j2 Global Canada, Inc. and Landslide Technologies, Inc. v. C V V S Krishna / Sirez Ltd.
Claim Number: FA1601001658175
Complainant is j2 Global Canada, Inc. and Landslide Technologies, Inc. (“Complainant”), represented by Robert W. Zelnick of McDermott Will & Emery LLP, District of Columbia, USA. Respondent is C V V S Krishna / Sirez Ltd. (“Respondent”), represented by Matthew Brown of UDRP POLICE DBS, London, United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <e-campaigner.com>, registered with Visesh Infotecnics Ltd. d/b/a Signdomains.com.
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.
M. Kelly Tillery, Esquire as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 26, 2016; the Forum received payment on January 26, 2016.
After numerous requests, the Registrar, Visesh Infotecnics Ltd. d/b/a Signdomains.com, has not confirmed to the FORUM that the <e-campaigner.com> domain name is registered with Visesh Infotecnics Ltd. d/b/a Signdomains.com or that the Respondent is the current registrant of the name. Registrar’s non-compliance has been reported to ICANN. The FORUM’s standing instructions are to proceed with this dispute.
On February 1, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 22, 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@e-campaigner.com. Also on February 1, 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 February 22, 2016.
Additional Submissions were received from Complainant and Respondent.
On February 29, 2016, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the FORUM appointed M. Kelly Tillery, Esquire 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
Complainant has registered the CAMPAIGNER mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,790,079, registered Dec. 9, 2003), and therefore has rights in the mark. Respondent’s <e-campaigner.com> domain name is confusingly similar to the CAMPAIGNER mark as it incorporates the mark entirely, and adds the letter “e,” a hyphen, and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <e-campaigner.com> domain name. Respondent is not commonly known by the <e-campaigner.com> domain name. Further, while Respondent offers for sale goods and services in the field of electronic marketing, which directly competes with Complainant, and diverts Internet users who might otherwise utilize Complainant’s online offerings, Respondent cannot be considered to have operated the disputed domain in connection with any bona fide offering of goods or services or for any legitimate noncommercial or fair use.
Respondent registered and used the <e-campaigner.com> domain name in bad faith. Respondent, in offering goods and services which directly compete with those offered by Complainant, has engaged in bad faith disruption per Policy ¶ 4(b)(iii). Next, while Respondent likely profits from Internet user confusion associated with the disputed domain name, Policy ¶ 4(b)(iv) bad faith is present. Lastly, Respondent registered and used the disputed domain name with actual and/or constructive knowledge in the CAMPAIGNER mark and Complainant’s rights in the mark.
B. Respondent
Respondent questions the efficacy of the rights Complainant purportedly holds in the CAMPAIGNER mark. Respondent states that long and continuous use alone is insufficient to show acquired distinctiveness where the use is not substantially exclusive. Respondent states CAMPAIGNER is a dictionary term, and therefore Complainant should not be considered to have rights.
Respondent has rights and legitimate interests in the disputed domain name. Since 2005, when the domain was registered, Respondent developed and operated email marketing campaign software through the disputed domain. Respondent provides evidence of “Email Campaigning” as descriptive of services in the communication technology industry, and relates it to the goods and services offered through the <e-campaigner.com> domain name. Further, due to the descriptive nature of the terms of the disputed domain, Complainant cannot have a monopoly over the terms “Campaigner” or “e-Campaigner” on the Internet.
Respondent has not registered or used the <e-campaigner.com> domain in bad faith, and Complainant has failed to prove its burden under Policy ¶ 4(a)(iii).
The doctrine of laches applies as Respondent has operated its <e-campaigner.com> domain for over 10 years without Complainant pursuing any transfer.
Reverse domain name hijacking also applies as Complainant understood Respondent’s registration of the name without knowledge of Complainant’s purported trademark rights. (Complainant reportedly wrote to Respondent, “We understand that you may well have launched your “e-Campaigner” branded services without knowledge of j2’s trademark rights.”).
1) Complainant has met its burden to prove by a preponderance of the relevant, credible, admissible evidence that Respondent’s Domain Name is identical or confusingly similar to a Trademark in which Complainant has rights.
2) Complainant has not met its burden to prove by a preponderance of the relevant, credible, admissible evidence that Respondent has no rights or legitimate interest in respect of the Domain Name.
3) Complainant has not met its burden to prove by a preponderance of the relevant, admissible evidence that Respondent’s domain name has been registered and is being used 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 registered the CAMPAIGNER mark with the USPTO (Reg. No. 2,790,079, registered Dec. 9, 2003), and has rights in the mark. This is sufficient to establish rights under Policy ¶ 4(a)(i), even where a complainant and respondent reside and/or operate in different countries. 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) (Complainant’s USPTO registration sufficient under Policy ¶ 4(a)(i), even though Respondent resides in the Isle of Man). Therefore, this Panel finds that Complainant has established Policy ¶ 4(a)(i) rights in the CAMPAIGNER mark.
Respondent’s <e-campaigner.com> domain name is similar to the CAMPAIGNER mark as it incorporates the mark entirely, and adds the letter “e,” a hyphen, and the gTLD “.com.” Such minor additions are of no moment. See OpenTable, Inc. v. Above.com Domain Privacy, FA 1626187 (Forum Aug. 10, 2015 (“Respondent’s <oipentable.com> domain name is confusingly similar to the OPENTABLE mark under Policy ¶ 4(a)(i) because the disputed domain merely adds the letter ‘i’ . . . ”); see also Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Forum July 17, 2015) (holding that “[t]he addition of a hyphen and a gTLD is insufficient to establish distinctiveness from a complainant’s mark.”). Therefore, this Panel finds that Respondent’s <e-campaigner.com> domain name is confusingly similar to the CAMPAIGNER mark under Policy ¶ 4(a)(i).
While Respondent contends that the <e-campaigner.com> domain name is comprised of common and generic/descriptive terms and as such cannot be found to be identical/confusingly similar to Complainant’s mark, such a determination is neither necessary nor appropriate under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (complainant must first make a prima facie case that respondent lacks rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii) before the burden shifts to respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie 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.”).
The Panel holds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
Since 2005, when the domain name was registered, Respondent has developed and operated email marketing campaign software using the domain name. Respondent provides evidence of “Email Campaigning” as descriptive of services in the communication technology industry, and relates it to the goods and services offered through its <e-campaigner.com> domain name. Where a respondent has presented evidence of its actual use of a domain which evinces a connection to an industry that is connected to the terms of the domain, rights and legitimate interests are demonstrated. Therefore, this Panel finds that Respondent has clearly represented its rights and legitimate interests in the <e-campaigner.com> domain name.
The Panel finds that Complainant has 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 (Nat. Arb. Forum Mar. 9, 2005) (complainant failed to establish that respondent registered and used domain name in bad faith because mere assertions of bad faith are insufficient to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (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 has rights or legitimate interests in the <e-campaigner.com> domain name pursuant to Policy ¶ 4(a)(ii), and Respondent did not register or use the disputed 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) (issue of bad faith registration and use was moot once the panel found respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
The Panel further holds find that Respondent has not registered or used the <e-campaigner.com> domain name in bad faith as Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).
Respondent had no knowledge, actual or constructive, of Complainant or its rights in the CAMPAIGNER mark at the time of registration of the domain name, and it has operated in connection with a legitimate business purpose, thereby precluding any finding of bad faith under Policy ¶ 4(a)(iii). See, e.g., Seaway Bolt & Specials Corp. v. Digital Income Inc., FA 114672 (Nat. Arb Forum Aug. 5, 2002) (because the complainant’s mark was not particularly well-known outside of its field, and the complainant failed to show that the respondent knew or should have known about the complainant at the time of registration, the respondent did not register the domain name in bad faith).
The <e-campaigner.com> domain name is comprised entirely of common terms that have many meanings apart from use in Complainant’s CAMPAIGNER mark. The registration and use of a domain name comprising such common terms is not necessarily done in bad faith. Respondent is free to register a domain name consisting of common terms and the domain name currently in dispute contains such common terms. The Panel finds that Respondent did not register or use the <e-campaigner.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) ("Common words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis."); see also Target Brands, Inc. v. Eastwind Group, FA 267475 (Forum July 9, 2004) (holding that the respondent’s registration and use of the <target.org> domain name was not in bad faith because the complainant’s TARGET mark is a generic term); see also Miller Brewing Co. v. Hong, FA 192732 (Forum Dec. 8, 2003) (finding that because the respondent was using the <highlife.com> domain name, a generic phrase, in connection with a search engine, the respondent did not register and was not using the disputed domain name in bad faith).
Laches
The doctrine of laches is not a defense in a UDRP proceeding. 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 defense of laches has no application.”); see also Drown Corp. v. Premier Wine & Spirits, FA 616805 (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 moment); see also Disney Enters. Inc. v. Meyers, FA 697818 (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 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
Even though Complainant has failed to satisfy its burden under the Policy, this does not require a finding of reverse domain name hijacking on behalf of Complainant. See ECG European City Guide v. Woodell, FA 183897 (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).
Since Complainant has satisfied Policy ¶ 4(a)(i), 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 (Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
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 <e-campaigner.com> domain name REMAIN WITH Respondent.
M. Kelly Tillery, Esquire, Panelist
Dated: March 4, 2016
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