Brian Rayle of Apollo Beach, Florida, who was self-represented lost his attempt to grab the domain name CargoWiz.com which is owned by Portmedia Holdings Ltd of Hong Kong, China, represented by ESQwire.com P.C., USA.
The three member UDRP panel of Tony Willoughby, R. Eric Gaum and The Hon Neil Brown Q.C. found that although the Complainant filed for a trademark on the term CARGOWIZ with the USPTO back in 2007, failed to carry the day since the domain had been registered in 2005.
However the panel refused to find Reverse Domain Name Hijacking finding that “the Panel is not persuaded that the Complainant’s objective in filing this Complaint was actuated by anything other than a genuine good faith belief that it had a reasonable chance of success.”
Here are the highlights:
The Complainant resides in Florida, USA, and is engaged in the design and marketing of load planning software, software geared to assisting with the loading of trucks, freight containers and the like.
He formed his business, SoftTruck on March 22, 2001.
Since January 2004 he has been marketing his software under and by reference to the name, “CargoWiz”.
The Complainant is the registered proprietor of United States Trade Mark Registration No. 3,422,048 CARGOWIZ (standard character mark) filed August 15, 2007, registered May 6, 2008 in class 9 for “computer software for finding a tight layout of items in a given space or on a given surface.”
The Domain Name was initially registered by an unconnected third party in 1999. Another unconnected third party acquired the registration in 2004, but allowed the registration to lapse.
The Respondent, which is based in Hong Kong and is engaged in the acquisition and monetization of domain names, registered the Domain Name on July 26, 2005 and connected it to a parking page hosted by the Registrar.
“The Panel are not ad idem here, one member being satisfied that the Respondent has done enough to establish that it has a right and legitimate interest in respect of the Domain Name on the basis of its consistent use of the Domain Name in line with its generic meaning, which this member of the Panel describes as “the means of speeding cargo along quickly”.
The majority of the Panel is not so sure. ”
“The name, “CargoWiz”, is certainly strongly suggestive, but it is not wholly descriptive. ”
“It was sufficiently distinctive in 2007 for the Complainant to have acquired registered trademark rights in respect of it. If the Complainant is correct that the Respondent adopted the Domain Name knowing of the Complainant’s CargoWiz product and/or knowing that the name was likely to be a trade mark, the Respondent is unlikely to have acquired rights or legitimate interests in respect of it.
However, the Panel is agreed that in light of its finding under 6D below, it is unnecessary for the Panel to come to a concluded view on this element of the Policy. ”
“The Panel is agreed that for this Complaint to succeed, the Complainant must satisfy the Panel that when the Respondent registered the Domain Name, it had the Complainant and/or its “CargoWiz” software product in mind.
“What reason did the Respondent have for knowing of the existence of the Complainant and/or its software product on July 26, 2005 when it registered the Domain Name? ”
“The Complainant’s evidence of sales prior to that date stops at the end of March, 2005 and total something under USD 100,000 for the previous fifteen months.
The sales are widely spread both within the USA and internationally. T
he Respondent is based in Hong Kong and the only sale to Hong Kong over that period was a $1,578 sale on December 30, 2004.
Irrespective of whether the Complainant had conducted sufficient trade to give rise to unregistered trade mark rights in the USA prior to July, 2005 (as to which a majority of the Panel has severe doubts), the Complainant has produced insufficient evidence to establish that the Respondent, based in Hong Kong, knew or is likely to have known of the Complainant or its CargoWiz product when registering the Domain Name.
The Respondent has not only denied all knowledge of the Complainant at that time, but has produced evidence to show that there were two prior owners of the Domain Name, preceding the Complainant’s adoption of its trade mark, thereby indicating that the name had been found attractive by others who could not have known of the Complainant’s interest in the name. Furthermore, the Respondent has produced evidence of other domain names in its portfolio featuring the words “cargo” and “wiz”.
The Complainant argues that even if the Respondent was not aware of the Complainant’s interest in the “CargoWiz” name, it could very readily have made itself aware of that interest if it had conducted a simple online search against the name.
While that may well be so, this Panel is not persuaded that the Respondent was under any duty to conduct such a search.
The Panel is not satisfied that the Domain Name was registered and is being used in bad faith.
For completeness, it should be added that the Respondent’s claim to a “laches” defence, based on the Complainant’s delay in bringing this Complaint, was considered by the Panel, but the Panel was able to come to a decision without exploring that issue.”
On the issue of Reverse Domain Name Hijacking the panel said:
“The Respondent contends that the Complaint was fundamentally flawed in that it was bound to fail and should never have been brought. The Respondent prays in aid the delay in bringing the Complaint, the fact that the Complainant acknowledges having attempted to purchase the Domain Name several times since 2005 and the “fact” that the “Complainant’s use of the term CargoWiz hardly predates the creation of the Disputed Domain.” The Respondent contends that this Complaint was designed to hijack from the Respondent a highly valuable generic name.
The Complainant explains his delay in bringing the Complaint by saying that the filing fees were beyond him in the early days.
He says that he tried to acquire the Domain Name by purchase, but the price put on it was beyond his means.
He asserts that by July, 2005 he was making substantial sales of his CargoWiz and asks forensically why the Respondent selected the Domain Name when at that time similarly styled names such as , , and were all available but not acquired.
The Complainant suggests that at that time the Respondent would prudently have conducted searches to check on the commercial desirability of these names and found that the Domain Name outstripped them in value on the back of the Complainant’s trade mark.
Suffice it to say that the Panel is not persuaded that the Complainant’s objective in filing this Complaint was actuated by anything other than a genuine good faith belief that it had a reasonable chance of success.