Crown Acquisitions, Inc. v. Stephan Sphire
Claim Number: FA1606001680508
Complainant is Crown Acquisitions, Inc. (“Complainant”), California, United States. Respondent is Stephan Sphire (“Respondent”), represented by Steven L. Rinehart, Utah, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <crownacquisitions.com>, registered with GoDaddy.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 21, 2016; the Forum received payment on June 21, 2016.
On June 22, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <crownacquisitions.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 27, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 18, 2016 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 June 27, 2016, 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 July 18, 2016.
On July 27, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 the domain name be transferred from Respondent to Complainant.
Complainant uses the CROWN ACQUISITIONS, INC. mark in connection with the business of real estate renovation and restoration of buildings, namely rehabilitation, refurbishment, and renovation of high-risk urban commercial and residential properties. Complainant has registered the CROWN ACQUISITIONS, INC. mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,570,118, filed June 15, 2006, registered February 3, 2009), which demonstrates Complainant’s rights in its mark.
Respondent has no rights or legitimate interests in the disputed domain. Respondent is not using the domain in connection with any bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent’s domain resolves to an inactive website.
Respondent registered and is using the domain in bad faith. First, Respondent is attempting to sell the domain for an amount in excess of its out-of-pocket costs directly related to the domain; Respondent is listing the domain for sale for $50,000.00. Second, Respondent has failed to make any active use of the domain. Finally, Respondent has failed to respond to Complainant’s cease and desist letter.
Respondent registered the corporation Crown Acquisitions, Inc. with the Florida Department of State Division of Corporations in 2006. The domain is not confusingly similar to Complainant’s mark because the terms “crown” and “acquisitions” are generic.
Respondent has rights and legitimate interests in the domain. The terms that comprise the domain name are generic.
Respondent did not register, and is not using, the domain in bad faith. First, Respondent registered the domain years before Complainant registered the mark with the USPTO. Second, Complainant is engaged in reverse domain name hijacking, whereby Complainant is attempting to seize a generic domain with no right to do so after twiddling its thumbs for two decades. Finally, Respondent asserts the doctrine of laches as a defense based on the length of time Complainant waited to initiate this dispute.
C. Additional Submissions
Complainant made the following additional submission:
1. The domain name <crownacquisitions.com> (the "Disputed Domain") is just one of an astonishing 811 domain names owned by Respondent. More astonishing still is that nearly all of the 811 domain names – which, according to DomainIQ.com, are valued at over $500,000 - are undeveloped, and each domain simply results in a webpage that provides information on how to purchase the domain from Respondent. Despite the fact that Respondent is, without question, a textbook cybersquatter, Respondent has filed a Response to Complainant's Petition arguing, without merit, the following positions: (1) Respondent registered the Disputed Domain in good faith; (2) Complainant's petition is barred by the equitable doctrine of laches; (3) Complainant has no enforceable trademark rights; and (4) Complainant's Petition amounts to reverse hijacking. For the reasons detailed below, none of Respondent's positions is availing, and the Panel should grant Complainant's Petition, and the relief requested therein, in its entirety.
B. Respondent's Contention of Good Faith is Contrary to the Evidence
1. In Section 4(b)(i) of its Response, Respondent argues that its registration of the Disputed Domain was done in good faith. However, this is contrary to the facts.
2. First, Respondent falsely states in Section 4(b)(i)(1) that Respondent registered the Disputed Domain before Complainant filed its trademark application for “Crown Acquisitions” with the United States Patent and Trademark Office (“USPTO”). The truth is that Complainant filed its trademark application with the USPTO on June 15, 2006 - approximately three (3) months before Respondent registered the Disputed Domain, which was in September 2006. In this regard, Respondent cannot plausibly claim that it had no knowledge of Complainant’s use of the Crown Acquisitions trademark in commerce at the time it registered the Disputed Domain. At a minimum, Complainant’s filing of the Crown Acquisitions application with the USPTO in June 2006 placed Respondent on constructive notice of Complainant’s rights and, therefore, Respondent knew or should have known that Complainant was using the mark in commerce and claimed trademark rights thereto before it registered the Disputed Domain. Based on this timing, Complainant suspects that Respondent learned of Complainant’s application with the USPTO and then registered the Disputed Domain for the sole purpose of attempting to sell the domain to Complainant. Given the fact that Complainant’s trademark application was filed three years before Respondent’s registration of the Disputed Domain renders inapplicable his reliance on Cheri Lane Bowes v. lawspeak.com D2010-0742 (WIPO July 13, 2010)(“Cheri Lane”). In Cheri Lane, the respondent registered the domain in dispute nearly two years before the Complainant filed its trademark application.
3. Second, Respondent’s proffered evidence to support its good faith basis for registering the Disputed Domain is unpersuasive. Respondent concedes that from the time it registered the Disputed Domain in 2006 until 2011, there was no development or substantive use of the Disputed Domain, meaning that it was undoubtedly cyber-squatting for at least five years. Respondent cites a flash presentation that was found at the Disputed Domain from 2011 through 2015 as evidence of its development in connection with a purported business effort to acquire companies. However, the flash presentation referenced in Section 4(b)(i)(4) of the Response contains neither any contact information, nor any content (literal or otherwise) that suggests that it was used in connection with any commercial endeavor. There is nothing in the flash presentation that remotely suggests that the Disputed Domain was used in connection with any business related to the acquisition of companies as suggested in the Response, or any other business whatsoever. Even assuming that the Disputed Domain was used for any commercial endeavor – which it was not – Respondent admits that the Disputed Domain has not had any substantive content since 2015. The limited use of the Disputed Domain for only the flash presentation cited in the Response from 2011 through 2015 fails to explain at all, or support any good faith basis for Respondent’s registration of the Disputed Domain back in September 2006, or anytime thereafter.
4. Respondent then suggests that its formation of a Florida corporation named Crown Acquisitions supports its contention that it registered the Disputed Domain in good faith. However, conspicuously absent is any contention by Respondent that the Florida corporation ever engaged in any commercial activity or other activity. This absence of evidence of transacting business is consistent with the fact that Respondent’s “Crown Acquisitions, Inc.” was administratively dissolved by the Florida Secretary of State on September 24, 2010. It should be noted that Respondent contends that the period during which Respondent contends that the Disputed Domain was being used in commerce (2011 through 2015), occurred well-after Respondent’s corporation had been administratively dissolved by the Florida Secretary of State. Given this timeline, Respondent could not have been lawfully operating the purported business through the Florida corporation. Respondent’s reference to opening a bank account is also of no consequence as it doesn’t reflect any good faith effort to undertake any business activity. This lack of any bona fide business activity supports not its good faith, but instead Respondent’s bad faith in registering the Disputed Domain.
C. The Doctrine of Laches is Inapplicable Where Complainant Brought this Petition Within a Reasonable Time of the Incontestability of Its Trademark, and Respondent Has Acted in Bad Faith
1. Respondent contends in its Response that the equitable doctrine of laches should apply to bar Complainant’s petition. To successfully defend on the basis of laches a defendant must demonstrate the presence of three elements: (1) a delay in asserting a right or a claim; (2) that the delay was not excusable; and (3) that there was undue prejudice to the party against whom the claim is asserted.” Laminex, Inc. v. Yan Smith, Case No. 70990 (Forum Jan. 7, 2013), citing Kason Indus., Inc. v. Component Hardware Group, Inc., 120 F.3d 1199, 1203 (11th Cir.1997). Respondent cannot satisfy these elements to successfully invoke the defense of laches.
2. First, Complainant did not delay in asserting its rights. Complainant timely brought the present challenge to Respondent’s ownership of the Disputed Domain following the USPTO’s determination that Complainant’s trademark is incontestable. Complainant’s mark was determined by the USPTO to be incontestable in April 2014. Complainant sent its demand letter to Respondent in March 2016, less than two years later. When Respondent ignored Complainant’s demand letter, Complainant’s Petition initiated the petition in this proceeding, well-within a reasonable time thereafter.
3. Second, even assuming that Complainant did unduly delay, which it did not, Respondent cannot satisfy the third element of asserting a defense of laches, to wit, that is has suffered an undue prejudice from such delay. In the present case, Respondent can articulate no such prejudice. Respondent has not been conducting business by, through, or in connection with the Disputed Domain, it has not made any effort or incurred any expense to develop the website at the Disputed Domain or any business related thereto, and it can demonstrate no other undue or substantial prejudice arising from any purported delay by Complainant in bringing this petition. In fact, the case cited by Respondent in support of its laches argument (Laminex, Inc. v. Yan Smith) relied heavily on the fact that the respondent had continuously engaged in business under the disputed domain for 14 years prior to the challenge by the complainant in that case, and that the respondent would suffer significant, demonstrable harm if the domain were to be transferred. In the present case, Respondent has not engaged in any business and would suffer no undue harm or prejudice at all.
4. Additionally, the doctrine of laches is an equitable defense and is only available to a party whose hands are clean. As discussed in detail above, Respondent has acted at all times in bad faith in registering the Disputed Domain for the purpose of cybersquatting, and consequently, the equitable doctrine of laches is unavailable to Respondent. Notably, none of the authority cited by Respondent supports the application of laches in the present case.
D. Complainant’s Trademark Rights are Valid and Enforceable, and Neither Generic nor Merely Descriptive.
1. Respondent’s contention that Complainant does not have valid, enforceable trademark rights in “Crown Acquisitions” is also patently false. It is axiomatic that trademark rights incur from the first use in commerce. Even if Complainant had never registered its trademark with the USPTO, it would still have valid, enforceable trademark rights based on its use of the mark in commerce continuously since 2003. Complainant was using Crown Acquisitions throughout various real estate transactions and developing its website in 2003. The Way Back Machine at <internetarchive.org> shows the Complainant used its trademark, “Crown Acquisitions,” live on the World Wide Web in 2004. Complainant’s filing of its trademark application with the USPTO in June 2006, and the USPTO’s registration of the mark in 2009 amply demonstrates Complainant’s valid, enforceable trademark rights in “Crown Acquisitions.” Furthermore, in 2015 Complainant filed its Section 8/15 filing with the USPTO, which was approved rendering Complainant’s trademark rights incontestable.
2. Respondent’s contention that Complainant has no trademark rights because the mark is generic or merely descriptive is unsupported by any of the facts, or common sense. There is no cogent argument to be made that the trademark is either generic or merely descriptive. A mark that is generic cannot be afforded trademark protection where it is a name of an unbranded good to which it relates. For example, a mark such as “watch” would not be afforded trademark rights to the extent used to identify a product that one wears on his or her wrist to tell time. Likewise, a mark that is merely descriptive cannot be afforded trademark protection because it merely describes the goods or services to which the mark relates. For example, a mark such as “Tire Repair Shop” could not be afforded trademark protection if it were used to identify a shop that repairs tires, because it merely describes the service provided. In the present case, Crown Acquisitions is neither generic nor descriptive. Crown Acquisitions is not the generic name of any good or service offered by Complainant; and it is not merely descriptive of any good or service offered by Complainant, as Complainant is not literally in the business of acquiring crowns. The USPTO has already examined Complainant’s trademark and found it appropriate to register on the principal registry, and acknowledged its incontestability. In short, Respondent’s bald assertion that Complainant has no enforceable trademark rights should be disregarded.
E. Respondent’s Desperate Contention that Complainant is Attempting to Reverse Hijack the Disputed Domain is Without Merit.
1. For the reasons articulated above, Complainant, as the owner of the valid, enforceable, and registered trademark of Crown Acquisitions, has brought this petition against a cybersquatter sitting on over 800 registered domains – almost none of which have developed or active websites, and almost all of which result in a webpage offering the domain for sale. As what may fairly be described as a super cybersquatter, Respondent’s argument of reverse hijacking rings particularly hollow. Complainant has demonstrated its priority over Respondent by having both used and registered the trademark well-before Respondent registered the Disputed Domain. It has also demonstrated Respondent’s failure to register the Disputed Domain in good faith, or use the Disputed Domain in commerce. An argument of reverse hijacking here simply falls flat. Finally, in a desperate attempt to mislead the Panel, Respondent also contends that Complainant previously made an offer to Respondent to purchase the Disputed Domain – even going so far as to fabricate a story about a stalking horse offeror. This contention is entirely false. Other than sending Respondent the demand letter previously annexed to Complainant’s Petition, Complainant has never communicated with Respondent (either directly or indirectly), much less made any offer to purchase the Disputed Domain.
The evidence amply demonstrates that Respondent is nothing more than a cybersquatter, and that it registered the Disputed Domain in bad faith. As a result, the Panel should grant Complainant’s petition and the relief requested therein, in its entirety.
Respondent made the following additional submission:
A. Invalidity of Complainant’s Mark.
A. The CROWN ACQUISITIONS Mark is Subject to Extensive Third-Party Use and Senior Rights of Other Parties.
1. From the Complaint and Additional Submission, it appears that the Complainant is hoping the Panel will mistake the Complainant for a larger multi-billion dollar company in the real estate industry, also called Crown Acquisitions, which maintains headquarters in New York and a website at <cacq.com>. Even if the Panel does not confuse these parties, the existence of Crown Acquisitions in New York (at <cacq.com>) is evidence of senior rights by another party and invalidity of the CROWN ACQUISITIONS mark.
2. The fact is that CROWN ACQUISITIONS is descriptive, and subject to extensive third-party use across the English-speaking world. A list of U.S. businesses shows no less than ninety-five businesses incorporated in the United States as “Crown Acquisitions” or some variant of it. These businesses include: Crown Acquisitions, Inc., Crown Acquisitions NA, LLC, Crown Acquisitions and Recover, Crown Acquisitions and Recovery, Crown Acquisitions, Crown Acquisitions, Crown Acquisitions, LLC, Crown Acquisitions, Crown Acquisitions, LLC, Triple Crown Acquisitions, Triple Crown Acquisitions, LLC, Crown Acquisitions Holding, Inc., Crown Acquisitions Holding, Crown Acquisitions Holding, Inc., TL Crown Acquisitions, Crown Acquisitions, Crown Acquisitions, and Crown Acquisitions.
3. Additionally, a Spanish company makes use of the Crown Acquisitions mark in Europe at <crownacquisitions.net> and a British company makes use of Crown Acquisitions Worldwide, PLC as manifest by the Companies House report. In fact, a report compiled by Respondent shows at least seventeen non-U.S. countries have corporations formed as “Crown Acquisitions.” These companies include Albania, Bulgaria, Czech Republic, Canada, Jersey Channel Islands , UK, Jersey Channel Islands, Ireland, Japan, Singapore, Australia, Spain, Puerto Rico, Switzerland, Germany, New Zealand, and Uganda.
4. The popularity of the name Crown Acquisitions was augmented by its use in the movie The Thomas Crown Affair in 1999, in which the protagonist owned a company called Crown Acquisitions (as shown in a photo still from the movie.
5. In addition to the other deficiencies in the Complaint, this evidence shows the CROWN ACQUISITIONS mark to be descriptive and subject to extensive third-party use, and that even if not descriptive arguendo, other parties have rights in the mark senior to the Complainant.
6. It defies credibility for the Complainant to assert it is ignorant of these 100+ companies using “Crown Acquisitions” as name or that the Complainant is the only party in the world with a right to register or use Crown Acquisitions in gTLD.
B. Demonstrable Preparations to Use.
1. In 2008, the Respondent ordered and paid for a custom website to be designed at the Disputed Domain. E-mails from Respondent’s designer reference a workable website with client-only functions. These e-mails manifest demonstrable preparations to use the Disputed Domain under the Policy and are evidence of good-faith registration. Respondent was, in fact, totally unaware of Complainant when registering the Disputed Domain.
2. Evidence already annexed to the Response shows the Respondent incorporated in 2006. A letter from Wells Fargo Bank proves the Respondent opened an account in the name of Crown Acquisitions, Inc. in February 2007 and has recorded “thousands of business transactions” since then.
C. Inaccuracies in the Additional Submission.
The CROWN ACQUISITIONS Mark is Subject to Extensive Third-Party Use.
1. The Complainant failed to register the following gTLDs incorporating the Complainant’s name until 2010: <crownacqpm.com>, <crownacqpmg.com>, <crownacqmg.com>, and <crownacqinvestments.com>. The Complainant is holding all of these domain names passively.
2. With 811 domain names registered, the Respondent to this matter is hardly a cybersquatter. Nothing in the Policy creates any presumption of cybersquatting on the part of respondents with more than a predetermined number of domains registered. Respondent’s counsel has over 200 domain names registered and has never been accused of cybersquatting. Case law referenced in the original response makes clear that even buying and selling domains in bulk is permissible and not evidence of bad faith under the Policy.
3. The realities of Respondent’s business require that Respondent maintain hundreds of domain registrations, including domain names absorbed or acquired during business acquisitions as well as domains purchased for past and current clients and future projects, partnerships and the like.
4. Complainant cannot reasonably claim to be ignorant of the basic workings of small- and medium-sized companies, or to have to been ignorant of Respondent’s registration of the Disputed Domain for the past decade under the laches doctrine. This proceeding is simply an attempt by the Complaint to reverse hijack Respondent’s domain.
(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.
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 Complainant prove the following three elements to obtain an order Cancelling or transferring a domain name:
(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.
Complainant uses the CROWN ACQUISITIONS, INC. mark in connection with the business of real estate renovation and restoration of buildings, namely rehabilitation, refurbishment, and renovation of high-risk urban commercial and residential properties. Complainant registered the CROWN ACQUISITIONS, INC. mark with the USPTO (Reg. No. 3,570,118, filed June 15, 2006, registered February 3, 2009). Registration of a mark with a governmental authority (such as the USPTO) adequately demonstrates rights under Policy ¶ 4(a)(i). Such rights date back to the filing date of the trademark application if registration is granted. See Thompson v. Zimmer, FA 190625 (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.”). Complainant has adequately established rights in the CROWN ACQUISITIONS, INC. mark under Policy ¶ 4(a)(i) dating back to June 15, 2006.
Complainant claims the <crownacquisitions.com> domain is identical to Complainant’s mark. The domain name does not include the term “Inc.,” and includes the generic top-level domain (“gTLD”) “.com.” Respondent also eliminates the spacing between the words of Complainant’s mark. A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them. See Black Hills Ammunition, Inc. v. ICS INC, FA 1541572 (Forum Mar. 4, 2014) (finding that the <black-hillsammo.com> domain name is confusingly similar to the BLACK HILLS AMMUNITION mark under Policy ¶ 4(a)(i).); see also Wells Fargo & Company v. VALERIE CARRINGTON, FA 1621718 (Forum July 2, 2015) (finding that the <wllsfago.com> domain name is confusingly similar to the WELLS FARGO mark as the domain name merely omits the “e” and “r” from the mark while adding the “.com” gTLD suffix.); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Omitting the “inc.” in a mark from the domain name does not adequately distinguish Respondent’s domain name from Complainant’s mark under a Policy ¶ 4(a)(i) analysis. Respondent’s domain is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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.”).
Complainant claims Respondent has no rights or legitimate interests in the domain. The WHOIS information merely lists “Stephan Sphire” as registrant. While Respondent might own a dissolved Florida corporation whose name was similar to the disputed domain name, that corporation isn’t Respondent. They are separate individuals under the law and the UDRP. Respondent can only assert his rights and not the rights of others. Respondent may not generally assert the rights of a third party in a Proceeding, Mattel, Inc. v. Harems Internet Services, Inc., Claim Number: FA0404000262995 (Forum June 14, 2004), Mattel, Inc. v. RanComp Ltd., Claim Number: FA0510000579563 (Forum November 29, 2005) and Gilead Sciences, Inc. v. VLADIMIR LENCHITSKY / TARGET LOGIX LLC, Claim Number: FA1606001678718 (Forum July 22, 2016). To rule to the contrary would only encourage respondents to claim to be acting for undisclosed principals. Therefore, this Panel finds Respondent is not commonly known by the disputed domain pursuant to Policy ¶ 4(c)(ii) based upon the WHOIS information. See Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant claims Respondent is not using the domain in connection with any bona fide (i) offering of goods or services or (ii) a legitimate noncommercial or fair use. Respondent’s domain currently resolves to an inactive website with a GoDaddy parking page (which the Panel confirmed by doing a quick bit of research). Complainant provided a screenshot showing Respondent’s web page was a dynamic parking page offering links to a variety of unrelated businesses. A respondent’s failure to make any active use of a domain does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). This Panel concludes Respondent is not using the domain in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii).
Policy ¶ 4(c)(i) provides a respondent can prove rights to a domain name if “before any notice to [Respondent] of the dispute, [Respondent’s] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.” Respondent claims it was planning to use the domain name in 2007. That was nine years ago. Those plans have obviously not come to any kind of fruition within any reasonable period of time (bearing in mind the domain name was registered a decade ago and it still isn’t being used). Those plans certain didn’t give ANY kind of a clue about Respondent’s business. This Panel still has no idea what Respondent does. While Respondent may have used the domain name at some time to publish a cute video with no particular meaningful content (including Respondent’s name or Respondent’s business), that alone does not create any kind of rights under Policy ¶ 4(c).
The Panel finds Policy ¶ 4(a)(ii) satisfied.
Complainant claims Respondent attempted to sell the domain for an amount in excess of its out-of-pocket costs directly related to the domain. Respondent claims it was sort of entrapped into almost offering to sell the domain name. Yet Respondent’s own WHOIS printout lists the disputed domain name for sale. This Panel finds Respondent offered to sell the disputed domain name to the world at large. Complainant has not provided evidence to support its claim the price exceeded Respondent’s out of pocket costs. However, the Panel is willing to infer that fact because Respondent didn’t deny it and Respondent owns roughly 811 essentially undeveloped domain names. If Respondent isn’t selling them for more than Respondent’s out of pocket costs, then Respondent would not be able to stay in business (which Respondent has done for more than a decade). Respondent’s actions constitute bad faith under Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name). Respondent registered and is using the domain in bad faith pursuant to Policy ¶ 4(b)(i).
Complainant claims Respondent has failed to make any active use of the domain. A respondent’s failure to make any active use of a domain constitutes bad faith under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy). Given Respondent’s admitted lack of use of the domain name over a decade, this Panel finds Respondent has engaged in bad faith registration and use under Policy ¶ 4(a)(iii).
Complainant claims Respondent failed to respond to Complainant’s cease and desist letter. The reason Respondent failed to respond is the latter was returned “unclaimed unable to forward.” This means Respondent has not kept its WHOIS information up to date. Given Respondent can easily do this for all 811 domains with a single command and given Respondent’s familiarity with the WHOIS, it seems as though Respondent has deliberately failed to provide accurate WHOIS information. In a commercial context, this gives rise to a rebuttable presumption Respondent has registered and uses the domain name in bad faith. Respondent has failed to rebut that presumption even though a response was submitted.
The Panel finds Policy ¶ 4(a)(iii) satisfied.
In light of Complainant’s success in this Proceeding, the claim of reverse domain name hijacking is denied. While Complainant’s initial Complaint was inartful (to say the least), Complainant’s additional submission was substantially improved.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <crownacquisitions.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Wednesday, August 3, 2016
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