Vacation Pig, LLC d.b.a OOVO v. elmer rubio
Claim Number: FA2201001981434
Complainant is Vacation Pig, LLC d.b.a OOVO (“Complainant”) Wyoming, USA. Respondent is elmer rubio (“Respondent”), represented by Dmitriy Chyrkin of Law Office of Dmitriy Chyrkin, Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <oovo.com>, registered with GoDaddy.com, 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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 21, 2022; the Forum received payment on January 21, 2022.
On January 24, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <oovo.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 January 28, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 17, 2022 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@oovo.com. Also on January 28, 2022, 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 February 2, 2022.
Complainant’s Additional Submission was received on February 3, 2022; Respondent’s Second Additional Written Submission In Response To Complainant’s Additional Written Submission was received on February 8, 2022, and Complainant’s Second Additional Submission was also received on February 8, 2022.
On February 8, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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.
A. Complainant
Complainant, Vacation Pig, LLC dba OOVO, markets and sells devices that are used for occluded vocal tract and breathing exercises related to playing musical instruments and music instruction. Complainant has rights in the trademark OOVO through its use in commerce since 2017 and its multiple registrations with the United States Patent and Trademark Office (USPTO), the earliest of which issued on June, 23, 2020. The <oovo.com> domain name is identical or confusingly similar to Complainant’s OOVO mark because it wholly incorporates the mark merely adding in the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <oovo.com> domain name because Respondent is not commonly known by the domain name. Respondent is not currently using the domain name in connection with a bona fide offering of goods or services nor is it making a legitimate noncommercial or fair use thereof and the domain name resolves to a setup page at the website Shopify.com. Further, Respondent has specifically stated that he is “not using it” and that “I have oovo.com just to have it.”
Respondent registered and uses the <oovo.com> domain name in bad faith because Respondent has offered to sell the domain name. Further bad faith is indicated through Respondent’s inactive (passive) holding of the domain name and Respondent’s use of a privacy service to conceal its identity.
B. Respondent
Respondent asserts that it holds common law rights to the OOVO mark that predate Complainant’s asserted first use of the mark.
Respondent has rights or legitimate interests in the <oovo.com> domain name because Respondent does business under the OOVO mark. Respondent argues that it is using the domain name in connection with a bona fide offering of goods or services because Respondent uses the domain name in connection with its business and not to infringe on Complainant’s rights over the mark.
Respondent did not register and use <oovo.com> domain name in bad faith because Respondent makes active use of the domain name. Respondent further did not register the domain name for the purpose of preventing Complainant from reflecting the mark in a domain name because Respondent did not have knowledge of Complainant prior to acquiring the domain name in 2014. Respondent asserts that Complainant is engaged in reverse domain name hijacking.
1) Complainant has rights to the trademark OOVO which date, at the earliest, to 2017;
2) Respondent registered the <oovo.com> domain name in 2014 and had no knowledge of Complainant or its mark at that time thus negating the assertion of bad faith registration;
3) Respondent’s renewal of the <oovo.com> domain name in 2020, after its expiration but during the redemption grace period, did not create a new registration of the domain name; and
4) Complainant has engaged in reverse domain name hijacking by bringing the present case despite the lack of any evidence that Respondent targeted its OOVO mark with the <oovo.com> 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 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 asserts rights in the OOVO mark through its registration with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides copies of its USPTO registration certificates and so the Panel finds that Complainant has rights in the OOVO mark under Policy ¶ 4(a)(i).
Next, Complainant argues that the <oovo.com> domain name is identical or confusingly similar to Complainant’s OOVO mark because it wholly incorporates Complainant’s OOVO mark merely adding in the “.com” gTLD. A domain name may be found to be identical or confusingly similar to a complainant’s mark, under Policy ¶ 4(a)(i), despite the addition of a gTLD. See Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”). Therefore, the Panel finds that the <oovo.com> domain name is identical or confusingly similar under Policy ¶ 4(a)(i).
While Respondent argues that its registration of the <oovo.com> domain name predates Complainant’s alleged rights in the OOVO mark, the Panel notes that such fact is not relevant to the Policy ¶ 4(a)(i) inquiry as this element considers only whether Complainant has rights in the asserted mark and whether the disputed domain name is identical or confusingly similar to the mark. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).
The Panel considers it unnecessary to make any findings or determination regarding Policy ¶ 4(a)(ii). The history and relevance of Respondent’s claimed acquisition and use of its own OOVO trademark and the <oovo.com> domain name are in dispute but the Panel’s findings under Policy ¶ 4(a)(iii) render moot any determination under Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <oovo.com> domain name in bad faith because Respondent inactively holds the domain name and offered to sell it for an amount that, while unspecified, is in excess of out-of-pocket costs. Prior decisions under the Policy have held that either inactive or “passive” holding of a domain name or offering to sell it for an excessive price may indicate bad faith. See, e.g., Licensing IP International S.à.r.l. v. Pawel Marcelak, FA 1980007 (Forum Feb. 9, 2022) (“Respondent currently holds the at-issue domain name passively as browsing to the domain name returns an error message… * * * Inactive holding of a domain name is also an indication of bad faith under Policy ¶ 4(a)(iii).”) Also see Retail Royalty Company and AE Direct Co LLC v. Whois Foundation / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin, FA 1821246 (Forum Jan. 13, 2019) (“Respondent lists the disputed domain name for sale for $5,759, which is a price well in excess of out of pocket costs. Such an offering can evince bad faith under Policy ¶ 4(b)(i).”) In its Complaint and multiple additional submissions, Complainant goes to great lengths to point out that, during a late 2019 text message exchange that it initiated with Respondent, and in which Complainant expressed its interest in purchasing the <oovo.com> domain name, Respondent refused to specify a price for the domain name but did mention that it had sought to sell it at auction in the past. The auction was terminated by Respondent because, although he set the reserve price “really high”, he “was scared it was going to go for to [sic] low”. During the exchange, Complainant also asked “are you using the domain or would you be open to helping it find a good home?” to which Respondent replied “Not using it”. In another exchange, Respondent states “So I just have oovo.com just to have it”. Complainant claims that “Mr. Rubio by his own statements is cybersquatting with no legitimate use interest, and with the intention to sell to a third party for valuable consideration in excess of documented out-of-pocket costs.”
In defense, Respondent notes that “[a]t the time of the domain name registration Respondent did not know and could not know about existence of Complainant or its marks.” This invokes the familiar concept that, since Policy ¶ 4(a)(iii) requires proof of bad faith registration and use in the conjunctive, and that if a domain name was acquired by a respondent prior to the coming into existence of a complainant’s trademark rights, targeting of the mark, and thus bad faith registration, is impossible. See, e.g., Warner Bros. Entertainment Inc. v. Karl Allberg, FA 1881913 (Forum Feb. 19, 2020) (“Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint.”); World Wrestling Federation Entertainment, Inc. v. Michael Bosman, D99-0001 (WIPO Ja. 18, 2000) (“It is clear from the legislative history that ICANN intended that the complainant must establish not only bad faith registration, but also bad faith use.”)
In the recent decision of Consensys Software Inc. v. Justin Pietroni, Netymology Ltd., D2021-3337 (WIPO Dec. 9, 2021), it was noted that “panels will not normally find bad faith on the part of the respondent where a respondent registers a domain name before the complainant’s trade mark rights accrue.” The facts of that case were that “Respondent acquired the disputed domain name in 2005, whereas the Complainant’s trade mark rights only arose in 2016 at the earliest.” Id. In accordance with the accepted conjunctive view of Policy ¶ 4(a)(iii), the Panel concluded that “[a]s the Complainant and its rights did not exist in 2005, the disputed domain name could not have been registered in bad faith. This is fatal to the Complainant’s case, irrespective of the nature of any later use of the disputed domain name, as the Complainant is required to prove both registration and use in bad faith.” Id.
Complainant does not dispute that Respondent first purchased the <oovo.com> domain name in 2014 through a registrar auction. It does, however, note that, in August of 2020 the domain name expired and was redeemed by Respondent during the post-expiration grace period. It makes the argument that “a new registration occurring after an expiration is distinct from an auto-renewal or renewal during registration” and claims that the <oovo.com> domain name was thus registered anew by Respondent in 2020. It goes on to assert that “this 2020 registration was in bad faith…” Thus, Complainant seeks to re-set the clock for purposes of determining bad faith registration under Policy ¶ 4(a)(iii).
However, Complainant’s assertions do not reflect an accurate view of the redemption grace period. According to ¶ 3 of the ICANN Expired Registration Recovery Policy (“ERRP”)[i], “all gTLD registries must offer a Redemption Grace Period (‘RGP’) of 30 days immediately following the deletion of a registration, during which time the deleted registration may be restored at the request of the RAE [Registrant at Expiration] by the registrar that deleted it.” Registrars typically charge an additional fee for actions occurring during this grace period as it requires that extra administrative steps be taken. However, it is clear from the plain language of the ERRP, that the redemption of an expired domain name during the grace period restores it to its prior state thus permitting a renewal thereof that is retroactive to the expiration date. This process does not, as posited by Complainant, start a new registration. For example, ¶ 2.2 of the ERRP is titled “Post-Expiration Renewal” (emphasis added). It states that the DNS must be interrupted by the registrar “[f]or at least the last eight consecutive days (after expiration) that the registration is renewable by the RAE”. ERRP at ¶ 2.2.3 Further, “[u]pon renewal of the registration by the RAE, the registrar must restore the DNS resolution path…” Id. at ¶ 2.2.6. Finally, the present WHOIS record for the disputed domain name does not reflect a 2020 creation date – which would have been the case had a new registration occurred – but it still shows the original 2004 creation date from a time prior to Respondent’s purchase thereof.
Thus, although Respondent may have been inattentive to its impending renewal deadline in 2020, it did, in fact, renew the <oovo.com> domain name during the permitted redemption grace period.
In light of the above facts, the Panel must consider whether Respondent acted in bad faith when it originally acquired the disputed domain name in 2014. As Complainant claims the earliest creation of trademark rights in its OOVO mark in 2017 and there is no evidence that Respondent anticipated such rights at that time, it is reasonable to conclude that Respondent could not have been aware of or targeted Complainant’s mark at the time that it acquired the <oovo.com> domain name. Thus, there is no bad faith registration under Policy ¶ 4(a)(iii).
Respondent states that “[t]he Complainant had no bona fide basis for commencing this proceeding under the UDRP, and is culpable for reverse domain name hijacking…” Reverse domain name hijacking (“RDNH”) is defined in Rule 1 as a Complainant’s “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name” and Rule 15(e) directs that “[i]f after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.” Such abuse has sometimes been found in “Plan B” cases, i.e., those brought by complainants who use the Policy for leverage or harassment after failing to negotiate a purchase of a domain name. See, e.g., Electrosoft Services, Inc. v. TechOps / SyncPoint, FA 1969515 (Forum Dec. 9, 2021) (“This is a classic ‘Plan B’ case where complainants that are unable to purchase a domain name through negotiation file UDRP actions in a last-ditch effort to try and acquire the domain name.”)
There is, however, a line of decisions that offer some leeway on RDNH when a complainant appears pro se. Although ignorance is no defense to a finding of RDNH, “[a] non-lawyer party might be excused from failing to distinguish registration in bad faith from use in bad faith, or not understanding that both must be proven…” Domain Name Arbitration, 7.11-D.1 (Gerald M. Levine, Legal Corner Press, 2nd ed. 2019), citing Urban Logic, Inc. v. Urban Logic, Peter Holland, D2009-0862 (WIPO Aug. 17, 2009). See also LaFrance Corp v. David Zhang, D2009-0415 (WIPO May 15, 2009) (“[h]ad Complainant been represented by counsel the Panel would not have hesitated to make an RDNH finding.”)
While the Complaint is signed by a “member” of Complainant and there is no indication that Complainant is represented by legal counsel, the Panel nevertheless finds firm ground here upon which to base a finding of RDNH. The present case fits the “Plan B” mold as Complainant pursued the present case after first unsuccessfully seeking to purchase the <oovo.com> domain name from Respondent. It then asserts an incorrect technical point of the domain name renewal process in an attempt at justifying its claim. However, even had Complainant been correct in its assertion that Respondent’s post-expiration renewal of the disputed domain name during the grace period created a new registration, it has still failed to prove that Respondent acted in bad faith by specifically targeting Complainant and its mark. There is no evidence that the domain name’s website has never displayed any content that touched on Complainant or its field of business, Respondent never offered to sell the domain name to Complainant (it was Complainant who initiated the dialog with Respondent in late 2019 and Respondent never stated a price or even indicated its willingness to sell to Complainant). In such dialog, Complainant never identified itself as a company that is using or has trademark rights in the term OOVO – it approached Respondent only as “Patrick” and mentioned that “my partner and I have a company we’re starting up and running from our one bedroom apt.” Thus, even if Respondent’s statements in that dialog could be viewed as suggesting bad faith, there is no indication that it was directed at Complainant or its OOVO mark.
Further, Respondent’s past attempt at selling the domain name through an auction is irrelevant as that occurred prior to Respondent being on notice of Complainant or its trademark. And finally, in its Additional Submission, Complainant specifically states that “Complainant also never alleged and does not allege bad faith registration on Respondent’s part regarding his registration in 2014” and it goes on to admit that “Respondent merely shows that he at one time did have legitimate interest.” (emphasis in original). Such admissions by Complainant, combined with the fact that Complainant’s entire case for bad faith is built upon a claim of passive holding and Respondent’s past attempt to sell its domain name (though not to Complainant), lead the Panel to the conclusion that Complainant did, indeed, bring this Complaint in bad faith in an attempt to harass or otherwise gain an advantage over a domain name owner who rebuffed its purchase attempt.
Complainant stated that it “had reasonable expectation that the Domain would become available for purchase” upon its expiration in 2020 “[h]owever, at no time was oovo.com available to the public because of GoDaddy’s policy of an expiration grace period” The aim of the Policy is not to weigh and determine who has a better right to a given domain name, but only to address abusive domain names that target a complainant’s trademark. The latter scenario is simply not present here.
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 <oovo.com> domain name REMAIN WITH Respondent.
Steven M. Levy, Esq., Panelist
Dated: February 14, 2022
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