UDRP complaint for epitec.com denied at NAF – Respondent defaults but Complainant proves legitimate use on behalf of the Respondent!

Respondent chose not to waste his time and money and didn’t reply to these proceedings. Complainant managed to prove the 2nd element (legitimate use) of the UDRP in favor of the Respondent by submitting screenshots of past use from archive.org and by submitting email correspondence with the Respondent, in which Respondent said that he used the domain in the past and plans to use it again in the future. The disputed domain name was registered 14 years before the registration of Complainant’s trademark. So the Panelist hinted that if there was a Response submitted that asked for a Reverse Domain Name Hijacking (RDNH) finding, the Panelist would have made such a finding. Panel rightly found in favor of Respondent.

Complainant was Epitec, Inc. from Michigan, USA. Respondent was EPITEC from Netherlands.

Complainant submitted the Complaint to the National Arbitration Forum on September 18, 2012. The National Arbitration Forum appointed Debrett G. Lyons as Panelist.

Respondent registered the disputed domain name, epitec.com, on June 6, 1998.

Complainant has used the trademark EPITEC since it began business as an IT services provider in 1978. Complainant owns, inter alia, United States Federal Trademark Reg. No. 4,174,322 filed Aug. 22, 2011; registered July 17, 2012 for the word mark EPITEC. That is 14 years after the domain name registration.

Respondent failed to submit a Response in this proceeding.

The Panel found in favor of the Complainant in the first element of the UDRP: Identical and/or Confusingly Similar. Panel found that the disputed domain name is legally identical to the Complainant’s trademark since it takes the trademark and merely adds the non-distinctive gTLD, “.com”

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.

The Panel said there is no evidence that Respondent has any trademark rights however the publicly available WHOIS information identifies Respondent as “EPITEC” and so there is an open question as to whether Respondent might be commonly known by the disputed domain name. Complainant refereed briefly to the fact that Respondent used the domain name from 2000-2003, allegedly in connection with competing services: “[B]oth the Complainant and the Respondent are engaged in industry of IT services. Even outside the context of identical or confusingly identical marks, the applicable services of the Respondent and the Complainant are confusingly similar.”

Panel notes that on August 3, 2012 Complainant sent Respondent what it has called a “cease and desist letter” wherein it stated that “Epitec has closely monitored the epitec.com domain name for some time. Although the Whois listing for epitec.com indicates that the domain name was first registered in 1998, the Wayback Machine internet archive indicates that the epitec.com domain name has not been used since 2003.” The letter also said: “In the interest of avoiding needless litigation, I am authorized to offer you a $300 administrative fee in exchange for the voluntary transfer of the domain name to Epitec.”

The domain name owner replied to this letter by email: “Like I said, I am planning to use it again for future activities. This and the reason that it would be hard to find a new domain name that describes what I am doing since 1998. … I hope you understand that handing the domain name over would cost me too much time and effort, so I will not do it.” Respondent also stated that the domain is not active at present but he has the intention to use it again.

Panel weighed this material against the burden of proof resting on Complainant to show a prima facie case that Respondent has no rights or interests in the domain name and draws the following summary findings:

First, lack of use of a domain name is not per se evidence of a lack of rights or interest in the domain name. In the absence of a Response, Panel might be entitled to make certain negative inferences as a result of non-use, especially over a long period, however in this case Complainant exhibits email correspondence which points to a direct intention by Respondent to use the name. Moreover, Complainant provides evidence that the domain name has been used in the past.

Secondly, Complainant’s bald assertion that passive holding of a domain name is evidence of bad faith must be qualified by the context in which former UDRP cases have made such a finding, specifically, instances where there was no likely good faith use to which the name could be put because of all the surrounding circumstances (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). Whilst some of the factors taken into account by panelists in earlier cases of that kind are present here – namely, a degree of notoriety of Complainant’s trademark, failure to file a formal Response, difficulty in identification of beneficial owner of the domain name – there are in this case additional circumstances which mitigate any adverse finding based merely on non use.

Thirdly, there is no evidence before the Panel of registration in bad faith. The domain name was registered in 1998. Although Complainant holds a much later acquired Federal trademark registration and has given evidence of its common law rights to the trademark at this point in time, there is nothing before the Panel which would allow it draw a meaningful conclusion about the market presence of Complainant’s business in 1998, nor is there any evidence whatsoever that in 1998 Respondent targeted Complainant’s trademark.

Fourthly, there is no evidence before the Panel of use in bad faith. The evidence from the Wayback Machine is largely inconclusive of how Respondent once used the domain name and it is the only evidence which Complainant has put forward in this regard. Panel has already commented on the issue of “passive use”.

Fifthly, the evidence shows that Complainant has been aware of and has been “monitoring” the domain name for some time. Had a Response been filed, it might have been submitted that Complainant has targeted Respondent and a submission of Reverse Domain Name Hijacking may have been made. Certainly, there is no explanation in the Complaint as to why a business established in 1978 delayed until 2012 to contact the owner of a domain name which was so manifestly adapted to suit its business or why Administrative Proceedings were not brought before now if the domain name was considered to be an abusive registration.

So the Panel found in favor of the Respondent in the 2nd element of the UDRP.

Panel didn’t address the third element of the UDRP that requires Complainant to prove that Respondent both registered and is using the disputed domain name in bad faith.

The Panel concluded that relief shall be DENIED.