Hyperdoc Inc. v. Dan Siroker
Claim Number: FA2111001972428
Complainant is Hyperdoc Inc. (“Complainant”), represented by Rajesh Fotedar of Cognition IP P.C., California, USA. Respondent is Dan Siroker (“Respondent”), represented by Aaron Hendelman of Wilson Sonsini Goodrich & Rosati, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <perfectrecall.com> (the “Domain Name”), registered with Google LLC.
The undersigned certify that they each have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Mr Clive L Elliott Q.C. as Chair, and Ms Anne M. Wallace Q.C. and Mr David H. Bernstein, as Panelists.
Complainant submitted a Complaint to the Forum electronically on November 8, 2021; the Forum received payment on November 8, 2021.
On November 9, 2021, Google LLC confirmed by e-mail to the Forum that the Domain Name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 November 10, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 30, 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 postmaster@perfectrecall.com. Also on November 10, 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 November 30, 2021.
On December 4, 2021, Complainant submitted an additional submission and annexure.
On December 8, 2021, Respondent submitted an additional submission.
On December 7, 2021, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Mr Clive L Elliott Q.C. as Chair, and Ms Anne M. Wallace Q.C. and Mr David H. Bernstein, as Panelists.
On December 14, 2021, Respondent submitted another supplemental submission, and on December 14, 2021, Complainant submitted an additional submission. On December 15, Respondent submitted yet another supplemental submission.
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.
A. Complainant
Complainant is a software company. It offers services that feature software for recording and transcription of online video conference events, editing recorded video event files and sharing edited versions of the video event files with others.
Complainant uses the web domain <https://perfectrecall.app>, which resolves to Complainant’s homepage. This provides information about Complainant’s products and services. The web domain for Complainant’s homepage was obtained on July 13, 2020. The following day, on July 14, 2020, Complainant posted an announcement on the site https://bookface.ycombinator.com (“Bookface”) to advertise a product launch of its “Perfect Recall” software service. According to Complainant, Bookface is an invitation-only social network that is tailored for a community of tech entrepreneurs that are alumni of the selective Y Combinator startup accelerator program. The Bookface announcement made frequent use of Complainant’s Mark.
Complainant asserts that Scribe AI, Inc. (“Scribe”) is a direct competitor of Complainant and that Respondent is the Founder and CEO of Scribe and had a member account on Bookface when Complainant posted its Bookface product launch announcement.
The Domain Name was registered on August 25, 2020 and resolves directly to the domain name of https://scribe.ai, which is operated as Scribe’s homepage.
Complainant asserts that it has never licensed or otherwise authorized Respondent or Scribe to use Complainant’s Mark, and that it established its rights to Complainant’s Mark via its Bookface announcement on July 14, 2020.
Complainant argues that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights, with the only difference being the gTLD, and that Respondent acquired the Domain Name 43 days after Complainant established its rights to Complainant’s Mark.
Complainant contends that there is no bona fide offering of goods and services by Respondent, but rather the Domain Name resolves to a competitor’s homepage which develops software in direct competition with that of Complainant. Complainant further contends that Respondent registered the Domain Name in bad faith in order to capitalize on Complainant’s pre-registration and post-registration trademark rights to attract Internet users to Scribe’s homepage.
B. Respondent
Respondent denies the allegation that he registered the Domain Name in bad faith and states that he had no knowledge of Complainant at the time he registered the Domain Name, nor did he see the Bookface announcement.
Respondent contends that he registered the Domain Name, among many others, because of its descriptive quality for his own contemplated business with a vision for a product that would record and transcribe a video conference meeting with “perfect recall” – a term already broadly used with memory-enhancing technology. Respondent states he registered the Domain Name with only his own business plans in mind and refutes the allegations of bad faith registration.
Respondent asserts that he is a seasoned entrepreneur and technology industry executive and that in 2020 he founded Scribe, which provides a software product that transforms meetings into instantly searchable and shareable video and text.
Respondent contends that, following registration of the Domain Name, he used the term “perfect recall” in describing his vision for the new company, including in emails and pitch decks.
Respondent states that, in November 2020, he was evaluating potential company names for his new business and during that process he first became aware of Complainant. He decided to learn more about Complainant by signing up for Complainant’s “Perfect Recall” product. Through the onboarding for Complainant’s product, he met Complainant’s CEO and in their discussions both remarked on how coincidental it was that they were simultaneously launching a new product for “perfect recall” of meetings.
Respondent states that, since receiving notice of this Complaint, he has redirected the Domain Name to a webpage comparing the Scribe and Complainant offerings, and that Scribe filed a petition with the USPTO seeking to invalidate Complainant’s registration of Complainant’s Mark on the ground that it is merely descriptive of Complainant’s offerings and insufficiently distinctive for registration.
Respondent states that he registered and has been using the Domain Name for legitimate purposes consistent with a pattern of bona fide activity, namely relying on the common meaning of the term to describe Scribe’s business offerings. Respondent submits that Complainant’s Mark is not famous as contended, but merely descriptive.
SUPPLEMENTAL FILINGS
On December 9, 2021, the Forum confirmed that each party was entitled to submit an additional submission, though it is always up to the Panel’s discretion as to whether to accept such supplemental submissions. See generally Bar Products.com, Inc. v. RegisterFly.com, File No. 829161 (Forum Jan. 9, 2007) (declining to consider Complainant's reply because it adds nothing of substance to the record and does not address any arguments of Respondent that could not have been anticipated by the Complainant). Both parties filed an additional or supplemental submission on December 14, 2021. Respondent filed yet another supplemental submission on December 15, 2021.
Complainant, in its additional submissions, disagrees with Respondent’s argument that Complainant’s Mark is merely descriptive and suggests that Respondent’s own evidence contradicts its arguments with respect to descriptiveness and assertions of fair use. Complainant also asserts that Respondent has provided evidence that shows Respondent’s bad faith registration of the Domain Name with Respondent engaging in a pattern of conduct amounting to wilful blindness by way of its bulk domain registrations.
Respondent argued in its first supplemental filing that Complainant has raised a straw-man argument about the nature of registered US trademark rights and that Complainant had engaged in a confusing analysis of dictionary definitions and trademark distinctiveness.
Complainant in turn relied on evidence of Respondent’s online marketing activities which Complainant states came to its attention after the filing of Complainant’s Additional Written Submission of December 4, 2021. It argued that this evidence showed Respondent characterizing Complainant’s service as one in which information would be trapped and forgotten in meetings.
On December 15, 2021, Respondent filed yet another additional submission. Respondent argues that the Panel should disregard Complainant’s December 14 supplemental filing because its arguments are premised upon information that was available to Complainant no later than November 30, 2021. Substantively, Respondent responds that (1) after receiving the Complaint, it ensured no consumer would be confused about affiliation between Complainant’s and Respondent’s companies by redirecting the Domain Name to a product comparison webpage; and (2) “perfect recall” may be descriptive of Complainant’s services despite Complainant’s product “forgetting” some details.
The Panel accepts each of the parties’ first supplemental submission but declines to consider the additional ones. The subsequent submissions mostly reargued points that were already covered or that should have been addressed in the parties initial and first supplemental submissions. Although some of the points made in the subsequent submissions may have been new, the UDRP is intended to be an efficient mechanism for resolution of domain name disputes, and does not contemplate repeated replies, sur-replies and sur-sur-replies. The Panel had a sufficient grasp of the facts and law from the parties’ first two submissions. Because the Panel is able to resolve this dispute based on the first two submissions from each party, and because the subsequent submissions would not in any event change the Panel’s decision, the Panel will disregard the parties December 14 and 15 submissions.
For the reasons set out below the Panel finds in favour of Complainant and orders transfer of the Domain Name.
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 by a preponderance of the evidence 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 is the owner of Complainant’s Mark which was registered at the USPTO on October 19, 2020. Registration with the USPTO is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i).
Complainant also claims common law rights in Complainant’s Mark. Common law rights may suffice in lieu of a registered mark, and may be demonstrated through various factors. Complainant claims it established its rights in Complainant’s Mark when it posted an announcement of its mark branded software service. The Panel is satisfied that such announcement, considered in context, is sufficient to establish some degree of common law rights under Policy ¶ 4(a)(i) and the United States doctrine of analogous trademark rights.
The Respondent asserts that the Domain Name cannot function as a trademark because it is merely descriptive, and notes that it has filed a petition to cancel Complainant’s trademark registration on this ground. Complainant’s registration is prima facie evidence of the mark’s validity under United States law. “Given the nature of these UDRP proceedings, a Panel should not overturn that presumption of validity (which, by necessity, includes the Trademark Office’s conclusion at the time of the registration that the mark was neither generic nor merely descriptive, but rather was distinctive) absent compelling evidence.” Electronic Commerce Media, Inc. v. Taos Mountain, File No. 95344 (Forum Oct. 11, 2000). Respondent has not come forward with such evidence here. The term “perfect recall” does not describe a service that transcribes conferences. The Panel therefore rejects Respondent’s argument and finds that Complainant has established trademark rights.
The Domain Name incorporates Complainant’s registered trademark, “Perfect Recall,” in its entirety. Thus, the first element of Paragraph 4(a) is satisfied: the Domain Name is identical or confusingly similar to a mark in which Complainant has rights.
Complainant argues that Respondent does not use the Domain Name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Complainant provides screenshots of the Domain Name resolving to a website, which offers similar, arguably competing software services.
As a threshold issue under this ground, the Panel considers that Respondent’s claim to have rights or legitimate interests in the Domain Name is questionable because (1) Respondent’s use of the mark infringed on Complainant’s rights; and (2) Respondent’s use was not, on the face of it, fair use. In the Panel’s view, it is apparent that one of these marks is infringing as they provide the same services under the same mark. Therefore, the key question is priority – who has the senior rights?
Respondent argues that he has rights superior to Complainant’s rights because he registered the Domain Name prior to Complainant’s first use of the mark in commerce. Complainant’s July 14, 2020 use of its trademark in its Bookface product launch announcement, however, appears to give Complainant priority because, under United States trademark law, Complainant established rights through analogous use. According to Gilson on Trademarks § 3.04[4][a], “A party may have priority of use without actual, commercial use of a mark in the ordinary course of trade if it has used a mark in a way that is analogous to trademark use . . . .”
Respondent’s trademark rights, if any, would arise upon its first use of the mark in commerce, not upon the registration of the Domain Name. The record indicates Respondent did not use the mark until February 2021, when Respondent’s website went live (and there is no indication of public announcements before then that might establish analogous use). But, by February 2021, Respondent not only knew of Complainant’s use of the mark, but Respondent had also personally purchased Complainant’s product and used it. In this regard, Respondent notes that, in November 2020, he signed up for Complainant’s Product, attended an onboarding session and spoke to Complainant’s CEO about what he described as the “coincidence” of their similar business ventures. However, in the Panel’s view, by putting the Domain Name into use with actual knowledge of Complainant’s use of its trademark, Respondent infringed on Complainant’s common law trademark rights. It is axiomatic that “a use cannot be deemed bona fide if the disputed domain name[] constitute[s] trademark infringement.” On AG, On Clouds GmbH v. Nguyen Luu, Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Vuong Hoang, AN NGUYEN, NEO CORP., and Ngoc Tam Nguyen, WIPO Case No. D2021-1714; Schouten Industries B.V. and Schouten Products B.V. v. Canadian Soylife Health Co., Forum Claim No. FA0303000149188 (where respondent adopted domain name with actual knowledge of complainant’s trademark and used the domain name in a way likely to cause confusion, the offering of services under such a mark is infringing, not bona fide).
Respondent argues against this conclusion, submitting that he only makes fair use of Complainant’s Mark, which mark is descriptive. However, the Panel does not accept this argument. As noted above, a descriptive mark is one that plainly describes the product or service it relates to with no need for any imagination to connect the trademark with its related product or service. The record contains no evidence that would support the bald assertion that “Perfect Recall” is descriptive of an artificial intelligence software that transcribes records of meetings, regardless of whether information would be trapped and forgotten in such meetings.
Thus, the second element of Paragraph 4(a) is satisfied: Complainant has established by the preponderance of the evidence that Respondent has neither rights nor legitimate interests in the Domain Name.
Complainant argues that Respondent attracts internet users for commercial gain. Under Policy ¶ 4(b)(iv), using a disputed domain name to host competing content is generally considered evidence of bad faith attraction for commercial gain.
Because Respondent first used the Domain Name for a competing venture long after Complainant established its trademark rights, the Panel is satisfied that Respondent’s use of the Domain Name was in bad faith. The more difficult question is whether the registration was in bad faith.
Respondent asserts in his declaration that he was not aware of Complainant’s Mark or Complainant’s July 2020 announcement when he registered the Domain Name in August 2020. If that assertion is accepted, it would dispose of the bad faith registration issue. However, the Panel is not satisfied that Respondent’s declaration rings true. First, the timing is suspicious. As noted above, the Panel takes the view that “Perfect Recall” is not at all descriptive for this service. Accordingly, it strains credulity to conclude that Respondent came up with that name on his own just a month after Complainant publicly announced its intention to use that name for its nearly identical service.
Secondly, the parties operate in the same or a similar industry. In addition to offering competing services, Respondent appears to be a member of or have an account on a common alumni social network and the product launch announcement on Bookface was 43 days prior to Respondent's acquisition of the Domain Name.
Thirdly, Respondent squandered his credibility in two ways: (1) Respondent repeatedly asserts that the Complainant’s mark “Perfect Recall” is descriptive—but this flies in the face of the USPTO’s decision to register Complainant’s trademark on the Principal Register—and Respondent has not provided any factual evidence that supports finding the mark is descriptive; and (2) Respondent requests that the Panel find Complainant liable for reverse domain name hijacking, which is a meritless request given the strength of the Complaint and the credibility of the arguments it presents.
For these reasons the Panel considers that Respondent’s declaration lacks credibility and it rejects Respondent’s claim to have lacked actual knowledge of Complainant’s trademark at the time of registration. The likelihood of Respondent having such knowledge at the time of registration of the Domain Name is supported by the fact that the parties supply a similar competitive product. This not only points to a motive to choose a similar name but it indicates that Respondent was in all probability aware of the key players in the market and what they were up to at the time the Domain Name was registered.
Finally, the Panel considers that there is merit in the argument raised by Complainant that it has rights both pre-registration and post-registration, based on the principle that a competitor who deliberately tries to steal a mark of another, by misappropriating a nascent trademark right, can be stripped of that right. In the present context, Respondent’s registration does not amount to good faith conduct.
Accordingly, the third element of Paragraph 4(a) is satisfied: Respondent registered and has used the Domain Name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the Domain Name <perfectrecall.com> be TRANSFERRED from Respondent to Complainant.
Clive L Elliott Q.C. Chair of the Panel,
And Anne M. Wallace Q.C. and Mr David H. Bernstein, as Panelists.
Dated: December 21, 2021
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