C-Byte Computer Systems LLC v. Trevor Biscope / DOMAIN ADMINISTRATOR / C-BYTE COMPANY, INC.
Claim Number: FA1509001639954
Complainant is C-Byte Computer Systems LLC (“Complainant”), represented by Wanda Brink, Colorado, USA. Respondent is Trevor Biscope / DOMAIN ADMINISTRATOR / C-BYTE COMPANY, INC. (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <c-byte.club>, <c-byte.pw>, <c-bytes.com>, <c-byte.enterprises>, <c-byte.international>, <c-bytecompany.com>, registered with Gandi SAS; and <c-byte.co>, registered with CCI REG S.A.
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 September 29, 2015; the Forum received payment on September 29, 2015.
On September 30, 2015 Gandi SAS confirmed by e-mail to the Forum that the <c-byte.club>, <c-byte.pw>, <c-bytes.com>, <c-byte.enterprises>, <c-byte.international>, and <c-bytecompany.com> domain names are registered with Gandi SAS and that Respondent is the current registrant of the names. Gandi SAS has verified that Respondent is bound by the Gandi SAS 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 October 1, 2015, CCI REG S.A. confirmed by e-mail to the Forum that the <c-byte.co> domain name is registered with CCI REG S.A. and that Respondent is the current registrant of the name. CCI REG S.A. has verified that Respondent is bound by the CCI REG S.A. 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 October 5, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 30, 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 email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, and email@example.com. Also on October 5, 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 October 30, 2015.
On November 7, 2015, the Panel issued Procedural Order No1., requesting Complainant to provide by November 13, 2015 certain further statements and documents. In response to that Procedural Order a timely Additional Submission from Complainant was received and determined to be complete. The Panel accepted that Additional Submission and has taken it into account in reaching its decision.
On November 9, 2015 a timely Additional Submission from Respondent was received and was determined to be in compliance with Forum Supplemental Rule #7. The Panel accepted that Additional Submission and has taken it into account in reaching its decision.
On November 23, 2015, Respondent filed a further Additional Submission containing a document headed “Trademark Trial And Appeal Board Protective Order Provisions For Protecting Confidentiality Of Information Revealed During Board Proceeding”.
On November 23, 2015, Respondent filed a further Additional Submission containing a document headed “Procedural Order No.1 Response Certificate”.
On December 12, 2015, Respondent filed further Additional Submissions containing several exhibits apparently said to be in response to Procedural Order No.1 and to be relevant to this proceeding.
On November 6, 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 names be transferred from Respondent to Complainant.
Complainant made the following contentions.
1. Complainant asserts common law trademark rights in C-BYTE, a mark which is used in connection with the sale of computer hardware and software. The <c-byte.club >, <c-byte.pw>, <c-bytes.com>, <c-byte.enterprises>, <c-byte.international>, <c-bytecompany.com> and <c-byte.co> domain names are confusingly similar to the C-BYTE mark because the domain names contain C-BYTE in its entirety and add respectively the generic top-level domains (“gTLDs”) “.club”, “.pw”, “.com”, “.enterprises”, “.international” and “.com”.
2. Respondent is certainly aware that simply changing the domain extension or making a slight difference to the registration name causes confusion regarding the business name/brand/mark.
3. Respondent is a three time offender and more.
4. The Respondent Trevor Biscope does not have permission or authorization from C-Byte Computer Systems LLC., to use or represent “c-byte” products or services.
5. Respondent has vowed to get
“even” and has advanced a
“rule or ruin” agenda, has pretended to be c-byte on the Internet and by knowingly registering “these domains” is seeking to cause legal and financial injury as well as to capitalize on the Complainant’s trademark “c-byte” internet traffic.
6. Respondent uses the Complainant’s mark on gaming/gambling and adult online activities where the Complainant’s mark C-BYTE is clearly present.
7. Respondent has no rights or legitimate interests in the disputed domain names.
8. Respondent has registered and used the disputed domain name in bad faith.
9. Respondent is not making a legitimate non-commercial or fair use of the domain names. The Respondent is offering computer hardware/software services in competition with the Complainant by using “c-byte” knowingly, to lure business away.
10. Complainant annexes to the Complaint numerous exhibits said to be in support of the above propositions.
Respondent made the following contentions.
1. The dispute concerns a term which was registered and extensively used by Respondent consistent with its significance in Canada and Las Vegas.
2. Respondent submits that the Panel should terminate this proceeding as it is an attempt to obtain a prejudicial advantage in the opposition brought by Complainant prior to the filing of the Complainant before the USPTO in connection with a United States trademark application filed by Respondent for the trademark C-BYTE.
3. Complainant’s motives for filing the Complaint are to prejudice the USPTO trademark opposition.
4. The trademark application was made before the UDRP Complaint was filed.
5. The trademark application is evidence of bona fide use and substantial preparations to use the domain names consistent with its meaning.
6. Respondent is using the disputed domain names to provide information to users of software in the United States and World Wide. The Respondent’s computer programming services support Vegas Brand to showcase Las Vegas Resorts.
7. The trademark relied on by Complainant is deficient of a trademark class, trademark description and future description.
8. As Respondent registered and paid for the domain name <c-byte.com>, this indicates that it is the owner of that domain name.
9. The disputed domain names are owned by Respondent.
10.Respondent maintains the required professional certifications to provide the services described in Respondent’s mark C-BYTE to any organization in a licensed jurisdiction. Respondent has undergone a very thorough process obtaining “Work Card” or “Sheriffs Card” as explained by the Las Vegas Metropolitan Police Department.
11.Accordingly, Respondent’s use of the domain names is bona fide
12.Respondent denies that it registered the disputed domain names in bad faith.
13. Respondent filed for the registration of the C-BYTE mark to protect the value invested in developing the corresponding websites.
Complainant in its Additional Submission made submissions and annexed exhibits that advanced contentions made in the original complaint and which are discussed by the Panel in the decision. Those submissions include the propositions that:
1. Respondent has an application before the United States Patent and Trade Office, (USPTO) for the registration of C-BYTE as a trademark. That process is not complete. Respondent is not the true owner of the mark. Respondent’s claim to have a registered trademark is therefore false.
2. Respondent is continuing with its “rule or ruin” agenda and engaging in “villainous deeds” and “red herrings”.
Complainant, by its response to Procedural Order No.1, submitted further statements and documents which are discussed by the Panel in the decision. The said statement included the following contentions.
1. Complainant was incorporated on February 5, 2013.
2. On February 5, 2013 Complainant obtained office space and signage.
3. On February 7 and 8, 2013, Respondent completed the “sale/assignment” of the domain names <c-byte.com> and <c-byte.net> by transfer.
4. Complainant’s manager acquired an EV SSL certificate for <c-byte.com>
and a regular SSL certificate for <c-byte.net>.
5. On September 15, 2015, C-Byte.com was registered as a Trade Name.
6. In October 2015 the EV SSL Certificate for <c-byte.com> was updated with a new Professional Opinion Letter.
7. The state registration, physical location, products, services, signage and domains collectively add up to a common law trademark.
8. Complainant has provided sufficient evidence to prove secondary meaning in its C-BYTE mark.
9. The domain names contain the C-BYTE mark.
10. Respondent has demonstrated that online gambling and online sex is what Respondent wants to sell to the world using “Vegas” and continues to
include “c-byte” in the mix registered as domain names.
11. Respondent assigned “the domains” to Complainant in February and March 2013.
12. Complainant then contends that Trevor Biscope’s company in Nevada is not on any list of authorized gambling establishment(s).
13. Complainant then refers to two previous UDRP proceedings and submits that Respondent has registered and used the disputed domain names in bad faith.
14. Complainant attached numerous exhibits that are said to support these contentions.
On November 10, 2015, Respondent made an Additional Submission annexing a document from the USPTO Trademark Trial And Appeal Board dated October 17, 2015 in proceedings between C-Byte Computer Systems LLC v. Trevor Biscope. The document states inter alia that “the opposer (Plaintiff)” identified above has filed a notice of opposition to the registration sought by the above-identified application filed by “applicant (defendant)”.
On December 12, 2015, Respondent filed a further submission in response to Procedural Order NO.1 in which it expanded on its previous submissions.
1. Complainant and Respondent are both in the business of the provision of computer and related services, but the Panel is unable on the evidence and submissions to specify when the parties commenced business, the precise services offered by each party or any overlap between the parties.
2. Complainant has established that it is has common law trademark rights in C-BYTE, but the Panel is unable to specify on the evidence and submissions what are the ambit or date of commencement of that trademark. This finding is without prejudice to the trademark rights if any that Respondent may have and the respective trademark rights between the parties.
3. Complainant has also established that the disputed domain names are confusingly similar to Complainant’s trademark.
4. Complainant has not established on the balance of probabilities that Respondent has no rights or legitimate interests in the disputed domain names.
5. Complainant has not established on the balance of probabilities that Respondent registered and used the disputed domain names 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 the domain names should be cancelled or transferred:
(1) the domain names registered by Respondent are 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 names; and
(3) the domain names have been registered and are being used in bad faith.
The first issue that arises is whether Complainant has a trademark on which it can rely in this proceeding. It does not have a trademark that has been registered with a trademark authority and it is therefore necessary for it to establish a common law or unregistered trademark which is sufficient to enable a complaint under the Policy to succeed.
Complainant submits that it has common law trademark rights in C-BYTE, a mark which, it submits, it uses in connection with the sale of computer hardware and software. In order to acquire common law trademark rights under the Policy, a complainant must show that the mark has acquired secondary meaning identifying the mark with the complainant and its goods and services. See Mary’s Futons, Inc. v. Tex. Int’l Prop. Assocs., FA 1012059 (Nat. Arb. Forum Aug. 13, 2007) (finding that a complainant can only acquire a common law trademark by establishing the mark’s acquisition of secondary meaning). Relevant evidence of secondary meaning includes, but is not limited to, “length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.” See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011).
Complainant has not provided a great deal of evidence showing secondary meaning or generally as to whether it has a common law trademark as claimed. In the Complaint, it produced little evidence, as it is not enough simply to assert a common law trademark without proving it. It was for that reason, that the Panel issued its Procedural Order No.1 requesting Complainant, among other things, to show that it had “acquired a common law or unregistered trademark for C-BYTE and the facts showing how that common law or unregistered trademark is said to have been acquired and the approximate date from which that trademark is said to have commenced.” The order entitled Respondent to respond. To this order Complainant replied, first, that Complainant had been allocated office space and had procured office signs that were displayed at the premises and “noted on c-byte.us.org.” That appears to be a website to which one of Complainant’s other domain names resolves. The Panel has examined that website as it is the first concrete evidence that Complainant put forward and finds that it apparently shows a sign for “ C-Byte Computer Systems, LLC” , but not C-BYTE itself. That evidence does not show a common law trademark in C-BYTE itself. However, it is also true that the website in question shows several uses by Complainant of C-BYTE itself as the brand of its goods and services and the Panel takes that fact into account.
Complainant also replied to the order by submitting that the Respondent had completed the “sale/assignment of (the domain names) c-byte.com and c-byte.net through transferring the domains on February 7 and 8th 2013”, a submission made presumably to show that Complainant had adopted C-BYTE as its business name and trademark.
Complainant’s next point is that Complainant had acquired an EV SSL certificate
for <c-byte.com> and “a regular SSL certificate for c-byte.net”, together with a
professional opinion letter to update the certificate. This shows that
Complainant was incorporated on February 5, 2013 and is in good standing, but
it is of limited value in showing, by itself, that Complainant has any trademark
rights to C-BYTE or that it has used C-BYTE alone as the badge of its goods and
services to the extent that it showed a common law trade mark.
Complainant also relies on the fact that it is incorporated as a company and that
it has a physical location, products, services, signage and domain names that
“collectively add up to a common law trademark”. However, Complainant has to
prove that it has trademark rights in C-BYTE itself, and Complainant appears to
accept that statement by submitting that “The Complainant business name
contains common words “Computer Systems LLC” not eligible for common law or
trademark registration, so that leaves “C-Byte as the distinguishing feature of the
trademark and why domains that are clearly “c-byte” would matter to the
Complainant has shown its status as a limited liability company (LLC), showing that at least it uses “c-byte” as part of its company name. Complainant also has a physical location and products that it promotes under the name C-BYTE. Complainant has also registered 26 domain names incorporating the expression C-BYTE in domain names, for example <c-byte.net>, <c-byte computersystems.com> and <c-byte.solutions>. The panel has tested some of these domain names and has found them to be in active use in promoting Complainant’s goods and services in computer equipment, communications and related fields under the name C-BYTE, so it would appear that Complainant is using C-BYTE as a brand for those products, that it is offering them for sale under that name and that at least to some extent the community has come to accept C-BYTE to be a trademark associated with Complainant.
The Panel should also mention at this stage that, as steps in the various proceedings in a continuing dispute between Complainant and interests associated with Respondent, two prior UDRP panels, conducted by separate panelists, have found that Complainant has common law trademarks to C-BYTE. The first of these decisions is C-byte Computer Systems LLC v. Trevor Biscope C-Byte, Inc., FA 1523522.
The second decision is C-Byte Computer Systems LLC (Colorado) v. Trevor Biscope, FA 1562032 where the panel relied on the first decision, noting that it was not privy to the evidence on which the panel deciding that case had reached its conclusion.
Complainant therefore relied more on the first decision, C-byte Computer Systems LLC v. Trevor Biscope C-Byte, Inc., FA 1523522. In particular, Complainant relied on the following part of that decision:
“Complainant acquired the <c-byte.com> and <c-byte.net> domain names from Respondent, the original owner, on February 8, 2013. Following Complainant’s acquisition of the <c-byte.com> and <c-byte.net> domain names, Complainant invested in an EV SSL (green bar ssl) through Computer Parts Inc. (Colorado) program with Starfield Tech for <c-byte.com>. In Goepfert v. Rogers, FA 861124 (Nat. Arb. Forum Jan. 17, 2007), the panel held that “[T]here is no particular amount of evidence required in order to establish common law rights. The determination of what is sufficient is ad hoc based on the specific facts and circumstances involved, as is the scope of the rights once established.” Complainant has provided sufficient evidence to prove secondary meaning in its C-BYTE mark. Complainant has sufficiently proved its rights in the C-BYTE mark under Policy ¶ 4(a)(i).”
It will be seen from that extract that the panel in that case relied on similar evidence to that adduced in the present case.
The issue is not beyond doubt, but taking into account (a) the use of C-BYTE on Complainant’s website as the brand of its goods and services and the name under which it has promoted its goods and services to the public and (b) and the decision in C-byte Computer Systems LLC v. Trevor Biscope C-Byte, Inc., FA 1523522 , relying on similar evidence to that relied on in the present case, the Panel finds on balance that Complainant has established a common law trademark in C-BYTE pursuant to Policy ¶ 4(a)(i).
However, the Panel also wishes to say that although it has found Complainant has shown common law trademark rights in C-BYTE, the Panel makes no finding as to the ambit or date of commencement of that trademark and no finding as to what, if any, trademark rights Respondent may have or the competing trademark rights as between Complainant and Respondent. Respondent has applied to USPTO to register C-BYTE as a trademark, Complainant has opposed that registration and the matter is now before the USPTO Trademark Trial And Appeal Board. Accordingly, the respective trademark rights between the parties will be clarified by that proceeding and the Panel does not wish to say anything that might prejudice that proceeding.
The second issue that arises is whether the <c-byte.us.com> domain name is identical or confusingly similar to the C-BYTE mark. The Panel notes that the domain name contains Complainant’s C-BYTE trademark in its entirety and adds the country code top-level domain (“ccTLD”) “.us” and the generic top-level domain (“gTLD”) “.com.” Prior panels have found that the addition of both ccTLDs and gTLDs are both insufficient to differentiate a domain name from the mark at issue. See CDW Computer Ctrs., Inc. v. The Joy Co., FA 114463 (Nat. Arb. Forum July 25, 2002) (finding that the addition of the ccTLD “.us” is inconsequential and does not defeat a claim of confusing similarity); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). An objective bystander, faced with the disputed domain name and the trademark and ignoring the ccTLD and gTLD would probably conclude that the domain names are confusingly similar to the trademark. Therefore, the Panel finds that the disputed domain names are confusingly similar to the C-BYTE mark under Policy ¶ 4(a)(i).
Complainant has therefore made out the first of the three elements that it must establish.
Complainant has to prove on the balance of probabilities that Respondent has no rights or legitimate interests in the disputed domain names. 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 names 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.”).
As with many aspects of this case, the way that Complainant mounts its argument on this element, even after providing additional material in response to the Panel’s Procedural Order, is not stated clearly and the Panel is left to a certain degree of conjecture.
The first task for the Complainant is to make out the prima facie case. In the Complaint, Complainant advanced a case that is difficult to follow and even more difficult to see as a case where Complainant has shown that Respondent has no rights or legitimate interests in the domain names.
Complainant submitted that:
(a) Respondent had no authority to use the C-BYTE mark;
(b) Respondent registered “these domains” to cause legal and financial injury and to capitalize on Complainant’s internet traffic based on the C-BYTE mark; and that
(c) Respondent had an agenda of “rule or ruin”, had filed a frivolous lawsuit and engaged in sham ventures.
None of those assertions was established by evidence or persuasive argument and had the matter ended there, the Panel would have concluded that Complainant had not made out a prima facie case, had failed on this
the second element and hence that the Complaint itself had failed.
That is so because, in the first place, a mere assertion that Respondent has no authority to use the C-BYTE mark in its domain names is not sufficient. No doubt, Complainant has given no authority to Respondent to use the trademark that the Panel has found Complainant has established. But Respondent also claims to have a trademark in the same expression and it is impossible for the Panel to find one way or the other on the evidence that has been adduced that Respondent has no such right. Complainant’s assertion has therefore not been established.
Nor has it been established on the evidence that the motivation of Respondent in registering the domain names was to cause legal and financial injury and to capitalize on Complainant’s internet traffic based on the C-BYTE mark. It is just as likely that Respondent’s motivation was that it was entitled to register the domain names because of its own rights to use the expression C-BYTE and that it did so in good faith. Complainant’s submission on this issue has therefore not been established.
Likewise, Complainant’s third point, that Respondent has an agenda of “rule or ruin”, filed a frivolous lawsuit and engaged in sham ventures is not made out on the evidence.
However, as it was possible that there were other facts and submissions that had not been brought to the surface as Complainant, like Respondent, was not represented by an attorney in this proceeding, the Panel decided to give Complainant a further opportunity to make out its case. By the Procedural Order referred to above, the Panel invited Complainant to show the facts relied on to show that Respondent has no rights or interests in the disputed domain names. It should be noted here that the Procedural Order made a perfectly simple request, namely to state in “clear and concise language” the facts relied on to show that Respondent had no rights or legitimate interests in the domain names. It is a matter of regret that Complainant did not do so. Instead, Complainant’s reply consisted of 12 lines of print dealing with two matters.
The first matter was to quote from the decision in the first of the two previous proceedings referred to above, C-Byte Computer Systems LLC (Colorado) v. Trevor Biscope, FA 1405001562032, a proceeding that was undefended and in which Respondent had not filed a Response. In that decision, the panel found that Respondent did not have rights or legitimate interests in the domain names at issue, namely <c-byte.company>, <c-byte.management>, <c-byte.solutions>, <c-byte.support>, and <c-byte.systems>. In the present case, Complainant relied on the following remarks of the panel:
“Complainant provides evidence that the domain name resolves to an online gambling website. The parties have already been involved in UDRP proceedings concerned with domain names linked to the same trademark. Respondent is therefore aware of Complainant and its business and has chosen to connect the disputed domain names to a site having no bearing on Complainant’s business and likely to tarnish Complainant’s business.”
The Panel naturally respects the opinion of the panelist in that case on the material that the Panel had before it. However, the present Panel is unable to say that the evidence in the present case supports a similar conclusion here and is loathe to decide that Respondent has no rights or legitimate interests in the domain names at issue when the previous case was undefended, it concerned different domain names, apparently a different Respondent and potentially different evidence.
Up to this point, therefore, Complainant had not shown a prima facie case that Respondent has no rights or legitimate interest in the domain names at issue in the present proceeding.
The final point made by Complainant in response to the Procedural Order to make out that case was expressed in the following way:
“The Respondent demonstrates that online gambling and online sex is what he wants to sell to the world using “Vegas” and continues to include “c-byte” in the mix registered as “c-byte.us.com.”That statement appears to the Panel to be untrue and is not supported by the evidence. No evidence by way of screenshots or otherwise was produced to show that the domain names are used for gambling or online sex. The Panel has naturally looked at the website to which the domain names resolve. The website is the website of C-Byte Company, Inc of 3565 Las Vegas Blvd South #148, Las Vegas, Nevada, United States, the Respondent. The website is devoted to a range of computer goods and services that it promotes. The site is not an online gambling site or an online sex site. It is true, however, that the site carries a promotion for what is referred to as the Vegas Initiative which is described in the following way:
“A major Las Vegas Adult Entertainment initiative, recently announced by C-Byte, will result in the development of standard C-Byte technology used in Las Vegas. C-Byte will partner and co-develop these industry-leading systems, contributing technology and marketing expertise for the platform.”
The way that Respondent works with the Vegas Initiative, as it is described, is expressed on the website as follows:
For more than two decades, C-Byte has been on the leading edge of business critical computing, building information technology solutions that meet the toughest requirements of the world's most powerful and complex organizations. We incorporate that experience into the Vegas Brand by leveraging the expertise and best practices of our people.”
The site therefore seems to offer computer services to be used in gaming but it does not operate gambling or other adult entertainment on the site or show how those services may be utilised. The site also refers to a licence, so the question of the legality or illegality of the contents of the site is unclear but, on the evidence adduced, the Panel could not conclude that it was illegal or improper.
Complainant’s case does not, therefore, make a persuasive argument, even for a prima facie case, which is not a heavy onus. The Panel therefore does not accept, on the evidence, the original argument of Complainant that Respondent “engaged in sham ventures” or its later argument that “online gambling and online sex is what he (Respondent) wants to sell to the world using “Vegas” and continues to include “c-byte” in the mix ...”.
Respondent’s case is no better in clarifying the issue or assisting the Panel to come to a conclusion on the issue. Respondent’s case ranges over the installments of a commercial dispute between the parties, with reference to at least one domain name which is not the subject of this proceeding and also to a court proceeding in Nevada. As with some of the submissions of both parties, the submission seems to be concerned with criticizing the other side and not addressing the substantive issues. On the question of gambling, gaming and pornography, Respondent alleges that “The Respondent does represent a properly licensed Nevada Corporation that is properly licensed in Clark County that is approved to do business in the prestigious ‘Flamingo Hotel’ on the strip in ‘Las Vegas’ and that, apparently, Respondent has “…a ‘Work Card’ or ‘Sheriffs Card’ as explained by the Las Vegas Metropolitan Police Department”.
Even when Respondent had the opportunity to get to grips with the issues by replying to Complainant’s submission in answer to the Procedural Order, it did not do so in any coherent, relevant or persuasive manner. It is also a matter of regret that Respondent has not presented a clear and concise statement of why it maintains that it has a right or legitimate interest in the disputed domain names. A great deal of Respondent’s material deals with the proceedings in the USPTO Trademark Trial And Appeal Board and one of its few submissions that appears to be relevant is a submission that the Panel should terminate the present proceedings because they have been brought by Complainant to obtain a prejudicial advantage in the Trademark Trial And Appeal Board proceedings. Respondent also says that it has been making a bona fide use of the domain names consistent with its meaning. But taken as a whole, Respondent’s material does not assist the Panel to come to a conclusion on the present issue with any degree of probability or confidence.
The state of the evidence being what it is, the Panel can do no more than assess the evidence and decide if a prima facie case has been made out. In that exercise the onus of proof is on Complainant. Having regard to that principle and the totality of the evidence and submissions of both Complainant and Respondent, the Panel finds that the material does not, on the balance of probabilities, or at all, show a prima facie case that Respondent has no rights or legitimate interests in the dispute domain names.
Complainant has therefore not established a prima facie case that Respondent has no rights or legitimate interests in the domain names and accordingly Complainant has not established the second element that it must establish.
As Complainant has failed to prove the second element it is not strictly necessary to deal with the issue of bad faith, as Complainant cannot succeed unless it can prove all three elements required to be proved under the Policy. However, it is apparent from the evidence and submissions on this element that Complainant has also failed to show that Respondent registered or used the domain names in bad faith.
Most of the arguments of Complainant already dealt with by the Panel are presumably relied on by Complainant on the issue of bad faith. As has already been shown, those arguments are not supported by the evidence. Moreover, there is no evidence that any of the criteria for bad faith set out in Policy ¶ 4(b) have been made out. Indeed, on the limited relevant evidence put before the Panel, the conduct of Respondent are just as consistent with a good faith belief in its own rights. The Panel is not reaching final conclusions on such matters. It may well be that this dispute is so complicated and so enmeshed with personal issues and a pre-occupation with proceeding in the Trademark Trial And Appeal Board that it is impossible to find one way or the other within the limited parameters of the UDRP process whether bad faith has been made out and that this, like the ultimate resolution of the dispute between the parties, will have to be left to court proceedings between the parties where the issues can be investigated with evidence from witnesses, cross-examination and discovery of documents.
Complainant has thus not made out the third of the three elements that it must establish.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <c-byte.club>, <c-byte.pw>, <c-bytes.com>, <c-byte.enterprises>, <c-byte.international>, <c-bytecompany.com> and <c-byte.co> domain names REMAIN WITH Respondent.
The Honourable Neil Anthony Brown QC
Dated: December 16, 2015
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