National Arbitration Forum

 

DECISION

 

Media Rain LLC. d/b/a Rain v. Verio Inc.

Claim Number: FA0908001279419

 

PARTIES

Complainant is Media Rain LLC. d/b/a Rain (“Complainant”), represented by Daniel Hatch, Utah, USA.  Respondent is Verio Inc. (“Respondent”), represented by Craig W. Clark, of White & Case LLP, California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <rain.com>, registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide.

 

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

 

Debrett Lyons (chair), Richard Hill and David Safran as Panelists.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 13, 2009; the National Arbitration Forum received a hard copy of the Complaint on August 13, 2009.

 

The Complaint as initially submitted named Verio Operating, Inc. as the respondent.  The National Arbitration Forum wrote to Complainant asking it to amend the Complaint to name the respondent as Verio Inc. in conformity with WHOIS information.

 

On August 13, 2009, Melbourne IT, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <rain.com> domain name is registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide and that the Respondent is the current registrant of the name.  Melbourne IT, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne IT, Ltd. d/b/a Internet Names Worldwide registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On August 18, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 8, 2009 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@rain.com by e-mail.

 

A timely Response was received and determined to be complete on September 8, 2009.

 

On September 16 2009, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Debrett Lyons, Richard Hill and David Safran as Panelists.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant asserts rights in the trademark RAIN and alleges that the disputed domain name is legally identical to its trademark.

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.

 

Complainant alleges that Respondent registered and used the disputed domain name in bad faith.

 

B. Respondent

Respondent broadly denies those allegations and, in particular, submits that the disputed domain name was registered long before the incorporation of Complainant or the existence of its claimed trademark rights.

 

FINDINGS

1.      The disputed domain name was registered on December 12, 1990.

2.      Complainant was incorporated in April 2008.

3.      Complainant first used the trademark in June 2008.

4.      Complainant sent Respondent a letter dated July 29, 2008 offering to purchase the disputed domain name.

5.      Respondent advised Complainant that the domain name was not for sale.

6.      Complainant subsequently commenced these Administrative Proceedings.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)   the 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

 

No finding required.[1]

 

Rights or Legitimate Interests

 

No finding required.[2]

 

Registration and Use in Bad Faith

 

In relation to Complainant’s claimed trademark rights under Policy ¶ 4(a)(i), Respondent submitted that the disputed domain name was registered almost 19 years prior to the establishment of Complainant’s business or its alleged trademark rights.

 

The consensus opinion of former panels applying the Policy is that registration of a domain name prior to the existence of a complainant’s trademark rights is a factor to be properly considered in relation to the determination of bad faith under Policy ¶ 4(a)(iii).[3]  This Panel endorses that interpretation of the Policy.

 

Complainant cannot succeed unless the disputed domain name was both registered and used in bad faith, as provided in Policy ¶ 4(a)(iii).  Panels have generally found that the registration of a domain name prior to the establishment of trademark rights will negate a claim of bad faith registration.  Exceptions to that general position have been made in very limited circumstances, namely, where a respondent had knowledge of a complainant’s impending trademark rights;[4] where a respondent sought to take advantage of a complainant by acquiring a pre-existing and conflicting domain name;[5] and under a narrow interpretation of Policy ¶ 4(b)(iv).[6]

 

Those exceptions are themselves evidence of the proposition that, for a domain name to have been registered in bad faith, the respondent must have had the complainant in mind at time of registration (or acquisition) of the domain name.[7]

                                   

In this case, Complainant asserts bad faith registration and use but provides no evidence of such, nor any evidence from which bad faith might be reasonably inferred.  The Panel can give no weight to bald assertions of bad faith.[8]

 

Complainant states that:

 

“Respondent has no business activity under the domain name <rain.com>.   The Respondent has been ‘cybersquatting’ on the domain name since 1999.  This demonstrates the passive holding of the domain name by the Respondent.”

 

The Panel notes here that passive holding of a domain name, without more, does not establish bad faith under Policy ¶ 4(a)(iii).  Moreover, the evidence before the Panel shows use of the domain name since 1997 in connection with webhosting services.  The Panel approves what was said in the case of e-Duction, Inc. v. Zuccarini  WIPO Case No. D2000-1369:

 

“In the ordinary case, a business adopting a new mark in today’s world must take the Internet as it finds it. If someone else has already registered a domain name identical or confusingly similar to the proposed new mark, that domain name will be unavailable to the business unless it negotiates a transfer. This is true even if the registrant is in other respects behaving badly, as Respondent is in this case.

 

On this record, the Panel finds that Respondent was not aware of Complainant’s not-yet extant mark at the time he registered the domain name. Accordingly, Respondent’s registration of the domain name can not have been in bad faith.”

 

This Panel finds that when Respondent registered the domain name, Complainant had no trade mark rights.  The Panel finds that Complainant was not in existence at that time.  There is no evidence to show earlier use of the trademark by a predecessor-in-interest to Complainant.  In short, there is no suggestion in the evidence before the Panel that Complainant or its trademark could have been within Respondent’s contemplation at the time the disputed domain name was registered.

 

Accordingly, Panel finds that registration of the domain name was not in bad faith within the meaning of the Policy even if subsequent use of the domain name could be said to have been in bad faith, a matter on which Panel is not required to make a finding.

 

The Panel finds that Complainant has failed to establish what is required of it under Policy ¶ 4(a)(iii).

 

 

DECISION

Having failed to establish at least one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Reverse domain name hijacking

 

Respondent asks the Panel to find Reverse Domain Name Hijacking.  The Rules define Reverse Domain Name Hijacking:

 

Reverse Domain Name Hijacking means using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.

 

The Rules required Complainant to certify (and Complainant did so certify) that:

 

“the information contained in the Complaint is to the Complainant’s best knowledge complete and accurate, that this Complaint is not being brought for any improper purpose, such as to harass [Respondent]…”

 

In Smart Design LLC v. Hughes, D2000-0993 (WIPO, October 18, 2000) the panel stated that:

 

“Clearly, the launching of an unjustifiable Complaint with malice aforethought qualifies, as would the pursuit of a Complaint after the Complainant knew it to be insupportable.”

 

There is nothing in the evidence to indicate anything as high as malice on the part of the Complainant.  Respondent must therefore show that Complainant brought these Administrative Proceedings in the knowledge that Respondent has an unassailable right or legitimate interest in the disputed domain name, or that Respondent lacks the requisite bad faith registration and use of the disputed domain name.[9]  Further, Respondent must show evidence of harassment or similar conduct by Complainant in the face of that knowledge.[10]

 

The facts known to Complainant at the time it make its Rule 3(b)(xiv) certification were that the domain name was registered in 1990 and that Complainant had no rights in a corresponding trademark until at least 2008.  There is not the slightest suggestion that Respondent might have known of Complainant’s intended use of the trademark, nor on the evidence could such an inference be possibly drawn.

 

In the case of Versa Capital Mgt., LLC v. Affordable Webhosting, Inc., FA 1250988 (National Arbitration Forum April 8, 2009) the panel noted that:

 

“The Complainant knew, when it filed the Complaint, that the registration of the disputed domain name preceded by several years any rights that the Complainant may have acquired in the string VERSA CAPITAL.  This is sufficient to find reverse domain name hijacking.”

 

Complainant knew that Respondent had acquired a business who had used a trademark corresponding with the domain name from a time many years prior to incorporation of Complainant.  Indeed, the acquisition predated Complainant’s legal incorporation by many years.

 

Complainant has stated that it sent several messages to the Respondent, offering to acquire the disputed domain name.  Complainant characterizes one of those communications as a cease and desist letter, but that claim does not stand scrutiny. Respondent replied stating that the disputed domain name was not for sale.

 

At this point, instead of abandoning the matter, the Complainant initiated the present proceedings.  Moreover, in spite of the pre-Complaint letters directed to Respondent, and clear WHOIS data showing Respondent as the domain name registrant, Complainant launched these Administrative Proceedings against Verio Operating, Inc., a company shown by the evidence to have been wound up.  Respondent postulated in relation to that action:

 

“It can only be assumed that Complainant intentionally undertook to conceal the name of the true domain name owner by naming Verio Operating, Inc. in hopes that its Complaint would slip through the Forum unopposed.”

 

This Panel struggles to find a more benign construction to Complainant’s actions to that suggested by Respondent.

 

The Panel is of the view that Complainant has pursued the Complaint after it knew (or should have known) that it must fail, and that its conduct amounted to harassment of Respondent.[11]

 

The Panel finds that Complainant has engaged in Reverse Domain Name Hijacking.

 

 

 

Debrett Lyons

Richard Hill

 David Safran

 Panelists

Dated: September 29, 2009

 

 

 

 

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