Globeway LLC of West Virgina was just found guilty of Reverse Domain Name Hijacking (RDNH) on the domain name Globleway.com
The domain is owned by Vertical Axis Inc. who was represented by Ari Goldberger and Jason Schaeffer of Esqwire.com
The three member panel of Nathalie Dreyfus, G. Gervaise Davis and The Honorable Neil Anthony Brown rejected Globeway argument that they had common law rights to the term Globeway which they claimed they established earlier this year.
The company was just incorporated in Delaware on January 28, 2014.
“”Vertical Axis Inc acquired the domain “between June 25 and June 27 2005, nearly 4 years after its original registration on April 11, 2001 and nearly 10 years before Complainant made any use of the alleged mark.”
On August 21, 2014, following the submission of the response on August 18, 2014, Claimant informally requested that the pending proceeding be withdrawn. As revealed in email correspondences between Complainant and a NAF Case Coordinator, Complainant’s reason for requesting a withdrawal was because, as stated “new information has come to light and circumstances have changed.” Complainant thereby requests to “let the respondent enjoy the fruits of having the Globeway.com domain name.”
This Panel is not in favor of allowing Complainant’s request to withdraw and dismiss the complaint.
This Panel’s investigation of this complaint aims to uphold and protect the order and integrity of the UDRP process.
Identical and/or Confusingly Similar
Complainant admits that at one point “we believed we had actually registered the name, but a mistake was made for an unknown reason and the name was not registered as we had believed.” This is irrelevant. Complainant must demonstrate its right in the mark in some way. See Zee TV USA, INC. v Siddiqi FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Either trademark registration or a common law rights through secondary meaning and continuous use must be proved for Complainant to establish rights in a mark.
There is insufficient evidence in the record to show that Complainant’s mark has achieved the prerequisite notoriety necessary to be viewed as a trademark under Policy ¶ 4(a)(i). See Chicago Rest. & Entm’t Guide, Inc. v. Polat, FA 1310901 (Nat. Arb. Forum Apr. 22 2010) (failing to find the common law rights as “the claimed mark is comprised of two common and generic, descriptive or geographic terms, requiring very strong evidence in order to establish secondary meaning” and Complainant failed to provide the required evidence to show secondary meaning).
Complainant provides business registration certificates in two states, a patent filing receipt dated 5/23/2014, a logo and an example of the body of a letter sent to a client. Complainant, however, has not established sufficient secondary meaning in the mark to create common law rights in the mark. See Lawrence Gurreri v. To Thai Ninh, FA 1328554 (Nat. Arb. Forum July 12, 2010) (where Complainant’s submission of a screen shot of a website was deemed to be insufficient evidence in determining secondary meaning).
The Complainant has not submitted any documents that qualify as sufficient evidence of actual and continuous commercial use.
Complainant does not demonstrate that the mark has attained the requisite secondary meaning under Policy ¶ 4(a)(i).
The Panel finds that Complainant has failed to satisfy Policy ¶ 4(a)(i).
The Panel, having found that Complainant has not established rights in its GLOBEWAY mark under Policy ¶ 4(a)(i), finds it unnecessary to consider Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii).
Complainant states that “the unknown domain owner registered Globeway.com on June 13, 2014.” Yet, Respondent provides sufficient evidence including a WHOIS Record for Disputed Domain that the domain name was originally registered on November 4th, 2001 and purchased by the Respondent on June 25, 2005. This is over nine years before Complainant formed its alleged business. The Complainant is incorrect about the date of registration of the domain name. Before filing a complaint to the UDRP, Complainants ought to take precautions to present valid facts, which Complainant has not done as Complainant could have conducted a WHOIS search, which would have provided the needed information. UDRP Rule 3 (xiv) is not complied with, as Complainant has not submitted a complaint to the best of Complainants knowledge. It is neither complete nor accurate.
A simple search of the WHOIS directory, to which Complainant had legal support, but still managed to get the date wrong, would have showed the Complainant that the domain name had in fact been registered since 2001. See HTL Automotive, Inc. v. Techshire, FA 1435046 (April 16, 2012), where the Panel distinguishes the types of knowledge held by a layman compared to any reasonable attorney:
While a layman might not recognize the implications of not being able to support its contentions or perhaps not be familiar with UDRP’s requirements, any reasonable attorney would have known that the Complaint could not succeed on its merit…
It should also be noticed that Complainant had legal representation on the record in this matter, although for some unexplained reason the Complainant itself was filed not by or in the name of its attorneys but by the major shareholder in the Complainant.
However, Complainant’s attorneys were clearly acting for Complainant when they sent the Respondent a letter of demand on July 18, 2014 alleging “Trademark Infringement”, that the Respondent had registered the domain name on June 13, 2014 and that it was currently in violation of the relevant United States statute.
Any reasonable attorney could have conducted a WHOIS search in order to verify the registration date of the domain name before sending a letter to the Respondent containing such allegations.
Since Complainant had sought and obtained legal counsel, there is no reasonable excuse for such a grave and fundamental error.
Despite the fact that Complainant and the respective legal counsel evidently did not know at the time that the Respondent had in fact registered the domain name nine years prior, they should have known and could have established that fact as the skills for verifying this matter should be possessed by any reasonable lawyer.
The Complainant had or could easily have obtained knowledge of all these facts before it brought its Complaint to the Forum.
However, it did not verify those facts and when the Complaint was prepared and filed, it perpetuated the same mistake as had been made in the attorney’s letter of demand. Thus it was alleged in the Complaint that Complainant was incorporated on January 28, 2014, that a “search” had revealed that at that time the corresponding domain name was available, but that after January 28, 2014 and in fact on June 13, 2014 the domain name had been registered by a “cybersquatter”, that it was Respondent who had done this and that the domain name had then been put up for sale. The clear thrust of Complainant’s argument was that Respondent had registered the domain name to frustrate Complainant’s new business venture and to make money improperly by selling the domain name.
All of those allegations, in so as far as they concerned Respondent were false and contrary to the facts that could easily have been obtained. Moreover, perhaps the most egregious aspect of the way in which Complainant presented its case is that its allegations were said to be based on “searches” and “research” when in fact the root cause of its problems is the apparent lack of any research having been done at all.
Finally, it should also be noted that Complainant’s new business endeavor is the development of a new Internet search engine; that being so, it could reasonably be expected that Complainant and its advisers would be familiar with WHOIS searches and related matters that could have avoided the factual mistakes and unsubstantiated allegations they have made .
In the Panel’s view the Complainant’s actions lacked attention and imposed burdens and costs upon the Respondent. The Panel is also concerned that abusive complaints risk diminishing the credibility of the entire UDRP process.
The Panel therefore finds reverse domain name hijacking.”