Daniel Biro / RealtyPRO Network, Inc. v. Ben Kueh / Computerese
Claim Number: FA2101001929289
Complainant is Daniel Biro / RealtyPRO Network, Inc. (“Complainant”), represented by Daniel A. Biro, Florida, USA. Respondent is Ben Kueh / Computerese (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <realtypro.com>, registered with Tucows Domains Inc.
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.
Gerald M. Levine as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 21, 2021; the Forum received payment on January 21, 2021.
On January 21, 2021, Tucows Domains Inc. confirmed by e-mail to the Forum that the <realtypro.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 January 28, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 15, 2021 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 January 28, 2021, 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 March 15, 2021.
An Additional Submission was received from Complainant on March 18, 2021 and a second Additional Submission was received on March 25, 2021. As the second Additional Submission offers no facts relevant to the determination of this matter, no purpose is served in accepting it.
On March 22, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Gerald M. Levine 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 operates a business by the name of Realty Pro Network, Inc. and is the owner of the USPTO registered mark REALTY PRO Registration No. 5,952,587 dated January 7, 2020. He states that he developed his business plan for his business even before his trademark registration from at least 2010. His business which is directed to North and South American realty or real estate industry professionals offers “social network, forums, phone app, realty and/or real estate agent directory, professional realty relation marketplace, professional real estate agent tools such as transaction management, video conferencing market and video tours,” and much else from an extensive list.
Complainant acknowledges that the disputed domain name <realtypro.com> predated both the existence of the mark and the earliest date of his planning for his business, but contends for reasons more specifically set forth below that Respondent lacks rights or legitimate interests in the domain name and is using <realtypro.com> in bad faith. He points out that for several years, the domain name has been inactively held, but recently after notice of the Complaint, Respondent has resolved <realtypro.com> to a new landing page. Complainant also complains that the privacy shield currently in place on this domain name is an indicator of bad faith.
Complainant further advises the Panel that it attempted to purchase <realtypro.com> from Respondent but rejected the offer because “[the] price extravagantly exceeds Respondent’s actual costs for maintaining the registration while [Respondent] has been cybersquatting on it.”
Not surprisingly, the Respondent has a different view of the matter. He vigorously denies being a cybersquatter and is offended that he should be accused of it. His registration of <realtypro.com> long predates any rights Complainant claims to have. He states that in the late 1980s and early 1990s he was working very closely assisting real estate agents and real estate companies in “ChicagoLand” to upgrade their computers. He contends that in 1994, one of his friends and clients registered <realtypro.com> for his business but after his friend became too busy working as chairman of the Realtors Association of Northwest Chicago Respondent took over the registration of <realtypro.com> on June 25, 1997 (confirmed by the Whois directory attached to the Response).
He acknowledges that he is not a real estate broker, but offered real estate information on the <realtypro.com> website for many years as a service for his real estate friends and clients. He does not deny that the website was inactive for some years, but it is currently active though sparsely populated with links to a couple of residential and commercial properties.
He contends that Complainant had contacted him “at least seven or eight times in the past by phone or by e-mail, showing interest to buy the domain name” and that Respondent refused to sell it. As a result of these calls, he decided to subscribe to a privacy service to shield himself from receiving them.
In the most recent of these contacts, a telephone call from Complainant, Respondent states that he mentioned to Complainant that someone had offered to buy <realtypro.com> for $15,000. Respondent claims that Complainant has misinterpreted the comment to mean that Respondent was colluding with one of Complainant’s competitors, but Respondent states he is not interested in selling <realtypro.com>. In the course of their conversation, Respondent told Complainant that he intended to pass the domain name to his son as a legacy investment.
C. Additional Submissions
In his Additional Submission, Complainant contends that “Mr. Kueh continues to lie within his sworn Response,” specifically referencing Respondent’s allegedly supposed work in the real estate field but also claiming that in their telephone conversation Respondent admitted to being a cybersquatter when he declared that he was holding the domain name “to eventually give it to his son. . . to use as an investment inheritance.” He concludes with a number of other accusations against Respondent which I have already noted are irrelevant to the determination of the claim of cybersquatting.
1. Complainant has standing to maintain this UDRP proceeding on account of his having received a USPTO Certificate of Registration for REALTY PRO.
2. Although active for many years, for some years the disputed domain name did not resolve to an active website, but is again active. However, It is unnecessary to conclude whether Respondent lacks rights or legitimate interests in the disputed domain name <realtypro.com>.
3. Complainant does not succeed on his Complaint because his trademark postdated the registration of the domain name and the timing of his mark is so distant from the registration of the disputed domain name that there can be no actionable claim for cybersquatting.
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.
Complainant has demonstrated both that it has a registered trademark corresponding to the disputed domain name and that the disputed domain name is identical to the mark. Thus, it has standing to maintain this UDRP proceeding. See WIPO Overview 3.0, Section 1.2.1: “Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy.” Also DIRECTTV, LLC v. The Pearline Group, FA 1818749 (Forum December 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i)”).
Accordingly, Complainant has satisfied ¶ 4(a)(i) of the Policy.
To succeed on this limb of the Policy, complainants have the burden of demonstrating a prima facie case that respondent lacks rights or legitimate interests in the disputed domain name. This is ordinarily done by complainant establishing the existence of facts that respondent registered the disputed domain without permission, but also that respondent is using it in such a manner as to undercut any right or legitimate interest under UDRP Para ¶ 4(c). Only if the prima facie case supports such contentions is a respondent called upon to justify its right or legitimate interest in the disputed domain name.
The Panel accepts that the Complainant has not authorized the Respondent to register or use <realtypro.com>, but as a general rule where the disputed domain name predates the corresponding trademark authorization to acquire it is unnecessary. Nor is a respondent bound to affirmatively obtain permission where its right is superior to that of the complainant.
Complainant advances a number of theories to support its contention that Respondent lacks rights or legitimate interests. It contends, for instance, that Respondent has not registered “any similar service marks or trademarks in respect of the disputed domain name or with regards to ‘realty’ or the real estate industry.” However, a respondent’s right or legitimate interest in a disputed domain name is not influenced by whether it has or lacks a trademark, for if this were the applicable test few domain name registrants would survive this limb of the Policy.
Complainant also contends that the website to which the domain name resolves (in years in which it did resolve) “did not provide any actual realty or real estate related information at all, or even any links to other real estate information, but was made to fool or confuse the public into thinking so, and to in bad faith try to get around ICANN Rules.” This allegation which appears to be true is nevertheless equally irrelevant.
Complainant does however raise an important issue as to whether Respondent’s rights or legitimate interests are affected because of a hiatus in the resolution of the domain name to an active website. See Jurisprudential Overview, Section 2.11: Panels tend to assess claimed respondent rights or legitimate interests in the present, i.e., with a view to the circumstances prevailing at the time of the filing of the complaint.” Respondent has certainly maintained an active website in the past, and has conveniently propagated a new landing page with links to availability of apartments and commercial space.
I find, however, that whether Respondent lacks rights or legitimate interests because of a hiatus of non-use and regardless of his conveniently creating a new landing page does not have to be pursued in light of the assessment that follows under UDRP ¶ 4(a)(iii). See Voys B.V., Voys United B.V. v. Thomas Zou, D2017-2136 (WIPO January 8, 2018), “[Complaintive] incorrectly assum[es] that (1) non-use of a domain name of itself prevents the registrant from acquiring a right or legitimate interest and (2) registration of a domain name for no reason other than to sell it necessarily deprives the registrant of a right or legitimate interests.”
Paragraph 4(b) sets forth a menu of four nonexclusive circumstances that may if the facts are established support a claim for registration and use in bad faith. Except as it may apply to use, none of these circumstances can apply to registration in bad faith for the reason that Respondent registered <realtypro.com> many years earlier than the earliest date Complainant began using its mark, thus undermining any finding of bad faith registration. And it does not apply to Respondent’s use of the domain name because there is no allegation of bad faith use, and even if there were such an allegation it would be refuted by the facts of record.
Here, as in its second limb presentation, Complainant devotes an inordinate amount of mental energy in condemning Respondent: “[He] is no longer in business or offering any bona fide business or service. So any continued use of the business name or fictitious names within the public realm would be misrepresentative (sic), considered in bad faith, and/or even illegal.” Moreover, “Respondent did not even use his full (inactive) fictitious name for registration of the disputed domain name in the Whois Database, more evidence of bad faith.” For these alleged misdemeanors, Complainant Respondent “may also be liable to criminal penalties as per Illinois statutes.”
This line of argument is a fool’s errand because, even if any of these allegations were true, Respondent’s state registrations, whether he has any or does not, are irrelevant to the question as to whether Respondent registered and is using <realtypro.com> in bad faith.
Complainant’s proof of bad faith consists of the following conduct. Even after Respondent was aware of Complainant’s mark, he continued to renew <realtypro.com>: “Respondent has been in a pattern of renewing the disputed domain name annually to continue cybersquatting on it in bad faith.” This (Complainant continues) “indicates the bad faith practice of cybersquatting, which the Federal government has found in cases to be illegal.” Though Complainant may believe this to be the law, it is not a view for which had he performed some research into the matter he would have found support under UDRP precedent. See Live-Right, LLC v. Domain Administrator / Vertical Axis Inc., FA1506001622960 (Forum July 16, 2015) in which the Panel noted that “renewal of a disputed domain name by the original owner of the domain name is irrelevant to a Policy ¶ 4(a)(iii) analysis,” because it simply represents a continuation of the original registration.
Complainant also alleges that hiding identity through a privacy service is also a sign of bad faith: “Complainant had emailed the Respondent at that time [years earlier] that he was interested in purchasing the disputed domain name for a reasonable valuable consideration. Respondent did not reply . . . [but] soon thereafter hired a privatization service to hide his public contact information. . . . [This] should be viewed as operating in bad faith.” This again misses the mark. See HBA Holding LLC v. William Sylvester, D2021-0048 (WIPO March 22, 2021) (“[T]he fact that Respondent used a privacy service does not in and of itself establish that Respondent is acting in bad faith.”). There are good and reasonable grounds for purchasing such a service, namely, to prevent unwanted calls from persons such as Complainant, although in this case the masking proved an unsuccessful barrier since Complainant was perfectly able to track Respondent down, and upon service of the complaint Respondent has appeared to defend his right to the disputed domain name.
As a general rule, “mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith,” Tristar Products, Inc. v. Domain Administrator / Telebrands, Corp., FA 1597388 (Forum February 16, 2015). Here, the simple fact is that when Respondent registered the domain name Complainant’s corresponding mark was years away from coming into existence.
Finally, cybersquatting presupposes knowledge of the mark and an intention to take advantage of it, neither of these can be inferred if the mark postdates the registration of the domain name. Cybersquatting by clairvoyance of a future right to prove retroactive bad faith has long been rejected as an actionable claim. See WIPO Overview, 3.8.1: “where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent.” See Centroamerica Commercial, Sociedad Anonima de Capital Variable (CAMCO v. Michael Mann, D2016-1709 (WIPO October 3, 2016) (In which the Panel rejected “the Complainant’s argument that the Respondent should be deemed to have been targeting any person who might in the future have an interest in registering the disputed domain name.”).
the above reasons, Complainant has failed to establish that Respondent either
registered or is using <realtypro.com> in bad faith.
Reverse Domain Name Hijacking
The consensus on bad faith use of the Policy is that a complainant exposes itself to the sanction of reverse domain name hijacking where the record establishes that the complaint is being used “as a tool to simply wrest the disputed domain name [from respondent] in spite of [Complainant’s] knowledge that [it] was not entitled to that name and hence had no colorable claim under the Policy.” Labrada Bodybuilding Nutrition, Inc. v. Glisson, FA 250232 (Forum May 28, 2004); also Edward Smith v. Douglas Bates, FA 1302001483682 (Forum March 27, 2013).
Respondent has not requested a finding of reverse domain name hijacking but Panels nevertheless have that discretion, The Panel in Mountain Top (Denmark) ApS v. Contact Privacy Inc. Customer 0133416460 / Name Redacted, Mountaintop Idea Studio, D2020-1577 (WIPO September 1, 2020) found “it is open to the Panel to make such a finding without a request from the Respondents.” Other Panels have similarly concluded: “If an abuse is apparent on the face of the case papers, the Panel is under an obligation to declare it,” Dumankaya Yapi Malzemeleri San, VE tiC, A.S. v. Domain Administrator, Name Administration Inc. (BVI), D2015-1757 (WIPO December 15, 2015).
Claimant appears in this proceeding on his own behalf. That he is mistaken in his belief about the law and that he lacks any appreciation of UDRP requirements, and even his accusatory words and threats of dire civil punishment, while it may be tempting, would not ordinarily be sufficient to support an RDNH sanction. Pro se complainants are generally given a free pass where one who is represented by counsel would not.
But here there is the added factor that Complainant had made unsuccessful attempts to purchase <realtypro.com> from Respondent. It would not have been exhausting to learn from a modicum of research that initiating a UDRP proceeding under these circumstances fits the definition of a Plan B scheme to deprive Respondent of his property.
Whether this conduct alone deserves sanction teeters on the line except for one other fact, namely that Complainant chose not to seek legal advice although he introduces himself with the statement that he “may later choose to utilize his attorneys.” It is regrettable that Complainant proceeded without “utilize[ing]” his attorneys because had he consulted them (and assuming they are more informed than he) they would have told him that he could not possibly succeed on his complaint. See Intellect Design Arena Limited v. Moniker Privacy Services / David Wieland, iEstates.com, LLC., D2016-1349 (WIPO August 29, 2016)(“[i]t is not unreasonable for the Panel to expect and require that the Complainant and its counsel will be familiar with Policy precedent and will neither ignore nor gloss over matters on which well-established Policy precedent weighs directly against the Complainant’s contentions.”
The UDRP defines reverse domain name hijacking as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Complainant committed the cardinal sin of filing a complaint against a respondent who registered the disputed domain name more than a decade before his rights accrued for REALTY PRO and, more grievous still, that he commenced a proceeding after unsuccessfully attempting to purchase <realtypro.com>.
For these reasons, Complainant cannot escape sanction. The bringing this case was “an abuse of the administrative proceeding.”
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED with sanction pursuant to UDRP Rule 15(c) for attempted reverse domain name hijacking.
Accordingly, it is Ordered that the <realtypro.com> domain name REMAIN WITH Respondent with a finding of Reverse Domain Name Hijacking.
Gerald M. Levine, Panelist
Dated: March 29, 2021
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