Professional Documents
Culture Documents
(Nat. Arb. Forum Aug. 13, 2007) (choosing to proceed under the UDRP
despite concurrent court proceedings for multiple reasons, including that the
proceedings appeared to be filed in a court that did not commonly adjudicate
intellectual property issues and that the court proceedings were filed by the
respondent on the same day the response in these proceedings was filed).
Alternatively, other panels have chosen not to proceed with the UDRP
because of the pending litigation. See AmeriPlan Corp. v. Gilbert FA105737
(Nat. Arb. Forum Apr. 22, 2002) (Regarding simultaneous court proceedings
and UDRP disputes, Policy 4(k) requires that ICANN not implement an
administrative panels decision regarding a UDRP dispute until the court
proceeding is resolved. Therefore, a panel should not rule on a decision
when there is a court proceeding pending because no purpose is served by
[the panel] rendering a decision on the merits to transfer the domain name,
or have it remain, when as here, a decision regarding the domain name will
have no practical consequence.).
This Panel is more persuaded by the former panels reasoning rather than
the latter panels reasoning. The parties to this Proceeding are not identical
to the parties in the litigation. Neither party to this Proceeding has asked
this Panel to abstain from exercising its jurisdiction. It is not certain the
Nevada federal court will be able to issue an order which binds the current
registrar located in the Cayman Islands (something this Panel can do).
Complainant has submitted to the jurisdiction of the courts at the principal
office of the registrar in its Complaint. This Panel also has substantial
expertise in the subject area, having issued a combined 2,261 decisions. A
court may also review this Panels decision, so this Panel is not ousting a
court of jurisdiction. These factors weigh in favor of this Panel deciding this
case. Therefore, this Panel will consider this Complaint.
RELIEF SOUGHT
Complainant requests the domain name be transferred from
Respondent to Complainant.
PARTIES' CONTENTIONS
A. Complainant
Complainant owns United States Trademark Registration No. 4,875,162 for
the mark for the four letters "NVRT", with stylized lettering/design,
registered on December 22, 2015 on the Principal Register with the United
States Patent and Trademark Office. Complainant uses its NVRT mark for
athletic shirts, athletic shorts, athletic tops and bottoms for yoga, and hats.
Complainant further intends at this time to use its NVRT mark on pants,
sweatshirts, and t-shirts.
FACTUAL AND LEGAL GROUNDS
a.
b.
c.
Panel may consider any relevant aspects included in, but not
limited to UDRP Policy 4(b).
Registrant's bad faith in registering and using the NVRT.com domain is
shown by (1) the fact that Registrant first registered the domain
NVRT.com on February 2, 2016 - after Complainant's December 22,
2015 Registration of NVRT as his trademark with the United States Patent
and Trademark Office on the Principal Register; (2) the fact that
Registrant's predecessor Tim Schoon first registered the domain
NVRT.com on or about January 25, 2016 -after Complainant's December
22 2015 Registration of NVRT as his trademark with the United States
Patent and Trademark Office on the Principal Register; (3) Registrant was
on notice (actual or constructive) that Complainant claimed interest in
the NVRT.com domain name because Complainant had already sued
Registrant's predecessor-in-interest for transfer of the NVRT.com domain
name for violation of the Anticybersquatting Consumer Protection Act of
1999; (4) Registrant is not commonly known by the domain name
NVRT.com or the name NVRT; (5) Registrant is not making any legitimate
noncommercial or fair use of the domain name; (6) that a user currently
going to www.NVRT. com will be invited to buy the Nvrt.com website
name.
B. Respondent
I. Introduction
This dispute involves a domain name which was acquired in a batch
transaction of 41 four-letter domain names prior to any notice of a dispute
whatsoever. As described in detail below, the various transfers of the
domain name were solely incident to a commercial transaction involving
this batch of domain names, and was not undertaken with either actual or
constructive knowledge of the Complainant's claim.
The Complainant's claim is premised on recently-acquired and
pending formal registrations in the United States, which are supported by
no substantial commerce whatsoever, and the Complainant has followed an
unusual strategy to pursue its claim without notice to the relevant registrar,
registrants, or any person with actual control of the domain name
registration.
II. Acquisition and Subsequent Transfers of the Domain Name "Cyberflight"
Due to the coincidental timing of events prior to notice by the
Respondents of this Proceeding, and the serious accusation of "cyberflight",
the morning of February 4, and between the time of receipt of the notice
from NAF and the registrar's reply to NAF1, the batch transfer initiated
several days earlier had completed, stating:
"On review of the domain transaction history, we note for your
information that the registrant of the domain name transferred
the domain name to the present registrant at 11:17 UTC -5,
which was moments before the lock was applied in processing
the notice from the Forum. The transfer of this particular
domain name was incident to a batch of domain names
which were transferred to the present registrant by the
previous registrant, and does not appear to have been
specifically prompted by the filing of this UDRP.
Between our receipt of the UDRP notice and our action upon it
within those two hours, we engaged in no communication with
the registrant which would have alerted them to the filing of
the UDRP proceeding. As the UDRP provides two business days
for the registrar to act upon the UDRP provider notice, we do
not see an express provision for reversing a registrant transfer
which may occur prior to actual registrar notice and action
upon the UDRP provider notice. However, we do wish to make
the circumstances here clear to the Forum and to the Parties."
As noted by the registrar in its reply to NAF, no communication was
conducted with Mr. Schoon, Mr. Kleveros, or anyone associated with the
joint venture, that a UDRP had been initiated. The batch transfer was
initiated on February 2, prior to any notification of this Proceeding to the
parties or the registrar. On the afternoon of February 4, Mr. Schoon and
Mr. Kleveros received, from the NAF, their first notice that the domain
name was involved in a dispute of any kind. The transfer noted by the
registrar was that initiated by the Respondents to place the domain name
into the registrar account designated for the joint venture.
The transfer of the domain name which occurred prior to notice of
this Proceeding, and prior to actual notice by the registrar, was incident to
transfer of a batch of domain names, including the 41 four-letter domain
names for which the Respondents had agreed to purchase on January 11,
2016. Since having received notice of this Proceeding, the domain name
is duly locked, and the Respondents hereby appear to dispute the
allegations of the Complaint. Accordingly, there has been no attempt at
"cyberflight", as the attached documentation demonstrates that the
transfers were incident to an ordinary commercial transaction undertaken
with no notice whatsoever of the Complaint or its filing of the Complaint
Under the second criterion, the Complainant must prove that the
Respondent has no rights or legitimate interest in the domain name.
Here, the Complainant describes a lawsuit which it filed in the state of
Nevada against a prior registrant of the domain name, almost
immediately after the US trademark registration issued. Several
observations are worth making about that lawsuit, particularly in relation
to the Complainant's claim of cyberflight.
First, the Complainant never served nor sent notice of the lawsuit to
any party then- responsible for the domain name. The docket for the
Complainant's suit is attached. As noted therein, the Complainant had
requested the previous registrar to issue a certificate to the court, locking
the domain name and authorizing the court to order transfer of the
domain name. The Complainant has omitted from its description of the
lawsuit, the letter which was filed with the court by the registrar whom the
Complainant contacted about the suit. That letter is included and is from a
previous registrar of the domain name whom the Complainant served. It
specifically notes that "PSI-USA was previously the registrar for the domain
name." The Complainant took no additional steps to notify the thencurrent registrar at the time the Complainant initiated its action.
As noted above, the Respondents' recently acquired the domain
name, prior to Complainant attempting to serve the previous registrar, in a
purchase transaction along with 41 other four-letter domain names.
Domain Names corresponding to short letter combinations are
commercially valuable, independent of any trade or service mark claim,
because they have generally applicable utility. For example, the letters
"NVRT" are by no means exclusively associated with the Complainant.
The letters "NVRT" can stand for:
Offering a domain name for sale to the public is not (i) a bona fide offering of
goods or services pursuant to Policy 4(c)(i) or (ii) a legitimate
noncommercial or fair use pursuant to Policy 4(c)(iii). I would conclude
Respondent has not established rights or legitimate interests in the disputed
domain name pursuant to Policy 4(a)(ii). See J. Paul Getty Trust v. Domain
4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or
legitimate interests do not exist when one has made no use of the websites
that are located at the domain names at issue, other than to sell the domain
names for profit); see also Hewlett-Packard Co. v. High Performance
Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or
legitimate interests where the respondent registered the domain name with
the intention of selling its rights).
By a majority vote, (Fink and Brown) the Panel finds Policy 4(a)(ii) NOT
satisfied.
As the Panel has found by a majority that Complainant has not established
the second element required under the Policy, it is not strictly necessary to
consider the third element, bad faith. However, the Panel will deal with the
issue of bad faith because there is some overlap between the two elements
on the specific facts of this case.
Registration and Use in Bad Faith
By a majority vote, ( Fink and Brown) the Panel finds Complainant failed to
meet the burden of proof of bad faith registration and use under Policy 4(a)
(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA
406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to
establish that the respondent registered and used the disputed domain name
in bad faith because mere assertions of bad faith are insufficient for a
complainant to establish Policy 4(a)(iii); see also Graman USA Inc. v.
Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003)
(finding that general allegations of bad faith without supporting facts or
specific examples do not supply a sufficient basis upon which the panel may
conclude that the respondent acted in bad faith).
Since Respondent has rights or legitimate interests in the <nvrt.com>
domain name pursuant to Policy 4(a)(ii), Respondent did not register or use
the disputed domain name in bad faith pursuant to Policy 4(a)(iii). See
Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan.
18, 2005) (finding that the issue of bad faith registration and use was moot
once the panel found the respondent had rights or legitimate interests in the
disputed domain name); see also Vanguard Group Inc. v. Investors Fast
Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (Because Respondent has
rights and legitimate interests in the disputed domain name, his registration
is not in bad faith.).
Respondent has not registered or used the <nvrt.com> domain name in
bad faith because Respondent has not violated any of the factors listed in
Policy 4(b) or engaged in any other conduct that would constitute bad faith
registration and use pursuant to Policy 4(a)(iii). See Societe des Produits
Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001)
(finding that where the respondent has not attempted to sell the domain
name for profit, has not engaged in a pattern of conduct depriving others of
the ability to obtain domain names corresponding to their trademarks, is not
a competitor of the complainant seeking to disrupt the complainant's
business, and is not using the domain name to divert Internet users for
commercial gain, lack of bona fide use on its own is insufficient to establish
bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo
CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the
complainant failed to establish that respondent registered and used the
disputed domain name in bad faith because mere assertions of bad faith are
insufficient for a complainant to establish UDRP 4(a)(iii)).
Apart from those issues, the substance of this case in the opinion of the
majority is that a bad faith finding would be inappropriate because
Respondent bought the domain name as part of a commercial transaction
involving 40 other four-letter domain names. On the evidence, Respondent
had no intent or knowledge of any potential infringement on Complainants
rights.
Brother Lowry dissents in part from the foregoing finding for the following
reasons: This case turns on the interpretation of Policy 4(b)(i), which
provides: circumstances indicating that [Respondent] registered or [ ]
acquired the domain name primarily for the purpose of selling, renting, or
otherwise transferring the domain name registration to the complainant who
is the owner of the trademark or service mark or to a competitor of that
complainant, for valuable consideration in excess of Respondents
documented out-of-pocket costs directly related to the domain name. While
there is no evidence of a price in this case, I am willing to presume
Respondent was selling the four letter domain name in excess of its out of
pocket costs because Respondent is not an eleemosynary institution.
The missing factor Complainant cannot directly prove is Respondent
specifically targeted Complainant. Respondent denies knowing of
Complainants existence and denies targeting Complainant. However,
Respondent was clearly targeting (i) someone who had a four letter
trademark as a prospective purchaser (or their competitors) or (ii) someone
with a legitimate business reason to use the four letters NVRT. While