Decision

Nalli India loses Domain Dispute / UDRP over NALLIGROUP.com

WIPO Case Number: D2019-2642
Domain name: NalliGroup.com
Complainant: Nalli Chinnasami Chetty
Respondent: Anthony Nalli, FourPoints Multimedia Corp
Panelist: Bernstein, David H.
Decision Date: 18-12-2019
Decision: Complaint denied

Nalli, founded in 1928, deals with Indian Traditional wear for women that includes Silk Garments. In 1993, it got incorporated as Company (Nalli Silk Sarees Pvt. Ltd.) and also the first trademark application was made under class 24 in India in the same year. Nalli also holds Trademark rights globally in various countries, including Canada.

In India, it has mainly the following valid Trademarks under class 16 and 24:

Word Mark NALLI”S
Appl. No. 606409 Class : 24
Appl. Date 10/09/1993
Proprietor NALLI SAMBBASIVM
Journal No. 1213-0 Journal Date : 16/12/1999
Status Registered
Used Since 01/01/1981 Valid Upto : 10/09/2023
Goods & Services Description SILK SAREES AND TEXTILES GOODS FOR SALE EXCEPT IN THE STATE OF TAMILNADU

Word Mark NALLI
Appl. No. 903809 Class : 16
Appl. Date 16/02/2000
Proprietor N. KUPPUSWAMI CHETTIAR
Journal No. 9999-2 Journal Date : 25/09/2003
Status Registered
Used Since 26/01/1935 Valid Upto : 16/02/2010
Goods & Services Description paper, cardboard and goods made from these materials, not included in other classes; printed matter

Nalli filed for UDRP / Domain Name Dispute over domain name NalliGroup.com in October 2019 in the name of its founder Mr. Nalli Chinnasami Chetty. Whereas the Respondent Mr. Anthony Nalli of FourPoints Multimedia Corp. is a resident of Canada, having WHOIS information as follows:

Name: Anthony Nalli
Organization: FourPoints Multimedia Corp
Street: 6-295 Queen St. E., #390
City: Brampton
State/Province: ON
Postal Code: L6W4S6
Country: CA
Phone: +1.877773****

Mr Anthony Nalli is a famous personality, being an Executive Producer & Host at The RVers TV, Canada. He has Twitter account at: https://twitter.com/AnthonyNalli.

In a UDRP proceeding, NALLI was supposed to prove three elements to succeed:

The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
The registrant does not have any rights or legitimate interests in the domain name; and
The domain name has been registered and the domain name is being used in “bad faith”.

Further Para 6 of the UDRP Policy, provides for the following condition, which proves the legitimate interests on the part of the Respondent:

(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

This clause very clearly provides protection to legitimate registered domain owners, even against strong Trademarks like NALLI. The same has been upheld in the said domain dispute matter of NALLIGROUP.com, where the Respondent, Mr. Anthony Nalli is known by the Domain Name.

Further, though no response filed but still held as a case for Reverse Domain Name Hijacking (RDNH) against Nalli India and it’s Law firm Deppenings & Deppenings 🙂

Read the complete decision:

WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nalli Chinnasami Chetty v. Anthony Nalli, FourPoints Multimedia Corp [Case No. D2019-2642]

1. The Parties
The Complainant is Nalli Chinnasami Chetty, India, represented by DePenning & DePenning, India.

The Respondent is Anthony Nalli, FourPoints Multimedia Corp, Canada.

2. The Domain Name and Registrar
The disputed domain name <nalligroup.com> is registered with Domain.com, LLC (the “Registrar”).

3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2019. On October 29, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 30, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 4, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On November 4, 2019, the Center also sent an email requesting clarification regarding mutual jurisdiction. The Complainant filed an amended Complaint on November 6, 2019 and provided clarification on the location of mutual jurisdiction.

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 November 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 28, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 29, 2019.

The Center appointed David H. Bernstein as the sole panelist in this matter on December 9, 2019. 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.

Although the written notification sent by courier to the Respondent was not delivered because there was no one at the address provided to accept delivery, there is no indication in the record that the email notification to the Respondent bounced back or was otherwise unsuccessful. The Panel finds that the Center discharged its obligation to provide notice as provided in the Rules.

4. Factual Background
The Complainant is Nalli Chinnasami Chetty, a manufacturer and retailer of silk clothing and other products, established in the year 1928 and headquartered in Chennai, India. The Complainant first claims use of the mark NALLI in commerce in 1935. The Complainant applied for registration of the mark NALLI in India (Reg. No. 472754) on May 27, 1987. The Complainant is also the proprietor of trademark registrations for NALLI with the United States Patent and Trademark Office (the “USPTO”) (United States of America (“U.S.”) Reg. No 2,444,608 and 2,100,656), and the appropriate offices in the European Union (Reg. Nos. EU001373786 and EU005690839), Australia (Reg. Nos. 602236, 602237, and 1155609), Canada (Reg. Nos. 779929 and 482448), Sri Lanka (Reg. Nos. 67348 and 67349), Singapore (Reg. Nos. T1203648D, T06/253501, T11/04869A, T98/02255Z, T06/25354A, and T98/02256H), Mauritius (Reg. Nos. 15764/2014 and 11395/1992), New Zealand (Reg. No. 761744), and the United Kingdom (Reg. Nos. 3020853, 2309588, and 1518192). The Complainant owns fifty-five domains incorporating NALLI.

The disputed domain name was registered on August 27, 2014, by the Respondent. The webpage identified by the disputed domain name is not currently being utilized to sell goods or services, and the Complainant does not allege that the domain name has ever been used for such purpose.

5. Parties’ Contentions
A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to the NALLI trademark in which it has rights. It provided evidence of its various trademark registrations for NALLI globally.

The Complainant further contends that the Respondent does not have any rights or legitimate interests in the disputed domain name. The totally of the Complainant’s allegations concerning whether Respondent has rights or legitimate interests is as follows:

[(i)] The Complainant has not licensed or otherwise permitted the Respondent to use its trade/service mark NALLI or to apply for any domain name incorporating the said trade/service mark.

[(ii)] The Respondent has not made any legitimate offering of goods or services under the mark NALLI through the disputed domain name.

[(iii)] It is further stated that there could be no plausible explanation for the use of the disputed domain name <nalligroup.com> by the Respondent other than to misappropriate the reputation of the Complainant’s trade/service mark.

[(iv)] Therefore, the fact that the sole purpose of the Respondent’s registration for the disputed domain name is to misappropriate the reputation of the Complainant’s trade/service mark NALLI and to divert traffic from the Complainant’s websites, makes it apparent that the Respondent has no rights or legitimate interest in the disputed domain name.

The Complainant contends that the Respondent registered and used the disputed domain name in bad faith. The totality of the Complainant’s allegations concerning the Respondent’s alleged bad faith use and registration is as follows:

The Respondent had constructive notice of the Complainant’s rights in the trade/service mark NALLI by virtue of the Complainant’s well spread reputation, use and registrations. Some notable decisions stating that:

(i) A respondent should have known of a complainant’s trademark if it is shown to be well-known or in wide use on the Internet or otherwise;

(ii) Such knowledge of the Respondent is an indicator of bad faith of the Respondent in registering the disputed domain name;

(iii) The passive holding of a domain name has been held to be the use of the domain name in bad faith; and

(iv) The very use of a domain name by someone with no connection with the Complainant suggests opportunistic bad faith

are Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320 & SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092.

B. Respondent
The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings
To prevail, the Complainant must prove all three elements set out in paragraph 4(a) of the Policy by a preponderance of the evidence:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

The Panel finds that the Complainant has proven by a preponderance of the evidence that the disputed domain name is confusingly similar to the Complainant’s trademark NALLI.

However, the Panel finds that the Complainant has failed to prove by a preponderance of the evidence that the Respondent has no rights or legitimate interests in respect of the disputed domain name or that the disputed domain name has been registered and is being used in bad faith.

Moreover, the Panel finds that the Complainant is guilty of reverse domain name hijacking.

A. Identical or Confusingly Similar
The Complainant has submitted evidence of its ownership of registrations for NALLI, with stylized letters, in India, the United States of America, Canada, Australia, New Zealand, Sri Lanka, Singapore, Mauritius, and the United Kingdom. The Complainant also notes that the Complainant’s rights in the trademark NALLI were recognized in a previous WIPO decision, Nalli Chinnasami Chetty v. James H. Park, WIPO Case No. D2017-1373 (<nalli.net>). As such, the Complainant has established that it has rights in the trademark NALLI. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 1.2.

The disputed domain name includes the term NALLI. As such, the disputed domain name is confusingly similar to the mark. See WIPO Overview 3.0 at section 1.7.

Accordingly, the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides three circumstances that, if found by the Panel to be proven based on its evaluation of all of the evidence presented, shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name:

(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Although the Complainant offered conclusory allegations that track these elements of the Policy, the Complainant fails to address the obvious fact that the Respondent’s last name is “Nalli”. Notwithstanding this fact (which was disclosed when the privacy shield was lifted by the Registrar as part of the Registrar Verification), the Complainant continues to contend that there is no plausible explanation for the use of the disputed domain name by the Respondent other than to misappropriate the reputation of the Complainant’s trademark. The Complainant does not, for example, dispute that the Respondent’s name really is Anthony Nalli, or that the Respondent is not really known by the name Anthony Nalli.

In the absence of evidence addressing this point, the Panel accepts as true what appears on the face of the Registrar Verification, which is that the Respondent’s name really is Anthony Nalli and that Mr. Nalli can be reached through FourPoints Multimedia Corp. in Ontario, Canada. In fact, this Anthony Nalli appears to be a legitimate person – a Wikipedia entry for Anthony Nalli includes the following information:

Anthony Nalli is a Canadian television producer and host of the independently produced television series The Aviators, which airs on a majority of PBS stations across the United States, on Bell TV in Canada, on Discovery Channel overseas, as well as on iTunes, Google Play, and Amazon. The eighth season of the show is expected in 2020 and Anthony’s production company, FourPoints Television Productions, has also produced Air Boss, Jet Truck, and AutoExotica, and in October of 2018 announced a new series, The RVers. “en.wikipedia.org/wiki/Anthony_Nalli”. The reference to FourPoints Television Productions in the Wikipedia entry reinforces a finding that this entry refers to the same Anthony Nalli who is the registrant of this domain name. Similar information about Anthony Nalli is also available at “www.imdb.com/name/nm4006712/”.

Although the Respondent has not submitted a response, the Panel is permitted to consult public sources of reliable information, like Wikipedia and IMDB entries. See WIPO Overview 3.0 at section 4.8. Relying on that information, the Panel finds that the Respondent identified in the Registrar Verification is in fact Anthony Nalli, the Canadian television producer, and that Mr. Nalli is known by his name Anthony Nalli. As such, Mr. Nalli plainly has rights in a domain name that combines his last name, Nalli, with the descriptive term “group”. See Policy paragraph 4(c)(ii).

Contrary to the Complainant’s bald assertion, there are in fact, several plausible explanations as to why the Respondent may have chosen to register the disputed domain name incorporating his name, none of which implicate an intent to misappropriate the Complainant’s trademark reputation. For example, in G.A. Modefine S.A. v. A.R. Mani, WIPO Case No. D2001-0537 (<armani.com>), the Panel noted that “[i]t is very common practice for people and organizations to register domain names which are based upon initials and a name, acronyms or otherwise variants of their full names”. The respondent in that case had a legitimate interest in registering a domain name containing his name, initials, or a combination thereof.

The Complainant has offered no reason why the same conclusion should not apply here. See, generally, WIPO Overview 3.0 at section 2.3. The Panel therefore holds that the Complainant has failed to meet its burden of proving by a preponderance of the evidence that the Respondent lacks rights or legitimate interests in the dispute domain name.

As an aside, the Panel also notes that, as observed on the “Internet Archive: Wayback Machine” (available at “web.archive.org”), the disputed domain name resolved (on September 3, 2005, October 6, 2015 and October 30, 2016) to a website with a logo “NALLI Group of Companies” and the message “A Family of Enterprises [.] For decades, the Nalli name has been associated with entrepreneurial exceptionalism. The NALLI Group of Companies encompasses a broad and unique range of enterprises, each a model of excellence in business execution.”, and then the website reproduced the following “NALLI Health and Wellness”, “NALLI Television Productions”, and “NALLI Information Technology”. The Panel does not find that Complainant had an obligation to review these archived pages, but review of these pages does reinforce the Panel’s finding that the Respondent has rights and legitimate interests in the disputed domain name.

Accordingly, the Complainant has failed to satisfy the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name; or

(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Disputed Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.

None of these four circumstances exist here, nor is there any other evidence of bad faith registration or bad faith use. In fact, the Complainant offers no evidence whatsoever of potential bad faith use and registration. Instead, the Complainant argues in conclusory fashion, with no supporting evidence that the registration and use was in bad faith because the Respondent is trying to usurp the reputation and goodwill of the Complainant’s trademark through the disputed domain name. The Respondent’s webpage does not reference the Complainant’s business or mark in any way, nor does it include any links related to the Complainant’s business.

It is true, as the Complainant notes, that the webpage is devoid of content, offers no goods or services, and is seemingly incomplete even though the disputed domain was registered in 2014. The Complainant views these facts as evidence of its contentions but they prove no such thing. At best, they show that Mr. Nalli registered this domain name five years ago but has not yet made any use of the name for a website (though it is possible that he is making other use, such as using the disputed domain name for email). Given the absence of any content on the website, this website can not support the Complainant’s contentions that the Respondent registered and is using the disputed domain name in bad faith, such as to take advantage of the Complainant or its trademark rights or to usurp the Complainant’s goodwill.

The UDRP decisions on which the Complainant relies do not support its contentions. In Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320 (<backberry.com>), the Panel found that the complainant’s trademark, Blackberry, was very well known and the disputed domain name must have been chosen with the mark in mind; tellingly, the Respondent in that case was not personally named Mr. Backberry. Similarly, in SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092 (<sembcorp.com>), the Panel concluded that the respondent acted in bad faith because the registrant either knew or ought to have known of the complainant’s rights in the name “SembCorp” due to the company’s substantial presence in the region; again, the respondent in that case was not personally known as Mr. Sembcorp. Moreover, in each of these cases, the registrant engaged in activity evidencing that the disputed domains were registered for a bad faith purpose in light of the registrant’s knowledge of the complainant’s marks. In Research in Motion Limited v. Privacy Locked LLC/Nat Collicot, supra, the webpage was used as a parking page containing sponsored advertising links, thereby resulting in commercial gain for the respondent by attracting visitors to the webpage in the mistaken belief they were visiting a site associated with the complainant. In SembCorp Industries Limited v. Hu Huan Xin, supra, the registrant attempted to sell the domain name to the complainant for a sum of money in excess of the registrant’s out of pocket registration expenses. This case does not present similar facts and does not warrant a finding of bad faith. Even if the Respondent knew or should have known of the NALLI trademark, the Complainant has not offered any evidence that the Respondent proceeded with the registration of the disputed domain name for a bad faith purpose, rather than for the purpose of registering a domain name that corresponds to the Respondent’s last name.

Accordingly, the Complainant has failed to satisfy the requirements of paragraph 4(a)(iii) of the Policy.

7. Reverse Domain Name Hijacking
Paragraph 15(e) of the Rules provides that, “[i]f 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”. It is the Panel obligation to consider whether a finding of Reverse Domain Name Hijacking should be made even in the absence of a request from the Respondent and even in the absence of a Response.

Section 4.16 of the WIPO Overview 3.0 notes that a panel may find Reverse Domain Name Hijacking when there are “facts which demonstrate that Complainant knew it could not succeed as to any of the required elements—such as Complainant’s lack of relevant trademark rights, clear knowledge of Respondent rights or legitimate interests, or clear knowledge of Respondent bad faith such as […] facts which demonstrate that Complainant clearly ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint”.

The conduct in this case falls under the category of Reverse Domain Name Hijacking. Once the privacy shield was lifted through the Registrar Verification, the Complainant and its counsel knew that they could not possibly succeed on any fair interpretation of the facts in this case. By filing an amended Complaint and repeating the same arguments that were in the initial Complaint, the Complainant and its counsel abused the WIPO administrative process in an attempt to obtain the disputed domain despite the inconvenient fact that the Respondent was Mr. Nalli. Rather than address that point, the Complainant and its counsel simply repeated the same arguments, baldly asserting that Mr. Nalli could have no plausible reason for registering the disputed domain name <nalligroup.com> other than to usurp the Complainant’s goodwill. The Complaint was therefore completely devoid of any facts or arguments that could support a finding that the Respondent lacked rights or legitimate interests in the disputed domain name.

The Complainant and its counsel also provided no evidentiary support whatsoever to support their argument that the Respondent must have registered and used the disputed domain name in bad faith. As such, they completely ignored the requirements set out in the Policy for establishing bad faith registration and use of a domain name. The Complainant and its counsel ignored the potential legitimate reasons as to why the Respondent may have registered the disputed domain name, disregarded precedent and unfavorable facts in concluding that the webpage (which makes no connection whatsoever to the Complainant) was an attempt to misappropriate its trademark reputation, and offered no more than unsupported allegations.

As such, the Panel finds the Complainant guilty of Reverse Domain Name Hijacking.

8. Decision
For the foregoing reasons, the Complaint is denied. Moreover, in light of the Complainant’s and its counsel’s abusive bad faith in filing the amended Complaint, the Panel finds the Complainant guilty of Reverse Domain Name Hijacking.

David H. Bernstein
Sole Panelist
Date: December 18, 2019

source: https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2019-2642

UDRP D2019-2683: FEEV.com case dismissed and RDNH Held

Complainant Feev Holding B.V. from Netherlands – Disputed Domain Registered in 2002 by a US Citizen – Complainant Trademark Registered recently in October 2019 – In August 2019, parties agreed to transfer the Domain Name for $15,000 – Respondent backed out, hence this UDRP – Website not reachable and no legitimate use being made – No Bad Faith proved, as Complainant’s contentions rejected – Held as a Reverse Domain Name Hijacking

Feev Holding B.V. v. Firas Dabboussi, FeeV

Case No. D2019-2683

1. The Parties

The Complainant is Feev Holding B.V., Netherlands, represented by Mouritz Legal, Netherlands.

The Respondent is Firas Dabboussi, FeeV, United States of America, self-represented.

2. The Domain Name and Registrar

The disputed domain name <feev.com> (the “Dispute Domain Name”) is registered with Register.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on November 6, 2019. On November 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 7, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

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 the Respondent of the Complaint, and the proceedings commenced on November 14, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 4, 2019. On December 3, 2019, the Respondent sent an email communication to the Center requesting an extension of the Response due date. An automatic extension of the Response due date was granted until December 8, 2019, under paragraph 5(b) of the Rules. The Response was filed with the Center on December 8, 2019.

The Center appointed Nick J. Gardner as the sole panelist in this matter on December 16, 2019. 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.

On December 17, 2019, the Complainant’s representatives submitted a Supplemental Filing to the Center. The Panel will in its discretion allow it to be admitted as (a) it deals with material the Respondent raised in the Response which the Complainant had not previously seen; and (b) it makes serious accusations about the Respondent which the Panel considers should be dealt with. This submission is referred to as the “Complainant’s Supplementary Statement”.

4. Factual Background

The Complainant is incorporated in the Netherlands. The Complainant owns Benelux trademark FEEV no 1398856 registered on October 1, 2019 (the “FEEV trademark”).

The Disputed Domain Name was registered by the Respondent on February 22, 2002. At the time of this decision, attempts to view a website at the Dispute Domain Name result in a page displaying the message “Not Authorized to View This Page [CFN #0004]”.

5. Parties’ Contentions

A. Complainant

The Complainant’s case in essence turns on a contractual right it says exists. It states: “On 3 August 2019 the Complainant and Respondent have reached an agreement for the transfer of the ownership of feev.com in consideration of a one-time total payment of 15,000 USD (fifteen thousand United States Dollars), (the “Agreement”). The Agreement was reached unambiguously and without any reservations from any Party”. It says the Respondent has wrongfully reneged on this agreement. The Complainant cites various previous UDRP decisions where a Respondent has consented to a transfer. It says that “To be clear: If so ordered, Complainant remains committed to pay the agreed upon transfer amount of 15,000 USD (fifteen thousand United States Dollars) upon effective transfer of the disputed domain name to Complainant”.

It also says that “Since 2002 Respondent registered the [Disputed Domain Name] in the hope of selling it off for a small fortune” and hence it registered the Disputed Domain Name in bad faith.

The Complainant’s Supplementary Statement says as follows:

“In accordance with section 8 of the Rules I call your attention as Case Manager to Annex 5 and Annex 6 as submitted by Respondent.

Respondent has thereby demonstrated that he has falsely generated email addresses in the names of two representatives of the Complainant.

This concerns the email addresses [name redacted by Panel for privacy]@feev.com and [name redacted by Panel for privacy]@feev.com.

Only Respondent can generate these email addresses and Respondent thereby intentionally misrepresents communications to external parties as if originating from the Complainant. This very serious and requires the Panel’s attention.

This act constitutes ID theft which is a criminal offense.

This act further substantiates the Respondent acting in bad faith as set out in the Complaint.

Please forward this information to the Panelist”.

B. Respondent

The Respondent’s case is in essence that he registered the Disputed Domain Name in 2002 based on his nickname “fee” and his wife’s initial (“v”) as the domain names <fee.com> or <feed.com> (using “fee” with his initial) were already taken. The Respondent says he has used it continually since then although his website has been down in recent years. The Response as a whole is to some extent difficult to follow but given the Panel’s conclusions (below) this does not matter.

So far as the alleged contract is concerned the Respondent’s case seems to be that there is no concluded contract and in any event he was misled that the Complainant was a music start-up business when in fact it is a financial/cryptocurrency business. The Respondent exhibits at annexes 5 and 6 of the Response what he says are two unsolicited emails received at the Disputed Domain Name intended for named individuals at the Complainant from an employment recruitment offering the services of employees for such a venture.

6. Discussion and Findings

To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:

(i) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the 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.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in the FEEV trademark.

The Disputed Domain Name is identical to the FEEV trademark. It is well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar – see for example Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.

It does not matter for the purposes of this element that the Disputed Domain Name was registered before the FEEV trademark existed – the Panel agrees with the consensus approach as explained in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) section 1.1.3:

“1.1.3 While the UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired its rights, such rights must be in existence at the time the complaint is filed.”

Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity under the UDRP. The UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired rights. However, in such circumstances it may be difficult to prove that the domain name was registered in bad faith under the third element of the UDRP. See below as to bad faith issues.

Accordingly the Panel finds that the Disputed Domain Name is identical to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:

(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent has been commonly known by the Disputed Domain Name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

It seems likely to the Panel that (i) above applies. However the Respondent’s evidence about how he has used the Disputed Domain Name since 2002 is rather muddled and difficult to follow. In view of the Panel’s finding below in relation to bad faith, the Panel does not need to resolve this issue.

C. Registered and Used in Bad Faith

The Complainant’s case is entirely misconceived.

The first difficulty the Complainant faces is that the Respondent’s registration of the Disputed Domain Name predates the Complainant’s FEEV trademark and also the existence of the Complainant by many years. See WIPO Overview 3.0, at section 3.8.1:

“3.8.1 Domain names registered before a complainant accrues trademark rights

Subject to scenarios described in 3.8.2 below [which are not relevant here], where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent”.

Although this technically ends the matter, as this element of the Policy requires a finding of both registration and use in bad faith, the Panel also finds that the Respondent has not used the Disputed Domain Name in bad faith. It appears the Respondent uses the Disputed Domain Name for business or personal purposes and there is no evidence that this has been in bad faith.

The Complainant’s further case based on an alleged contract is wholly irrelevant – the Policy is intended to address issues of cybersquatting, not contractual claims – which need to be determined in a court of competent jurisdiction. There are many reasons why this is the case but the present circumstances illustrate one such reason – the Panel has no powers, even if it thought the Complainant’s claim had merit, to ensure or compel the Complainant to comply with its obligation under the alleged contract – namely payment of USD 15,000. Whilst it will be a matter for a court of competent jurisdiction the Panel would add that the Respondent’s arguments that he was told in the relevant email exchange that the Complainant was a music start-up company when it fact it is a crypto-currency/financial services business appear well founded.

The Complainant cites numerous cases where the Respondent has consented to transfer of a domain name. These are wholly irrelevant. They all concern the position where a Respondent in the course of a dispute under the Policy agrees to the panel ordering a transfer. That is completely different from the panel determining the existence and effect of a contract which is in dispute. In any event there is no question of the Respondent having consented to the Panel ordering a transfer – as the Respondent has made abundantly clear.

The Panel would also add there is no evidence to support the Complainant’s allegation that the Respondent registered the Disputed Domain Name “in the hope of selling it off for a small fortune” (not that such conduct in itself necessarily establishes bad faith in any event).

Finally the Panel will deal with the Complainant’s extraordinary allegation that the Respondent’s annexes 5 and 6 show the Respondent has been fabricating email and committing a criminal offence of identity fraud. They show nothing of the kind. The Panel notes that technical means may allow a domain name registrant to set up a service to “catch all” incoming emails. Absent any convincing evidence to the contrary (and none is provided) the Panel sees no reason to doubt these emails are what the Respondent says – incoming emails from a third party recruitment consultant to named individuals at the Complainant, wrongly assuming their email address would be at the Disputed Domain Name. The allegation that the Respondent has fabricated these emails is completely unfounded and should never have been made.

Accordingly the Panel concludes there is no credible evidence to establish bad faith on the part of the Respondent and the Complainant has failed to discharge its burden of proof and has failed to establish that the third condition of paragraph 4(a) of the Policy has been fulfilled.

D. Reverse Domain Name Hijacking

Several circumstances of this case have led the Panel to consider whether the filing of the Complaint constitutes “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name” – see the Rules, paragraph 1, definition of Reverse Domain Name Hijacking (“RDNH”). Paragraph 15(e) of the 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 RDNH, 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. The Rules, paragraph 15(e), call for this analysis even when the Respondent has not expressly requested a finding of abuse – see Timbermate Products Pty Ltd v. Domains by Proxy, LLC / Barry Gork, WIPO Case No. D2013-1603.

In Jazeera Space Channel TV Station v. AJ Publishing aka Aljazeera Publishing, WIPO Case No. D2005-0309, the majority of the three-member panel noted that the onus of proving that a complainant has acted in bad faith is on the respondent, and that mere lack of success of the complaint is not of itself sufficient to constitute RDNH. The majority went on to note that:

“Allegations of reverse domain name hijacking have been upheld in circumstances where a respondent’s use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy (see Goldline International, Inc v. Gold Line, WIPO Case No. D2000-1151). See also Deutsche Welle v. DiamondWare Limited, WIPO Case No. D2000-1202, where an allegation of reverse domain name hijacking was upheld in circumstances where the complainant knew that the respondent used the at-issue domain name as part of a bona fide business, and where the registration date of the at-issue domain name preceded the dates of the complainant’s relevant trademark registrations.”

The three-member panel in Yell Limited v. Ultimate Search, WIPO Case No. D2005-0091, noted that whether a complainant should have appreciated at the outset that its complaint could not succeed will often be an important consideration.

In the view of the Panel this is a Complaint which should never have been launched. The Complainant should have appreciated that establishing registration and use in bad faith in respect of a domain name which had first been registered many years previously was likely to be impossible. The Complainant appears to have ignored any such considerations. It adopted an entirely unwarranted and misconceived approach based on a supposed contractual entitlement which even if it was well founded (which the Panel doubts) should have been brought to a different forum. The Complainant also threatened the Respondent with costs liability if an UDRP complaint was brought when no such liability exists under the UDRP. Finally it then introduced a completely misconceived allegation of criminal conduct against the Respondent which had no factual foundation whatsoever.

Given the relevant facts, the nature of the Policy and the fact that the Complainant was legally represented this was a case which should never have been brought nor should it have been presented in the manner it was. The Panel therefore finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

7. Decision

For the foregoing reasons, the Complaint is denied. The Panel finds the Complaint constitutes an abuse of the administrative proceeding.

Nick J. Gardner
Sole Panelist
Date: December 30, 2019

source: https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2019-2683

Bremer Toto und Lotto’s bid to have Lotto.com under UDRP.com failed

German Company Bremer Toto und Lotto GmbH has official website at lotto-bremen.de – Complainant held Trademark jointly with 16 other Companies – Respondent purchased Domain for millions of dollar – Respondent operating a website since mid-2019 – Respondent provided evidence as to future plans of the Domain Name – Respondent has pending application as to Lottery Business – Complainant proved Trademark reight but failed to prove lack of legitimate interests on the part of Respondent – Three-member panel denied the Complainant

Bremer Toto und Lotto GmbH v. Birrell Nigel, Cavour Ltd. [Case No. D2019-2391]

1. The Parties
The Complainant is Bremer Toto und Lotto GmbH, Germany, represented by CBH Rechtsanwälte, Germany.

The Respondent is Birrell Nigel, Cavour Ltd., Isle of Man, represented by Dentons UKMEA LLP, United Kingdom.

2. The Domain Name and Registrar
The disputed domain name <lotto.com> is registered with EuroDNS S.A. (the “Registrar”).

3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 1, 2019. On October 2, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 4, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 28, 2019. On October 28, 2019, the Respondent sent an email communication to the Center requesting an extension of the Response due date. An automatic extension of the Response due date was granted until November 1, 2019, under paragraph 5(b) of the Rules. The Response was filed with the Center on November 1, 2019.

The Center appointed Christopher J. Pibus, Thomas Hoeren, and Jane Lambert as panelists in this matter on December 10, 2019. 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
There appears to be no dispute that the Complainant is one of 16 lottery companies that jointly own the trademarks listed at paragraph [12] A I of the Complaint, i.e. German trademark registration number 39638296 for LOTTO, registered on August 27, 1997, (“the Trademarks”) though the nature of their shared ownership and the right of the Complainant to bring proceedings on the basis of those marks are not admitted. It also appears to be common ground that the word “lotto” is synonymous with “lottery” in English and several other languages, including German, and that many lottery schemes around the world are simply called “lotto”.

Although the Complainant denies flatly that the Respondent has any rights or legitimate interests in the disputed domain name it acknowledges that he is an important figure in the gambling industry. Indeed, part of the Complainant’s case is that the Respondent, Nigel Birrell, is the Chief Executive Officer of Lottoland Limited which offers online gambling services from Gibraltar, that are unlawful in Germany.

5. Parties’ Contentions

A. Complainant
The Complainant requests the transfer of the disputed domain name on the following grounds:

– The disputed domain name is identical or confusingly similar to the Trademarks of which the Complainant is a joint proprietor.
– The Respondent has no rights or legitimate interests in the disputed domain name.
– The Respondent registered and has used the disputed domain name in bad faith as it is being held in bad faith, see, Telstra Corporation Ltd v Nuclear Marshmallows , WIPO Case No. D2000-0003. Alternatively, it contends that the Respondent intends to use the disputed domain name for online gambling activities that would be unlawful in Germany.

In respect of the first ground, the Complainant says that the trademarks that it shares with the other lottery operators are strong and that they are used not just for gambling but also for payments, authentication and other financial services. As for the third ground, the Complainant points to the activities of Lottoland Limited.

B. Respondent

The Respondent contends that the Complaint fails on all three grounds and should be dismissed. It disputes the Complainant’s title to the Trademarks and its entitlement to bring proceedings under any of them. It adds that the word “lotto” is entirely descriptive. It has already used the disputed domain name for well over a year as the URL for a website directed to consumers in the United States of America (“United States”). It purchased the disputed domain name for USD 2.68 million and has invested heavily in developing a website that will trade lawfully in the United States.

6. Discussion and Findings

The agreement to register the disputed domain name incorporates paragraph 4(a) of the Policy:

“You are required to submit to a mandatory administrative proceeding in the event that a third party (a ‘complainant’) asserts to the applicable Provider, in compliance with the Rules of Procedure, that:-

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith.”

In the administrative proceeding, the complainant must prove that each of these three elements are present.

A. Identical or Confusingly Similar
The Panel is satisfied that the first element is present.

The Complainant has evidenced that it holds rights in the Trademarks. Each of the Trademarks incorporates the word “lotto” either simpliciter or in combination with a stylized shamrock. Nothing could be closer to the disputed domain name than that.

Each of those Trademarks is registered with the German Patent and Trade Mark Office and translations of the entries on the register are annexed to the Complaint. In the case of each registration, the Complainant is listed as a proprietor. That is a “right” within the meaning of paragraph 4(a)(i) of the Policy.

Such right may or may not include the right to bring proceedings without the consent of the other proprietors, but that is beside the point. Paragraph 4(a)(i) of the Policy requires only that the disputed domain name should be identical or confusingly similar to a trade mark in which the Complainant has rights and that is undeniably the case.

B. Rights or Legitimate Interests
The second element is not present.

Section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) acknowledges that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. Consequently, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.

The problem in this instance is that the Complainant has not made a prima facie case that the Respondent lacks rights or legitimate interests. It has flatly denied that the Respondent has any rights or legitimate interests in the disputed domain name but it has not explained why. Had it consulted the Wayback machine at “https://web.archive.org/” it would have found (as this Panel has just done) clear evidence that the Respondent was actually using the disputed domain name in association with an active website as recently as mid-2019.

The Panel also notes that the Respondent has provided tangible evidence relating to its business plans and associated activities undertaken to-date in association with the disputed domain name. The domain name in question has existed for many years, but was only recently acquired by the Respondent for a significant sum (USD 2.68 million) in furtherance of its plan to launch a new online lottery-related business in the United States. The Respondent has provided details of its plans, including certain developmental steps such as the initial investment in the disputed domain name itself, the operation of a short-form website from 2018 to mid-2019, the incorporation of two businesses in New Jersey, United States (including Lotto.com Inc.), and the filing of a lottery license application with the state regulator. These activities took place beginning in October 2017 and continuing into mid-2019. All of these points of evidence support the conclusion that the Respondent has engaged in the preparation of a bona fide offering of services in association with the disputed domain name.

These factors lead the Panel to find that the Complainant has failed to prove the absence of rights and legitimate interests on the part of the Respondent. Accordingly, the Panel finds that the Complainant has not satisfied the requirements under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith
The third element is not present.

Paragraph 4(b) of the Policy lists a number of circumstances which if found to be present shall be evidence of the registration and use of a domain name in bad faith: no evidence has been produced that any of those circumstances applies, nor has any evidence of circumstances that are ejusdem generis the circumstances in paragraph 4(b) of the Policy. The Complainant cannot rely on evidence of passive holding as in the above-referenced Telstra case because the disputed domain name has been put to use. Nor can the Complainant complain that the Respondent’s activities would be unlawful in Germany because they are not directed to Germany. Those activities are not unlawful in the Isle of Man where the Respondent is domiciled or in the United States where it intends to do business. Accordingly, the Complainant has not satisfied the requirements under paragraph 4(a)(iii) of the Policy.

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

Christopher J. Pibus
Presiding Panelist

Thomas Hoeren
Panelist

Jane Lambert
Panelist
Date: December 24, 2019

Thomas-leen.com – Complaint denied as outside the scope of Policy

UDRP # D2019-2481 <thomas-leen.com>

WIPO Case Number: D2019-2481
Domain name(s): thomas-leen.com
Complainant: Mr. Thomas Leen
Respondent: Domain Registry, PeRiQuito Holding
Panelist: Seager, Jane
Decision: Complaint denied

The UDRP was filed over domain name thomas-leen.com by Mr. Thomas Leen on the grounds of the personal name being abused over the domain name. The website has the photograph of the Complainant with the word BULLY written over it. Further, the following text appears below the Complainant’s picture:

Welcome to the Thomas Leen Incompetent Bully (BHP Cybersecurity) Hate Club
Thomas Leen, CISO Cyber Security, BHP. Deakin University, Melbourne, Australia
He will bully anyone in order to get what he wants.
He will threaten to ruin your reputation.
He will throw anyone under the bus to save himself and his interests.
He is insincere, two-faced and will tell you anything in order to buy your compliance.
He surrounds himself with other Indians who he knows will never challenge him, will do what he says.
The only thing bigger than his waist line is his narcissistic ego.
From all the people you’ve screwed over.

There is no doubt that Domain is being used in Bad Faith and no legitimate interests are evident. But before the second and third UDRP conditions are evaluated, it is important for the Complainant to satisfy the first condition as to Trademarks, which are discussed in the WIPO Overview as follows.

As per WIPO Overview 3.0 (c0nsensus view), states under Para 1.5:

1.5.1 Personal names that have been registered as trademarks would provide standing for a complainant to file a UDRP case.

1.5.2 The UDRP does not explicitly provide standing for personal names which are not registered or otherwise protected as trademarks. In situations however where a personal name is being used as a trademark-like identifier in trade or commerce, the complainant may be able to establish unregistered or common law rights in that name for purposes of standing to file a UDRP case where the name in question is used in commerce as a distinctive identifier of the complainant’s goods or services.

Merely having a famous name (such as a businessperson or cultural leader who has not demonstrated use of their personal name in a trademark/source-identifying sense), or making broad unsupported assertions regarding the use of such name in trade or commerce, would not likely demonstrate unregistered or common law rights for purposes of standing to file a UDRP complaint.

But in this matter after Registration of Domain Name in April 2019, the Complainant applied for the Trademark and got the same registered in September 2019, therefore though the first condition has been satisfied, but the Complainant has been dismissed as Domain Name registration date pre-dates the Trademark Registration Date. Further, the Panel noted that questions regarding whether criticism on a respondent’s website is accurate or defamatory are generally considered to fall outside of the scope of the Policy, as they may involve determinations on truth or falsity that cannot be determined in the limited scope of a UDRP proceeding.

The Complete UDRP decision:

Thomas Leen v. Domain Registry, PeRiQuito Holding
Case No. D2019-2481

1. The Parties
The Complainant is Thomas Leen, Australia, represented by Herbert Smith Freehills, Australia.

The Respondent is Domain Registry, PeRiQuito Holding, Sweden.

2. The Domain Name and Registrar
The disputed domain name <thomas-leen.com> is registered with eNom, Inc. (the “Registrar”).

3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 10, 2019. On October 10, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 10, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 18, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 23, 2019.

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 24, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 13, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 15, 2019.

The Center appointed Jane Seager as the sole panelist in this matter on December 4, 2019. 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 is the Chief Information Security Officer of the company BHP – a diversified resources company focused on mining, metals and petroleum.

The Complainant is the owner of Andorran Trademark Registration No. 40469, THOMAS LEEN, registered on September 10, 2019, for use in connection with services in Class 42, namely Internet security, and advisory services on computer software.

The disputed domain name was registered on April 7, 2019. The disputed domain name resolves to a website that displays a photo of the Complainant together with several negative statements about the Complainant (the “Respondent’s website”). The statements on the Respondent’s website relate primarily to the Complainant’s personality and behavior.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name is identical to the Andorran trademark THOMAS LEEN, registered by the Complainant.

The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant asserts that the Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services, nor is the Respondent commonly known by the disputed domain name for the purposes of the Policy. The Complainant claims that the Respondent is not the true owner of the disputed domain name, nor of the website to which it resolves. In support of this claim, the Complainant notes that the website includes a photo of the Complainant which is not available outside the environment of the Complainant’s employer, that the nature of the defamatory content on the Respondent’s website makes it clear that there has been some form of personal connection between the Parties in the past, and that the Complainant has never had any contact with the named Respondent, PeReQuito Holding. The Complainant further submits that the right to criticize does not extend to registering a domain name that is identical or confusingly similar to a third party’s registered trademark, as this may create an impermissible risk of user confusion through impersonation. The Complainant states that there is nothing evident in the disputed domain name itself to indicate that the Respondent’s website is independent of the Complainant. In addition, the Complainant asserts that the content is entirely disparaging and defamatory, rather than constituting any form of genuine criticism.

The Complainant further submits that the disputed domain name was registered and is being used in bad faith. The Complainant asserts that for the purposes of assessment under the third element, the concept of bad faith includes the generally accepted meaning of that expression, and includes concepts such as “intentionally misleading another” and “violating basic standards of honesty or decency”. The Complainant asserts that the Respondent (i.e., the “true owner of the disputed domain name”) clearly knew of the Complainant prior to registering the disputed domain name, as evidenced from the allegedly defamatory content posted about the Complainant on the Respondent’s website. The Complainant asserts that the Respondent’s purpose in registering and using the disputed domain name was to harass, defame, and intimidate the Complainant. The Complainant submits that the Respondent registered the disputed domain name in bad faith with the sole purpose to engage in a personal vendetta against, and to disparage, the Complainant, and to tarnish his reputation.

The Complainant asserts that where a domain name that is used for purposes of criticism or disparagement is identical to a complainant’s trademark, such registration and resulting use is likely to be in bad faith. The Complainant asserts that the Respondent is intentionally misleading others into visiting the Respondent’s website by registering and using a domain name that wholly encompasses the Complainant’s name. The Complainant submits that the inflammatory, defamatory, and disparaging language used to describe the Complainant at the Respondent’s website falls within the “broad ambit” of bad faith. In support of his assertion that the disputed domain name was registered in bad faith, the Complainant makes reference to Adam Milstein v. Benjamin Doherty, NAF Claim No. 1647496, in which the panel found that the disputed domain name <adammilstein.com>, which redirected to a website displaying content that criticized the complainant, was registered in bad faith (where the disputed domain name was registered prior to the registration of the complainant’s trademark). Finally, the Complainant submits that the registration of a domain name using a privacy service or holding company may indicate bad faith in that it makes it more difficult for legitimate rights holders to identify the registrant and enforce their rights. In this regard, the Complainant asserts that the “true owner” has acted in bad faith by concealing his or her identity in order to make it difficult for the Complainant to enforce his legal rights.

The Complainant requests transfer of the disputed domain name.

B. Respondent
The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1. Preliminary Matter: Identity of the Respondent
The Complainant asserts that the Respondent is not the “true owner” of the disputed domain name, and that the disputed domain name is held by a Swedish Internet service provider as the agent of the Respondent.

Paragraph 1 of the Rules provides that a “Respondent means the holder of a domain-name registration against which a complaint is initiated”.

The registrant of the disputed domain name was confirmed by the Registrar as “Domain Registry, PeRiQuito Holding”. Paragraph 13 of the Registrar’s Registration Agreement states:

“AGENTS AND LICENSES: If you are registering a domain name for or on behalf of someone else, you represent that you have the authority to and will bind that person as a principal to all terms and conditions provided herein. If you license the use of a domain name you register to us or a to third party, you remain the domain name holder of record, and remain responsible for all obligations at law and under this Agreement, including but not limited to payment obligations, and providing (and updating, as necessary) both your own full contact information, and accurate technical, administrative, billing and zone contact information adequate to facilitate timely resolution of any problems that arise in connection with the domain name and domain name registration and for ensuring non-infringement of any third party intellectual property rights or other rights.”

The Panel accepts the Complainant’s submission that the disputed domain name is likely held by a person or persons with a connection to the Complainant’s place of work, as evidenced by the content of the Respondent’s website. Nevertheless, the Panel finds that the Complaint has been properly filed against the named Respondent as the registrant of record. The named Respondent has not come forward to disclose the identity of any alleged beneficial owner. In the circumstances, the Panel sees no barrier to proceeding to a decision on the merits naming the Respondent as Domain Registry, PeRiQuito Holding.

6.2. Substantive Matters
In order to prevail in his Complaint, the Complainant must prove, on the balance of probabilities, that he has satisfied the requirements of paragraph 4(a) of the Policy, namely:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar
The Complainant has provided evidence of his ownership of an Andorran trademark registration, THOMAS LEEN.

As noted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1, “[w]here the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for the purposes of standing to file a UDRP case”.

It is also stated at WIPO Overview 3.0, section 1.1.2, “[n]oting in particular the global nature of the Internet and Domain Name System, the jurisdiction(s) where the trademark is valid is not considered relevant to panel assessment under the first element. Also, the goods and/or services for which the mark is registered or used in commerce, the filing/priority date, date of registration, and date of claimed first use, are not considered relevant to the first element test. These factors may however bear on a panel’s further substantive determination under the second and third elements.”

The Panel further notes that personal names that have been registered as trademarks would provide standing for a complainant to file a UDRP case; see WIPO Overview 3.0, section 1.5.1.

The disputed domain name incorporates the Complainant’s THOMAS LEEN trademark in its entirety. The only variation on the Complainant’s trademark is the substitution of a hyphen between the elements “Thomas” and “Leen” making up the Complainant’s trademark. The Panel finds that the presence of a hyphen in the place of a space does not affect the appearance of the disputed domain name vis-à-vis the Complainant’s trademark, noting in particular that a space is not capable of representation in a domain name. The generic Top-Level Domain “.com” is disregarded as a standard registration requirement; see WIPO Overview 3.0, section 1.11.

The Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademark. The Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests
The Panel notes that the Policy requires a complainant to prove all three elements of paragraph 4(a) of the Policy. Failure to prove one element will result in the denial of the complaint. Noting that the Complaint has ultimately failed on the issue of bad faith registration, as set out in detail below, the Panel need not issue a finding under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith
The Complainant’s case under the third element is founded on the notion that the Respondent registered the disputed domain name having knowledge of the Complainant, that the disputed domain name, by nature, deliberately gives the false impression that it is the domain name of the Complainant, and that the Respondent is using the disputed domain name to defame the Complainant and to tarnish his reputation.

The Panel acknowledges that the Respondent clearly had knowledge of the Complainant, as can be inferred from the content of the Respondent’s website. The Panel further acknowledges that the disputed domain name is essentially an exact match with the Complainant’s name, and prior UDRP panels have consistently found that the right to criticize does not necessarily extend to registering or using a domain name identical to a trademark; see WIPO Overview 3.0, section 2.6.2.

Notwithstanding the above, the Complainant is obliged to prove all elements of paragraph 4(a) of the Policy, including registration in bad faith.

As noted above, the date on which a complainant’s rights were accrued, the goods and services for which they were registered, and the jurisdiction in which a complainant has registered its trademark rights will typically not have bearing on a complainant’s standing to file a UDRP Complaint; however, it may impact the outcome of the case as it relates to the second and third elements.

WIPO Overview 3.0, section 3.8.1, states that “[w]here a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent”. That is not to say that a complainant cannot succeed under the Policy where the trademark registration post-dates the registration of a disputed domain name. Rather, as stated in WIPO Overview 3.0, section 3.8.2, “[i]n certain limited circumstances where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trademark rights, panels have been prepared to find that the respondent has acted in bad faith. Such scenarios include registration of a domain name: (i) shortly before or after announcement of a corporate merger, (ii) further to the respondent’s insider knowledge (e.g., a former employee), (iii) further to significant media attention (e.g., in connection with a product launch or prominent event), or (iv) following the complainant’s filing of a trademark application.”

In the present case, the disputed domain name was registered on April 7, 2019. Historic screen captures submitted in evidence by the Complainant would tend to indicate that the Respondent’s website has been active since mid-May 2019. The Complainant’s registered trademark on the other hand was acquired some months later on September 20, 2019.

While the Panel acknowledges that the Complainant has duly registered a trademark sufficient to provide standing for the Complainant to file his case, the Complainant has submitted no evidence to suggest that the Complainant had used his name in such a way that might give rise to a finding of the existence of common law or nascent trademark rights at the time that the Respondent registered the disputed domain name. In fact, the Complainant has provided no information about his position or use of his name as a trademark. The only information about the Complainant’s position is inferable from the services for which the Complainant’s trademark was registered, and, at that, from the Respondent’s website. The Panel is therefore unable to conclude, on the basis of the record before it, that the Complainant’s personal name was used as a trademark-like identifier which consumers associated with the Complainant’s goods or services, at the time the disputed domain name was registered.

The Panel has duly considered the panel’s reasoning in Adam Milstein v. Benjamin Doherty, supra, and finds the Complainant’s reliance on that case to be misguided. The panel in that case applied reasoning that has not gained traction as a consensus view of UDRP panelists; the Complainant in this case would have done well to take note of the caveat in the WIPO Overview that “application of registrant representations in UDRP paragraph 2 in finding so-called ‘retroactive’ bad faith [renewal] registration […] has not been followed in subsequent cases”. In any event, the Panel notes that irrespective of registrant representations undertaken further to paragraph 2 of the Policy, UDRP panels have consistently found that the mere renewal of a domain name registration by the same registrant is insufficient to support a finding of registration in bad faith; see WIPO Overview 3.0, section 3.9.

The Panel recognizes that the Complainant has been put in a highly unfortunate position by the Respondent, and is sympathetic to the Complainant’s position; however, noting the timing of the registration of the Complainant’s trademark and the lack of evidence put forward to support a finding that the Complainant had common law trademark rights at the time that the disputed domain name was registered, it would be inappropriate for the Panel to enter a finding of bad faith registration. See Susan Scheff v. Psyborgue, WIPO Case No. D2008-1177, and cases cited therein. The Panel finds that the Complainant has failed to prove that the disputed domain name was registered in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.

The Panel further notes that questions regarding whether criticism on a respondent’s website is accurate or defamatory are generally considered to fall outside of the scope of the Policy, as they may involve determinations on truth or falsity that cannot be determined in the limited scope of a UDRP proceeding; see Bridgestone Firestone, Inc., Bridgestone/Firestone Research, Inc., and Bridgestone Corporation v. Jack Myers, WIPO Case No. D2000-0190.

The Policy does not preclude the Complainant from seeking recourse against the Respondent in a court of competent jurisdiction, and the Panel’s findings in the present proceeding are without prejudice to any further action brought by the Complainant.

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

Jane Seager
Sole Panelist
Date: December 18, 2019

Source: https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2019-2481

UDRP loss for another Indian Company over Carehealthinsurance.com

India’s largest Insurance Group Religare – Trading under the Brand Name CARE since 2012 – Figurative / Device Trademarks – Religare owns many domain names including <carehealthinsurance.co.in> and <carehealthinsurance.in> registered since August 2018 – The Disputed Domain Name was registered on August 12, 2015 – The Domain Name has been parked with per-per-click (PPC) hyperlinks – Similarity with Trademark upheld – Indian Company services not known outside India – Domain Name not registered in Bad Faith – Complaint dismissed – RDNH not held with concurring opinion!

Religare Health Insurance Company Limited v. Name Administration Inc. / Domain Administrator
Case No. D2019-2073

1. The Parties

The Complainant is Religare Health Insurance Company Limited, India, represented by Saikrishna & Associates, India.

The Respondent is Name Administration Inc., Domain Administrator, Grand Cayman, represented by John Berryhill, Ph.d., Esq., United States of America.

2. The Domain Name and Registrar

The disputed domain name <carehealthinsurance.com> (the “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 August 23, 2019. On August 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 27, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 2, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 6, 2019.

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 September 19, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 9, 2019. On October 8, 2019, the Respondent was granted the automatic four calendar day extension for response under paragraph 5(b) of the Rules. The due date for Response was October 13, 2019. The Response was filed with the Center October 13, 2019.

The Center appointed Willem J. H. Leppink, Harini Narayanswamy, and Richard G. Lyon as panelists in this matter on November 15, 2019. 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

The Complainant is a specialized health insurer offering health insurance services. The Complainant launched its first insurance product in June 2012, under the name “Care”.

The Complainant is the owner of several trademark registrations in India for figurative trademarks containing the word element CARE. This includes, but is not limited to, the Indian trademark (figurative mark) with registration number 2278885, registered on February 7, 2012, for services in class 35, and the Indian trademark (figurative mark) with registration number 2278886, registered on February 7, 2012, for services in class 36. The aforementioned trademarks will hereinafter in singular be referred to together as the “Trademark”.

The Complainant does not own any wordmark registrations consisting of the word “care”.

The Complainant is the owner of various domain names that incorporate “care”, including <carehealthinsurance.co.in>, registered in India in August 2018 and <carehealthinsurance.in>, also registered in India in August 2018.

The Domain Name was registered on August 12, 2015, by the Respondent. The Domain Name resolves to an advertising page containing per-per-click hyperlinks.

5. Parties’ Contentions

A. Complainant
The following is a summary of the Complainant’s contentions.

The Domain Name is confusingly similar to the Trademark. The Domain Name includes the Trademark, to which the descriptive element “health insurance” is added. “Health insurance” enhances the confusion as it is the sector in which the Complainant operates.

The Respondent has no rights or legitimate interests in the Domain Name. The Domain Name was registered three years after the Complainant started using the Trademark. In addition, the Respondent is not making use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services. The Respondent is not commonly known by the Domain Name and does not have a connection to the Trademark.

The Domain Name was registered and is being used in bad faith. The Respondent ought to have been aware of the Complainant and its Trademark. The Respondent is parking the Domain Name without any actual use, thereby causing harm to the Complainant’s business.

B. Respondent
The following is a summary of the response filed by the Respondent.

The Respondent submits that the Complainant has not demonstrated that the Domain Name is identical or confusingly similar to the Trademark. The Complainant is the proprietor of a figurative mark with a stylization of the word “care”. The word “care” in connection with health insurance is not distinctive of the Complainant.

The Respondent is a well-known provider of keyword search advertising services in relation to domain names. Usage of the words “care” and “health insurance” as descriptive keywords is a legitimate use of descriptive words. The words compose the name of generic products for which the Respondent is advertising on the website to which the Domain Name resolves.

The Respondent did not know the Complainant or the Trademark, nor should the Respondent have known the Complainant or the Trademark. The Respondent is established in Grand Cayman, whilst the Complainant is located in India. The Complainant is not well-known in countries other than India. In addition, the Complainant has failed to show any evidence that the Respondent registered and used the Domain Name in bad faith.

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar
The Complainant must demonstrate that it has rights in a trademark or service mark and, if so, the Domain Name must be shown to be identical or confusingly similar to that mark.

The Complainant has sufficiently shown that it has rights in the Trademark.

As set out in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, the first element functions primarily as a standing requirement. The threshold test for confusing similarity between the Domain Name and the Trademark involves a relatively straightforward comparison. The figurative elements of the Trademark are in general disregarded for purposes of assessing identity or confusing similarity under the first element. The existence of such elements would be relevant to the Panel’s assessment of the second and third elements, e.g., in considering possible legitimate trademark co-existence or scenarios where the textual elements correspond to a dictionary term (see section 1.10 of WIPO Overview 3.0).

In light of the foregoing, the Panel finds that the Domain Name is confusingly similar to the Trademark. The Domain Name consists of (the word element of) the Trademark and the words “health insurance”.

In addition, with regard to the suffix “.com” (which indicates that the Domain Name is registered in the “.com” generic Top-Level Domain (“gTLD”)), as it was established in many previous UDRP decisions (see A.P. Møller v. Web Society, WIPO Case No. D2000-0135; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Arab Bank for Investment And Foreign Trade (ARBIFT) v. Mr. Kenn Wagenheim / 07@usa.net, WIPO Case No. D2000-1400; Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447; and Crédit Industriel et Commercial S.A v. Name Privacy, WIPO Case No. D2005-0457), it does not generally affect the analysis under the first element of the Policy for the purpose of determining whether a domain name is identical or confusingly similar; indeed, the suffix is a necessary component of a domain name and does not give any distinctiveness.

For all the foregoing reasons, the Panel is satisfied that the first element of the Policy is met.

B. Rights or Legitimate Interests
The Panel need not make a finding in relation to the second element of the Policy in view of its findings concerning bad faith under the third element, as set out below.

C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the Domain Name has been both registered and used in bad faith by the Respondent.

The Panel finds that the Complainant has not proven that the Respondent registered the Domain Name in bad faith.

In order to establish that the Domain Name has been registered in bad faith, the Complainant must show that the Respondent was aware, should have been aware or ought to have been aware of the Complainant and its Trademark (see for instance uwe GMbH v. Telepathy, Inc, WIPO Case No. D2007-0261).

The Complainant could have made its case, if the Complainant could have e.g., substantiated that there would not have been any plausible explanation of why the Respondent had registered the Domain Name. If e.g., the Domain Name would have consisted of a coined word such plausible explanation for why the Respondent ought to have been aware, could have been acceptable to the Panel. However, the Domain Name consists of the individual dictionary terms “care”, “health”, and “insurance”, that also in their combination could normally be descriptive, despite the somewhat odd juxtaposition, being that “healthcareinsurance” would be a more logical order. Especially such uncommon juxtaposition in combination with extensive use, could under certain circumstances lead to a valid trademark overcoming the descriptiveness of this combination of dictionary terms. The Panel notes that despite the fact that the case file shows many occurrences of a combination of these three word elements, the Complainant seems (at least on the evidence before the Panel) to be the only party making use of these three elements in this specific order, i.e., “Care Health Insurance”. It should be noted that the Complainant cannot rely on specific trademark rights in relation to that combination of three elements, namely the Complainant’s mark plus two dictionary terms.

Complainant has asserted some rights in the (figurative) Trademark. Whether such rights (in India) would grant protection for also the word element “care” does not have to be assessed in light of the following considerations.

The Complainant has submitted evidence on the notoriety in India of the Trademark (the figurative CARE trademark) and the Complainant’s activities in India, but has not submitted any evidence proving that the Trademark and the Complainant’s activities are well-known anywhere else in the world. In addition, and notwithstanding the global nature of the Internet, there has not been any evidence put forward or other substantiation, as to why the Respondent would have any knowledge about India or any connection with India, in particular in relation to health insurance, which could otherwise lead to proof or the beginning of proof that the Respondent was aware, should have been aware, or ought to have been aware of the Complainant or its Trademark. The fact that the Domain Name resolved to a pay-per-click website showing competitors of the Complainant offering health insurance, does not alter this assessment, as the terms “health” and “insurance” are included in the Domain Name. From jurisdictions other than India, Internet users are confronted with other offerings of health insurance. Therefore the pay-per-click website to which the Domain Name resolves does not provide any evidence of any specific targeting related to the Complainant.

There is an obvious resemblance between the way the Complainant uses its name “Care Health Insurance”, in the uncommon juxtaposition, and the Domain Name, but the Complainant has simply not substantiated with evidence that the Respondent registered the Domain Name because of the existence of the Complainant and/or the Trademark.

For these reasons, the record in this case does not establish that the Domain Name was registered in bad faith. For this reason the Panel finds it unnecessary to make an assessment of the use in bad faith as both registration and use are required to satisfy the third element.

Accordingly, the Complainant cannot establish the third requirement under the Policy.

7. Reverse Domain Name Hijacking
The Panel has carefully assessed whether the Complaint would constitute Reverse Domain Name Hijacking (RDNH).

The majority of the Panel has come to the conclusion that it does not see sufficient ground to accept that this Complaint is brought in bad faith and that this Complaint would constitute an abuse of the administrative proceeding.

In the view of the majority of the Panel a finding of a RDNH would require that the Complainant knew or in all reasonableness should have known that the Respondent had registered and used the Domain Name in good faith and that the Complainant would have, nonetheless, filed the Complaint.

As considered under 6.C, an obvious resemblance exists between the dictionary terms “healthcare” and “insurance” comprising the Domain Name, and the way the Complainant uses its name “Care Health Insurance”, i.e., a somewhat uncommon juxtaposition or “rearrangement” of a series of dictionary terms, but the Complainant has not substantiated with evidence that the Respondent registered the Domain Name because of the existence of the Complainant and/or such Trademark “rearranging” as it were a group of dictionary terms.

For the majority of the Panel, it is understandable that Complainant based in India, given this resemblance and not being familiar at the time of filing the Complaint whether there was any connection between the Respondent and India, decided to file the Complaint.

The fact that the Complainant has not been able to prove registration in bad faith, does not necessarily mean that the Respondent has registered the Domain Name in good faith.

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

Willem J. H. Leppink
Presiding Panelist

Harini Narayanswamy
Panelist

Richard G. Lyon
Panelist (Concurring)
Date: November 29, 2019

CONCURRING OPINION
I join the Panel’s decision denying the Complaint and all of its opinion except section 7. I write separately to note my view that under longstanding Policy precedent the decision should include a finding that the Complaint was brought in bad faith and constitutes an abuse of this administrative proceeding. See Rules, paragraph 15(e). The following represents my views alone; my colleagues do not believe the Compliant was made in abuse of the Policy or brought in bad faith.

A. Standard for a Finding of Abuse
The three-member panel in Tarheel Take-Out, LLC v. Versimedia, Inc., WIPO Case No. D2012-1668, held: “Ordinarily if the face of the complaint itself demonstrates a settled reason why the complaint must be denied, a panel may make a finding of RDNH. See Liquid Nutrition Inc. v. liquidnutrition.com/Vertical Axis Inc., WIPO Case No. D2007-1598.” A different three-member panel finding RDNH in Orient Express Travel Group Pty Ltd v. Mookstar Media Pty Ltd (ACN 083 167 293), WIPO Case No. DAU2015-0004, held: “In the absence of any evidence that the Respondent was targeting the Complainant or had any awareness of the Complainant, the Complainant should have been aware that the Respondent’s registration and use of the Domain Name could not, under any fair interpretation of the facts, constitute bad faith registration or use”. The WIPO Overview 3.0, section 4.16, lists among the reasons panels have made a finding of abuse “facts which demonstrate that the complainant clearly ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint, including relevant facts on the website at the disputed domain name or readily available public sources such as the WhoIs database” and “unreasonably ignoring established Policy precedent notably as captured in this WIPO Overview – except in limited circumstances which prima facie justify advancing an alternative legal argument.”

Under any of these standards the filing of the Complaint in this case warrants a finding of abuse. This Complaint is baseless and the Complainant’s professional representative should have known it.

My colleagues appear to endorse these standards, see Panel opinion, p. 5, 1 but excuse the Complainant or its representative because the”Complainant based in India, given this resemblance and not being familiar at the time of filing the Complaint whether there was any connection between the Respondent and India, decided to file the Complaint.” The record in this case and the Rules lend no support to that view.

B. The Complaint’s Shortcomings
The trademark upon which the complaint is based is a common word in the English language, a word moreover that is frequently used around the world in the trade names of insurance companies and insurance products. “Care” is not a common word, such as “apple” or “orange”, that has taken on distinctiveness in a field unrelated to its everyday meaning. The Complainant makes no allegation that this word has a special meaning in a language other than English.

I agree with the Panel that the Complainant’s evidence suffices to establish rights in a mark as required by paragraph 4(a)(i) of the Policy. As the Panel notes [pp. 5, 7] that is a low bar, see WIPO Overview 3.0, section 1.1, and it is an elemental Policy principle that rights in a mark, standing alone, carry little weight under the other two clauses of paragraph 4(a) [id., section 1.8]. Long-settled Policy precedent includes principles that use of a common word in the dictionary sense, as the Respondent has done, can be legitimate and bona fide [id. section 2.10] and that bad faith requires proof of a respondent’s targeting the complainant or its mark [id. section 3.1.4]. It is a fundamental underpinning of the Policy that all allegations in a pleading must be proven, not simply alleged. [id., section 4.3; see also Policy, paragraph 4(a); Rules, paragraph 3(b)(xv)].

The Complaint before the Panel contains no allegation, let alone proof, addressing either of the first two of these matters, and it includes no evidence at all to support the allegations under paragraphs 4(a)(ii) and 4(a)(iii). The Complainant’s entire case under paragraphs 4(a)(ii) and 4(a)(iii) consists of citations to cases, many of them default cases and all involving distinctive marks, and a bare allegation, unsupported by any evidence, that the Respondent knew or should have known of the Complainant or its mark. The Complaint may be fairly summarized as: “I have a mark, you don’t, pay-per-click is involved, and therefore I’m entitled to your domain.” The Complaint thus fails on its face and would have failed in the absence of a response.

The Panel majority is correct that the Complainant was “not . . . familiar at the time of filing the Complaint whether there was any connection between the Respondent and India.” The Complaint [paragraph 7] affirmatively pleads the contrary, identifying the Respondent as located in the Cayman Islands, a jurisdiction far from India. There is no allegation and no proof as to why the Respondent or any other Cayman Islander should have known of an Indian insurance company or its descriptive trademark, and no allegation or proof of facts from which the Panel might infer the Respondent’s actual knowledge or a reason to be aware of either. Given these undeniable facts, plus the utter lack of prefiling investigation discussed below, I fail to see how the mere possibility of a lucky hit – finding a hidden Indian respondent – justifies the filing of this Complaint.

C. Certification of the Complaint
The filing of such a complaint, especially by a professional representative, mocks the certification required by paragraph 3(b)(xiii) of the Rules, that “Complainant certifies that the information contained in this Complaint is to the best of Complainant’s knowledge complete and accurate, that this Complaint is not being presented for any improper purpose, such as to harass, and that the assertions in this Complaint are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.” This by itself is yet another reason justifying a finding of abuse. That certification requires at least minimal due diligence into both the factual background justifying [or not] charges of illegitimate use and bad faith and into basic Policy precedent on matters pertinent to such facts. A quick Internet search and a careful reading of the WIPO Overview 3.0 would have shown the Complainant or its representative that there was no case here. If the Rule is to be more than the rote recital it is in the Complaint, I believe the Rule requires that at the very least.

D. Conclusion
I would include in the Panel’s decision that the Complaint was brought in bad faith and constitutes an abuse of this administrative proceeding.

Richard G. Lyon
Panelist [concurring]
Date: November 29, 2019

1 “[A] finding of a RDNH would require that the Complainant knew or in all reasonableness should have known that the Respondent had registered and used the Domain Name in good faith and that the Complainant would have, nonetheless, filed the Complaint.”

https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2019-2073