Distinct Holdings, Inc., d/b/a Diversified v. Robert Schweitzer
Claim Number: FA1706001737080
Complainant is Distinct Holdings, Inc., d/b/a Diversified (“Complainant”), represented by Laura A. Kees of Womble Carlyle Sandridge & Rice, LLP, Georgia, USA. Respondent is Robert Schweitzer (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <onediversified.com>, <onediversified.info>, <onediversified.net> and <onediversified.org>, registered with Domain.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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 23, 2017; the Forum received payment on June 23, 2017.
On June 23, 2017, Domain.com, LLC confirmed by e-mail to the Forum that the <onediversified.com>, <onediversified.info>, <onediversified.net> and <onediversified.org> domain names are registered with Domain.com, LLC and that Respondent is the current registrant of the names. Domain.com, LLC has verified that Respondent is bound by the Domain.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 June 26, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 17, 2017 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@onediversified.com, postmaster@onediversified.info, postmaster@onediversified.net, postmaster@onediversified.org. Also on June 26, 2017, 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 July 17, 2017.
On July 24, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
1. Complainant, which does business under the name Diversified, is an industry leader in the design and installation of a broad spectrum of custom engineered and integrated audiovisual media delivery solutions. Complainant specializes in the use of audiovisual technology for complex and scalable professional broadcast, corporate communications and digital signage networks providing businesses with the enhanced capability of creating, managing and monetizing original digital content.
2. Complainant registered its DIVERSIFIED mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 5,207,618, registered May 23, 2017), and has rights in the mark under Policy ¶ 4(a)(i). See Compl., at Attached Ex. 6.
3. Further, Complainant had used the DIVERSIFIED mark in promotion of its services from December 2015. Complainant began using the ONE DIVERSIFIED mark at least as early as July 29, 2016, when it first posted the intent to operate under the mark in a newsletter. See Compl., at Attached Ex. 7.
4. On January 22, 2007, Respondent began working for Technical Innovation, LLC and continued in that employment for 7 years. Technical Innovation, LLC was acquired by Complainant.
5. On August 8, 2016 Respondent resigned, effective August 19, 2016.
6. On August 20, 2016 Respondent registered the disputed domain names. Also on August 20, 2016, a Name Reservation for One Diversified was submitted to the Georgia Secretary of State’s Office by Complainant; it was approved on October 13, 2016.
7. Respondent’s <onediversified.com>, <onediversified.info>, <onediversified.net> and <onediversified.org> domain names are identical or confusingly similar to Complainant’s DIVERSIFIED mark because each merely adds the descriptive term “one” and appends a generic top-level domain to the fully incorporated mark.
8. Respondent has no rights or legitimate interests in the disputed domain names. Complainant has not licensed or otherwise authorized Respondent to use its DIVERSIFIED mark in any fashion, and Respondent is not commonly known by the disputed domain name. See Compl., at Attached Ex. 4 (WHOIS information). Further, Respondent has failed to make an active use of the domain names’ resolving websites. See Compl., at Attached Ex. 19. An inactive website cannot be considered a bona fide offering of goods or services or legitimate noncommercial or fair use of a domain name pursuant to Policy ¶¶ 4(c)(i) and (iii).
9. Respondent has registered and is using the disputed domain names in bad faith. Respondent fails to make an active use of all the disputed domain names, and is merely passively squatting on the domain names. See Compl., at Attached Ex. 19.
10. Respondent has registered four domain names that all infringe upon Complainant’s DIVERSIFIED mark and has offered to sell the domain names to Complainant for $50,000.00 each, a price greatly exceeding the out-of-pocket costs associated with transferring the names. See Compl., at Attached Ex. 18 (Affidavit of an employee for Complainant). Registration of multiple infringing domain names and offers to sell for excessive costs are evidence of bad faith pursuant to Policy ¶ 4(b)(ii).
11. Respondent’s constructive knowledge of Complainant’s rights in the mark is further evidence of Respondent’s bad faith.
Complainant also filed an affidavit by its CEO sworn in Union County , New Jersey on June 19, 2017 in support of its submissions.
B. Respondent
Respondent made the following contentions.
1. Respondent purchased the domain names well in advance of any trademark that was filed or approved. There was never any mention of any trademarks that were being filed by the complainant.
2. When the domain names were acquired Respondent was not an employee of Technical Innovation nor was he an employee of Diversified.
3. Respondent did not sign any confidentiality agreement with Technical Innovation or Diversified.
4. There was never any mention of the company changing names to the domain name in question not was there any mention of a trademark.
5. The domain names were available and Respondent simply purchased them as anyone can. Respondent had no intent to sell them or use them in bad faith nor has Respondent done so.
6. Respondent is “open to discussions” regarding the domain names, but he feels he was in his legal right to purchase them since they were available and there was no trademark on them at the time of his purchase.
7. Respondent also filed an Affidavit sworn on July 13, 2017 in Forsyth County, Georgia and made further submissions in that affidavit. Respondent submitted that “ (t)here never any mention of Diversified purchasing a trademark for changing name for the domain names during my time at Technical Innovation.” He also states that after his employment ceased on August 20, he purchased the domain names. Respondent also states:” During my teleconference with Alfred D’Alessandro, he asked me what I wanted for the domains, of which my response was “what do you think they are worth”? He then proceeded to say “he would pay me $2500 out of his personal bank account. ”When I turned that down, I then throughout a figure to him; however, I never “demanded” anything from him.(Paragraph 9). His response to my figure was he would then have 2 choices to go after the domain names or come up with another name.”
1. Complainant is a United States company engaged in the business of the design and installation of a broad spectrum of custom engineered and integrated audiovisual media delivery solutions.
2. Complainant registered its DIVERSIFIED mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 5,207,618, registered May 23, 2017), and has rights in the mark under Policy ¶ 4(a)(i).
3. Complainant registered its DIVERSIFIED mark with the United States Patent and Trademark Office (“USPTO”), (Reg. No. 5,207,620, registered May 23, 2017. and has rights in the mark under from Policy ¶ 4(a)(i).
4. Complainant had used the DIVERSIFIED mark in promotion of its services at least as early as December, 2015. Complainant had common law trademark rights in DIVERSIFIED since at least that date.
5. Respondent had been an employee of Complainant. On August 8, 2016 Respondent resigned from that employment, effective August 19, 2016.
6. Respondent registered the disputed domain names on August 20, 2016.
7. The disputed domain names do not resolve to active websites.
8. The evidence establishes that Respondent did not have a right or legitimate interest in the disputed domain names.
9. The evidence establishes that Respondent registered and has used the disputed domain names 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.
In this regard it should also be said here, as it will be seen to be very important in the resolution of this proceeding, that the UDRP is a fast track process without the usual forensic processes available in court proceedings, such as cross-examination of witnesses and discovery. For that reason, the remedies available are limited to transfer or cancellation of the domain name or denial of the claim. Moreover, the UDRP process is designed, and it has been said on many occasions that it has been so designed, to deal with clear cut cases of abusive registration of domain names. It has no jurisdiction to deal with wider commercial disputes, even if the claim has some peripheral connection with domain names. If an aggrieved party has such a claim or if it needs the forensic processes available in court proceedings, it must bring those proceedings in an appropriate court. Naturally, even if a party is unsuccessful in UDRP proceedings, it may still bring such court proceedings under the general law which are more appropriate to the dispute in which it is engaged.
Noting again that the UDRP process is limited in the way described, the Panel will now turn to consider if the present dispute comes within the UDRP and, if so, how it should be determined.
The first issue that arises for consideration is whether Complainant has a trademark on which it can rely. That is the first issue because the Policy provides that for Complainant to succeed it must show that the disputed domain names are identical or confusingly similar to a trademark in which it, the Complainant, “has rights.” It is clear that the effect of the words “has rights” is that the Complainant has rights in a trademark at the time the claim is made, even if it did not have them by the time the disputed domain name was registered. If it turns out that the complainant did not have its trademark until after the domain name was registered, that issue can be considered later, namely when the issues of rights and legitimate interests and bad faith are being considered. At the present, under the first element, the only question being considered is whether Complainant “has rights” in a trademark.
Complainant submits that it does have a trademark on which it can rely. In fact, it says that it has 5 such trademarks. The Panel will look at each of them in turn. They are:
1. The first trademark relied on is for DIVERSIFIED, which is Serial number 86974347 in the United States Patent and Trademark Office ( “USPTO”), filed on April 13, 2016 and published for opposition on March 7, 2017.That trademark filing, however, is not registered and therefore cannot be considered as a trademark conferring trademark rights on Complainant. Although UDRP decisions are not precedents, they are important for assessing the prevailing view among panelists and on this issue the overwhelming opinion of panelists in decisions under the UDRP is that it is only when a trademark is registered that it confers those rights and that an application for a trademark does not so qualify. Accordingly, the filing in question is not a trademark for present purposes.
2. The second trademark relied on is for DIVERSIFIED, Registered number 5,207, 618. This trademark was registered with the USPTO on May 23, 2017 and therefore confers trademark rights for the purposes of the UDRP. The application for the trademark was filed on April 13, 2016 and in keeping with general practice the trademark rights run from that date.
3. The third trademark relied on is for DIVERSIFIED, and although described as a word mark, it is partly a design. This trademark is Serial number 86974391 and was filed for on April 13, 2016 and published for opposition on March 7, 2017. It has not been registered and therefore does not confer trademark rights for the purpose of the UDRP.
4. The fourth trademark relied on is for DIVERSIFIED, registered number 5,207,620. The application was filed on April 13, 2016 and the trademark was registered on May 23, 2017. It therefore confers trademark rights for the purposes of the UDRP from April 13, 2016. The certificate in evidence notes “…the "D" in "Diversified" in stylized lettering enclosed in a circle.”
5. The fifth trademark relied on is for ONE DIVERSIFIED with Serial number at the USPTO of 87172663. It was filed on September 15, 2016 and published for opposition on April 18, 2017. At the present, the trademark has not been registered. Complainant submits that the Panel should also take into account that fact that a Notice of Allowance has been issued by the USPTO on June 13, 2017 with respect to this filing. The Panel has naturally considered the terms of this Notice which is in evidence. However, despite the Notice it is apparent that the trademark is still inchoate and as it has not been registered it does not confer trademark rights for the purposes of the UDRP.
The conclusion from this evidence is that Complainant has established that it has two trademarks on which it can rely in this proceeding, the trademark for DIVERSIFIED, Registered number 5,207, 618 which was registered on May 23, 2017 and the trademark for DIVERSIFIED, registered number 5,207,620, which was also registered on May 23, 2017. The former is a word mark for DIVERSIFIED and the latter is a word mark for DIVERSIFIED with the "D" in "Diversified" in stylized lettering enclosed in a circle.
Complainant’s case is also that it has used the DIVERSIFIED mark in promotion of sound engineering and design services since at least as early as December, 2015. It is apparent from Complainant’ internal staff newsletter of July 29, 2016 which is in evidence that long prior to that date it had been conducting its business under that name and that it had been engaged in projects in the United States and overseas where the name must have been made prominent to the public and known as the source of Complainant’s services. It is also in evidence that complainant has its own domain name, <diversifiedus.com> and the website at that address makes it plain that the DIVERSIFIED mark has been used widely and over several years. The Panel finds that it has been so used as a trademark.
The Panel therefore finds that Complainant has common law trademark rights in DIVERSIFIED and that, as Complainant submits, has had them since at least December 2015.
Complainant has therefore established the first part of the first of the three elements that it must establish.
The second question that arises is whether the disputed domain names are identical or confusingly similar to the trademarks. Each of the domain names, of course, has a similar structure, namely the term “onediversified.” Clearly they are not identical to the trademarks, as the domain names include an additional word “one”, which is not present in the trademarks. But if they are not identical are they nevertheless confusingly similar? A good starting point in answering this question is to note that the domain names include Complainant’s trademark. In such cases, it is a well established that the addition of a descriptive word, such as preceding the trademark with the word “one” is not sufficiently distinguishing to negate the confusing similarity created by including the trademark in the domain name. There are many UDRP decisions to this effect of which an example is America Online, Inc. v. Karandish, FA 563833 (Forum Nov. 2, 2005) (finding that the addition of the descriptive term “talk” to a registered trademark does not sufficiently distinguish a domain name from a trademark which has been incorporated into the domain name).
This is a useful working principle, but in the final analysis it must still be asked whether, on a straight comparison between the domain name and the trademark, it should be said that the domain name is similar to the trademark and confusingly so. A good test of this is to ask how an objective bystander would see the two, the trademark and the domain name and to make that assessment on the balance of probabilities. Such issues are not easy to resolve and the present case is no exception. Having considered the matter carefully, the Panel finds that an objective bystander would probably think that the domain names were referring to Complainant, its DIVERSIFIED mark and the services Complainant supplied under that mark. Such a view would probably be reinforced if the comparison was being made after July 29, 2016, when according to the Complainant it began using the words ONEDIVERSIFIED in its newsletters to its employees, and more so from August, 20, 2016, when a company Name Reservation for One Diversified was submitted to the Georgia Secretary of State’s office by Complainant’s General Counsel & Director of Business Systems.
It is also well established that the addition of a top level domain such as “.com” cannot negate confusing similarity which is otherwise present as it is in this proceeding.
For those reasons, the Panel finds that the <onediversified.com>, <onediversified.info>, <onediversified.net> and <onediversified.org> domain names are confusingly similar to Complainant’s DIVERSIFIED mark.
Complainant has thus made out the first of the three elements that it must establish.
The question here is whether Complainant has shown that Respondent has no rights or legitimate interests in the disputed domain names.
It is now well established that in answering that question 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. The reason why this is so is that this provision in the Policy requires the complainant to prove a negative, which is virtually impossible to do as the issue will depend on facts that are more likely than not to be in the sole knowledge of the Respondent. The Complainant in this proceeding is thus required to show a prima facie case and then the Respondent may rebut it. The Panel will then make the final decision having considered the prima facie case and any rebuttal. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (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 finds that Complainant has made out a prima facie case which arises from the following considerations:
(a) Respondent has clearly taken Complainant’s DIVERSIFIED trademark and has used it in his domain names;
(b) The domain names so created are confusingly similar to the trademark;
(c) Respondent acquired the domain names the day after he ceased to be employed by Complainant in a business using the name Diversified;
(d) Respondent has acquired the domain names without the approval or authority of Complainant to do so; and
(e) Although there may be debate on the full implications of the dealings between the parties, it is clear that Respondent evinced an intention to try to sell the domain names to Complainant. Respondent made it clear to Complainant in an email that if Complainant wanted the domain names, it would have to pay for them. In this regard the Panel also notes that the evidence of Complainant is that Respondent asked for $50,000 for each of the four domain names, making $200,000 in total and that Respondent in his affidavit has not denied this, but says that he “throughout a figure to” the CEO of Complainant, without stating what that figure was. Moreover, in his response, Respondent states that he is “open to discussions regarding the domains…”.
Putting all of these matters together, the Panel is of the view that Complainant has made out a prima facie case. That being so, it then becomes a matter of assessing if Respondent has rebutted the prima facie case against him. The Panel finds that Respondent has not rebutted the prima facie case and the reasons why that is so are as follows.
The Panel will deal first with a series of specific issues on which Respondent could have relied and established to prove the positive, that is, that he does have a right or legitimate interest in the domain names but has not done so. These issues tend to suggest that Respondent does not have a right or legitimate interest in the domain names. The Panel will then deal with what is in its view a far more significant issue that really determines the issue of rights and legitimate interests in the domain names and the outcome of this proceeding as a whole.
First, Complainant has submitted that it did not license or otherwise authorize Respondent to use its DIVERSIFIED mark in domain names or in any other way. There is no evidence to the contrary. A lack of contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name is regularly held to be evidence of a lack of rights and legitimate interests and the Panel so holds in the present case.
Secondly, one of the ways the Policy specifies to show a respondent has a right or legitimate interest in a domain name is where the respondent registrant is commonly known by the domain name. To assess this, WHOIS information on the registration may be used to support a finding under Policy ¶ 4(c)(ii) that a respondent is not commonly known by a disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). In the present case, the WHOIS information for the disputed domain names lists “ROBERT SCHWEITZER” as the registrant. See Compl., at Attached Ex. 4. There is therefore no evidence that Respondent is commonly known by the domain name and the contrary is clearly the case.
Thirdly, another specific way by which a registrant of a domain name may show that it has a right or legitimate interest in the domain name is if the registrant has used the domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Complainant argues that that cannot be so in the present case because the web pages to which the domain names resolve are inactive and Respondent has therefore not been using the domain names for any legitimate purpose. Such a non-use cannot be construed as a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Complainant has provided a screenshot of Respondent’s inactive webpages, all of which display the message “This site is under development.” See Comp., at Attached Ex. 19. Therefore, as Respondent has not shown anything to the contrary, the Panel finds that this evidence supports a finding that Respondent has not made an active use of the disputed domain names, and thus has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names under Policy ¶¶ 4(c)(i) or (iii).
Fourthly, Respondent’s offer to sell the four disputed domain names at the price of $50,000 each, which the Panel finds was probably the case, is evidence of a lack of rights and legitimate interests in the domain names. Offers to sell a domain name in excess of the out-of-pocket costs associated with the registration of a domain name are viewed as evidence of a lack of rights and legitimate interests in the domain name. See Drown Corp. v. Premier Wine & Spirits, FA 616805 (Forum Feb. 13, 2006) (“Moreover, the Panel interprets Respondent’s offer to sell the domain name registration for $100,000 as evidence that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).”). The Panel so finds in the present case.
In addition to the foregoing, the Panel finds Respondent’s whole case unpersuasive. The known facts are those set out above and it was incumbent on Respondent to give to the Panel an explanation for such an apparently dubious dealing. The facts are that Respondent as an individual was an employee of Complainant and resigned on August 8, 2016, effective August 19, 2016.The following day he registered four domain names that included the trademark and name under which his former employer traded and sold its services, which Respondent must have known as he worked there. Not only did his domain names incorporate Complainant’s trademark and name, but they also incorporated the word “One” , making “One Diversified “,which Complainant had been using in its newsletters to its employees from July 29, 2016, and which it had named its newsletter on August 5, 2016, also using the subject line “We are.. One Diversified!”.
The registration of the domain names thus give rise to two questions; the first is why Respondent would use the word “diversified” in his domain names at all unless he was wishing to use the name of his former employer; the second is why the four domain names included the same additional word, the word “one”, making the term ”onediversified” that Complainant itself was clearly contemplating using and which it had used in its newsletter while Respondent was still employed there. Either these two matters came about by a remarkable co-incidence or there was some other less creditable explanation. There was therefore an obligation on Respondent to say why he chose the names he did. Respondent could have given an explanation for using what were clearly the names being used by his former employer, but he has not done so. All that Respondent has done is to assert that he was entitled to register the domain names, but he gives no reason why he chose the expression “onediversified” instead of any other. Accordingly, the Panel has little alternative but to conclude that Respondent registered the domain names for an inappropriate purpose and one which, as subsequent events showed, involved attempting to extract a large sum of money from his former employer. In the Panel’s opinion, such motivation could not give rise to a right or legitimate interest in the domain names.
The Panel therefore concludes that Respondent has not rebutted the prima facie case against it and that Respondent had no right or legitimate interest in the domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent’s offer to sell the domain names to Complainant for a total of $200,000 is evidence of bad faith registration and use. The Panel agrees with that submission. Offers to sell an infringing domain name to a trademark owner or a competitor of the trademark owner at a price exceeding the costs of out-of-pocket expenses relating to the registration of the domain name can evince bad faith. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name). In the present case, Complainant has provided as evidence email correspondence between Complainant and Respondent whereby Respondent states that if Complainant wants the domain names, it will need to pay for them. See Compl., at Attached Ex. 15. The evidence that the Panel accepts is that Respondent offered to sell the four disputed domain names at a price of $50,000 each for a total of $200,000. See Compl., at Attached Ex. 18. The Panel interprets this evidence as constituting”(i) circumstances indicating that ( Respondent) registered … the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of (Respondent’s) documented out-of-pocket costs directly related to the domain name….” within the meaning of Policy ¶ 4(b)(i).
Secondly, Complainant contends that Respondent is not making an active use of the disputed domain names’ resolving webpages. A respondent’s failure to make an active use of a disputed domain name’s resolving webpage can evince bad faith. See Caravan Club v. Mrgsale, FA 95314 (Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith). Complainant has provided screenshot evidence of the disputed domain names’ inactive resolving webpages. See Compl., at Attached Ex. 19. The resolving webpages for all of the disputed domain names display the message “This site is under development.” Id. Based on this evidence, the Panel finds that Respondent has acted in bad faith under Policy ¶ 4(a)(iii).
Thirdly, Complainant asserts that Respondent had constructive knowledge of Complainant’s rights in the DIVERSIFIED mark at the time he registered the domain names, due to the registration of the mark. Constructive notice is generally regarded as not sufficient for a finding of bad faith. However, actual knowledge of Complainant's mark and rights is clearly sufficient under Policy ¶ 4(a)(iii) to show bad faith; see Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name"). In the present case, Respondent was a former employee of Complainant’s business. He was an employee of Technical Innovation LLC in February 2016 when it was acquired by Complainant and was an employee of Complainant until 19 August 2016. During that time and at the time he registered the domain names he must have known of the use of DIVERSIFIED as the name under which Complainant offered its services. Yet he registered the domain names and also offered to sell them directly to Complainant. See Compl., at Attached Ex. 11 (Respondent’s Application for Employment) & 13 (Respondent’s Resignation Letter). Further, the Panel finds that while an employee of Complainant, Respondent probably knew of Complainant’s initiative to rebrand the company as “One Diversified”. See Compl., at Attached Ex. 19 (Alessandro Affidavit). The Panel views this information as evidence of Respondent’s actual knowledge of Complainant’s rights in the DIVERSIFIED mark and therefore holds that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the DIVERSIFIED mark and in view of the conduct that Respondent engaged in since registering the domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
The Panel recognizes that the registered trademarks of Complainant for DIVERSIFIED were not registered until May 23, 2017 and that the domain names were registered prior to that date namely on August 20, 2016. However, Complainant clearly had common law trademark rights in DIVERSIFIED from at least December 2015, rights that had been well established at the time Respondent was employed there and of course prior to the domain names being registered.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <onediversified.com>, <onediversified.info>, <onediversified.net> and <onediversified.org> domain names be TRANSFERRED from Respondent to Complainant
The Honourable Neil Anthony Brown QC,
Panelist
Dated: July 27, 2017
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