An Aussie Complainant operating from the domain BlitzGolf.net attempted to use the UDRP process to upgrade to BlitzGolf.com.
The ensuing UDRP ended with a finding of Reverse Domain Hijacking, as the Respondent registered the domain in 2004 and has used it since to provide services under the brand.
Final decision: Deny transfer of the domain Blitzgolf.com and a finding of RDNH was issued as well.
Simon Zybek v. James Yarber, Blitzgolf
Case No. D2021-1734
1. The Parties
The Complainant is Simon Zybek, Australia, represented by Norman Waterhouse Lawyers, Australia.
The Respondent is James Yarber, Blitzgolf, United States of America (“United States”), represented by Gordon Feinblatt LLC, United States.
2. The Domain Name and Registrar
The disputed domain name <blitzgolf.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 2, 2021. On June 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 3, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center sent an email communication to the Complainant on June 3, 2021 providing the registrant and contact information disclosed by the Registrar. The Complainant filed an amendment to the Complaint on June 11, 2021 reflecting the contact details of the registrant as disclosed by the Registrar.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 5, 2021. Communications were exchanged between the parties’ representatives on June 21 and June 25, 2021. The Response was filed with the Center on July 2, 2021.
The Center appointed Antony Gold as the sole panelist in this matter on July 13, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Respondent registered the disputed domain name on March 24, 2004 and, shortly thereafter, directed it to an active website which promoted a means by which golfers could record and track their scores in blitz golf tournaments. An archived screenshot of the home page of the Respondent’s website, dated February 8, 2011, shows a photograph of a golf club house. Underneath this image is introductory text, the opening portion of which reads; “Welcome to BlitzGolf.com. The website that makes running your Local Golf Blitz simple and easy to manage. Simply sign up and input your golfers to begin tracking each and every round played so those blitz points are up to date and accurate. No more keeping up with all that paperwork”. The webpage also features various pay-per-click (“PPC”) and other links.
The Response asserts that the Complainant first applied for a trade mark for BLITZ GOLF in Australia in 2017, although no details of this mark have been provided. In May 2018, the Complainant registered the domain name <blitzgolf.net> and directed it to a website which provided information about blitz golf tournaments in Australia. In October 2019, the Complainant applied for a United States service mark in class 41 for BLITZ GOLF. This mark, registration number, 6182257, was registered on October 27, 2020.
On February 12, 2021, the Complainant’s representatives sent a claim letter to the Respondent explaining that their client was about to embark on a marketing and advertising campaign in Australia and the United States and that he was seeking a transfer of the disputed domain name on the grounds that it was “highly likely” to interfere with his trade mark rights. The Respondent did not reply. On May 5, 2021, the Complainant’s representatives sent a further letter to the Respondent stating that they had instructions to bring proceedings under the Policy if the disputed domain name was not transferred to the Complainant, but that their client would be prepared to pay the sum of USD 1,000 for the acquisition of the disputed domain name, provided that the offer was accepted by the following day. No response was provided by the Respondent and these proceedings were duly commenced. Subsequent correspondence between the parties’ representatives is dealt with below.
The disputed domain name continues to resolve to a webpage which contains content very similar to that which was present in February 2011, save that the PPC links seem not to be active at present and there is a scrolling banner at the top of the home page which reads “BlitzGolf.com On the web since 2004 is under construction for server upgrades! We will be back soon!!!”. A number of the links on the Respondent’s website appear to be inactive1.
5. Parties’ Contentions
The Complaint is very brief. The Complainant says that the disputed domain name is identical to a trade mark or service mark in which he has rights, namely his United States service mark for BLITZ GOLF, full details of which are set out above. The Complainant is about to embark on a marketing and advertising campaign in Australia and the United States using his mark. The disputed domain name is highly likely to interfere with his trade mark rights as Internet users searching for his mark and for associated products will be directed to the Respondent’s website.
The Complainant says also that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The grounds on which it relies (in full) are that “Zybek is the owner of the US registered trade mark “Blitz Golf” (Trade Mark). Please find enclosed a copy of the Trade Mark’s registration”.
Finally, the Complainant says that the disputed domain name was registered and is being used in bad faith. The grounds on which he relies are similarly brief, namely; “Unfortunately, in our view, the Domain is highly likely to interfere with Zybek’s rights to use the Trade Mark, as many people searching the Trade Mark (and associated products) will be directed to the Domain”.
The Respondent accepts that the disputed domain name is identical or confusingly similar to the Complainant’s service mark for BLITZ GOLF. However, the Respondent says that he has been using BLITZ GOLF in the United States, as a domain name and as a trade mark, in connection with a bona fide offering of goods and services, since March 2004.
The Complainant operates through the domain name <blitzgolf.net> which, according to the WhoIs record, was registered on May 22, 2018. An article in the online version of the Australian Golf Digest indicates that the Complainant proposed to hold his inaugural event on Friday, April 20, 2018. This confirms that the Complainant was not operating or offering any goods or services under the name BLITZ GOLF in 2004 and only commenced doing so approximately 14 years after the Respondent acquired the disputed domain name.
The Respondent’s use therefore commenced long before the date of the Complainant’s application for his own trade mark and many years before he received any notice of the Complaint. The Respondent had acquired common law trade mark rights in BLITZ GOLF, when used in relation to golf-related services, well before the Complainant ever existed or had applied for or used, his trade mark. The Respondent continues to use the disputed domain name for the same purposes related to golf as he always has. Additionally, the Respondent has been, or is, commonly known by the disputed domain name.
The Respondent asserts that the Complainant has not tried to meet the burden of establishing that he acted in bad faith in obtaining the disputed domain name. The Complainant has not alleged any facts that related to, or would prove, bad faith. He has asserted only that Internet users searching for the Complainant’s trade mark might be redirected to the Respondent’s website. The Complainant’s disappointment in not being able to control the Internet does not mean the Respondent has acted in bad faith, nor does it comprise grounds for transferring the disputed domain name to the Complainant.
The Respondent cannot have been acting in bad faith if the Complainant was not using the mark BLITZ GOLF when the Respondent first acquired the disputed domain name. Many decisions by earlier UDRP panels have consistently determined that, where the domain name in issue was acquired before a complainant’s trade mark, no bad faith exists. See, by way of example, Machani Infra Development Corporation Private Limited v. K, Anand, WIPO Case No. D2021-1352, and Software Koibox S.L. v. Rolling Dice Productions, Inc., WIPO Case No. D2021-1420.
Moreover, the Respondent has taken no actions in this matter which could amount to bad faith. The first communication between the parties was the Complainant sending its letter on February 12, 2021 asserting that the Complainant had the right to stop others using BLITZ GOLF and requesting that the Respondent transfer the disputed domain name to him. The Respondent knew that the Complainant’s allegations were false and saw no reason to reply. The second communication from the Complainant to the Respondent was by letter dated May 5, 2021 in which the Complainant falsely asserted that its United States service mark entitled it to exclusive rights to BLITZ GOLF in the United States and offered to pay the Respondent USD 1,000 for the disputed domain name, with a deadline of one day for the Respondent to decide whether to accept the offer. Again, the Respondent had no reason to respond. It is noteworthy that, whilst the Complainant provided a copy of his letter of February 12, 2021 to the Panel, he did not provide the letter sent on his behalf on May 5, 2021, which made an unsolicited offer to buy the disputed domain name.
A communication was sent on behalf of the Respondent to the Complainant’s representatives on June 21, 2021, following receipt of the Complaint, identifying the weaknesses in the Complaint and making a counter-offer to the Complainant. The Complainant’s response, dated June 25, 2021, did not address the Respondent’s contentions that the disputed domain name had been applied for by him innocently, in good faith and for his own legitimate purposes. Contrary to the Complainant’s assertions, the Respondent’s counter-offer was not in bad faith and was an attempt to resolve the dispute.
Finally, the Respondent seeks a declaration that the Complainant has engaged in Reverse Domain Name Hijacking and that the Complainant’s actions constitute an abuse of these proceedings. In accordance with paragraph 15(e) of the Rules, the Complainant has been using the Policy in bad faith to attempt to deprive the Respondent of the disputed domain name. Reasons articulated by previous UDRP panels for finding Reverse Domain Name Hijacking include facts which demonstrate that a complainant knew it could not succeed as to any of the required three elements, such as clear knowledge of the respondent’s rights or legitimate interests or clear knowledge of the respondent’s lack of bad faith, such as registration of the domain name in issue before the complainant acquired trade mark rights, or basing a complaint on only the barest of allegations without any supporting evidence. Some UDRP panels have held that a represented complainant should be held to a higher standard; see J & J Calder Company Pty Ltd v. Michael Trinchitella, KetoGenics, Inc., WIPO Case No. D2021-0899.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that the Complainant prove each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Respondent has acknowledged that the disputed domain name is either identical or confusingly similar to the Complainant’s BLITZ GOLF service mark. The owner of the service mark relied on by the Complainant is, in fact, recorded as Zybek Pty Ltd, as trustee for the Zybek Family Trust, rather than the Complainant. However, this is not a point taken by the Respondent and the Panel therefore accepts that the Complainant has rights in this mark.
For the purpose of the comparing the service mark and the disputed domain name, the generic Top Level Domain, that is “.com”, is excluded as this is a technical requirement of registration. The remaining component of the disputed domain name is identical to the Complainant’s BLITZ GOLF mark and the Panel accordingly finds that the disputed domain name is identical to a service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides, without limitation examples of circumstances whereby a respondent might demonstrate that it has rights or legitimate interests in a domain name. In summary, these are: if a respondent has used or prepared to use the domain name in connection with a bona fide offering of goods and services, if a respondent has been commonly known by the domain name, or if a respondent has made a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark in issue.
How these provisions are usually applied in practice is explained at section 2.1 of the WIPO Overview 3.0. This explains that the consensus view of panelists is that “[w]hile the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ʻproving a negativeʼ, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.
The Complainant has not, however, provided any evidence or submissions as to why the Respondent should be found to have no rights or legitimate interests in respect of the disputed domain name. His sole contention in relation to the second element is to assert that he is the owner of a United States service mark for BLITZ GOLF. This falls a long way short of establishing a prima facie case that the Respondent lacks rights or a legitimate interest under the Policy and is insufficient to transfer the burden of production to the Respondent.
In fact, the Respondent’s evidence in relation to the second element supports his case that he has been using the disputed domain name in connection with a bona fide offering of goods and services. Specifically, the Respondent has provided evidence that, since 2004, the disputed domain name has been used in connection with the provision of an online facility which enables the organizers of, and players in, blitz golf tournaments to record the results of each player. Whilst the content of the Respondent’s website has changed little in the last 10 years and a number of links on it are currently inactive, such use as is being made of it is nonetheless in connection with a bona fide offering of goods and services. Furthermore, as the Respondent has pointed out, his use commenced many years before the Complainant commenced his own BLITZ GOLF-branded business from his website at <blitzgolf.net> and cannot be impugned by the Complainant.
The Panel therefore finds that the Respondent has rights and/or a legitimate interest in respect of the disputed domain name and the Complainant accordingly fails to establish the second element of the Policy.
C. Registered and Used in Bad Faith
As the requirements of paragraph 4(a) of the Policy are cumulative, the finding in respect of the second element is determinative of the outcome of the Complaint. However, the Panel deals also with the question of bad faith registration and use.
Paragraph 4(b) of the Policy sets out, without limitation four circumstances which, if found by a panel to be present, will be considered as evidence of bad faith registration and use of a domain name. The Complaint does not assert any circumstances which either correspond to those set out at paragraph 4(b) of the Policy or which might be considered to amount to a bad faith registration and use by the Respondent on a different basis. It states only that “the Domain is highly likely to interfere with Zybek’s rights to use the Trade Mark, as many people searching the Trade Mark (and associated products) will be directed to the Domain”.
The Complainant’s trade mark registration does not provide it with an automatic right to prevent the Respondent from registering and using the disputed domain name. It must establish each element under the Policy on a balance of probabilities, including bad faith registration and use by the Respondent. There is nothing in the Complaint to suggest bad faith registration or use on the part of the Respondent. The fact that the Respondent acquired the disputed domain name many years prior to the Complainant’s launch of his business and has used it since inception in connection with a bona fide offering of goods and services precludes any bad faith attack by the Complainant; see Software Koibox S.L. v. Rolling Dice Productions, Inc., supra.
As the Complainant has not established (nor even asserted) any circumstance which might amount to bad faith registration and use on the part of the Respondent, it fails to establish the third element also.
7. Reverse Domain Name Hijacking
The Panel considers, finally, the Respondent’s assertion that the Complainant has engaged in Reverse Domain Name Hijacking, which is defined under the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
Paragraph 15(e) of the Rules provides that, 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 constitutes an abuse of the administrative proceeding”. Section 4.16 of the WIPO Overview 3.0 provides examples of reasons articulated by panels for finding Reverse Domain Name Hijacking. These include facts which demonstrate that the complainant clearly ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint, unreasonably ignoring established Policy precedent and basing a complaint on only the barest of allegations without any supporting evidence.
Section 4.16 of the WIPO Overview 3.0 also explains that; “[g]iven the undertakings in paragraphs 3(b)(xiii) and (xiv) of the UDRP Rules, some panels have held that a represented complainant should be held to a higher standard”. This approach was adopted in Adopts Pick Enterprises, Inc. v. Domains by Proxy, LLC, DomainsByProxy.com / Woman to Woman Healthcare / Just Us Women Health Center f/k/a Woman to Woman Health Center, WIPO Case No. D2012-1555: “The fact that Complainant is represented by counsel makes the filing of this Complaint all the more inexcusable. The matters identified in the preceding paragraph are not Policy arcana; each is a precedent of long standing and derived from scores of cases, and each addresses a fundamental Policy requirement”.
In many respects, the Complaint evidences a lack of understanding on the part of the Complainant as to the evidential standards it is required to meet, rather than bad faith as such. Moreover, whilst the Complainant did not disclose in its Complaint its letter of May 5, 2021 to the Respondent, in which it made an offer to purchase the disputed domain name for USD 1000, the Complainant has not attempted to mislead the Panel on matters of fact.
However, the extent to which the Complaint is deficient is surprising, not least having regard to the fact that the Complainant has been professionally represented. Additionally, two features of the factual background are of particular note. First, this was an unwinnable Complaint in that the Respondent’s registration and use of the disputed domain name pre-dated the Complainant’s first known use of BLITZ GOLF by approximately 14 years. With very limited exceptions (none of which apply here) a complaint will not succeed where the domain name in issue was acquired by the respondent before the complainant had acquired trade mark rights. In this respect, see section 3.8.1 of the WIPO Overview 3.0 and, by way of example, J & J Calder Company Pty Ltd v. Michael Trinchitella, KetoGenics, Inc. (supra). The Complainant was therefore unable to assert any act or default on the part of the Respondent which might have supported findings of a lack of rights or legitimate interest in the disputed domain name and/or bad faith registration and use.
Second, after the Complaint had been served on the Respondent but before the Respondent had served his Response, the Respondent’s representatives wrote to the Complainant’s representatives on June 21, 2021 pointing out that the Complainant has not made out any case in the Complaint in respect of the third element and asserting that the Complaint would accordingly fail. They asked that the Complaint be withdrawn and set out their view as to why, if the Complainant continued to pursue these proceedings, this would amount to Reverse Domain Name Hijacking. Finally, they made a counter-offer to sell the disputed domain name to the Complainant for USD 36,000. The Complainant’s response to this letter focused primarily on the reasons why it rejected the counter-offer and on the Respondent’s attack on its trade mark rights. It did not set out any case on bad faith by the Respondent or indicate that the Complaint would be withdrawn. The Respondent subsequently filed his Response on July 2, 2021.
The Complainant did not take the opportunity of reevaluating at this juncture whether there was any inherent merit in his Complaint, with the consequence that the Respondent’s only option (other than acceding to the Complaint) was instruct his representatives to prepare and file the Response, notwithstanding that the Complaint was bound to fail. The Policy should not be misused in this manner. In these circumstances, the Panel finds that the Complaint was brought in bad faith and that it is appropriate to make a declaration of Reverse Domain Name Hijacking.
For the foregoing reasons, the Complaint is denied. In addition, the Panel concludes that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Date: July 27, 2021
1 As outlined at section 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. The Panel has accordingly visited the Respondent’s website in order to establish the use which is currently being made of it.
Copyright © 2021 DomainGang.com · All Rights Reserved.