Indoor Billboard/Northwest, Inc. v. Domain Administrator / Synergy Technologies, LLC
Claim Number: FA2111001973863
Complainant is Indoor Billboard/Northwest, Inc. (“Complainant”), represented by Shawn M. Lindsay, Oregon, USA. Respondent is Domain Administrator / Synergy Technologies, LLC (“Respondent”), represented by Jason Schaeffer of ESQwire.com, P.C. The Domain Name Law Firm, New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <indoorbillboard.com>, registered with Epik Inc.
Each 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 (chair), Gerald M. Levine and Honorable Bruce E. Meyerson (Ret.), panelists.
Complainant submitted a Complaint to the Forum electronically on November 18, 2021; the Forum received payment on November 18, 2021.
On November 22, 2021, Epik Inc. confirmed by e-mail to the Forum that the <indoorbillboard.com> domain name is registered with Epik Inc. and that Respondent is the current registrant of the name. Epik Inc. has verified that Respondent is bound by the Epik 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 29, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 31, 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 29, 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 December 29, 2021.
On 5 January 2022, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Aaron B. Newell (chair), Gerald M. Levine and Honorable Bruce E. Meyerson, Esq., as panelists.
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.
i) that it is the owner of various United States registered trademarks, including no 4953962 INDOOR BILLBOARD, which are confusingly similar with the domain name;
ii) that it has “received notoriety” in its INDOOR BILLBOARD name in respect of its business, “including distributorship services”, and that it is unaware of anyone else using the “INDOOR BILLBOARD” name with its products and services;
iii) in terms of the question of Respondent’s legitimate interest, that:
Respondent has been using the offending domain for years. It appears that Registrant’s offending domain is primarily for the purpose of selling, renting, or otherwise preventing Complainant of the mark. Respondent’s use of “indoorbillboard.com” serves no purpose other than profiting off of Complainant’s brand and goodwill. Respondent is not using the offending domain name in connection with any bona fide offering of goods or services, and has no legitimate noncommercial or fair use for the indoorbillboard.com domain name. Respondent’s only use is to disrupt the business of Complainant.
iv) in terms of the question of Respondent’s alleged bad faith use and registration, that:
use of the “Indoor Billboard” trademark by Respondent in the manner complained of is not authorized by the trademark owner, Complainant. The information in this Complaint is accurate. By using the domain name, Respondent has intentionally attempted to attract, possibly for commercial gain, Internet users to Respondent’s website, by creating a confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Registrant’s offending domain is primarily for the purpose of selling, renting, or otherwise preventing Complainant of the mark.
Respondent’s assertions can be summarized as follows:
i) aside from its trademark registration, Complainant provides no adequate supporting evidence that Respondent had actual knowledge of the mark or was targeting it when it acquired the disputed domain name almost a decade ago;
ii) numerous parties use the name INDOOR BILLBOARD in generic and/or descriptive ways;
iii) it registered the domain name at a competitive auction. It registered the domain name for its inherent descriptive / informative value. There is no evidence that it targeted and/or was aware of Complainant at the time of registering the domain name. Use of the domain name was to load placeholder content that had nothing to do with Complainant;
iv) Complainant is engaging in reverse domain name hijacking.
C. Additional Submissions
There are no relevant additional submissions of note.
The Panel finds:
i) that Complainant is in fact the owner of the trademark registration noted above;
ii) that Complainant provides no supporting evidence or further argument in respect of Complainant’s assertions as to Respondent’s rights or legitimate interests in the disputed domain name and/or its bad faith registration or use;
iii) that numerous unrelated parties do in fact use the name INDOOR BILLBOARD to describe a type of indoor advertising, particularly on signage and panels on walls and other surfaces in commercial establishments, particularly in restrooms, changing rooms and/or waiting areas.
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 has demonstrated and Respondent does not contest that it is the owner of a registered United States trademark. It has also demonstrated that the disputed domain name is identical to the registered mark. As the “.com” extension is regarded merely as a functional necessity it is not considered further. Accordingly, Complainant satisfies the 4(a)(i) requirement.
In the circumstances it is appropriate to deal with these aspects together.
Notably although Complainant provides evidence of its USPTO registration certificates for its invoked trademark rights, and although those rights predate Respondent’s acquisition of the disputed domain name, it provides no evidence or even explanation of its assertions in A iii) and vi) above. In fact, these two paragraphs reproduce the totality of the Complainant’s submission on legitimate interest and bad faith. The Complaint is essentially composed of unsupported assertions and only makes unsubstantiated, bald allegations.
Most notably, there is no evidence that i) raises a prima facie case sufficient to shift the burden to Respondent to demonstrate its rights or legitimate interest, or ii) that Respondent had any knowledge of Complainant or its mark when it registered the disputed domain names almost a decade ago, or then or since attempted in any way to target, the Complainant.
In that connection, while Complainant alleges notoriety in its INDOOR BILLBOARD name, Complainant proffers no evidence to demonstrate any reputation at all in this name either a decade ago or currently.
Respondent, by contrast, provides sufficient evidence to allow the Panel to find that Respondent registered the domain name for its inherent value as a descriptive term.
By way of example, Respondent makes clear that its business involves the acquisition of domain names that may have inherent value because of their generic meaning (including solarbatteries.com, culturaldiversity.com, thrillrides.com, dinnershow.com, debtservices.com, electionlaw.com, learnhindi.com and others).
It has also demonstrated that “INDOOR BILLBOARDS” is used by a number of businesses and industry organizations to describe a specific type of advertising.
Therefore, there is no evidence of bad faith use and/or registration.
Accordingly the Complaint fails.
Respondent requests that the Panel make a determination that the Complainant has engaged in reverse domain name hijacking.
Complainant asserts that it is “unaware of anyone else using the ‘INDOOR BILLBOARD’ name with its products and services.”.
The inference is that a) Complainant enjoys some form of exclusivity in the INDOOR BILLBOARDS name and b) Respondent must have been targeting the Complainant when it registered the domain name.
The Panel notes that Complainant offers, inter alia, custom logo mats and sanitary ware for businesses.
Respondent’s evidence persuasively demonstrates that these are exactly the types of items that numerous businesses use as and/or refer to as “indoor billboards”.
In other words, in its common usage, the term “indoor billboard” is a generic phrase used to refer to a number of the products provided by the Complainant in its day-to-day business. Indeed, Respondent has provided persuasive evidence not only of third- party businesses using the name “indoor billboards” as honest descriptions of their activities, but also of an industry body called The Indoor Billboard Advertising Association that uses the tagline Helping Advertisers Get Indoors – Indoor and Restroom place based media provided by approved IBAA Members Firms since 1998 and appears to hold an annual conference for those in the “indoor billboard” industry.
The Panel therefore finds it difficult to accept that the Complainant was in fact “unaware of anyone else using the ‘INDOOR BILLBOARD’ name with its products and services” as it alleges.
In respect of the Respondent’s assertions as to reverse domain name hijacking, the Panel notes that Complainant is represented by counsel, and that in UDRP proceedings represented parties are often held to a higher standard of conduct, especially in respect of reverse domain name hijacking (see WIPO Overview 3.0, section 4.6: “Given the undertakings in paragraphs 3(b)(xiv) and (xiv) of the UDRP Rules, some panels have held that a represented complainant should be held to a higher standard”; see also Electrosoft Services, Inc. v. TechOps / SyncPoint, FA211000 1969515 (Forum December 9, 2021) (<electrosoft.com>. “Panels have traditionally held parties represented by counsel to a higher standard especially when deciding whether to make a finding of RDNH.” )
The Panel also notes that it is critical that parties to a UDRP dispute are careful with and forthright in their submissions. See Deutsche Post AG v. NJDomains, D2006-0001 (WIPO March 1, 2006) (“[The Panel] wishes to place on record its firm view that a complainant should not commence UDRP proceeding unless believing on reasonable grounds that the Complaint is justified and that the allegations made against the respondent are legitimate and based on fact.”)). See also LeBoeuf Corporation v. Domain Admin, FA1601001655243 (Forum February 11, 2016) (“Given the nature of the administrative proceedings under the Policy as proceedings on the written submissions and supporting papers only, such partial disclosure cannot be condoned and warrants a finding that the Complainant has acted in bad faith in bringing this proceeding.”).
It is clear to the Panel that Complainant has, despite having the benefit of counsel, pursued its case a) without any supporting evidence in respect of Respondent’s rights/legitimate interest, and b) without any supporting evidence in respect of Respondent’s alleged bad faith, and importantly c) by making assertions that appear to be inaccurate in a way that, unchecked by the Respondent, could have given Complainant an unfair advantage in respect of the outcome of the proceedings.
Accordingly, in the view of this Panel, Complainant has abused the UDRP and has engaged in reverse domain name hijacking.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Further, the record should show that the Panel has found that the Respondent has engaged in reverse domain name hijacking.
Accordingly, it is Ordered that the <indoorbillboard.com> domain name REMAIN WITH Respondent.
Aaron B. Newell (chair), Gerald M. Levine and Honorable Bruce E. Meyerson (Ret.),[i] panelists.
Dated: January 20, 2022
[i] I agree only with the outcome of this Decision.
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