Before the:
WORLD INTELLECTUAL PROPERTY ORGANIZATION
ARBITRATION AND MEDIATION
CENTER
G.W.H.C.
– SERVICOS ONLINE, LTDA
and
E-COMMERCE MEDIA GROUP
INFORMACAO E TECNOLOGIA, LTDA
Av. Paulista 287, 16 Andar –
Sao Paulo/SP – Brazil 01311-000
(Complainant)
SAVEME.COM
V.
EREALESTATE.COM
Box 810276
Boca
Raton, FL 33487
Case No.: D 2012-0498
(Respondent)
_________________________)
RESPONSE IN ACCORDANCE WITH THE
UNIFORM DOMAIN NAME DISPUTE
RESOLUTION POLICY
I. Introduction
[1.] This Response is hereby submitted for
decision in accordance with the Uniform Policy for Domain Name Dispute
Resolution, adopted by the Internet Corporation for Assigned Names and Numbers
(ICANN) on August 26, 1999 (the Policy), the Rules for Uniform Domain
Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (the Rules) and the WIPO Supplemental Rules
for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules).
II. The
Parties
A. The Respondent
[2.1] The Respondent in this administrative proceeding is EREALESTATE.COM
[2.2] The
RespondentÕs contact details are as follows:
Address: Box
810276
Boca
Raton, FL 33487
Telephone: 561-206-2201
E-Mail: Mr800king@aol.com
[2.3]
The RespondentÕs authorized representative in this administrative
proceeding is:
Howard M. Neu, Esquire
Law Office of Howard M.
Neu, P.A.
4839 S.W. Volunteer Road
Suite 512
Southwest Ranches, Florida 33330
Telephone: (954) 662-1816
Fax: (954)
337-2324
E-mail: howard@neulaw.com
[2.4] The
RespondentÕs preferred method of communications directed to the Respondent in
the administrative proceeding is as follows:
Electronic-only
material
Method: e-mail
Address: howard@neulaw.com
Contact: Howard M. Neu
Material
including hardcopy
Method: FAX 954-337-2324
Address: Law
Office of Howard M. Neu, P.A.
4839
S.W. Volunteer Road
Southwest
Ranches, Florida 33330
Contact: Howard
M. Neu
III. Other Legal
Proceedings
[3.1] Respondent
knows of no other legal proceedings that have commenced or terminated in
connection with or relating to the domain name that is subject to this
response.
IV. Factual
and Legal Grounds in Opposition to Complaint
[4.1] Respondent
ERealestate.com is a Florida entity and is in the business of buying internet
domains and developing them into active web sites. eRealestate.com
is not in the business of selling domains. eRealestate.com is in the business of buying domains via
hand registrations and via 3rd parties on the aftermarket. Due to time and financial constraints, only a certain number of domains
can be developed at any one time, so they are generally parked at reputable
large monetizing companies, many of which are publicly owned, to obtain
revenues while waiting to be developed. The
purchase of Property.com for $750,000 around 2005 is now a full blown site and
earns income and is growing. eRealesate.com
has also repeated these creative deals with PunchBowl.com, Luv.com,
eCruise.com, and is simply going to repeat the process many times.
The subject
domain name, Saveme.com, was registered by Respondent on August 22,
1996. Thereafter, it has been used
as a redirect to RespondentÕs web site in 2000 (EXHIBIT A-1), and 2001 (EXHIBIT
A-2), a redirect to RespondentÕs Ubid.com web site in 2002 (EXHIBIT A-3), a redirect
to RespondentÕs web site in 2003 (EXHIBIT A-4), a redirect to Fabulous.com
parking page in 2004 (EXHIBIT A-5), to RespondentÕs landing page in 2005
(EXHIBIT A-6), 2006 (EXHIBIT A-7), to a parked page in 2007 (EXHIBIT A-8), to a
redirect to RicksBlog.com in 2012 to date (EXHIBIT A-9).
eRealesate.com did not initiate the
conversation regarding SaveMe.com. In fact, the Respondent was quite
disinterested in the ComplainantÕs offers to purchase the domain name, to the
point of not even answering their last offer of $50,000. That is not what
somebody looking to sell a domain would be doing.
Complainant
claims in paragraph [13] [i] of its Complaint that it has a trademark for
ÒSAVEMEÓ, but produces no evidence of such a trademark and, in fact, has none.
V. LEGAL ARGUMENT
[5.1]
Complainant is unable to exhibit evidence of Òbad faithÓ registration and use
under the policy, paragraph 4(b)(I).
[5.2] Complainant
is required pursuant to paragraph 4(a) of the Uniform Domain Name Dispute
Resolution Policy to prove each of the following three (3) elements
1. That
the domain is identical or confusingly
similar to a trademark
or service mark in which
Complainant has rights.
2. That the domain holder has no
Òrights or
legitimate
interest in respect to the domain
nameÓ
and
3. That the domain Òhas been
registered and
is
being used in bad faithÓ.
[5.3[ It is difficult to know where to begin
to respond to the ComplainantÕs improbable and improper claims that have
required Respondent to expend funds to defend. The Complainant has no Trademark; while the Respondent
registered the domain name SaveMe.com in 1996, which could not have been
in ÒBad FaithÓ pursuant to the Rules, the Complainant did not even exist until
2010 and registered the domain name SaveMe.com.br in 2010 and is
attempting to use the UDRP Process to hijack the bigger and better domain name SaveMe.com
on the spurious pretext of
Òunlawful and exploitive actionsÓ of the Respondent. It is really a shame that the UDRP Reverse Hijacking Rules
do not have more serious consequences for those, such as counsel for the
Complainant, who know that they have no UDRP Action, but bring it anyway on the
hopes of stealing a domain name from the rightful owner. In fact, the Complainant KNEW that it
was guilty of Reverse Domain Hijacking as stated in its paragraph [14].
[5.3] In the recent NAF case of Charon International Trading Limited
v. Planet on Demand.com / Web Master Claim Number: FA1202001428769, the
panel reasoned :
ÒComplainantÕs
trademark rights in its SNUGG mark date back to May 17, 2011.
RespondentÕs registration of the disputed domain name on September 14, 1999,
predates ComplainantÕs rights in the SNUGG mark by over 11 years. There
is no evidence presented that Complainant existed when the domain name was
registered. Therefore, the Panel finds that Respondent did not register
the disputed domain name in bad faith under Policy ¦ 4(a)(iii). See Telecom Italia S.p.A. v. NetGears LLC,
FA 944807 (Nat. Arb.Forum May 16, 2007) (determining the respondent could not
have registered or used the disputed domain name in bad faith where the
respondent registered the disputed domain name before the complainant began
using the mark); see also Aspen
Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001) (finding
that it is ÒimpossibleÓ for the respondent to register disputed domain name in
bad faith if the complainant company did not exist at the time of
registration).
[5.4] Complainant has the burden of proof in
order to make a Prima Facie case
against Respondent, which the complainant has failed to do. Assuming arguendo that the Complainant
has a Common Law Trademark that has somehow developed a secondary meaning, the
Complainant must still show that the Respondent registered the domain in Bad
Faith and has used the domain in Bad Faith for 16 years; that the Respondent knows
or should know about the existence of this so-called Common Law Trademark in
Brazil in order to USE the domain name in Bad Faith. This stretches credulity beyond belief.
[5.5] Complainant alleges that parking a
domain name with a major monetizing company is tantamount to
cybersquatting. Though presumably
educated at the WIPO Academy, counsel for Complainant has apparently not read a
myriad of cases decided by WIPO Panels holding that parking a domain name at a
monetizing company is a Bona fide
business use. In the May 3, 2010, National
Arbitration Forum Decision of CNRV,
Inc. v. Vertical Axis, Inc, FA0912001300901, the
panel found:
Òthat
Complainant has established a prima facie
case but that Respondent has demonstrated a legitimate interest in the Domain
Name on the basis that, although numerous panels have noted the lack of
societal benefit offered by pay-per-click (ÒPPCÓ) landing pages of the type
offered by Respondent, see, e.g., mVisible Techs., Inc. v. Navigation
Catalyst Systs., Inc., D2007-1141 (WIPO Nov. 30, 2007), panels
also have recognized that domain names that are descriptive and are used solely
in connection with PPC advertising keyed to the descriptive meaning of the
domain name can constitute a legitimate interest for purposes of the
policy. Cf. Ustream.TV, Inc. v. Vertical Axis, Inc, D2008-0598 (WIPO July 29,
2008).
Here, ÒsaveÓ and ÒmeÓ are dictionary
words with a common meaning, and RespondentÕs PPC landing page did appear to
have advertising that is related to that dictionary meaning. Accordingly,
use of the Domain Name in connection with this PPC landing page gives rise to a
legitimate interest under the Policy. See Landmark Group v. DigiMedia.com, L.P., FA 285459 (Nat. Arb. Forum Aug. 6,
2004)
(legitimate interest Ò[if] the domain names have been
registered because of their attraction as dictionary words, and not because of
their value as trademarksÓ); see also NatÕl Trust for Historic Pres. v.
Preston, D2005-0424 (WIPO Aug. 10, 2005).
[5.6] Complainant either ingenuously or more
likely, knowingly, states at paragraph [29] ÒIt is undeniable the confusion
caused by RespondentÕs domain to complainantÕs customers, since the disputed domain is a simple typographic error to
complainantÕs domains.Ó We
are not sure how to respond to this ridiculous statement as it is so outrageous
as to defy response. 15 years
after Respondent registered SaveMe.com,
Complainant registered SaveMe.com.br,
using the country code TLD to divert traffic from RespondentÕs domain. How can that possibly be a typographic
error by either party?
[5.7] None of the allegations contained in
paragraphs [33-36] are properly made to this tribunal, are prejudicial and not
in accordance with the UDRP Rules or the WIPO Supplemental Rules.
[5.8] Normally, a complainant will allege
that the RespondentÕs domain name is confusingly similar to ComplainantÕs
Trademark. But, seeing that the
Complainant doesnÕt have a trademark, either registered or common law, it
alleges confusion in paragraphs [37-41] with its ccTLD. This is certainly a novel approach, but
one that is not within the rules.
It is logical that if the Complainant is going to advertise products
from ÒSave MeÓ, that customers of those products will naturally go to SaveMe.com. and not SaveMe.com.br , especially if
the user is not in Brazil. Thus,
the confusion is intentionally generated by the Complainant in order to trade
upon RespondentÕs domain name.
[5.9] The only Òbad faithÓ that can be
absolutely proven in this case is that of the Complainant. At the time that Complainant registered
SaveMe.com.br, it did so in
bad faith, knowing that Respondent had been using SaveMe.com in one way or another for over 15 years; had
developed substantial traffic to the site; and Complainant wanted to steal that
traffic for its own use, just like it now wants to steal the domain name for
its own use.
[5.10] Complainant wrongfully alleges that the
Respondent is acting in Bad Faith if the domain name is subsequently used to
trade on the goodwill of the mark holder.
Even if the
Complainant had a mark (which it does not), a quick review of ComplainantÕs web
site (EXHIBIT B) will show that there is absolutely no similarity whatsoever
with RespondentÕs web site and that Respondent does not sell any goods or
services that could in any stretch of the imagination be considered trading on
the ComplainantÕs goodwill.
[5.11] Complainant makes a number of libelous
statements concerning alleged unethical and illegal conduct of Mr. Rick
Schwartz, who is not a party to this action, but is a principal in Respondent
corporation. None of these
allegations are proper in a UDRP Action and will not be responded to here. Suffice it to say that a separate libel
action against the complainant is being seriously considered.
[5.12] A definitive discussion and ruling on
what comprises Reverse Domain Hijacking was provided by the panel in Prime Pictures LLC v. DigiMedia.com L.P., Case No. D2010-1877.
ÒReverse Domain Name Hijacking is defined in paragraph 1 of
the Rules as Òusing the Policy in bad faith to attempt to deprive a registered
domain-name holder of a domain name.Ó
The application of
that definition has been discussed in a number of cases. In Ville de Paris
v. Salient Properties LLC, WIPO Case No. D2009-1279, the Panel observed:
ÒIn 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 reverse domain name hijacking. The majority in Al Jazeera
went on to note that:
ÔAllegations of
reverse domain name hijacking have been upheld in circumstances where a
respondentÕs 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
complainantÕs 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.ÕÓ
This Panel
considers that these observations accurately reflect the purpose of paragraph
15(e) of the Rules and the intention of those who framed and adopted the Rules
in including this provision.
In the present
case, the Complaint correctly identified that the Domain Name was registered in
1998. Given that the earliest date of any registration or use of the mark
relied upon in the Complaint was in 2005, the registration of the Domain Name
could not have been in bad faith on any interpretation of the facts and cases
cited in the Complaint.
The Complainant is
represented in this proceeding by legal counsel who has evidently examined the
UDRP and a number of cases decided under it, which are cited in the Complaint.
Any reasonable investigation would have revealed that there was a fundamental
weakness in the ComplainantÕs case, in that there was no basis in the Complaint
and cases cited therein for alleging that the Domain Name was registered in bad
faith. (See by contrast, the observations of the three-member panel in Burn
World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
The point is also
made very clearly in paragraph 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP
Questions that ÒNormally
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 complainantÕs non-existent right.Ó
Furthermore, on this point the UDRP reflects a widely applied principle of trademark
and other laws, that priority generally prevails.
In the light of
these observations, the Panel considers it unlikely that this deficiency was
overlooked by the ComplainantÕs counsel and more probable that it was
deliberately ignored in framing the Complaint. In all the circumstances, the
Panel finds that the Complaint was brought in bad faith, in an attempt at
Reverse Domain Name Hijacking.Ó
The facts in this case are
almost identical. Here, the
attorney for the Complainant knew that the domain could not have been
registered in bad faith, that the Complainant has no trademark, that no proof
of common law trademark has been presented that would give rise to secondary
meaning, and that because the ComplainantÕs offer to purchase the domain name for
$50,000.00 was rejected by the Respondent, Complainant decided that it would
try to get the domain name at a substantially lower cost by filing this UDRP
Action. This is a classic case of
Reverse Domain Hijacking
VI. Remedies Requested
[6.1] Respondent
respectfully requests that the complaint be dismissed forthwith and that the
Complainant be found guilty of flagrant Reverse Domain Hijacking.
VII. Administrative
Panel
[7.1] As the Complainant elected to have the dispute decided by a three member
Administrative Panel.
Respondent
submits the following names for panelist:
Hon.
Neil Brown
Owen Dixon Chambers|C/o Clerk Green
Melbourne,
VIC
Richard
Lyon
Spencer Crain Cubbage Healy|& McNamara PLLC,
Dallas, TX
Robert
Badgley
Locke Lord LLP
Chicago,
IL
VIII. Communications
[8.1] Pursuant to
paragraph 2(b) of the Rules, a copy of this response has been e-mailed to the
Complainants at rccruz@buscapecompany.com and to ComplainantÕs counsel at mmchaves@almeidalaw.com.br.
IX. Certification
[10.1] Respondent certifies
that the information contained in this response is to the best of RespondentÕs
knowledge complete and accurate, that this response is not being presented for
any improper purpose, such as to harass, and that the assertions in this
response are warranted under these Rules and under applicable law, as it now
exists or as it may be extended by a good-faith and reasonable argument.
Respectfully
submitted,
/ Howard Neu /
Howard M. Neu, Esquire
Florida Bar
No. 108689
Attorney for the
Respondent
4839 S.W. Volunteer
Road
Southwest Ranches,
Florida 33330
(954) 662-1816
Date: April 23,
2012
Index of Exhibits to Response
Content of Exhibit Exhibit Number
Archive screen shots of SaveMe.com A
Screen shot of SaveMe.com.br B