Ubiquiti Inc. v. Reilly Chase / Locklin Networks, LLC
Claim Number: FA2110001970506
Complainant is Ubiquiti Inc. (“Complainant”), represented by Gregory J. Chinlund of Marshall, Gerstein & Borun LLP, Illinois, USA. Respondent is Reilly Chase / Locklin Networks, LLC (“Respondent”), represented by Feras Mousilli of Lloyd & Mousilli, Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ubiquiti-networks.com>, which is registered with CloudFlare, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 25, 2021; the Forum received payment on October 25, 2021.
On October 27, 2021, CloudFlare, Inc. confirmed by e-mail to the Forum that the <ubiquiti-networks.com> domain name is registered with CloudFlare, Inc. and that Respondent is the current registrant of the name. CloudFlare, Inc. has verified that Respondent is bound by the CloudFlare, 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 November 2, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 26, 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 November 2, 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.
Under date of December 1, 2021, Complainant filed an Additional Submission, which has been made part of the record and received consideration in the Panel’s deliberations.
Also on December 1, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
In rebuttal of Complainant’s Additional Submission, Respondent, under date of December 4, 2021, filed its own Additional Submission which filing has been taken into account in the Panel’s decision. As to Respondent’s initial Response, see below (Preliminary Issue: Deficient Response).
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: DEFICIENT RESPONSE
Respondent filed a Response to the Complaint on November 29, 2021, three days after the deadline of November 26, 2021, set by Rule 5(a) and the Forum. In light of Respondent’s plausible explanation, given in communications with the Forum, for the brief delay in filing its Response, and in view of the fact that it appears from the record that Complainant received a copy of the Response within the time allowed by the Rules for service of the Response upon it and has not been prejudiced by the delay, the Panel has, in the interests of justice, considered the Response in full in reaching its decision. See, for example, Victoria’s Secret Stores Brand Mgmt., Inc. v. LaFond, FA 1362225 (Forum January 7, 2011) (concluding that, while a filed response was deficient under the Rules, “the Panel has nonetheless decided to consider the deficient Response.”).
In its Complaint and Additional Submission, Complainant alleges, inter alia, that:
Complainant makes and sells wireless data communication and wired products for both commercial and residential networks.
Complainant holds a registration for the UBIQUITI NETWORKS trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 4,524,112, registered May 6, 2014.
Complainant previously owned the domain name <ubiquiti-networks.com> from 2004 to 2006.
Respondent registered the domain name <ubiquiti-networks.com> on April 30, 2019.
The domain name is both substantively identical and confusingly similar to Complainant’s UBIQUITI NETWORKS mark.
Respondent operates a cloud hosting services business using software Complainant provides to consumers without charge.
That software serves a subset of Complainant’s overall product offerings.
Complainant has no formal business relationship with Respondent.
Respondent has not received permission from Complainant to use its UBIQUITI NETWORKS mark other than as allowed under the legal doctrine of fair use, which permits Respondent to identify accurately the products for which it provides cloud hosting services.
On October 7, 2021, attorneys representing Complainant contacted Respondent via e-mail to inquire about the domain name.
Respondent has not been commonly known by the domain name.
Respondent has not been authorized by Complainant to use its UBIQUITI NETWORKS mark.
Respondent is offering the domain name for sale for a price vastly in excess of its out-of-pocket costs to procure the domain.
Respondent does not have any rights to or legitimate interests in the domain name.
Respondent has exhibited a pattern of bad faith registration of domain names.
Respondent’s use of the domain name disrupts Complainant’s business, including by its recent employment to operate an email server configured to intercept email communications intended for Complainant.
Respondent knew of Complainant’s rights in the UBIQUITI NETWORKS mark when it registered the domain name.
Respondent both registered and now uses the domain name in bad faith.
In its Response and Additional Submission, Respondent asserts, among other things, that:
Respondent provides cloud-based hosting services to Internet users, and, in pursuit of its business model, uses software provided by Complainant to enable delivery of its services with respect to certain of Complainant’s branded products.
Respondent has rights to and legitimate interests in the contested <ubiquiti-networks.com> domain name because Respondent’s use of the domain name constitutes a legally fair use in that it identifies the specific products for which Respondent provides cloud hosting services.
Respondent’s use of the domain name has not been in competition with the business of Complainant but in support of it.
Complainant abandoned the domain name in 2006, and, years later, a third party unrelated to Respondent acquired it legitimately.
That third party put the domain name up for sale by public auction in April of 2019.
Approximately nine months later, during which period Complainant failed to acquire it through the auction process, Respondent purchased the domain name on January 20, 2020, about thirteen years after Complainant had abandoned it.
Respondent’s offer to sell the domain name to Complainant came only after Complainant’s attorneys contacted Respondent to inquire about it.
Respondent has a legitimate interest in using the domain name.
Respondent has not registered or used the domain name in bad faith.
Respondent has not engaged in a pattern of bad faith registration of domain names.
Respondent has, however, acquired the domain names of several failed competitors.
Complainant has failed to prove that Respondent registered the challenged 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 to or legitimate interests in respect of the domain name; and
(3) the same domain name has been registered and is being used by Respondent in bad faith.
The Panel is entitled to accept all reasonable allegations set forth in the Complaint. However, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See, for example, WIPO Jurisprudential Overview 3.0 at¶4.3. See also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
In the ordinary course, a UDRP panel takes up the issues presented by Policy ¶ 4(a) seriatim, in the order in which they appear in the Policy. However, because Complainant is obliged by the terms of the Policy to prove all of the three points set out immediately above, failure to prove any of them is fatal to Complainant’s cause. And, in that event, it becomes unnecessary for the Panel to address the others. See, for example, Post.Com Limited v. Peter Neilson, D2002-0690 (WIPO September 17, 2002):
In this Panel’s view, the Complainant has not established … that the Domain Name was registered by the Respondent in bad faith.... In the light of this finding the Panel does not need to consider paragraphs 4(a)(i) and (ii) of the Policy.
In light of this principle, our inquiry begins with the question of bad faith arising under Policy ¶ 4(a)(iii). And, in approaching this question, we first note that the requirement for Complainant to prove bad faith on the part of Respondent is stated in the conjunctive, so that Complainant must show both that Respondent is now using the contested domain name in bad faith, and that Respondent registered the domain name in bad faith when that occurred some time ago.
For this reason, we will first consider whether Complainant has provided adequate evidence that Respondent registered the domain name in bad faith. If it has not done so, there will be no need for us to inquire whether the domain name is now being used in bad faith or whether the other two prongs of the Policy, those found in ¶’s 4(a)(i) and (ii), have been satisfied by Complainant’s proofs. The pertinent facts, as spelled out in the parties’ pleadings, are these:
Complainant alleges that, from 2004 to 2006, it was the owner of the challenged <ubiquiti-networks.com> domain name, and that Respondent did not register the domain name until April 30, 2019, about thirteen years after Complainant had surrendered it. Complainant also alleges that Respondent may, under the legal doctrine of fair use, employ Complainant’s UBIQUITI NETWORKS trademark to identify the products for which Respondent provides cloud hosting services. And, Complainant concedes, on October 7, 2021, attorneys representing it, and for the first time, contacted Respondent via e-mail to inquire about the domain name.
Respondent, for its part, confirms that it has, since the domain name was registered by it, employed the domain name, which contains Complainant’s mark in its entirety, to provide cloud-based hosting services to Internet users. Respondent further contends that, in pursuit of this business model, it has used software provided by Complainant to enable delivery of its services with respect to certain of Complainant’s branded products, which constitutes allowable fair use of the mark.
Respondent goes on to assert that, sometime after Complainant ceased its registration of the domain name, an unidentified third party acquired it legitimately and held it until that party put it up for public auction in April of 2019. Thereafter, Respondent claims, about nine months passed during which Complainant could have, but did not, purchase the domain name for itself through the auction process, at which point Respondent obtained the domain name from the third-party auction seller. Respondent concludes that this history, which Complainant does not deny, means that Complainant had abandoned the domain name, so that it was freely available for Respondent’s fair use.
Finally, Respondent stresses that its offer to sell the domain name to Complainant came only after Complainant’s representatives had contacted Respondent, in October of 2021, to inquire about it. Complainant does not deny this contention.
From all of this we conclude that Complainant has failed to demonstrate that Respondent registered the disputed <ubiquiti-networks.com> domain name in bad faith. Insofar as the record shows, the domain name was abandoned by Complainant and left in the public domain for more than a decade before Respondent bought it at public auction. The record thus makes clear that Respondent did not register the domain name in order to prevent Complainant from doing so on its own behalf (see Policy ¶ 4(b)(ii)). This, without more, defeats Complainant’s case for registration of the domain name in bad faith. See, for example, Future France v. Name Administration Inc., D2008-1422 (WIPO December 8, 2008):
[B]ad faith registration is a question of intent. In the case of the disputed domain name… >, the Respondent claims to have bought it at an auction of abandoned domain names…. There is no assertion by the Complainant that this abandonment was in error or in any way inadvertent. In these circumstances, the Panel believes that the Complainant cannot sustain a contention that the Respondent bought (or indeed registered) this disputed domain name in bad faith.
Moreover, Complainant concedes that Respondent has, apparently from the time of its registration more than two years ago, employed the domain name in pursuit of a fair use, of the kind commonly called “nominative,” as allowed by law. The Amended Complaint, dated November 1, 2021, describes the situation thus (bottom of page 4):
[Complainant] is aware that …[Respondent]… provides its own cloud hosting services (using software…[Complainant]… provides to its consumers for free) which serve … [Complainant’s]… overall product offerings, limited to products using …[Complainant’s]… registered trademark….
Complainant thus admits that Respondent did not register the domain name for the purpose of disrupting Complainant’s business (see Policy ¶ 4(b)(iii)) but rather with the intent to support both that business and its own legitimate interests by servicing Complainant’s products in the hands of Complainant’s customers. That Respondent did so for more than two years after registering the domain name, taken in light of the fact that negotiations regarding a possible sale of the domain name to Complainant did not materialize until after Complainant, through legal counsel, initiated contact between them, means that Respondent also did not register the domain name for the purpose of selling it to Complainant or one of its competitors (see Policy ¶ 4(b)(i)).
The final provision of Policy ¶ 4(b), that found in subsection (iv), is not on its face germane here as it relates expressly to post-registration use of domain names rather than to conditions existing or events occurring at the time of registration. But, if Policy ¶ 4(b)(iv) were pertinent to this discussion, it would be met squarely, on the facts before us, by the defense of fair use conceded by Complainant.
This, then, exhausts the catalogue of bad faith factors spelled out in Policy ¶ 4(b). While our inquiry necessarily ends here, it remains open to Complainant to pursue its remaining grievances with Respondent, as detailed in the Complaint, in a civil court of competent jurisdiction.
Complainant having failed to establish one of the essential elements required to be proven under the ICANN Policy, namely that the challenged domain name was registered in bad faith, the Panel concludes that relief requested must be, and it is hereby, DENIED.
Accordingly, it is Ordered that the <ubiquiti-networks.com> domain name REMAIN WITH Respondent.
Terry F. Peppard, Panelist
Dated: December 9, 2021
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