Vroom, Inc. v. Beepi / Owen Savir
Claim Number: FA1902001829345
Complainant is Vroom, Inc. (“Complainant”), represented by David A.W. Wong of Barnes & Thornburg LLP, Indiana, USA. Respondent is Beepi / Owen Savir (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <beepi.com>, registered with Google LLC; and, <beepi.org>, <beepi.net>, <beepi.info>, and <beepi.biz>, registered with GoDaddy.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 February 11, 2019; the Forum received payment on February 13, 2019.
On February 11, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <beepi.org>, <beepi.net>, <beepi.info>, and <beepi.biz> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. On February 12, 2019, Google LLC confirmed by e-mail to the Forum that the <beepi.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC and Google LLC have verified that Respondent is bound by the GoDaddy.com, LLC and Google LLC registration agreements and have thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 22, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 14, 2019 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@beepi.com, postmaster@beepi.org, postmaster@beepi.net, postmaster@beepi.info, and postmaster@beepi.biz. Also on February 22, 2019, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On March 15, 2019, 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant is engaged in the motor vehicle industry and provides services that enable users to buy and sell used cars. On April 19, 2017 it entered into a contract with Beepi LLC in its capacity as assignee for the benefit of the creditors of Beepi Inc. The purpose of this contract was for Complainant to buy certain assets including trademarks and domain names. Among the domain names were the domain names that are the subject of this proceeding.
Complainant is now the owner of the BEEPI trademark which is registered in the name of Carsavvy, Inc for use in connection with various goods and services, including the operation of a website with an online marketplace. Complainant has rights in the BEEPI mark through the registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,569,905, registered July 15, 2014, filed Aug. 28, 2013) and its acquisition by Complainant pursuant to the contract of April 19, 2017. See Compl. Ex. B.
Although Complainant acquired the <beepi.com>, <beepi.org>, <beepi.net>, <beepi.info> and <beepi.biz> domain names under the contract of April 19, 2017, it has not been able to effect control of them. The domain names are registered in the names of several registrants, but Complainant submits that they are under the common control of a single entity.
The domain names are identical or confusingly similar to Complainant’s mark as they each incorporate the BEEPI trademark and then add a different generic top-level domain (“gTLD”) to the BEPPI mark.
Respondent has no rights or legitimate interests in the <beepi.com>, <beepi.org>, <beepi.net>, <beepi.info>, and <beepi.biz> domain names as they were acquired by Complainant pursuant to the contract of April 19, 2017. Moreover, Respondent is not commonly known by the disputed domain names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark.
Respondent also does not use the domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent fails to make any use, legitimate or otherwise, with the domain names.
Respondent registered and has used the <beepi.com>, <beepi.org>, <beepi.net>, <beepi.info>, and <beepi.biz> domain names in bad faith. Respondent clearly had actual and/or constructive knowledge of Complainant’s rights in the BEPPI mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that provides a website featuring an online marketplace and related goods and services.
2. Complainant is the owner of all of the right title and interest in the BEEPI mark through the registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,569,905, registered July 15, 2014, filed Aug. 28, 2013).
3. The disputed domain names were registered on the following dates: <beepi.com> on August 25, 2010, <beepi.org> on December 25, 2013, <beepi.net> on December 25, 2013, <beepi.info> on July 9, 2014 and <beepi.biz> on July 9, 2014.
4. Complainant acquired the domain names pursuant to a contract between Complainant and Beepi LLC in its capacity as assignee for the benefit of the creditors of Beepi Inc. and dated April 19, 2017.
5. Respondent has failed and refused to transfer the registration of the domain names to Complainant.
6. Respondent has no rights or legitimate interests in respect of the domain name.
7. Respondent has registered and used the 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 view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant contends that the <beepi.org>, <beepi.net>, <beppi.info>, and the <beepi.biz> domain names all identify “@beepi.com” email addresses, and the fifth domain name is <beepi.com>. See Amend. Compl. Ex. G. Further, the Registrant of the <beepi.com> domain name is listed as “Owen Savir,” who is the co-founder of “Beepi,” the company that had previously owned the domain names that were acquired by Complainant. See Compl. Exs. D & G. Respondent then, sometime after April 19, 2017, caused the domain names to be registered away from Complainant and ceased to have them resolve to Complainant’s website at <www.vroom.com> in an attempt to deprive Complainant of its lawful right to the domain names based on its purchase of the domain names and its entitlement under the contract of April 19, 2017. It is clear that these events took place as a joint exercise brought about by one entity.
Having regard to all the circumstances, the Panel finds that the domain names are commonly controlled by a single entity who is using multiple aliases, being the current domain name holders of the domain names. The matter may therefore proceed in its present form and the several domain name holders will hereafter be referred to as Respondent.
Preliminary Issue: Business/Contractual Dispute Outside the Scope of the UDRP
Complainant claims that it has legal rights to the domain names based on a purchase agreement it had with an individual, Owen Savir, who previously owned the domain names. That individual never transferred the registrations to Complainant per the Assignment and Bill of Sale Agreement entered into on April 19, 2017. See Compl. Ex. D.
In this instance, the Panel may find that this is a business and/or contractual dispute between two companies that falls outside the scope of the UDRP. In Love v. Barnett, FA 944826 (Forum May 14, 2007), the panel stated:
A dispute, such as the present one, between parties who each have at least a prima facie case for rights in the disputed domain names is outside the scope of the Policy … the present case appears to hinge mostly on a business or civil dispute between the parties, with possible causes of action for breach of contract or fiduciary duty. Thus, the majority holds that the subject matter is outside the scope of the UDRP and dismisses the Complaint.
In Love, the panel was concerned with possible causes of action for breach of contract. In this case, however, Respondent points out that these causes of action are currently active cases that are pending with the courts. According to the panel in Love, complex cases such as the one presented here may be better decided by the courts than by a UDRP panel:
When the parties differ markedly with respect to the basic facts, and there is no clear and conclusive written evidence, it is difficult for a Panel operating under the Rules to determine which presentation of the facts is more credible. National courts are better equipped to take evidence and to evaluate its credibility.
The Panel in Luvilon Indus. NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005) concurred with this reasoning:
[The Policy’s purpose is to] combat abusive domain name registrations and not to provide a prescriptive code for resolving more complex trade mark disputes .… The issues between the parties are not limited to the law of trade marks. There are other intellectual property issues. There are serious contractual issues. There are questions of governing law and proper Forum if the matter were litigated. Were all the issues fully ventilated before a Court of competent jurisdiction, there may be findings of implied contractual terms, minimum termination period, breach of contract, estoppels or other equitable defenses. So far as the facts fit within trade mark law, there may be arguments of infringement, validity of the registrations, ownership of goodwill, local reputation, consent, acquiescence, and so on.
Further, In Bracemart, LLC v. Drew Lima, the Panel declined to make any findings under the UDRP when there was evidence that both the complainant and the respondent at some point acted in an official capacity in the management of the company, and that “[b]ased upon this reasoning, the Panel concludes that the instant dispute relates to contractual interpretation and/or whether the relationship between Complainant and Respondent was one of employer-employee or one of partnership, which determination falls outside the scope of the Policy.” See FA 1494699 (Mar. 28, 2013). Because the question of whether the complainant or the respondent in that case had rights in the domain name relied heavily on the corporate structure of the companies involved, the Panel could not resolve the dispute under the UDRP. See id.
Based upon the reasoning outlined in the aforementioned cases and the record, the Panel may conclude that the instant dispute contains a question of contractual interpretation, and thus falls outside the scope of the UDRP. If the Panel makes such a finding, the Panel may dismiss the Complaint. See Everingham Bros. Bait Co. v. Contigo Visual, FA 440219 (Forum Apr. 27, 2005) (“The Panel finds that this matter is outside the scope of the Policy because it involves a business dispute between two parties. The UDRP was implemented to address abusive cybersquatting, not contractual or legitimate business disputes.”); see also Fuze Beverage, LLC v. CGEYE, Inc., FA 844252 (Forum Jan. 8, 2007) (“The Complaint before us describes what appears to be a common-form claim of breach of contract or breach of fiduciary duty. It is not the kind of controversy, grounded exclusively in abusive cyber-squatting, that the Policy was designed to address.”); see also Frazier Winery LLC v. Hernandez, FA 841081 (Forum Dec. 27, 2006) (holding that disputes arising out of a business relationship between the complainant and respondent regarding control over the domain name registration are outside the scope of the UDRP Policy).
On the other hand, the Panel has discretion to determine whether or not it has jurisdiction over this dispute. If the Panel finds that there is sufficient evidence for it to properly decide the dispute under the UDRP, it may proceed with the case and consider the contentions of Complainant and Respondent as outlined below. See Weber-Stephen Prod. Co. v. Armitage Hardware, D2000-0187 (WIPO May 11, 2000) (“Like any other tribunal, however, this Panel can determine whether it has jurisdiction only from the facts and arguments presented to it. In this case, Complainant did allege bad-faith use and registration of the domain name at issue. Had Complainant proved those allegations, there would be no proper question as to this Panel’s jurisdiction.”); see also Draw-Tite, Inc. v. Plattsburgh Spring Inc., D2000-0017 (WIPO Mar. 14, 2000) (“This Panel well recognizes that its jurisdiction is limited to providing a remedy in cases of ‘the abusive registration of domain names,’ or ‘Cybersquatting’ ... Like any other tribunal, however, this Panel can determine whether it has jurisdiction only from the facts and arguments presented to it. In this case, Complainant did allege bad-faith use and registration of the domain name at issue. Had Complainant proved those allegations, there would be no proper question as to this Panel’s jurisdiction.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the BEEPI mark through its registration of the mark with the USPTO (e.g. Reg. No. 4,569,905, registered July 15, 2014, filed Aug. 28, 2013). See Compl. Ex. B. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”).
However, trademark Reg. No. 4,569,905, the only trademark relied on by Complainant is not in Complainant’s name as the registered owner, but in the name of Carsavvy, Inc. (Delaware Corporation).
The Panel can find no current reference to Carsavvy, Inc on the website of the Delaware Secretary of State. However, Bloomberg has the following entry for Carsavvy, Inc:
“Beepi, Inc. went out of business. Beepi, Inc. operates an online portal for buying and selling used cars. It connects buyers and sellers directly. The company was formerly known as CarSavvy, Inc. Beepi, Inc. was incorporated in 2013 and is based in Los Altos, California.”
It appears therefore that Complainant acquired Beepi, LLC. which changed its name from Carsavvy and, as is known from the Trademark Assignment Agreement of 19 April, 2017, also acquired Beepi Inc’s trademarks, including the trademark for BEEPI.
The Complainant also submits that “Vroom, Inc. (“Complainant”), is the owner of the BEEPI® trademark…” and that “Pursuant to the terms of the Assignment and Bill of Sale Agreement, (also dated 19 April, 2017 and between Complainant and Beepi, LLC) Complainant purchased various assets that had been owned by Beepi, Inc., including but not limited to the BEEPI trademark…”.Complainant’s attorney has stated that all of this information is correct.
Accordingly, the Panel finds that the BEEPI trademark is “a trademark or service mark in which the complainant has rights…” the operative word being “has”, that is, at the date when the Complaint was filed.
The second question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s BEEPI mark. The Panel finds that all five of the domain names are identical to the trademark, as they all incorporate the trademark in its entirety and as the relevant gTLD, such as “.com”, is traditionally ignored for the purposes of this exercise as it is a necessary part of all domain names.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) The basic proposition of Complainant shows that it entered into various contracts with Beepi, LLC on April 19, 2017 to acquire certain “Purchased Assets”. Those assets are described in the parts of the Assignment and Bill of Sale that have been adduced in evidence and they include the five domain names that are the subject of this proceeding. Accordingly, the starting point must be that Beepi, LLC at one stage had a right and legitimate interest in the domain names, but that it no longer has such an entitlement because it sold the domain names to Complainant. The present Respondents are now the domain name holders and it appears that they are in that position because, as Complainant contends, “all five Disputed Domain Names are now under the exclusive control and are being held in bad faith by a single entity that controls and has re-registered the Disputed Domain Names, which is unaffiliated with Beepi, Inc. or Complainant.” Accordingly, the various Respondents cannot have a right or legitimate interest in the domain names, as all of the right and interest in those domain names was transferred to Complainant under the Assignment and Bill of Sale of April 19, 2017;
(b) All of the domain names contain the entirety of Complainant’s BEEPI trademark and Complainant has given no permission to Respondent or anyone else to use that trademark in domain names or in any other form;
(c) Respondent has given evidence that “Accordingly, upon information and belief, sometime between October 20, 2017 and June 4, 2018, ownership of the Disputed Domain Names was transferred away from Beepi, Inc. to the Respondent and Respondent then ceased redirecting the Disputed Domain Names to Complainant’s vroom.com website in a bad faith attempt to prevent Complainant from exercising its legal right to use and control the Disputed Domain Names.” Clearly, the “ownership” referred to must be only a purported ownership or effective control, as the domain names were and are owned by Complainant pursuant to the sale;
(d) The evidence is that after the sale to Complainant, Beepi, Inc caused the domain names to resolve to Complainant’s <vroom.com> website, but that sometime between October 20, 2017 and June 4, 2018, it ceased to do so. Clearly such conduct could not give Respondent a right or legitimate interest in the domain names;
(e) Respondent has engaged in these activities without the consent or approval of Complainant;
(f) Nor could it be said that Respondent is commonly known by the domain names. Where, as in the present case, a response is lacking, relevant information to determine this issue includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. The WHOIS identifies “Owen Savir” as the registrant for the <beepi.com> domain name, so it must be concluded that Owen Savir is not known as <beepi.com>. With respect to the other domain names, “Beepi / Beepi” is the registrant of the <beepi.org> and <beepi.net> domain names; and “Beepi Beepi / Beepi” is the registrant of the <beepi.info> and <beepi.biz> domain name. Complainant further submits that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain names prior to their registration, and Complainant has not given Respondent permission to use the BEEPI mark in any manner. Accordingly, the Panel finds that Respondent is not commonly known by any of the disputed domain names under Policy ¶ 4(c)(ii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
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 essentially makes two arguments with which the Panel agrees. The first argument is that Respondent engaged in bad faith registration and use by effecting a transfer of the five domain name registrations to the respective Respondents and by ceasing to have the domain names or at least some of them resolve to Complainant’s website at <www.vroom.com> as it did from the time of the sale. Complainant says this occurred between October 20, 2017 and June 4, 2018 and its attorney has certified that this is correct. The Panel is disposed to accept Complainant’s submission because, under the Assignment and Bill of Sale Agreement , the parties agreed not only that the domain names were being sold to Complainant but that they, the two parties to the agreement , would co-operate and do whatever had to be done to carry out the sale. To obstruct the intent of the sale or contribute to a transfer of the registrations to the Respondent rather than to Complainant is clearly an act of bad faith at the time of registration as it is not co-operation and doing whatever is necessary to carry out the sale but rather conduct designed to frustrate the contract being carried out. In addition, it appears that at the time of the sale Respondent started to have the domain names resolve to Complainant’s website, but stopped doing so between October 20, 2017 and June 4, 2018. Clearly, it was in the interest of Complainant to have this re-direction continue so that it could use the domain names for websites in its business and it must therefore be an act of bad faith use to stop the re-direction. The Panel therefore finds that the above events show that the Respondent has registered and used the domain names in bad faith.
The second argument of Complainant is that Respondent must have had actual knowledge of Complainant’s BEEPI trademark and, that being so, its registration and use of the domain names in a manner that was not in the interests of Complainant amounted to bad faith registration and use. The Panel agrees with Complainant. The several respondents clearly must have known of the BEEPI trademark as it was one of the subjects of the sale, it was pivotal to the workings of the business and it was the basis of the five domain names for the domain names which consisted solely of the entirety of the trademark. It must therefore have understood that frustrating the sale and its implementation would compromise the trademark and would be in breach of the Assignment and Bill of Sale Agreement between the parties. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name can evince bad faith registration under Policy ¶ 4(a)(iii); see the decision cited by Complainant, Samsonite Corp. v. Colony Holding, FA 94313 (Forum April 17, 2000), one of the many UDRP decisions supporting that principle, for example, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel therefore finds that Respondent’s knowledge of the trademark is evidence of bad faith registration and use of the disputed domain names.
Respondent’s failure or refusal to reply to Complainant’s correspondence requesting transfer of the domain names in view of Complainant’s rights is further evidence of bad faith, both in the use of the domain names and as indicating what was probably the intention of Respondent at the time of the registrations.
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 BEEPI mark and in view of the conduct that Respondent has engaged in, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <beepi.com>, <beepi.org>, <beepi.net>, <beepi.info>, and <beepi.biz> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: March 17, 2019
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