Berryhill Gets Finding Of Reverse Domain Hijacking For Marchex On PetExpress.com

Marchex represented by John Berryhill got a finding of Reverse Domain Name Hijacking (RDNH) on the domain name petexpress.com, in what could be the longest complaint and certainly the longest response to a complaint I have ever read.

The domain name was acquired by Marchex back in 2004 as part of the $165 million dollar acquisition of Ultimate Search.  The domain was registered in 2001 by Ultimate Search

The complaint was brought by Airpet Animal Transport, Inc which said it got a federally registered trademark since 2009 and a had a common law trademark going back to 1979 although the company was apparently 1st formed in 2005.

The complaint and response contained quite a bit of nasty business so while we typically only point out the panels finding of facts and conclusions we think its worth noting some of the language used by both the complainant and the domain holder

For the complainant’s part they called Marchex a profession Cybersqautter:

“As a professional Cybersquatter, Respondent is no stranger to UDRP proceedings.”

“In a similar case involving Respondent, the Panel held that:

For its part the domain holder points out that the Complainant Did Not Exist Prior To April 2005

“We must first pause at the very first sentence of the “Factual and Legal Contentions” of the Complaint, which was certified to be “complete” by the Complainant:

Complainant has significant common law rights in the mark PET EXPRESS by virtue of its continuoususe of the mark in commerce since 1978 to provide pet transportation services under the PET EXPRESS mark.”

The Complaint is rife with assertions of similar import, such as:

Complainant has used< the PET EXPRESS mark in connection with pet transportation services since 1978.”

"These statements, in the form set forth, and annotated above to emphasize the subject-verb correspondence, are categorically false. "

"The Complainant in this Proceeding is Airpet Express Inc., identified in the Complainant’s recently-issued federal trademark registration as a corporation of the State of California.   "

"According to the California Secretary of State, Complainant was formed on April 11, 2005.  "

"The Complainant was, most assuredly, not doing anything “since 1978”. "

"Nowhere does the Complaint claim any connection with a predecessor in interest in relation to the alleged mark, and nowhere does the Complaint refer to or show an assignment of such alleged rights from a predecessor in interest.

"Knowing full well that it did not exist until 2005, the Complainant has certified the Complaint here to be “complete and accurate”, while it includes dozens of statements which are simply untrue in relation to activities which are stated to have been conducted by the Complainant, and no other, prior to April 2005."

"While the Complainant may have believed it to be in some manner “convenient” to omit this basic information, the fact is that with respect to any activities alleged to have occurred before 2005, we are left with no clue whatsoever who engaged in them and why the Complainant may seek, in the shortened supplemental response period, to attempt to explain the clearly and objectively misleading statements throughout the Complaint which allege the Complainant to have been conducting activities before its own existence.  "

"Were these activities conducted by others?  Who were they?  When and how did they assign their claimed rights to the Complainant?  How were those others organized, and on what basis is such an assignment – not of record here – to be considered effective?  Was this claimed goodwill purchased or licensed?  Is it still licensed?  Does the Complainant actually own such rights?""

"We certainly have no idea, due to the Complainant’s obvious and deliberate decision to make statements which are objectively false, in a filing which is, by any reasonable measure, not “complete” with respect to critical facts concerning these alleged activities."

"Hence, for the purpose of preparing a somewhat comprehensible Response, it must first be noted that the Respondent is not willing to take on faith whatever the Complainant may throw together and submit under Forum Supplemental Rule 7 to attempt to paper over this factual gap, of which the Complainant could not have been unaware when it filed the Complaint and certified it to be “complete and accurate”.

"It was obviously both incomplete and inaccurate, and contains numerous assertions as to activities conducted “by the Complainant” and involving parties which are nowhere identified in the Complaint.  Accordingly, the remainder of the Response, in relation to the Complainant must be considered by the Panel to be prefaced by a contingent proposition taken solely arguendo.  ”

“As stated, the Complaint is in form for dismissal, for being facially false with respect to every such allegation involving the Complainant’s history, and which are not stated in the Complaint in such a form as to be understood to have been derived by assignment from some anonymous “predecessor” or “predecessors” who, for all we know, may have abandoned their activities, parted on hostile terms, or any number of circumstances which the Complainant has not seen fit to hint at or explain in its “complete and accurate” Complaint.

“The Complainant proffers US TM Reg. No. 4,004,320 for “PET EXPRESS” issued August 2, 2011 on an application filed in 2009.  ”

“This registration, of course, long post-dates acquisition of the domain name by the Respondent.  ”

“The Complainant admits that the application was filed after the Complainant was informed that the Respondent had conducted a search of registered marks in an attempt to substantiate the Complainant’s bare assertion of trademark rights.   UDRP Panels have seen this type of behavior before.

“As noted above, the Complainant did not exist prior to April 2005, and the Complaint provides no connection between activities alleged to have been conducted prior to that date by unidentified parties and the Complainant’s claim of ownership of goodwill accruing therefrom.  ”

“However, as noted above in connection with Complainant’s proffered registration, the term at issue was deemed inherently descriptive, and nowhere other than in the Complainant’s 2(F) declaration submitted to the USPTO, does the Complainant identify a date at which the Complainant considers the mark to have acquired secondary meaning”

“To this end, the Complainant presents no documentary evidence, and relies solely on testimonial evidence in the Declaration of Mark Botten.   The Respondent requests the Panel to carefully consider this Declaration.  Mr. Botten specifically avers:

“I have personal knowledge of all facts stated in this declaration […]”

wherein we emphasize his averment to “all facts” of the declaration.  Mr. Botten avers to be “Director in charge of Sales and New Business Development” for the Complainant.   Mr. Botten goes on to aver facts concerning the Complainant at such dates as 2001, and indeed back to 1978.

Nowhere in the declaration does Mr. Botten state how long he has held his position with the Complainant.  ”

The Panel is now requested to carefully inspect Mr. Botten’s declaration, which is a profile of Mr. Botten.  Presumably, this profile was prepared on the basis of information provided by Mr. Botten, and has been published with his approval, thus constituting admissions chargeable to Mr. Botten.  Several facts are apparent, outside of the context of a self-serving declaration made for this Proceeding.  Mr. Botten’s biography states:

“Mark relocated from Australia to the USA in 2005 to oversee the expansion of Pet Express throughout the US and global pet relocation markets.”

Mr. Botten’s biography further states:

“Mark joined the Pet Relocation industry in 1994 […]”

“The Panel is invited to attempt to square the facts stated in Mr. Botten’s declaration – i.e. that he has “personal knowledge” of the Complainant’s activities prior to 2005, and that such “personal knowledge” dates back to 1978 – when Mr. Botten was not located in the United States prior to 2005, could not have been employed by a non-existent Complainant prior to that date, and admits not to having been engaged in the relevant industry until 1994.  Mr. Botten’s sworn statement to have “personal knowledge” of the facts averred in his declaration, likely prepared by counsel for the purpose of this Proceeding, cannot be reconciled with Mr. Botten’s own biographical statement published elsewhere.

“Not only is it impossible for Mr. Botten to possess the claimed “personal knowledge” dating to 1978 in an industry he elsewhere admits to not being engaged until 1994, but his declaration establishes no facts which pre-date the Respondent’s registration of the domain name.  The Complainant is correct that the first criterion may be satisfied by a showing of evidence establishing common law rights.   The Complainant has two problems here.  First, the Complainant admitted to the determination of the USPTO that the term at issue is primarily descriptive as of the date of filing its application in 2009.   Secondly, the Complainant provides no evidence other than Mr. Botten’s woefully suspect and unsupported declaration[1].

(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 rights or legitimate interests in respect of the domain name; and

(3)       the domain name has not been registered and is not  being used in bad faith.

The three member panel went on to find that although the “Complainant is the owner of the USPTO registration for the PET EXPRESS mark (Reg. No. 4,004,320 filed Nov. 2, 2009; registered Aug. 2, 2011)”

“Panels have held USPTO registration of a mark is normally sufficient to demonstrate rights in a mark and those rights extend back to the date the registration was filed. ”

Therefore, the Panel finds Complainant has rights in the PET EXPRESS mark dating back to November 2, 2009 (the date of registration) pursuant to Policy ¶4(a)(i).”

“Complainant has not established a prima facie case in support of its arguments Respondent lacks rights and legitimate interests under Policy ¶4(a)(ii). 

“Respondent claims it has rights or legitimate interests in the <petexpress.com> domain name. Respondent notes it is a subsidiary of Marchex Inc., a publicly-traded U.S. corporation on the NASDAQ exchange (MCHX) with a market capitalization of $149 million. ”

“Respondent claims to have purchased the “Ultimate Search” portfolio of domain names, including the disputed domain name, in late 2004 for $165 million. ”

“Respondent claims it is a successor in interest of the <petexpress.com> domain name originally registered by Ultimate Search.  ”

“The <petexpress.com> registration dates back to July 2, 2001.  Respondent claims it uses the <petexpress.com> domain name. The panel in McMullen Argus Publ’g Inc. v. Moniker Privacy Servs., D2007-0676 (WIPO July 24, 2007), found that the display of third-party links on a domain name is not necessarily evidence of a lack of rights and legitimate interests, and the Panel finds Respondent’s use is that of a bona fide offering of goods or services or a legitimate noncommercial or fair use amounting to protectable rights or interests under Policy ¶¶4(c)(i) and 4(c)(iii). See Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).

 

The parties have spent a great deal of time and effort arguing about who has superior rights to the mark.  Such a decision is beyond the Panel’s jurisdiction.

 

The Panel finds Policy ¶4(a)(ii) NOT satisfied.

“The Panel finds Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶4(a)(iii).

The Panel finds Respondent did not register or use the disputed domain name in bad faith pursuant to Policy

The Panel further finds Respondent has not registered or used the petexpress.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
“Respondent claims its willingness to sell the domain name is not a demonstration of bad faith.”

“Respondent argues it spent $165 million on the purchase of a number of domain names, including the petexpress.com; domain name, because of the valuable descriptive nature of the domain name, and thus the asking price for the domain name is not unfounded.

“Panels have found that a willingness to sell a domain name, especially when a respondent has a legitimate interest, is not indicative of bad faith.

“Respondent argues it has developed a history of good faith registration and use of domain names. Respondent has prevailed in all but three instances of the nearly two dozen UDRP proceedings to which it has been a party.”

“This Panel believes each case must be judged on its merits.  The fact Respondent is a frequent party to UDRP proceedings is immaterial.

“Respondent additionally claims its good faith is clear, given the fact its registration of the <petexpress.com> domain name (July 2, 2001) pre-dated Complainant’s PET EXPRESS trademark application (which was filed November 2, 2009). ”

It should be noted Complainant threatened to file a UDRP proceeding in 2009 and then acquired formal trademark rights to bolster its case.  Complainant did not disclose Respondent’s use of the mark in its trademark application.

Lastly, Respondent asserts Complainant has misrepresented numerous “facts” in the Complaint and declarations. Respondent argues the personal knowledge alleged by Mr. Botten is blatantly false as he was not living in the United States or employed by the (non-existent) Complainant prior to 2005. Respondent asserts Mr. Botten’s declaration therefore contradicts his own biography and provides zero documentary evidence of the type normally expected to satisfy the high bar of a common law claim.

It is certainly true Complainant was conclusory in its initial submission (and that is being charitable).  Respondent rightly pointed out Complainant’s claims were not possible as stated because Complainant was not formed until 2005.  While Complainant could have stated all of this in Complainant’s initial submission, it chose not to.  The question is why not?  It seems Complainant did this to improve its chances in this UDRP proceeding.  Complainant applied for a trademark after knowing about Respondent’s domain name and did not disclose that fact to either the USPTO or the Panel.  Once again, the question is why not?  Presumably, Complainant wanted to improve its chances in registering its mark and this proceeding.

The Panel finds Policy ¶4(a)(iii) NOT satisfied.

REVERSE DOMAIN NAME HIJACKING

The Panel has given careful consideration to the matters considered by previous panels on whether or not a panel should make a finding of Reverse Domain Name Hijacking.

For the reasons given above in the section of this decision on bad faith, the Panel finds that this proceeding is an abuse of the UDRP administrative procedure.

Having not established all three elements required under the ICANN Policy, the Panel concludes relief shall be DENIED.

A

Comments

  1. BrianWick says

    There appears to have been a great deal of premeditated posturing on the part of the Complainant and its thugs for a few years leading up to the slam dunk they expected :)

  2. John Berryhill says

    Actually, Mike, when you read the “parties’ comtentions” in UDRP decisions, you are normally reading a brief summary of what was in the Complaint and the Response (and, as here, a bonus round). This decision is unusual in that the Panel essentially copied the entire filings (without Exhibits, and with a couple of edits to the exhibit references messed up).

    So in terms of it being “long”, it’s really not unusual for the filings themselves. It’s just that they don’t normally put the whole works into the decision.

    If you look back at, for example, the makri.com decision from last week, the filings in that case were more extensive than this one, but you’d never know it from the decision. Both sides put a lot of work into each of these cases.

    One of the things that this decision brings out, which you don’t get to see in the summarized version of most decisions is the general principle, based on long observation by panelists and participants, is that most of the time, the complainant doesn’t do themselves any favors by filing a supplement. I believe it was Scott Donahey who once said he’s never seen a case where anything in a supplement changed his mind, and that the supplements rarely add anything of value toward answering any question the panelists had about the case.

    This one has a few chuckles in it though. They all do.

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