IpData, LLC, v. apilayer GmbH / Paul Zehetmayr
Claim Number: FA1906001848585
Complainant is IpData, LLC (“Complainant”), represented by Jonathan Uffelman of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, USA. Respondent is apilayer GmbH / Paul Zehetmayr (“Respondent”), Austria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ipdata.com>, 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.
Calvin A. Hamilton as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 18, 2019; the Forum received payment on June 18, 2019.
On June 19, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <ipdata.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.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 20, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 10, 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@ipdata.com. Also, on June 20, 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.
A timely Response was received and determined to be complete on June 25, 2019.
Complainant filed an Additional Submission on June 26, 2019 which was filed in a timely manner according to the Forum's Supplemental Rule #7.
On June 28, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Calvin A. Hamilton 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 provides application programming interface services that allow IP address geolocation. Complainant has rights in the IPDATA mark based upon common law rights in the mark. Respondent’s <ipdata.com> domain name is identical or confusingly similar to Complainant’s IPDATA mark because it wholly incorporates Complainant’s IPDATA mark, and merely adds the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <ipdata.com> domain name. Respondent is not authorized to use Complainant’s IPDATA mark and is not commonly known by the disputed domain name. See Compl. Ex. 2. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use because the disputed domain name resolves to a website hosting a pay-per-click link scheme. See Compl. Exs. 12, 13, and 14. Respondent also used the disputed domain name as leverage in its attempt to acquire Complainant’s company.
Respondent registered and uses the <ipdata.com> domain name in bad faith. Respondent has offered the disputed domain name for sale. See Compl. Ex. 20. Furthermore, Respondent attempts to attract, for commercial gain, users to the disputed domain name where Respondent creates initial interest confusion and hosts a pay-per-click scheme. See Compl. Exs. 12, 13, and 14. Respondent also had actual knowledge of Complainant’s IPDATA mark prior to registering the disputed domain name. Finally, Respondent’s registration of the disputed domain name was done opportunistically in bad faith based upon Complainants filing for registration of the IPDATA mark.
B. Respondent
Respondent did submit a response on June 25, 2019. Respondent registered the <ipdata.com> domain name on March 1, 2019. See Compl. Ex. 2.
Respondent claims it had no knowledge of Complainant’s rights in the IPDATA mark. Respondent has no interest in selling the <ipdata.com> domain name. Respondent has no intention of offering products in competition with Complainant. As a result, Respondent has not made preparations to use the disputed domain name.
Respondent bought the <ipdata.com> domain name in good faith. Respondent’s offers to purchase Complainant’s company were also made in good faith. See Compl. Exs. 15-18.
C. Additional Submissions
Complainant argues that Respondent does not dispute that the Domain Name is confusingly similar to Complainant’s IPDATA common-law trademark. Respondent also provides no evidence of any rights or legitimate interest in the Domain Name, other than its own conclusory assertion that it was registered in good faith. Paradoxically, Respondent links its purchase of the Domain Name to its “interest to acquire the IpData, LLC company.”
Claimant declares that: a) Respondent knew about Complainant’s common-law IPDATA Trademark; b) Respondent used the domain name as leverage to pressure Complainant into entering a partnership; c) Respondent is using the domain name for a pay-per-click website; d) Respondent has not satisfied the requirements for a finding of reverse domain name hijacking (“RDNH”) because Complainant has made a prima facie case for respondent’s bad faith registration and use of the domain name.
FINDINGS and DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant claims it holds common law rights in the IPDATA mark and does not currently hold a trademark registration. Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”)
Here, Complainant provides articles from online trade publications featuring Complainant’s business and screenshots of advertisements of Complainant’s business in support of Complainant’s contention that the IPDATA mark as acquired secondary meaning. See Compl. Exs. 7, 8, and 9.
The Panel agrees that IPDATA has acquired a secondary meaning and finds that Complainant does hold common law rights in the name for the purposes of Policy ¶ 4(a)(i).
Complainant argues Respondent’s <ipdata.com> domain name is identical or confusingly similar to Complainant’s IPDATA mark because it wholly incorporates Complainant’s IPDATA mark, and merely adds the “.com” gTLD. The addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference. See Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Panel agrees with Complainant and finds that Respondent’s disputed domain name is identical or confusingly similar to the Complainant’s IPDATA mark.
Rights or Legitimate Interests
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), 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”).
Complainant argues that Respondent has no rights or legitimate interests in the <ipdata.com> domain name as Respondent is not commonly known by the disputed domain name and is not authorized by Complainant to use the IPDATA mark. WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may support a finding that the respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”).
Complainant provides WHOIS information for Respondent indicating that Respondent is known as “apilayer GmbH / Paul Zehetmayr” and no information of the record indicates that Respondent was authorized to use the Complainant’s IPDATA mark. See Compl. Ex. 2.
Complainant has made a prima facie showing that Respondent lacks rights and legitimate interests in respect of the at-issue domain name. Respondent has not come forward with evidence of its rights or legitimate interests in the disputed domain name. Indeed, Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Accordingly, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).
Registration and Use in Bad Faith
Complainant argues Respondent registered and uses the <ipdata.com> domain name in bad faith because Respondent attempted to sell the disputed domain name. A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶4(b)(i). Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶4(b)(i).”).
Here, Complainant provides a screenshot of a GoDaddy for-sale listing which lists the disputed domain name for sale for $50,000. See Compl. Ex. 20. Respondent has provided no explanation for the GoDaddy for-sale listing other than to state that it has no intention to sell the domain name, which obviously flies in the face of the evidence in the record.
Thus, the Panel agrees that Respondent registered and uses the disputed domain name in bad faith because under Policy ¶ 4(b)(i).
Next, Complainant argues Respondent registered and uses the <ipdata.com> domain name in bad faith because Respondent attempts to attract, for commercial gain, users to the disputed domain name where Respondent creates initial interest confusion and hosts a pay-per-click scheme. See Compl. Exs. 12, 13, and 14. A respondent’s use of a disputed domain to host a pay-per-click scheme displaying links unrelated to the complainant and to generate click-through revenue may suggest bad faith registration and use under Policy ¶ 4(b)(iv). See Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv).
Complainant provides screenshots of the resolving webpage of the disputed domain name which displays hyperlinks to third parties. See Compl. Ex. 13. Again, nothing in the record serves to refute the Complainant’s allegations of bad faith registration and use.
Thus, the Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iv).
Complainant asserts that Respondent had actual and/or constructive knowledge of Complainant’s rights in the IPDATA mark as the result of Complainant’s extensive use of the mark predating the date on which respondent registered the <ipdata.com> domain name and Respondent’s subsequent attempt to buy Complainant’s business. See Compl. Exs. 14-18. Although panels have generally not regarded constructive notice as sufficient for a finding of bad faith, actual knowledge of Complainant’s mark prior to registering is adequate to find bad faith under Policy¶4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Snap Inc. v. Deepika Priyadarshinie/entsl, FA 1788600 (Forum June 21, 2018) (finding the respondent had actual knowledge of the complainant and its rights in the claimed mark due to the fame of the mark, established by the complainant’s submission of numerous articles regarding the success of the complainant’s product).
Based on the record, including the Respondent’s communication with Complainant predating registration of the disputed domain name, the Panel finds that Respondent had actual notice of Complainant’s rights in the IPDATA mark under Policy ¶ 4(a)(iii).
Finally, Respondent’s registration of the disputed domain name was done opportunistically in bad faith based upon Complainants filing for registration of the IPDATA mark. Panels have found a respondent acted in opportunistic bad faith according to Policy ¶4(a)(iii), when it registered the disputed domain name shortly after the complainant filed applications to register the mark. See Arizona Board of Regents, for and on behalf of Arizona State University v. Weiping Zheng, FA1504001613780 (Forum May 28, 2015) (finding that the respondent had acted in opportunistic bad faith according to Policy¶4(a)(iii), when it registered the disputed domain name just one week after the complainant filed applications to register the SUB DEVIL LIFE mark, and just days after those applications became public through the USPTO’s website).
Here, the disputed domain name was registered on March 1, 2019 and Complainant filed its trademark application with the USPTO March 13, 2019, so the disputed domain name predates the filing for registration. However, Respondent was well aware of Complainant’s business activities and efforts to promote its mark, which efforts and activities predate Respondent’s registration of the domain name. Further, the Panel has found that Complainant has established common law rights to the mark.
Therefore, based on the record, the Panel finds that Respondent’s registration of the disputed domain name was done opportunistically in bad faith based upon Complainants filing for registration of the IPDATA mark.
Finally, Complainant addresses the prospect of Respondent’s implicit argument of Reverse Domain Name Hijacking (RDNH). Respondent seems to contend that IpData’s “complaint was filed purely for the purpose of creating pressure on our side and trying to force the transfer of ownership of a domain name that we bought legally and that we are currently not interested in selling to IpData, LLC.”.
If indeed, Respondent is making this argument, the Panel does not agree. The Complainant has established each element of its claim. Therefore, RDNH cannot lie under these circumstances.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ipdata.com> domain name be TRANSFERRED from Respondent to Complainant.
Calvin A. Hamilton, Panelist
Dated: July 5, 2019
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