The Asian Domain Name Dispute Resolution Center (the ADNDRC) just rejected Galaxy Rainbow Limited and Whole Person Development Institute Limited. of Hong Kong bid to grab the 15 year old domain name iCAN.com from Scott Day’s Digimedia.com who was represented by John Berryhill.
However the panel did not find Reverse Domain Name Hijacking (RDNH) although the domain was found to be generic and registered 10 years before the trademark of the complainant
Here are the relevant facts and findings by the three member panel and some of the argument of Mr. Berryhill which is bang on and should have resulted in a RDNH finding:
The first criterion of the Policy requires the Complainant to show the domain name is identical or confusingly similar to a trade or service mark in which the Complainant has rights.
The Complainant proposes that there be a joinder of two Complainants in this Proceeding.
The Complainants proffer the trade mark registration certificates.
All are owned by Galaxy Rainbow Limited.
The Complainants provide no documentation of any interests of the second Complainant. None of the asserted trademark registrations are owned by the second Complainant in this Proceeding, and there is no assignment, license, or any evidence whatsoever which would entitle the second Complainant to claim any right at all in the asserted trademark registrations.
The Complaint merely alleges that the second Complainant is somehow related to the owner of the trademark registrations, and provides no proof or evidence thereof. Accordingly, on the record of this Proceeding, there is no evidence the second Complainant has any rights in any “ICAN” mark.
While the first criterion of the Policy does not state, as an express condition, that the Complainant’s rights be senior to the Respondent, it of course must be observed that the earliest of the proffered trademark registrations is dated in 2008, while the Respondent has registered and used the domain name since 1998 – ten years prior to the earliest evidence of a trade or service mark owned by the first Complainant.
Accordingly, the first Complainant has shown that it has rights in a trade or service mark which is ten years junior to the Respondent’s registration of the domain name.
(2)Legitimate Rights or Interests
The second criterion requires the Complainant to prove that the Respondent has no rights or legitimate interests in the domain name. The second criterion does not require that the Respondent possess or claim a trade or service mark right, but includes such equitable rights as expectation interests, senior rights, and bona fide use of the domain name prior to any notification of a dispute.
There is no question that the Respondent is the senior party here in relation to the common English phrase “I can”, signifying a primary meaning of ability to do something. The right of seniority has been held to be sufficient and determinative for a finding in the Respondent’s favor on the second element. The Respondent registered the domain name in 1998, some ten years prior to the earliest evidence of a trade or service mark in this Proceeding. Indeed the earliest record of the DomainTools WHOIS history, dating from 2003, shows the domain name to be registered to the Respondent. That fact alone is sufficient to resolve this dispute in favor of the Respondent.
The Complainant thus does not advance a prima facie case. Nowhere does the Complaint address this obvious and glaring fact.
The domain name in question consists of a common English phrase “I can”, which is susceptible to many different users. While the Complainant provides no evidence of how it uses the alleged marks, nor any evidence of reputation or goodwill apart rom its bare junior trademark registration, there is no question that “I can” is a common phrase which is not per se unique, distinctive or exclusive to the Complainant. Prior to any notice of a dispute, and indeed prior to any evidence of the existence of the Complainant or the Complainant’s trademark registrations, the Respondent had registered domain name in the belief that “I can” is an English phrase which may be useful for a variety of purposes. A Google search on the phrase “I can” turns up hundreds of thousands of results, from which any prominent mention of the Complainant is notably absent.
Prior to notice of a dispute, the domain name has been used for the following legitimate purpose.
Nowhere does the Complainant address how the domain name has been used since 1998 – i.e. for the last 15 years – by the Respondent or Respondent’s licensee.
In 2001, the Respondent was approached by a party who desired to license and eventually purchase the domain name from the Respondent according to a time-structured purchase plan during which the Respondent licensed use of the domain name subject to the payment and escrow terms, and from which 8
proprietary commercial terms and identities of third parties have been redacted. Should the Panel require an unredacted copy of the agreement, the Respondent will provide it to the Panel only, pursuant to an appropriate Procedural Order. As stated therein, the purchaser was to make certain payments according to schedule, in the breach of which all goodwill in the purchaser’s use of the domain name reverted to the Respondent.
Screenshots showing use of the domain name from 2001 to 2011 by the Respondent’s licensee can be independently confirmed by the Panel using Screenshots.com or Archive.org. The Screenshots.com archive for the disputed domain name includes captures dating back to 2004.
Representative screenshots from 2004 and 2007 show that the Respondent’s licensee utilized the domain name for a news and information site relating to the disabled, which was entitled “iCan! The Leading Disability Community”. The site was used by the Respondent’s licensee from 2001 to 2011, a period of ten years, prior to any notification of a dispute.
As a supporter of its licensee’s use of the domain name, the Respondent allowed a considerable period of time to elapse after the licensee had defaulted on the payment terms established by the purchase agreement.
Nonetheless, on 23 August 2011, the Respondent sent a termination notice dated August 2011 to the Respondent’s licensee, as the Respondent’s licensee had defaulted on the payment terms of the agreement. Under the terms of the Agreement, the licensee’s goodwill reverted to the Respondent.
The domain name has remained registered to the Respondent, and has been kept in its present condition since 2011 in order to allow any remaining links-in, email address, and association with the Respondent’s prior licensee to drop off before re-purposing the domain name.
A domain name registrant is perfectly entitled to license descriptive domain names to others and the fact that the Respondent’s licensee was willing to undertake a substantial licensing arrangement is itself evidence that the domain name is a valuable commercial asset of the Respondent. The Respondent is well known for registration and use of such descriptive domain names.
Accordingly, the Respondent has registered and used a common phrase as a domain name in connection with a legitimate purpose for a substantial span of time prior to any evidence of a trade or service mark of the Complainant.
The Complainant does not at all address the Respondent’s substantial use of the domain name for many years, and the Complaint does not allege that the Respondent’s current maintenance of the domain name infringes any trade or service mark right of the Complainant. The burden under this criterion is for the Complainant to prove the utter absence of legitimate rights or interests of the Respondent accruing from use of the domain name prior to notice of a dispute. The Complainant does not even attempt to address what the Respondent has been doing with the domain name in the nearly 16 years since it was registered by the Respondent.
The final criterion of the Policy requires the Complainant to prove the domain name was registered and used in bad faith by the Respondent. This is an element of intent, requiring the Complainant to show that registration and use of the domain name was somehow predicated on knowledge of the Complainant and its alleged mark.
Here, the Complainant, showing no evidence of a right or reputation of any kind prior to 2008, ridiculously claims that Respondent “registered it preemptively, clearly intending to make the public believe its website […has a] relationship with the Complainants.”
How is that even possible?
Quite obviously, the Respondent registered the domain name in 1998 – ten years prior to the earliest evidence of a trademark registration presented in the Complaint.
Accordingly, it is not possible for the domain name to have been registered in bad faith.
The use to which the domain name has been put during the last 15 years is discussed in the previous section. The Complaint uses the word “preemptively” to suggest that the Respondent had some sort of responsibility to know and predict future events, and that someone else would want the domain name in a dispute filed nearly fifteen years later.
Are we seriously to believe that an adult of ordinary mental capability can make this accusation and expect to be believed, let alone a legal professional with a duty to exercise competence?
The Complainant apparently expects this Panel to believe that the Respondent has psychic abilities to “preemptively” know the future actions of others, and registered this domain name in 1998 from its office in Oklahoma, because the Respondent knew that some unheard-of entity would claim trademark rights in Hong Kong in 2008. This type of nonsense should not be tolerated from grownups, and yet the Respondent has to address exactly this 10
type of abject foolishness on a regular basis.
The Complainant has made the insulting accusation that the Respondent is a cybersquatter on the basis of no rational theory whatsoever. The Complainant, knowing that the UDRP decisions are made public, intends its insult to the Respondent to be a public one. The operative facts here on the point of bad faith registration do not differ at all from other cases involving this Respondent, which any competent Complainant is able to determine in mere seconds from the UDRP search capabilities provided by UDRP providers, or even from a Google search of “Digimedia domain dispute”. The Respondent respectfully requests to know from this Panel whether or not there is any duty of diligence whatsoever binding upon complainants in these proceedings to do even that much, or any duty of competence to know the basics of the Policy under which a licensed legal professional engages to practice.
The domain name was obviously not registered in bad faith ten years prior to any claim of trade or service mark rights by the Complainant, and the Complainant makes no factual allegation supporting a claim of use in bad faith. Yes, the domain name is registered to the Respondent instead of the Complainant. While that does prevent the Complainant from using the domain name, the notion that the Complainant has some sort of retroactive, global and exclusive association with the phrase “I can”, of which the Respondent had some duty to predict ten years in advance, is a theme under the policy which will persist so long as Panelists continues to condone it. The Respondent had no legal duty to refrain from registering the domain name in 1998, nor to refrain from using it in any manner the Respondent had desired to use it since then. The Complaint advances no rational theory otherwise.
The Respondent thus requests the Panel to deny the Complaint and determine the existence of abuse of procedure by the Complainant under UDRP Rule 15(e).
The Respondent requests a finding of reverse domain name hijacking against the Complainants. “Reverse Domain Name Hijacking” is defined in Paragraph 1 of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” It must be stressed that normally panelists have taken an extremely cautious attitude towards this issue.
Under Paragraph 15(e) of the Rules, if after considering the submissions 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 constitute an abuse of the administrative proceeding.
The onus of proving the Complainant’s bad faith is generally on the Respondent; the mere lack of success of the Complaint is not itself sufficient for a finding of Reverse Domain Name Hijacking. The Respondent would need to show knowledge on the part of the Complainant of the Complainant’s lack of relevant trademark rights, or of the Respondent’s rights or legitimate interests in, or lack of bad faith concerning, the disputed domain name.
In spite of the fact that the disputed domain name was registered before the registration of the trademark “ICAN”, the Panel in this case is not persuaded that the circumstances of this case justify a finding of reverse domain name hijacking.
The Complainants submitted a document issued by a law firm confirming the relationship between the two complainants and the role of Complainant 2 in the publicity and use of the “ICAN” mark. This serves as a prima facie case for Complainant 2’s rights and interests in this proceeding.
The Respondent argues that Complainant 2 has no rights or interests in the “ICAN” mark; however, the Respondent did not submit any evidence supporting the argument. The Consensus view, as listed in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, provides that “In most circumstances, a licensee of a trademark or a related company such as a subsidiary or parent to the registered holder of a trademark is considered to have rights in a trademark under the UDRP. For the purpose of filing under the UDRP, evidence of such license and/or authorization of the principal trademark holder to the bringing of the UDRP complaint would tend to support such a finding.” Accordingly, this Panel 15 finds that Complainant 2 has rights and interests in the “ICAN” mark.
Although the earliest trademark “ICAN” was registered in 2008 in Hong Kong, the Complainants have already been using the trademark for the provision of services since their establishment before 2008. Through the years, the Complainants have achieved success in their businesses, which can be evidenced by the advertising materials, media coverage, and honor certificates submitted by the Complainants.
The evidence submitted by the Respondent shows that the Respondent also holds many other domain names. The mere act of registration does not automatically endow any legal rights or interests with the Respondent. The evidence before this Panel can only lead to the conclusion that the Respondent is making profits through licensing the domain name to a third party.
The Respondent argues that the Complainants’ case was hopeless and should never have been brought if further research work is done.
Nowadays many cases, which appear so obvious to the panelists or one party, may not be the case to the other party.
Circumstances when the WIPO panels have declined to find reverse domain name hijacking include: “the complainant’s argument under a required element of the UDRP fails, but not by such an obvious margin that the complainant must have appreciated that this would be the case at the time of filing the complaint;” “there is a question of clean hands or factual accuracy on the part of both parties.”
The Panel cannot find that the Complainants knew or should have known it would not succeed and thus declines to find that the Complainants have acted in bad faith, and so the Respondent’s application for a declaration to this effect is dismissed.
For the foregoing reasons, the Complaint is denied. The Respondent’s request for a finding of reverse domain name hijacking is also denied.