Qwalify, Inc. of Ontario, Canada, lost its bid to grab the domain name qualify.com from Gregory Ricks the domain holder who represented himself.
The Complainant based its claim to the domain based on its trademark on the term QWALIFY which is of course a mis-spelling of the proper word, which was the subject of the complaint.
The domain name was registered September 27, 1999 by Mr. Ricks.
The one member panel,Andrew D. S. Lothian however, refused to find Reverse Domain Name Hijacking (RDNH) based on the domain holders movement of the domain a few times through the years to a different whois record. The panel found although the domain was still under Mr. Ricks control this might not have been obvious to the Complainant.
It seems if the whois record never changed this claim may not have been brought at all and if it still was the panel likely would have found RDNH.
Here are the relevant facts and findings by the panel:
The Complainant is a Canadian company founded in 2010 which provides a recruitment platform under the QWALIFY mark and uses the domain name
The Complainant is the owner of United States Registered Trademark no. 4319882 for the word mark QWALIFY, in international class 42, filed on March 22, 2012 and registered on April 16, 2013. The Complainant claims use of the QWALIFY mark since at least August 2010. The Complainant provides various materials dated from June 2010 to September 2013 including a press release, blog entries and news articles showing its use of the QWALIFY mark. The Complainant produces an article from a publication named “Technology Directory” which incorrectly quotes the Complainant’s domain name as
It is alleged, and not disputed, that the Respondent Gregory Ricks is a seasoned domainer who has a history of findings under the Policy that he has registered and used domain names in bad faith.
The disputed domain name was created on September 27, 1999.
The Complainant contends that the disputed domain name is confusingly similar to a trademark in which the Complainant owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant asserts that based upon its registered trademark for the word QWALIFY, together with its use in commerce of the mark since August 2010 as evidenced by the media coverage produced with the Complaint, the Complainant has acquired rights in and to the QWALIFY trademark and is the proper Complainant in this proceeding. The Complainant submits that the disputed domain name is almost identical to the QWALIFY mark as it is identical phonetically and conceptually. The Complainant states that the differences between its mark and the disputed domain name, namely the use of “u” instead of “w” and the “.com” suffix are irrelevant as they do nothing to avoid a finding of confusing similarity.
“The Respondent states that the Complaint is nothing more than an attempt to “steal” a valuable domain name by way of the Policy. The Respondent notes the Complainant’s assertion that the disputed domain name was registered at some time between March 1, 2012 and May 15, 2012. The Respondent states that he registered the disputed domain name on September 27, 1999.
The Respondent notes the Complainant’s assertion that the Respondent was aware of the Complainant at the time the disputed domain name was registered.
The Respondent asserts that he had never heard of the Complainant prior to receiving the Complaint. The Respondent notes that he is also the owner of
The Respondent states that he is personally responding to the Complaint without the benefit of legal advice because he is being bombarded with frivolous complaints and asserts that he should not have to repeatedly spend money to defend each such complaint.
The Respondent adds that on March 11, 2014 another complaint has commenced on his domain name
With regard to the Complainant’s comments in response to Procedural Order No. 1, the Respondent states that the disputed domain name has been under the Respondent’s personal control since September 27, 1999.
The Respondent states that he is selling domain names because it would take “many lifetimes” to develop or liquidate his volume of domain names and that he made an error in pricing the disputed domain name at USD 50,000. The Respondent submits that the error came from applying a fixed “buy it now” price to a list of domain names for his broker and that he did not realize that the disputed domain name was on this list.
The Respondent notes that the price for the disputed domain name would be considerably higher.
In the present case, the Complainant claims that there have been two transfers of the disputed domain name since it acquired any rights in the QWALIFY mark, namely first at some point between March and May 2012 and secondly in March 2014 after the Complaint was filed.
In the Panel’s view this is plainly incorrect.
At best there has been a single relevant transfer, namely that which occurred between March and May 2012.
The Panel accepts that this transfer took place, as the Complainant puts it, “within months” of the point at which the Complainant filed an application for its QWALIFY trademark, which it did on March 22, 2012.
However, unlike the circumstances in BMEzine.com, LLC., supra, there is no evidence before the Panel in the present case that pay-per-click usage began immediately thereafter, nor in fact any evidence of when such usage began, nor more importantly is there any evidence that such pay-per-click usage specifically targeted the Complainant’s rights or referred to its line of business at any point.
As far as the alleged March 2014 transfer is concerned, the revealing of an underlying registrant by a registrar or privacy service after a complaint is filed under the Policy, with corresponding amendment of the WhoIs record, is not typically viewed by panels under the Policy as a transfer of the domain name concerned, nor in the opinion of this Panel should it be. It is an action most commonly triggered by the Center’s registrar verification process and is under the control of the registrar of a domain name and/or the operator of the privacy service, not the registrant.
It does not constitute a transfer or an acquisition of a domain name but rather a disclosure of registrant data.
In all of these circumstances, the Panel determines that there are sufficient reasons in the present case to ignore the movement of the disputed domain name between the various registrants and instead to treat the Respondent as the underlying registrant since earlier than 2003, this date being selected by the Panel on the basis of the renewal notice produced by the Respondent.
As the Respondent’s registration of the disputed domain name long pre-dates the coming into existence of the Complainant or its rights, it follows that there can be no registration in bad faith in the present case.
Consequently, the Complainant’s case that the Respondent registered the disputed domain name with intent to sell it to the Complainant at a price in excess of its out-of-pocket costs fails. The Respondent’s approach that it is the longstanding holder of a valuable domain name and, by implication, that it is entitled to place this on general sale at a substantial asking price is to be preferred.
Turning to the use of the disputed domain name, the Panel has seen no evidence indicating that the Respondent is targeting or has ever targeted the Complainant or its QWALIFY mark in any way through the Respondent’s use of the disputed domain name.
The Panel notes that the associated website displays pay-per-click advertising.
The Complainant states that the advertising links are not genuinely related to the common meaning of the disputed domain name.
Even if this were true, the Complainant fails to point to any links whatsoever on the website associated with the disputed domain name that target the Complainant’s QWALIFY mark or the recruitment services offered under it. What is more, at least half of the links do relate to the generic meaning of the word “qualify” in that they concern credit services and financial products of one type or another and in the Panel’s view are most probably being referenced in the sense that a consumer may “qualify” for a loan or a mortgage.
Accordingly, based upon the website associated with the disputed domain name, the Panel cannot identify any way in which the Respondent could be said to have intentionally created a likelihood of confusion with the Complainant’s mark as the Complainant contends.
The Complainant provides two examples of confusion which it cites in accordance with paragraph 4(b)(iv) of the Policy. First, it produces an example of an article where a journalist misquotes the Complainant’s website address as that of the disputed domain name.
In the Panel’s mind, there can be no suggestion that this was caused by any action on the part of the Respondent.
Secondly, the Complainant produces a screenshot showing that the “Google” search engine asks whether an Internet user meant to search for the Complainant’s domain name when the disputed domain name is entered as a search query. Again, there is no reason before the Panel to hold the Respondent liable for this apparently automated action of a third party website.
In these circumstances, the Panel finds that the Complainant has not proved that the disputed domain name was registered and used in bad faith.
The Panel has made a finding that the Complainant has proved neither registration nor use in bad faith and accordingly need not consider the point.
D. Reverse Domain Name Hijacking
The Respondent has requested that the Panel make a finding of Reverse Domain Name Hijacking on the grounds that the Complainant is using the Policy to “steal” a valuable domain name from the Respondent. In ordinary circumstances, given that the disputed domain name long pre-dates the Complainant’s trademark rights, that the Complainant knew this when it filed the Complaint, and that there is no apparent evidence that the Respondent is targeting the Complainant’s rights, the Panel might have considered it appropriate to enter such a finding. However, the situation is not quite as straightforward in the present case.
The Complainant was confronted by a registrant which is not only a seasoned domainer but which has also been the subject of a series of findings of registration and use in bad faith under the Policy.
Among the cases brought against the Respondent, the Complainant carefully noted the circumstances of BMEzine.com, LLC., supra, in which a three member panel determined that the Respondent’s transfer of a domain name between privacy services was capable of changing the date on which bad faith was to be assessed. The present case involved a similar transfer. As a further common feature, in both cases there was proximity between the date on which the complainant applied for a trademark and a transfer of the corresponding domain name.
The primary reason for the failure of the Complainant’s case here is that the similarities with BMEzine.com, LLC., supra go no further.
In particular, the Panel has found in this case that the transfers between privacy services do not alter the Respondent’s underlying ownership of the disputed domain name, which dates from at least 2003.
None of the transfers appeared to the Panel to be tainted by the Respondent’s post-transfer use of the disputed domain name as was the case in BMEzine.com, LLC. However, this issue was inevitably somewhat unclear at the time when the Complaint was filed, due to the manner in which the disputed domain name had been held.
Furthermore, the Respondent had not provided any reason for the transfers described in BMEzine.com, LLC, whereasit volunteered an explanation in the present case. That explanation, which was acceptable to the Panel, could not reasonably have been anticipated by the Complainant.
In all of these circumstances, the Panel considers that the Complainant was entitled to test the question of whether the Panel might take a similar approach to the panel in BMEzine.com, LLC., supra, and accordingly, the Respondent’s request that the Panel enter a finding of Reverse Domain Name Hijacking is denied.