Dr. Alan Y. Chow, d/b/a Optobionics v. janez bobnik
Claim Number: FA2110001967817
Complainant is Dr. Alan Y. Chow, d/b/a Optobionics (“Complainant”), represented by Timothy K. Sendek of Akerman LLP, Illinois, USA. Respondent is janez bobnik (“Respondent”), Slovenia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <optobionics.com>, registered with DropCatch.com 1153 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.
Aaron B. Newell as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 5, 2021; the Forum received payment on October 12, 2021.
On October 6, 2021, DropCatch.com 1153 LLC confirmed by e-mail to the Forum that the <optobionics.com> domain name is registered with DropCatch.com 1153 LLC and that Respondent is the current registrant of the name. DropCatch.com 1153 LLC has verified that Respondent is bound by the DropCatch.com 1153 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 October 13, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 2, 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 October 13, 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 October 29, 2021.
On November 3, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Aaron B. Newell as Panelist. Due to circumstances beyond the control of the Panel, the decision deadline was extended from November 17, 2021 to 22 November 2021.
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.
The Complainant alleges that
i) It is the registrant of US trademark registration no 2656817 OPTOBIONICS in class 10 for medical devices, namely, retinal implants and accompanying apparatus, and surgical instruments used in their implantation and operation.
ii) It was the registrant of the domain name optiobionics.com (“the domain name”) up until some time after 29 October 2020, when the domain name inadvertently lapsed and was acquired for resale by Dropcatch.com 1153 LLC (“Dropcatch”).
iii) Complainant used the domain name in association with a business relating to medical products for the eye and related research and development services. In the Complainant’s words:
Optobionics continues to use the mark in commerce in connection with its products such as the Artificial Silicon Retina (ASR) and services as well as research and development in vision restoration and vision prosthesis and consultation services to parties with and interested in retinal
degeneration that causes vision loss.
iv) Respondent acquired the domain name from Dropcatch.
v) Respondent acquired the domain name for the purposes of selling it back to Complainant at profit.
vi) It approached Respondent demanding that Respondent return the domain name to it, but Respondent requested compensation in the amount of USD $1,850.
vii) Respondent is using the domain name for a blog, but that the blog is effectively a sham intended to assist the Respondent protect whatever interest it may have in the domain name.
i) It acquired the domain name from Dropcatch in an auction where anyone could have bid on and/or acquired the domain name, including the Complainant.
ii) It did not register the domain name in order to target the Complainant but, rather, to publish a blog relating to health and wellbeing.
iii) Its offer of USD $1,850 to sell the domain name is fair given the premium cost it incurred to acquire the domain name from Dropcatch, costs associated with hosting the domain name, and time spent establishing the blog (which is in operation and has been since shortly after the domain name was acquired).
C. Additional Submissions
There are no additional relevant submissions.
The Panel’s relevant factual findings are:
i) Complainant is the owner of the trademark rights noted above;
ii) The domain name was associated with the Complainant’s Optobionics business, but lapsed;
iii) The Respondent acquired the domain name subsequent to it lapsing.
iv) The Respondent is using the domain name for a health-related blog.
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 Complainant’s US trademark registration no 2656817 OPTOBIONICS is identical to the domain name.
It is helpful for the Panel to deal with these limbs together, as in the Panel’s view the Complainant’s case on both is thin at best and the identical facts inform the Panel’s findings in respect of both criteria.
The Panel finds that there is no evidence in the Complainant’s submissions and/or that the Panel could find through its own review that could lead it to the conclusion that, on the balance of probabilities, the Respondent a) does not have a legitimate interest in the domain name and b) registered and used the domain name in bad faith.
This conclusion is based on the following considerations:
i) In supporting its case that a) the Respondent has no legitimate interest in the domain name and b) that the domain name was registered and used in bad faith, the burden is on the Complainant to show, inter alia, that the Respondent was targeting the Complainant somehow, or to at least shift the burden to the Respondent to establish that it was not targeting the Complainant.
The Complainant has not done so. There is no evidence whatsoever that allows the Panel to arrive at the conclusion that the Respondent did or ought to have known of the Complainant prior its registration of the domain name.
For example, there is nothing to demonstrate anything relating to the scope of the Complainant’s marketing and advertising, the geographic scope of the Complainant’s business, the success of its business or anything relating to its repute.
The mere fact that Respondent acquired the domain name from Dropcatch is, in this Panel’s view, insufficient to raise a presumption that it should have constructive knowledge of the Complainant and its rights.
Even if I am wrong about that, there is a basis for a presumption of equal force that if someone is acquiring a domain name from Dropcatch (or any backorder / aftermarket service), it is because that domain name lapsed and, therefore, is no longer of interest to the previous registrant. Most registrants will set important domain names to “auto-renew” if critical to their business.
For completeness, the Panel should add here that the Respondent does not say that it did not hear of or know of the Complainant and/or its use of the domain name prior to acquiring the domain name, but it also does not say that it did know of the Complainant prior to registering the domain name.
Accordingly, on the totality of the evidence, the case file itself does not demonstrate any basis on which the Panel can conclude that, on the balance of probabilities, the Respondent was targeting the Complainant with its registration of the domain name.
ii) The Respondent paid an elevated price for the domain name, and is using the domain name for a health-themed blog.
The Complainant argues and is correct in its position that the blog features a variety of topics that may seem “disjointed” and does not feature a single consistent theme, aside from “health” and/or “wellbeing”.
With this said, contrary to the Complainant’s assertions, this does not tip the balance one way or the other.
For example, it is possible that Respondent is using the blog to attract website traffic in order to generate revenue (such as advertising revenue). If this is the Respondent’s intention it a) is not by itself indicative of a want of legitimate interest and/or of bad faith use/registration, and b) is an intention that may be best-served by publishing articles on a number of disparate health topics in order for the Respondent to cast its net as widely as possible in respect of potential visitors to the blog.
The point is that there are reasons for the Respondent’s conduct that have nothing to do with bad faith as we understand it under the Policy, and that these reasons are equally if not more plausible than the Complainant’s assertions that the Respondent registered the domain name to profit from the Complainant’s previous use of the domain name and ongoing use of the OPTOBIONICS trade mark.
iii) Related to the above, and again noting Respondent’s use of the domain name, the Respondent is not targeting the Complainant or its customer base with its use of the domain name.
While, at a stretch, one could say that the Complainant’s website relates to health insofar as it marketed and promoted an “artificial silicon retina” and is related to vision prosthesis, the Respondent’s blog is much more general in nature dealing with popular health-related topics such as anxiety, DIY spa treatments, body cleanses and detox diets, botox and other similar subjects.
There is, therefore, no evidence of the Respondent proactively trying to use the Complainant’s trade mark and/or reputation (which reputation is not in evidence in any event) to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [its] web site or location or of a product or service on your web site or location.
The websites are distinguishable, the respective businesses are disparate in nature and non-competing, and it is difficult to see how any of the Complainant’s customers could be confused or misled within the meaning of the Policy.
iv) In terms of its attack on the legitimacy of the Respondent’s activities, Complainant asserts that the Respondent’s blog features an e-mail address that does not receive e-mail, email@example.com. Complainant e-mailed this address and received a bounce-back, enlivening further arguments that the Respondent’s activities are a sham.
Respondent correspondingly asserts that this e-mail address was automatically generated by the Wordpress template it used to create the blog, but provides no evidence of this.
In the Panel’s view, the fact that the e-mail address does not resolve to an actual account also does not tip the balance for the Complainant. The blog was operative for less than three months at the time that the Complainant made its assertions. The Panel notes that there are no assertions by the Complainant that firstname.lastname@example.org was used by Complainant when the domain name was under its control. The failure of a commonly-used (“hello@”) e-mail handle on a nascent blog to resolve to an actual e-mail account does not give rise to a presumption of bad faith or want of legitimate interest, particularly where there are no indications that the e-mail address, domain name and/or website are being used to imitate the Complainant.
v) Similarly, the Complainant argues that the “generic” nature of the blog suggests that the blog is not indicative of a legitimate interest and/or supports its case as to bad faith.
Respondent admittedly uses a free Wordpress template for the blog, however Wordpress is one of the most successful blogging platforms and its use does not by itself inculpate the Respondent.
Further, Respondent has other active blogs that use this template. The blog at optobionics.com was in its infancy when the Complaint was filed and, according to the Respondent, is still being developed.
The Panel accepts the Respondent’s position that the generic appearance of the blog should not be seen as indicative of a lack of legitimate interest and/or of bad faith in the circumstances.
vi) Complainant argues (and it is true) that the Respondent registered the domain name through Dropcatch.com, a service which identifies registered domain names that lapse and secures them for resale at a higher pricepoint than a registrant would otherwise pay for an unregistered domain name.
The Complainant may feel that Respondent’s use of Dropcatch.com is inherently problematic because the service could be used to prey on unfortunate owners of inadvertently-lapsed domain names.
However, the Panel is not prepared to make a determination adverse to the Respondent based primarily on its use of Dropcatch, which can also be used for a number of valid reasons.
Respondent paid a higher price for the domain name than it would have in the open market. Dropcatch had acquired the domain name, and made it available for third party acquisition at an auction, where the domain name was available not only to the Respondent but the marketplace generally, including the Complainant. The Respondent acquired the domain name through Dropcatch’s auction process.
It is in theory possible that before registering the domain name, the Respondent realized that there was a possibility that the previous owner might have let it lapse inadvertently and, in turn, might attempt to recover it from the Respondent in due course, perhaps enabling the Respondent to make a profit on the domain name.
However, there is simply no compelling evidence put forward by Complainant in support of this theory, and there is therefore no evidence available that enables the Panel to conclude that, on the balance of probabilities, Respondent targeted the Complainant in its registration of the domain name.
vii) Finally, Complainant asserts that after it contacted Respondent and demanded that Respondent return the domain name, Complainant made a counter-offer based on a) its actual cost of acquiring the domain name through the Dropcatch service, b) hosting expenses, and c) an hourly rate for time spent on the domain name and website to date.
Complainant notes that the Respondent offered to effect the transaction using escrow.com and in turn assets that Respondent’s proposal to use escrow.com is evidence of a “familiarity with quickly transferring domain names for a profit.”
The Panel is particularly surprised at this line of argument. This allegation is entirely speculative and there are a number of good faith reasons why the Respondent would want to effect a secure transaction in respect of the domain name. Surely the Complainant would itself have sought to use escrow.com or a similar service had it agreed to a monetary settlement.
For completeness, I should add that it is commonly held by UDRP Panels that when the Complainant initiates contact with a Respondent then – in the absence of other evidence indicating that the domain name was registered for the purposes of selling it back to the Complainant – a counter-offer by the Respondent is not itself indicative of bad faith use and/or registration.
By way of summary, it is the Panel’s view that the Complainant makes a number of assertions that are inconclusive or speculative.
The Panel is not satisfied that any of the individual assertions merit transferring the domain name away from the Respondent, nor that the totality of the assertions merits this result.
Rather, for every assertion made by the Complainant in respect of facts that it says are relevant to the dispute, there is a reasonable explanation for those facts that does not militate towards a finding of lack of legitimate interest and/or of bad faith.
Importantly, and fundamentally, the Complainant has offered no reason why the Respondent did, would have, could have or should have known about it before registering the domain name, and offers no evidence as to why the Panel should, on the balance of probabilities, find that it did even in the absence of direct evidence on the point.
By way of example, there is no evidence as to marketing, sales, website traffic and/or geographic scope of distribution of the Complainant’s products/services.
In fact, while a significant part of the Complainant’s case depends on the assertion that it was the previous owner of the domain name at issue and, therefore, that the Respondent is taking advantage of the domain name lapsing, the Complainant has failed to submit any evidence whatsoever of its previous ownership of the domain name (a simple historical Whois record would have sufficed but is absent). Complainant does submit a screenshot of the website that loaded at the domain name prior to it lapsing, but this does not feature the URL of the website and, therefore, by itself says nothing as to the identity of the actual registrant prior to Respondent’s acquisition of the domain name. The Panel therefore exercised its discretion to review and verify this (effectively bald) assertion independently, rather than summarily dismissing the Complaint.
Circumstances where an active domain name lapses inadvertently are unfortunate. If this was the fault of a third party (Complainant alleges that its registrar “promised” it “would protect thoptobionics.com name” but failed to do so, resulting in the domain lapsing) then Complainant may have other recourse.
However, in the present circumstances, and based on the evidence made available to the Panel, the UDRP is not the appropriate mechanism for the Complainant to find satisfaction.
Neither party has commented in respect of reverse domain name hijacking. I will therefore stop short of that point and find simply that the Complainant has not satisfied the relevant criteria for transfer and/or cancellation of the domain name which, consequently, should remain with Respondent.
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 <optobionics.com> domain name REMAIN WITH Respondent.
Aaron B. Newell Panelist
Dated: November 23, 2021
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