Demonstrable preparations to use domain name gave Respondent rights or legitimate interests

In the case of Kevin Michael Gray d/b/a Approve Me v. Progressive Finance LLC / Hostmaster Hostmaster, Prog Finance, LLC, a WIPO Panel denied the Complainant’s efforts to have the disputed domain name <approve.me> transferred.  The Panel held that the Complainant failed to demonstrate that the Respondent lacked rights or legitimate interests in the disputed domain name.

The case provides an example where the Respondent may indeed be infringing the Complainant’s trademark,  but the circumstances do not give rise to cybersquatting as prohibited under the UDRP.

Timeline:

  • January 14, 2014 – The Complainant obtained a U.S. trademark registration for APPROVE ME in connection with “computer software for the collection, editing, organizing, modifying, book marking, transmission, storage and sharing of data and information”.
  • April or June 2014 – the Respondent acquired the disputed domain name.
  • May 7, 2014 – the Respondent incorporated a company in Utah under the name “Approve.me LLC”.
  • September 2014 – the Complainant learned of the Respondent’s acquisition of the disputed domain name.
  • October 3, 2014 – the Complainant sent a demand letter to the Respondent.
  • September 22, 2015 – the Respondent announces the launch of Approve.Me, a solution for retailers to offer a single application across the full spectrum of finance and lease products.

Rights or Legitimate Interests

The Panel observed that under paragraph 4(c)(i) of the UDRP, a Panel shall find that a Respondent has demonstrated rights or legitimate interests where the Panel finds that, based on an evaluation of all the evidence presented, before any notice to the Respondent of the dispute, the Respondent was using, or making 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.

In this case,  the Panel found that the Respondent had been making demonstrable preparations to launch a business under a name corresponding to the disputed domain name prior to receiving the Complainant’s cease and desist letter. The Panel credited the Respondent’s assertion that it was not aware of the Complainant and its business at the time it acquired the disputed domain name. Despite the Complainant’s assertions, the Panel found no objective evidence that would allow it to infer that the APPROVE ME trademark was in fact well-known or had a substantial profile in the financial services industry, such that the Respondent could be reasonably presumed to have known about it. Without such evidence, and taking into account that APPROVE ME is capable of being used and understood in a descriptive manner in respect of financial services (e.g., in statements such as, “approve me for credit”), there was no basis on the record on which the Panel could find that there was knowledge on the part of the Respondent that would call into question the bona fides of its adoption of the disputed domain name.

Bad Faith

Though it had sufficient grounds to deny the Complaint on the second UDRP element,  the Panel nonetheless also found that the Complainant failed on the third element,  namely,  bad faith registration and use.

There was no evidence that would allow the Panel to infer that the Respondent was aware of the Complainant prior to acquisition of the disputed domain name, and that the Respondent intended to capitalize on the Complainant’s reputation and goodwill. The Panel noted that did not, of course, mean that the Respondent’s activities may not infringe the Complainant’s trademark rights. That was, however, an issue that the Complainant would need to pursue separately in a different forum.

Kevin Michael Gray d/b/a Approve Me v. Progressive Finance LLC / Hostmaster Hostmaster, Prog Finance, LLC, WIPO Case No. DME2015-0015 (March 18, 2016)


Evan_BrownAbout the Author: Evan Brown is a Chicago technology and intellectual property attorney helping clients with a wide variety of issues, including domain name disputes under the UDRP. Call him at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases. Read Evan’s other blog, internetcases, for information about general internet law.