Christopher Copeland (“Complainant”), just lost it bid to grab the domain name Insurance.Pro from Michael Silver who was represented by John Berryhil
Here are the relevant facts and findings by the three member panel:
Complainant asserts the following:
- Policy ¶ 4(a)(i)
- Complainant owns rights in the INSURANCE.PRO mark through registrations of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,785,018 registered November 18, 2003).
- The <insurance.pro> domain name is identical to Complainant’s INSURANCE.PRO mark.
- Policy ¶ 4(a)(ii)
- Respondent is not commonly known as <insurance.pro> and Complainant has not authorized Respondent to use its INSURANCE.PRO mark in a domain name.
- The disputed domain name redirects to the <allprodomains.com> domain name and resolves to a website that purports to offer “PREMIUM .PROFESSIONAL DOMAINNAMES FOR SALE OR LEASE.” The website lists the <insurance.pro> domain name as available for purchase, among others. A reverse WHOIS printout identifies Respondent as the owner of the <allprodomains.com> domain name.
- Respondent is not licensed as an insurance professional in Respondent’s home state of Oklahoma.
- Policy ¶ 4(a)(iii)
- Respondent purchased the disputed domain name with the primary intent of selling it for an amount exceeding Respondent’s out-of-pocket expenses.
- Respondent is a serial cybersquatter with a pattern of bad faith domain name registrations.
- Respondent registered the <insurance.pro> domain name with constructive knowledge of Complainant’s rights in the mark.
- Respondent registered the <insurance.pro> domain name on December 6, 2013.
Respondent asserts the following:
- The instant dispute constitutes a trademark dispute outside the scope of the UDRP, and the parties should resolve the matter in court. Complainant’s registration of the INSURANCE.PRO mark constituted “front-running:” the practice of registering a mark that includes a generic top-level domain (“gTLD”) that has not yet been officially launched by ICANN. Moreover, there is evidence that Complainant committed forgery/perjury in the documents it sent to the USPTO to support the renewal of its INSURANCE.PRO trademark in 2013. Further, there is evidence that Complainant abandoned its INSURANCE.PRO mark and is not using the mark in connection with any insurance products or services. Therefore, substantial, non-frivolous questions exist as to the validity of Complainant’s INSURANCE.PRO mark, and the Panel should deny Complainant’s request for the transfer of the <insurance.pro> domain name.
- Policy ¶ 4(a)(i)
- Under the circumstances discussed in the preceding paragraph, Complainant’s registration of its mark with the USPTO is insufficient to conclusively establish Complainant’s rights in the mark.
- Policy ¶ 4(a)(ii)
- Respondent’s business practice is to register and resell domain names that incorporate generic dictionary words and the gTLD “.pro.” Here, the <insurance.pro> domain name plainly consists of two generic words: “insurance” and “pro.” Complainant does not have an exclusive monopoly on the use of these words on the Internet.
- As a generic domain name seller, Respondent’s public offer to sell the disputed domain name does not demonstrate Respondent’s lack of rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
- Policy ¶ 4(a)(iii)
- Respondent did not register the disputed domain name with Complainant’s INSURANCE.PRO trademark in mind, and as a generic domain name reseller, its public offer to sell the disputed domain name is insufficient to demonstrate bad faith registration and use pursuant to Policy ¶ 4(b)(i).
- Respondent has not demonstrated bad faith, because the disputed domain name consists of two generic terms: “insurance” and “pro.” Respondent registered the disputed domain name precisely because of its generic value; such a registration is entirely permissible under the UDRP and under trademark law.
- Respondent originally registered the <insurance.pro> domain name a “number of years” ago. However, prior to Respondent’s registration of the disputed domain name, the domain name had been owned by a third party as early as August 22, 2005: nearly nine years ago. Given Complainant’s failure to bring an adverse UDRP action before now, the Panel should apply the equitable doctrine of laches to deny Complainant’s requested relief.
In filing these UDRP proceedings, Complainant has demonstrated bad faith and has engaged in Reverse Domain Name Hijacking.
Preliminary Issue: Trademark Dispute Outside the Scope of the UDRP
It appears to the Panel that the instant dispute constitutes a trademark dispute outside the scope of the UDRP, and the parties should resolve the matter in another forum such as a court of mutual jurisdiction or before the USPTO.
Respondent offers three arguments as to why the instant dispute is outside the scope of the UDRP.
First, Respondent asserts that Complainant’s registration of the INSURANCE.PRO mark constituted “front-running:” the practice of registering a mark that includes a gTLD that has not yet been officially launched by ICANN.
Second, Respondent argues that there is evidence that Complainant committed forgery/perjury in the documents it sent to the USPTO to support the renewal of its INSURANCE.PRO trademark in 2013.
Finally, Respondent asserts that there is evidence that Complainant abandoned its INSURANCE.PRO mark and is not using the mark in connection with any insurance products or services. Respondent concludes that substantial, non-frivolous questions exist as to the validity of Complainant’s INSURANCE.PRO mark, and that the parties should determine the matter in another forum.
The Panel agrees.
Previous panels have chosen to dismiss UDRP complaints which centered upon legitimate trademark disputes.
Therefore, the Panel opts to dismiss the instant Complaint because it finds that the determination of whether Complainant has rights in the INSURANCE.PRO mark, whether or not Complainant committed fraud on the USPTO and whether or not Complainant abandoned the INSURANCE.PRO mark must be established in another forum.
For an excellent discussion of this issue, see Courtney Love v. Brooke Barnett, FA944826 (Nat. Arb. Forum May 14, 2007):
The two parties present very different accounts of the facts, and use those accounts to support their claims for common law trademark rights in the disputed domain names. The written evidence submitted by the parties is inconclusive. When the parties differ markedly with respect to the basic facts, and there is no clear and conclusive written evidence, it is difficult for a Panel operating under the Rules to determine which presentation of the facts is more credible. National courts are better equipped to take evidence and to evaluate its credibility.
Further, the purpose of the Policy is not to resolve disputes between parties who might each have legitimate rights in a domain name. The purpose of the Policy is to protect trademark owners from cybersquatters, that is, from people who abuse the domain name system in a very specific way, which specific way is outlined in Paragraph 4(a) of the Policy.
The closest equivalent to a legislative history for the Policy can be found in the 30 April 1999 Final Report of the WIPO Internet Domain Name Process, which formed the basis for the ICANN Policy (available online at:http://www.wipo.int/amc/en/processes/process1/report/index.html ). This report states at paragraph 135:
In view of the weight of opinion against mandatory submission to an administrative procedure in respect of any intellectual property dispute arising out of a domain name registration, the final recommendations of the WIPO Process contain two major changes in respect of the suggested administrative dispute‑resolution procedure:
(i) First, the scope of the procedure is limited so that it is available only in respect of deliberate, bad faith, abusive, domain name registrations or “cybersquatting” and is not applicable to disputes between parties with competing rights acting in good faith.
(ii) Secondly, the notion of an abusive domain name registration is defined solely by reference to violations of trademark rights and not by reference to violations of other intellectual property rights, such as personality rights.
And the WIPO Report states at 153:
… The scope of the procedure would be limited to cases of abusive registrations (or cybersquatting), as defined below, and would not be available for disputes between parties with competing rights acting in good faith.
And at 166:
The first limitation would confine the availability of the procedure to cases of deliberate, bad faith abusive registrations.
Thus, according to the majority, a dispute, such as the present one, between parties who each have at least a prima facie case for rights in the disputed domain names is outside the scope of the Policy.
The Panel unanimously concurs with this reasoning.