Complainant Feev Holding B.V. from Netherlands – Disputed Domain Registered in 2002 by a US Citizen – Complainant Trademark Registered recently in October 2019 – In August 2019, parties agreed to transfer the Domain Name for $15,000 – Respondent backed out, hence this UDRP – Website not reachable and no legitimate use being made – No Bad Faith proved, as Complainant’s contentions rejected – Held as a Reverse Domain Name Hijacking
Feev Holding B.V. v. Firas Dabboussi, FeeV
Case No. D2019-2683
1. The Parties
The Complainant is Feev Holding B.V., Netherlands, represented by Mouritz Legal, Netherlands.
The Respondent is Firas Dabboussi, FeeV, United States of America, self-represented.
2. The Domain Name and Registrar
The disputed domain name <feev.com> (the “Dispute Domain Name”) is registered with Register.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on November 6, 2019. On November 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 7, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 14, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 4, 2019. On December 3, 2019, the Respondent sent an email communication to the Center requesting an extension of the Response due date. An automatic extension of the Response due date was granted until December 8, 2019, under paragraph 5(b) of the Rules. The Response was filed with the Center on December 8, 2019.
The Center appointed Nick J. Gardner as the sole panelist in this matter on December 16, 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 Complainant’s representatives submitted a Supplemental Filing to the Center. The Panel will in its discretion allow it to be admitted as (a) it deals with material the Respondent raised in the Response which the Complainant had not previously seen; and (b) it makes serious accusations about the Respondent which the Panel considers should be dealt with. This submission is referred to as the “Complainant’s Supplementary Statement”.
4. Factual Background
The Complainant is incorporated in the Netherlands. The Complainant owns Benelux trademark FEEV no 1398856 registered on October 1, 2019 (the “FEEV trademark”).
The Disputed Domain Name was registered by the Respondent on February 22, 2002. At the time of this decision, attempts to view a website at the Dispute Domain Name result in a page displaying the message “Not Authorized to View This Page [CFN #0004]”.
5. Parties’ Contentions
The Complainant’s case in essence turns on a contractual right it says exists. It states: “On 3 August 2019 the Complainant and Respondent have reached an agreement for the transfer of the ownership of feev.com in consideration of a one-time total payment of 15,000 USD (fifteen thousand United States Dollars), (the “Agreement”). The Agreement was reached unambiguously and without any reservations from any Party”. It says the Respondent has wrongfully reneged on this agreement. The Complainant cites various previous UDRP decisions where a Respondent has consented to a transfer. It says that “To be clear: If so ordered, Complainant remains committed to pay the agreed upon transfer amount of 15,000 USD (fifteen thousand United States Dollars) upon effective transfer of the disputed domain name to Complainant”.
It also says that “Since 2002 Respondent registered the [Disputed Domain Name] in the hope of selling it off for a small fortune” and hence it registered the Disputed Domain Name in bad faith.
The Complainant’s Supplementary Statement says as follows:
“In accordance with section 8 of the Rules I call your attention as Case Manager to Annex 5 and Annex 6 as submitted by Respondent.
Respondent has thereby demonstrated that he has falsely generated email addresses in the names of two representatives of the Complainant.
This concerns the email addresses [name redacted by Panel for privacy]@feev.com and [name redacted by Panel for privacy]@feev.com.
Only Respondent can generate these email addresses and Respondent thereby intentionally misrepresents communications to external parties as if originating from the Complainant. This very serious and requires the Panel’s attention.
This act constitutes ID theft which is a criminal offense.
This act further substantiates the Respondent acting in bad faith as set out in the Complaint.
Please forward this information to the Panelist”.
The Respondent’s case is in essence that he registered the Disputed Domain Name in 2002 based on his nickname “fee” and his wife’s initial (“v”) as the domain names <fee.com> or <feed.com> (using “fee” with his initial) were already taken. The Respondent says he has used it continually since then although his website has been down in recent years. The Response as a whole is to some extent difficult to follow but given the Panel’s conclusions (below) this does not matter.
So far as the alleged contract is concerned the Respondent’s case seems to be that there is no concluded contract and in any event he was misled that the Complainant was a music start-up business when in fact it is a financial/cryptocurrency business. The Respondent exhibits at annexes 5 and 6 of the Response what he says are two unsolicited emails received at the Disputed Domain Name intended for named individuals at the Complainant from an employment recruitment offering the services of employees for such a venture.
6. Discussion and Findings
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.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the FEEV trademark.
The Disputed Domain Name is identical to the FEEV 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 matter for the purposes of this element that the Disputed Domain Name was registered before the FEEV trademark existed – the Panel agrees with the consensus approach as explained in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) section 1.1.3:
“1.1.3 While the UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired its rights, such rights must be in existence at the time the complaint is filed.”
Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity under the UDRP. The UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired rights. However, in such circumstances it may be difficult to prove that the domain name was registered in bad faith under the third element of the UDRP. See below as to bad faith issues.
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.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
It seems likely to the Panel that (i) above applies. However the Respondent’s evidence about how he has used the Disputed Domain Name since 2002 is rather muddled and difficult to follow. In view of the Panel’s finding below in relation to bad faith, the Panel does not need to resolve this issue.
C. Registered and Used in Bad Faith
The Complainant’s case is entirely misconceived.
The first difficulty the Complainant faces is that the Respondent’s registration of the Disputed Domain Name predates the Complainant’s FEEV trademark and also the existence of the Complainant by many years. See WIPO Overview 3.0, at section 3.8.1:
“3.8.1 Domain names registered before a complainant accrues trademark rights
Subject to scenarios described in 3.8.2 below [which are not relevant here], where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent”.
Although this technically ends the matter, as this element of the Policy requires a finding of both registration and use in bad faith, the Panel also finds that the Respondent has not used the Disputed Domain Name in bad faith. It appears the Respondent uses the Disputed Domain Name for business or personal purposes and there is no evidence that this has been in bad faith.
The Complainant’s further case based on an alleged contract is wholly irrelevant – the Policy is intended to address issues of cybersquatting, not contractual claims – which need to be determined in a court of competent jurisdiction. There are many reasons why this is the case but the present circumstances illustrate one such reason – the Panel has no powers, even if it thought the Complainant’s claim had merit, to ensure or compel the Complainant to comply with its obligation under the alleged contract – namely payment of USD 15,000. Whilst it will be a matter for a court of competent jurisdiction the Panel would add that the Respondent’s arguments that he was told in the relevant email exchange that the Complainant was a music start-up company when it fact it is a crypto-currency/financial services business appear well founded.
The Complainant cites numerous cases where the Respondent has consented to transfer of a domain name. These are wholly irrelevant. They all concern the position where a Respondent in the course of a dispute under the Policy agrees to the panel ordering a transfer. That is completely different from the panel determining the existence and effect of a contract which is in dispute. In any event there is no question of the Respondent having consented to the Panel ordering a transfer – as the Respondent has made abundantly clear.
The Panel would also add there is no evidence to support the Complainant’s allegation that the Respondent registered the Disputed Domain Name “in the hope of selling it off for a small fortune” (not that such conduct in itself necessarily establishes bad faith in any event).
Finally the Panel will deal with the Complainant’s extraordinary allegation that the Respondent’s annexes 5 and 6 show the Respondent has been fabricating email and committing a criminal offence of identity fraud. They show nothing of the kind. The Panel notes that technical means may allow a domain name registrant to set up a service to “catch all” incoming emails. Absent any convincing evidence to the contrary (and none is provided) the Panel sees no reason to doubt these emails are what the Respondent says – incoming emails from a third party recruitment consultant to named individuals at the Complainant, wrongly assuming their email address would be at the Disputed Domain Name. The allegation that the Respondent has fabricated these emails is completely unfounded and should never have been made.
Accordingly the Panel concludes there is no credible evidence to establish bad faith on the part of the Respondent and the Complainant has failed to discharge its burden of proof and has failed to establish that the third condition of paragraph 4(a) of the Policy has been fulfilled.
D. Reverse Domain Name Hijacking
Several circumstances of this case have led the Panel to consider whether the filing of the Complaint constitutes “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name” – see the Rules, paragraph 1, definition of 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. The Rules, paragraph 15(e), call for this analysis even when the Respondent has not expressly requested a finding of abuse – see Timbermate Products Pty Ltd v. Domains by Proxy, LLC / Barry Gork, WIPO Case No. D2013-1603.
In Jazeera Space Channel TV Station v. AJ Publishing aka Aljazeera Publishing, WIPO Case No. D2005-0309, the majority of the three-member panel noted that the onus of proving that a complainant has acted in bad faith is on the respondent, and that mere lack of success of the complaint is not of itself sufficient to constitute RDNH. The majority went on to note that:
“Allegations of reverse domain name hijacking have been upheld in circumstances where a respondent’s use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy (see Goldline International, Inc v. Gold Line, WIPO Case No. D2000-1151). See also Deutsche Welle v. DiamondWare Limited, WIPO Case No. D2000-1202, where an allegation of reverse domain name hijacking was upheld in circumstances where the complainant knew that the respondent used the at-issue domain name as part of a bona fide business, and where the registration date of the at-issue domain name preceded the dates of the complainant’s relevant trademark registrations.”
The three-member panel in Yell Limited v. Ultimate Search, WIPO Case No. D2005-0091, noted that whether a complainant should have appreciated at the outset that its complaint could not succeed will often be an important consideration.
In the view of the Panel this is a Complaint which should never have been launched. The Complainant should have appreciated that establishing registration and use in bad faith in respect of a domain name which had first been registered many years previously was likely to be impossible. The Complainant appears to have ignored any such considerations. It adopted an entirely unwarranted and misconceived approach based on a supposed contractual entitlement which even if it was well founded (which the Panel doubts) should have been brought to a different forum. The Complainant also threatened the Respondent with costs liability if an UDRP complaint was brought when no such liability exists under the UDRP. Finally it then introduced a completely misconceived allegation of criminal conduct against the Respondent which had no factual foundation whatsoever.
Given the relevant facts, the nature of the Policy and the fact that the Complainant was legally represented this was a case which should never have been brought nor should it have been presented in the manner it was. The Panel therefore finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
For the foregoing reasons, the Complaint is denied. The Panel finds the Complaint constitutes an abuse of the administrative proceeding.
Nick J. Gardner
Date: December 30, 2019