Complainant is Gainvest Legal Corporation, United States of America (“United States”), internally represented.
Respondent is John Sozanski, Gainvest, LLC, United States, internally represented.
The disputed domain name <gainvest.com> (the “Domain Name”) is registered with Network Solutions, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 27, 2020. In response to notifications by the Center that the Complaint did not provide the criteria required for registration, Complainant filed amended Complaints on October 31, 2020, and November 6, 2020. On November 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 9, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 10, 2020, providing the registrant and contact information disclosed by the Registrar, and informing Complainant that the Complaint was administrative deficiency, and requesting that Complainant to submit an amendment to the Complaint. Complainant filed a further amended Complaint on November 10, 2020.
The Center verified that the third amended Complaint, together with the fourth 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 Respondent of the Complaint, and the proceedings commenced on November 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 1, 2020. The Response was filed with the Center on December 1, 2020.
The Center appointed Robert A. Badgley as the sole panelist in this matter on December 4, 2020. 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 5, 2020, the Center received from Complainant an unsolicited supplemental filing with annexes. The Panel issued Procedural Order No. 1 on December 8, 2020, inviting Respondent to respond to the unsolicited filing by December 14, 2020. Respondent submitted a supplemental response to the Center, with annexes, on December 14, 2020. In its discretion, the Panel has considered the Parties’ supplemental materials, but notes that these materials added little of value to determine the merits of this case.
The Parties, particularly Complainant, have made numerous factual allegations and arguments in this proceeding, but only a few of the alleged facts and arguments are actually germane to the disposition of this dispute. The Panel will not lay out in detail all the allegations and arguments presented.
Complainant is an investment management firm that began using the service mark GAINVEST on March 19, 2019. Complainant secured a registration of the mark GAINVEST with the United States Patent and Trademark Office (“USPTO”) on August 4, 2020, under USPTO Reg. No. 6,117,641 for “investment management” services. Complainant operates a website at the domain name <gainvest.co>.
The Domain Name was registered on December 31, 1999, nearly 20 years before Complainant ever used GAINVEST as a trademark. The undisputed evidence in the record indicates that Respondent has always owned the Domain Name. The Domain Name does not resolve to an active website, and the record does not indicate that it ever has.
Respondent Gainvest, LLC is a Pennsylvania corporation owned by Respondent John Sozanski and his wife. Gainvest, LLC was registered as a corporation since January 10, 2008, more than 11 years before Complainant ever used GAINVEST as a trademark in any manner. The Sozanskis have engaged in various business activities over the years, including real estate ownership, investments, rentals, land development, and construction, and the Sozanskis have sometimes used their company name Gainvest, LLC in connection with such activities. The name appears on real estate leases and vendor invoices, for instance, and the couple pay their business sales taxes through the company as well.
On August 10, 2020, six days after Complainant’s GAINVEST mark was registered with the USPTO, Complainant’s owner (“Ali”) sent Respondent Sozanski an unsolicited text message asking about the Domain Name. According to Sozanski, at that time he had never heard of Ali, or Complainant, or any GAINVEST trademark. Ali and Sozanski exchanged various text messages and phone calls for several days, the general effect being that Respondent wanted USD 10,000 for the Domain Name and Complainant wanted to pay much less than that amount. At one point, Ali stated that he could not afford USD 10,000 because “we are a poor startup that just started in March 2019.”
Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Domain Name.
Respondent disputes Complainant’s main contentions, and particularly its bad faith allegations, and asserts that Complainant is engaged in Reverse Domain Name Hijacking.
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
The Panel concludes that Complainant has rights in the trademark GAINVEST through registration demonstrated in the record. The Panel also concludes that the Domain Name is identical to that mark.
Complainant has established Policy paragraph 4(a)(i).
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or 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; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel need not decide this element, given its conclusion below that there is no evidence of bad faith registration of the Domain Name.
Complainant has established Policy paragraph 4(a)(ii).
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel finds no evidence that Respondent registered the Domain Name in bad faith. As noted above, the Domain Name was registered more than 19 years before Complainant first used the GAINVEST trademark, and more than 20 years before that mark was registered. Because there is no evidence that Respondent was targeting Complainant’s (or anyone else’s) trademark at the time the Domain Name was registered, there can be no finding of bad faith registration of the Domain Name. The Complaint must fail.
This Complaint was doomed to fail, given Respondent’s apparently continuous ownership of the Domain Name long before Complainant had any trademark rights. There is absolutely no reason to doubt Respondent Sozanski’s denial of ever having heard of Complainant or its trademark prior to August 2020, when Complainant’s representative Ali approached Respondent about a purchase of the Domain Name.
The fact that a complaint under the UDRP is doomed to failure, however, does not necessarily compel a finding of Reverse Domain Name Hijacking (“RDNH”). A claim of RDNH should be evaluated under the particular circumstances of each case in which it is raised. One factor sometimes tending to support a finding of RDNH is if a complainant is represented by counsel. In this case, Complainant was indeed represented by counsel.
Another aspect of this case that supports a finding of RDNH is that Complainant, through counsel, not only brought a doomed case, but made a series of utterly frivolous allegations along the way. For instance, Complainant asserts, with no argument or evidence, that Respondent’s “primary purpose” vis-à-vis the Domain Name was to disrupt Complainant’s business. Complainant also chides Respondent for registering the Domain Name in 1999 but failing to adopt a corresponding business name until 2008. This argument misses the vital point that Complainant itself did not exist and was not using GAINVEST as a trademark for another 11 years after 2008. Complainant then asserts that “it can be implied that the domain name was registered by Respondent primarily for cybersquatting, to disrupt the business of Complainants while obtaining payment for that disruption.” These (and other) arguments raised by Complainant are specious, and support a finding of RDNH.
The best that can be said in defense of Complainant’s motives here is that Respondent never made much, if any, actual use of the Domain Name for more than 20 years. Even so, the accumulation of frivolous arguments, including those noted above, by Complainant are sufficient to tip the balance in favor of a finding that this Complaint was brought in bad faith.
For the foregoing reasons, the Complaint is denied.
Robert A. Badgley
Date: December 22, 2020
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