You are on page 1of 9

ARBITRATION

AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION


Impossible BV v. Joel Runyon, Impossible Ventures
Case No. D2016-0506

1. The Parties
Complainant is Impossible B.V. of Enschede, the Netherlands, represented by Wilson, Elser, Moskowitz,
Edelman & Dicker, LLP, United States of America.
Respondent is Joel Runyon, Impossible Ventures of Wheaton, Illinois, United States of America, represented
by Wiley Rein LLP, United States of America.

2. The Domain Name and Registrar


The disputed domain name <impossibleproject.com> (the Disputed Domain Name) is registered with
Uniregistrar Corp (the Registrar).

3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the Center) on March 15, 2016,
identifying the respondent as The Owner of ImpossibleProject.com listed in the WHOIS registry as
PRIVACYDOTLINK CUSTOMER 49 2029, Noah Black and Joel Runyon. On that date, the Center
transmitted by email to the Registrar a request for registrar verification in connection with the Disputed
Domain Name. On March 16, 2016, the Registrar transmitted by email to the Center its verification response
confirming Joel Runyon and Impossible Ventures as the Registrant Name and Organization associated
with the Disputed Domain Name.
On March 21, 2016, the Center notified Complainant that three of the annexes exceed the 10 MB file size
limit for individual files and requested that the Complainant resubmit compliant versions of these files
which the Complainant did on the same date.
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,

page 2
and the proceedings commenced on March 23, 2016. In accordance with the Rules, paragraph 5, the due
date for Response was April 12, 2016. The Response was filed with the Center on April 12, 2016.
On April 18, 2016, Complainant submitted a document titled Reply to Respondents Response. On
April 19, 2016, Complainant resubmitted this document, noting that the previously submitted version
contained a minor typographical error.
On May 1, 2016, Respondent submitted a document titled Response to Complainants Supplemental Filing.
The Center appointed Douglas M. Isenberg, Christopher S. Gibson and Tony Willoughby as panelists in this
matter on May 5, 2016. The Panel finds that it was properly constituted. Each member of 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 states that it is well known around the world as being the only company in the world that still
produces instant film for [the] classic Polaroid camera and that it refurbish[es] Polaroid cameras in their
workshops throughout the United States and Europe.
Complainant states that it has used the IMPOSSIBLE PROJECT mark since at least January 2009 and
that it is the owner of the following trademark registrations and applications:
-

U.S. Reg. No. 4,004,492 for the word mark IMPOSSIBLE in stylized form (registered August 2, 2011)
for use in connection with, inter alia, [c]hemical preparations for photography.

U.S. App. No. 86/937,637 for the word mark IMPOSSIBLE PROJECT (filed March 11, 2016) for use in
connection with, inter alia, [p]hotography.

U.S. App. No. 86/937,648 for the word mark IMPOSSIBLE PROJECT (filed March 11, 2016) for use in
connection with, inter alia, [c]hemicals used in industry, science and photography.

CTM Reg. No. 1,268,808 for the word mark IMPOSSIBLE I-1 (registered July 16, 2015) for use in
connection with, inter alia, [c]hemical preparations and materials for film, photography and printing.

Respondent states that for reasons unrelated to this proceeding, [it] recently changed its corporate name to
Impossible X LLC and that, for a number of years, it has operated a range of businesses using the word
Impossible and other Impossible formative marks, slogans, and names, focusing on the mantra that nothing
is impossible and that its businesses focus [is] on pushing customers beyond their limits to achieve the
impossible in fitness, businesses, and grittiness. Respondent also states, and provides a declaration in
support thereof, that it has operated a variety of businesses under IMPOSSIBLE formative marks since
2010, when Mr. Runyon launched his blog of impossible things; that [t]he following year, Mr. Runyon
expanded the Impossible brand to a number of businesses operating under the umbrella name Impossible
Ventures; that Mr. Runyon registered the domain names impossibleventuresllc.com,
impossibleventures.org, impossiblelist.me, and impossibleventures.net and that [a] month later, Mr. Runyon
formed Impossible Ventures LLC.
Respondent is the owner of the following trademark registrations:
-

U.S. Reg. No. 4,260,617 for the word mark IMPOSSIBLE (registered December 18, 2012) for use in
connection with, inter alia, [p]roviding a website featuring information in the field of personal fitness,
endurance athletics, story telling, and adventure activities.

U.S. Reg. No. 4,624,158 for the word mark IMPOSSIBLE FITNESS (registered October 21, 2014) for

page 3
use in connection with [w]ebsite featuring information relating to exercise and fitness.
The Disputed Domain Name was created on March 29, 2009. Respondent states that it acquired the
ImpossibleProject.com domain name on December 2, 2013 to complement his portfolio ofover 250
Impossible formative domain names that are used in support of Respondents businesses. Respondent has
submitted an invoice indicating that it acquired the Disputed Domain Name from a third-party on
December 2, 2013 for USD 797.25.
Complainant states that from 2009 to 2014, Respondents merely used <lmpossibleProject.com> to direct
traffic to Complainants website and, thereafter, host[ed] a page with a sample of three thumbnail
Polaroid-type images overlaid on top of each other, later re-formatt[ing] its web page with placeholders
intentionally left blank and a format that could be built if someone wanted to use the domain.
Complainant and Respondent exchanged numerous emails in late 2015 and early 2016, discussing a
potential sale of the Disputed Domain Name, but the parties apparently never agreed on a price or other
terms. Complainant made its highest offer at USD 12,000, while Respondent cited examples of comparable
domain names selling in the range of USD 20,000 to USD 160,000.

5. Parties Contentions
A. Complainant
Complainant contends, in relevant part, as follows:
-

The Disputed Domain Name is is identical to the IMPOSSIBLE PROJECT mark, in which Impossible
Project has common law trademark rights, and is nearly identical to the IMPOSSIBLE mark, to which
Impossible Project has federal trademark rights. The domain name incorporates the Impossible Marks
in its entirety. For all of these reasons, the domain name <ImpossibleProject.com> is identical to the
Complainants Marks.

Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because,
inter alia, Complainant has no relationship with the Respondents and [Complainant] has not
authorized the Respondents to use the Impossible Project Marks; Respondent, in coordination with
[a third-party who previously registered the Disputed Domain Name,] devised a plan to extort a six
figure sum from the Complainant; [a]fter more than five years of directing traffic to Impossible
Projects website, Respondent executed on his scheme to extort a significant payment of money, by
trying to fashion a basic website to support its claim that it had a good faith basis to keep the domain;
[t]here is no suggestion whatsoever that Respondents are commonly referred to by the name
IMPOSSIBLE PROJECT or ImpossibleProject.com, or that they have any legitimate association with
the terms; and the Respondent is using <ImpossibleProject.com> for the purpose of extracting a
large buyout figure for <ImpossibleProject.com>.

The Disputed Domain Name was registered and is being used in bad faith because, inter alia, [t]he
domain name is being used to in a manner to deceive the public into associating Respondents
website with the goods and services provided by Complainant; Respondents refusal to sell the
Disputed Domain Name at a price offered by Complainant shows that Respondent registered
<ImpossibleProject.com> with the intention of selling it to the Complainant for more than out-of-pocket
costs; [i]t is well-established that registration of a domain name that is confusingly similar to a
famous trademark by an entity that has no relationship to that mark is itself sufficient evidence of bad
faith registration and use; and [i]t is unfair that Complainant is required to use the domain name
<the-impossible-project.com> when their name is IMPOSSIBLE PROJECT and they own trademark
rights to the Impossible Marks.

B. Respondent

page 4

Respondent contends, in relevant part, as follows:


- Complainants conclusory statements and new trademark applications filed on the eve of the
Complaint are insufficient to establish common law rights in Impossible Project and Complainants
pending applications do not give rise to trademark rights. Accordingly, Complainant only has
established rights in and only may rely upon in this proceeding its registered mark IMPOSSIBLE,
which is a design mark, not a standard character mark. [T]he addition of Project to the term
Impossible does not create any confusion with whatever rights Complainant has in the IMPOSSIBLE
mark, especially considering that [g]iven the descriptive connotation of Project, and the hundreds of
Impossible marks owned by unrelated parties, it belies belief to suggest that Impossible Project is
likely to be confused with Impossible.
-Respondent has rights or legitimate interests in the Disputed Domain Name because, inter alia, it has
conducted business and sold a range of goods and services throughout the United States under
various IMPOSSIBLE formative marks for at least six years; Respondent obtained its trademark
registrations for IMPOSSIBLE prior to notice of the present dispute; Respondent has operated a
variety of businesses under IMPOSSIBLE formative marks since 2010; and Respondent acquired
the ImpossibleProject.com domain name on December 2, 2013 to complement his portfolio of
Impossible domain names.
-The Disputed Domain Name was not registered or used in bad faith because, inter alia, [r]esponding
to a purchase inquiry with a high quote does not establish bad faith registration and use;
Respondent acquired the domain name for use with its IMPOSSIBLE line of businesses; and [i]t is
absurd to suggest that the photos [on Respondents website] are intended to simulate Polaroid
pictures.
In addition, Respondent has requested a finding of Reverse Domain Name Hijacking in the present case
due to Complainants (1) filing of an objectively baseless complaint, (2) omission of highly material facts from
the Complaint, and (3) redacting emails to conceal Respondents rights and legitimate interests and absence
of bad faith. Respondent contends that Complainant intentionally misled the panel in its zeal to accomplish
through the administrative process what it was unable to do through commercial negotiations. Complainant
was well aware of Respondents rights and legitimate interests and failed to disclose this information.

6. Discussion and Findings


Pursuant to the Policy, Complainant is required to prove the presence of each of the following three
elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly
similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or
legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been
registered and is being used in bad faith. Policy, paragraph 4(a).
Where a complainant does not prove one or more of these elements, the panel is compelled to issue a
decision denying the complaint, regardless of the complainants ability to prove the other element(s) required
by the Policy. Accordingly, under such circumstances, any discussion by the panel with respect to such
other element(s) would be unnecessary in reaching a decision to deny the complaint. See, e.g., Admerex
Limited v. Metyor Inc., WIPO Case No. D2005-1246 ([s]ince the Complainant must prove all three elements
of the Policy, and since the Complainant fails under the third element,it is not necessary to make a finding
under the second element of the Policy); Micro Electronics, Inc. v. MicroCenter, WIPO Case No. D20051289 (where the complainant failed to prove the second element of the Policy, there is no need for the
Panel to address the third element of the Policy). Therefore, given that the Panel majority in the instant
case finds, as discussed below, that Complainant has failed to prove the second element of the Policy that
is, paragraph 4(a)(ii) the Panel makes no findings with respect to the third element of the Policy. The
dissenting panelist (dissenting solely on the question of Reverse Domain Name Hijacking) deals with the

page 5
matter briefly in his dissent.

A. Preliminary Issue: Supplemental Filings


As noted above, each of the parties submitted a supplemental filing. As set forth in paragraph 4.2 of WIPO
Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (WIPO Overview 2.0):
Panels have discretion whether to accept an unsolicited supplemental filing from either party, bearing
in mind the need for procedural efficiency, and the obligation to treat each party with equality and
ensure that each party has a fair opportunity to present its case. The party submitting its filing would
normally need to show its relevance to the case and why it was unable to provide that information in
the complaint or response. Most panels that have allowed unsolicited filings have also tended to
require some showing of exceptional circumstances. Panels which accept a supplemental filing from
one side typically allow the other party the opportunity to file a reply to such supplemental filing. In
either scenario, or on its own initiative, a panel may in its discretion request further evidence,
information or statements from one or other of the parties by way of administrative panel order.
Here, Complainant has not set forth any exceptional circumstances that would justify its supplemental filing,
and Respondent has objected to it. Nevertheless, it is significant to note that, as described above, the
Response requests a finding of Reverse Domain Name Hijacking. Accordingly, it is appropriate for the
Complainant to have an opportunity to respond to this request. See, e.g., Puls Elektronische
Stromversorgungen GmbH v. NetIdentity, WIPO Case No. D2002-0205 ([i]n light of the allegation by the
Respondent that the pursuit of this administrative proceeding by the Complainant constitutes Reverse
Domain Name Hijacking, the Panel takes the view that the Complainant ought to have an opportunity to
respond to that allegation and has decided to accept the Complainants Supplemental Filing insofar as it is
relevant to that issue.); and Cosmos European Travels AG v. Eurotech Data Systems Hellos, Ltd., WIPO
Case No. D2001-0941 (where a respondent asks a panel to find reverse domain name hijacking, the
Complainant is entitled to defend itself and, therefore, a supplemental filing from the Complainant along with
relevant supporting documents should be admitted in their entirety). Therefore, the Panel considers the
parties supplemental filings, but only to the extent that they address the issue of Reverse Domain Name
Hijacking.
B. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in
and to the trademark IMPOSSIBLE. But, the Panel agrees with Respondent that Complainant has not
established that it has rights in and to the trademark IMPOSSIBLE PROJECT. [T]he pending trademark
applications cited by Complainant do not establish trademark rights for purposes of the Policy. DoorKing,
Inc v. United Marketing Group, Inc, WIPO Case No. D2012-0952. And, Complainant has failed to establish
that it has common law rights in the trademark IMPOSSIBLE PROJECT because it has not show[n] that the
name has become a distinctive identifier associated with the complainant or its goods or services by
providing appropriate evidence of secondary meaning via length and amount of sales under the trademark,
the nature and extent of advertising, consumer surveys and media recognition. WIPO Overview 2.0,
paragraph 1.7.
Accordingly, the Panel considers whether the Disputed Domain Name is confusingly similar to the trademark
IMPOSSIBLE. The relevant comparison to be made is with the second-level portion of the Disputed Domain
Name only (i.e., impossibleproject), as it is well established that the Top-Level Domain (i.e., .com) may be
disregarded for this purpose. See WIPO Overview 2.0, paragraph 1.2 (The applicable top-level suffix in the
domain name (e.g., .com) would usually be disregarded under the confusing similarity test (as it is a
technical requirement of registration), except in certain cases where the applicable top-level suffix may itself
form part of the relevant trademark.)

page 6
The Disputed Domain Name wholly incorporates the IMPOSSIBLE trademark, which some panels have
found is sufficient to establish identity or confusing similarity for purposes of the Policy. Oki Data Americas,
Inc. v. Asdinc.com, WIPO Case No. D2001-0903. Further, because the IMPOSSIBLE trademark appears at
the beginning of the Disputed Domain Name, the dominant portion of the Disputed Domain Name contains
the IMPOSSIBLE trademark and the addition of the word project is insufficient to create a distinct domain
name capable of overcoming a proper claim of confusingly similar. F.M. Tarbell Co. dba Tarbell, Realtors v.
Name Catcher/Mark Lichtenberger, WIPO Case No. D2007-0189. See also Carlsberg A/S v. Personal /
decohouse, decohouse, WIPO Case No. D2011-0972 (the prominent portionof the disputed domain name
and the Complainants trademark are identical with each other); and Aventis Pharmaceuticals Products Inc.
v. PBS Publishing LLC, WIPO Case No. D2003-0122 ([t]he initial portion of the Domain Name is identical to
Complainantsmark).
Accordingly, the Panel finds that Complainant has proven the first element of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy states that a respondent may establish rights or legitimate interests by
successfully demonstrating any of the following:
(i)

before any notice to you 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 (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 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.

However, these circumstances are, as the Policy makes clear, without limitation. That is, a respondent
may establish rights or legitimate interests via other circumstances that a panel finds to be proved.
Notably, [p]anels have tended to recognize that a respondents registration of a trademark which
corresponds to a disputed domain name normally will, but does not necessarily, establish respondent rights
or legitimate interests in that domain name for the purpose of the second element of the UDRP. WIPO
Overview 2.0, paragraph 2.7.
Here, it is without question the case that Respondent is the owner of a U.S. trademark registration for the
mark IMPOSSIBLE, namely, U.S. Reg. No. 4,260,617. This mark was registered on December 18, 2012,
long before Respondent apparently became aware of this dispute. Further, there are no elements
suggesting that Respondents trademark registration is other than genuine. Angels Baseball, L.P. v. Lee
Dongyeon, NAF Claim No. 0925418. If anything, Respondents detailed explanation as to its interest in
using the name Impossible, along with its apparently large portfolio of domain names containing the
Impossible name, lends further credibility to the relevance of this trademark registration which, in turn,
appears to support Respondents rights and legitimate interests in purchasing a domain name that contains
this trademark. Although, of course, the Disputed Domain Name contains the word project in addition to
the IMPOSSIBLE trademark, this additional word is, as stated above under the Panels discussion of the first
element of the Policy, of little consequence.
Nevertheless, the record is unclear as to why Respondent specifically chose to purchase the Disputed
Domain Name from a third-party for USD 797.25 and whether Respondent had a relationship with a previous
registrant of the Disputed Domain Name, as alleged by Complainant questions that may be relevant to
whether Respondent has taken actions simply to create the appearance of rights or legitimate interests.
However, the Policy and the Rules do not provide the Panel with any authority to ascertain the
Respondents credibility given the limitations on filings, the absence of discovery and the procedural
efficiencies that are a part of (although admittedly occasionally detrimental to) this process. Google Inc. v.

page 7
Blue Arctic LLC, NAF Claim No. 1447355. Accordingly, while [i]t may be that Complainant could develop
evidence oflack of legitimate interest in a legal proceeding that would allow more evidentiary
development.[t]he Policywas not designed to transfer domain names in every case that a trademark
owner might ultimately win. Trans Continental Records, Inc. v. Compana LLC, WIPO Case No.
D2002-0105. Moreover, in light of the record that was presented to the Panel in this case, Complainant has
not proved the allegations of conspiracy that it has asserted.
In light of the above, the Panel concludes that Complainant has failed to prove the second element of the
Policy.
D. Registered and Used in Bad Faith
As stated above, given that the Panel in the instant case finds that Complainant has failed to prove the
second element of the Policy that is, paragraph 4(a)(ii) the Panel makes no findings with respect to the
third element of the Policy.
E. Reverse Domain Name Hijacking
As set forth in paragraph 4.17 of WIPO Overview 2.0:
Paragraph 15(e) of the UDRP Rules provides that, 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. Reverse Domain Name Hijacking is defined under the UDRP Rules as using the UDRP
in bad faith to attempt to deprive a registered domain-name holder of a domain name.
WIPO panels have found that the onus of proving complainant bad faith in such cases is generally on
the respondent, whereby mere lack of success of the complaint is not itself sufficient for a finding of
Reverse Domain Name Hijacking. To establish Reverse Domain Name Hijacking, a respondent would
typically need to show knowledge on the part of the complainant of the complainants lack of relevant
trademark rights, or of the respondents rights or legitimate interests in, or lack of bad faith concerning,
the disputed domain name.
In light of the Panels outstanding questions about some of Respondents actions, as alluded to above, the
Panel declines to enter a finding of Reverse Domain Name Hijacking.

7. Decision
For the foregoing reasons, the Complaint is denied.

Douglas M. Isenberg
Presiding Panelist

Christopher S. Gibson
Panelist

Tony Willoughby
Panelist

page 8
Date: May 22, 2016

Dissenting Opinion on the Question of Reverse Domain Name Hijacking (RDNH)


While this dissent is solely on the question of RDNH, I also disassociate myself from the Panel majoritys
comments opening up the possibility that there might be something in Complainants conspiracy theories,
which were wholly unsupported by any evidence. Had there been anything to them, the Panel could not, in
my view, have made the finding that it has under the second element.
The Complaint failed because Complainant failed to satisfy the Panel that Respondent has no rights or
legitimate interests in respect of the Disputed Domain Name.
The failure stemmed in large part because Respondent was able to establish that he had a US trademark
Registration for IMPOSSIBLE (stylised), which appeared to have been registered before he became aware
of Complainants cause for complaint and which was consistent with the substantial evidence he produced
showing his past use of his so-called Impossible-formative names.
I contend that as a matter of principle if a complainant is going to allege that a respondent has no rights or
legitimate interests in respect of a domain name, he ought if he can to make some very basic investigation to
verify whether or not the respondent does in fact have any such rights. In practice this can be very difficult if
one knows nothing of the respondent; and it may well be that in many (if not most) cases, the complainant
has nowhere to start.
However, in this case Complainant was corresponding with Respondent from October 2015 to January 2016
seeking to purchase the Disputed Domain Name from Respondent. In the course of that correspondence
Complainant (through its CEO) acknowledged Respondents interest in Impossible-formative names.
Moreover, it was told in an email of October 27, 2015 that Respondent had a registered trademark covering
its usage. From that month, if not before, Complainant was also well aware that it was dealing with Joel
Runyon of Impossible Ventures and that Respondent and his business used the names ImpossibleHQ
and <impossiblehq.com>, for these names appeared at the base of each of Respondents emails.
There was thus quite a lot of basic information upon which Complainant could have based a simple
investigation, but the Complaint mentions nothing. It does not even mention Respondents claim to a
registered trademark. The email in question was excluded from the selection annexed to the Complaint.
Im afraid that I simply cannot believe that a trademark search would not have been carried out to check
Respondents claim. And one can only speculate as to why all reference to that trademark was omitted from
the Complaint.
Other emails that were excluded from Complainants annexures were emails from Respondent identifying its
interest in Impossible names and an email in which Complainant both expressly acknowledges
Respondents interest in those names (I just figured that you actually care about the impossible portfolio of
domains.) and expressly recognises that you can ask what you want for the domain and I understand that,
which is a statement which flatly contradicts the whole tenor of the Complaint.
For me, the tone of the pre-Complaint inter partes correspondence when read in full (thanks to Respondent)
is not correspondence with a cybersquatter, but correspondence with a genuine user of Impossibleformative names.
I am shocked at the level of selection and do not understand how the Complaints certificate as to the
completeness of the evidence could have been signed.
I am conscious that the Panel majority do not regard the issue of RDNH as being of any great relevance in
the context of this dispute. I fundamentally disagree.

page 9

In my view, this was a case that should never have been launched and it is crucial that complainants and
their advisers have it made very clear to them that in a system such as this where many respondents do not
bother to respond, it is important that panels can rely upon the certificate at the end of the Complaint.
Finally, if, as some panelists believe, failure on the part of respondents to conduct trademark searches prior
to registering domain names may be evidence of bad faith registration and use, one might reasonably
enquire why it is not equally abusive for a complainant to assert that the respondent has no relevant rights,
when a simple trademark search in the respondents jurisdiction would have confirmed to the complainant
that the respondent might well have such rights. In this case, what makes matters much worse is that, as I
have pointed out above, the Complainant was expressly informed months prior to the filing of the Complaint
that the Respondent was the owner of registered trademark rights and a simple search of the United States
Patent and Trademark Office would have verified it.
I would make a finding of RDNH.

Tony Willoughby
Panelist (Dissenting)
Date: May 22, 2016