UDRP complaint for PhaseEight.com denied – Panelist gets UDRP right

A UDRP complaint for the domain name PhaseEight.com was denied by a single member panel at WIPO Arbitration and Mediation Center.

The Panelist made a statement that many panelists should read again and again until they understand what UDRP was designed for:
“The Panel has noted its concern that neither party has put on sufficient evidence showing whether the registration of the Domain Name was in bad faith. However the onus of proof on this element rests with the Complainant. In order to reach a conclusion that the Respondent had registered the Domain Name in bad faith, the Panel would have to make significant findings relating to the credit of the Respondent and Bushra Alwakza’s evidence in the absence of an opportunity to properly test such evidence. Such factual disputes are more appropriately dealt with through the courts. Such factual disputes are more appropriately dealt with through the courts.”

Complainant Phase Eight (Fashion & Designs) Limited of London, United Kingdom filed a complaint for the domain PhaseEight.com owned by OCC Domain Admin of Henderson, Nevada, United States of America, represented by Steven L. Rinehart.

The Center appointed Nicholas Smith as the sole panelist in this matter on February 7, 2013.

The Complainant is a United Kingdom corporation with its principal office in London, United Kingdom. First established in 1979 (and under its present name in 1983), the Complainant is involved in the production and retail sales, both in its own branded stores and in boutiques located in third-party stores, of clothes, handbags, jewellery and hats.

The Complainant has held trademark registrations for PHASE EIGHT (the “PHASE EIGHT Mark”) internationally, including the United States, the location of the Respondent. The PHASE EIGHT Mark was first registered as a Community Trade Mark on June 7, 1999, and was applied for and registered in the United States on March 7, 2008, and January 20, 2009, respectively. The Complainant also maintains an official website at “www.phase-eight.co.uk”. The Complainant also has numerous stores located in the United Kingdom, Germany, Ireland and Switzerland.

The Domain Name <phaseeight.com> was registered on April 10, 2004. The Domain Name redirects to a website that consists of a series of links to third party sites with titles such as “Dresses”, “Women Clothing Stores” and “Ladies Fashion”. Such websites are normally operated on a pay-per-click basis.

The Respondent is Oceanside Capital Corp (OCC), which was established in 1996. The Domain Name was registered for the purpose of developing and launching a motion picture entitled “Phase Eight”. Although OCC has not yet found funding for this motion picture, it has been holding the Domain Name with the intention of doing so when OCC completes several other projects.

Panel’s Discussion and Findings

A. Identical or Confusingly Similar

The Complainant is the owner of the PHASE EIGHT Mark, having registrations for PHASE EIGHT as a trademark in the United Kingdom and the United States, the location of the Respondent. The Domain Name is identical to the PHASE EIGHT Mark.

The Panel finds that the Domain Name is identical to the Complainant’s PHASE EIGHT Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

The Respondent claims that he has used the Domain Name for the purpose of developing and launching a motion picture entitled “Phase Eight”. However, the Respondent has provided no evidence of any use of the Domain Name, and very limited evidence of any demonstrable preparations to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services.

Regardless of this element, given the Panel’s finding under the bad faith element it has not been necessary to reach a final conclusion under this ground.

C. Registered and Used in Bad Faith

The Domain Name has been registered for almost 9 years. “The longer the time a disputed domain name has been registered, the more difficult it is for a complainant to prove bad faith registration” (see AVN Media Network, Inc. v. Hossam Shaltout, WIPO Case No. D2007-1011). There was no explanation for Complainant’s delay in filing the Complaint. Although the Panel’s decision in this case that Complainant has failed to establish bad faith registration does not rest simply on the passage of time between registration of the Domain Name and Complainant’s assertion of its rights, it is a fact that the Panel cannot ignore.

The Domain Name was first registered in 2004. The Respondent has put on evidence that the reason the Domain Name was registered was for the purpose of developing and launching a motion picture entitled “Phase Eight”. Regrettably, the evidence in support of this claim was very limited, consisting of a statutory declaration from the film’s alleged screenwriter, some short e-mails from 2005 between the Respondent and the screenwriter and a receipt for the purchase of camera equipment in 2005. Despite a request for additional evidence from the Panel, the Respondent did not produce a script, evidence that the alleged screenwriter Bushra Alwakza is an actual screenwriter or any other tangible evidence of the purported reason for the registration of the Domain Name. However, there is at least some evidence before the Panel that in 2005, the Respondent and Bushra Alwakza were involved in a project that involved a script titled “Phase Eight”.

The Complainant’s explanation for the registration of the Domain Name is equally unsatisfactory. The Complainant is based in the United Kingdom and Europe. At the time of registration, it had no presence in the United States, nor did it have any registered trade marks in the United States. The Complainant has failed to put on any evidence of its reputation in the United States, the location of the Respondent, at the time of the registration of the Domain Name. The mere fact that the Complainant had an operating website in 2004 does not amount to any evidence of a reputation in the United States or that the Respondent was aware of the Complainant at that time.

The fact that the Respondent’s website is now a pay-per click site is strong evidence that it is currently using the Domain Name in bad faith. Present use may be used to infer that a domain name was registered in bad faith, although it is more difficult to make the inference when the present use is occurring close to 9 years after the registration date. However the mere fact that the Domain Name is currently used for a pay-per-click site is not sufficient, given the lack of Complainant’s reputation and the Respondent’s evidence of an alternate reason the Domain Name was registered, for the Panel to reach a finding that the Domain Name was registered in bad faith. Furthermore, the Respondent denies creating the pay-per-click website and claims that any such advertisements were placed there by the Registrar.

The onus is on the Complainant to prove that the Respondent registered and used the Domain Name in bad faith. In the present proceeding the Panel is not satisfied that the Complainant has discharged its onus. It has provided no evidence that the Respondent knew or should have known of the Complainant at the time of Registration.

The Panel has noted its concern that neither party has put on sufficient evidence showing whether the registration of the Domain Name was in bad faith. However the onus of proof on this element rests with the Complainant. In order to reach a conclusion that the Respondent had registered the Domain Name in bad faith, the Panel would have to make significant findings relating to the credit of the Respondent and Bushra Alwakza’s evidence in the absence of an opportunity to properly test such evidence. Such factual disputes are more appropriately dealt with through the courts.

Reverse Domain Name Hijacking:

The Panel is not persuaded that the circumstances of this case justify a finding of reverse domain name hijacking. At the time the Complainant commenced the proceeding the Respondent’s Website redirected to a pay-per-click site. The Respondent has provided no evidence that the Respondent’s Website had ever been active or that there had ever been any information publically available about any Phase Eight movie. Furthermore the Domain Name had been registered using a privacy service, so there was no way the Complainant could investigate the Respondent and its business background. In those circumstances the Panel finds that the Complainant had a plausible basis for its Complaint.

The Panel also rejects the Respondent’s assertions that the Complainant contained “numerous misrepresentations in hopes of wrongfully realizing its unlawful goals”. Under the Policy, the Complainant is not obliged to provide evidence of its trade mark rights in the location of the Respondent and its failure to do so, while weakening its case, does not amount to a misrepresentation.

The Complainant’s argument under paragraph 4(a)(ii) of the Policy has failed, but in the Panel’s view the argument was not so obviously doomed to failure that the Complainant must have appreciated that that was the case, and made a bad faith decision to go ahead with the Complaint anyway.

Decision

So the complaint failed at the third element of the UDRP. For the foregoing reasons, the Complaint was denied.