Saratoga Publishing LLC v. Rich Richbart / Saratoga Online Inc
Claim Number: FA1503001608704
Complainant is Saratoga Publishing LLC (“Complainant”), represented by Robert A. Lippman of Lemery Greisler LLC, New York, USA. Respondent is Rich Richbart / Saratoga Online Inc (“Respondent”), represented by LeCours, Chertok & Yates, LLP, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <saratogatoday.com>, registered with Tucows Domains Inc.
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 March 9, 2015; the Forum received payment on March 9, 2015.
On March 10, 2015, Tucows Domains Inc. confirmed by e-mail to the Forum that the <saratogatoday.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 March 11, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 31, 2015 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 firstname.lastname@example.org. Also on March 11, 2015, 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 March 30, 2015.
On April 8, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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.
Complainant made the following contentions.
1. Complainant owns the SARATOGA TODAY mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,406,411, first used in commerce April 30, 2006, filed Feb. 7, 2013, registered Sept. 23, 2013).
2. Complainant uses the SARATOGA TODAY mark in connection with the publication and sale of its newspaper, blogs, message boards, editorials and advertising.
3. Complainant also relies on a further trademark for SARATOGA TODAY for which it applied on December 10, 2014 to have registered with the USPTO, namely USPTO Serial Number 8, 647, 6610, for which it claims a first use in commerce of April 30, 2006.
4. The <saratogatoday.com> domain name is identical to Complainant’s SARATOGA TODAY mark. The <saratogatoday.com> domain name merely adds a generic top-level domain (“gTLD”) “.com” to the disputed domain name.
5. Respondent has no rights or legitimate interests in the disputed domain name. Although the WHOIS record for the disputed domain name lists “Rich Richbart / Saratoga Online Inc “ as the registrant of record, nothing in the record demonstrates that Respondent is commonly known by <saratogatoday.com>. Complainant has not authorized Respondent’s use of the SARATOGA TODAY mark.
6. Further, Respondent lacks rights or legitimate interests in the <saratogatoday.com> domain name, as evidenced by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Respondent has failed to make an active use of the disputed domain name. Additionally, Respondent has offered to sell the disputed domain name to Complainant, which is further evidence that Respondent lacks rights and legitimate interests in respect of the disputed domain name.
7. Respondent has engaged in bad faith registration and use of the <saratogatoday.com> domain name. Respondent has offered to sell the disputed domain name to Complainant in excess of out-of-pocket costs, which constitutes bad faith. Further, Respondent is inactively holding the disputed domain name, which is additional evidence of bad faith under Policy ¶ 4(a)(iii).
Respondent made the following contentions.
1. Respondent registered the <saratogatoday.com> domain name on July 17, 2001. Respondent concedes that the disputed domain name appears identical or confusingly similar to Complainant’s SARATOGA TODAY mark.
2. However, Respondent chose the disputed domain name as it comprises the common term Saratoga (the location of Respondent) and Today (common term), which is not a violation of Policy ¶ 4(a)(i).
3. Respondent had previously utilized the disputed domain name in the development of a community portal website in several unrealized projects. Respondent is a web designer and Internet Service Provider in Saratoga Springs, NY and has legitimate interests in respect of the disputed domain name for past or future projects, commercial or noncommercial. Further, Respondent manages or has designed a number of other websites for municipalities and associations, which establishes that Respondent has legitimate interests in the disputed domain name.
4. Respondent registered the disputed domain name five years prior to the existence of Complainant, and Respondent could not have registered the disputed domain name in bad faith. Respondent has never targeted Complainant or any other party as a potential purchaser of the disputed domain name, nor did Respondent have any previous intent to sell the disputed domain name prior to Complainant’s correspondence. The domain name has been in possession of the Respondent for 14 years.
On April 16, 2015, in response to an Order of the Panel, Complainant filed a supplementary submission which the Panel has taken into account in reaching its decision.
On April 16, 2015, in response to the same Order of the Panel, Respondent filed a supplementary submission which the Panel has taken into account in reaching its decision.
2. Complainant owns the SARATOGA TODAY trademark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,406,411, first used in commerce April 30, 2006, filed Feb. 7, 2013, registered Sept. 23, 2013).
3. Respondent registered the <saratogatoday.com> domain name on July 17, 2001.
4. It is currently not used in connection with an active website.
5. Complainant was incorporated on or about December 1, 2005.
6. Complainant published the first issue of its newspaper SARATOGA TODAY on April 5, 2006.
7. Respondent has renewed the registration of its domain name. <saratogatoday.com> on 13 occasions since 2001, the most recent being on or about July 17, 2014.
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.
As has already been indicated, the Panel is bound to apply the terms of the UDRP Policy which operates as a statement of the matters that a complainant must prove by evidence. In the present case, Complainant has been able to show that it has a trademark, that the domain name in issue is identical to the trademark and that Respondent has no rights or legitimate interests in the disputed domain name. However, Complainant has not been able to show that Respondent registered the domain name in bad faith, as the domain name was registered before Complainant was incorporated and before Complainant’s trademark was registered or filed. The reasons for the Panel’s decision are now set out in detail.
The first question that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant submits that it owns the SARATOGA TODAY mark through its registration with the USPTO (Reg. No. 4,406,411, first used in commerce April 30, 2006, filed Feb. 7, 2013, registered Sept. 24, 2013). Complainant states that it uses the SARATOGA TODAY mark in connection with the publication and sale of its newspaper, blogs, message boards, editorials and advertising. Prior panels have concluded that the relevant date for determining rights in a registered mark is the date of filing. See Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”). The Panel therefore determines that Complainant has established rights in the registered SARATOGA TODAY mark under Policy ¶ 4(a)(i), dating back to February 7, 2013.
The Panel notes that Respondent registered the <saratogatoday.com> domain name on July 17, 2001, which predates the registration and filing dates of Complainant’s SARATOGA TODAY trademark. Nevertheless, Complainant shows that it currently has a trademark, which is all that it has to show. The consequences of the fact that the disputed domain name was registered before the trademark was issued or filed arise for decision later, in the context of the rights and legitimate interests that Respondent may have in the domain name and the issue of bad faith.
When a disputed domain name predates a registration and filing date of a trademark, a complainant may establish common law rights through evidence of prior use. That means a complainant may be able to show on the evidence in the particular case that the domain name was in fact issued after the common law rights arose. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).In the present case Complainant almost certainly has common law trademark rights by now, in view of the fact that it has published its SARATOGA TODAY newspaper since April 5, 2006, that it owns the domain names <saratogatodayonline.com>, <saratogatodaynewspaper.com>, and the “Saratoga Today” Facebook Page and that it has filed a further trademark registration for SARATOGA TODAY with the USPTO (Serial Number 86,476,610, filed Dec. 10, 2014. Moreover, as its newspaper is published in its local community and as the community can be assumed to know that the company publishes it, the Panel concludes on the balance of probabilities that Complainant has come to be identified as the source of the newspaper under the name Saratoga Today. Accordingly, having regard to all of the evidence and the history of this matter, the Panel finds that Complainant has established common law rights in SARATOGA TODAY. Those rights, however, can date back only to April 30, 2006, the date of Complainant’s declared first use of the trademark or, conceivably, April 5, 2006, the date of the first issue of its newspaper. That date is of course several years after Respondent registered the <saratogatoday.com> domain name.
The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s SARATOGA TODAY mark. Complainant contends that the <saratogatoday.com> domain name is identical to Complainant’s SARATOGA TODAY mark. The <saratogatoday.com> domain name merely adds a gTLD “.com” to the disputed domain name and removes the space in the mark. Previous panels have found that the addition of a gTLD and removal of a space between words is irrelevant to the Policy ¶ 4(a)(i) analysis. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”). Therefore, the Panel finds that the <saratogatoday.com> domain name is identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
While Respondent contends that the <saratogatoday.com> domain name is comprised of common terms and as such cannot be found to be identical to Complainant’s mark, the Panel finds that such a determination is not necessary 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. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶ 4(a)(ii) and 4(a)(iii)).
As the Panel has found that Complainant has a registered trademark and that the domain name is identical to the trademark, Complainant has thus made out the first of the three elements that it must establish.
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) At the present, Complainant has a registered trademark, SARATOGA TODAY and Respondent has a domain name that is identical to it; although Respondent first registered its domain name well before Complainant registered its trademark, Respondent has renewed the registration of the domain name on one occasion since the trademark was registered;
(b) The disputed domain name does not resolve to an active website;
(c) It appears that Respondent is not commonly known by the domain name. Although the WHOIS record for the disputed domain name lists “Rich Richbart / Saratoga Online Inc” as the registrant of record, nothing further in the record demonstrates that Respondent is commonly known by <saratogatoday.com>. Additionally, Complainant has not authorized Respondent’s use of the SARATOGA TODAY mark in the domain name.
These matters go to make out the prima facie case against Respondent. It then remains to consider Respondent’s reply to the prima facie case and whether it establishes that Respondent has a right or legitimate interest in the disputed domain name.
Respondent’s case in reply is essentially that it registered the domain name on July 17, 2001 with the intention of using it for a community portal website that it intended to establish, drawing on his skills and experience as a web designer and Internet Service Provider in Saratoga Springs. It is said that work was started on this project but that, for various reasons, it has not been completed. On the basis of this plan, Respondent submits that it has a legitimate interest in respect of the disputed domain name because it remains registered “for past or future projects, commercial or noncommercial” and because it, Respondent, “manages or has designed, or previously managed for current and past clients a number of other websites for local municipalities and associations including saratogadowntown.com and saratoga.org…”.
The case put by Respondent raises the application of Policy ¶ 4(c)(i) which provides that a respondent will have established a right or legitimate interest in the domain name if it can prove “…before any notice…of the dispute, (its)… use of or demonstrable preparations to use the domain name…in connection with a bona fide offering of goods or services…”. If a respondent can prove that it was using the domain name for such a bona fide purpose or if it can demonstrate that it was preparing to do so and that those matters occurred before it received notice of the dispute, then it will have shown that it has a right or legitimate interest in the domain name.
As Respondent cannot prove and does not assert that it currently uses the domain name for its alleged community portal website, it has to prove that it has at least made demonstrable preparations to use it for that purpose.
On the evidence shown by Respondent in the present case it seems to have been remarkably casual in its preparations and to have produced little of a tangible nature in the 13 years since it registered the domain name.
The Panel was not satisfied that the evidence filed with the Response enabled it to decide one way or the other whether the requirements of Policy ¶ 4(c)(i) had been met by what were claimed by Respondent to be its steps towards establishing the community portal website. Establishing a website need not take a long period of time and certainly not 13 years. Accordingly, the Panel issued an Order on April 13, 2015 inviting Respondent to file some further specific submissions and evidence to clarify its position on this issue. That Order was issued pursuant to the power given to the Panel under Rule 12. At the same time, the Panel invited Complainant to provide additional evidence as to the date when it was incorporated, a factor that will become relevant, particularly on the issue of bad faith. The Panel was influenced in issuing this Order by its desire to make sure that each party was given a fair opportunity to present its case: see Rule 10(b). Both sides responded to the Order.
In response to the order, Respondent filed its further submission with an attached document. In its submission, Respondent submitted the following:
“1. As to the allegations contained in paragraph 3 (b) of the Response, provide:
(a) a statement showing how the disputed domain name had “previously been utilized in development of a community portal website and in several unrealized projects”, describing the community portal website and each of the several unrealized projects referred to;
The domain name had be (sic) originally been utilized for development of a CD to be distributed to respondents dial-up clients in the development of an installation, set up and portal page product. This CD was similar in nature to such products found at the time by America Online (AOL), Earthlink, NetZero, and other dial-up providers.
Respondent’s Dial Up internet services were provided under the service name Saratoga Online through 2007. A commercial product named ‘Gearbox’ provided by a third party vendor was used in that development at a cost of $10,000. This project was not completed due to the bankruptcy of the third party vendor and the down turn in Respondent’s dial-up customer base
In 2002 Respondent acquired several other community based domain names including Saratoga-Golf.com, SaratogaVacations.com to begin the process of building a Saratoga Springs portal. During that time Respondent also contracted with the Saratoga Springs Chamber of Commerce for development of Saratoga.org and agreed to not create a competing portal during the time of that contract.
The domain has been used in several internal development projects that were never made available as finished products to the public as staff turnover and contracts with the local chamber of commerce precluded us from publishing a competing website. All versions have been a simple portal community website of business listings and local event calendar.
This open project has been resurrected by our developers from time to time without a final product being realized. The 2010 development document fully outlines the website vision at that time.”
Complainant, in response to the Order, also made a supplementary submission. In that submission it argued persuasively that “...Respondent has failed to adequately respond...” to the Order “...in that the Respondent’s Additional Statement makes reference to a “dial-up CD, similar to American Online, Eathlink and Netzero, but not to the use of a specific domain as part of that abandoned business.”
The Panel agrees with that submission. Respondent introduced its statement by asserting that “the domain name had be (sic) utilized for development” of the CD. The Panel assumes that by this statement Respondent meant that the disputed domain name had been utilized for development. However, if that is what Respondent meant, it could have said so clearly and it could also have given some facts showing that it had utilized the domain name for development. It did neither. The absence of any such detail casts doubt in the mind of the Panel whether the domain name had in fact been utilized for development. The onus is on Respondent to establish on the balance of probabilities that it had in fact utilized the domain name for development and the Panel finds that Respondent has not established that issue.
Respondent then asserts that it had utilized the domain name for development by the CD referred to. Respondent has not explained what connection the CD has with the development of the domain name which, it must have been clear to Respondent and any reader of the Order, was what the Panel wanted to have explained and proved. Again, it must be said that the onus is on Respondent to establish that it developed the domain name, at least to the extent that it could point to some overt acts that could be fairly described as demonstrable preparations to use the domain name for a bona fide offering of goods or services. The Panel has considerable doubt as to whether the work on the CD shows that Respondent was preparing to use the domain name for a bona fide offering of goods or services or, for that matter, anything at all. That doubt is such that the Panel finds that this part of Respondent’s submission might show that it was in fact working on the CD, but it does not show anything at all by way of preparation to use the domain name in question, i.e. <saratogatoday.com>, for a bona fide offering of goods or services or how that was done.
Complainant also criticized Respondent’s submission on the ground that “...the brand under which Respondent intended to offer the services it described ...as “ Saratoga Online “, rather the disputed domain SARATOGA TODAY...”. The Panel agrees with that submission because it is based on the words actually used by Respondent, i.e. “ Saratoga Online”. Again, additional information could have been provided to show what Respondent did to develop the use of the domain name and why it was proposed to use the name Saratoga Online rather than Saratoga Today. Respondent was clearly being asked for the evidence it had that the domain name <saratogatoday.com> was being “utilized for a community web portal and in several unrealised projects.” Respondent seems to be saying that it was engaged on some sort of service not under the name <saratogatoday.com> but under the name Saratoga Online which is irrelevant to the subject at hand and raises doubt whether Respondent was utilizing the dispute domain name for the community web portal that it claimed it was developing.
Moreover, the fact that this work, whatever it was, was done in the year 2007, although not conclusive, must cast doubt on whether, until then, Respondent did anything at all to develop the domain name at issue.
Again, in its answer, Respondent says that in 2002 it was engaged on a process of building a “Saratoga Springs portal”, invoking yet another name without any explanation as to how that can be said to be part of the development of the disputed domain name which is of course based on Saratoga Today.
Finally, Respondent asserts that the “open project” has been resurrected but “without a final product being realized.” Again, although not conclusive, this tends to suggest that little, if anything, by way of preparation to use the domain name had been done and in particular, in the opinion of the Panel, that little if anything that could fairly be described as demonstrable preparations to use the domain name itself.
The Panel is also troubled by Respondent’s reply to the second question it was asked. This was as follows:
“(b) the dates on or between which the community portal website was developed and the several unrealized projects were worked on by the Respondent;
Approximate dates of the Dial Up CD development were 2001-2003
Approximate dates of development the community Portal Website were 2002-2003, 2006-2007 and 2009-2013. The project remains an open project as of 2015.”
Again, this was an opportunity for Respondent to show what it had done to prepare to use the domain name for the purpose claimed, but again Respondent has done nothing but say that it had been engaged on the “development (of) the community Portal Website.”.
In the third question, Respondent was asked for: “(c) copies of any documents in the possession of Respondent verifying the development”. It replied as follows:
“Internal development documents from the 2010 development are available and have been attached as prepared by Respondent’s former employee dated October 2010 outlining the use and purpose of the portal as she redesigned it. If the Panel would like additional documents from the earlier development projects the Respondent would need to request additional time to research our archives for their availability.”
Only one document was attached to the submission, namely the 2010 development document, so the Panel has no idea what the other documents are. To say that there are other documents “available” but not provide them or even give any indication of what or where they are, is unhelpful and evasive and again simply creates doubt in the mind of the Panel as to whether there are any such documents in existence. The Panel is certainly not prepared to find on the evidence that such documents are in existence. At the least, the answer to this question does not show that Respondent engaged on any preparations to use the domain name that can be demonstrated, other than the 2010 document.
As to the 2010 document, this appears to be a plan devised by Respondent in 2010 and it is only appropriate to put this into balance beside other considerations. It shows that some thought was given to the proposal in 2010, but it is dated “October 4, 2010” and is described as a “Design Document” and “ Version 1”, all of which which suggests that no design document was prepared between July 17, 2001 when the domain name was registered and October 4, 2010, a period of 9 years, in turn suggesting again that there was at best a leisurely commitment to the project and, possibly, none. The plan itself as revealed from a study of the document was, it is true, a plan for a website promoting the attractions of the region and local facilities, but it is little more than that. At best it seems to be an internal document, not shown to have been adopted by Respondent itself, an ideas paper that might or might not be proceeded with and one that was abandoned. The 2010 paper, then, does not constitute demonstrable preparations for the community portal website.
The Panel is particularly concerned by the answer that Respondent gave to question (d).
The question asked Respondent “(d) whether and by what means the Panel may inspect the community portal website via the internet.” The answer is:
“The respondent does have the development version of the website available dated 2010-2012 that could be made available for review by the Panel via the internet.”
This answer is entirely unsatisfactory and unpersuasive. Respondent has maintained that it developed a plan for a community portal website and the Panel has done no more than ask to see it, to give Respondent a fair opportunity to present its case. The Panel asked a perfectly simple question that was capable of being answered. If the website or any preliminary form of it exists at all it should be available for inspection or at least capable of being described. To respond by saying that it “could be made available for review by the Panel” without more is unhelpful and evasive and must colour the whole case presented by Respondent on this issue. This in turn must case doubt on whether Respondent has made demonstrable preparations to use the domain name for the purpose claimed.
Taking all of these matters together the Panel finds that they do not advance Respondent’s case at all and that they cast doubt over the veracity of what Respondent has put on this issue. It certainly does not persuade the Panel that Respondent has made any demonstrable preparations to use the domain name for a bona fide offering of goods and services by means of the domain name.
The Panel therefore concludes that Respondent has not established on the balance of probabilities the alleged basis claimed by Respondent for concluding that it has a right or legitimate interest in the disputed domain name. Respondent has therefore not rebutted the prima facie case against it and by a wide margin.
It should be said here that Respondent also argued elsewhere in its submissions that “... the domain name is comprised entirely of the common terms Saratoga (location/city/state) and Today (common term). The location city of the Respondent and the generic term 'Today'.” Whatever the merits of such an argument may be, and it is true that the two words are ordinary or common words, it is clear from the evidence that the domain name has not been used for any purpose related to “Saratoga Today”. In any event, the argument is really the argument already considered and rejected. Respondent has not shown demonstrable preparations to use the domain name for a community portal website relating to “Saratoga Today”.
Respondent has not sought to rely on any other of the possible bases for a right or legitimate interest in the domain name set out in Policy ¶ 4(c). In any event, no case could be made out that Respondent is known by the domain name (Policy ¶ 4(c)(ii).Nor could it be established on the facts as they are known that Respondent is currently making a noncommercial or fair use of the domain name (Policy ¶ 4(c)(iii) or indeed for any other purpose. Likewise, it could not be shown that there is any other basis for finding a right or legitimate interest in the domain name.
Complainant has thus made out the second of the three elements that it must 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.
The Panel again notes here that it is obliged to decide this proceeding within the boundaries laid down by the UDRP Policy. That Policy requires that before Complainant can succeed, the Panel must be able to find that the domain name was registered in bad faith as that is what the Policy requires.
Having regard to those principles, the Panel finds that whatever use Respondent has made of the disputed domain name and whether or not that use has been in bad faith, it was not registered in bad faith. That is so for the following reasons.
The domain name was registered on July 17, 2001. The Panel was anxious to find exactly when Complainant was incorporated, to obtain a full understanding of the facts and it accordingly directed the Order referred to above also to Complainant to clarify that date. Complainant replied to the order and indicated that it was submitting the following documents:
“1) Complainant’s Articles of Organization, filed with the State of New York on December 1, 2005;
2) Complainant’s Certificate of Assumed Name “SARATOGA TODAY”, filed March 1, 2006; and
3)Copy of Complainant’s first issue, distributed throughout Saratoga County, NY (including but not limited to Saratoga Springs, Wilton, Ballston Spa, Malta, Milton, Round Lake, Stillwater, Greenfield and Schuylerville), dated April 5, 2006.”
However, there is an additional complicating factor in the present case which is that Respondent has renewed the registration of the domain name 13 times since the year 2001 and has done so on one occasion since Complainant’s trademark was registered. The evidence of those renewals is contained in Respondent’s answer to question 2 in the Order. The question and answer are as follows:
”2. State on what date or dates since July 17, 2001 did Respondent renew the registration of the disputed domain name.
The respondent has renewed the domain name annually on or about July 17 in 2002, 2003, 2004, 2005, 2006, 2007, 2008, 2009, 2010, 2011, 2012, 2013 and 2014.”
The question therefore arises whether the long series of renewals and particularly the most recent renewal on or about July 17, 2014 are to be taken into account in determining whether the domain name was registered in bad faith. This question has given rise to sustained debate particularly in those cases where the original registration of a domain name takes place in good faith, but where circumstances change and the use of the domain name after registration may be said to have been in bad faith.
The argument has arisen because the UDRP Policy states in paragraph 4(a)((iii) that the Complainant must prove that the domain name “has been registered and is being used in bad faith”. However, paragraph 2 of the Policy states (omitting some words) that by applying to register a domain name or asking to renew the domain name, the registrant represents and warrants that to its knowledge the registration will not infringe upon or violate the rights of any third party and that it, the registrant, has the responsibility to determine whether the registration infringes or violates someone else’s rights. As that obligation applies to a renewal, does it then follow that a bad faith renewal amounts to bad faith registration and therefore meets the requirement to prove bad faith registration?
It is true that in some cases it may be that a renewal will be treated as a registration and that the renewal, if the facts support it, may then be regarded as a registration in bad faith, such as where the respondent, after registration of a trademark by the complainant, uses the domain name to set up a cybersquatting website with links to Complainant’s competitors, an act of bad faith. That was the case in Eastman Sporto Group LLC v. Jim and Kenny, WIPO Case No.D2009-1688, the reasoning in which the Panel finds persuasive. However, that is not the case here. Indeed, in the present case the renewals, except for the most recent renewal on July 17, 2014, occurred before the SARATAOGA TODAY trademark was registered on September 23, 2013. Moreover, Respondent did not, at any time after the trademark was registered, alter its use of the domain name. It retained the domain name, but has not used it. Indeed, Respondent made no change to the use of the domain name either before or after the registration of the trademark. There is therefore nothing that would enable the Panel to say that Respondent registered its domain name in bad faith, even if a renewal is regarded as a registration.
It is true that the last renewal took place on July 17, 2014, which was thus after the registration of the trademark on September 23, 2013. Even so, Respondent did not alter its use of the domain name after the registration of the trademark. In Eastman, several of the features of the conduct of the domain name holder were that it intentionally changed its use of the disputed domain name and that the new use was “textbook cybersquatting”. In the present case, Respondent had not made any change to its use of the domain name after the registration of the trademark and did not have a website with links to competitors of Complainant; it simply registered a domain name consisting of two common words and then continued to renew the registration. In those circumstances the Panel’s opinion is that it cannot regard the renewal as a registration and therefore it cannot regard the renewal as the registration of a domain name in bad faith.
Accordingly, in the present case, the requirement to prove that Respondent registered the domain name in bad faith has not been met. It should be added that if there is a case for changing the requirement of bad faith from what it presently is, that case should be addressed by ICANN.
Complainant also makes a separate point that Respondent tried to sell the domain name to Complainant and it is true that, after Respondent expressed an interest in receiving an offer from Complainant, Complainant offered to buy the domain name for $2000 and Respondent responded by asking for $15,000. However, the Panel sees the exchange of emails between the parties as, at best, an invitation by Respondent to open negotiations. Moreover, the exchange occurred so long after the registration of the domain name that it cannot be evidence that a possible sale to Complainant was the primary reason for Respondent acquiring the domain name, which is the requirement under Policy ¶ 4(b)(i) .
Finally, Complainant contends that Respondent is inactively holding the disputed domain name for the sole purpose of selling it to Complainant, which is evidence of bad faith under Policy ¶ 4(a)(iii). Previous panels have found bad faith where a respondent inactively holds a disputed domain name. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”). But again, it cannot show registration in bad faith, when Respondent did not exist at the time of registration .
The Panel has to make a judgement on the whole of the evidence whether it shows a bad faith intention by Respondent at the time of registering the domain name and having done so the Panel is unable to reach that conclusion.
The Panel therefore finds that the Complainant has not succeeded in this present proceeding to prove that the Domain Name was registered in bad faith.
The Panel emphasizes that, although it finds that Respondent did not register the domain name in bad faith, it makes no judgement on whether Respondent has used the domain name in bad faith.
Complainant has thus not made out the third of the three elements that it must establish.
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 <saratogatoday.com> domain name REMAIN WITH Respondent.
The Honourable Neil Anthony Brown QC
Dated: April 27, 2015
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