UDRP complaint denied for PetExpress.com – Complainant guilty of Reverse Domain Name Hijacking

Marchex owned domain PetExpress.com gets a Reverse Domain Name Hijacking ruling as John Berryhill gets this complaint dismissed at NAF. This must be the longest decision I have ever seen for the simple reason that it includes the almost the complete complaint and response by the 2 parties. The Response is extended and includes several citations from previous UDRP cases.

My favorite part is where John Berryhill asks for a Reverse Domain Name Hijacking finding: “The Complainant’s behavior here should shock the conscience, and the UDRP requires the Panel, in all instances at its own discretion, to consider whether a complaint constitutes abuse of the Policy.  Reverse Domain Hi-Jacking is not set forth in the Policy as some sort of “counterclaim”.  The Complaint reeks with the stench of violation of the UDRP certification, misleading and objectively false allegations concerning the Complainant’s claimed pre-existence activities, omission of evidence of the prior correspondence between the parties, and what appears to be direct perjury.  The Complaint is such a kettle of wrong, that the Respondent is comfortable to permit this Panel to pick its favorites from it.“

After Complainant failed to buy the domain name from the Respondent, Complainant threatened to file a UDRP proceeding in 2009 and then acquired formal trademark rights to bolster its case. Complainant did not disclose Respondent’s use of the mark in its trademark application.

The Panel accused the Complainant of being “conclusory” in its initial submission and also said that “conclusory” is a charitable expression. Panel said the Complainant hide the facts above from the USPTO and the Complaint because it wanted to improve its chances in registering its mark and this proceeding.

Also, the Panel found that a willingness to sell a domain name, especially when a respondent has a legitimate interest, is not indicative of bad faith.

DECISION Details

Complainant was Airpet Animal Transport, Inc. Respondent was Marchex Sales, Inc / Brendhan Hight, represented by John Berryhill, Esq., PhD, Pennsylvania, USA..

Complainant submitted the Complaint to the National Arbitration Forum on November 6, 2012. The National Arbitration Forum pursuant to Respondent’s request to have the dispute decided by a three-member Panel appointed The Honourable Neil Brown QC, Judge Carolyn Marks Johnson and Houston Putnam Lowry, Chartered Arbitrator as Panelists.

Respondent registered the petexpress.com domain name on July 2, 2001.

PANEL’S DISCUSSION

The Panel found in favor of the Complainant in the first element of the UDRP: Identical and/or Confusingly Similar. Complainant contends it has rights in the PET EXPRESS mark. Complainant demonstrates it is the owner of the USPTO registration for the PET EXPRESS mark (Reg. No. 4,004,320 filed Nov. 2, 2009; registered Aug. 2, 2011). Panels have held USPTO registration of a mark is normally sufficient to demonstrate rights in a mark and those rights extend back to the date the registration was filed.

The Panel found in favor of the Respondent in the second element of the UDRP:Rights or Legitimate Interests. Complainant has not established a prima facie case in support of its arguments Respondent lacks rights and legitimate interests under Policy ¶4(a)(ii).

The Panel found in favor of the Respondent in the third element of the UDRP: Registration and Use in Bad Faith.

The Panel finds Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶4(a)(iii).

The Panel finds Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶4(a)(iii) because Respondent has rights pursuant to Policy ¶4(a)(ii).

The Panel further finds Respondent has not registered or used the <petexpress.com> domain name in bad faith because Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii).

Respondent claims its willingness to sell the domain name is not a demonstration of bad faith. Respondent argues it spent $165 million on the purchase of a number of domain names, including the <petexpress.com> domain name, because of the valuable descriptive nature of the domain name, and thus the asking price for the domain name is not unfounded. Panels have found that a willingness to sell a domain name, especially when a respondent has a legitimate interest, is not indicative of bad faith.

Respondent argues it has developed a history of good faith registration and use of domain names. Respondent has prevailed in all but three instances of the nearly two dozen UDRP proceedings to which it has been a party. This Panel believes each case must be judged on its merits. The fact Respondent is a frequent party to UDRP proceedings is immaterial.

Respondent additionally claims its good faith is clear, given the fact its registration of the <petexpress.com> domain name (July 2, 2001) pre-dated Complainant’s PET EXPRESS trademark application (which was filed November 2, 2009). It should be noted Complainant threatened to file a UDRP proceeding in 2009 and then acquired formal trademark rights to bolster its case.  Complainant did not disclose Respondent’s use of the mark in its trademark application.

Lastly, Respondent asserts Complainant has misrepresented numerous “facts” in the Complaint and declarations. Respondent argues the personal knowledge alleged by Mr. Botten is blatantly false as he was not living in the United States or employed by the (non-existent) Complainant prior to 2005. Respondent asserts Mr. Botten’s declaration therefore contradicts his own biography and provides zero documentary evidence of the type normally expected to satisfy the high bar of a common law claim.

It is certainly true Complainant was conclusory in its initial submission (and that is being charitable).  Respondent rightly pointed out Complainant’s claims were not possible as stated because Complainant was not formed until 2005.  While Complainant could have stated all of this in Complainant’s initial submission, it chose not to.  The question is why not?  It seems Complainant did this to improve its chances in this UDRP proceeding. Complainant applied for a trademark after knowing about Respondent’s domain name and did not disclose that fact to either the USPTO or the Panel.  Once again, the question is why not?  Presumably, Complainant wanted to improve its chances in registering its mark and this proceeding.

REVERSE DOMAIN NAME HIJACKING

The Panel has given careful consideration to the matters considered by previous panels on whether or not a panel should make a finding of Reverse Domain Name Hijacking. For the reasons given above in the section of this decision on bad faith, the Panel finds that this proceeding is an abuse of the UDRP administrative procedure.

The Panel concluded that relief shall be DENIED.