Wednesday , August 10 2022

Ecostream.com: Dutch UDRP respondent wins Reverse Domain Name Hijacking decision

Acquiring the aged domain name Ecostream.com via the UDRP process became the “Plan B” of Ecostream LLC.

Formed as a business enterprise under the name EcoStream, LLC on November 14, 2013, the Complainant provides water management and hydrocarbon reclamation services. They began using the ECOSTREAM mark to market its services on June 29, 2016.

Meanwhile, the domain Ecostream.com was registered in 1999.

Complainant attempted to purchase the domain name from Respondent on several occasions in 2016 and 2017, but Respondent declined to sell it.

The sole panelist at the Forum (NAF) noted the Complainant’s attempts at getting the domain were driven by desperation:

Not only the domain’s transfer was denied, the Complainant was also found guilty of Reverse Domain Name Hijacking.

Ecostream LLC v. Bart Vandehoek / Eneco B.V.

Claim Number: FA2204001990841

PARTIES

Complainant is Ecostream LLC (“Complainant”), represented by Eran Kahana of Maslon, LLP, Minnesota, USA. Respondent is Bart Vandehoek / Eneco B.V. (“Respondent”), Netherlands.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is , which is registered with Metaregistrar BV.

PANEL

The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.

Terry F. Peppard as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on April 4, 2022; the Forum received payment on April 4, 2022.

On April 5, 2022, Metaregistrar BV confirmed by e-mail to the Forum that the domain name is registered with Metaregistrar BV and that Respondent is the current registrant of the name. Metaregistrar BV has verified that Respondent is bound by the Metaregistrar BV registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On April 8, 2022, the Forum served the Complaint and all Annexes, including a Dutch and English language Written Notice of the Complaint, setting a deadline of April 28, 2022, by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to [email protected] Also on April 8, 2022, the Dutch and English language Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.

On May 4, 2022, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

Preliminary Issue: Language Of The Proceeding

In the ordinary course, UDRP Rule 11(a) provides that the language of this proceeding should be the language of the registration agreement governing the challenged domain name. That language is Dutch. However, Complainant has requested that the language of the proceeding should instead be English. In support of this request, Complainant submits that:

(i) the disputed domain name wholly contains English words and characters;

(ii) the content of the website resolving from the domain name is rendered in both Dutch and English, at the option of Internet users;

(iii) Complainant and Respondent have communicated with one another via e-mail messages composed in English as to the possibility of a sale of the domain name to Respondent;

(iv) these facts demonstrate Respondent’s proficiency in

English;

(v) translating the documents required to prosecute this

proceeding in Dutch would put Complainant to a substantial

financial burden and would unnecessarily delay this

proceeding.

Respondent does not contest any of these assertions. For that reason, and because UDRP Rule 11(a) permits this Panel to proceed in a language other than that of the governing registration agreement “having regard to the circumstances of the administrative proceeding,” we conclude that it would be in the interests of justice for us to grant Complainant’s request. See, for example, The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (a panel there exercising discretion in deciding that the language of a proceeding should be English, notwithstanding the different language of the pertinent registration agreement, based on evidence that a respondent had command of the English language).

Accordingly, this proceeding will be conducted in the English language.

PARTIES’ CONTENTIONS

A. Complainant

Complainant, formed as a business enterprise under the name EcoStream, LLC on November 14, 2013, provides water management and hydrocarbon reclamation services.

Complainant began using the ECOSTREAM mark to market its services on June 29, 2016.

Complainant registered the domain name on October 16, 2017.

Complainant has continuously made significant investments in advertising and promoting its services under the ECOSTREAM mark, as a consequence of which Complainant has established substantial goodwill in the mark.

Complainant has common law rights in the ECOSTREAM mark in the United States through its use of the mark in commerce from its inception to the present.

The domain name was first registered on May 5, 1999.

The domain name is confusingly similar to Complainant’s ECOSTREAM mark.

“Respondent used the ECOSTREAM mark in commerce before Complainant did.”

Respondent abandoned the ECOSTREAM mark in 2008.

Since October 2, 2016, the domain name has resolved to Respondent’s website at https://www.eneco.co.uk.

Eneco is a venture capital and growth financing investor concentrating in start-up companies devoted to the process of transitioning to sustainable energy.

Complainant attempted to purchase the domain name from Respondent on several occasions in 2016 and 2017, but Respondent declined to sell it.

Respondent lacks rights to and legitimate interests in the domain name.

Respondent has not been commonly known by the domain name.

Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name.

Instead, Respondent resolves the domain name to webpage of a different business.

Respondent registered and now uses the domain name in bad faith.

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant has failed to demonstrate that it has standing to pursue its claim against Respondent under the terms of Policy ¶ 4(a)(i).

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights to or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used by Respondent in bad faith.

In view of Respondent’s failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant’s undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations […] the Panel finds it appropriate to dismiss the Complaint”).

Identical/Confusingly Similar Domain Name and Complainant’s Mark Rights

It is indisputable that the domain name is substantively identical, and, therefore, confusingly similar to Complainant’s claimed ECOSTREAM mark. The domain name incorporates the claimed mark in its entirety, with only the addition of the generic Top Level Domain (“gTLD”) “.com.” This alteration of the mark, made in forming the domain name, does not save it from the realm of confusing similarity under the standards of the Policy. See, for example, Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):

[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.

This is because every domain name requires a gTLD or other TLD.

But our analysis under Policy ¶ 4(a)(i) does not end with a finding of identity or confusing similarity, because Complainant must also show that it has rights in the claimed mark sufficient to demonstrate that it has standing to pursue its claim in a UDRP proceeding. On this question, Complainant asserts that it has common law rights in the ECOSTREAM mark, running from 2013. A showing of rights in a mark acquired under the common law would meet this test of standing under Policy ¶ 4(a)(i). See, e.g., Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum March 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a UDRP complainant can prove that it has common law rights in a mark).

The required showing may be made in a variety of ways. See, for example, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at sec. 1.3:

Relevant evidence … includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.

Complainant alleges that it has used the mark in commerce continuously since its inception and has advertised its products and services under the mark over the same period. However, Complainant has provided no evidentiary support for these contentions. In particular, Complainant has failed to submit any evidence of its sales revenues and advertising expenditures over time or of public awareness of the mark. The absence of such evidence makes Complainant’s claim of standing to pursue its Complaint against Respondent insufficient to support a finding of secondary meaning, and, therefore, of common law rights in the mark satisfying the requirements of Policy ¶ 4(a)(i). See, for example, CW & Associates Consulting and Recruiting Inc. v. Lynda Pitchford / ITSR, FA 1619758 (Forum June 29, 2015), finding that a UDRP complainant failed to establish common law rights in a mark where: “Complainant has failed to provide evidence of any sales figures or advertising expenditures or any indication of the extent of use aside from what may be implied from the business name registration ….”

And, inasmuch as Complainant has failed to satisfy the proof requirements of Policy ¶ 4(a)(i), we need not examine whether it has met the requirements of the other subsections of Policy ¶ 4(a). The reason for this is that the Policy requires Complainant to prevail on each and every element of Policy ¶ 4(a) in order to prevail in the proceeding as a whole. If, therefore, Complainant has failed as to any one of them, its case fails altogether. And, in that event, consideration of the Complaint may begin and end with examination of the element of the Policy as to which Complainant has failed to provide proof upon which it can prevail. See, for example, Post.Com Limited v. Peter Neilson, D2002-0690 (WIPO September 17, 2002):

In this Panel’s view, the Complainant has not established … that the Domain Name was registered by the Respondent in bad faith…. In the light of this finding the Panel does not need to consider paragraphs 4(a)(i) and (ii) of the Policy.

To the same effect, see also Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd., D2010-0470 (WIPO May 19, 2010).

Reverse Domain Name Hijacking

In view of the exceptional circumstances described in Complainant’s Complaint and supporting submissions, we are obliged to consider whether, in filing and prosecuting its Complaint in this proceeding, Complainant has been guilty of “Reverse Domain Name Hijacking,” (“RDNH”), defined in UDRP Rule 1 as: “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”

In order to justify a finding of RDNH, we must be persuaded both that the Complaint has no merit and that Complainant has proceeded under the UDRP in bad faith. See, for example, NetDepositVerkaik v. Crownonlinemedia.com, D2001-1502 (WIPO March 19, 2002):

To establish reverse domain name hijacking, Respondent must show knowledge on the part of … Complainant of … Respondent’s right or legitimate interest in the Domain Name and evidence of harassment or similar conduct by … Complainant in the face of such knowledge.

On the record before us, the salient facts on this question include that:

1. throughout this proceeding, Complainant has been represented by experienced legal counsel;

2. Complainant knew, when it filed its Complaint, that Respondent had acquired its domain name before Complainant could have established common law rights in the ECOSTREAM mark upon which it relies;

3. Complainant has offered no evidence showing that Respondent procured its domain name registration in bad faith anticipation of Complainant’s acquisition of rights in its claimed mark; and

4. Complainant filed its Complaint only after its efforts to purchase the domain name from Respondent had failed.

On these facts, we find both that Complainant’s Complaint lacks merit, as detailed above, and that Complainant’s submissions demonstrate that, in filing and prosecuting this proceeding, Complainant has attempted in bad faith to obtain through abuse of the processes of the Policy what it could not obtain to its satisfaction through negotiation (often referred to as a ”Plan B” filing). As a result, Complainant is guilty of Reverse Domain Name Hijacking as defined in the Rules. See, for example, The Guitammer Company v. Herschel Thompson, FA1958918 (Forum September 13, 2021):

The Panel finds that Complainant knew or should have known that it was unable to prove … that … Respondent registered and is using the disputed domain name in bad faith. The most glaring evidence for this conclusion is that the Domain Name was registered … before Complainant’s trademark rights came into existence. It is logically impossible for the registration to have been made with the intent to infringe on trademark rights that did not yet exist. Accordingly, the Panel finds that reverse domain name hijacking has occurred. See Labrada Bodybuilding Nutrition, Inc. v. Glisson, FA 250232 (Forum May 28, 2004) (finding that [a UDRP] complainant engaged in …[RDNH]… where it used “the Policy as a tool to simply wrest the disputed domain name [from Respondent] in spite of its knowledge that … Complainant was not entitled to that name and hence had no colorable claim under the Policy”).

DECISION

Complainant having failed to establish an essential element required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, DENIED.

Accordingly, it is Ordered that the domain name REMAIN WITH Respondent.

Terry F. Peppard, Panelist

Dated: May 9, 2022

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