Developmentex.com, Incorporated v. Manuel Schraner
Claim Number: FA1710001755537
Complainant is Developmentex.com, Incorporated (ďComplainantĒ), represented by Nathan C Belzer of Belzer PC, Georgia, USA.† Respondent is Manuel Schraner (ďRespondentĒ), represented by Steven L. Rinehart, Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <devex.org>, registered with eNom, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 25, 2017; the Forum received payment on October 25, 2017.
On October 25, 2017, eNom, LLC confirmed by e-mail to the Forum that the <devex.org> domain name is registered with eNom, LLC and that Respondent is the current registrant of the name.† eNom, LLC has verified that Respondent is bound by the eNom, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANNís Uniform Domain Name Dispute Resolution Policy (the ďPolicyĒ).
On October 26, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 15, 2017 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondentís registration as technical, administrative, and billing contacts, and to email@example.com.† Also on October 26, 2017, 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 Respondentís registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on November 14, 2017.
On November 20, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends as follows:
Complainant, Devex, provides recruiting and business development services, including comprehensive job listings, to the global development community. Complainant uses its DEVEX mark to promote its products and services and has established common law rights in the mark through registration with the United States Patent and Trademark Office (ďUSPTOĒ) (e.g. Reg. No. 3,725,319, registered Dec. 15, 2009). Respondentís <devex.org> is identical to Complainantís mark because it merely appends the generic top-level domain (ďgTLDĒ) ď.orgĒ to the fully incorporated mark.
Respondent does not have rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise authorized Respondent to use its mark in any fashion, and Respondent is not commonly known by the disputed domain name. Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the <devex.org> domain name resolves to a website offering job search services that are identical to Complainantís business.
Respondent registered and is using the disputed domain name in bad faith. Respondent intentionally attempts to attract Internet users by creating a likelihood of confusion with Complainantís mark as to the source, sponsorship, affiliation, or endorsement of Respondentís website for commercial gain. Respondent does so to offer competing job search services, and the listings on the resolving webpage redirect users to <indeed.com> job listings, a competitor of Complainant, presumably for Respondentís commercial gain. Finally, the relevant registration date for the disputed domain name should be considered sometime around April, 2016, when, upon information and belief, Respondent first acquired the domain name.
Respondent contends as follows:†
Respondent makes no assertions in regards to Policy ∂ 4(a)(i).
Respondent has rights and legitimate interests in the disputed domain name. Respondent is the original registrant of the <devex.org> domain name, and registered the domain name on March 7, 2005.
Complainant has failed to show that Respondent registered the domain name in bad faith, as Complainantís unfounded assertions, without additional evidence, fails to show Respondentís alleged bad faith. Relatedly, it would be impossible to find bad faith on the part of Respondent here, as it registered the domain name more than three (3) years prior to Complainantís claimed first use of the DEVEX mark. Additionally, there are at least four (4) other entities currently using the DEVEX mark, and Complainant does not hold exclusive rights to use the mark.
Respondent alleges reverse domain name hijacking and asserts the doctrine of latches as a bar to Complainant success.
Complainant has rights in the <devex.org> mark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainantís trademark in any capacity.
Respondent registered and used the domain name to improperly take advantage of the goodwill residing in anotherís trademark.
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.
The at-issue domain name is identical to a trademark in which Complainant has rights.
Complainantís ownership of a USPTO trademark registration for the DEVEX mark demonstrates Complainantís rights in such mark for the purposes of Policy ∂4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (ďComplainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.Ē).
Respondentís domain name contains Complainant entire trademark followed by the top-level domain name ď.org.Ē The trivial differences between the <devex.org> domain name and Complainantís DEVEX trademark are immaterial for the purposes of the Policy. Therefore, the Panel finds that Respondentís at-issue domain name is identical to Complainantís trademark under Policy ∂ 4(a)(ii). †See Bond & Co. Jewelers, Inc. v. Tex. Intíl 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 complainantís mark under Policy ∂ 4(a)(i)).
Under Policy ∂ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests.† See Hanna-Barbera Prods., Inc. v. Entmít Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ∂4(c) circumstances Complainantís prima facie showing acts conclusively.
Respondent is not authorized to use Complainantís trademark in any capacity and as discussed below, there are no Policy ∂4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name. However, Respondent argues that since it registered the at-issue domain name prior to Complainant acquiring rights in DEVEX its rights precede and are superior to those of Complainant. Given the bad faith use of the domain name as set out below, the mere registration of the domain name in advance of Complainant acquiring trademark rights does not show Respondentís has rights and interest.
WHOIS information for Respondent lists ďMANUEL SCHRANERĒ as the domain nameís registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <devex.org> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ∂ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent uses the trademark identical domain name so that it can divert internet traffic intended for Complainant to one of Complainantís competitors, presumably for commercial gain.† Respondent does not deny that it routes traffic from the at-issue domain name and from the links on its website, to one of Complainantís competitors --all for Respondentís benefit. Such use of the domain name is is neither a bona fide offering of goods or services under Policy ∂ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ∂ 4(c)(iii). See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (ďRespondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant.† The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.Ē).
Given the foregoing, Complainant satisfies its burden under Policy ∂4(a)(ii) and demonstrates Respondentís lack of rights and lack of interests in respect of the at-issue domain name.
The at-issue domain name was registered and used in bad faith. As discussed below, Policy ∂4(b) bad faith circumstances are present from which the Panel may conclude that Respondent acted in bad faith regarding the at-issue domain name. Respondentís argument that registering the at-issue domain name prior to Complainantís acquisition of trademark rights in its relevant trademark precludes an adverse finding regarding Policy ∂ 4(a)(iii) is rejected.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions expresses an applicable noted exception to the prior rights doctrine.
In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. This has been found to occur: shortly before or after a publicized merger between companies, but before any new trademark rights in the combined entity have arisen; or when the respondent (e.g., as a former employee or business partner, or other informed source) seeks to take advantage of any rights that may arise from the complainant's enterprises; or where the potential mark in question is the subject of substantial media attention (e.g., in connection with a widely anticipated product or service launch) of which the respondent is aware, and before the complainant is able to obtain registration of an applied-for trademark, the respondent registers the domain name in order to take advantage of the complainant's likely rights in that mark.
http://www.wipo.int/amc/en/domains/search/overview2.0/ (October 25, 2012) (emphasis added)
The salient point to take away from the Overview exception quoted above is not why a domain name registrant anticipated it might later use its domain name to later benefit from the trademark rights of another, but rather that such registrant did intend to take advantage of such rights. In the instant case, ďit is clear [to the Panel] that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rightsĒ in spite of the fact that a complainant may not have had trademark rights at the time of the at-issue domain nameís registration. Since Respondentís domain name is identical to Complainantís now extant trademark; and since Respondent uses its trademark identical domain name as a means to benefit from Complainantís goodwill, there is a strong inference that Respondent registered <devex.org> to exploit any, if any, goodwill which might become associated with the <devex.org> domain name. Such is the case albeit the target goodwill may well have been inchoate at the time of registration. The fact that Complainant had no rights in DEVEX at the time Respondent registered <devex.org> does not permit Respondent to exploit anotherís after acquired rights. Respondentís apparent belief at the time it registered <devex.org> that someone, at some time in the future, might cultivate trademark rights in DEVEX which Respondent could then exploit obviates any requirement that to succeed under the UDRP the respondent must have contemplated a particular trademark holder and/or a particular trademark.
Aside from pointing to the immaterial fact that there may be multiple third parties with trademark rights in DEVEX, Respondentís defeat of the Complaint hinges on the solitary notion that Respondentís domain name was registered prior to Complainantís registration of the DEVEX trademark. Respondent urges that demonstrating bad faith under the Policy almost universally requires a predicate finding that the complainant had trademark rights in its mark prior to the at-issue domain nameís registration. The doctrine recognizes that the registrant/respondent could not have contemplated the complainant's non-existent rights at the time it registered its domain name and thus could not have acted in bad faith. However, the logic underpinning the rule does not square with the instant circumstances and therefore does not defeat Complainantís otherwise meritorious claims under Policy ∂ 4(a)(iii). †Given the foregoing, the fact that the <devex.org> domain name was registered before Complainant had trademark rights in <devex.org> does not blankly preclude the Panel from finding bad faith under Policy ∂ 4(a)(iii).
Respondents registering an identical or confusingly similar domain name in anticipation of some party later acquiring rights related to such domain name are routinely found to have acted in bad faith pursuant to Policy ∂ 4(a)(iii). For example, the panel in Suneva Medical, Inc. v. Servet Temir / Nokta France, FA 1425709 (Forum April 12, 2012) reasoned that despite the respondent having registered its at-issue domain name in advance of complainant acquiring trademark rights, the fact that respondent capitalized on the complainantís newly trademarked medical business by altering the domain nameís website to trade on complainantís mark, suggests bad faith registration and use of the domain name. There as here, the respondentís intentional abuse of complainantís trademark rights for commercial gain discredits any notion that Policy ∂ 4(a)(iii) bad faith necessitates that there must be an existing trademark at the time an at-issue domain name is registered.
In conclusion, there is no dispute that Respondent uses the <devex.org> domain name for its own benefit and that Respondent is aware of Complainant and its current DIVEX trademark. Further, Respondent is using the at-issue domain name to divert traffic to Complainantís competitor. Complainant provides a screenshot of a <devex.org> webpage containing job search services. Complainant also contends, and Respondent does not deny, that when a site visitor selects a job listing they are redirected to <indeed.com>, a competitor of Complainant. Using a domain name that trades upon the goodwill of a complainantís trademark for commercial gain evinces Respondentís bad faith under Policy ∂ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (ďThe Panel agrees that Respondentís use of the website to display products similar to Complainantís, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ∂ 4(b)(iv).Ē); see also Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondentís use of the <capitaloneonebank.com> domain name to display links to the complainantís competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ∂ 4(b)(iv)).
Respondentís Claim of Laches
Respondent claims that the doctrine of laches bars Complaint from prevailing since Complainant could have brought a UDRP action at least as early as 2005 when Respondent first registered the at-issue domain name but instead waited approximately 13 years before proceeding with the instant action. However, the equitable doctrine of laches does not lend itself to this UDRP administrative proceeding. Although not all panels agree, many panels have held that laches is not a UDRP defense. See Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) (ďThe remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defense of laches has no application.Ē); see also, Drown Corp. v. Premier Wine & Spirits, FA 616805 (Forum Feb. 13, 2006) (finding that the laches defense was inappropriate under the Policy and that the time frame within which the complainant brought the proceeding was of no consequential value); see also Disney Enters. Inc. v. Meyers, FA 697818 (Forum June 26, 2006) (ďRespondentís efforts at arguing related equitable defenses such as estoppel and acquiescence are equally misplaced as these legal arguments are not contemplated by the Policy. Moreover, recognition of these arguments in accordance with Respondentís desires requires the Panel to make a legal determination regarding the continuing validity of Complainantís DISNEY mark. Such action is beyond the scope of the UDRP proceeding and if Respondent desires such an outcome it should avail itself of the proper judicial proceedings by which such a result might be accomplished.Ē).
But even if the Panel were to apply the doctrine of laches to the instant dispute, the doctrine would fail. First, Complainant asserts and Respondent does not deny that the <devex.org> website which Respondent uses to trade on Complainantís trademark rights was established in early 2016.† This is arguably the first time when Complainant had a claim against Respondent. Therefore, Complainant did not sleep on its rights since 2005 as Respondent urges, but rather waited less than 2 years before bring the instant action.† Additionally, the doctrine of laches, inter alia, requires that its proponent show that it has been prejudiced by the adverse partyís delay. Respondent offers no indication of any specific prejudice to Respondentís ability to present evidence and defend against the claims made by Complainant caused by delay in filing its Complainant. In fact Respondent quotes from AVN Media Network, Inc. v. Hossam Shaltout, WIPO Case No. D2007-1011 stating: ďThe longer the time a disputed domain name has been registered, the more difficult it is for a complainant to prove bad faith registration.Ē If such is true, then Respondent rather than Complainant benefits from any delay. Therefore, even if the Panel were to consider Respondentís laches defense it would be ineffective under the circumstances at bar.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <devex.org> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated:† November 27, 2017
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