The registrant of the domain CollegeFresh.com was hit with a UDRP. The domain was registered in 2005 all while the Complainant formed five years later. In 2016 they failed to acquire the domain from the Respondent, and five years on (2021) they filed a UDRP.
That’s “Plan B” said the WIPO panelist, denying the domain’s transfer and slapping the Complainant, College Fresh, Inc., with a finding of Reverse Domain Name Hijacking.
College Fresh, Inc. v. Martin Kennedy, Kennedy Consulting
Case No. D2021-1892
1. The Parties
Complainant is College Fresh, Inc., United States of America (the “United States”), represented by Meyer Capel, a Professional Corporation, United States.
Respondent is Martin Kennedy, Kennedy Consulting, United States, represented by Lewis & Lin, LLC, United States.
2. The Domain Name and Registrar
The disputed domain name
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 16, 2021. On June 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 17, 2021, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on June 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 11, 2021, which was extended upon request until July 15, 2021. The Response was filed with the Center on July 15, 2021.
The Center appointed Robert A. Badgley as the sole panelist in this matter on July 23, 2021. 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 was incorporated in the State of Illinois on July 12, 2010. Complainant holds United States Patent and Trademark Office (“USPTO”) Reg. No. 5,180,840 for the trademark COLLEGE FRESH, registered on April 11, 2017, in connection with “contract food and beverage services; outsource service provider in the field of food preparation; food and drink catering.” The mark was first used in commerce on July 1, 2010.
There is no evidence in the record of the degree of the mark’s renown.
The Domain Name was registered on October 7, 2005, nearly five years before Complainant used the COLLEGE FRESH trademark and nearly 12 years before that mark was registered with the USPTO. The Domain Name resolves to a parking page.
In an affidavit submitted with the Response, Respondent Martin Kennedy states that he had never heard of Complainant until May 23, 2016, when Complainant approached Respondent about a possible sale of the Domain Name. Respondent states that he had no interest in parting with the Domain Name and hence did not reply to Complainant. As reflected in his affidavit and annexes thereto, Respondent had received prior unsolicited offers to sell the Domain Name in 2007, 2011, and 2013. He ignored those offers as well.
Respondent also states that, on July 9, 2021, after filing the Complaint in this proceeding, Complainant offered USD 500 to buy the Domain Name.
Respondent states that his reason for registering the Domain Name was to develop a “free college networking site,” and annexed to Respondent’s affidavit are some documents which appear to show efforts to develop a website along the lines of a college freshman social media platform, and some handwritten notes from 2019 which appear to show some “brainstorming” about how a prospective website.
5. Parties’ Contentions
Complainant contends that it has established all three elements required under the Policy for a transfer of the Domain Name. On the element of bad faith registration and use of the Domain Name, Complainant’s entire argument is as follows:
“The domain name should be considered as having been registered in bad faith as the Respondent registered the domain name collegefresh.com on October 7, 2005, but as seen in the holding page provided as Annex 5 is not making a legitimate non-commercial or fair use, or in fact any use of any kind, of the domain name on the date of this Complaint. Further, Complainant has not found is not aware of any available evidence of any use of the domain name by Respondent, or any demonstrable preparations to use the domain name by Respondent, and thus to the best of Complainant’s knowledge Respondent has never actually used the domain name. Accordingly, to the best of Complainant’s knowledge, the Respondent (i) acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of the trademark or service mark (currently the Complainant) or to a competitor of that owner, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name; or (ii) registered the domain name in order to prevent the owner of the trademark or service mark (currently the Complainant) from reflecting the mark in a corresponding domain name.”
Respondent denies that he lacks a legitimate interest in the Domain Name and denies that he has registered and used the Domain Name in bad faith. Respondent also asks for a finding of Reverse Domain Name Hijacking against Complainant.
6. Discussion and Findings
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.
A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights in the trademark COLLEGE FRESH through registration demonstrated in the record. The Domain Name is identical to that mark.
Complainant has established Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
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 consider this element in view of its finding below on the “bad faith” element.
C. Registered or Used in Bad Faith
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 concludes from this lean record that Complainant has failed, by a wide margin, to prove that Respondent registered the Domain Name in bad faith. There is no getting around the fact that Complainant did not even exist until 2010, by which time Respondent had owned the Domain Name for five years. Likewise, Complainant did not begin to use its COLLEGE FRESH trademark until 2010 – again, five years after Respondent had registered the Domain Name. Further, the COLLEGE FRESH trademark was not even registered until 2017, nearly 12 years after Respondent had registered the Domain Name.
On top of the foregoing, the mark COLLEGE FRESH is comprised of two ordinary dictionary words, and there is absolutely no evidence in the record of that mark’s degree of recognition among consumers.
The entire argument on the “bad faith” element advanced by Complainant, through counsel, was set forth above. It is a mere boilerplate recitation of the elements required under the UDRP, with no actual evidence that Respondent had targeted the thitherto nonexistent Complainant and Complainant’s nonexistent trademark at the time the Domain Name was registered in 2005.
The Complaint fails.
D. Reverse Domain Name Hijacking
The Panel concludes that Complainant has engaged in Reverse Domain Name Hijacking (“RDNH”). Indeed, this is a classic case of RDNH. Complainant, represented by counsel, filed this Complaint, which was doomed to fail because of the impossibility of Respondent having registered the Domain Name in bad faith five years before Complainant and its trademark came into being. After making an unsolicited offer to buy the Domain Name in 2016 and getting no response (a fact not discussed in the Complaint), Complainant eventually launched this baseless proceeding and required Respondent to hire counsel.
For the foregoing reasons, the Complaint is denied. The Panel finds that Complainant engaged in Reverse Domain Name Hijacking.
Robert A. Badgley
Date: August 2, 2021
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