince bad faith as per Policy ¶ 4(b)(i). Next, as pertaining to bad faith pattern of domain name registrations, Respondent has a history entailing over 45 decisions in its favor, which defeats Policy ¶ 4(b)(ii). Further, as the <gsus.com> domain name is comprised of common/generic letters which evince a phonetic similarity to the Spanish pronunciation of “Jesus” or the “G sus” musical chord, or a simple acronym, it cannot be intimated that Respondent is attempting to trade off the goodwill associated with Complainant’s trademark in order to commercially gain per Policy ¶ 4(b)(iv). Lastly, Respondent had neither actual nor constructive knowledge of Complainant’s trademark or its rights in the trademark, which is evident as Respondent has never attempted to target Complainant or its products and the name itself is generic.
Respondent requested the Panel to enter a finding of Reverse Domain Name Hijacking, as there is absolutely no basis for the Complainant’s claim and the Complainant and its legal counsel should have known that before filing its Complaint.
C. Additional Submissions
Complainant’s Additional Submission:
Complainant notes that Respondent’s Response contained 22 pages, exceeding the maximum of 15 pages, thereby deemed deficient by the Case Coordinator. The new Response, submitted one day after the deadline, still exceeded the maximum amount of pages. Complainant requests the panel to decide that the Response, due to exceeding the maximum of 15 pages is deficient and to take this into consideration when taking a decision.
Complainant further notes that Respondent has not provided any evidence that GSUS is a common acronym or a common word.
Complainant is of the opinion that Respondent has registered and is holding the disputed domain name in bad faith. It is Complainant’s view that Respondent’s use of the disputed domain name cannot be considered genuine and that use is solely for the purpose of creating evidence, anticipating this proceeding.
Finally, Complainant comments that the UDRP does not contain any specific provision regarding laches / delay, and that Complainant has clear reasons for the delay in filing the case, such as:
- the focus in terms of marketing and sales has shifted for Complainant over the years, more and more to the Internet;
- the importance of the disputed domain name for Complainant’s marketing and sales has increased over the past couple of years;
- Complainant cannot be blamed for the fact that it did not have internet as its priority back in 2002 and the years thereafter;
- only recently, Complainant had to establish the detrimental effect of the use of the Disputed Domain Name by someone else, being Respondent;
- in recent months, Complainant received a number of reactions that customers were unpleasantly surprised to be shown a website connected to the disputed domain name, which website did not belong to Complainant.
Also, it sees no basis whatsoever for any allegation that the Complaint should be considered a form of reverse domain name hijacking.
Complainant is the owner of several trademark registrations for G-SUS, such as the U.S. trademark registration No 2,548,688, filed July 6, 1998 and registered March 19, 2002.
Respondent registered the disputed domain name <gsus.com> on October 14, 2001.
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.
Identical and/or Confusingly Similar
Complainant uses the G-SUS trademark in connection with its stores and services worldwide involved in the fashion and lifestyle business. Complainant purports to hold multiple trademark registrations of the G-SUS mark, especially with the USPTO (e.g., Reg. No. 2,548,688, filed July 6, 1998, registered March 19, 2002), arguing that its rights should be seen by this Panel to date back to the filing date. The Panel notes that where a relevant trademark registration exists with the USPTO, Policy ¶ 4(a)(i) rights exist in a trademark beginning at the filing date. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). Further, the Panel also notes a consensus amongst panels whereas rights are present in a trademark registered under a governmental authority, even where complainant and respondent live and/or operate in different countries. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Accordingly, the Panel finds that Complainant has rights in the G-SUS mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <gsus.com> domain name is confusingly similar to the G-SUS mark as it merely eliminates the hyphenation and adds the gTLD, “.com.” The Panel agree that the elimination of the hyphen and the addition of the “.com” gTLD to the G-SUS mark fails to negate a finding of confusing similarity under Policy ¶ 4(a)(i). See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (finding that the domain name, <tippex.com> is confusingly similar to the complainant’s mark, TIPP-EX and that use of a hyphen does not negate likelihood of confusion).
Thus the Panel concludes that Complainant failed to prove that the disputed domain name was registered and is being used in bad faith.
Doctrine of Laches
While the disputed domain was registered on February 1, 2002 and the Complaint was filed over thirteen years later, Respondent argues that the Doctrine of Laches applies as thirteen years is “an eternity in Internet time” and Complainant was likely aware of the <gsus.com> domain name.
However, the Panel finds that the doctrine of laches does not apply as a defense, and therefore chooses to disregard Respondent’s assertions. See Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) (“The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defence of laches has no application.”); see also Drown Corp. v. Premier Wine & Spirits, FA 616805 (Nat. Arb. Forum Feb. 13, 2006) (finding that the laches defense was inappropriate under the Policy and that the time frame within which the complainant brought the proceeding was of no consequential value); see also Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (“Respondent’s efforts at arguing related equitable defenses such as estoppel and acquiescence are equally misplaced as these legal arguments are not contemplated by the Policy. Moreover, recognition of these arguments in accordance with Respondent’s desires requires the Panel to make a legal determination regarding the continuing validity of Complainant’s DISNEY mark. Such action is beyond the scope of the UDRP proceeding and if Respondent desires such an outcome it should avail itself of the proper judicial proceedings by which such a result might be accomplished.”).
Reverse Domain Name Hijacking
Respondent alleges that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute.
However, even as the Panel finds that Complainant has failed 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 ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.”); see also 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 this case, Complainant has, both in the Complaint as well as in Complainant’s Additional Submission, listed a number of reasons for the filing of the Complaint, including facts that the Panel neutrally accept as grounds for Complainant’s decision to use the UDRP as a way to solve the dispute.
The Panel therefore concludes that Complainant has not been engaged in 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 <gsus.com> domain name REMAIN WITH Respondent.
Petter Rindforth (Chair),
The Honourable Neil Anthony Brown QC and Jonas Gulliksson, Panelists.
Dated: July 7, 2015
 Panellist Brown does not agree with the universality of this proposition. It is true that some UDRP decisions have said that laches does not apply in those proceedings. But it is also true that there are other decisions to the effect that laches or delay may be taken into account and decisions where delay in instituting a claim has been relied on by panellists to defeat a claim. Indeed, the preponderance of opinion these days seems to be that delay, whether it is called laches or not, may and probably should be taken into account in reaching a decision, together with all other circumstances established by the evidence. In the present case, Respondent has succeeded on substantive grounds and does not need the defence of laches to succeed. However, in view of Respondent’s detailed submission on laches, supported as it was by decided cases, it is appropriate to say that in the opinion of Panellist Brown, delay may in appropriate circumstances be taken into account by UDRP panels but that it must be weighed in the balance together with all other circumstances. In other words, it cannot be said that laches or delay will always defeat a claim, but likewise it cannot be said that laches or delay may never be considered.
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