WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Flying Dog Brewery, LLLP v. WhoIs Privacy Protection Services, Inc. / Phil Allen, Flying Dog Enterprises

Case No. D2018-1683

1. The Parties

The Complainant is Flying Dog Brewery, LLLP of Frederick, Maryland, United States of America (“United States” or “U.S.”), represented by Offit│Kurman, United States.

The Respondent is WhoIs Privacy Protection Services, Inc. of Kirkland, Washington, United States / Phil Allen, Flying Dog Enterprises of Erie, Colorado, United States, represented by Thomas P. Howard LLC, United States.

2. The Domain Name and Registrar

The disputed domain name <flyingdog.com> is registered with eNom, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 25, 2018. On July 26, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 26, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 2, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Center also sent a Complaint Deficiency Notification on August 2, 2018. The Complainant filed an amended Complaint on August 6, 2018.

The Center verified that the Complaint together with the amended 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 August 10, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 30, 2018. The Response was filed with the Center on August 29, 2018.

The Center appointed William R. Towns as the sole panelist in this matter on September 7, 2018. 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 Complainant is a craft brewery, headquartered in Frederick, Maryland. The Complainant traces its beginnings to a brewpub opened in Aspen, Colorado in 1990. Subsequently, the Complainant opened a brewery in Denver, Colorado in 1990, and a second brewery in Denver in 2000. In 2006 the Complainant acquired a brewing company in Frederick, Maryland, and moved its entire brewing operations to the Maryland facility in early 2008.

The Complainant is the owner of United States trademark registrations for FLYING DOG BREWERY and FLYING DOG, for beer and clothing items, as follows:

FLYING DOG: U.S. Reg. No. 3448951, applied for on October 17, 2007, and registered on June 17, 2008;

FLYIND DOG BREWERY: U.S. Reg. No. 3495109, applied for on October 15, 2007, and registered on September 2, 2008 (disclaimer of exclusive right to use “brewery” apart from mark as shown);

FLYING DOG BREWERY (word + logo): U.S. Reg. No. 3546139, applied for on January 7, 2008, and registered on December 16, 2008 (disclaimer of exclusive right to use “brewery” apart from mark as shown);

FLYING DOG (word + logo): U.S. Reg. No. 4747734, applied for on October 14, 2014, and registered on June 2, 2015.

The Complainant claims first use in commerce of the FLYING DOG mark in June 1994; first use in commerce of the FLYING DOG BREWERY mark in January 1994; and first use in commerce of the FLYING DOG BREWERY and FLYING DOG logo marks in January 1996. The Complainant operates a website at “www.flyingdogbrewery.com”.

The Respondent registered the disputed domain <flyingdog.com> name on July 26, 1996. The Complainant has submitted a screenshot reflecting the Respondent’s use of the disputed domain name with a parking page containing “related links” to beer, alcohol, brewing and breweries. The Respondent acknowledges that the disputed domain resolved to a parking page for a brief period of time. The disputed domain name at present resolves to a web page with the following content: “The Dog Is Sleeping”.

The Respondent has submitted screenshots providing an historical record of the Respondent’s use of the disputed domain name from December 1996 through December 2015, using the “www.archive.org” search engine (the “Internet Wayback Machine”). The screenshots reflect the Respondent’s use of the disputed domain name with the Respondent’s Flying Dog Software website, as of December 27, 1996; the Flying Dog Software Products website, as of January 16, 1997; the Flying Dog Enterprises website (Drupal website), as of March 4, 2009; and the Flying Dog Barks blog, as of December 13, 2015.

On June 14, 2018, a domain name broker acting on behalf of an undisclosed client contacted the Respondent by email, advising that the client had made an offer of USD 15,000 for the disputed domain name. On June 22, 2018, the Respondent replied to the broker’s email, declining the offer. The Respondent asked the broker if he should take the time to come up a fair asking price, to which the broker replied “Yes, please provide me with an asking price”. On January 26, 2018, the Respondent advised the broker that his asking price for the disputed domain name was USD 225,000.

The Complainant was the domain name broker’s undisclosed client. In July, 2018, the Complainant filed a UDRP Complaint with the Center.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name is identical to the Complainant’s registered FLYING DOG marks, and differs only by the word “brewery” from the Complainant’s registered FLYING DOG BREWERY mark, noting that the Complainant has disclaimed the exclusive right to use “brewery” apart from the marks as shown.

The Complainant contends that the Respondent should be considered as having no rights or interests in respect of the disputed domain name, asserting that the Respondent: (1) is not using the disputed domain name with a website; (2) is not commonly known by the disputed domain name and has acquired no trademark or service mark rights; (3) is not making a legitimate noncommercial or fair use of the disputed domain name; and, (4) intends to profit illicitly by selling the disputed domain name, which the Respondent has “stockpiled” since 1996.

The Complainant asserts that the Respondent registered and is using the disputed domain name in bad faith. The Complainant alleges that the Respondent’s undisclosed principal registered the disputed domain, that the Respondent retained an agent to sell the disputed domain name to the Complainant, and that the Respondent demanded USD 250,000 for the disputed domain name, a price more than the Respondent’s out-of-pocket costs directly related to the acquisition or transfer of the disputed domain name.

B. Respondent

The Respondent submits that the Complainant has failed to satisfy any of the three elements of the Policy, instead relying on inaccurate facts that the Complainant would have recognized as such had it conducted even a cursory pre-filing investigation. The Respondent asserts that the disputed domain name is substantially different in denotation, connotation, and commercial impression than the Complainant’s FLYING DOG BREWERY and FLYING DOG marks. The Respondent argues that the Complainant’s disclaimer of “Brewery” in its registered marks indicates a strong association of the Complainant’s marks with beer and alcoholic beverages, which the Respondent maintains the disputed domain name does not create. The Respondent explains that he has used the disputed domain name for many years with a software marketing website and a computer related blog.

The Respondent maintains that he has demonstrated rights and legitimate interests in the disputed domain name dating back to 1996. The Respondent submits he has used the disputed domain name in connection with a bona fide offering of goods or services, and also has made a legitimate noncommercial use of the disputed domain name. According to the Respondent, since 1996 the disputed domain has been used with the Respondent’s website to market and sell software, including Java developer tools, to experiment with open-source framework for developing web applications, and with a blog called “The Flying Dog Barks”. The screen captures submitted by the Respondent depict the Respondent’s use of the disputed domain name with the Respondent’s Flying Dog Software website, including the Flying Dog logo, as of December 27, 1996; the Flying Dog Software Products website, as of January 16, 1997; the Flying Dog Enterprises website (Drupal website), as of March 4, 2009; and the Flying Dog Barks blog, as of December 13, 2015.

The Respondent submits the Complainant easily would have been aware of the foregoing had it conducted a search using the Internet Archive’s Wayback Machine. The Respondent acknowledges that in late 2015 or early 2016 he took down his website and parked the disputed domain name as a temporary cost-saving measure, with a view to using the disputed domain name with another website or making some other legitimate use of the disputed domain name. The Respondent maintains that he continues to use the disputed domain name with his email address and has done so for over 20 years, noting that he used the <flyingdog.com> email address when corresponding with the Complainant’s agent in January 2018.

The Respondent categorically denies that he registered and has used the disputed domain name in bad faith. The Respondent states that he is not a competitor of the Complainant and does not offer the same or related goods or services as those of the Complainant. The Respondent maintains that he had no knowledge of the Complainant or its asserted trademark when registering the disputed domain name in 1996, which occurred more than a decade before the Complainant applied for its first trademark registrations in 2008. The Respondent emphasizes that he resided in Georgia at the time he registered the disputed domain name.

The Respondent challenges the Complainant’s assertion of a first use date of 1991 and a first use in commerce date of 1994, over a decade before the Complainant’s initial trademark filing for its FLYING DOG mark. The Respondent argues that the Complainant has submitted no documentary evidence to support its claimed first use dates. The Respondent reiterates his contention that the disputed domain name has been used for both legitimate commercial and noncommercial use, and that the Respondent’s use of the disputed domain name has nothing to do with beer or alcoholic beverages.

The Respondent relates that at some time in 2001 he received an unsolicited inquiry from the Complainant about buying the disputed domain name. The Respondent acknowledges that he had moved to Colorado by that time, and recalls he was invited to visit the Complainant’s brewery, given a tour, and then met with a representative of the Complainant. According to the Respondent, a week or so later he received a telephone call from the Complainant conveying an offer of USD 19,000 for the disputed domain name. The Respondent states he refused the offer as being too low. The Respondent insists that no UDRP-related issues were ever raised by the Complainant before, during, or after these negotiations.

The Respondent states that some 15 years later, on January 14, 2018, he received an unsolicited email from a domain name broker acting on behalf of an undisclosed client. According to the Respondent, an offer of USD 15,000 (less the broker’s 10% commission) was presented, which the Respondent declined as being too low. Following an email exchange in which the broker invited the Respondent to submit his asking price, the Respondent made a counter-offer of USD 225,000. Shortly thereafter the Respondent learned that the Complainant had filed a UDRP complaint.

The Respondent submits that the Complaint was brought in bad faith and constitutes reverse domain name hijacking. The Respondent maintains that the disputed domain name was registered long before the Complainant sought to register its trademarks. The Respondent reiterates that following his refusal of the Complainant’s 2001 offer to purchase the disputed domain name, the Complainant never brought to the Respondent’s attention any UDRP related issues, either at that time or thereafter. The Respondent asserts that in the exercise of due diligence the Complainant would have been aware of the Respondent’s legitimate use of the disputed domain with his Flying Dog Software website.

The Respondent contends that the Complainant has made willful and reckless misrepresentations and failed to disclose material information to the Panel. The Respondent submits the Complainant has falsely represented that the Respondent “retained an agent to sell the URL to Complainant”, when in fact the Complainant retained the agent to anonymously approach the Respondent with an unsolicited offer. The Respondent characterizes the Complainant’s approach as a “low-ball straw purchase” intended to justify the Complainant’s filing of a UDRP complaint should the Respondent not accept the Complainant’s offer.

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.

Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests with respect to the domain name; and

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

Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name are deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds that the disputed domain name <flyingdog.com> is identical to the Complainant’s FLYING DOG mark and confusingly similar to the Complainant’s FLYING DOG BREWERY marks (collectively referred to as the “FLYING DOG marks”), in which the Complainant has established rights. In considering identity and confusing similarity, the first element of the Policy serves essentially as a standing requirement. ¹ The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name.

In this case, the Complainant’s FLYING DOG marks are clearly recognizable in the disputed domain name ². When the relevant trademark is recognizable in the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy ³. Top-Level Domains (“TLDs”) generally are disregarded in determining identity or confusing similarity under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the TLD ⁴.

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Complainant has demonstrated rights in its FLYING DOG marks, and the Panel has found that that the disputed domain name is identical to the Complainant’s FLYING DOG mark and confusingly similar if not identical to the Complainant’s FLYING DOG BREWERY mark, taking into account the Complainant’s disclaimer of the descriptive word “brewery” when registering the mark. While it is undisputed that the Complainant has not licensed or otherwise authorized the Respondent to use the disputed domain name, the record also makes clear that the Respondent registered the disputed domain name 12 years prior to the Complainant’s registration of any of the FLYING DOG marks. Although the Complainant asserts first use dates for the FLYING DOG marks between January 1994 and January 1996, the Complainant has submitted no documentation clearly showing the marks were in use during that time frame. Nor has the Complainant submitted evidence sufficient to demonstrate it had established unregistered or common law rights in the FLYING DOG marks prior to the Respondent’s registration of the disputed domain name. See WIPO 3.0, section 1.3, and cases cited therein.

The foregoing gives rise to a corollary question as to the extent to which the Complainant must explore and present findings regarding the Respondent’s past use of the disputed domain name for purposes of a prima facie showing under this heading. The Respondent has come forward with evidence on which he relies in asserting rights or legitimate interests in the disputed domain name. As noted earlier the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy. While the Panel entertains some reservations how representative the screenshots submitted may be of the Respondent’s overall use of the disputed domain name over a span of more than 20 years, the Panel is persuaded that the Respondent on balance has demonstrated use of the disputed domain name over a number of years that does not reflect a clear intention by the Respondent to target the Complainant or the Complainant’s mark.

In view of the Panel’s determination under paragraph 4(a)(iii) of the Policy, it is strictly-speaking unnecessary for the Panel to address the issue of the Respondent’s rights or legitimate interests with respect to the disputed domain name under paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

For the reasons discussed under this and the preceding heading, the Panel concludes that the Complainant has failed to carry its burden of demonstrating bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The record is clear that the Respondent has never initiated contact with the Complainant with the intention of selling the disputed domain name to the Complainant. To the contrary, it was the Complainant who in 2001 approached the Respondent and offered to purchase the disputed domain name from the Respondent for the sum of USD 19,000. The Respondent declined the offer and did not respond with a counter-offer. The Complainant did not at any time thereafter place the Respondent on notice that it viewed the disputed domain name as infringing its rights.

The Respondent heard nothing further from the Complainant for some 17 years. As previously discussed, the Complainant at no time provided any notice to the Respondent of the Complainant’s assertion that the Respondent had registered and was using the disputed domain name in bad faith. The Complainant on June 14, 2018, through the auspices of an undisclosed domain name broker, contacted the Respondent, presenting an offer of USD 15,000, which was less than the Respondent had been offered by the Complainant in 2001. The Complainant’s domain name broker encouraged the Respondent to make a counter offer. The Respondent did so, and within a few days the Complainant submitted a UDRP Complaint to the Center.

The Complainant could easily have discovered from a brief Internet search the Respondent’s historical use the disputed domain name before filing the Complaint. See, e.g., GIGS United S.L. v. SIE MANTIC, WIPO Case No. D2014-1689; Personal Communication Systems, Inc. v. CDN Properties Incorporated, WIPO Case No. D2014-0664. The Complainant either did not do so, or having done so elected to conceal from the Panel known facts unfavorable to the Complainant. The Complainant submitted a barebones complaint unsupported by any evidence, and blatantly misrepresented to the Panel that the Respondent had hired an undisclosed agent seeking to sell the disputed domain name to the Complainant at an exorbitant price. The record, however, confirms that it was the Complainant who retained a domain name broker. The Complainant’s blatant and intentional misrepresentation as described above constitutes a clear violation of section XIII, paragraph 21 of the Complaint.

Accordingly, the Panel finds that the Complainant has failed to satisfy the requirements of paragraph 4(a)(iii) of the Policy.

E. Reverse Domain Name Hijacking

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”. Reverse Domain Name Hijacking is defined under the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”.

The mere lack of success of the complaint is not itself sufficient for a finding of Reverse Domain Name Hijacking; rather, the record typically should reflect knowledge on the part of the complainant of the complainant’s lack of relevant trademark rights, or of the respondent’s rights or legitimate interests in, or lack of bad faith concerning, the disputed domain name. Rule 15(e) does not on its face restrict a panel’s consideration of Reverse Domain Name Hijacking to cases in which a respondent has asserted that a complainant has been brought in bad faith. In cases where a respondent requests a finding of complainant bad faith, however, WIPO panels generally have placed the onus of proving bad faith on the respondent. See WIPO Overview 3.0, section 4.16, and panel decisions cited therein.

In view of the Panel’s findings as set forth above, the record in this case establishes that the Complainant was brought in bad faith within the meaning of the applicable provisions of the Policy and Rules.

See, e.g., GIGS United S.L. v. SIE MANTIC, WIPO Case No. D2014-1689; Personal Communication Systems, Inc. v. CDN Properties Incorporated, WIPO Case No. D2014-0664. The Complainant has presented no evidence that supports or conceivably could support an allegation that the Respondent, after becoming aware of the Complainant, changed his use of the disputed domain name in order to target the Complainant or its mark. See Squirrels LLC v. Giorgio Uzonian, WIPO Case No. D2014-1434. There is no persuasive evidence in the record that the Respondent at any time targeted the Complainant’s rights in its marks.

Accordingly, the Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

7. Decision

For the foregoing reasons, the Complaint is denied.

William R. Towns
Sole Panelist
Date: September 22, 2018

¹ See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7.

²Id. When the relevant trademark is recognizable in the disputed domain name, the domain name normally will be considered confusingly similar to the mark for purposes of paragraph 4(a)(i) of the Policy. The Panel considers that the FLYING DOG BREWERY mark is clearly recognizable in the disputed domain name, as FLYING DOG is the dominant element of the mark and the descriptive word “Brewery” has been disclaimed.

³ See WIPO Overview 3.0, section 1.8 and cases cited therein.

⁴ See WIPO Overview 3.0, section 1.11.2 and cases cited therein.