DECISION

 

MyHikes, LLC v. Michael Jones

Claim Number: FA2505002156965

 

PARTIES

Complainant is MyHikes, LLC ("Complainant"), represented by Kathleen Kuznicki of The Lynch Law Group, LLC, Pennsylvania, USA. Respondent is Michael Jones ("Respondent"), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <myhikes.com>, registered with Porkbun LLC.

 

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Luz Helena Villamil-Jiménez as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on May 22, 2025; Forum received payment on May 22, 2025.

 

On May 22, 2025, Porkbun LLC confirmed by e-mail to Forum that the <myhikes.com> domain name is registered with Porkbun LLC and that Respondent is the current registrant of the name. Porkbun LLC has verified that Respondent is bound by the Porkbun 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 May 23, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 12, 2025 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@myhikes.com. Also on May 23, 2025, 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 11, 2025.

 

On June 12, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Luz Helena Villamil- Jimenez as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: REQUEST FOR REDACTION OF RESPONDENT'S PERSONAL INFORMATION

The Respondent requests that Respondent's personal information be redacted from the published decision, in order to prevent unwarranted exposure and potential abuse.

 

In this respect, it is imperative to take into consideration that according to Policy ¶ 4(j), all UDRP decisions "will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision". A request for redaction must be fully justified and supported by evidence of the necessity to omit the Respondent's personal information from the decision in order to protect a respondent who has suffered a concrete threat, such as an identity theft, from being associated with acts that actual registrants appeared to have sought to impute to the Respondent. In the present case, although the Respondent contends that the Complainant made false claims in the Complaint as well as several incorrect assumptions, ignored WHOIS data, and misrepresented the situation to try to seize the domain in as much as Complainant contacted Respondent multiple times attempting to buy the domain, these activities do not suggest a need to protect Respondent's identity. Furthermore, the Complainant is already aware of Respondent's identity, as it is a requirement to properly identify the Respondent and its contact information in the Complaint.

 

In light of the above, the Panel refuses to redact listed respondent's name from the decision.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant states that it is the holder of Registrations for the trademark/service mark MYHIKES registered in Classes 9, 41 and 42, and that Respondent has a registered a domain name, <myhikes.com>, using the exact same literal element as the registered trademark owned by MyHikes, LLC in the United States. MyHikes has been using the mark and the literal element MYHIKES since 1-13-2015, and is a well-established brand known for their community platform that makes public trails easier to find for everyone. Complainant adds that what started out as a site built for friends to journal and save basic information regarding local trails in Pennsylvania, has now expanded to GPS tracking devices, and online mapping tools, and the website <myhikes.org> and application (MyHikes) now incorporates trails from various states within the US partnering with various organizations such as Columbus Metro Parks, Kestrel Land Trust, and Austin Dam Memorial Park.

 

According to the Complainant, MyHikes has not licensed or in any way given the Respondent permission to use any form of or any design element that includes the words MYHIKES. Thus, the only conclusion is that the Respondent is clearly hoping to sell the domain name to the Petitioner for an inflated price.

 

In addition, the Complainant asserts that <myhikes.com> as a registered domain name is currently used in bad faith as it has been "parking" or an error 404 page since 2017, two years after the Petitioner began using the MYHIKES trademark. In approximately 2017/18 the page stated something like MyHikes Hiking Blog, but to Complainant's knowledge no other content was ever provided. Afterwards it became a Google account login page, and in about 2021 it began returning a 404 error page. Efforts to reach out to the Respondent, or at least the current owner of <myhikes.com> through their registrar Porkbun over the past several years have gone unanswered.

 

B. Respondent

Respondent states that he acquired the domain <myhikes.com> on August 8, 2005, and has maintained uninterrupted ownership since that time. WHOIS records confirm this registration date and continuity. The Complainant's claimed trademark rights began in 2015, a full decade later.

 

Respondent claims that the phrase "my hikes" is descriptive, combining a possessive pronoun with a generic term. Complainant's trademark for MYHIKES was registered in 2025, long after Respondent began using the domain. Even if rights were established, the mark lacks distinctiveness. 

Respondent has Rights or Legitimate Interests. Respondent used the domain from 2005–2021 for personal, non-commercial purposes, including a hiking blog and photos. Respondent's records showing that as early as August 14, 2005, the website at <myhikes.com> hosted hiking images and a calendar to coordinate hiking trips. Logos were created on or before February 2011 and used consistently. Although the site is currently offline due to hosting configuration, it remains active and is expected to return. The domain was never monetized or offered for sale. It reflects Respondent's personal interest in hiking.

 

Respondent contends that there is no bad faith registration or use of the domain. It was registered ten years before Complainant's trademark rights. There is no evidence that Respondent registered it to confuse or exploit. Complaint falsely claims: "The only conclusion is that the Respondent is clearly hoping to sell the domain name to the Petitioner for an inflated price."         This is untrue, the Respondent contends. Respondent never offered the domain for sale. It currently redirects to a Google login page, not a parked or commercial page.

 

Respondent also informs that Archive.org timeline supports legitimate use, and mentions several dates and activities related with the domain name <myhikes.com> as of 2010.

 

Lastly, Respondent requests that the remedy requested by the Complainant be denied, and instead, a finding of Reverse Domain Name Hijacking (RDNH) pursuant to UDRP Rule 15(e) be issued.

 

FINDINGS

The present case contains abundant material that merits being carefully reviewed in order to reach a decision. Let's see:

 

-       Complainant submitted evidence to demonstrate ownership of the trademark and service mark MYHIKES, registered in Classes 9, 41 and 42 on May 13, 2025. As mentioned on the certificate of registration, the earliest use thereof was January 13, 2015.

 

-       Complainant also submitted evidence demonstrating use of MYHIKES through the website <myhikes.org>.

 

-       In turn, Respondent demonstrated with a copy of the WHOIS Record, that the registration of <myhikes.com> was made on August 8, 2005, and is valid until August 8, 2025.  

 

-       The case also contains copies of the messages sent to the Respondent by David Miller, Founder/owner of MyHikes, LLC. -the Complainant- offering to purchase the domain <myhikes.com>.

 

-       In addition, Respondent submitted printed material obtained from Archive.org to show Respondent's <myhikes.com> continuous activity as of August 2010 to October 2020, and printed material obtained from Archive.org to demonstrate first use of Complainant's <myhikes.org> (May 27, 2017) and Complainant's "About Us" history (2020).

 

-       Lastly, the document submitted by Respondent comparing Respondent's original logo used on its <myhikes.com> website with Complainant's logo used on the <myhikes.org> website merits being noted, since it shows undeniable revealing similarities.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint 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."

 

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.

 

Identical and/or Confusingly Similar

Complainant has demonstrated that it is the owner of Registration No. 7,792,142 dated May 13, 2025, for the trademark/service mark MYHIKES in Classes 9, 41 and 42.

 

Respondent argues that Complainant's trademark MYHIKES is descriptive and not inherently distinctive, and therefore the domain name <myhikes.com> cannot be found to be identical or confusingly similar to Complainant's mark. The Panel considers that such a determination is not relevant under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant's mark.

 

In light the foregoing, the Panel considers that the requirement of the Policy ¶ 4(a)(i) is satisfied.

 

Rights or Legitimate Interests

According to the Uniform Domain Name Dispute Resolution Policy, a Respondent can demonstrate rights to and legitimate interests in the domain name by proving that he used the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services before receiving notice of the dispute.

 

In the present case the documentation provided by the Respondent demonstrates that the domain name <myhikes.com> was registered on August 8, 2005, i.e., more than ten years prior to Complainant's first use of the trademark MYHIKES.

 

Respondent also demonstrated with documents that he used the domain from 2005–2021 for personal, non-commercial purposes, including a hiking blog and photos. Respondent submitted records showing that as early as August 14, 2005, the website <myhikes.com> hosted hiking images and a calendar to coordinate hiking trips.

 

It therefore is clear to the Panel that the Respondent does have rights and legitimate interests in the domain name, and therefore the requirement of the Policy ¶ 4(a)(ii) is not satisfied.

 

Registration and Use in Bad Faith

Once again, it has been argued and demonstrated beyond doubt in this case that the Respondent registered the domain name <myhikes.com> more than ten years before the Complainant first used the MYHIKES trademark, and almost 20 years before the trademark was registered. In light of this, while it is true that the Complainant has rights over a trademark that is totally contained in the domain name under dispute, the Panel determines that trademark rights are not enforceable against the Respondent in this particular case, as it is demonstrated that the trademark was first used many years after the domain under dispute was registered.

 

In light of the foregoing considerations, the Panel finds that the requirement of the Policy ¶ 4(a)(iii) is not met.

 

REVERSE DOMAIN NAME HIJACKING

The Panel finds that the Complaint was filed in bad faith after Complainant's failure to obtain the domain name in negotiations with Respondent. The Panel therefore finds that Complainant has engaged in reverse domain name hijacking. See Electrosoft Services, Inc. v. TechOps / SyncPoint, FA 1969515 (Forum Dec. 9, 2021) ("This is a classic "Plan B" case where complainants that are unable to purchase a domain name through negotiation file UDRP actions in a last-ditch effort to try and acquire the domain name…").

 

Moreover, the Panel finds that Complainant should have known that it could not establish any or all of the elements of Policy ¶ 4(a). Therefore, the Panel confirms and determines that Complainant has engaged in reverse domain name hijacking. See Clean Slate Credit Solutions v. Jake Rustenhoven, FA 1924095 (Forum Jan. 8, 2021) ("Counsel should have known that she could not prove either the 4(a)(ii) or (iii) elements of Complainant's case, yet proceeded to institute this dispute nonetheless. Accordingly, the Panel finds that Complainant attempted reverse domain hijacking by instituting this dispute.")

 

DECISION

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 <myhikes.com> domain name REMAIN WITH Respondent.

 

 

 

Luz Helena Villamil-Jimenez, Panelist

Dated: June 25, 2025