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Primal Quest, LLC v. Gabriel Salas [2005] GENDND 2106 (15 December 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Primal Quest, LLC v. Gabriel Salas

Case No. D2005-1083

1. The Parties

The Complainant is Primal Quest, LLC, Morgan Hill, California, United States of America, represented by Donald M. Gindy, P.L.C.

The Respondent is Gabriel Salas, Bryan, Texas, United States of America.

2. The Domain Name and Registrar

The disputed domain name <primalquest.com> is registered with NameSecure, LLC (“NameSecure”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) in hardcopy on October 13, 2005. On October 14, 2005, the Center by email acknowledged receipt of the Complaint. On October 31, 2005, the Center notified Complainant that the Complaint was administratively deficient due to a failure to submit the Complaint in electronic format, as required by the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”). In response, on November 1, 2005, the Complaint was filed with the Center by email.

On October 14, 2005, the Center transmitted by email to NameSecure a request for registrar verification in connection with the domain name at issue. On October 17, 2005, NameSecure transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative and technical contacts.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 2, 2005. In accordance with the Rules, paragraph 5(a), the due date for the Response was November 22, 2005.

The Response was filed with the Center by email on November 19, 2005, and in hardcopy on November 22, 2005. On November 22, 2005, the Center by email formally acknowledged receipt of the Response.

The Center appointed David H. Bernstein as the sole panelist in this matter on December 1, 2005. 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

Complainant, a California corporation, owns a United States service mark registration for PRIMAL QUEST (Registration Number 2,757,075) for “entertainment and sporting event services, namely organizing and conducting sporting competitions featuring a wide variety of sports; a television series featuring a wide variety of sports events.” Complainant filed its trademark application on October 4, 2001; the U.S. Patent and Trademark Office issued the registration on August 26, 2003. Complainant alleged in its application that the date of first use and first use in commerce of its PRIMAL QUEST mark was March 12, 2002.

Complainant also owns a United States service mark registration for PRIMAL QUEST EXPEDITION ADVENURE RACE (Registration Number 2,789,381) (together, with PRIMAL QUEST, the “Marks”) for the same services; that application also was filed on October 4, 2001 and was issued on December 2, 2003. Complainant alleged in that application that the date of first use and first use in commerce for its PRIMAL QUEST EXPEDITION ADVENTURE RACE mark was October 2001.

Respondent registered the <primalquest.com> domain name (the “Domain Name”) on April 11, 2000.

5. Parties’ Contentions

A. Complainant

Complainant contends that the Domain Name is identical or confusingly similar to its Marks.

Complainant alleges that Respondent lacks any rights or legitimate interests in the Domain Name. Complainant contends that, throughout the period in which Respondent has owned the Domain Name, it has been “parked” or not used in connection with the bona fide offering of goods or services. Complainant further alleges that Respondent has not done anything tangible towards using the Domain Name for the bona fide offering of goods or services. Complainant asserts that Respondent is not commonly known by the Domain Name.

Complainant alleges that the Domain Name was registered and used in bad faith. Complainant contends that Respondent purchased the Domain Name for the purpose of resale and that Respondent currently is demanding $300,000 for the Domain Name, a price far in excess of Respondent’s actual costs when he acquired the Domain Name. Complainant asserts that Respondent is in the business of selling domain names for profit. Complainant states that Respondent’s actions have caused actual confusion and that Complainant’s consumers have reported difficulty in locating Complainant’s presence on the Internet. As a result, Respondent has misled users by directing them away from Complainant and has harmed Complainant’s business interests.

B. Respondent

Respondent states that he chose the Domain Name in order to “portray an artistic web site that shows just that: a primal quest, a basic search, an important journey, and to use that concept for the online marketing of his business endeavors.” Respondent asserts that, in April 2000, when Respondent registered the Domain Name, he was not aware of Complainant’s business or if it existed. Respondent states that he has retained registration of the Domain Name for his own purposes, registered other domain names in 1999 and 2000 containing the word primal, and will continue “branding his websites using domain names that contain the word primal.”

Respondent contends that, contrary to Complainant’s assertions, much development was and is being done in connection with the Domain Name. Respondent states that, at various points, the Domain Name directed Internet users to a website that contained either an “art image” or a “poetic line of verse.”

Respondent admits that his asking price for the Domain Name is $300,000, but claims that that amount represents what he could sell it for in the future after the associated website is fully developed. Respondent claims that he is not presently taking action to sell the Domain Name other than listing a price next to the Domain Name on one of his websites, but he would be willing to sell it. Respondent asserts that he is not in the business of selling domain names in which he is aware that another party owns legitimate rights.

6. Discussion and Findings

It is by now well established that, to prevail, a UDRP complainant must prove both bad faith registration and bad faith use. Policy, paragraph 4(a)(iii); e-Duction, Inc. v. Zuccarini, WIPO Case No. D2000-1369 (February 5, 2001). Complainant’s allegations, though, focus almost exclusively on Respondent’s alleged bad faith use of the Domain Name and largely ignore the issue of whether Respondent registered the Domain Name in bad faith.

There is no factual dispute concerning the chronology in this matter. Respondent registered the Domain Name on April 11, 2000, about 18 months before Complainant’s first use date of the PRIMAL QUEST mark (in any form). Complainant has not alleged that it had any rights in the Marks prior to the date that Respondent registered the Domain Name. Because the test of whether a respondent registered a domain name in bad faith necessarily focuses on whether the respondent registered the name with the intent of profiting off of complainant’s trademark or interfering with complainant’s use of its mark, bad faith registration generally cannot be found if the disputed domain name was registered before trademark rights were established by the complainant. WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Decision Overview”)¹ § 3.1 (“Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right”); see also Intermap Technologies Corp. v. Salvage Electronic Inc., NAF Claim No. FA 203130 (December 12, 2003) (no finding of bad faith where complainant did not even exist at the time respondent registered intermap.com); e-Duction, Inc., supra (same).²

Not only does the chronology itself establish the absence of any possible bad faith registration, but also, the Respondent has certified that he had not heard of Complainant or its Marks at the time he registered the Domain Name. As a result, Respondent could not possibly have registered the Domain Name with bad faith towards Complainant’s Marks, regardless of whether the Domain Name has since been “parked,” Respondent has offered the Domain Name for sale for an exorbitant dollar amount, or Respondent has posted materials on his www.primalquest.com website that have little to do with the words “primal quest.”

Complainant’s only attempt at suggesting that the registration was in bad faith is the conclusory allegation that Respondent registered the Domain Name for the purpose of resale. Respondent denies that allegation, but even if it were true, that alone would not establish bad faith registration. The sale of domain names comprised of common terms, without some indicia of bad faith, is neither unlawful nor evidence of cybersquatting; it is only when domain names are registered for resale with knowledge that the names consist of another’s trademark that the conduct fairly may be characterized as cybersquatting. General Machine Products Company, Inc. v. Prime Domains (a/k/a Telepathy, Inc.), NAF Claim No. FA 92531 (January 26, 2000); Allocation Network GmbH v. Steve Gregory, WIPO Case No. D2000-0016 (March 24, 2000); see also Etam plc v. Alberta Hot Rods, WIPO Case No. D2000-1654 (January 31, 2001); WIPO Decision Overview § 2.2 (“If a respondent is using a generic word . . . to profit from the generic value of the word without intending to take advantage of complainant’s rights in that word, then it has a legitimate interest”).

Accordingly, Complainant has failed to sustain its burden under paragraph 4(a)(iii) of the Policy. In light of this finding, the Panel need not consider the other UDRP factors because Complainant cannot succeed absent a showing of bad faith registration.

7. Reverse Domain Name Hijacking

Although Respondent has not requested a finding of Reverse Domain Name Hijacking, under the Rules, the Panel must also consider whether Complainant is guilty of Reverse Domain Name Hijacking. Rules paragraph 15(e) (“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.”); see also Rodale, Inc. v. Cambridge, WIPO Case No. DBIZ2002-00153 (June 28, 2002).

Complainant was represented by counsel in this matter, and counsel was obviously familiar with the WIPO Decision Overview (given that it cited Section 2.1 of the WIPO Decision Overview in the Complaint for the proposition that, with respect to the second UDRP factor, a complainant need only make a prima facie showing of a lack of legitimate interest). That same WIPO Decision Overview, as noted above, clearly states that bad faith registration cannot exist if a respondent registered a domain name prior to the acquisition of trademark rights by the complainant. It thus appears that Complainant sought to obtain the Domain Name through this proceeding despite the fact that its Complaint had no possibility of success in light of both the clear language of the Policy and the consensus view of Panels applying the Policy. On this basis alone, a finding of Reverse Domain Name Hijacking may be appropriate.

Also informing the Panel’s judgment is that Complainant appears to have engaged in bad faith conduct in its attempt to obtain the Domain Name from Respondent prior to the filing of this Complaint. Specifically, it appears that Complainant affirmatively misrepresented itself and its intentions in its communications with Respondent.

Respondent submitted evidence that Complainant tried to obtain the Domain Name through deception. In April and May 2005, Richard Brazeau, Complainant’s CEO, telephoned Respondent a number of times inquiring about the Domain Name. In at least one of those conversations (recorded on Respondent’s answering machine, the recordings of which are part of the record in this case), Mr. Brazeau stated that he and his wife were trying to “branch out with a small little local–like–clothing line” and that, in connection with that clothing line, they were looking to acquire the Domain Name.³ Although parties are, of course, permitted to try to purchase Domain Names and have no obligation to disclose their true identities or intentions, it is not appropriate to induce the sale of a Domain Name through misrepresentation of the identity of the prospective purchaser or what it intends to do with the Domain Name. Cf. David H. Bernstein and D. Peter Harvey, Ethics and Privilege in the Digital Age, 93 Trademark Reporter 1240, 1253-54 (November-December  2003) (discussing Sunrise Assisted Living, Inc. v. Sunrise Healthcare Corp., Civ. Action No. 98-1702-A, slip ops. (E.D. Va. Apr. 9 & 28, 1999)).

Taken together, these facts warrant a finding of Reverse Domain Name Hijacking. See Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151 (January 4, 2001) (finding Reverse Domain Name Hijacking where “Respondent’s registration and use of the domain name could not, under any fair interpretation of the facts, constitute bad faith”).

8. Decision

Because Complainant has not demonstrated all three elements required under the Policy, the Complaint is denied. Moreover, in light of Complainant’s actions, the Panel finds Complainant to have been guilty of Reverse Domain Name Hijacking.

David H. Bernstein
Sole Panelist

Date: December 15, 2005

¹ As this Panel previously explained, although the WIPO Decision Overview is not precedential in nature, it does reflect a studied and considered summary of consensus positions culled from the decisions of numerous panelists during the first five years of administration of the UDRP. Fresh Intellectual Properties, Inc. v. 800Network.com, Inc., WIPO Case No. D2005-0061 (March 21, 2005). Accordingly, when such a consensus has developed, it is incumbent upon panels to follow the consensus (or the majority view) to promote consistency among UDRP decisions. See Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014 (April 22, 2004).

² There are certain limited exceptions to this rule, such as “when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights. . . . This often occurs after a merger between two companies, before the new trademark rights can arise, or when the respondent is aware of the complainant’s potential rights, and registers the domain name to take advantage of any rights that may arise from the complainant’s enterprises.” WIPO Decision Overview § 3.1. Complainant, however, does not allege any facts that would cause any of these exceptions to apply.

³ The Panel notes that Complainant has not sought to file a supplemental submission to contest the veracity of these allegations. Cf. Pacific Fence & Wire Co. v. Pacific Fence, WIPO Case No. D2001-0237 (June 11, 2001).