Claim Number: FA2307002052775
Complainant is Watchdog USA, LLC (“Complainant”), represented by David Heckler of Watchdog USA, LLC, Pennsylvania, USA. Respondent is Newfold Digital, Inc. (“Respondent”), represented by Peter J. Riebling of Riebling IP, PLLC, District of Columbia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <watchdog.com>, registered with Network Solutions, 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 Panelist in this proceeding.
Fernando Triana, Esq. (Chair), Steven M. Levy, Esq., and Adam Taylor, Esq., as Panelists.
Complainant submitted a Complaint to Forum electronically on July 12, 2023; Forum received payment on July 12, 2023.
On July 17, 2023, Network Solutions, Llc confirmed by e-mail to Forum that the <watchdog.com> domain name is registered with Network Solutions, Llc and that Respondent is the current registrant of the name. Network Solutions, Llc has verified that Respondent is bound by the Network Solutions, 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 July 21, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 10, 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 firstname.lastname@example.org. Also on July 21, 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 August 9, 2023.
On August 15, 2023, pursuant to Respondent's request to have the dispute decided by a three-member Panel, Forum appointed Fernando Triana, Esq. (Chair), Steve Levy, Esq., and Adam Taylor, Esq., 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
a. The disputed domain name includes the word “Watchdog” in which Complainant has trademark rights.
b. The use of the disputed domain name is in direct conflict with Complainant’s business.
c. Respondent does not use the disputed domain name.
a. The disputed domain name, <watchdog.com> was originally registered on February 28, 1995.
b. At least as early as October 19, 2000, MyComputer.com offered a service called “Watchdog” which was accessible through the Disputed Domain Name. The Watchdog service was a website monitoring tool that measured uptime of websites and provided detailed reports and notification alerts if and when a customer’s website was suffering availability problems. MyComputer.com later co-branded the service with Network Solutions, Inc. (NSI). Network Solutions was then sold to Pivotal Private Equity, a unit of Phoenix investment and development firm, and NSI became the registrant of the Disputed Domain Name. NSI was subsequently acquired by Web.com.
c. In February 2021, it was announced that Clearlake Capital Group, L.P. (“Clearlake”) completed the acquisition of Endurance International Group Holdings, Inc. (“Endurance”) and a partnership with Siris Capital Group, LLC (“Siris”) to form the Respondent, a rollup which combines all of the products owned by Web.com and Endurance. The disputed domain name became inactive after Respondent’s acquisition of Web.com (including Network Solutions).
d. Complainant did not have any trademark rights when Respondent began offering its “Watchdog” service nor when it became the official Registrant of record for the disputed domain name.
e. Complainant has provided a materially deficient complaint that fails to provide any details about its trademark rights, nor does it even attempt to provide any evidence of its baseless accusations that the domain name was registered and used in bad faith.
f. Complainant has failed to establish ANY of the elements whatsoever required under the Policy.
g. Respondent has owned the domain name since at least as early as November 2004. However, even prior to the date on which Respondent was the official Registrant of record, it used the Disputed Domain Name to provide a service called “Watchdog” which continues to be offered today by MyComputer.com.
h. Respondent has rights or legitimate interests in the Disputed Domain Name because the Disputed Domain Name consists entirely of a common word (“watchdog”), which was selected and used for its common purpose.
i. The Mirriam-Webster Dictionary defines “watchdog” as “one that guards against loss, waste, theft or undesirable practices.” That is precisely what the Respondent’s service did.
j. Respondent, through its predecessors, began using the Disputed Domain Name in December 2001, became the Registrar of record for the Disputed Domain Name in 2003, and then became the Registrant of Record in 2004. Complainant did not come into existence until September 8, 2003, almost 2 years later.
k. Complainant did not have any relevant trademark rights until it obtained a registration for a design mark incorporating the word “watchdog” almost 21 years later.
1. The disputed domain name, <watchdog.com> was originally registered on February 28, 1995.
2. Complainant has established rights in the trademark WATCHDOG based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 7,081,444) registered June 13, 2023.
3. Respondent has established that it has rights or legitimate interests in the disputed domain name.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 WATCHDOG mark based on registration with the USPTO (Reg. No. 7,081,444, registered June 13, 2023). Registration of a mark with the USPTO is a valid showing of rights in a mark per Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”). Since Complainant provides evidence of registration of the WATCHDOG mark with the USPTO, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name is identical to Complainant’s WATCHDOG trademark. When a domain name differs from a mark only by the addition of a gTLD it may be found to be identical to the mark. See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). Therefore, the Panel finds that the disputed domain name is confusingly similar to the WATCHDOG mark under Policy ¶ 4(a)(i).
Complainant failed to make a prima facie case showing that Respondent lacks rights or legitimate interests. Complainant also failed to prove Respondent’s lack of rights or legitimate interests.
Moreover, the Panel notes that, while Respondent does not deny that the disputed domain name is currently inactive, its proof does support the contention that for many years before Complainant’s trademark registration it was actively used.
The Panel finds that Respondent’s evidence is persuasive on the issue of rights and legitimate interests. Accordingly, Complainant has not succeeded on this element of the Policy.
Even if it is unnecessary to proceed further in analyzing the registration and use in bad faith, as Complainant failed to establish the lack of rights or legitimate interest, it is important to point out that, in this case, Complainant did not provide any evidentiary element to support a bad faith allegation.
Furthermore, since the disputed domain name, watchdog.com was owned by an entity connected with Respondent since at least 2001, and Complainant did not come into existence until 2003, it is impossible to conclude that the registration was done in bad faith, as that could not have been the intention of Respondent at the time of acquisition of the disputed domain name.
As for the use, the mere inactivity of the disputed domain name is not enough to establish bad faith.
Accordingly, Complainant has not succeeded in proving Respondent registered and is using the disputed domain name in bad faith.
Respondent alleges that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute.
Under Paragraph 1 of the Rules, "Reverse Domain Name Hijacking" (RDNH) is defined as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name." Paragraph 15(e) of the Rules provides that if "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."
The Panel observes that such a finding is justified where a complainant proceeds despite the fact that it knew or should have known that it did not have a colorable claim under the Policy. See Karma International, LLC v. David Malaxos, FA 1822198 (Forum Feb. 15, 2019) (finding RDNH where complainant lacked trademark rights, came into being long after domain name was registered, and had made prior unsolicited offer to purchase domain name). It also notes that even if a panel would find that Complainant has failed to satisfy its burden under the Policy, this does not necessarily render a finding of reverse domain name hijacking. See ECG European City Guide v. Woodell, FA 183897 (Forum Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.”); see also Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001) (noting that a finding of reverse domain name hijacking requires bad faith on the complainant’s part, which was not proven because the complainant did not know and should not have known that one of the three elements in Policy ¶ 4(a) was absent).
The Panel notes that Respondent does have rights and legitimate interests in the disputed domain name for purposes of paragraph 4(a)(ii) of the Policy. It also notes that the disputed domain name registration predates Complainant’s first claimed rights in the trademark WATCHDOG by almost 21 years. Nevertheless, Complainant asserts that the disputed domain name was registered and is being used in violation of its trademark rights.
Complainant’s trademark came into registration long after the disputed domain name was registered and Complainant did not substantiate its vague claims of lack of rights or legitimate interest or bad faith registration and use.
On balance, the Panel finds that the Complaint was brought in bad faith, in an instance of reverse domain name hijacking, and constitutes an abuse of the administrative proceeding.
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 <watchdog.com> domain name REMAIN WITH Respondent.
Complainant has engaged in Reverse Domain Name Hijacking.
Fernando Triana, Esq. Chair of the Panel;
Steven M. Levy, Esq., and Adam Taylor, Esq., as Panelists
Dated: August 18, 2023
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