The Complainant is Reflex Marketing, LLC, United States of America (“US”), represented by Palmarella Curry & Raab, PC, US.
The Respondent is Mars Nic, China / Fei Guo, China / Ming Guo, China.
The disputed domain name <reflexmarketing.com> (the “Disputed Domain Name”) is registered with DropCatch.com LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 25, 2019. On October 29, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 30, 2019, 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 November 1, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 4, 2019.
The Center verified that the Complaint together with the amendment to the 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 November 13, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 3, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 4, 2019.
The Center appointed Nick J. Gardner as the sole panelist in this matter on December 13, 2019. 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.
On December 17, 2019 the Panel issued a Procedural Order (the “Procedural Order”) which provided as follows:
“The Panel has reviewed the Complaint as filed, and requests that the Complainant file a supplementary statement with appropriate accompanying evidence directed at the following matters:
1) The claim made in the Complaint that the Complainant has used the name Reflex Marketing since 1983.
2) Explaining (to the extent the Complainant is aware of the same) the history of the Disputed Domain Name prior to its registration by the Respondent on April 12, 2019.
3) Explaining whether it is alleged that the Respondent either was, or should have been, aware of the Complainant and/or its business when it registered the Disputed Domain Name and, if so, explaining the basis for that allegation.
The Panel requests the Complainant to provide such a statement, to be filed by December 23, 2019. The Respondent shall then have until December 27, 2019 to file any submissions or evidence that it wishes in reply to that statement.
The Panel shall proceed to render its decision on or before January 6, 2020. The Panel reserves the right to take any additional procedural steps as it considers necessary”.
Pursuant to the Procedural Order on December 21, 2019 the Complainant filed a Supplemental Statement which the Panel will admit. On December 27, 2019 the Respondent sent an email to the Center. Given the terms of the Procedural Order the Panel will treat this email as the Respondent’s Response.
The Complainant is very short of meaningful information about the Complainant. In the light of material lodged pursuant to the Procedural Order the Panel accepts the Complainant has been in business since 1983. Apart from its trademark (see below) there is no evidence before the Panel as to what it does, nor is there any evidence about its size, where it operates geographically (apart from the fact it is incorporated in the State of New York), how many employees it has, how many customers it has, what sort of online presence (if any) it maintains or indeed any other significant information about its business. The filed evidence does establish that it owns US trademark no 5786667 which was applied for on November 13, 2018, published for opposition on April 9, 2019 and granted on June 25, 2019. It is registered in class 35 in respect of “Independent sales representatives in the field of audio and musical instruments and equipment”. The Panel infers this is the Complainant’s field of business. It claims a first use in commerce date of 1983. This trademark is referred to in this decision as the “REFLEX MARKETING trademark”.
The Disputed Domain Name was registered by the Respondent on April 12, 2019. It does not at the time of this decision resolve to any active website. Previously to the Respondent’s registration it was registered by a well-known advertising agency but apparently never used. The Complainant had had some discussions in 2018 with the advertising agency about purchasing the Disputed Domain Name – it appears however that before these discussions reached a final conclusion the advertising agency allowed its registration to lapse and the Respondent registered the Disputed Domain Name.
The Complainant subsequently had email discussions with the Respondent about purchasing the Disputed Domain Name. The Respondent requested a sum of USD 150,000 which the Complainant regarded as excessive and the discussions did not continue.
The Complainant’s case is expressed as follows:
“A. The Complainant’s business name is Reflex Marketing, LLC. Complainant has used the company name, Reflex Marketing, in its business since at least December 31, 1983, that is, for approximately 36 years.
B. The domain name registered to the Respondent is identical to Complainant’s U.S. Service Mark of ‘REFLEX MARKETING.’ See US Registration Number 5786667. A copy of the US Registration is attached hereto as Annex 3.
C. Upon information and belief, Respondent does not use the name and has registered it, and is merely ‘squatting on it,’ to gouge Respondent, the long term user of the Mark and the owner of the Mark as now Registered with the US Patent and Trademark Office, all as indicated in this Complaint and the items Annexed hereto, including Annex 4 hereto, search results showing no use of the subject domain name, as well as prior noted Annex of emails with the unfair, ridiculous, requested sale price of $150,000.00.”
“Before filing this Complaint, Complainant’s representative, Mr. Brett Peters, contacted Respondent to see if the domain name would be sold to Complainants for a reasonable price. Respondent demanded the wholly unreasonable payment of $150,000 US, for a domain name they do not even use. This is clear evidence of bad faith and of Respondent having no legitimate interest in reflexmarketing.com. See Annex 2 hereto, relevant emailing with Mr. Peters re same.”
The Respondent’s case as set out in its email of December 27, 2019 is as follows “Reflex and marketing are two common words, and I am a Chinese, and I have never heard of the complainant’s company in China, and the complainant may not have any business in China. I registered this domain name for my own project. I happened to find this domain listed for sale on one platform, so I registered this domain for my business but there is no malicious registration mentioned by the complainant.”
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The Panel finds that the Complainant has rights in the REFLEX MARKETING trademark.
The Disputed Domain Name is identical to the REFLEX MARKETING trademark. It is well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar – see for example Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
It does not for the purposes of the first element matter that the REFLEX MARKETING trademark was registered on June 25, 2019 after the date the Respondent registered the Disputed Domain Name. This fact is however relevant as to bad faith (see below).
Accordingly the Panel finds that the Disputed Domain Name is identical to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
In view of the Panel’s finding below in relation to bad faith, the Panel does not need to resolve this issue.
The Panel does not consider this case to be straightforward. This is not a “typical” case where a lapsed domain name is “drop caught” by a third party who may well then be fixed with actual or constructive notice of the established rights of the registrant who allowed the name to lapse – see for example Christopher Lane v. JInsoo Yoon (Kukmin), WIPO Case No. D2019-1388 for a previous decision of this Panel concerning such a case. In the present case the previous registrant (the advertising agency) had not, on the evidence before the Panel, ever used the Disputed Domain Name. The Panel does not know whether or not the Respondent is a professional domainer but even assuming it is, it found itself in a position to acquire a domain name comprising two ordinary English words. It would appear to be a domain name that is inherently attractive and of at least some value, and absent third party rights (as to which see below) one which would readily be acquired by a domainer who found it to be available.
Assuming the circumstances (i.e., the fact that the Disputed Domain Name had been “drop caught”) meant the Respondent could or should have made enquiries about the previous registrant those enquiries would not have shown the previous registrant (on the evidence before the Panel) having any applicable rights which would render the Respondent’s conduct to be in bad faith.
The question then arises as to whether the Respondent either was, or should have been, alerted to any third party rights including in particular any such rights as the Complainant might have. The difficulty here is that even if the Panel assumes in the Complainant’s favour the Respondent should have made enquiries, the evidence before the Panel does not establish that those enquiries would have led to the Respondent identifying the Complainant or even (had it identified the Complainant) concluding that the Complainant had applicable rights precluding the Respondent registering two ordinary English words. As indicated above there is no evidence before the Panel (apart from the ownership of the REFLEX MARKETING trademark) as to the nature or size of the Complainant’s business or what reputation it might have. The Respondent (based in China) says it had no knowledge of the Complainant. The Panel is conscious that proceedings under the UDRP are of a limited and restricted nature, do not involve oral hearings, discovery or cross examination, and hence are only applicable to clear cut cases, and it is not usually appropriate to decide disputed questions of fact or matters of truth or falsehood. The Panel does not consider that the Respondent’s case is obviously incredible or untrue, and accordingly does not consider it appropriate (given the evidence before the Panel) to reach a conclusion that the Respondent is not telling the truth.
In reaching this conclusion the Panel notes that the Complaint relies upon the REFLEX MARKETING trademark — but that trademark was not registered until June 25, 2019 — after the Respondent’s registration of the Disputed Domain Name. It had been published for opposition on April 9, 2019 (a few days before the Respondent’s registration) but the Panel does not consider this fact on its own (and absent any more detailed evidence about the Complainant and its business) is enough to lead to any conclusion that the Respondent either was, or should have been, aware of the Complainant or its business.
The Panel also notes that at no time in the correspondence passing between the Complainant’s representative and the Respondent was the Complainant even identified or was any suggestion made that the Complainant had any pre-existing rights or that the Respondent had done anything wrong. By way of example the correspondence simply commences “I am curious about the domain name you are selling, reflexmarketing.com. How much are you asking? (US$)”. It is true that the Respondent suggested a very large sum (USD 150,000) to transfer the Disputed Domain Name but that in itself does not establish bad faith if the Respondent’s previous acquisition of the Disputed Domain Name was not in bad faith. The fact that third party valuation tools may put a different value on the name (which the Complaint relies upon) does not alter this principle.
Accordingly, the Panel concludes the Complainant has not discharged its burden of proof in showing bad faith on the part of the Respondent and has hence failed to establish that the third condition of paragraph 4(a) of the Policy has been fulfilled.
For the foregoing reasons, the Complaint is denied.
Nick J. Gardner
Date: January 6, 2020
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