UTILIBILL, Pty.Ltd. v. JOHN POWERS / 191 Chandler Rd
Claim Number: FA1611001705087
Complainant is UTILIBILL, Pty.Ltd. (“Complainant”), represented by Ruth Khalsa, California, USA. Respondent is JOHN POWERS / 191 Chandler Rd (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <utilibill.com>, registered with GoDaddy.com, LLC.
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 November 30, 2016; the Forum received payment on November 30, 2016.
On December 1, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <utilibill.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 December 5, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 27, 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 December 5, 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.
Respondent did not file a Response in this proceeding by the due date or at all. Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On January 3, 2016, 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant made the following contentions.
Complainant has rights in the UTILIBILL mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) and other international trademark agencies (e.g., Reg. No. 5,076,627, registered Nov. 8, 2016). Respondent’s first registration of the UTILIBILL mark took place on September 3, 2007 and Complainant has used the UTILIBILL trademark since March 10, 2004.
Complainant also has a common law or unregistered trademark in UTILIBILL.
Respondent’s domain name is confusingly similar to the UTILIBILL mark as the domain includes the entire mark and merely adds the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent has never been commonly known by the disputed domain name and no records are present to indicate that Respondent has rights in a trademark similar to the domain name. Respondent’s inactive use of the domain name and registering the domain name for the purpose of selling it is neither a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent has registered and is using the disputed domain name in bad faith. Respondent registered the domain name to prevent Complainant from reflecting its mark in the disputed domain name and has shown a pattern of bad faith registrations. Respondent using the domain name to benefit commercially from a monetization program demonstrates an intent to confuse and attract internet users for commercial gain. Respondent’s inactive use of the disputed domain name demonstrates bad faith.
Respondent failed to submit a Response in this proceeding.
1. Complainant is an Australian company engaged in the business of the provision of a brand identifier for its cloud-based platform-as-a-service (PAAS) software platforms for running, managing, and monitoring utility companies, namely, for providing utility billing, reporting and analytics and for its Software as a Service (SAAS) services featuring proprietary, non-downloadable software for utility companies to use in utility billing, provisioning, rating, payments, and customer communication.
2. Complainant has established registered trademark rights in the UTILIBILL mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) and other international trademark agencies (e.g., Reg. No. 5,076,627, registered Nov. 8, 2016).
3. Complainant has also established registered trademark rights in the UTILIBILL mark based on registration of the mark with IP Australia as trademark No. 1415339, lodged on March 21, 2011 and registered from that date, but entered on the register on October 24, 2011.
4. Complainant has also established registered trademark rights in the U UTILIBILL MAKING BILLING EASIER, mark consisting of geometric shapes, based on registration of the mark with IP Australia as trademark No. 1415339, lodged with IP Australia on January 29, 2007. It was registered from that date and entered on the register on September 3, 2007.
5. Complainant has not established common law or unregistered trademark rights in UTILIBILL.
6. The disputed domain name was created on May 2, 2000.
7. The use that has been made of the disputed domain name since its registration has been largely inactive, save for the provision of goods and services relating to domain names and related matters.
8. The evidence does not establish that Respondent has no right or legitimate interest in the disputed domain name.
9. The evidence does not establish that Respondent registered the disputed domain name 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 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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
It should be emphasized, as this proceeding is undefended, that the above principles apply just as much as they do in a defended case and Complainant must prove on the balance of probabilities each of the three elements. Complainant has itself recognised that position by specifically submitting that it wants a decision “on the merits.”
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant submits that it has rights in the UTILIBILL mark based on registration of the mark with the USPTO and other international trademark agencies. So far as the USPTO is concerned, Complainant relies on Reg. No. 5,076,627, registered on November 8, 2016, being the registration of a service mark for UTILIBILL. That registration was applied for on November 20, 2015 and the registration certificate states that it had a first use on October 3, 2004 and a first use in commerce on December 31, 2006. See Compl., at Attachment 1.
Complainant also relies on an Australian word trademark for UTILIBILL, No. 1415339, registered with IP Australia, lodged on March 21, 2011 and registered from that date, but entered on the register on October 24, 2011. See Compl., at Attachment 2.
Complainant also relies on an Australian word trademark for U UTILIBILL MAKING BILLING EASIER, consisting of geometric shapes. The application for that trademark was lodged with IP Australia on January 29, 2007. It was registered from that date and entered on the register on September 3, 2007. See Compl., at Attachment 2.
From this history, the Panel notes that Complainant’s earliest registration of the UTILIBILL mark took place in 2007 and Complainant’s earliest claimed use of the mark was in 2004, well after Respondent’s registration of the disputed domain name on May 2, 2000. That sequence of events clearly raises issues that will have to be considered under rights and legitimate interests and bad faith and
this, as will be seen, is the pivotal issue in this case. That is so because it is difficult to show that a respondent has no rights or legitimate interests in a domain name or that it registered a domain name in bad faith if a complainant did not acquire its trademark rights until after the domain name was registered.
However, that consideration is not directly relevant to the first issue under Policy ¶ 4(a)(i)), where it has frequently been said that a complainant has only a “low threshold” to overcome in establishing its trademark and where, in any event, the Policy requires Complainant only to show that it “has” a trademark, not that it had one at any particular time.
Panels have therefore routinely found, and this Panel similarly finds, that registration of a mark with the USPTO or another international authority such as IP Australia is sufficient to demonstrate a registrant’s rights in a mark within the meaning of Policy ¶ 4(a)(i)). See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant has therefore established all that it must prove at this stage of the proceeding and the Panel finds that Complainant has trademark mark rights in UTILIBILL by virtue of its USPTO and Australian registrations.
Complainant has not advanced a detailed submission that it has an unregistered or common law trademark in UTILIBILL, but it seems to so contend.The Panel finds that Complainant has not made out a case for such a finding. In particular, the word UTILIBILL is clearly a combination of two generic words, “utility” and “bill” and , as such, Complainant has to show a secondary meaning in the combined word that links the goods and services offered under it to Complainant. No attempt was made to prove this contention and no evidence was offered in its support. The only submission advanced was a series of assertions in the Complaint that panels have had to remind parties and others on frequent occasions are not evidence.
Comnplainant has therefore not established unregistered or common law trademark rights to UTILIBILL. Even if they were established, however, that would not have assisted Complainant as any such common law rights could not have operated prior to the year 2004.
The second issue that arises is whether the disputed <utilibill.com> domain name is identical or confusingly similar to one of Complainant’s trademarks. The domain name is clearly neither identical nor confusingly similar to Complainant’s U UTILIBILL MAKING BILLING EASIER trademark. Complainant submits, however, that the <utilibill.com> domain name is confusingly similar to the UTILIBILL mark. The domain name includes the entire UTILIBILL mark without amendment and differs from the mark only through the addition of the gTLD “.com.” Panels have found that the addition in a domain name of a gTLD to a mark does not negate confusing similarity that is otherwise present. See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). The Panel concludes that Respondent’s <utilibill.com> domain name is identical to the UTILIBILL mark for the purposes of Policy ¶ 4(a)(i).
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 (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.”).
The first task for the Panel under this heading is therefore to decide if Complainant has made out a prima facie case. In that regard, Complainant’s principal argument is that “Respondent registered the domain utilibill.com on May 2, 2000, with intent to sell it and make a profit.” Here it must be remembered that when Respondent registered the domain name on May 2, 2000, Complainant had not registered or even applied for a trademark or used the mark in commerce, that event not having occurred at the earliest until 2004. Moreover, as Complainant has adduced the company registration of Complainant into evidence, it is permissible for the Panel to have regard to the date when Complainant was incorporated; see, e.g., Givi Srl & G. Visenzi Motomarket Srl v. Shahi, D2005-0392 (WIPO July 11, 2005), holding that the Panel may undertake limited factual research into matters of public record that it deems necessary in reaching a decision. A simple search of the Australian companies’ register reveals Complainant did not exist in 2000, as it was not incorporated until June 6, 2005. Accordingly, there is no evidence from which it can be inferred one way or the other that Respondent had any intention to sell the domain name at a profit at the time when it registered it or that Complainant existed when Respondent formed any such intention.
But even if it were the intention of Respondent to sell the domain name at a profit, it is not untoward or improper or conduct negating the basic right to register a domain name that the registrant intends to sell it at a profit. The Policy states that it is bad faith registration of a domain name when the registrant’s primary motivation is not simply to sell the domain name but to sell or rent it to the complainant trademark owner or a competitor, which of course is consistent with the whole purpose of the UDRP which is to negate abusive registrations of domain names. But there is nothing in the Policy to negate the right or a registrant to register a domain name with the intention of selling it at a profit, especially when, as in the present case, there was no trademark in existence or contemplation when the domain name was registered. Complainant’s first and principal argument therefore does not succeed.
The same must be said of the further submission that “Respondent did not
request permission to register the domains containing Complainant’s mark...“ and the related submission that Respondent has not made an active use of the domain name. There was no obligation on Respondent to seek or obtain permission from Complainant, nor could it have obtained such permission, as Complainant did not exist at the time and had not applied for a trademark with which the domain name could have been in conflict. Nor was there any obstacle in the way of Respondent parking the domain name at the time of registration, as that is a well recognised right of a domain name owner, provided that the domain name does not transgress on the rights of the trademark owner by using it to promote competitors or disrupt the trademark owners’ business or some other untoward conduct. Those additional arguments of Complainant likewise do not succeed.
Complainant presumably also submits that Respondent, because of its conduct since the registration, lost any right or legitimate interest in the domain name that it may have had. That argument cannot succeed as there is no evidence that Respondent engaged in any such conduct. The evidence said to be in support is solely Annexure 6 which shows that the domain name has resolved to the registrar’s website containing advertisements for the sale of domain names, anti-spam measures, websites and such. None of those advertisements or any other links redirect internet users to competitors of Complainant, target Complainant, copy it, demonstrate an attempt at passing off, show any attempt to capitalise on the value of the domain name as a trademark or show any other untoward conduct by Respondent. They simply show a legitimate use of the domain name. That argument of Complainant therefore also fails.
Indeed, Complainant’s case is in substance that because, years after the registration of the domain name, which Respondent was clearly entitled to do on a “first-come.first.served” basis, Complainant registered an identical trademark, this in some way negates the right of Respondent to register and retain the domain name that it clearly had at the time of registration. Such a submission is not supported by the Policy or established domain name practice. Nor is it supported by the decisions cited by Complainant. The essence of this case is the situation explained in the valuable work, Levine, Domain Name Arbitration, Legal Corner Press, New York, 2015, where the learned author explained the general principles involved and discusses several unsuccessful defences that have been raised in the past, defences which have also been raised by Complainant in the present case. Although this extract is lengthy, it will explain to Complainant and to readers why the essential case put by Complainant is, with respect, wrong in law and practice. The author says at page 369 et seq.;
“... trademark owners cannot use the Policy as a tool “to simply wrest…disputed domain name[s]” away from respondents. Even though complainants may have legitimate grievances for infringing websites they have no claim of right to corresponding domain names registered before their existence. Their remedy (if any) lies under trademark law.
It would defy logic if the law were otherwise. Whether or not a respondent lacks rights or legitimate interests in the domain name, there is no merit or arguments under paragraph 4 (a)(iii) that keeping a domain name inactive, using it in bad faith, pointing it to a parking page, under-utilizing it, passively holding it, or being deceased are grounds for forfeiture. A “later business cannot just register a trademark and then subsequently use this procedure to remove a website from the Internet that uses the same name.” Complainant garners no reward for failing to research domain name ownership before it adopts a mark or
rebrands its business. Neither can a complainant establish a better right on evidence that respondent has never been commonly known by the domain name, made any legitimate commercial or fair use of it or no longer has a need for it ...”
It is not to the corresponding, earlier registered domain name that an owner has superior right, but to its trademark. Priority looks forward from the owner’s first use of its trademark in commerce, not backward to trump another’s earlier right to the domain name. To rule otherwise would introduce a new rule of law favouring owners of later acquired trademarks. In advancing these and other flawed arguments Panels have made it clear that complainants misconceive the UDRP by urging panellists to ignore priority.
Respondent does not forfeit its right to a domain name because an after-acquiring trademark owner believes it has a better or superior right to it. That respondent acquired the disputed domain name after its abandonment by a prior holder in the same industry as complainant is irrelevant. “ ( End of extract).
Accordingly, despite the detailed submissions of Complainant, to which the Panel has given close attention, they do not make out a prima facie case that Respondent has no right or legitimate interest in the disputed domain name. Indeed, the evidence shows that in all probability Respondent has both a right and a legitimate interest in the domain name.
Complainant has therefore not made out the second of the three elements it must establish.
As Complainant has not made out a prima facie case that Respondent has no rights or legitimate interest in the disputed domain name, it is not strictly necessary to deal with the issue of bad faith. However, it should be made clear, largely for reasons already given, that Complainant cannot succeed on this issue.
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 also that it has been used in bad faith.
Having regard to those principles, the Panel finds that the disputed domain name was not registered and used in bad faith. So far as registration in bad faith is concerned, the Panel has already pointed out that even on Complainant’s own case, no bad faith intention was formed or could have been formed when the domain name was registered. That is so because when Respondent registered the domain name, which is the only point in time that is under scrutiny in this issue, Complainant did not exist, and had not registered or applied for any of its trademarks. Respondent could therefore not form the requisite intention to act in bad faith towards Complainant or its trademark as they did not exist. Moreover, Complainant’s own evidence from the certificate of registration of the United States trademark is that the mark has a first use on October 3, 2004 and a first use in commerce on December 31, 2006. See Compl., at Attachment 1. Complainant’s own submission is also that it has used the trademark only since 2004. Complainant’s submission must therefore be that although it did not use the mark until 2004, and although it did not file for its trademarks until 2011 in Australia and 2015 in the US, Respondent had a bad faith intention towards that trademark in 2002, which cannot be so. Both of those dates are several years after the registration of the domain name and there could not therefore have been any bad faith intention at the time of the registration of the domain name.
That principle is as well established as any in the domain name field and is consistent with many UDRP decisions, for example, eWomenNetwork, Inc. v. Terra Serve c/o Domain Administrator,: FA1506001622849 ( Nat. Arb Forum, July 27, 2015), where the panel said:
”Past panels have declined to find bad faith where, as in the present case, the respondent has shown that its rights in the domain name at issue predate the trademark rights of the complainant. See Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark); Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001) (finding that it is “impossible” for the respondent to register disputed domain name in bad faith if the complainant company did not exist at the time of registration). The Panel therefore finds on the evidence that Respondent’s rights in the <ewomen.com> domain name predate Complainant’s rights in the EWOMEN mark and declines to find bad faith registration of the domain name.”
That decision is clearly applicable to the present case. The Panel can only decide the matter on the totality of the evidence, even if the proceeding is undefended and the Panel is bound to do so by the express terms of Policy ¶ 4(a), namely that “ …the Complainant must prove that each of these three elements are present.” Complainant has also specifically asked for a “decision on the merits” and the merits require the Policy to be applied.
Complainant has thus not shown that the domain name was registered in bad faith. It is accordingly not necessary to decide if it used the domain name in bad faith. However the Panel should mention that there is evidence of an email exchange between the parties about the possible sale of the domain name. The Panel’s reading of the exchange is that it is little but the usual bargaining over price which did not end successfully.
Complainant therefore has not made out the third element 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 <utilibill.com> domain name REMAIN with Respondent.
The Honorable Neil Anthony Brown QC Panelist
Dated: January 9, 2017
 The extract contains footnotes that have not been re-produced here. The footnotes cite decisions in support of the propositions contained in the extract.
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