Investigo v. Domain Admin
Claim Number: FA1907001854793
Complainant is Investigo (“Complainant”), United Kingdom. Respondent is Domain Admin / Alexander Schell (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <investigo.com> (the “Disputed Domain Name”), registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 30, 2019; the Forum received payment on July 30, 2019.
On August 2, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <investigo.com> Disputed Domain Name was 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 August 6, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 26, 2019 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. Also, on August 6, 2019, 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 August 26, 2019.
On August 29, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun 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 Disputed Domain Name be transferred from Respondent to Complainant.
Complainant is a leading, United Kingdom-based recruitment agency that operates its brand under the INVESTIGO mark. Complainant has a trademark registration for its INVESTIGO mark with the United Kingdom Intellectual Property Office (“UKIPO”) (e.g., Reg. No. UK00003294399, registered Mar. 5, 2018). Respondent’s <investigo.com> Disputed Domain Name matches Complainant’s INVESTIGO mark.
Respondent has no rights or legitimate interests in the <investigo.com> Disputed Domain Name. Respondent is cybersquatting and the Disputed Domain Name resolves to an inactive website. Respondent also offers to sell the Disputed Domain Name for an extremely high fee, well in excess of its out-of-pocket expenses related to the Disputed Domain Name.
Respondent registered and uses the <investigo.com> Disputed Domain Name in bad faith. Respondent is cybersquatting the Disputed Domain Name.
Respondent’s acquisition of the <investigo.com> Disputed Domain Name predates Complainant’s registered mark by nearly nine (9) years. Additionally, Respondent’s Disputed Domain Name is solely comprised of the common Spanish dictionary term “investigo” (meaning “I investigate” in the present tense in Spanish or “he/she/you investigated” in the preterit tense in Spanish, of the verb “investigar”.). In addition, the term “investigo” is often used by a variety of businesses and also used as domain names by third party entities in various jurisdictions worldwide, including in the United Kingdom, where Complainant resides. Therefore, Complainant cannot have exclusive rights in the mark.
Respondent has legitimate interests in the <investigo.com> Disputed Domain Name as it is comprised of a common, dictionary term. Furthermore, Respondent’s willingness to sell the Disputed Domain Name for profit was not improper and does not demonstrate that Respondent did not have rights or legitimate interests in the Disputed Domain Name.
Respondent registered and uses the <investigo.com> Disputed Domain Name in good faith. Respondent acquired the Disputed Domain Name at auction for $2,735.00 in 2009. Respondent did not attempt to sell the Disputed Domain Name to Complainant at that time as it was a third party who contacted Complainant, alleging to have ownership of the Disputed Domain Name. Respondent’s willingness to sell the Disputed Domain Name for $45,000.00 in response to an anonymous inquiry is not evidence of bad faith. Respondent’s registration of a domain name that incorporates a generic, common term also shows there was no bad faith. Furthermore, since Respondent’s acquisition of the Disputed Domain Name predates Complainant’s rights by nearly nine (9) years, it suggests that Complainant knew that Respondent did not act in bad faith.
Complainant holds trademark rights in the INVESTIGO mark. The Disputed Domain Name is identical to Complainant’s INVESTIGO mark. Respondent has established that it has rights or legitimate interests in the use of the Disputed Domain Name as it is comprised of a common, dictionary term. Respondent’s registration of the Disputed Domain Name predates Complainant’s use of the INVESTIGO mark. Respondent did not register and is not using 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.
The Panel concludes that Complainant has shown to have rights in the INVESTIGO mark based upon registration of the mark with the UKIPO (e.g., Reg. No. UK00003294399, registered Mar. 5, 2018). Registration of a mark with the UKIPO is sufficient to establish rights in that mark. See Bittrex, Inc. v. Protection of Private Person, FA 1775280 (Forum Apr. 20, 2018) (“Since Complainant evidences its registration of the trademark with UKIPO the Panel finds that it has shown trademark rights.”).
The Panel also concludes that the <investigo.com> Disputed Domain Name is identical to the INVESTIGO mark per Policy ¶ 4(a)(i). Complainant contends that Respondent’s <investigo.com> Disputed Domain Name “matches” the INVESTIGO mark. While Complainant makes no specific allegations, the Disputed Domain Name incorporates the mark in its entirety, along with a “.com” generic Top-Level Domain (“gTLD”). The addition of a gTLD such as “.com” in a domain name may be technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
Under the Policy, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain Name. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the Disputed Domain Name. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”). In this case, the Panel determined that Respondent has carried its burden to demonstrate that it has rights or legitimate interests in the Disputed Domain Name.
The term “investigo” in the INVESTIGO mark is generic and is a common, dictionary term in the Spanish language. It has a common meaning apart from any trademark value Complainant may have acquired through its use in commerce. The registration of domain names that contain common words is permissible on a first-come, first served basis, and such registration establishes Respondent’s legitimate interest, provided the domain was not registered with a trademark in mind. See National Gardening Association, Inc. v. CK Ventures, FA 1294457 (Forum Feb. 16, 2010) (“common words and descriptive terms are legitimately subject to registration as domain names on a first come, first-served basis”).
This rule applies to the registration of generic, common, descriptive and dictionary terms, whether in English or in any other language, and such use establishes Respondent’s rights or legitimate interests in the domain name at issue. See Vendita Technology Group, LLC v. M. Stenzel, FA1308001514398 (Forum Sept. 30, 2013) (complaint denied; the word “vendita” is a common dictionary word meaning “sale” in Italian and thus, Respondent has rights or legitimate interests in <vendita.com>).
Further, there is no indication that Respondent uses, or has ever used the Disputed Domain Name to exploit its trademark value in the category of services covered by Complainant’s mark. See CNRV, Inc. v. Vertical Axis, Inc., FA 1300901 (Forum May 3, 2010) (legitimate interest is established where “domain names have been registered because of their attraction as dictionary words, and not because of their value as trademarks”).
Conversely, Respondent invested in generic or common, dictionary terms, for purpose of resale. Such a business is legitimate; the acquisition of domain names consisting of common, dictionary terms for resale can confer rights and legitimate interests upon entrepreneurs who engage in this activity. See Platterz Inc. v. Andrew Melcher, FA 1729887 (Forum June 19, 2017). Respondent has also provided search results for the term “investigo” in support of its argument that the term is generic. This supports Respondent’s contention, contrary to Complainant’s allegation, that its response to an anonymous inquiry to sell the <investigo.com> Disputed Domain Name for $45,000.00 does not demonstrate a lack of rights or legitimate interests.
Based on the foregoing, the Panel concludes that Respondent has rights or legitimate interests in respect of the Disputed Domain Name pursuant to Policy ¶ 4(a)(ii) despite Complainant’s conclusory contention that Respondent is cybersquatting. See Energy Source Inc. v. Your Energy Source, FA. 96364 (Forum Feb. 19, 2001) (“[r]espondent has persuasively shown that the domain name is comprised of generic and/or common descriptive terms, and, in any event, is not exclusively associated with Complainant’s business”); see also LML Investments LLC v. P.A. Gordon, FA 1571756 (Forum Sept.9, 2014) (“Such use of the disputed domain name in connection with its descriptive meaning establishes Respondent’s rights and interests in the disputed domain name.”).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has not been established by Complainant.
Complainant has failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii). This is true in the present case as well since Complainant merely asserted in conclusory fashion that Respondent was cybersquatting, and thus acting in bad faith, without adducing any additional evidence.
Moreover, Respondent’s registration of the Disputed Domain Name predates Complainant’s registration of the INVESTIGO mark by at least seven (7) years. This precludes any serious claim by Complainant of registering the Disputed Domain Name in bad faith as Complainant’s rights in the INVESTIGO mark did not even exist when Respondent registered the Disputed Domain Name. Therefore, there is no evidence of Respondent’s bad faith under Policy ¶ 4(a)(iii). See 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).
Since the Panel has found that Respondent has rights or legitimate interests in the <investigo.com> Disputed Domain Name pursuant to Policy ¶ 4(a)(ii), the issue of bad faith registration and use is moot pursuant to Policy ¶ 4(a)(iii) and need not be decided by this Panel. See Record Connect, Inc. v. Chung Kit Lam / La-Fame Corporation, FA 1693876 (Forum Nov. 3, 2016) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Sheet Labels, Inc. v. Harnett, Andy, FA 1701423 (Forum Jan. 4, 2017) (finding that because the respondent had rights and legitimate interests in the disputed domain name, its registration of the name was not in bad faith).
Although the issue pursuant to Policy ¶ 4(a)(iii) is deemed moot in this case, this Panel has nonetheless addressed bad faith registration and use in this Decision to demonstrate that the result would have been the same.
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 <investigo.com> Disputed Domain Name REMAIN WITH Respondent.
Lynda M. Braun, Panelist
Dated: September 7, 2019
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