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DECISION

Randall E. Kay v. SEBASTIAN KLEVEROS / COMCEPT - INTERNET VENTURES


Claim Number: FA1602001659119
PARTIES
Complainant is Randall E. Kay (Complainant), California, USA.
Respondent is SEBASTIAN KLEVEROS / COMCEPT - INTERNET
VENTURES (Respondent), represented by Dr. John Berryhill, PhD
Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nvrt.com>, registered with Uniregistrar
Corp.
PANEL
The undersigned certify they have acted independently and impartially
and to the best of their knowledge has no known conflict in serving as
Panelist in this proceeding.
The Honourable Neil Anthony Brown QC, Honorable Karl V. Fink (ret.)
and Houston Putnam Lowry, Chartered Arbitrator (Chair) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the FORUM electronically on
February 1, 2016; the FORUM received payment on February 1, 2016.
On February 2, 2016, Uniregistrar Corp confirmed by e-mail to the
FORUM that the <nvrt.com> domain name is registered with
Uniregistrar Corp and that Respondent is the current registrant of the
name. Uniregistrar Corp has verified that Respondent is bound by the
Uniregistrar Corp registration agreement and has thereby agreed to
resolve domain disputes brought by third parties in accordance with
ICANNs Uniform Domain Name Dispute Resolution Policy (the Policy).
On February 4, 2016, the FORUM served the Complaint and all Annexes,
including a Written Notice of the Complaint, setting a deadline of
February 29, 2016 by which Respondent could file a Response to the
Complaint, via e-mail to all entities and persons listed on Respondents
registration as technical, administrative, and billing contacts, and to
postmaster@nvrt.com. Also on February 4, 2016, the Written Notice of
the Complaint, notifying Respondent of the e-mail addresses served
and the deadline for a Response, was transmitted to Respondent via

post and fax, to all entities and persons listed on Respondents


registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on
February 29, 2016.
On March 9, 2016, pursuant to Respondents request to have the
dispute decided by a three-member Panel, the FORUM appointed
Honorable Karl V. Fink (ret.), The Honourable Neil Anthony Brown QC,
and Houston Putnam Lowry, Chartered Arbitrator (Chair) as Panelist.
Having reviewed the communications records, the Administrative Panel
(the "Panel") finds that the FORUM has discharged its responsibility
under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute
Resolution Policy (the "Rules") "to employ reasonably available means
calculated to achieve actual notice to Respondent" through submission
of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Procedural Issue: Concurrent Court Proceedings
Complainant has filed suit against Maya Mark Inc., Ted Tobson, and
<nvrt.com> in United States District Court for the District of Nevada. Maya
Mark Inc., and Ted Tobson are the prior registrants and owners of the
<nvrt.com> domain name according to Complainant. While the
Respondent is neither Maya Mark Inc., or Ted Tobson, Complainants suit was
also brought against the domain <nvrt.com> under 15 U.S.C 1125(d).
In situations where concurrent court proceedings are pending, such as this
case, some panels have chosen to proceed with the UDRP filing. See
eProperty Direct LLC v. Miller, FA 836419 (Nat. Arb. Forum Jan. 3, 2007)
(holding that the panel could decide the dispute under Rule 18(a) of the
Policy since the legal proceedings referred to by the parties appear to be
concluded and Orders made. Moreover, those Orders do not touch directly
on the disposition of the disputed domain name or on the parties intellectual
property rights.); see also W. Fla. Lighting v. Ramirez, D2008-1122 (WIPO
Oct. 2, 2008) (deciding to proceed under the UDRP despite concurrent court
proceedings because the Panel does not find that it is necessary or
advantageous to await a judicial determination of the issues raised in the
federal litigation in order to reach a decision strictly under the Policy. This
administrative proceeding under the Policy concerns only control of the
Domain Name, not any of the other remedies at issue in the federal
litigation. It is not binding on the court, and it does not preclude the
prosecution of any claims, defenses, or counterclaims in the federal
litigation); see also Marys Futons, Inc. v. Tex. Intl Prop. Assocs., FA 1012059

(Nat. Arb. Forum Aug. 13, 2007) (choosing to proceed under the UDRP
despite concurrent court proceedings for multiple reasons, including that the
proceedings appeared to be filed in a court that did not commonly adjudicate
intellectual property issues and that the court proceedings were filed by the
respondent on the same day the response in these proceedings was filed).
Alternatively, other panels have chosen not to proceed with the UDRP
because of the pending litigation. See AmeriPlan Corp. v. Gilbert FA105737
(Nat. Arb. Forum Apr. 22, 2002) (Regarding simultaneous court proceedings
and UDRP disputes, Policy 4(k) requires that ICANN not implement an
administrative panels decision regarding a UDRP dispute until the court
proceeding is resolved. Therefore, a panel should not rule on a decision
when there is a court proceeding pending because no purpose is served by
[the panel] rendering a decision on the merits to transfer the domain name,
or have it remain, when as here, a decision regarding the domain name will
have no practical consequence.).
This Panel is more persuaded by the former panels reasoning rather than
the latter panels reasoning. The parties to this Proceeding are not identical
to the parties in the litigation. Neither party to this Proceeding has asked
this Panel to abstain from exercising its jurisdiction. It is not certain the
Nevada federal court will be able to issue an order which binds the current
registrar located in the Cayman Islands (something this Panel can do).
Complainant has submitted to the jurisdiction of the courts at the principal
office of the registrar in its Complaint. This Panel also has substantial
expertise in the subject area, having issued a combined 2,261 decisions. A
court may also review this Panels decision, so this Panel is not ousting a
court of jurisdiction. These factors weigh in favor of this Panel deciding this
case. Therefore, this Panel will consider this Complaint.
RELIEF SOUGHT
Complainant requests the domain name be transferred from
Respondent to Complainant.
PARTIES' CONTENTIONS
A. Complainant
Complainant owns United States Trademark Registration No. 4,875,162 for
the mark for the four letters "NVRT", with stylized lettering/design,
registered on December 22, 2015 on the Principal Register with the United
States Patent and Trademark Office. Complainant uses its NVRT mark for
athletic shirts, athletic shorts, athletic tops and bottoms for yoga, and hats.
Complainant further intends at this time to use its NVRT mark on pants,
sweatshirts, and t-shirts.
FACTUAL AND LEGAL GROUNDS

This Amended Complaint is based on the following factual and


legal grounds:

a.

Specify in the space be/aw the manner in which


the domain name is identical or confusingly
similar to a trademark or service mark in which
the Complainant has rights. UDRP Rule 3(b)(ix)
(J), UDRP Policy4(a)(i).

The domain name NVRT.com is identical and confusingly similar to


Complainant's trademark in NVRT. All four letters of the domain name NVRT
and Complainant's mark NVRT are identical. Complainant's business is
known as NVRT. Complainant operates under the dba "NVRT" for his LLC
(Seasoned Athlete LLC) with the California County in which Complainant is
located. Complainant's Facebook page is "NVRT" for clothing, and
Complainant's business NVRT offers clothing for sale at the NVRT Facebook
page incorporating Complainant's trademark for NVRT.

b.

Specify in the space below why the Respondent


(domain-name holder) should be considered as
having no rights or legitimate interests in respect
of the domain name(s) that is/are the subject of
the complaint. UDRP Rule 3(b)(ix)(2); UDRP
Policy
4(a)(ii). The Panel may consider any
relevant aspects included in, but not limited to
UDRP Policy 4(c).

Respondent's bad faith is most glaringly shown by Respondent's receipt


via transfer of the NVR.T.com domain name after Complainant submitted
the original Complaint to the UDRP Provider on February 1, 2016.
Respondent received the transfer from predecessor registrant Tim
Schoon, who only recently had become the then-registrant via transfer of
the NVRT.com domain name in response to Complainant's filing of a
federal court lawsuit in which Complainant asserted violations of the
Anticybersquatting Consumer Protection Act of 1999 against
Respondent's predecessor.
In particular, on January 14, 2016, Complainant filed a "Verified
Complaint for Transfer of Domain Name NVR.T.com and Damages for
Violations of the Anticybersquatting Consumer Protection Act of 1999".
Complainant sued three defendants: (1) the then-Registrant organization
Maya Mark Inc. (a Nevada corporation with an expired business license
and whose status as a Nevada business entity was "Revoked"); (2) the

then-Registrant name Ted Tobson; and (3) NVRT.com (under in rem


jurisdiction) which was then hosted at a Registrar located in Nevada.
On January 22, 2016, Complainant formally served then-Registrant Maya
Mark Inc. with the federal court lawsuit through its registered agent for
service of process. See Exhibit 5 (proof of service proving service on
Maya Mark Inc. on January 22, 2016). In response to Complainant's
service of summons and complaint in the federal lawsuit, in an effort to
thwart Complainant's lawsuit and to impede and to delay Complainant
from obtaining transfer of the NVRT.com domain name, on or about
January 25, 2016 defendant Maya Mark Inc. transferred the NVRT.com
domain name to a new Registrant Tim Schoon in the Netherlands and a
new Registrar Uniregistrar Corp located in the Cayman Islands. Prior
Registrant Maya Mark Inc. had the NVRT.com domain name in its name
for well more than a year prior to January 25, 2016. It is Complainant's
federal court lawsuit, and the merit of that lawsuit, that caused Tim
Schoon to obtain possession of the NVRT.com domain name in an effort
to impede Complainant's ability to secure the transfer of the NVRT.com
domain name. Following Complainant's filing of the original complaint in
this matter on February 1, 2016 (when Tim Schoon was the named
Registrant for NVRT.com), Tim Schoon transferred the NVRT.com domain
name to his Facebook friend, now-Registrant Sebastian Kleveros I Comcept
Internet Ventures. Complainant received email confirmation of the filing of
his original Complaint in this matter with ADR Forum on February 1, 2016
at 6:17:39 p.m. PST. ADR Forum notified Registrar Uniregistrar Corp via
email of Complainant's Complaint on February 2, 2016 via email at 09:22
UTC-5. Registrar Uniregistrar Corp attended to ADR Forum's email and
locked the domain name on February 2, 2016 at 11:20 UTC_-5, just three
minutes after Tim Schoon had transferred the NVRT.com domain name to
now-Registrant Sebastian Kleveros I Comcept Internet Ventures at 11:17
UTC-5 on February 2, 2016.
According to prior Registrant's and Respondents Facebook pages,
Sebastian Kleveros and Tim Schoon are at least Facebook friends.
Registrant does not use the brand or mark NVRT commercially in good
faith. Registrant does -not market goods or services at the NVRT.com url;
rather, the NVRT.com url is "for sale" . For all the foregoing reasons,
Respondent should be considered as having no rights or legitimate
interests in respect of the domain name NVRT.com.

c.

Specify in the space below why the domain name(s) should


be considered as having been registered and being used in
bad faith. UDRP Rule 3(b)(ix)(3), UDRP Policy 14(a)(iii). The

Panel may consider any relevant aspects included in, but not
limited to UDRP Policy 4(b).
Registrant's bad faith in registering and using the NVRT.com domain is
shown by (1) the fact that Registrant first registered the domain
NVRT.com on February 2, 2016 - after Complainant's December 22,
2015 Registration of NVRT as his trademark with the United States Patent
and Trademark Office on the Principal Register; (2) the fact that
Registrant's predecessor Tim Schoon first registered the domain
NVRT.com on or about January 25, 2016 -after Complainant's December
22 2015 Registration of NVRT as his trademark with the United States
Patent and Trademark Office on the Principal Register; (3) Registrant was
on notice (actual or constructive) that Complainant claimed interest in
the NVRT.com domain name because Complainant had already sued
Registrant's predecessor-in-interest for transfer of the NVRT.com domain
name for violation of the Anticybersquatting Consumer Protection Act of
1999; (4) Registrant is not commonly known by the domain name
NVRT.com or the name NVRT; (5) Registrant is not making any legitimate
noncommercial or fair use of the domain name; (6) that a user currently
going to www.NVRT. com will be invited to buy the Nvrt.com website
name.
B. Respondent
I. Introduction
This dispute involves a domain name which was acquired in a batch
transaction of 41 four-letter domain names prior to any notice of a dispute
whatsoever. As described in detail below, the various transfers of the
domain name were solely incident to a commercial transaction involving
this batch of domain names, and was not undertaken with either actual or
constructive knowledge of the Complainant's claim.
The Complainant's claim is premised on recently-acquired and
pending formal registrations in the United States, which are supported by
no substantial commerce whatsoever, and the Complainant has followed an
unusual strategy to pursue its claim without notice to the relevant registrar,
registrants, or any person with actual control of the domain name
registration.
II. Acquisition and Subsequent Transfers of the Domain Name "Cyberflight"
Due to the coincidental timing of events prior to notice by the
Respondents of this Proceeding, and the serious accusation of "cyberflight",

it is important at the outset to document the history of the Respondents'


acquisition and transfer of the domain name. As demonstrated below, the
domain name was acquired as part of a transaction involving 41 four-letter
domain names initiated on January 11, 2016 for registration by a joint
venture of the Respondents.
Mr. Tim Schoon and Mr. Sebastian Kleveros, are principals in a
partnership venture named Comcept Internet Ventures, which is a joint
venture. These shall be collectively referred to herein as "Respondents".
On January 10, 2016, Mr. Schoon was contacted by a domain broker
offering a portfolio of 41 four-letter domain names for sale, for a total cost
of US $18,000. Mr. Schoon agreed to this offer. On January 12, 2016, a
transaction was initiated among Mr. Schoon, the broker, and the seller. The
indicated seller was Nomino.de, a German domain trader which, as is now
apparent, acquired the disputed domain name prior to dissolution of the
registrant, took over administration of the account in which the disputed
domain name was registered, and then sold the names prior to updating
the WHOIS information for them. As indicated in the Escrow.com closing
record payment for the 41 four-letter domain names was made by Mr.
Schoon on January 21, and payment was disbursed to the seller. Also
shown is Mr. Kleveros' 50% partnership payment to Mr. Schoon for the
purchase.
On January 22, the day after payment was received by Escrow.com,
a batch transfer of the domain names was initiated, to move them to Mr.
Schoon's registration account at the registrar Uniregistry.com.
(screenshots of registrar account panel showing initiation date). These
transfers were completed on January 25, confirming that the authoritative
control and the auth codes provided by the seller, a German firm named
Nomino.de, were correct.
Successful transfer was indicated to Escrow.com as noted in the
Escrow.com transaction record. On February 2, a further batch transfer of
72 domain names was initiated by Mr. Schoon, to move 72 domain names,
including the disputed name, into the registration account designated by
the joint venture for holding the domain names which had been acquired
by the joint venture. (screenshots of registrar account panel showing intraregistrar transfer initiated February 2)
At no point during the acquisition, registrar transfer, and then final
transfer into the current account, were Mr. Schoon, Mr. Kleveros, or anyone
associated with their individual companies or the joint venture aware of
any legal proceeding in relation to the domain names. As it turned out, the
registrar had received notice of the pending UDRP proceeding from NAF on

the morning of February 4, and between the time of receipt of the notice
from NAF and the registrar's reply to NAF1, the batch transfer initiated
several days earlier had completed, stating:
"On review of the domain transaction history, we note for your
information that the registrant of the domain name transferred
the domain name to the present registrant at 11:17 UTC -5,
which was moments before the lock was applied in processing
the notice from the Forum. The transfer of this particular
domain name was incident to a batch of domain names
which were transferred to the present registrant by the
previous registrant, and does not appear to have been
specifically prompted by the filing of this UDRP.
Between our receipt of the UDRP notice and our action upon it
within those two hours, we engaged in no communication with
the registrant which would have alerted them to the filing of
the UDRP proceeding. As the UDRP provides two business days
for the registrar to act upon the UDRP provider notice, we do
not see an express provision for reversing a registrant transfer
which may occur prior to actual registrar notice and action
upon the UDRP provider notice. However, we do wish to make
the circumstances here clear to the Forum and to the Parties."
As noted by the registrar in its reply to NAF, no communication was
conducted with Mr. Schoon, Mr. Kleveros, or anyone associated with the
joint venture, that a UDRP had been initiated. The batch transfer was
initiated on February 2, prior to any notification of this Proceeding to the
parties or the registrar. On the afternoon of February 4, Mr. Schoon and
Mr. Kleveros received, from the NAF, their first notice that the domain
name was involved in a dispute of any kind. The transfer noted by the
registrar was that initiated by the Respondents to place the domain name
into the registrar account designated for the joint venture.
The transfer of the domain name which occurred prior to notice of
this Proceeding, and prior to actual notice by the registrar, was incident to
transfer of a batch of domain names, including the 41 four-letter domain
names for which the Respondents had agreed to purchase on January 11,
2016. Since having received notice of this Proceeding, the domain name
is duly locked, and the Respondents hereby appear to dispute the
allegations of the Complaint. Accordingly, there has been no attempt at
"cyberflight", as the attached documentation demonstrates that the
transfers were incident to an ordinary commercial transaction undertaken
with no notice whatsoever of the Complaint or its filing of the Complaint

in this matter. As will be discussed further below, the Complainant's


litigation in Nevada was at no time served upon the Respondents or their
predecessor-in-interest in the domain names, nor did they have actual
notice thereof, and nor was it served on the then-current registrar of the
domain name.
The accusation of "cyberflight" is misplaced here, as demonstrated
by the transaction records. "Cyberflight" is the deliberate churning of
registration data with notice of a dispute, in order to frustrate the conduct
of proceedings. The Complainant does not show that it ever served the
Nevada proceeding on any party whatsoever, nor did the Complainant at
any time engage in contact with the Respondents or their predecessors.
The Complainant at no time served or otherwise sent the Nevada
proceeding on any party to this Proceeding or on any party having effective
control of the domain name registration. The Complainant at no time
notified any registrar of the Nevada proceeding which, had the
Complainant done so, would have locked the domain name at that time.
The Complainant at no time emailed a service copy of the Complaint to the
Respondents or any parties associated with them. The first actual notice of
this Proceeding by the Respondents occurred on February 4, 2016, by
which time the acquisition and transfer of the domain name to the joint
venture account was complete. The Respondents at no time engaged in
any transfer of the domain name with any notice whatsoever, that a
dispute of any kind was imminent or had been filed.
III. Identity or Confusing Similarity
The first criterion of the Policy requires the Complainant to show that the
domain name is identical or confusingly similar to a trade or service mark
in which the Complainant has rights.
To this end, the Complainant presents a Facebook page and a US
trademark registration which issued a few weeks ago in December 2016.
The Complainant does not describe any sales volume, advertising
expenses or other indicia of consumer recognition because, in point of fact,
the Complainant's showing of "commerce" via a Facebook posting is an
artifice. The Complainant conducts no substantial commerce whatsoever,
and did not mention that the Complainant operates a website at
nvrtyoga.com which states "Coming Soon", and the Complainant operates
a corresponding Twitter account for this phantom business with no tweets
issued thus far. Additionally, the Complainant's Facebook page, purporting
to "sell" a pair of shorts with "NVRT" printed on them, no longer actually
advertises the shorts in question. The Complainant conducts no commerce
whatsoever.

The Complainant further submits a copy of US TM Reg. No. 4875162


issued a few weeks ago, on December 22, 2106 to "Kay, Randall E., a U.S.
citizen, parent of Avery S. Kay and Noah A. Kay". It is not clear why the
registration was apparently obtained on behalf of two children. The
registered US mark is for the logo:

which is described therein as:


The mark consists of the letters "NVRT" with stylized lettering
for the first three letters of the four letter word and with the
"T" depicted by the design element of a yoga athlete
performing an arm balance in a "T" shape with the torso
forming the vertical line of the "T" and the legs forming the
horizontal line of the "T".
For
"Athletic shirts; Athletic shorts; Athletic tops and bottoms for yoga."
Concerning the stylization of the registered mark, and the absence of the
letter T, the circumstances here present one of the occasional situations in
which the graphical presentation of the mark, as shown and further
described in the proffered registration, do not directly resemble the letters
"NVRT" per se. As noted in:
Tesla Industries, Inc. v. Stu Grossman d/b/a SG
Consulting2 NAF Claim Number:
FA0508000547889
http://www.adrforum.com/domaindecisions/547889.
htm
Several Panels have held that block lettered domain names,
even where the letters are identical to those in stylized marks
are not confusingly similar thereto. See, e.g., National
Kidney Foundation v. Loss Girasoles, AF-0293 (eRes August 31,
2000) (domain name <NKF.org> not confusingly similar to
Trademark NKF consisting of a highly stylized rendering of

those letters); Maha Maschinenbur Haldenwang v. Rajni,


D2000-1816 (WIPO March 2, 2001) (Complainants Trademarks
were highly stylized and hence consumer confusion was
unlikely.). Further, a number of Panels have held that without
the stylized component of the Trademark, Complainant lacks
rights in the words standing alone, which is precisely the
situation we have here. See, e.g., Zero Intl Holding v. Beyonet
Servs., D2000-0161 (WIPO May 12, 2000) (Complainant lacked
relevant rights in the word zero where its Trademark was a
stylized form of the word zero . . . rather than the word zero
itself); Physik Instrumente v. Kerner, D2000-1001 (WIPO Oct.
3, 2000) (involving stylized German trademark PI);
Acoustical Publications v. Clintron, AF-0319 (eRes Oct. 3, 2000)
(registration of stylized Trademark Sound & Vibration had
disclaimed the words sound and vibration); High-Class
Distribs. v. Online Entmt Servs., D2000-0100 (WIPO May 4,
2000) (involving stylized U.S. registered trademark High-Class
by
Claudio Budel with disclaimer of exclusive right to use High
Class apart from the mark as show); Brisbane City Counsel v.
Warren Bolton Consulting, D2001- 0047 (WIPO May 7, 2001)
(Stylized mark including words Brisbane City may have
acquired distinctiveness, but the words Brisbane City by
themselves were merely descriptive of a geographical location
and had no secondary meaning).
Further, in many instances, it has been said that when one
peels away the graphic element, all that remains is a
descriptive or generic word. Robert A. Badgley, Domain
Name Disputes 6-52 (Aspen Law and Business Supp. 2003).
As it clear from the person depicted upside down in the Complainant's
logo, and from the slogan "YOUR WORLD IS ABOUT TO BE INVERTED" at
the Complainant's yet-to-be launched website at nvrtyoga.com, the textual
component left after "peeling away the graphic" element is intended to be
understood as "invert", using the phonetically-equivalent letters "NVRT"
after removing the vowels from the generic word. While the Complainant
does not describe its yoga business in any depth at all, it appears clear
that it will revolve around some type of inverted posture. Hence, the
textual component of the Complainant's logo - the phonetic equivalent of
"invert" - appears to be primarily descriptive of the business in which the
Complainant intends to engage.
IV. Legitimate Rights or Interests

Under the second criterion, the Complainant must prove that the
Respondent has no rights or legitimate interest in the domain name.
Here, the Complainant describes a lawsuit which it filed in the state of
Nevada against a prior registrant of the domain name, almost
immediately after the US trademark registration issued. Several
observations are worth making about that lawsuit, particularly in relation
to the Complainant's claim of cyberflight.
First, the Complainant never served nor sent notice of the lawsuit to
any party then- responsible for the domain name. The docket for the
Complainant's suit is attached. As noted therein, the Complainant had
requested the previous registrar to issue a certificate to the court, locking
the domain name and authorizing the court to order transfer of the
domain name. The Complainant has omitted from its description of the
lawsuit, the letter which was filed with the court by the registrar whom the
Complainant contacted about the suit. That letter is included and is from a
previous registrar of the domain name whom the Complainant served. It
specifically notes that "PSI-USA was previously the registrar for the domain
name." The Complainant took no additional steps to notify the thencurrent registrar at the time the Complainant initiated its action.
As noted above, the Respondents' recently acquired the domain
name, prior to Complainant attempting to serve the previous registrar, in a
purchase transaction along with 41 other four-letter domain names.
Domain Names corresponding to short letter combinations are
commercially valuable, independent of any trade or service mark claim,
because they have generally applicable utility. For example, the letters
"NVRT" are by no means exclusively associated with the Complainant.
The letters "NVRT" can stand for:

National Veterinary Response


Team Napa Valley Repertory
Theatre
Ned Ver Reincarnatie
Therapeuten Non Verbal
Reasoning Test
A Google Search conducted on the letters "NVRT" yields some 141,000
results, among which the Complainant is not at all prominent, and which
shows various acronymic uses of "NVRT" including the ones noted above
(wherein the Dutch one is located at NVRT.nl), along with many others, such
as a game entitled "NVRT".

The Respondents acquired this portfolio of four-letter domain


names for their value as four-letter domain names. As noted in:
IDN, Inc. v. Name Administration Inc. (BVI)
NAF Claim Number: FA1209001461862
http://www.adrforum.com/domaindecisions/1461862.htm
In these proceedings, the Complainant does not allege that
Respondent has used the domain name in dispute for any
purpose relating to keys, locks, door hardware, or any of the
goods or services in which Complainant trades.
The general use of a domain name comprising four
letters which could stand for anything without targeting
the Complainants business constitutes, in the opinion
of the Panel sufficient grounding for the Respondent to
establish rights or legitimate interests in the disputed
domain name pursuant to Policy
4(a)(ii). See BioDelivery Sciences International, Inc v HLK
Enterprises, Inc. c/o Domain Admin, FA 0804002275189 (Nat.
Arb. Forum May. 19, 2008) (finding that based on the fact that
the disputed domain name and Complainants mark contain
only four letters that could stand for many things unrelated to
Complainants business, the Panel finds that Respondents use
of the disputed domain name as a portal website is a showing
of rights or legitimate interests under Policy 4(a)(ii).)
Franklin Mint Federal Credit Union v.
GNO, Inc. NAF Claim Number:
FA0612000860527
http://www.adrforum.com/domaindecisions/86
0527.htm

Because the <fmcu.com> domain name is merely a four-letter


abbreviation, the Panel concludes that Respondent has rights or
legitimate interests in the <fmcu.com> domain name pursuant
to Policy 4(a)(ii). See THQ Inc. v Hamid Ramezany, FA 96853
(Nat. Arb. Forum Apr. 30, 2001) (Respondent appears to have
legitimate rights in the domain name thq.net. Respondent
successfully demonstrated that a version of his product exists
under the name "The Highest Qualification Network". The
domain name thq.net is an acronym of the business name "The
Highest Qualification Network". Respondent is within his rights
to secure a domain name, develop products and seek funding
prior to a full commercial launch of the web site under the
domain name.); see also Louis Vuitton Malletier S.A. v.
Manifest Information Servs., FA 796276 (Nat. Arb. Forum Nov.
7, 2006) (concluding that the <lv.com> domain name
consisted of two letters that could stand for many things and
that therefore the respondent could establish rights or
legitimate interests in the disputed domain name despite the
complainant having rights in the LV mark).
Respondent also alleges that it has registered numerous four-letter
domain names for their inherent value. The fact that Respondent
appears to be a generic domain name reseller supports findings that
Respondent has rights or legitimate interests in the <fmcu.com>
domain name pursuant to Policy 4(a)(ii). See Alphalogix Inc. v.
MarketPoints.com, FA 491557 (Nat. Arb. Forum. Jul. 26, 2005)
(Respondent is in the business of creating and supplying domain
names for new entities, including acquiring expired domain names.
This is a legitimate activity in which there are numerous suppliers in
the United States.); see also Fifty Plus Media Corp. v. Digital Income,
Inc., FA 94924 (Nat. Arb. Forum July 17, 2000) (finding that the
complainant failed to prove that the respondent had no rights in the
domain name and had registered and used the domain name in bad
faith where the respondent is an Internet business which deals in
selling or leasing descriptive/generic domain names).
Respondent claims that it has rights or legitimate interests in the
<fmcu.com> domain name because the disputed domain name is
simply an abbreviation for many things, including several other credit
unions, including: Fort McPherson Credit Union, Fort Monroe Credit
Union, Fort McLellan Credit Union, Firstmark Credit Union and
Fred Meyer Credit Union. Respondent also alleges that it has
registered numerous four-letter domain names for their inherent value,
including, inter alia, the domain name <fmcu.com>. As Respondent

appears to be a generic domain name reseller, the Panel finds that


Respondent has legitimate interests in the <fmcu.com> domain name
pursuant to Policy 4(a)(ii).
The Franklin Mint decision further discusses the inherent value of short
domain names and the considerable values of such names in the 2007
market:
"Indeed, the Respondent has registered a number of fourletter domain names for this purpose, merely because they
are short, and hence inherently valuable. Attached hereto as
Exhibit E is a copy of an article from the Domain Name
Journal, a number of 4-letter, dot-com domain sales, including
<cmas.com> for $15,250, <eswc.com> for $11,111 and <krea.com>
for
$10,500."
As noted in the industry blog DomainNameWire.com in a post dated
October 2015, "Now that all of the three letter .com bargains have been
picked over, it seems investors are on the hunt for the next best thing
four letter domain names." The article further describes 100 sales
conducted that week, in which prices ranged from $749 to $25,000.
Accordingly, it can readily be seen why the Respondent's moved swiftly
on an offer to acquire 41 of them for US $18,000.
The Complainant, claiming rights in a weeks-old US trademark registration
for a phantom business, makes no allegation whatsoever that the
Respondents have used the domain name for any purpose relating to the
Complainant's limited claim in connection with "Athletic shirts; Athletic
shorts; Athletic tops and bottoms for yoga" in which the Complainant
claims rights. Trademark law does not grant monopolies in strings of
letters, but only in their association with the goods or services with which
those letters are used as a mark. Here, it is readily shown that the letters
"NVRT" are not uniquely nor distinctively identified with the Complainant.
The Complainant has no substantial business and no discernible consumer
recognition whatsoever, and the Complainant's claim certainly does not
rise to the level of a "famous" mark, even if we accept that the
Complainant ever actually sold a single pair of shorts from a cursory
Facebook posting.
Accordingly, the Respondent has paid a considerable sum for a
collection of valuable short domain names, and there is nothing in the
Respondent's use of the domain name which suggests any infringing use

of the domain name by the Respondent3. The Respondent's use of the


domain name has simply not violated any cognizable right of the
Complainant.
V. Bad Faith
The final criterion of the Policy requires the Complainant to show
that the domain name was registered and used in bad faith. The "bad
faith" element is an element of intent, and the non-limiting examples
given by the Policy are directed to the question of "why did the
Respondent register the domain name?" Was registration of the domain
name informed by a specific predatory intent in relation to trade or
service mark, or was the domain name registered for reasons having
nothing to do with the Complainant and its claimed mark?
Here, the answer is readily determined from the correspondence
and circumstances shown in the Respondents having accepted, on January
11, an offer from a broker for the then- registrant of the domain name to
purchase 41 valuable four-letter .com domain names for $18,000. As
noted in:
GLOCK, Inc. v. Michele Dinoia
NAF Claim Number: FA1506001622383
http://www.adrforum.com/domaindecisions/1622383.htm
"In light of the available evidence, this Panel agrees
that <gssf.com> is very valuable as a four-letter
domain name and that Respondent has not acted in
bad faith under the circumstances set out in Policy
4(b) (iii).
Further, Respondent rejects Complainants argument that
it is a cybersquatter. Instead, Respondent urges the Panel
that it is a generic domain-name reseller and provides, at
Attached Annex 3, a list of acronyms registered by
Respondent over the years as part of its business."
Here, of course, the list is evident in the agreement to purchase this name
in conjunction with 40 others. The Respondents' registration of the domain
name was clearly motivated by purposes having nothing whatsoever to do
with the Complainant's trademark claim, and was motivated by nothing
relating to the Complainant's litigation, about which no one, including the
Respondents had notice at the time the Respondent agreed to purchase
the lot. Moreover, the Complainant has not shown any use by the

Respondent of the domain name having anything to do with athletic


clothing or yoga. As noted in:
BioDelivery Sciences International, Inc. v. HLK
Enterprises, Inc. c/o Domain Admin
NAF Claim Number: FA0804001175189
http://www.adrforum.com/domaindecisions/1175189.htm
As discussed in the previous section, the disputed domain
name and the asserted mark are comprised of generic and
common terms. The four letters that create the asserted
mark and the disputed domain name could stand for
many things that do not interfere with Complainants
business. Therefore, bad faith registration and use of the
disputed domain name pursuant Policy 4(a)(iii) has not been
proven.
Furthermore, Respondent is a resident and citizen of Sweden and the
Netherlands, respectively, and are under no duty of notice of US trademark
registrations. It is particularly true that the Respondents would have had
no reason to know of the Complainant's non-existent clothing "business"
conducted via a single Facebook post (now absent from the page), claiming
rights under a US trademark registration which issued a few weeks ago in
December 2015.
The Respondents freely admit that there has been a coincidence of
circumstances which the Complainant may have found frustrating, and
may have believed there was some sort of attempt to evade the
Complainant's claim. However, the correspondence, sale conducted by
third party escrow, and the registration records for the domain name,
discussed above, demonstrate that the circumstances involving transfer of
the domain name up to the time this Proceeding was commenced, are
indeed mere coincidence. As soon as the Proceeding was notified to the
registrar, the domain name was duly locked, and then followed the first
notice whatsoever to the Respondents that this Proceeding has
commenced. The Respondents have nothing to hide here, and believe that
the purchase of 41 four-letter domain names for their inherent value
speaks for itself, and was clearly not motivated by any knowledge of the
Complainant's claim or existence.
FINDINGS
(1)the domain name registered by Respondent is identical or
confusingly similar to a trademark or service mark in which
Complainant has rights; and

(2)Respondent has rights or legitimate interests in respect of the


domain name; and
(3) the domain name has not been registered and is not being used in
bad faith.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint
on the basis of the statements and documents submitted in
accordance with the Policy, these Rules and any rules and principles of
law that it deems applicable."
Paragraph 4(a) of the Policy requires Complainant prove the following
three elements to obtain an order cancelling or transferring a domain
name:
(1)the domain name registered by Respondent is identical or
confusingly similar to a trademark or service mark in which
Complainant has rights; and
(2)Respondent has no rights or legitimate interests in respect of the
domain name; and
(3)the domain name has been registered and is being used in bad
faith.
Identical and/or Confusingly Similar
Complainant has rights in the NVRT mark through registration of the mark
with the United States Patent and Trademark Office (USPTO) (Reg. No.
4,875,162, registered December 22, 2015). Panels have routinely found
registration of a mark with USPTO (or any other governmental authority) is
sufficient to demonstrate rights in a mark. See Enter. Rent-A-Car Co. v.
David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding
that the complainants registration of the ENTERPRISE, ENTERPRISE RENT-ACAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the
requirement of demonstrating rights in the mark under consideration
pursuant to Policy 4(a)(i)), Mens Wearhouse, Inc. v. Wick, FA 117861 (Nat.
Arb. Forum Sept. 16, 2002) (Under U.S. trademark law, registered marks
hold a presumption that they are inherently distinctive and have acquired
secondary meaning.); see also Janus Intl Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that
registration of a mark is prima facie evidence of validity, which creates a
rebuttable presumption that the mark is inherently distinctive and that
Respondent has the burden of refuting this assumption).
At this point in the proceedings, Complainant is not required to show it has
rights in Respondents home country or Complainant has superior rights to

Respondent. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO


May 7, 2001) (finding that the Policy does not require that the mark be
registered in the country in which the respondent operates and it is sufficient
that the complainant can demonstrate a mark in some jurisdiction) and
Homer TLC, Inc. v. shahrul naim, FA1410001583870 (November 18, 2014).
It should also be said here that the Policy obliges a complainant to show only
that it has a trade or service mark and that, consequently, the operative
date for determining Complainants rights is the date the Complaint is filed.
Complainant next claims Respondents <nvrt.com> domain is confusingly
similar to the NVRT mark as the domain includes the mark in its entirety and
merely adds the gTLD .com. An added TLD (whether a gTLD or ccTLD)
must be disregarded under a Policy 4(a)(i) analysis because domain name
syntax requires a TLD. See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb.
Forum Mar. 27, 2007) (The Panel also finds that Respondents <abt.com>
domain name is identical to Complainants ABT mark since addition of a
generic top-level domain (gTLD) is irrelevant when conducting a Policy
4(a)(i) analysis.). To hold otherwise would eviscerate the UDRP, see State
Farm Mutual Automobile Insurance Company v. kyran trader,
FA1505001618292 (June 9, 2015) and Capital One Financial Corp. v. Huang Li
Technology Corp c/o Dynadot, FA1505001620197 (June 16, 2014).
The Panel therefore finds Respondents <nvrt.com> domain name is
confusingly similar to the NVRT mark in which Complainant has rights.
The Panel unanimously finds Policy 4(a)(i) satisfied.
Rights or Legitimate Interests
By a majority vote, (Fink and Brown) Complainant has not established a
prima facie case in support of its arguments Respondent lacks rights and
legitimate interests under Policy 4(a)(ii). See Terminal Supply, Inc. v. HILINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the
complainant did not satisfactorily meet its burden and as a result found that
the respondent had rights and legitimate interests in the domain name under
UDRP 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat.
Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the
complainants burden by showing it was making a bona fide offering of goods
or services at the disputed domain name).
Respondent did not know about any claims related to the domain name
because Complainant never served or sent notice to Respondent regarding
the pending lawsuit against the domain name. Complainant served Maya

Mark Inc. with a summons but there is no documentation to indicate that


Respondent or the Registrar was similarly served.
A four-letter domain is a valuable property and can have many different
purposes related to the letters NVRT which do not involve Complainants
mark. Respondent purchased the domain in a batch of 41 four-letter
domains. A respondent may have rights or legitimate interests in a disputed
domain name where the respondent is a generic domain name reseller,
depending of course on the facts of the individual case. See Franklin Mint
Fed. Credit Union v. GNO, Inc., FA 860527 (Nat. Arb. Forum Mar. 9, 2007)
(concluding that the respondent had rights or legitimate interests in the
<fmcu.com> domain name because it was a generic domain name reseller
who owned numerous four-letter domain names). Respondent has rights or
legitimate interests based on its status as a generic domain name reseller
under the facts of this case.
Brother Lowry respectfully dissents for the following reasons: The fact
Respondent has no rights or legitimate interests in respect to the domain
name can be proven a number of ways:
(i)

before any notice to Respondent of the dispute, Respondents


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.

Respondent failed to meet this test. No goods or services were offered on


the web site (except the web site itself). Reselling domain names does not
constitute a bona fide offering of goods or services for the purposes of the
UDRP. To allow such an absurd construction would eviscerate the UDRP
because every respondent could demonstrate rights by simply offering the
relevant domain name for sale to the general public at the time of
registration. The UDRP could be easily circumvented.
(ii)

Respondent (as an individual, business, or other organization)


has been commonly known by the domain name, even if
Respondent has acquired no trademark or service mark rights.

Respondent does not claim to be commonly known by the disputed domain


name and there is no evidence in the record to support such a conclusion.
(iii)

Respondent is 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.

Offering a domain name for sale to the public is not (i) a bona fide offering of
goods or services pursuant to Policy 4(c)(i) or (ii) a legitimate
noncommercial or fair use pursuant to Policy 4(c)(iii). I would conclude
Respondent has not established rights or legitimate interests in the disputed
domain name pursuant to Policy 4(a)(ii). See J. Paul Getty Trust v. Domain
4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or
legitimate interests do not exist when one has made no use of the websites
that are located at the domain names at issue, other than to sell the domain
names for profit); see also Hewlett-Packard Co. v. High Performance
Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or
legitimate interests where the respondent registered the domain name with
the intention of selling its rights).
By a majority vote, (Fink and Brown) the Panel finds Policy 4(a)(ii) NOT
satisfied.
As the Panel has found by a majority that Complainant has not established
the second element required under the Policy, it is not strictly necessary to
consider the third element, bad faith. However, the Panel will deal with the
issue of bad faith because there is some overlap between the two elements
on the specific facts of this case.
Registration and Use in Bad Faith
By a majority vote, ( Fink and Brown) the Panel finds Complainant failed to
meet the burden of proof of bad faith registration and use under Policy 4(a)
(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA
406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to
establish that the respondent registered and used the disputed domain name
in bad faith because mere assertions of bad faith are insufficient for a
complainant to establish Policy 4(a)(iii); see also Graman USA Inc. v.
Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003)
(finding that general allegations of bad faith without supporting facts or
specific examples do not supply a sufficient basis upon which the panel may
conclude that the respondent acted in bad faith).
Since Respondent has rights or legitimate interests in the <nvrt.com>
domain name pursuant to Policy 4(a)(ii), Respondent did not register or use
the disputed domain name in bad faith pursuant to Policy 4(a)(iii). See
Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan.
18, 2005) (finding that the issue of bad faith registration and use was moot
once the panel found the respondent had rights or legitimate interests in the
disputed domain name); see also Vanguard Group Inc. v. Investors Fast
Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (Because Respondent has

rights and legitimate interests in the disputed domain name, his registration
is not in bad faith.).
Respondent has not registered or used the <nvrt.com> domain name in
bad faith because Respondent has not violated any of the factors listed in
Policy 4(b) or engaged in any other conduct that would constitute bad faith
registration and use pursuant to Policy 4(a)(iii). See Societe des Produits
Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001)
(finding that where the respondent has not attempted to sell the domain
name for profit, has not engaged in a pattern of conduct depriving others of
the ability to obtain domain names corresponding to their trademarks, is not
a competitor of the complainant seeking to disrupt the complainant's
business, and is not using the domain name to divert Internet users for
commercial gain, lack of bona fide use on its own is insufficient to establish
bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo
CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the
complainant failed to establish that respondent registered and used the
disputed domain name in bad faith because mere assertions of bad faith are
insufficient for a complainant to establish UDRP 4(a)(iii)).
Apart from those issues, the substance of this case in the opinion of the
majority is that a bad faith finding would be inappropriate because
Respondent bought the domain name as part of a commercial transaction
involving 40 other four-letter domain names. On the evidence, Respondent
had no intent or knowledge of any potential infringement on Complainants
rights.
Brother Lowry dissents in part from the foregoing finding for the following
reasons: This case turns on the interpretation of Policy 4(b)(i), which
provides: circumstances indicating that [Respondent] registered or [ ]
acquired the domain name primarily for the purpose of selling, renting, or
otherwise transferring the domain name registration to the complainant who
is the owner of the trademark or service mark or to a competitor of that
complainant, for valuable consideration in excess of Respondents
documented out-of-pocket costs directly related to the domain name. While
there is no evidence of a price in this case, I am willing to presume
Respondent was selling the four letter domain name in excess of its out of
pocket costs because Respondent is not an eleemosynary institution.
The missing factor Complainant cannot directly prove is Respondent
specifically targeted Complainant. Respondent denies knowing of
Complainants existence and denies targeting Complainant. However,
Respondent was clearly targeting (i) someone who had a four letter
trademark as a prospective purchaser (or their competitors) or (ii) someone
with a legitimate business reason to use the four letters NVRT. While

Respondent may not have actually known of Complainants existence,


Complainant was a member of the fairly small class Respondent was
targeting as prospective purchasers for the domain name. I would find
Respondent targeted Complainant.
By a unanimous vote, the Panel finds there are a series of coincidental
circumstances that might be interpreted as bad faith cyberflight. However,
examining the records produced by Respondent (and also noting the fact the
person who sold the 41 domain names to Respondent failed timely to update
the WHOIS information as required by ICANN), the Panel finds that there was
no cyberflight. Respondents registration and transfer was legitimate
(although it occurred over multiple days and in several steps). Respondents
email correspondence between Tim Schoon and Sebastian Kleveros
discussing the transfer occurs on January 11, 2016, before this proceeding
began.
By a majority vote (Fink and Brown), the Panel therefore finds Policy 4(a)(iii)
NOT satisfied.
DECISION
Having not established all three elements required under the ICANN
Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered the <nvrt.com> domain name REMAIN
WITH Respondent.

The Honourable Neil Anthony Brown QC,


Honorable Karl V. Fink (ret.)
and Houston Putnam Lowry, Chartered Arbitrator (Chair), Panelist
Dated: Friday, March 18, 2016