Professional Documents
Culture Documents
AND
MEDIATION CENTER
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.
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,
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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:
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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:
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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
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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:
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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
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matter briefly in his dissent.
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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.
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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
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Date: May 22, 2016
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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