ConsumerDirect, Inc. v. BARRY WALTERS
Claim Number: FA2304002041457
Complainant is ConsumerDirect, Inc. (“Complainant”), represented by Marcel Budiono of Rutan & Tucker LLP, California, USA. Respondent is BARRY WALTERS (“Respondent”), represented by Jason Schaeffer of ESQwire.com, P.C., New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <privacymaster.com>, registered with GoDaddy.com, LLC.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
The Honorable Neil Anthony Brown KC, Steven M. Levy, Esq. (chair), and Jeffrey J. Neuman as Panelists.
Complainant submitted a Complaint to Forum electronically on April 24, 2023; Forum received payment on April 24, 2023.
On April 25, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <privacymaster.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 April 25, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 18, 2023 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@privacymaster.com. Also on April 25, 2023, 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 July 18, 2023.
On July 31, 2023, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, Forum appointed The Honorable Neil Anthony Brown KC, Steven M. Levy, Esq. (chair), and Jeffrey J. Neuman as Panelists.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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 provider of credit score management services, helping consumers monitor credit reports, learn how to increase their credit score, manage debt, and monitor fraudulent activity that may affect their credit. Complainant has rights in the trademark PRIVACYMASTER through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 6,630,096, registered on January 25, 2022). Respondent’s <privacymaster.com> domain name, registered on January 6, 2000, is identical to Complainant’s PRIVACYMASTER mark as it merely adds the “.com” generic top-level-domain name ("gTLD").
Respondent lacks rights or legitimate interests in the <privacymaster.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Respondent been authorized by Complainant to use the PRIVACYMASTER mark. Respondent also has not used the disputed domain name in connection with a bona fide offering of goods or services and it has failed to make an active use of the disputed domain name since it resolves to a registrar parking page.
Respondent registered and uses the <privacymaster.com> domain name in bad faith where it registered the disputed domain name to sell the name in excess of its out-of-pocket costs. Respondent has ignored Complainant’s many efforts to establish communication and negotiate a purchase of the domain name and it has attempted to extort Complainant by requesting USD $100,000 for the domain name via a GoDaddy broker. Furthermore, Respondent’s website disrupts Complainant’s business as Respondent fails to make an active use of the disputed domain name. Finally, Respondent renewed (re-reregistered) the disputed domain on January 1, 2022, over a year after Complainant filed its trademark application for the PRIVACYMASTER mark with the USPTO, and with actual knowledge of Complainant’s trademark rights.
B. Respondent
Respondent registered the disputed domain name while he was working as a Freedom of Information Act (“FOIA”)/Privacy Law counsel for the Department of the United States Air Force. Respondent registered the domain name on or about January 6, 2000 for future use to provide expert services for privacy issues for legal cases and beyond.
Respondent registered the domain name twenty-one years prior to Complainant’s claimed first use of its PRIVACYMASTER trademark. Respondent has not disrupted Complainant’s business nor confused users seeking to find Complainant’s website. Complainant made numerous, unsolicited offers to purchase the disputed domain name.
Complainant knew of Respondent’s ownership of the disputed domain name prior to filing its claim and it misrepresented Respondent’s behavior and actions in an effort to prevail in this case. Complainant has thus abused the Policy and is guilty of reverse domain name hijacking.
- Complainant owns rights in the PRIVACYMASTER trademark and the disputed domain name is confusingly similar to the mark;
- Respondent has demonstrated that it has rights or legitimate interests in the <privacymaster.com> domain name as it consists of descriptive terms and relates to Respondent’s profession as an expert in privacy law;
- Complainant sought, without success, to engage Respondent in negotiations to purchase the disputed domain name. It mischaracterized the statement of a registrar broker as an extortionate request from Respondent, and, in any event, there is no evidence that Respondent or its website content targeted Complainant or its mark;
- By bringing a “Plan B” case and mischaracterizing its evidence, Complainant and its counsel have engaged in an attempt at reverse domain name hijacking.
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 PRIVACYMASTER mark through Complainant’s registration of the mark with the USPTO. Registration of a trademark with the USPTO is sufficient to demonstrate rights in a mark per 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).”) As Complainant has submitted into evidence a copy of its USPTO Trademark Registration Certificate, the Panel finds that Complainant has demonstrated rights in the PRIVACYMASTER mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <privacymaster.com> domain name is identical or confusingly similar to Complainant’s PRIVACYMASTER mark as it merely adds the “.com” generic top-level-domain name ("gTLD"). Respondent does not contest this. The addition of a gTLD typically fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”) As the second level of the disputed domain name consists entirely of the term “privacymaster”, the Panel finds that the name is identical to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Under Policy ¶ 4(c)(ii), Complainant contends that Respondent lacks rights or legitimate interests in the <privacymaster.com> domain name as Respondent is not commonly known by the disputed domain name nor has Complainant authorized or licensed to Respondent any rights in the PRIVACYMASTER mark. Respondent does not address this contention or claim and so the Panel deems it unnecessary to do so either.
Next, Complainant contends that “Respondent is not using, and has not used, the disputed domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the disputed Domain Name resolves to an inactive website.” In the absence of exceptional circumstances, non-use of a disputed domain name usually results in a finding that no bona fide offering of goods or services or a legitimate noncommercial or fair use has been made per Policy ¶¶ 4(c)(i) or (iii). See CrossFirst Bankshares, Inc. v Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).”) Here, Complainant submits archived screenshots of the <privacymaster.com> website showing that it has resolved to a GoDaddy parking page with little content beyond messages and advertisements promoting this registrar’s services. A more recent screenshot, from April of this year, shows the domain name resolving to pay-per-click content with links titled “Vinyl Fencing”, “Wood Fences”, and “Vinyl Fencing Panels”.
In its defense, Respondent asserts that the <privacymaster.com> domain name is “a combination of … two dictionary words” with “inherent value” and thus the resolution to pay-per-click links relating to privacy fencing is merely the result of the generic or descriptive meaning of the phrase “privacy master”. Both parties further note that Respondent was the Chief FOIA and Privacy Officer for the United States Securities and Exchange Commission (“SEC”) and Complainant has even submitted into evidence a screenshot of Respondent’s photo and position from the SEC website. In a signed Declaration, Respondent highlights its professional pursuit as a FOIA and privacy law expert and claims that it registered the domain name because it “thought that the combination of the words ‘privacy’ and ‘master’ would be an excellent choice for my future use to provide expert services for privacy issues for legal cases and beyond.” Prior Panels have denied claims based on similar rationales. See also Ideal Nutrition, LLC v. Khaled Alshahri / Khaled Group,LLC, FA 2048379 (Forum Aug. 2, 2023) (“The Respondent had every right to register and use the <idealnutrition.com> domain name which the Panel notes consists of two descriptive words that relate closely to the Respondent’s chosen profession.”); Maven Esthetics, LLC v. Diana Roth, The Browtique, D2021-3499 (WIPO Dec. 18, 2021) (in denying a claim against the domain names <eyebrowmaven.com> and <thebrowmaven.com>, the Panel noted that “[e]ven though BROW MAVEN is a registered trademark, the term appears to be widely used by third parties to describe someone with an expertise in eyebrow treatment.”) Here, where Respondent has set out a plausible reason for owning the <privacymaster.com> domain name based on the relation of two descriptive words to his own professional expertise, the Panel finds an exception to the typical situation where non-use of a domain name would yield no rights or legitimate interests.
Furthermore, the purchase of a domain name with a descriptive or generic meaning may, of itself, be considered a fair use in the absence of improper trademark targeting. In Platinum Luxury Auctions LLC v. Sherman L. Ragland, II, FA 1974395 (Forum Dec. 28, 2021), the Complainant asserted its LUXURY AUCTION trademark, for real estate auctions, against the domain names <luxuryauction.com> and <luxuryauctions.com> which either hosted pay-per-click links or resolved to inactive pages. The Panel noted the descriptive nature of the disputed domain names and found that “there is no indication that Respondent uses, or has ever actively used the domain names to exploit their trademark value in the category of goods and services covered by Complainant’s mark or otherwise.” Id. It went on to find that Respondent has rights or legitimate interests in respect of each of the at-issue domain names pursuant to Policy ¶ 4(a)(ii). Even “running a business registering and selling domain names has been recognized by prior UDRP panels as capable of establishing rights or legitimate interests under the Policy, provided the domain name was not registered to profit from and exploit a complainant’s trademark.” JoshCo Group, LLC d/b/a Veteran Benefits Guide v. Domain Administrator / Dot Corner Web Services, FA 2046327 (Forum June 22, 2023), citing Limble Soltions, Inc. v. Domain Admin, Alter.com, Inc., D2022-4900 (WIPO Mar. 8, 2023)
Here, the undisputed facts before the Panel are that Respondent is a legal professional employed as an expert in privacy law and that, since its initial registration in 2000, the <privacymaster.com> domain name has never been used to refer to, host content related to, or otherwise target Complainant, its credit score management services, or its PRIVACYMASTER trademark. Further, Respondent has never initiated any effort to sell the domain name to Complainant and, as noted in the next section, it appears that Respondent never actually engaged in sales negotiations of any kind with Complainant. It is noted that Respondent has not provided any evidence to support or demonstrate its claim of preparing to use the disputed domain name for a bona fide offering of services. However, given the descriptive nature of the phrase “privacy master”, as used in the abstract and without reference to Complainant or its mark, and the nature of Respondent as an expert in privacy law matters, the Panel finds quite plausible Respondent’s claim that it registered the domain name and is contemplating using it for its ability to describe his professional skills at some point in the future.
Thus, while Complainant has set forth a prima facie case, under Policy ¶ 4(a)(ii), the Panel deems it rebutted by Respondent and finds that Respondent does have rights or legitimate interests in the disputed domain name.
Complainant first argues that Respondent registered and uses the <privacymaster.com> domain name in bad faith as Respondent fails to make an active use of the disputed domain name and is passively holding the same. It has been held in many prior UDRP decisions that non-use of a domain name will not prevent a finding of bad faith under the doctrine of passive holding. However, “panelists will look at the totality of the circumstances in each case, including: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.” 3Shape A/S v. Michael Nadeau, UDRP-102312 (CAC Mar. 12, 2019), citing the seminal decision in Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000). Here, Complainant has not submitted evidence of the reputation or distinctiveness of its PRIVACYMASTER mark apart from a few screenshots of its own website. Further, the Panel considers the descriptive nature of the phrase “privacy master” and concludes that Complainant’s mark, while passing muster under USPTO registration standards, is not highly distinctive of services which involve protecting the privacy of clients engaging Complainant’s services. Next, Respondent did submit a Response and has provided evidence of a plausible good-faith intended use of the disputed domain name in the form of Respondent’s signed Declaration. There is no claim that Respondent has concealed its identity in any nefarious manner and, in fact, Complainant retained a private investigator and has submitted into evidence a signed letter from the same along with copies of Respondent’s SEC profile page and certain correspondence that was sent to Respondent, by name, prior to the filing of the present complaint. Finally, Respondent’s claimed good-faith use, to which it intends to put the disputed domain name, seems quite plausible given his professional work as an expert in privacy law. Although there is no evidence that Respondent has made any use of the disputed domain name to-date, upon considering all of the evidence and circumstances of this case, the Panel is unable to conclude that Respondent targeted Complainant’s mark and that it registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Next, Complainant asserts that Respondent acted in bad faith as it registered the <privacymaster.com> domain name for the purpose of selling the same to Complainant at an unreasonably high price. Registration of a domain name for the purpose of selling it may evince bad faith registration and use per Policy ¶ 4(b)(i) but only where such sale is targeted at “the complainant who is the owner of the trademark or service mark or to a competitor of that complainant”. Id. In fact, there are Panels who have taken the position that the initiation of purchase communications by a complainant undercuts any claim of bad faith under this clause of the Policy. JoshCo Group, LLC d/b/a Veteran Benefits Guide v. Domain Administrator / DOT CORNER WEB SERVICES, FA 2046327 (Forum June 22, 2023) (“in all probability it was the Complainant who initiated the offer to buy the domain name. That being so, it could not be said that the Respondent registered the domain name for the primary purpose of selling it to the Complainant within the meaning of paragraph 4(b)(i) of the Policy.”) Here, Complainant, through its private investigator, initiated a purchase inquiry to Respondent and pursued it over a span of more than two years. By the Panel’s count, the investigator and Complainant’s Representative sent five emails and two printed letters to Respondent and placed three phone calls (leaving voice messages) offering Respondent USD $40,000 and subsequently $55,000 to buy the domain name. Respondent did not respond to or acknowledge any of these communications. Complainant then engaged the brokerage services of GoDaddy, Respondent’s Registrar, who contacted Respondent with an offer of USD $2,500. According to Respondent’s signed Declaration, in response to the broker, Respondent replied that “I had already been offered almost six figures and did not accept it.” The GoDaddy broker then sent an email to Complainant stating “I heard back from the domain owner and they are willing to sell which is great news. However, they are looking for $100,000 USD for the name”. A copy of this email was submitted into evidence by Complainant. Based on this evidence, it is clear to the Panel that Complainant initiated and repeated offers to purchase the disputed domain name from Respondent and this does not create any presumption of Respondent’s bad faith. Further, Complainant appears to mischaracterize the email it received from the GoDaddy broker as Respondent’s statement of a willingness to sell and a firm counter-offer. Complainant asserts this was “Respondent’s attempt to extract [an] obviously exorbitant purchase price from Complainant” and an “obvious attempt to extort Complainant”. Respondent asserts that this “is not Respondent’s reply, but rather the broker’s own efforts to encourage negotiation to close for a higher sale price.” In any event, these contradicting interpretations are mooted by the Panel’s findings below regarding the lack of bad-faith targeting and the relative timing of Respondent’s registration of the disputed domain name and the coming into existence of Complainant’s trademark.
Turning now to perhaps the most critical issue in this case, the Panel notes that the disputed domain name was registered by Respondent twenty-one years prior to Complainant’s first claim of trademark rights. Policy ¶ 4(a)(iii) is stated in the conjunctive, i.e., “has been registered and is being used in bad faith” (emphasis added). 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, D1999-0001 (WIPO Jan. 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 present case, the question arises as to how the disputed domain name could have been registered in bad faith at a time when Complainant’s trademark did not exist. Complainant argues that, despite Respondent initially registering the <privacymaster.com> domain name in 2000, it “re-registered” the domain name in bad faith when it renewed the disputed domain name in January of 2000, a date that is after Complainant began use of, and filed a USPTO trademark application claiming rights in the PRIVACYMASTER mark.
In claiming that bad faith registration may occur by the renewal of a prior domain name following the later creation of a complainant’s trademark rights, Complainant cites the decision in Bear River Mutual Insurance Company v. Dzone Inc., FA 1528522 (Forum Dec. 11, 2013) which, in turn, looks for authority to the decision in Suneva Medical, Inc. v. Servet Temir / Nokta France, FA 1425709 (Forum Apr. 12, 2012). In Suneva Medical, the Panel first noted that “In the normal course of events it would be said that Respondent could not have been motivated by bad faith towards Complainant and its trademark at the time the domain name was registered, for at that time the trademark did not exist.” However, it went on to note that “a recent development would suggest that in some specific circumstances, such as those in the present case, it might be said that a Respondent had registered a domain name in bad faith even if it had been registered before the trademark was registered. That situation is where a Respondent has re-registered the domain name in circumstances that would amount to bad faith if they had occurred after the trademark had been registered.” Referencing Eastman Sporto Group LLC v. Jim and Kenny, D2009-1688 (WIPO Mar. 1, 2010), which cites to the now well-known Mummygold[1] and Octogen[2] cases, the Panel in Suneva Medical points to Policy ¶ 2 which states, in relevant part, that “[b]y applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that … (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party…” (emphasis added).
The Panel finds Complainant’s assertion of Respondent’s “re-registration” and its reliance on the Bear River Mutual Insurance Company and Suneva Medical decisions quite surprising as “that line of reasoning has now been fundamentally disavowed.”[3] Hike Private Limited v. Perfect Privacy LLC / Zcapital, D2017-0902 (WIPO Aug. 25, 2017) citing WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), at 3.2.1. See also Sony Pictures Television Inc. v. Thomas, Jeff, FA 1625643 (Forum Aug. 6, 2015) (“The attempt to equate renewal with initial registration has been rejected by numerous other UDRP decisions and this Panel does not accept the proposition that, as the Policy is presently worded, bad faith renewal can overcome and displace initial good faith registration.”)
In essence, Policy ¶ 2 is a contractual obligation between the registrant and its registrar to which a complainant does not have privity and thus lacks grounds to assert a cause of action based thereon. Contrary to Complainant’s assertion of a “re-renewal”, it has now long been a well-accepted standard in UDRP cases to consider, for purposes of the bad faith registration analysis, the date on which a respondent acquired the disputed domain name rather than the date of any subsequent renewal. See DIRECTV, Inc. v. Toshi Amori, FA 1394254 (Forum July 28, 2011) (“The operative date is the date when Respondent acquired the disputed domain name (assuming the Respondent is not a successor in interest to the previous domain name owner.”) Complainant argues the outdated and rejected theory that, despite Respondent’s ownership of the disputed domain name for twenty-one years prior to Complainant’s first claim of trademark rights, Respondent’s renewal of its domain name after Complainant filed the trademark application for the PRIVACYMASTER mark with the USPTO amounts to a re-registration of the domain name and serves to demonstrate bad faith registration under Policy ¶ 4(a)(iii).
Finally, even assuming arguendo that this Panel were to accept Complainant’s notion of re-registration, it still has not proven that either registration or use of the <privacymaster.com> domain name occurred in bad faith. As noted above, Complainant acknowledges Respondent’s professional role as a privacy law expert and provided archived and current screenshots of Respondent’s website showing that it resolved to either a GoDaddy registrar parking page or a page with pay-per-click links relating to privacy fences – an obvious connection to the words which make up the domain name. The Panel cannot discern from this any indication that Respondent targeted Complainant’s trademark with the disputed domain name. As such, the Panel finds no evidence that Respondent registered or uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Reverse Domain Name Hijacking
Respondent asserts that Complainant has engaged in reverse domain name hijacking (“RDNH”) stating that “[t]here is no basis for this claim and Complainant (through its counsel) knew or should have known the facts before filing its Complaint.” Reverse domain name hijacking is defined in Rule 1 as a Complainant “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 cases brought by complainants who use the Policy for leverage or harassment after its initial plan to negotiate a purchase of a domain name against which it has no valid legal claim fails (i.e., a “Plan B” case). 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.”)
Further, when a UDRP complainant is “’represented by competent legal counsel,’ it is not expected to ‘initiate[] a proceeding that is quite clearly devoid of merit.’ Attorneys are expected to have an appreciation for the jurisprudence of the forums in which they practice.” Domain Name Arbitration, 7.11-D.1 (Gerald M. Levine, Legal Corner Press, 2nd ed. 2019), citing Sustainable Forestry Management Limited v. SFM.com and James M. van John ‘Infa dot Net’ Web Services, D2002-0535 (WIPO Sep. 13, 2002). See also Electrosoft Services, Inc. v. TechOps / SyncPoint, FA 211000 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.”)
Here, Complainant is represented by legal counsel and the present case fits the “Plan B” model as Complainant pursued the present case only after its many unsuccessful attempts to purchase the <privacymaster.com> domain name from Respondent. It then asserts an outdated and rejected line of argument in an attempt to overcome the fact that the disputed domain name was registered twenty-one years prior to the earliest existence of its trademark rights. However, even had Complainant been correct in its assertion that Respondent’s renewal of the disputed domain name created a “re-registration” to satisfy the conjunctive nature of Policy ¶ 4(a)(iii), it has still failed to prove that Respondent acted in bad faith by specifically targeting Complainant and its mark. There is no evidence that Respondent’s website has ever displayed any content that touched on Complainant or its field of business and Complainant knew of Respondent’s position as Director, Office of Support Operations and Chief FOIA and Privacy Officer at the United States SEC which provides a rational basis for its good-faith interest in a domain name consisting of the descriptive phrase “privacy master”. Finally, Complainant mischaracterized the message of a registrar broker as Respondent’s “obvious attempt to extort Complainant”. The facts, as demonstrated by Complainant’s own evidence, are clear that Respondent itself never offered to sell the domain name to Complainant – it was Complainant who initiated all communications with Respondent and Respondent never engaged in discussions with Complainant, stated a price, or even indicated its willingness to sell the domain name.
While it is clear that Complainant was highly motivated to acquire the <privacymaster.com> domain name, having offered as much as USD $55,000 over the course of more than two years, the aim of the Policy is not to award transfers to party who claims it will put a given domain name to a better or more productive use, but only to address abusive domain names that target a complainant’s trademark. The latter scenario is simply not present here and this reality should have been recognized by Complainant and its counsel.
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 <privacymaster.com> domain name REMAIN WITH Respondent.
The Honorable Neil Anthony Brown KC, Steven M. Levy, Esq. (chair), and Jeffrey J. Neuman, Panelists
Dated: August 7, 2023
[1] City Views Limited v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE, D2009-0643 (WIPO July 3, 2009)
[2] Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, D2009-0786 (WIPO Aug. 19, 2009)
[3] It is worth noting that the interpretation of a domain name renewal as a “registration” under Policy ¶ 4(a)(iii) does not represent, nor has it ever represented, the consensus view of Panelists. Even the Panel in Suneva Medical noted that “the debate on this issue is almost certainly not closed” and the Eastman Sporto Group LLC decision stated that “[t]his Panel views Mummygold's unified concept notion with skepticism … extending paragraph 2 to impose upon a registrant an affirmative duty continuously to monitor (for example) subsequently issued trademarks and modify website content accordingly would run counter to several principles that underscore the UDRP system, most notably simplicity and limiting use of the Policy to a narrow class of cases in which cybersquatting has been proven.”
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