Innovative Research Technology, Inc v 513 Ventures, LLC

WIPO Case No. D2024-2861

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Innovative Research Technology, Inc v. 513 Ventures, LLC

Case No. D2024-2861

1. The Parties

The Complainant is Innovative Research Technology, Inc, United States of America (“United States”), represented by Gleam Law, United States.

The Respondent is Christopher Swain and Robert Grimm, 513 Ventures, LLC,[1] United States represented by

Wood, Herron & Evans, LLP, United States.

[1] Although the WhoIs information listed these individuals as registrants, respectively, of the disputed domain names, the organization

2. The Domain Names and Registrar

The disputed domain names <theurinators.com> and <urinator.net> are registered with GoDaddy.com, LLC

(the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2024. On
July 15, 2024, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain names. On July 15, 2024, the Registrar transmitted by email to the
Center its verification response disclosing registrant and contact information for the disputed domain names
which differed from the named Respondent (513 VENTURES, LLC) and contact information in the

Complaint.

The Center sent an email communication to the Complainant on July 18, 2024 with the registrant and contact underlying registrants or alternatively, demonstrate that the underlying registrants are in fact the same entity and/or that all domain names are under common control. The Complainant filed an amended Complaint on July 23, 2024.

information of nominally multiple underlying registrants revealed by the Registrar, requesting the

page 2

The Center verified that the Complaint together with the amended 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 the Respondent of the
Complaint, and the proceedings commenced on August 5, 2024. On August 12, 2024, the Respondent,
through counsel, sent an email to the Center requesting an additional four days to file a Response, in
accordance with Section 5(b) of the Rules. The due date for the Response was accordingly extended until
August 29, 2024. On August 21, 2024, the same counsel for the Respondent contacted the Center via email
requesting that the proceedings be suspended as the parties were in settlement negotiations. The
Complaint agreed to suspend the proceedings. The proceedings were suspended until September 25, 2024.
On October 1, 2024, the Center reinstated the proceedings, with a Response due date of October 6, 2024.
No Response was filed.

The Center appointed Evan D. Brown as the sole panelist in this matter on October 15, 2024. The Panel finds that it was properly constituted. 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

The Complainant owns the mark URINATOR, for which it owns a registration in the United States (Reg. No.
4425566, registered on October 29, 2013) for use on an “anti-genetic profile testing device”.

The Respondent appears to sell competing devices. One of the disputed domain names – <urinator.net> – was registered on October 18, 2006, and there is indication that the Respondent has been conducting such business via a website at that disputed domain name since at least as early as October 13, 2012. [2] The

disputed domain name <theurinators.com> was registered on June 13, 2019.

[2]The Panel sought information from the Internet Archive (archive.org) to find such evidence of use of this disputed domain name.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are identical or confusingly similar to the domain names; and that the disputed domain names were registered and are being used in bad faith.

B. Respondent

The Respondent did not respond to the Complainant’s contentions.

page 3

6. Discussion and Findings

Panels sometimes deny cases not on the UDRP merits but on the narrow grounds that the dispute between the parties exceeds the relatively limited “cybersquatting” scope of the UDRP and would be more appropriately addressed by a court of competent jurisdiction. WIPO Overview 3.0, section 4.14.6. This is a case in which denial on such other grounds is appropriate. This Panel is not a general domain name court, and the Policy is not designed to adjudicate all disputes of any kind that relate in any way to domain names. The Thread.com, LLC v. Jeffrey S. Poploff, WIPO Case No. D2000-1470. Rather, the Policy is narrowly crafted to apply to a particular type of abusive cybersquatting. Id.

When a dispute involves potential trademark infringement that raises complex issues beyond clear cybersquatting, such matters are generally more appropriately resolved in judicial court proceedings rather than under the UDRP. For example, in the case of Principal Financial Services, Inc. v. Timothy DeRosier, WIPO Case No. D2023-4873, the panel therein found that the respondent’s use of a domain name incorporating the complainant’s trademark may not be infringing because, among other things, the respondent demonstrated a legitimate business interest and distinct services from the Complainant's offerings. It concluded that it was “open to question whether Respondent’s use of the Domain Name [was] the type of clear cybersquatting to be addressed by the Policy, and [that it] would be suited for hearing before a competent court”.

The Panel finds this dispute to involve issues touching on trademark infringement, unfair competition, and perhaps other intellectual property issues that are beyond the type of abusive cybersquatting the Policy was designed to address. For example, because the Respondent has been using at least one of the disputed domain names in its business for at least 12 years, principles of equity, including laches, may apply. Additionally, despite registration of the mark on the United States Principal Register, the mark URINATOR corresponds also to a dictionary term (to certain extent) related to the goods offered. Given the apparent long-term coexistence of the parties, a tribunal might need to assess the presence or absence of actual consumer confusion in the marketplace as a relevant factor in determining the parties’ respective rights. Simply stated, the fair resolution of this case requires more weighing of evidence, and more analysis, than what is available in proceedings under the Policy.

Accordingly, in these circumstances, the Complaint under the Policy must fail. In reaching that conclusion, the Panel takes no position on the merits of any wider dispute between the Parties. The Complainant remains free to seek remedies in other fora and the Panel notes for completeness that the present finding is confined to the Policy and that it does not seek to influence any such subsequent proceedings, should they be raised.

7. Decision

For the foregoing reasons, the Complaint is denied.

/Evan D. Brown/
Evan D. Brown
Sole Panelist
Date: November 6, 2024

name associated with both disputed domain names is 513 Ventures, LLC. In these circumstances it appears clearly to the Panel that
both disputed domain names are under common control. Accordingly, the Panel will refer to the “Respondent” in this matter to address
the listed owners of both disputed domain names.

Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision.