Complainant is HBA Holding LLC, United States of America (“United States”), represented by Brown Patent Law, PLLC, United States.
Respondent is William Sylvester, Internet Tool & Die Company, United States, represented by Hyland Law PLLC, United States.
The disputed domain name <itdc.com> is registered with eNom, Inc. dba Dynames.com, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 5, 2021. On January 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 8, 2021, 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 Complainant on January 11, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on January 11, 2021.
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 Respondent of the Complaint, and the proceedings commenced on January 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 1, 2021. On January 22, 2021, Respondent requested an extension to the Response due date. Pursuant to paragraph 5(b) of the Rules, on January 25, 2021, the Response due date was extended until February 5, 2021. The Response was filed with the Center February 4, 2021.
The Center appointed Georges Nahitchevansky, Kimberley Chen Nobles, and Richard G. Lyon as panelists in this matter on March 8, 2021. The Panel finds that it was properly constituted. Each member of 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.
Complainant, HBA Holdings LLC, is an Arizona Limited Liability Company that was formed on July 15, 2020. Complainant is the owner by assignment of a trademark registration for the mark ITDC for “information technology consulting services” in the United States in International Class 42 (Registration No. 5,691,373), which was filed on July 25, 2018, and issued to registration on March 5, 2019 (the “ITDC Registration”). Complainant obtained the assignment of the ITDC Registration and mark on July 26, 2020, from a company called IT Data Consulting, LLC, which is based in Reston, Virginia.
IT Data Consulting, LLC owns and operates a website at the domain <it-dc.com>, which provides information regarding the services offered by IT Data Consulting, LLC, which refers to itself as ITDC.
Respondent William Sylvester is an employee of a corporation by the name of Internet Tool & Die Company that was incorporated in the State of Delaware on September 6, 2018. Internet Tool & Die Company is a wholly-owned subsidiary of a company called Denuo, Inc., which also owns other businesses that broker private-party and governmental-party IPv4 number block sales. The Internet Tool & Die Company is apparently in the process of developing an Internet protocol number management software that will facilitate and assist in developing the transactions brokered by Denuo’s other businesses. Respondent William Sylvester and Internet Tool & Die Company are hereinafter collectively referred to as “Respondent.”
Respondent, through William Sylvester, purchased the disputed domain name on November 15, 2018, for USD 14,987.98. Respondent has used the disputed domain name in connection with a website that provides some information regarding Respondent.
On March 4, 2019, counsel for IT Data Consulting, LLC sent a demand letter to Respondent concerning Respondent’s use of the mark and name ITDC and Respondent’s registration of the disputed domain name. In that letter, counsel for IT Data Consulting, LLC demanded, inter alia, that Respondent transfer the disputed domain name and threatened to file a UDRP proceeding concerning the disputed domain name. On March 8, 2019, Respondent, though its counsel, responded to IT Data Consulting, LLC’s March 4, 2019, demand letter rejecting the contentions made therein and setting forth detailed reasons why Respondent was not infringing any alleged rights of IT Data Consulting, LLC in the name and mark ITDC.
No further communications occurred between the parties and on January 5, 2021, Complainant initiated the instant UDRP through the same attorney who had sent the March 4, 2019 demand letter on behalf of IT Data Consulting LLC.
Complainant contends that it is the owner of rights in the ITDC mark in connection with information technology consulting services on account of its United States trademark registration for ITDC. Complainant also contends that it owns common law rights in ITDC that date back to 2010.
Complainant asserts that the disputed domain name is identical to Complainant’s ITDC trademark as it consists of the exact ITDC mark owned by Complainant in the exact or similar class of services.
Complainant argues that Respondent has no rights in the disputed domain name as Complainant had preexisting common law rights in the ITDC mark prior to Respondent’s registration of the disputed domain name.
Lastly, Complainant contends that Respondent has registered and used the disputed domain name in bad faith in order to attract Internet users to Respondent’s website at the disputed domain name. Complainant also contends that because Respondent is not commonly known by the ITDC name and mark, owns no trademark registrations for ITDC, and only uses ITDC as an acronym for the Internet Tool & Die Company, Respondent’s use and registration of the disputed domain name after Complainant had secured rights for ITDC for the same services is in bad faith. In that regard, Complainant maintains that Respondent is not operating a bona fide businessas using the disputed domain name as the web address for Internet Tool & Die Company is not legitimate. Finally, Complainant asserts that Respondent has acted in bad faith by refusing to transfer the disputed domain name to Complainant after receiving the demand letter from Complainant’s counsel in March 2019.
Respondent rejects Complainant’s contentions.
Respondent initially notes that Complainant is an Arizona corporation that was formed on July 15, 2020. Respondent then notes that Respondent Internet Tool & Die Company was incorporated on September 16, 2018, and is a wholly-owned subsidiary of Denuo, Inc. and has been listed as such on Denuo’s website at <denuo.com> since January 11, 2020. Respondent maintains that its business is to develop Internet protocol number management software for commercial use. Respondent contends that it has offices in Herndon, Virginia that it shares with the other Denuo affiliated companies.
Respondent asserts that it purchased the disputed domain name on November 15, 2018, for USD 14,987.98 and did so as an acronym for its company name Internet Tool & Die Company. Respondent also asserts that it filed a trademark application in the United States for INTERNET TOOL & DIE COMPANY on December 30, 2018 (Application No. 88245540) for its software product in International Class 9, and owns a corresponding International Registration based on Respondent’s United States application that issued to registration on June 28, 2019 (Registration No. 1481010).
Respondent William Sylvester, in a sworn statement, maintains that he had no awareness of Complainant when he acquired the disputed domain name in November 2018. Respondent acknowledges that it received a demand letter, dated March 4, 2019, from counsel for IT Data Consulting LLC. Respondent asserts that it responded to that demand letter through its counsel on March 8, 2019, and rejected Complainant’s contentions. Finally, Respondent notes that Complainant is an entity by the name of HBA Holding LLC and that it is not clear what the actual existing relationship between HBA Holding and IT Data Consulting LLC might be.
Respondent does not dispute that the disputed domain name is identical to Complainant’s claimed ITDC trademark.
Respondent argues that it has rights and legitimate interests in the disputed domain name as Respondent (i) has a bona fide business that commenced operations in September 2018, (ii) registered the disputed domain as an acronym for its corporate name, (iii) filed trademark applications for its INTERNET TOOL & DIE COMPANY name and mark, (iv) has used the disputed domain name with a website advertising the software Respondent it is developing since January 2019, and (v) has used ITDC as part of its corporate identity and in its branding.
Respondent contends that it registered and has used the disputed domain name in good faith. Respondent argues that Complainant’s ITDC mark was not famous or well know at the time Respondent registered the disputed domain name in November 2018 and that Respondent was not aware of Complainant at the time it purchased the disputed domain name. Respondent notes that the four-letter combination “itdc” stands for many different things and is not uniquely associated with Complainant.
Respondent also contends that there is no evidence that Respondent acted in bad faith as (i) Respondent registered the disputed domain name as an acronym for its legitimate business name and purpose, (ii) Respondent and Complainant are not competitors, provide unrelated goods and service, and do not conduct business in the same industries, and (iii) there is no evidence Respondent attempted to disrupt Complainant’s business, create consumer confusion, misdirect consumers to Complainant’s website or to benefit in any way from any goodwill associated with Complainant’s claimed ITDC mark
Lastly, Respondent requests that the Panel make a finding that Complainant has engaged in reverse domain name hijacking.
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Complainant has provided evidence that it owns a trademark registration for the ITDC mark in the United States.
With Complainant’s rights in the ITDC mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain such as “.com”) is identical or confusingly similar with Complainant’s mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold.
In the instant proceeding, the disputed domain name is identical to Complainant’s ITDC mark as the disputed domain name fully and solely incorporates the ITDC mark. Respondent does not contest otherwise. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant’s ITDC mark and in showing that the disputed domain name is identical to that trademark.
Given that Complainant has not established the third element of bad faith registration and use, as discussed below, the Panel does not need to address the issue of whether Respondent has rights or a legitimate interest in the disputed domain name.
In the Panel’s view, Complainant has failed to prove that Respondent either registered or has used the disputed domain name in bad faith.
Initially, Complainant’s evidence is lacking in many respects. Although Complainant owns a United States trademark registration for ITDC in Class 42 for information technology consulting services, which claims a first use date of March 30, 2010, Complainant provided no evidence establishing that the ITDC mark is in fact in use, or has ever been used, by Complainant. It is not altogether clear to the Panel whether Complainant is actually using the ITDC mark in commerce. While Complainant makes a passing reference to a website at <it-dc.com> that website is for the company IT Data Consulting LLC and includes a copyright notice for the latter company. There is no mention of Complainant, HBA Holdings LLC, on the website. Moreover, the <it-dc.com> domain name is registered using a privacy service and Complainant has provided no evidence or explanation of what the existing relationship between HBA Holdings LLC and IT Data Consulting LLC might in fact be. Notably, Complainant simply provides in a conclusory manner that “HBC Holdings LLC through its predecessor owns the ITDC United States federally protected trademark.” Nothing further is ever disclosed.
Also lacking is evidence establishing that Complainant owns common law rights in ITDC prior to the date when the trademark registration for ITDC issued in March 2019, let alone as of November 2018 when the disputed domain name was acquired by Respondent. Complainant simply makes unsubstantiated and conclusory allegations of common law rights without submitting any of the evidence that would be typical in establishing such common law or unregistered rights in a UDRP proceeding. SeegenerallyWIPO Overview 3.0 at section 1.3.
But beyond these evidentiary failures, Complainant’s entire case rests on the notion that Complainant has broad prior rights in ITDC based on its trademark registration and that as such Respondent’s registration and use of the disputed domain name for its software business is in bad faith. Such contention is not supportable for several reasons. First, Complainant has not provided any evidence supporting its claim to broad rights in ITDC or that ITDC was even a known or established mark in November 2018 when Respondent acquired the disputed domain name. Second, Respondent has established that it owns a legitimate business known as Internet Tool & Die Company and has done so since September 2018. Third, from what the Panel can tell Respondent and Complainant are not competitors or in the same business, as Respondent is developing a very specific software product for Internet protocol number management, and Complainant or IT Data Consulting LLC appear to provide various information technology services unrelated to Internet protocol numbers. Lastly, there is evidence from Respondent that the four letter combination “itdc” is used by a number of other parties, thereby suggesting that Complainant does not enjoy broad rights in ITDC.
Also undermining Complainant’s claims of bad faith registration and use is the lack of any evidence that Respondent specifically targeted Complainant and its claimed ITDC mark. Complainant instead makes various assertions that Respondent (i) does not operate a bona fide business, (ii) is acting in bad faith by using a privacy service for the domain name registration, (iii) acquired the disputed domain name to simply redirect Internet traffic to Respondent’s website or to those of businesses connected to Respondent, and (iv) refused to transfer the disputed domain name after receiving a demand letter from Complainant’s counsel.
What is telling is that Complainant’s many unsupported assertions are directly rebutted by Respondent with documentary evidence. For instance, while Complainant makes mention of sending a demand letter to Respondent, that letter was not included in Complainant’s submissions. Indeed, Complainant does not even mention that Respondent provided a detailed response rejecting Complainant’s contentions only a few days after receiving Complainant’s letter. That evidence was provided by Respondent.
Additionally, while Complainant argues that Respondent is acting in bad faith by having used a privacy service to shield its identity, Complainant’s claimed <it-dc.com> domain name is likewise shielded by a privacy service. Nevertheless, the fact that Respondent used a privacy service does not in and of itself establish that Respondent is acting in bad faith. While Complainant could not find a listing for Respondent on an office door in the building whose address is used as the physical address of Respondent, the door of the alleged office, a picture of which was provided by Complainant, includes the name of Respondent’s parent company Denuo, Inc. What is notable is that Respondent in its March 8, 2019 letter specifically advised that Respondent was “a wholly-owned subsidiary of Denuo, Inc.” It thus seems surprising to the Panel that Complainant would now claim with certainty that Respondent does not exist and that its “sole reason for existence is to draw web traffic from Complainant” even though it found a listing for Respondent in the building directory and a sign on the door of Respondent’s alleged office for Respondent’s parent company Denuo, Inc., a company that is readily found in an Internet search.
There is likewise no evidence that the disputed domain was used specifically to redirect web traffic looking for Complainant to Respondent’s website or to other businesses affiliated with Respondent. If anything, the evidence provided by Respondent shows that Respondent does in fact have a legitimate business and merely used the disputed domain name, which is an acronym for Respondent’s company, for a website connected to that business. What is missing is evidence that establishes that Respondent is engaged in cybersquatting as opposed to registering and using a domain name that is an acronym of its actual bona fide business.
Based on the evidence that is before the Panel, this dispute does not look like a cybersquatting issue, but more like a possible trademark infringement or unfair competition case.
To be sure, to the extent that Complainant may have a claim against Respondent for trademark infringement or unfair competition, such a claim belongs in another forum and is beyond the scope of a UDRP proceeding which is limited to considering whether a Respondent has a legitimate interest in a disputed domain name and whether a disputed domain name has been registered and used in bad faith pursuant to a non-exhaustive list of circumstances set forth in Paragraph 4(b) of the Policy.
Accordingly, the Panel concludes that Complainant’s Complaint fails under the third element.
Respondent has requested that the Panel make a finding that Complainant has engaged in Reverse Domain Name Hijacking (“RDNH”).
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 RDNH 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.” Moreover, under paragraph 1 of the Rules RDNH is defined as “using the Policy in bad faith to attempt to deprive the registered domain name holder of a domain name.”
To be sure, when a complaint has failed, such does not automatic result in a finding of RDNH. The touchstone under paragraph 15(e) of the Rules is for a panel to determine whether the complaint constitutes an abuse of the administrative proceeding.
Here, Complainant made numerous allegations concerning its broad rights in ITDC that Complainant failed to support with any evidence. Indeed, Complainant not only failed to put in evidence establishing the existing connection between Complainant and IT Data Consulting LLC, the prior owner of the ITDC trademark registration, but claimed common law rights in ITDC going back to 2010 that were unsupported by any evidence. Such evidence, if it exists, surely was available to Complainant.
Added to that were several allegations made by Complainant that withheld material facts from the Panel, particularly the correspondence between the Parties in 2019 which included Respondent’s rejection of Complainant’s claims. What is particularly troubling is that in March 2019 IT Data Consulting LLC claimed common law rights in the ITDC mark as its trademark registration for ITDC had not issued yet. Complainant asserted that Respondent by registering the disputed domain name in November 2018 had violated the common law rights of IT Data Consulting LLC in ITDC. Those claims were rejected by Respondent, but almost two years later Complainant initiated this UDRP again asserting common law rights in ITDC but without any proof that such rights existed or were known to consumers or the relevant trade in November 2018 when Respondent acquired the disputed domain name.
Complainant also made other assertions of bad faith on the part of Respondent that were largely unsupported. For example, Complainant claimed that Respondent was not a bona fide business and simply “an Internet company whose sole reason for existence is to draw web traffic from Complainant.” That claim was largely made on the basis that while Respondent was listed as a business in a building in Herndon, Virginia, the door to the room where Respondent was to be found only “listed as two companies, ADDREX Inc., and DENUO Inc.” Complainant misleadingly failed to mention that in March 2019, its counsel had been specifically advised that Respondent was a wholly owned subsidiary of Denuo, Inc. Moreover, Complainant was also specifically advised that Respondent was “engaged in the business of selling Internet protocol number management software and services.” Complainant, however, made no mention of this in the Complaint and simply claimed that Respondent was offering “the exact or similar class of services” as Complainant and provided no evidence that in 2018 Complainant was offering or developing any software under the name and mark ITDC.
Complainant has submitted no evidence of the common law rights it claims existed in ITDC prior to the date when the ITDC registration was issued, substituting instead unsubstantiated and conclusory allegations. Complainant was, or should have been, aware that without proof it lacked rights in ITDC sufficient to succeed in a UDRP proceeding, but was hoping for a default or that the Panel would somehow find otherwise.
At best, Complainant may now have a trademark infringement or unfair competition claim against Respondent over the registration and use of the disputed domain name, but Complainant does not have a viable cybersquatting claim against Respondent based on the evidence in this proceeding. After over 20 years of UDRP jurisprudence, Complainant clearly ought to have known that it could not succeed under any fair interpretation of the facts reasonably available prior to the filing of the Complaint and that basing its complaint on the barest of allegations without any supporting evidence on what is essentially a trademark infringement dispute was doomed to fail and an abuse of the UDRP process (WIPO Overview 3.0, section 4.16). As presciently predicted by Respondent’s counsel in his reply to the March 2019 demand letter, “a UDRP filing under the circumstances presented here would likely result in a reverse domain name hijacking finding against your client.”
Accordingly the Panel finds that Complainant has abused the administrative proceeding and engaged in reverse domain name hijacking.
For the foregoing reasons, the Complaint is denied.
Georges Nahitchevansky
Presiding Panelist
Kimberley Chen Nobles
Panelist
Richard G. Lyon
Panelist
Date: March 22, 2021
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