ImpossibleProject.com

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ARBITRATIONANDMEDIATION 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 (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 responseconfirming “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 Respondent’s 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 Complainant’s 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 theirworkshops 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 since2010, 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


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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 of !over 250

Impossible formative domain names that are used in support of Respondent’s 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 to direct

traffic to Complainant’s 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 is identical to the

Complainant’s 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

Project’s 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 for the purpose of extracting a

large buyout figure for .”

- 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 Respondent’s

website with the goods and services provided by Complainant”; Respondent’s refusal to sell the

Disputed Domain Name at a price offered by Complainant “shows that Respondent registered

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

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.

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 Complainant’s 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 thename 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.”)


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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 portion!

of the disputed domain nameand the Complainant’s 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

Complainant’s!mark”).

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 respondent’s 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 Respondent’s trademark registration is other than genuine.” Angels Baseball, L.P. v. Lee

Dongyeon, NAF Claim No. 0925418. If anything, Respondent’s 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 Respondent’s 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 Panel’s 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

Respondent’s 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 of !lack of legitimate interest in a legal proceeding that would allow more evidentiary

development!.[t]he Policy!was 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 complainant’s lack of relevant

trademark rights, or of the respondent’s rights or legitimate interests in, or lack of bad faith concerning,

the disputed domain name!.

In light of the Panel’s outstanding questions about some of Respondent’s 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

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 majority’s

comments opening up the possibility that there might be something in Complainant’s conspiracy theories,

which were wholly unsupported by any evidence. Had there been anything to them, the Panel could not, inmy 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 Complainant’s 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 orlegitimate 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 Respondent’s 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 , for these names appeared at the base of each of Respondent’s 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 Respondent’s claim to a

registered trademark. The email in question was excluded from the selection annexed to the Complaint.

I’m afraid that I simply cannot believe that a trademark search would not have been carried out to check

Respondent’s 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 Complainant’s annexures were emails from Respondent identifying its

interest in “Impossible” names and an email in which Complainant both expressly acknowledgesRespondent’s 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 “Impossible-

formative” names.

I am shocked at the level of selection and do not understand how the Complaint’s 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.


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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 respondent’s 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

Documents

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