6d bytes v. Arboris Ltd / Charles Sears
Claim Number: FA1908001857298
Complainant is 6d bytes Inc. (“Complainant”), represented by Ram Nagarajan of California, USA. Respondent is Arboris Ltd / Charles Sears (“Respondent”), represented by Adam Taylor of Adlex Solicitors, London, UK.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <blendid.com>, registered with NameSilo, 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.
David H. Bernstein as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 14, 2019. Complainant named NameSilo, LLC as the respondent because the publicly available Whois information did not include the identity of the actual respondent. The Forum received payment on August 14, 2019.
On August 14, 2019, NameSilo, LLC confirmed by e-mail to the Forum that the <blendid.com> domain name is registered with NameSilo, LLC and that Respondent is the registrant of the name. NameSilo, LLC verified that Respondent is bound by the NameSilo, LLC registration agreement and has therefor agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”). On August 19, 2019, Complainant filed an amended complaint that, inter alia, named Respondent as the respondent.
On August 20, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 13, 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@blendid.com. Also on August 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 September 6, 2019.
On September 10, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David H. Bernstein 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
With respect to the first element, Complainant asserts that the second-level component of Respondent’s domain name is identical to the BLENDID mark.
As to the second element, Complainant contends that, prior to its own initial use of the BLENDID mark, Respondent “does not appear” (1) to have used the <blendid.com> domain name in connection with a bona fide offering of goods or services; (2) to have been commonly known by the domain name; and (3) to have made a legitimate noncommercial or fair use of <blendid.com>.
Finally, Complainant makes four allegations related to Respondent’s bad faith. First, that Respondent registered <blendid.com> on December 19, 2018, just eight days after the BLENDID mark was published for opposition. Second, that Respondent did not oppose the published mark. Third, that Respondent has never used the domain name in any manner. Finally, that Complainant attempted to contact Respondent through the GoDaddy search service and the domain name registration lookup service, but never received a response.
B. Respondent
Respondent does not deny that Complainant’s alleged mark and the registered domain name are identical. Instead, Respondent contends that Complainant has no trademark rights in the BLENDID mark because its trademark application is pending and its “very recent, limited use” of the mark in California is insufficient to establish common law rights. Respondent further asserts that Complainant failed to make more than conclusory allegations of common law rights and provided no supporting evidence for its alleged use of the mark, in contravention of the standards set forth in Section 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”).
Regarding the second element, Respondent contends that it has a bona fide business of domain name speculation and has also used the domain name for anti-spam services.
As to bad faith, Respondent explains that its intent in purchasing the domain name was to save it for a potential ID service website, as part of its larger business. Respondent alleges that, on December 19, 2018, it spotted <blendid.com> on a list of existing domain names due to drop that day and immediately registered it on back order. Respondent asserts that, prior to this proceeding, it had no knowledge of Complainant, and that, when Respondent acquired the domain name, Complainant had allegedly only deployed one kiosk using the BLENDID mark. Located in the UK, Respondent contends that it does not review the Official Gazette of the United States Patent and Trademark Office (“USPTO”) in the course of its business. Respondent asserts that it has no interest in using <blendid.com> in connection with any industry related to Complainant’s business and has not done so. Finally, Respondent asserts that it never received any communications from Complainant.
Complainant is a California-based company that develops “robotic kiosks” that make food and beverages. Complainant filed an intent-to-use trademark application for BLENDID on March 19, 2018 for use in connection with automated food and beverage preparation machines, as well as related software and hardware. The mark was published for opposition in the Official Gazette on December 11, 2018. The USPTO issued a Notice of Allowance on February 5, 2019. On July 8, 2019, Complainant was granted an extension of time for filing a statement of use. As of the date of this decision, Complainant has not filed a statement of use.
Respondent invests in domain names for development and sale. The <blendid.com> domain name had previously been registered to a different party, but expired on September 29, 2018. On December 19, 2018, the <blendid.com> domain name appeared on a list of expiring domain names published on the website http://www.expired-domains.co. Respondent registered <blendid.com> that day. Respondent has since used the domain name as a “spam trap,” which Respondent describes as a website used “to help identify / blacklist email spammers for the benefit of the Respondent’s clients using the Respondent’s own mail servers as well to contribute to public reputation lists.”
As explained in more detail below, the Panel finds that Complainant has proven that the domain name is identical to a trademark in which it has rights and that Respondent lacks rights or legitimate interests in the domain name, but that Complainant has failed to prove that Respondent registered and used the domain name in bad faith.
Paragraph 15(a) of the Rules instructs the 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.
The domain name is obviously identical to the claimed BLENDID mark, but there remains a question under the first factor as to whether Complainant has carried its burden of proving that it has rights in BLENDID as a mark.
The USPTO has issued a Notice of Allowance for Complainant’s BLENDID mark, but the mark has not yet been registered because Respondent has not yet filed a statement of use. An allowed intent-to-use application is not sufficient to constitute trademark rights; until a statement of use is filed and accepted, there is no registration and no presumption of trademark validity. Given that Complainant claims to have used the mark since August 2017, Complainant’s decision to file an intent-to-use application (rather than a use-based application) in March 2018, and Complainant’s request in July 2019 for an extension of time for the filing of a statement of use, raises a question about the extent of Complainant’s use of the mark.
The Panel surmises that the reason Complainant did not file a use-based application and has not yet filed a statement of use is that Complainant has not used the mark “in commerce,” but rather, has only used the mark in a single state. Complainant asserts that it has used the BLENDID mark on kiosks in three locations in California: one in Sunnyvale starting in April 2018,[i] one at the University of San Francisco starting in March 2019, and one at the Adobe headquarters in San Jose, California, in April 2019. Notably, this assertion is inconsistent with Complainant’s other assertion that it has used the BLENDID mark since August 2017. Moreover, other than these bald assertions of use, Complainant provides no documentary evidence of use, such as photographs of the actual kiosks, nor does Complainant allege any facts that would establish the extent of the use, such as the amount of sales at the kiosks during the relevant time period or the extent of any advertising for the goods sold through the kiosks. See generally Section 1.3 of the WIPO Jurisprudential Overview 3.0 (“To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services. Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.”).
Although the evidence is thin, Complainant has stated that the mark is in use in three locations in California, and has certified that statement to be true in the Amended Complaint. Respondent properly notes that Complainant’s evidentiary submission was limited, but the claim of use in three separate locations is not “conclusory”; it is an assertion of fact. Crediting Complainant’s factual statement regarding the use of the BLENDID mark in connection with these three kiosks, the Panel finds that Complainant has established common law rights in the BLENDID mark at least since the spring of 2019 in San Jose and San Francisco, California, and possibly since April 2018 in Sunnyvale, California as well.
Complainant has therefore sustained its burden under the first factor of the Policy.
Respondent asserts that it acquired <blendid.com> as part of its business of investing in “generic / common domain names.” The Panel agrees that the registration and use of domain names based on the value of a domain name itself (either because it is short, or memorable, or comprised of dictionary terms) may be a legitimate interest, but that is only the case if the domain name was registered and used because of the inherent value of the domain name itself, and not because of the value derived from the similarity of the domain name to another’s trademark rights.
In this case, Respondent claims legitimate interests in the domain name because it is a combination of “blend” and “ID”. In order to establish such rights Respondent must have “genuinely used [the domain name], or at least demonstrably intended to such use, in connection with the relied-upon dictionary meaning.” WIPO Jurisprudential Overview 3.0, Section 2.10.1 (emphasis added). Although Respondent contends it was interested in <blendid.com> for use in the provision of ID-related services, Respondent concedes that, in the nine months since acquiring the domain name, it has not made any use of the domain name in connection with such services and has not even decided whether to develop it or sell it. Respondent’s failure to use the domain name for any such purpose in the many months since registration undermines Respondent’s claim of rights or legitimate interests in the domain name.
Moreover, it is not clear to the Panel how the “blend” portion of the domain name would be relevant to identification-related services. The <blendid.com> domain name seems to be very different in character from Respondent’s other identity-related domain names such as <identificationcheck.com>, <identitycounts.com>, and <idtracker.com>.
Respondent also claims a legitimate interest based on its use of the domain name for an anti-spam website. Respondent has not explained how any aspect of the <blendid.com> domain name is related to a website that offers a spam trap. Given the absence of any meaningful connection between the meaning of the textual elements of the <blendid.com> domain name and the operation of an anti-spam website, the Panel finds that use of the domain name <blendid.com> as a “spam trap” does not give Respondent any rights or legitimate interests in <blendid.com>.
Accordingly, the Panel finds that Complainant has carried its burden with respect to the second element.
Complainant’s assertions of bad faith rest on four allegations of fact: (1) the timing of Respondent’s registration of <blendid.com>; (2) Respondent’s failure to oppose registration of the BLENDID mark; (3) Respondent’s failure to use <blendid.com>; and (4) Respondent’s failure to respond to Complainant’s communications. The Panel will address each in turn.
First, Respondent has credibly rebutted Complainant’s allegations of suspicious timing in Respondent’s registration of the domain name. Complainant points to the registration of <blendid.com> eight days after the publication of BLENDID for opposition in the Official Gazette as evidence of bad faith. However, Respondent provided exhibits showing that (1) the <blendid.com> domain name was previously owned and expired on September 29, 2018; (2) <blendid.com> appeared on a list of expired domain names about to drop on December 19, 2018; and (3) Respondent registered the domain name that same day.
There is no evidence that Respondent’s registration of the domain name in December 2018 was based on Respondent’s knowledge of Complainant or that Respondent registered the domain name to take advantage of Complainant’s BLENDID trademark. Indeed, at the time Respondent registered the domain name, Complainant had only a pending intent-to-use trademark application. Moreover, at that time, Complainant was using the BLENDID trademark in only a single kiosk in California. Complainant did not submit any evidence to show that its use of BLENDID in that one location had garnered any media attention whatsoever, or that Respondent had any knowledge of Complainant’s limited common law rights in that mark.
Respondent has thus credibly asserted that it did not have actual knowledge of Complainant and its mark at the time that Respondent registered the domain name. That, however, does not end the inquiry. Respondent also had a duty at the time that it registered the domain name to ensure that the domain name would not “not infringe upon or otherwise violate the rights of any third party.” Policy, Paragraph 2 (“By applying to register a domain name, . . . you hereby represent and warrant to us that . . . (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party. . . . It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights.”). The consensus view is that this provision of the Policy creates an obligation on domain name speculators to search and/or screen potential domain names against online databases to avoid the registration of trademark-abusive domain names. See WIPO Jurisprudential Overview 3.0, Section 3.2.3; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304.
Respondent has not submitted any evidence that it undertook any investigation at the time that it registered the domain name to ensure that its registration of <blendid.com> would not infringe upon the rights of any third party. Nevertheless, the Panel concludes that Respondent’s registration of the domain name in December 2018 did not constitute bad faith as to Complainant. That is because, at the time of the domain name registration, Complainant did not own any trademark rights that likely would have been discovered by a search. Complainant had only a pending intent-to-use application and was using the mark only in a single kiosk in Sunnyvale, California. These are not trademark rights that likely would have been found by a search, and even if Respondent had learned of those uses, they are not the kind of substantial trademark rights that would naturally have caused a reasonable domain name registrant to conclude that any use of the domain name would necessarily have been infringing. Rather, a domain name speculator in that situation might reasonably have concluded that, notwithstanding the limited trademark rights that Complainant had in one state in the United States, the speculator could still register the domain name so long as it was going to be used in a way that would not infringe or violate Complainant’s rights.
Further, the Panel notes, Respondent has not used the domain name in a way that capitalizes on Complainant’s rights. The use of the domain name for an anti-spam website may not constitute a legitimate interest for this domain name, but at the same time, it also is not abusive of Complainant’s rights because Complainant does not offer anti-spam services. Respondent has not tried to sell <blendid.com> to Complainant, set up pay-per-click pages that capitalize on the value of Complainant’s mark, or divert unsuspecting web traffic to Respondent’s own page. Nor has Respondent used <blendid.com> to compete with Complainant or disrupt Complainant’s business. As such, the use that Respondent has made of the domain name was not in bad faith.
With respect to Complainant’s second claimed basis for a finding of bad faith, Complainant does not explain how bad faith is implicated in any way by the fact that Respondent did not oppose Complainant’s trademark application. Respondent had no obligation to oppose Complainant’s application, and, in any event, Respondent could not have done so based on prior rights because Respondent is not claiming any trademark rights in BLENDID. Further, Respondent credibly argues that it had no knowledge of Complainant or its trademark application before receiving notice of the present proceeding.
Complainant’s third claimed basis for a finding of bad faith – that Respondent has not used the domain name – is similarly without merit. First, it is not exactly correct – Respondent has used the domain name for an anti-spam website. As noted above, that may not be sufficient to create rights in the domain name, but it is not a bad faith use that capitalizes on Complainant’s trademark rights. Further, unlike a famous mark like Telstra, Complainant’s mark is not so famous that non-use can constitute bad faith. See WIPO Jurisprudential Overview 3.0, Section 3.3.
Finally, Complainant briefly asserts that it made attempts to contact Respondent using a GoDaddy search service and a domain name registration lookup service, and complains that Respondent did not reply. Complainant has not submitted copies of those alleged communications, nor explained how they were sent, nor disclosed what the communications said (which makes it impossible to assess whether the failure to respond could even constitute bad faith). In any event, Respondent credibly argues that it received no communication from Complainant. Respondent’s failure to respond to a communication that it appears never to have received hardly constitutes bad faith.
The Panel accordingly finds that Complainant has failed to prove that Respondent registered and used the domain name in bad faith.
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 <blendid.com> domain name REMAIN WITH Respondent.
David H. Bernstein, Panelist
Dated: September 24, 2019
[i] Complainant has not disclosed where in Sunnyvale this kiosk is located, and whether it is available to the public or is only located within Complainant’s offices. Because the resolution of this question does not impact the ultimate resolution of this decision, the Panel did not feel it necessary to delay the resolution of this case by issuing a procedural order seeking further details about this first kiosk.
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