Arthur Yarlett v. MICHAEL MCGLOIN / VISUAL VOICE
Claim Number: FA1607001684725
Complainant is Arthur Yarlett (“Complainant”), Tennessee, USA. Respondent is MICHAEL MCGLOIN / VISUAL VOICE (“Respondent”), represented by Daniel Greenberg of Lexsynergy Limited, London, United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <visualvoice.com>, registered with eNom, Inc.
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.
Antonina Pakharenko-Anderson as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 20, 2016; the Forum received payment on July 29, 2016.
On July 21, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <visualvoice.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 1, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 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@visualvoice.com. Also on August 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 August 20, 2016.
On August 29, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Antonina Pakharenko-Anderson 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 VISUAL VOICE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,480,601, registered Feb. 11, 2014). Respondent’s <visualvoice.com> Domain Name is identical to Complainant’s VISUAL VOICE mark. The disputed Domain Name eliminates the space between the words of the mark and adds the gTLD “.com.”
Respondent lacks rights or legitimate interests in the disputed Domain Name. Respondent is not commonly known by the <visualvoice.com> Domain Name. Respondent does not provide any bona fide offering of goods or services, or make a legitimate noncommercial or fair use of the disputed Domain Name. Respondent currently does not have an active use of the disputed Domain Name.
Respondent registered and is using the Disputed Domain name in bad faith. Respondent has ignored Complainant’s attempts to purchase the disputed Domain Name. Respondent has not made an active use of the disputed Domain Name.
B. Respondent
Respondent’s registration of the <visualvoice.com> Domain Name predates Complainants registration of the VISUAL VOICE mark by nineteen (19) years.
Respondent has rights and legitimate interests in the <visualvoice.com> Domain Name. Respondent uses the disputed Domain Name periodically to display its art and design work.
Respondent has not registered and is not using the disputed Domain Name in bad faith. Respondent’s registration of the <visualvoice.com> Domain Name predates Complainant’s trademark registration. Respondent has no interest in selling the disputed Domain Name. Complainant is attempting to reverse domain name hijack the <visualvoice.com> Domain Name.
Respondent registered the <visualvoice.com> Domain Name on September 20, 1995.
The Complainant relies on its trademark rights deriving from U.S. Trademark Registration No. 4,480,601 for the word mark VISUAL VOICE, which is a service mark consisting of the standard characters without claim to any particular font, style, size or color, for “Graphic design; visual design services in the nature of designing visual elements for on-line, broadcast, print, outdoor and other communication media, in class 42, registered on February 11, 2014.
According to the records of the submitted Trademark Certificate No. 4,480,601 Complainant has been using the mark VISUAL VOICE since at least as early as 2011. The case records contain no evidence in support of the use of VISUAL VOICE since 2011 by Complainant.
On September 20, 1995 the Respondent registered the <visualvoice.com> Domain Name (the Domain Name) with eNom, Inc. (then known as BulkRegister). The Respondent has been the only owner of the Domain Name.
According to the WHOIS records, the registrant’s name is Michael McGloin and Visual Voice is indicated as the registrant’s organization. The Domain Name has been used, at intervals, to promote the artistic works of the Respondent.
On February 15, 2016, the Complainant served an email to the Respondent asking his interest of selling the Domain Name and a price for the same. The Respondent has never responded to this email.
The Complainant requests that the Panel order that the Domain Name be transferred to the Complainant.
The Respondent notices that the Complainant bears the burden of showing that the Respondent lacks rights to, or a legitimate interest in the subject domain name, but the Complainant failed to meet this burden by merely stating that the “The domain name visualvoice.com does not point to an active website; there is no business named Visual Voice located at the Registrant’s address”.
At the same time, the Respondent claims that the Complainant fails to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii) because the Complainant provides only general assertions and does not state any specific facts to support its claim of bad faith. Even in cases where panels have determined that a respondent has no legitimate interest in the domain, where a 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, and is not a competitor of the complaint and seeking to disrupt the complainant's business, lack of bona fide use on its own is insufficient to establish bad faith.
Finally, the Respondent claims that the Complaint represents an abuse of the administrative proceedings and constitutes reverse domain name hijacking inasmuch as the Respondent registered the Domain Name almost 19 years before the Complainant registered the mark VISUAL VOICE. Moreover, the Respondent highlights that the Complainant knew in advance that he had no evidence or grounds for filing the UDRP complaint. For these reasons, the Respondent submits that the Complaint is brought in bad faith and constitutes an abuse of the administrative proceedings.
Respectively, the Respondent requests that the Administrative Panel deny the remedy requested by the Complainant. Also, the Respondent requests that the Administrative Panel make a finding of reverse domain name hijacking.
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.
There are two requirements that the Complainant must establish under this paragraph; that it has rights in a trade or service mark, and that the domain name is identical or confusingly similar to the mark(s).
The Complainant asserts that it owns rights in the mark VISUAL VOICE. The Complainant argues that it owns a trademark registration with the USPTO for the mark (Reg. No. 4,480,601 filed June 6, 2013; registered Feb. 11, 2014). See Compl., at Attached Annex 2. The Panel therefore finds that the Complainant’s trademark registration with the USPTO sufficiently demonstrates the Complainant’s rights in the VISUAL VOICE mark under Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). Registration with the USPTO stands to establish a complainant’s rights in a mark under Policy ¶ 4(a)(i) even when a respondent does not operate in the United States. See Viber Media S.à r.l. v. Kristaps Sirmais / SIA "FUN FACTORY", FA 1626671 (Forum Aug. 4, 2015) (“Accordingly, even though Respondent reportedly resides in Latvia, the Panel finds find that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i).”).
As far as common law rights in the VISUAL VOICE mark are concerned, the Panel notes that the mere assertion of the common law rights in the mark is not sufficient to confirm the same before the Panel. To support the common law rights, assertions of relevant use of the claimed mark supported by evidence as appropriate would be required.
Complainant asserts that Respondent’s <visualvoice.com> domain name is identical to the VISUAL VOICE mark.
In fact, the difference between cited trademark and the disputed Domain Name lies in the omission of spacing and addition of the generic top-level domain (“gTLD).
Previous Panels have found that since spacing is not acceptable in domain names and all of them require some form of TLD, omission of spacing and addition of gTLD to the trademark does not affect the confusing similarity analysis. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com’, ‘.net’, ‘.biz’, or ‘.org’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (concluding that “Panels have consistently held that the addition of a gTLD does not distinguish a domain name from a mark, and that the removal of spaces between words of a mark is irrelevant.”). The Panel agrees that Complainant has established its rights under Policy ¶ 4(a)(i).
If paragraph 4(a)(i) of the Policy would also mean that a Complainant must have rights in a trademark which antedates the date when the domain name in issue was registered, then the Complainant does not meet the requirements of this paragraph as long as the Respondent’s domain name was registered on September 20, 1995. If so, the Complainant cannot succeed.
The Panel is of the view that the trademark must predate the domain name so that the Complainant could prevail.
However, the Panel believes that this question arises because of paragraph 4(a)(iii) (requiring bad faith registration), rather than paragraph 4(a)(i), and, respectively this aspect will be analyzed in the other section of the decision. In either case, the result is the same, as it is apparent from the Panel’s decision below.
In the interim, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the UDRP as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is 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 claims that Respondent lacks rights or legitimate interests in the disputed domain name. In so arguing, Complainant makes a statement that, “The domain name visualvoice.com does not point to an active website; there is no business named Visual Voice located at the Registrant’s address”.
By stating this, the Complainant, however, did not provide any confirmation evidences.
Respondent has submitted evidence that in its opinion proves that it has such legitimate interest.
While the overall burden of proof rests with the complainant, the Panel recognizes that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the Respondent. Therefore, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.
Under article 4(c) of the Policy, Respondent may demonstrate that it has a right or legitimate interest to a domain name for the purpose of Article 4(a)(ii), inter alia, by providing evidence of any of the following circumstances:
(i) before any notice to you of the dispute, your use of, or demonstrable 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Notwithstanding that evidences in confirmation of bona fide offering of goods or services the Panel finds to be doubtful, the Panel is of the opinion that a noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the service mark at issue, by the Respondent has been proved. The Panel finds that the Respondent under his artistic pseudonym “visualvoice” has been a member of the world’s largest online social community for artists and art enthusiasts Devian Art for at least eleven years. The Respondent’s artistic pseudonym has no bearing or relation to the Complainant’s business. The Panel, accordingly, agrees with the Respondent that it does not target the Complainant’s consumers particularly as the Respondent registration and use of the Domain Name significantly predates the Complainant’s trademark and/or any common law rights.
Bearing in mind that the Domain Name is also used as a personal email address for the Respondent; the Respondent uses the Domain Name from time to time for the promotional purpose of its artistic works, the Panel is of the opinion that the Respondent has a right or legitimate interest to the Domain Name.
The Panel, therefore, holds an opinion that Respondent’s rights and legitimate interest in the Domain Name derive from legitimate non-commercial use of the Domain Name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue as long as such a trademark registration did not exist at the time of registration of the disputed Domain Name.
Previous Panels accepted similar evidence of non-commercial or fair use of a domain name as a due defense establishing that Respondent has rights and legitimate interests in the Domain Name. See Western Hay Company v. Carl Forester, NAF FA0001000093466, finding that Respondent’s rights and legitimate interests derived from its operation of a non-commercial web-based discussion group, and that although Complainant was a business commonly known as Western Hay, it did not have the trademark or take significant action to acquire the mark.
Complainant has not provided any evidence of facts which might indicate that Respondent knew or should have known of its trade name use or trademark registrations, such as a direct relationship or a wide reputation of or extensive publicity in connection with Complainant’s trade name or trademarks. To be more specific, according to Complainant’s email of February 15, 2016 the graphic design firm represented by the Complainant was just considering changing their trade name for Visual Voice.
In conclusion, under the circumstances of this case, it should be held that Respondent has a legitimate interest in the Domain Name <visualvoice.com> in accordance with paragraph 4(c)(i) of the Policy.
The Panel therefore finds that the Complainant has not established a prima facie case in support of its arguments under Policy 4(a)(ii) and that the Respondent has legitimate rights or interests in the Domain Name. See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (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)).
Inasmuch as the Panel concluded that Respondent has rights or legitimate interests in the <visualvoice.com> Domain Name pursuant to Policy ¶ 4(a)(ii), the Panel therefore finds that Respondent did not register or use the disputed Domaine 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); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date as it has been noted above, when a domain name is registered by the respondent before the complainant's relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 3.1, and cases cited therein (“Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right.”).
Respondent argues that it registered the <visualvoice.com> Domain Name on September 20, 1995. Respondent notes that the VISUAL VOICE mark was only registered during February 2014 in the name of Complainant, approximately 19 years after the registration of the Domain Name. Therefore, Respondent contends that it could not have registered the disputed Domain Name in bad faith See Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith where the respondent registered the domain name in question before application and commencement of use of the trademark by the complainant).
The Policy, paragraph 4(a)(iii), obliges the Complainant to establish that the Domain Name “has been registered and is being used in bad faith.” The consensus view since the Policy was implemented in 1999 has been that the conjunctive “and” indicates that there must be bad faith both at the time of registration and subsequently in use. Apart from unusual cases of a respondent’s advance knowledge of a trademark, it is not logically possible for a respondent to register a domain name in bad faith contemplation of a mark that does not yet exist or of which the respondent is not aware.
Thus, the Panel’s view is that the Complainant has not proved bad faith registration. 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).
At the same time, the Complainant failed to prove that the Respondent has ever been involved in any pattern which might fall under the Policy’s non-exhaustive list of instances of bad faith in paragraph 4(b).
In its turn, Respondent has provided the Panel with evidence of its use of the disputed Domain Name in furtherance of its career as a graphic artist. See Resp., at Annex 5. Respondent states that it periodically uses the <visualvoice.com> Domain Name in furtherance of its artistic career and alleges it has no intention of or desire to sell the disputed Domain Name.
Thus, the Panel further finds that Respondent has not registered or used the <visualvoice.com> Domain Name in bad faith inasmuch as the 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) (finding that 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).
Accordingly, the Panel concludes that the Complainant has not met its burden of establishing the probability that the Respondent registered the Domain Name in a bad faith effort to exploit the Complainant’s mark, and that the Complainant has not satisfied paragraph 4(a)(iii) of the UDRP.
Reverse Domain Name Hijacking and Abuse Process
Paragraph 15(e) of the UDRP Rules provides that, if "after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding". Reverse Domain Name Hijacking is defined under the UDRP Rules as "using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name".
WIPO panels have found that the onus of proving complainant bad faith in such cases is generally on the respondent, whereby mere lack of success of the complaint is not itself sufficient for a finding of Reverse Domain Name Hijacking. (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 4.17, and cases cited therein).
Another common feature of previous panel decisions is that there is a tendency to identify the bad faith requirement with the degree of the Complainant’s knowledge of its capability of meeting its burden of proof with regard to the mandatory elements of paragraph 4 of the Policy. For example, in carsales.com.au Limited v. Alton L. Flanders, WIPO Case No. D2004-0047, the Panel states that “a finding of reverse domain name hijacking is warranted if the Complainant knew or should have known at the time it filed the Complaint that it could not prove one of the essential elements required by the policy”.
However, it is important not to overemphasize the Complainant’s failure to prove the Complaint, to the detriment of the demonstration of bad faith that is the essence of paragraph 15(e). A complainant with a weak claim may present this complaint in good faith. Not succeeding in the complaint does not amount to an attempt at reverse domain name hijacking except when it involves bad faith in an to attempt to deprive a registered domain-name holder of a domain name (paragraph 1 of the Policy).
In light of the aforesaid, and taking into account that the Complainant satisfied paragraphs 4(a)(i) of the Policy, the Panel judges that the present Complaint does not constitute a case of 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); see also 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 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).
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 <visualvoice.com> domain name REMAIN WITH Respondent.
Antonina Pakharenko-Anderson, Panelist
Dated: September 26, 2016
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