Nicolas Karl Reep v. Ali Bazzi
Claim Number: FA2004001891242
Complainant is Nicolas Karl Reep (“Complainant”), represented by Adriano Pacifici of Intellectual Property Consulting, LLC, Louisiana, USA. Respondent is Ali Bazzi (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <employeefax.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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 7, 2020; the Forum received payment on April 7, 2020.
On April 8, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <employeefax.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 April 8, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 28, 2020 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 email@example.com. Also on April 8, 2020, 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.
On May 1, 2020, and pursuant to Rule 6(b), neither party having elected a three-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
On May 2, 2020 and relying on Forum Supplemental Rule 6(a)(iii) , Respondent filed a proposed Response and sought leave to file the Response out of time by means of an extension of time to the deadline for filing a Response, due to a delay caused by issues related to the Coronavirus Pandemic. That issue, together with the proposed Response, was referred to the Administrative Panel (the "Panel") for consideration and decision.
On May 6, 2020 the Panel issued a Procedural Order pursuant to Rule 12 which, inter alia, invited Respondent to give further particulars of the issues relating to the Coronavirus Pandemic that gave rise to the delay.
Complainant and Respondent replied to the Procedural Order on May 13, 2020 by way of Additional Submissions and each party complied with the Procedural Order by providing a copy of its submission to the other party . The Panel has given consideration to both submissions and taken them into account in reaching its decision. The Panel also finds that in the exceptional circumstances of the Coronavirus Pandemic and the further particulars given by Respondent, there should be an extension of time for Respondent to file the Response and that, to that end, the proposed Response is to stand as a Response validly filed in this proceeding and the Panel so orders.
Having reviewed the communications records, 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 will 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant made the following contentions.
1. Complainant, through its predecessor in interest, claims common law and federal trademark rights to the mark EMPLOYEE-FAX for a variety of services, including background investigations and drug, alcohol, and DNA screening for security and employment purposes.
2. Complainant has rights in the EMPLOYEE-FAX mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,468,010, registered Jan. 14, 2014). See Amend. Compl. Ex. A. Respondent’s <employeefax.com> domain name is confusingly similar to Complainant’s mark as Respondent merely removes the hyphen from the mark and adds the “.com” generic top-level domain (“gTLD”).
3. Respondent has no rights or legitimate interests in the <employeefax.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark.
4. Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is merely passively holding the disputed domain name. Furthermore, Respondent is attempting to sell the disputed domain name in excess of out-of-pocket costs.
5. Respondent registered and uses the <employeefax.com> domain name in bad faith. Specifically, Respondent is attempting to sell the disputed domain name for an excessive amount.
6. Respondent is inactively holding the disputed domain name, which impedes Complainant’s ability to reflect the EMPLOYEE-FAX mark in a domain name.
Respondent made the following contentions.
1. Respondent is an entrepreneur who primarily registers Internet domain names for the development of web applications and services and occasionally registers domain names for their intrinsic value.
2. Complainant covets the disputed domain name for his own business and is engineering this frivolous claim, based on exaggerated and false statements in the complaint after the Respondent declined to sell the Domain Name to the Complainant.
3. Respondent accepts that Complainant’s predecessor registered the mark EMPLOYEE-FAX in January of 2013, and that the registration was assigned to Complainant in March of 2020. However, Complainant’s predecessor in title had abandoned the mark.
4. Respondent also notes that the Complainant applied for the mark EMPLOYEEFAX on October 27, 2019, nearly a year and a half after Respondent registered the domain name. According to the USPTO’s website, this mark was published for Opposition on May 12, 2020. See USPTO Serial No. 88670173. Complainant did not disclose this fact in his Complaint.
5. Respondent notes the chronology of the following events: Complainant filed for the trademark “EMPLOYEEFAX” in October 2019, nearly a year and a half after Respondent registered the domain name. Complainant successfully acquired rights to the EMPLOYEE-FAX mark in March of 2020 and started its attempt to acquire the Domain Name in March of 2020.
6. In March of 2018, the domain name became available on the public domain marketplace and Respondent acquired it on April 26, 2018.
7. Respondent purchased the disputed domain name from a leading domain name marketplace, intending to develop a website and associated social media accounts.
8. Respondent submits that when he purchased the disputed domain name, he had no knowledge of Complainant, or any of Complainant’s predecessor’s business or alleged marks.
9. Respondent submits that he had a right to register the disputed domain name for the project he was intending to develop, for its intrinsic descriptive and commercial value or for any other legitimate purpose. Respondent asserts that in the two years since registration of the domain name, he has undergone several conversations with business partners, software developers, and internet marketers as to the best possible use of the domain name.
10. Complainant has failed to provide any evidence of his or his predecessor’s business or sufficient use of the mark in commerce at any point before or after Respondent acquired the domain name.
11. Respondent did not offer to sell the domain name to Complainant.
12. Complainant has no entitlement to the disputed domain name.
13. Respondent requests a finding of Reverse Domain Name Hijacking (RDNH). This is a Plan B case.
C. Additional Submissions
Complainant made the following further contentions in response to the Procedural Order.
1. The assignment of the EMPLOYEE -FAX trademark to the Complainant was on February 25, 2020.
2. To Complainant’s knowledge, the EMPLOYEE-FAX mark was used between its registration, January 2013, and when Complainant acquired the rights to the mark in February 2020.
3. The assignment (of the trademark) took place roughly three (3) months ago. Whenever there's an assignment of trademark rights it takes time to transition the business and the mark from the assignor to the assignee and Complainant is still in that transition period and intends to incorporate the EMPLOYEE-FAX mark into its business development, which is ongoing.
4. Complainant’s predecessor in interest was known by the identical trademark.
5. Complainant mistakenly mischaracterized the evidence in Annex F of the Complaint. There were no direct communications between Complainant and Respondent. As Complainant clearly stated in paragraph 5 (c) on Page 7, the communication took place between a middleman, the GoDaddy broker.
6. Complainant, through GoDaddy’s brokerage service, inquired about purchasing the Domain Name from Respondent and Respondent provided a price tag of a minimum of $20,000 that he would consider selling the Domain Name.
7. Respondent’s non-use and passive holding of the Domain Name clearly constitutes bad faith registration and use.
Respondent made the following further contentions in response to the Procedural Order.
1. Respondent intends to use the domain name for a digital platform offering fax services for enterprises with large numbers of employees.
2. The domain name was applicable for that venture.
3. Respondent bought the domain name on the open market without auction and without a premium.
4. The domain name has intrinsic descriptive and commercial value and consists of two ordinary English words.
5. Subsequent to the purchase of the domain name Respondent engaged business consultants to assist him with the development of the venture.
6. Go Daddy was not acting as Respondent’s broker and Respondent did not initiate any conversations with GoDaddy or the Complainant with regards to the selling of the domain.
1. Complainant is a United States resident of Yakima, WA, who is engaged on bringing services under the EMPLOYEE-FAX trademark to market including background investigations and drug, alcohol, and DNA screening for security and employment purposes. Respondent is a United States resident of Dearborn, Michigan, who is an entrepreneur who primarily registers Internet domain names for the development of web applications and services.
2. Complainant is the registered owner of the EMPLOYEE-FAX mark through its registration on the Supplemental Register with the United States Patent and Trademark Office (“USPTO”) ( Reg. No. 4,468,010, registered Jan. 14, 2014).
3. Complainant’s capacity as registered owner of the EMPLOYEE-FAX mark is by virtue of an assignment from AME Consulting And Marketing, LLC executed on February 25, 2020 and recorded at the USPTO on March 2, 2020.
4. The EMPLOYEE-FAX trademark being a Supplemental Registration in the United States, it is not sufficient in itself to establish that Complainant has rights to a mark for the purposes of paragraph 4(a) of the Policy.
5. Complainant has not shown any acquired distinctiveness or secondary meaning in the trademark to satisfy that requirement.
6. Complainant has not established a common law trademark in the EMPLOYEE-FAX mark.
7. Respondent registered the <employeefax.com> domain name on April 26, 2018.
8. Respondent intends to use the domain name as a digital platform to offer custom Fax, eFax, Printing, and other Stationary Services to Business Enterprises with large numbers of employees.
9. The domain name presently resolves to a parked page at <GoDaddy.com>.
10. The evidence establishes that Respondent has a right and legitimate interest in the disputed domain name.
11. The evidence establishes that Respondent did not register or use the disputed domain name 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.
If a complainant fails to prove one element, it will fail in the entire proceeding.
Pursuant to Rule 15 (a),the Panel shall decide this administrative proceeding on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint).
In that regard, it should be emphasized that the proceeding will be decided in the light of evidence rather than mere assertions and that the test of whether any issue has been proved is whether it has been proved on the balance of probabilities. Moreover, quotations from previous UDRP decisions, while informative, are not evidence.
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 EMPLOYEE-FAX mark through the registration of the mark with the USPTO (Reg. No. 4,468,010, registered Jan. 14, 2014). Complainant does have such a registration but the only evidence put before the Panel on its trademark is the trademark the Complainant submits is registered on the Supplemental Register of the USPTO and which was assigned to Complainant from its previous owner, AME Consulting And Marketing, LLC by an assignment executed on February 25, 2020 and recorded at the USPTO on March 2, 2020.
“That said, proceedings under the Policy are quite limited in their scope. Respondent is, technically correct in its assertion that registration on the Supplemental Register does not establish trademark rights, and indeed suggests that the terms so listed have not (yet) acquired distinctiveness. See, e.g., In re Chippendales USA, Inc., 622 F.3d 1346, 1353 n.9 (Fed. Cir. 2010). Thus, placement on the Supplemental Register tends to suggest that the claimed mark is, as of the time so listed, merely descriptive and lacks acquired distinctiveness or secondary meaning. See, e.g., Tarheel Take-Out LLC v. Versimedia, Inc., WIPO Case No. D2012-1668 ("It is well-settled that a Supplemental Registration in the U.S. is not sufficient in itself to establish that a Complainant has rights to a mark for the purposes of the Policy."); Advance News Service, Inc. v. Vertical Axis, Inc., WIPO Case No. D2008-1475 ("[T]he fact of a Supplemental Registration is no evidence whatsoever that the Complainant owns trademark rights in the phrase.").”
It should also be added that this must especially be so where the expression relied on, Employee-Fax, is so obviously descriptive.
For whatever reason, Complainant has not sought to establish that it has a common law trademark. It asserts it, but that is of course completely inadequate and of no effect, as it must be proved. How a common law trademark can be established has also long been well established. Moreover, the type of evidence submitted showing that the Complainant is recognized as the source of the goods and services in question is also well known. The usual evidence is the quantity of sales under the mark, advertising the mark, consumer, industry, media recognition, and public opinion surveys. But none of this has been produced. Moreover, this is not a case where the evidence is merely inadequate, as there is no evidence at all tendered on this important issue. Instead, Complainant merely asserts that it has a common law trademark, which is clearly not enough.
Complainant therefore has not established its standing to bring the Complaint.
Had Complainant established its trademark, the Panel would have found that the domain name was identical to the mark, but it is clearly of no effect in the absence of a trademark.
Complainant has thus failed to make out the first of the three elements that it must establish.
There is strictly no need for the Panel to proceed any further in this matter. However, as the parties have conducted the proceeding on the basis of a detailed argument on the two remaining substantive elements, the Panel will proceed to deal with those elements in the usual way. Thus, the result of the proceeding, even if trademark rights had been established, will be seen.
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 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”).
If the Respondent makes out one ground as to why it has a right or legitimate interest in the domain name, that will carry the day and Respondent will have established that he has a right or legitimate interest in the domain name.
The Panel would find that Complainant had made out a prima facie case that arises from the following considerations:
(a) Respondent has registered a domain name that includes in its entirety Complainant’s EMPLOYEE-FAX alleged trademark, the only difference being that the domain name omits the hyphen in the trademark. But that change from the trademark is so minor that it makes no difference in characterizing the domain name, which is still identical to the domain name;
(b) Respondent registered the <employeefax.com> domain name on April 26, 2018;
(c) The domain name presently resolves to a parked page at <GoDaddy.com>, and, at the present, the domain name is not being used for a regular website;
(d) Complainant has not consented to or approved of the use of his trademark in a domain name registered by Respondent;
(e) On the evidence, Respondent is not commonly known by the domain name. The WHOIS of record identifies the Respondent as “Ali Bazzi” and no information in the record indicates that Respondent was authorized to use Complainant’s mark or was commonly known by the disputed domain name.
All of these matters go to make out the prima facie case against Respondent.
As Respondent has filed a Response and has also provided further information pursuant to the Panel’s Procedural Order of May 6, 2020, it remains to be seen if Respondent has rebutted the prima facie case against it.
Respondent puts his right to register the domain name and his legitimate interest in it in several ways, although in the final analysis they amount largely to the same thing. Moreover, he has been consistent through his Response and then in his answers to the question posed to him by the Panel in the Procedural Order, which in effect was to ask him the straightforward question why he had bought the domain name.
His explanation, first, was that the domain name was descriptive and had commercial value and for that reason it was “appropriate” for the venture he had in mind. The venture he had in mind was to set up “a digital platform to offer custom Fax, eFax, Printing, and other Stationary Services to Business Enterprises with large numbers of employees.” Accordingly, to register a domain name consisting of the words “employee fax” was appropriate for that venture. He added that in proposing to undertake that venture he would be drawing on his experience as a part owner of a print shop in Dearborn, Michigan.
Secondly, Respondent argues that the words going to make up the domain name are “ employee” and “fax”, that they are generic or common words and that, in accordance with the well-known principle long recognised by UDRP panelists, they gave him the right to register and use a domain name consisting of those words, subject to some important limitations to prevent abuse and to prevent him attacking a trademark under the guise of simply using generic or common words.
Thirdly, he mounts a case that is really relying on the precise words of the Policy in paragraph 4(c)(i), namely that before any notice to him of the dispute, he had used or demonstrably prepared to use the domain name “ in connection with a bona fide offering of goods or services”. In other words, he maintains that that defence is available to him as he was intending to use and could show that he was intending to use the domain name to set up a business that would be “a digital platform to offer custom Fax, eFax, Printing, and other Stationary Services to Business Enterprises with large numbers of employees.”
Any of these defences are well established and are regularly applied by UDRP panelists, so there is no novelty or mystery about them. Any of them, if made out, would give Respondent a defence to the claim because they would give him a right and legitimate interest in the domain name and Complainant would therefore have failed to make out all three of the elements it had to prove. Likewise, they will all fail if it appears that the Respondent was not using the words in their generic sense and not making a bona fide offering of goods and services but that he was really trying to copy a trademark, wanted the domain name because of its value as a trademark, or was passing himself off as the trademark owner, targeting the trademark owner or engaging in any other untoward or discreditable conduct.
Accordingly, the real dispute in this case revolves essentially around whether Respondent is genuine in claiming that he was attracted to a generic name with descriptive and commercial value and was preparing to set up a bona fide business for which the domain name was an appropriate name or whether he knew about and was really targeting the trademark and its owner, was intending do damage them, compete with them or act towards them in some untoward manner for his own end by, for example, trying to sell the domain name to Complainant for an excessive sum.
For its part, Complainant has been clear and concise. He says in the Complaint with almost no qualification that Respondent had no right to register the domain name and no intention of using the domain name for a bona fide activity, that he had failed to use it for a legitimate purpose and was “attempting to profit from the Domain Name” by offering to sell it for $20,000. In his response to the Panel’s Procedural Order, Complainant reiterated its case, relying on its submission that Respondent had made no active use of the domain name, that it resolved to a blank parking page, and that Respondent had offered to sell it. In essence, Complainant’s case is that Respondent was targeting him.
The positions of the two parties are therefore diametrically opposed on all the facts and the Panel has the obligation to make a decision in favour of one position over the other. That is never an easy task for a UDRP panel, particularly as it has only the written statements of the parties before it and does not see the witnesses to make judgments about their credibility. Panels therefore have to rely on two aids to the analysis to assist them to come to a conclusion. The first is to determine where the onus is and in this case it is on the Complainant to show a prima facie case, on the Respondent to rebut the prima facie case, and finally for an assessment to be made of whether on the balance of probabilities the issue in contention has been proved or not. The second aid is for the panel to look for those aspects that tend to suggest that it is more likely than not that an event occurred or an intention was formed.
The Panel has found the second of these aids the more valuable because the two cases depend on the Respondent’s intention and that is difficult to assess. There are however, indications that favour one side or the other from which the Panel can draw, it believes, accurate conclusions about Respondent’s intentions.
There are several indications that lead the Panel to the conclusion that in all probability, Respondent had a right to register the domain name and that he has a legitimate interest in it. Thus, Complainant has not shown that Respondent has no such right or interest. Those matters that have influenced the Panel are as follows.
The purchase of the domain name by Respondent would appear in all respects to be normal and legitimate, with nothing suspicious about it. It is a fairly apparent from the evidence that Respondent buys and sells domain names, that on occasions he develops them for use or sale and that he bought the domain name in the regular course of his business. They are all legitimate activities provided he does not prey on trademarks and their owners, of which there is no evidence.
Secondly, there is no credible suggestion that Respondent had some inside or private knowledge that inspired him to buy this domain name as some sort of targeting of Complainant. So far as the known record goes, Complainant’s predecessor in title, AME Consulting And Marketing LLC, ( “AME”) had owned the EMPLOYEE-FAX trademark since early 2014, although the size and reach of any business it was in, and where it operated, are unknown. Complainant was given an opportunity under the Procedural Order to disclose what sort of business had been conducted under the trademark and the only information that was forthcoming was that the trademark “was used” which is singularly uninformative.
The situation is made the more unsatisfactory by the fact that the Panel has been given two versions of the contract under which Complainant bought the trademark from AME. The first version, annexed to the Complaint, and entitled a “Sale and Trademark Assignment Agreement” says that AME was in the business of “background investigation and research services and drug alcohol, and DNA screening for security and employment services, and related goods /services”. The contract sells AME’s trademarks and “the goodwill of the business” for $1500. From this, it can be assumed that the business was very small and that it is unlikely that Respondent would have known of its existence.
In its response to the Procedural Order, Complainant tendered in evidence what was supposed to be a dated version of the same assignment, but instead, is an entirely different document, changed from three pages to one, with a different heading, omitting the nature of AME’s business, and omitting the sale price.
When that is the totality of the evidence, there is clearly nothing to suggest that Respondent knew of the AME’s business or the trademark, thus emphasizing as far as the Panel can see, that Respondent’s purchase of the domain name was regular and legitimate and that there is nothing to suggest Respondent knew or should have known of the name “employee fax” when it bought the domain name.
Next, Respondent’s argument that he bought the domain name for his proposed platform for company services is at least plausible.
The fact that the domain name was for sale on the open market in an apparently regular way, supported as it is by sales records from GoDaddy that are in evidence, also removes the suspicion that sometimes surrounds similar cases as to the reason for buying a particular domain name.
Also in Respondent’s favour is the evidence that he did not know of Complainant or its trademark at the time he bought the domain name, to which there is no opposing evidence. In support of that conclusion, it is difficult to see how he could have known of Complainant or its trademark. The trademarks and the goodwill that went with them including the EMPLOYEE-FAX were sold for $1500 according to the first version of the sales contract, showing that AME’s business , as already noted, must have been of a modest size. There is therefore nothing to suggest that Respondent must or should have known of Complainant or its trademark.
Overall, the Panel is thus left with the situation that Respondent bought the domain name on the open market; it had obviously been dropped by the previous owner; it was available for anyone to buy; Respondent had a plausible reason for buying it; and there is no evidence that Respondent was acting improperly or suspiciously in buying it, that he knew of Complainant or its trademark or that he was laying the foundations for targeting it.
Respondent therefore had every right to acquire and use the domain name, provided it was not used for any improper purpose. The Panel finds in that regard that there is no evidence that Respondent has used the domain name in any improper way such as passing itself off as Complainant or targeting Complainant or its trademark.
Moreover, there is evidence that enables the Panel to find, as it does, that Respondent took some albeit tentative steps to use the domain name for his stated purpose and went as far as engaging at least one consultant. The Panel therefore finds that Respondent made some demonstrable preparations within the meaning of Policy ¶ 4(c)(i) to use the domain name for his stated purpose.
The cumulative effect of these considerations shows that Respondent has rebutted the prima facie case and has shown that it has a right or legitimate interest in the domain name.
Complainant has thus failed to make out the second of the three elements it is required to establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has 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.
Bearing that requirement in mind, Complainant has an initial problem is showing bad faith registration. Complainant must show that the Respondent was acting in bad faith on April 26, 2018 when he registered the domain name. There is no evidence that at that time Complainant’s predecessor in title was conducting a business using the EMPLOYEE-FAX trademark in such a way that Respondent knew or should have known or even could have known of it or its trademark. Respondent says he did not know. Complainant had ample scope to rebut that assertion, but no evidence was forthcoming to that effect.
Beyond that threshold problem, Complainant relies on several grounds to show bad faith. The first ground is that Respondent registered the Domain Name to gain commercially from the sale of the Domain Name and for the sole purpose of selling the Domain Name to a third party.
That ground is not made out on the evidence. There is simply no evidence as to the reasons why Respondent acquired the domain name other than his own evidence that he acquired it for a business project, some support for which is found in the fact that Respondent engaged some consultants for advice. That evidence was not challenged or argued against by Complainant. As to the second part of the ground, the Policy is quite clear that it is selling to the Complainant or a competitor that is proscribed and not merely selling to a third party. In any event, there is no evidence that Respondent sold or attempted to sell the domain name to anyone; it was Complainant and not Respondent that initiated some perfunctory negotiations and the furthest the Respondent went was to say that it would take $20,000 USD to get him interested in selling. This is neither an offer nor an acceptance and not even an invitation to treat.
The second and only other ground of alleged bad faith was to expand the so-called offer to sell the domain name. But the evidence is simply not there to support such a ground. In any event Complainant itself conceded that it, Complainant, “attempted to purchase the Domain Name from Respondent”, not that Respondent attempted to sell the domain name to Complainant. In the Complaint itself, Complainant alleged that the email correspondence it relied on between Complainant and Respondent proved the offer to sell. When questioned about this in the Procedural Order, Complainant acknowledged that there was no such correspondence and that it had “mistakenly mischaracterized the evidence.” There is therefore clearly no substance to any allegation that Respondent offered to sell the domain name to Complainant.
There is also no evidence that any other of the specified grounds of bad faith specified in Policy ¶ 4(b) has been made out.
Complainant has thus not made out the third of the three elements it is required to establish.
Reverse Domain Name Hijacking
Respondent has requested that the Panel make a finding against Complainant of Reverse Domain Name Hijacking (RDNH). The Complainant has been unable to make out its case because the facts are either simply not there to support it or they have not been presented to the Panel. That, however, is not a basis for making a finding of RDNH. Complainant may not have been motivated by bad faith in bringing the Complaint and in all the circumstances, the Panel exercises its discretion not to make the finding of RDNH.
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 <employeefax.com> domain name REMAIN WITH Respondent.
The Honourable Neil Anthony Brown QC
Dated: May 19, 2020
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