Decision

Riskmethods GmbH Germany, Respondent is LEVEL2 LLC and Lever10 Inc. United States, Represented by CyLaw Solutions India – Complainant established in 2013 in Munich Germany – Complainant provides specialized supply chain risk management services based on a software as a service solution – First Respondent sold domain in five figures to second Respondent in Dec 2017, the date referred as new Registration in terms of UDRP Policy and WIPO Overview – Respondent owned more generic domain names – Complainant device mark ‘Risk Methods’ disclaimed in USA for words ‘RISK METHODS’ – The website was put to legitimate use but carried AD of Complainant’s Competitor – The Domain Name upheld as being used legitimately as in US where Respondent carries on business, Complainant could not prove common law rights in the Trademark while words ‘RISK METHODS’ were disclaimed by USPTO, which is otherwise a generic term – Complaint Denied. 

ADMINISTRATIVE PANEL DECISION
riskmethods GmbH v. LEVEL2 LLC / Lever 10 Inc.
Case No. D2019-0286

1. The Parties

The Complainant is riskmethods GmbH of Munich, Germany, represented by SSW Schneider Schiffer Weihermüller, Germany.

The Respondent is LEVEL2 LLC of Los Angeles, California, United States of America (“United States”), internally represented (“First Respondent”) and Lever10 Inc., of Las Vegas, Nevada, United States (“Second Respondent”), represented by CyLaw Solutions, India.

2. The Domain Name and Registrar

The disputed domain name <riskmethods.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 6, 2019. On February 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 6, 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 February 21, 2019. Later that day, the Center received email communications from the respective Respondents. The Complainant submitted a Supplemental Filing on March 1, 2019.

In accordance with the Rules, paragraph 5, the due date for Response was March 13, 2019. Upon request of the Second Respondent, the due date for Response was automatically extended to March 17, 2019, in accordance with the Rules, paragraph 17. The Response was filed with the Center on March 17, 2019.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on March 28, 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 was established in Germany in 2013. It provides specialised supply chain risk management services based on a software as a service solution. According to the Complaint, it operates globally with offices in Poland and the United States as well as Germany. Some of its clients include companies like Bosch, Huawei, Leica, Nufarm and Telekom.

It has received recognition for its innovative services from a number of publications and organisations including The FinTech 50 2018, Spend Matters Almanac: 50 to Know, Supply & Demand Chain Executive: 100 top Supply Chain Transformations, the Federal Association of Materials Administration, Procurement and Logistics in Austria, Explore WMS: Top Supply Chain Startups 2017 and Pros To Know, 2015 – 2017.

The Complainant has a number of registered trademarks for the expression RISKMETHODS and segmented ball device (the Trademark):

– German Registered Trademark No. 302013010306 registered on January 4, 2013 in respect of a range of services in International Classes 35, 36 and 42 namely:

“Class 35: Advertising; business management; company administration; office work, class 36: Insurance; financial affairs; monetary affairs; real estate affairs; class 42: Scientific and technological services and research and related design services; industrial analysis and research services; design and development of computer hardware and software”

– European Union Trademark (EUTM) No. 012657375 registered on June 3, 2014 in respect of a range of services in International Classes 35, 36 and 42 namely:

“Class 35: Business analysis, research and information services; Commercial trading and consumer information services; Business assistance, management and administrative services; Advertising, marketing and promotional services; Business consultancy and advisory services; class 36: Provision of prepaid cards and tokens; Safe deposit services; Financial and monetary services, and banking; Valuation services; Fundraising and sponsorship; Real estate services; Underwriting services; Pawnbrokerage and class 42: Design services; IT services; Testing, authentication and quality control; Science and technology services; Developing computer software”

– United States Registered Trademark No. 5,532,243, which was filed on October 8, 2016 and registered on August 7, 2018 in respect of development of computer software in International Class 42;

– International Registration No. 1326486, which was registered on October 8, 2016 in respect of services in International Class 42; and

– Australian Registered Trademark No. 1818844 registered from October 8, 2016 in respect of development of computer software in International Class 42.

While the International Registration asserts that the words in the trademark have no meaning, the United States Registration includes a disclaimer:
”No claim is made to the exclusive right to use ‘RISK METHODS’ apart from the mark as shown”.

The disputed domain name was first registered on February 24, 2011, apparently by the First Respondent. It appears that the First Respondent is in the business of reselling domain names and, while the First Respondent held it, the disputed domain name apparently lay dormant.

According to communications received from both Respondents and the Response, the First Respondent sold the disputed domain name to the Second Respondent on December 27, 2017 for what the Second Respondent wishes to be described coyly as “a premium price”.

The corporate entity comprising the Second Respondent was founded in 2009. Mr. Righter is its Chief Scientist and President. According to the Response, the Second Respondent provides science based business campaigns applying mathematics and data architecture applied to global business programs for high-growth products and services.

The Second Respondent says it purchased the disputed domain name because it is a common term and with the intention of using it for a new financial risk solution to be launched in 2019/2020. Pending that launch, the disputed domain name has resolved to a website which provides “some basic information as to risk methods in the context of Risk Management and ISO 31000”. The website has also included at least one advertisement by Resilinc, which is a competitor of the Complainant in the field of providing supply chain risk management solutions involving the use of big data.

The Second Respondent, or Mr. Righter, also holds numerous other domain names which it says are generic or descriptive names related to its activities. These include <math-labs.net>, <ai-driven-bookings.com>, <decision-quality-platform.com>, <dynamic-performance-assurance.com>, <canada-vc-fund.com>, <expertise-marketing.com>, <network-layer-2.com> and <imobileinternet.com>.

Following the “sale” of the disputed domain name by the First Respondent to the Second Respondent, the WhoIs details were not updated to reflect the change of ownership. The Registrar promoted the disputed domain name for sale. The Complainant thought it had negotiated the purchase of the disputed domain name through the Registrar. In August 2018, however, after agreement on a price in excess of EUR 25,000 appeared to have been reached, the Registrar withdrew from the transaction informing the Complainant that the disputed domain name had been sold already in December 2017.

5. Discussion and Findings

The Panel notes that, while the First Respondent is formally recorded in the WhoIs record as the registrant, both the First Respondent and the Second Respondent acknowledge that the Second Respondent is in fact the person controlling the registration and use of the disputed domain name. In any event, there is no dispute between them that the First Respondent is formally holding the disputed domain name on behalf of the Second Respondent. Accordingly, the application of the Policy in the present circumstances falls to be determined on the basis of the Second Respondent’s rights and interests. Except where it is necessary to distinguish between the roles of the First and Second Respondent, therefore, the Panel will simply refer to them collectively as “the Respondent”.

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:

(i) the disputed 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 disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.

Admission of the Complainant’s unsolicited supplemental filing is in the Panel’s discretion. See e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.6. In the present case, the supplemental filing addresses issues arising from the disclosure after the Complaint was filed of the Second Respondent as the purchaser of the disputed domain name. These were not matters that the Complainant was able to address beforehand. The Panel therefore admits the supplemental filing into the record.

A. Identical or Confusingly Similar

The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.

There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.

The Complainant has proven ownership of the registered trademarks identified in Section 4 above for the mark RISKMETHODS and segmented ball device.

The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top Level Domain (gTLD) component as a functional aspect of the domain name system. See e.g. WIPO Overview 3.0, sections 1.7 and 1.11. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.

As device elements cannot be represented in domain names, the usual course is to disregard such elements and make the comparison on the basis of the textual elements only. See WIPO Overview 3.0, section 1.10. As the Respondent points out, however, exclusive use over the textual element alone has been disclaimed in the United States registration. As explained in WIPO Overview 3.0, section 1.10, therefore, panels do not usually include disclaimed elements in the comparison.

The disclaimer affects only the registration in the United States. No disclaimer has been given in respect of the other registrations.

The Respondent further contends the disputed domain name consists of two ordinary English words which, when combined in this way, have a clearly recognised meaning.

The Panel accepts that “risk methods” is an expression in ordinary English usage. Whether it is descriptive in any particular context, however, depends on the context it is being used in. “North Pole” for example is a geographic place. Its use in relation to bananas, however, would hardly be descriptive and so it could arguably serve as an identifier of trade source for such products. Consistently with usual practice under the Policy, therefore, the Panel considers it is preferable to consider issues related to the scope of the trademark in the more nuanced analysis required by the second and third elements of the Policy.

Disregarding the “.com” gTLD, the disputed domain name is identical to the textual element of the Complainant’s German and Australian Trademarks and also the EUTM.

Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical with the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a 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.

These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., section 2.1 of the WIPO Overview 3.0.

It is not disputed between the parties that the Complainant has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it. The disputed domain name is plainly not derived from the Respondent’s name and the Respondent does not claim any trademark rights in the disputed domain name.

As already noted, however, the Respondent says it acquired the disputed domain name in good faith because it was a common term with an intention of using it in a yet to be launched financial risk solution based on the use of complex algorithms and maths methods. The Respondent expressly denies knowledge of the Complainant.

The Respondent does not provide any objective evidence to corroborate its claims that steps to launch the claimed business and an associated website are in preparation. This is usually a requirement to make out the defence under paragraph 4(c)(i). See WIPO Overview 3.0, section 2.2.

Moreover, the Complainant points out that the website to which the disputed domain name has resolved after the Second Respondent became the holder includes an advertisement for Resilinc, a business competing with the Complainant. The Panel notes that the Resilinc advertisement is the only such advertisement on the Respondent’s website.

The Respondent’s explanation of this is less than frank. In response to an email complaint before the Complaint was filed, Mr. Righter claimed that the Respondent had sold “a bundle of network adverts to an inventory team”. In its Response, however, the Respondent says its employees reached out and offered advertising options to the various companies whose publications had been linked on the webpage to which the disputed domain name resolved from January 2018. According to the Respondent, Resilinc just happened to be the only business which took up the option. The Respondent does not address, however, the fact that Mr. Righter in addition to being the Chief Scientist and President of the Respondent is, or was during the period from around July 2017 to at least October 2018 the interim Chief Marketing Officer of Resilinc, as evidenced by the numerous “posts by grover” on that company’s website in that period and his LinkedIn profile.

The Panel notes that, at the time this decision is being prepared, the domain name <resilinc.com> resolves to a parking page at which it is offered for sale. The registrar for <resilinc.com> is the Registrar and the same privacy service is used as the WhoIs contacts for the disputed domain name (prior to the filing of this dispute).

The Panel therefore has grave reservations about the explanation for the advertisement and motivations of the Respondent. In most circumstances, those reservations would lead the Panel to reject the purported claim of rights or legitimate interests.

In the present case, however, the term “risk methods” is clearly descriptive and used for a wide range of analytic methods. The Respondent’s activities, or many of them, as disclosed on its website appear to encompass the application of risk analysis methods as part of its services. The Respondent also has a range of “descriptive” domain name registrations. The dates on which the Respondent obtained those registrations is not clear. Most significantly, the Respondent is based in and appears (so far as the evidence goes) to operate largely in the United States.

That is particularly important in the present case as the Complainant does not have, or has not proven, any trademark rights in the expression “risk methods” in the United States. The expression is part of the United States Registered Trademark. However, rights over the exclusive use of “risk methods” are expressly disclaimed. Moreover, the Complainant has not provided sufficient evidence on which the Panel could make a finding of common law rights in the expression. See WIPO Overview 3.0, section 1.3.

In these circumstances and with considerable reservations, the Panel concludes that the Complainant has not been able to establish the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has not established the second requirement under the Policy and the Complaint must fail.

C. Registered and Used in Bad Faith and Reverse Domain Name Hijacking

As the Complaint must fail, no good purpose would be served by considering the third requirement under the Policy.

The Respondent, however, has sought a ruling that the Complainant has engaged in reverse domain name hijacking.

The Panel rejects that claim out of hand.

For one thing, the Second Respondent failed to update the WhoIs records after its purchase of the disputed domain name so that, when the Complaint was filed, the disputed domain name was registered in the name of the First Respondent, a domain name broker.

For another thing, the Second Respondent has succeeded on a narrow basis in circumstances where the Complainant does have relevant trademark registrations in some parts of the world which are not subject to express disclaimers.

6. Decision

For the foregoing reasons, the Complaint is denied.

Warwick A. Rothnie
Sole Panelist
Date: April 10, 2019

Huge win for a US Domainer, he was able to prove his rights to sell the Domain Name. The action was brought by German based Digel Aktiengesellschaft after negotiation between the parties failed as the Respondent had demanded $29500 for the sale of domain name.  The matter was defended by Ankur Raheja of CyLaw Solutions with strong evidence as quoted by Panelist – “The Complainant has not made out a prima facie case that the respondent lacks rights or legitimate interests. But, even if it had, the Respondent’s evidence is sufficient to rebut any burden of production on the Complainant’s part.”

ADMINISTRATIVE PANEL DECISION
Digel Aktiengesellschaft v. Vinay Shan
Case No. D2018-1328

1. The Parties

The Complainant is Digel Aktiengesellschaft of Nagold, Germany, represented by Witte, Weller & Partner, Germany.

The Respondent is Vinay Shan of Gurgaon, India, represented by Ankur Raheja of Cylaw Solutions, India. 

2. The Domain Name and Registrar

The disputed domain name <digel.com> is registered with BigRock Solutions Pvt Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2018. On June 14, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 15, 2018, 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 June 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 8, 2018. On June 26, 2018, the Respondent requested the automatic four-day extension of the deadline to file a Response under paragraph 5(b) of the Rules. The Center granted the requested extension and confirmed that the new deadline for Response was July 12, 2018. The Response was filed with the Center on July 12, 2018.

The Center appointed Antony Gold as the sole panelist in this matter on July 26, 2018. 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 produces high-quality menswear. It was founded in 1939 in Nagold, Germany and now has about 300 employees.

The Complainant owns a number of trade mark registrations for DIGEL in various classes relevant to its activities including class 25 (clothing) and class 18 (leather bags, wallets and purses). Its registrations include, by way of example only, European Union Trade Mark registration no. 000043885 for DIGEL in class 25, registered on June 19, 1998. The Complainant also owns a domain name, <digel.de>, which resolves to a website promoting its products.

Prior to 2006, the Complainant’s international and national trade mark registrations covered many countries in Europe as well as, amongst other countries, China, the United Arab Emirates, the Russian Federation, Egypt and Ukraine. It obtained a trade mark registration for DIGEL in the United States of America (“USA”), as part of an international registration, in September 2014 and a trade mark registration in Canada in April 2017.

The disputed domain name was registered on July 11, 2006. It resolves to a website offering it for sale. Between March and April 2018 negotiations for the purchase of the disputed domain name took place between an Internet service provider, which was acting on behalf of an unnamed party (this being the Complainant) and a registrar acting on behalf of the Respondent. The Respondent sought USD 29,000 for the disputed domain name. However, the most the Complainant was willing to pay was USD 12,000 and, accordingly, the parties did not reach agreement.

5. Parties’ Contentions

A. Complainant

The Complainant says that it was founded in 1939 and that “Digel” has been used as its firm name since at least 1941. Its DIGEL trade mark is now in use in more than 40 countries and its Digel products are available in more than 3,000 shops. It has a portfolio of twelve DIGEL trade marks, details of which have been provided as part of the Complaint. The disputed domain name is therefore identical to a trade mark in which it has rights.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. There is no evidence, before any notice to the Respondent of the dispute, of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name, or a name corresponding to it, in connection with a bona fide offering of goods and services. To the best of the Complainant’s knowledge, the Respondent does not own any trade mark registrations or trade mark applications or other rights in DIGEL. Furthermore, to the Complainant’s knowledge, the Respondent has not been commonly known by the disputed domain name.

Lastly, the Complainant says that the disputed domain name was registered and is being used in bad faith. The disputed domain name was registered or acquired primarily for the purpose of selling, renting or otherwise transferring the registration to the Complainant or to a competitor of the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name. On March 2, 2018 the Complainant’s representative sent an email expressing interest in the disputed domain name and offering to pay a reasonable price for it. The Respondent’s representative replied indicating that the Respondent had paid a lot for the disputed domain name and the price would have to be well into five figures. The negotiations between the parties became deadlocked and no agreement was reached. Presently, the disputed domain name is offered for sale for a purchase price of EUR 47,169. This sum far exceeds the Respondent’s out-of-pocket costs directly related to the disputed domain name.

B. Respondent

The Respondent says that he works for a company based in the USA helping with the monetization of domain names. It is that company, Level2 LLC, which owns the disputed domain name. The Respondent was temporarily shown as the registrant and, due to an administrative error, the WhoIs details were not changed back to show Level2 LLC as the registrant.

The Respondent say that, since 2003, it has registered hundreds of common word domain names for investment and development and that speculating in domain names is a lawful business model.

A sworn declaration from the owner of Level2 LLC, Derek Hof, has been appended to the Response. Mr. Hof says that he registered the disputed domain name in 2006 under the name of his (then) company, W7 Media because “Digel” was the last name of many individuals around the world and the disputed domain name had inherent value for this reason. Mr. Hof says that he did not register the disputed domain name with the Complainant’s trade mark in mind and that he had no knowledge of the Complainant, its web site or trade mark as at the date of registration. Moreover, the Respondent has registered many other domain names which correspond to personal last names; this establishes that the disputed domain name was not registered by the Respondent with another party’s trade mark in mind.

The disputed domain name was registered in 2006, almost 10 years before the Complainant’s trade mark was registered in the USA or Canada, and it is therefore unsurprising that the Respondent had not encountered it. Moreover, the Complainant has not produced any evidence to substantiate its claim of reputation in jurisdictions around the world. Whilst, as at 2006, the Complainant may have been known in Germany, there is no evidence to show that it was known in the USA or Canada at that time. In particular, the Complainant has not produced any evidence of the value of its sales, before or after 2006, nor any details of its advertising spend nor any information concerning the extent of use of its trade mark.

To the extent that the Complainant has rights in DIGEL, such rights are plainly non-exclusive. “Digel” is a common last name for many individuals. For example, Facebook shows several hundred individuals whose last name is Digel. There is also a liquid called DI-GEL and there are a number of businesses around the world who use DIGEL as their brand name. In addition, <digel.in>, <digel.net> and <digel.org> have each been registered by businesses or individuals, as has <digel.it>. DIGEL has been registered as a domain name by third parties in approximately 40 different generic Top-Level Domains (“gTLDs”). Furthermore, DIGEL had been registered by another party as a trade mark in the USA and Canada, prior to the Complainant’s application for marks in those countries in 2015.

Conversely, the Complainant has not attempted to register <digel.us> and <digel.ca> has been registered by another party but does not resolve to an active website.

In considering whether the Respondent should be found to have rights or a legitimate interest in the disputed domain name, decisions under the Policy, such as Virgin Enterprises Limited v. Domain Admin/This Domain is for Sale, Hugedomains.co, WIPO Case No. D2017-1961, establish that the business of registering domain names for the purposes of sale can be legitimate and is not in breach of the Policy so long as it does not encroach on third party trade mark rights. The Complainant has not submitted any evidence that the Respondent has engaged in registering domain names which take advantage of the Complainant’s or third parties’ trade mark rights. In Deep Focus Inc. v. Doman Admin, Abstract Holdings International LTD, WIPO Case No. D2018-0518, the panel held that, if a party legitimately registered a domain name comprising commonplace or dictionary elements, without intent to target the trade mark of an existing trade mark owner, their registration and offer for sale can comprise a bona fide offering of goods and services for the purpose of paragraph 4(c)(i) of the Policy. See also Fresenius Kabi S.A. v. Domain Manager, EWEB Development, Inc., WIPO Case No. D2018-0491.

The fact that the Respondent responded to the Complainant’s enquiry to purchase the disputed domain name is not improper and does not make its use of it illegitimate.

Lastly, the Respondent says that the disputed domain name has not been registered or used in bad faith. The fact that the Respondent registered the disputed domain name approximately ten years before the Complainant registered its trade mark in the USA and Canada means that it cannot be said to have registered it in order to sell it to the Complainant. If a domain name is registered before a complainant’s trade mark rights accrue, panels will not normally find bad faith on the part of a respondent. See Insight Energy Ventures LLC v. Alois Muehlberger, L.M.Berger Co. Ltd, WIPO Case No. D2016-2010, where the complainant provided no evidence that the respondent was, or should have been, aware of the complainant at the time it registered the domain name and accordingly there was no finding of bad faith.

The fact that the Respondent sought to sell the disputed domain name for a sum in excess of its out of pocket costs is not in itself, sufficient to find that the domain name was registered in bad faith; see Information Tools Limited v. Future Media Architects, Inc., WIPO Case No. D2017-2178. Furthermore, in the absence of bad faith, seeking a high price is not inherently objectionable; see Informa Business Information, Inc. v. Privacydotlink Customer 640040 / Domain Manager, Web D.G. Ltd., WIPO Case No. D2017-1756.

Finally, the Respondent asks the Panel to issue a finding of Reverse Domain Name Hijacking (“RDNH”). The Complainant’s delay in taking action against the Respondent in the 12 years since the disputed domain name was registered raises the inference that the Complainant did not truly believe that the disputed domain name was registered or used in bad faith. There is no basis for the Complainant’s claim and the Complainant, through its representatives, should have known that. Any amount of due diligence would have shown that the Complainant could not prove two of the three requirements. This is a “Plan B” Complaint, intended to deprive the Respondent of a valuable domain name, the Complainant having failed to acquire it in the market. Complaints of this type are considered by panels to have been brought in bad faith; see TOBAM v. M. Thestrup / Best Identity, WIPO Case No. D2016-1990.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint:

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

(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 Complainant has produced a schedule containing full details of twelve trade marks it owns in a number of jurisdictions for the word DIGEL, including European Union Trade Mark registration No. 000043885 for DIGEL, details of which are provided above.

For the purpose of satisfying paragraph 4(a)(i) of the Policy, it is not necessary for the Complainant’s trade mark to predate the registration of the disputed domain name (albeit, the mark cited above does so). As explained at section 1.1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); “The fact that a domain name may have been registered before a complainant has acquired trademark rights does not by itself preclude a complainant’s standing to file a UDRP case, nor a panel’s finding of identity or confusing similarity under the first element”. Accordingly, the fact that the trade marks of the Complainant which the Respondent considers to be more material, postdate the registration of the disputed domain name is not relevant for this element of the Policy.

When assessing identicality or similarity, the gTLD, that is “.com” in the case of the disputed domain name, is not taken into account as it is a technical requirement of registration.

The Panel accordingly finds that the disputed domain name is identical to a trade mark in which the Complainant has rights.

B. Rights or Legitimate Interests

Section 2.1 of the WIPO Overview 3.0 explains that; “While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized 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. As such, 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”.

Paragraph 4(b) of the Policy sets out circumstances which, without limitation, if found by a panel to be present, shall demonstrate a respondent’s rights or legitimate interests to a domain name. The circumstance set out in paragraph 4(c)(i), on which the Respondent relies, is if a respondent has, before any notice to it of the dispute, used, or made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.

The position of companies who register large numbers of domain names which are intended to comprise only generic or descriptive words, but whose registrations have also encompassed a domain name which is identical or confusingly similar to a complainant’s trade mark, has been considered in a number of decisions under the Policy. The points of note are as follows.

First, as the Respondent has said, panels have consistently found that the registration of large numbers of domain names for the purpose of offering them for sale to third parties is not an inherently objectionable activity under the Policy (subject to the caveat below) and is capable of comprising a bona fide offering of goods and services. See, for example, Virgin Enterprises Limited v. Domain Admin/This Domain is for Sale, Hugedomains.com, WIPO Case No. D2017-1961; “The Respondent is a domainer which regularly registers domain names that include generic words for the purposes of selling them. Such business activities can be legitimate and are not in themselves a breach of the Policy, so long as they do not encroach on third parties’ trade mark rights”.

Second, when such a business registers a domain name which corresponds with the trade mark of a third party, a determination of whether this specific registration should be considered as part of a bona fide offering of goods and services depends, on large part, on an evaluation of the respondent’s state of knowledge as at the time of registration. Specifically, was the domain name in issue registered by the respondent in the knowledge that it corresponded to the trade mark of the complainant and with intent to profit from that awareness or did the respondent have no knowledge (actual or constructive) of the complainant and its trade mark? See, for example, Deep Focus Inc. v. Doman Admin, Abstract Holdings International LTD, WIPO Case No. D2018-0518: “The Panel accepts that, where a party legitimately registers a domain name comprising commonplace or dictionary elements for sale, without intent to target the trademark of an existing trademark owner, then that offer for sale can give rise to rights or legitimate interests in the domain name as a bona fide offering of goods or services for the purposes of paragraph 4(c)(i) of the Policy. […] The question in this case, therefore, is whether the Respondent registered the disputed domain name in the knowledge of the Complainant’s trademark and with the intention of taking unfair advantage of the goodwill attaching to that trademark, or legitimately in the circumstances described above”.
Third, when evaluating the parties’ respective contentions in this respect, it is material for a panel to have regard to all factors which might better inform it on the question of the respondent’s intent. As explained at Voys B.V., Voys United B.V. v. Thomas Zou, WIPO Case No. D2017-2136; “The key to whether or not the Respondent’s domain name business constitutes a bona fide offering of goods and services for the purposes of paragraphs 4(a)(ii) and 4(c)(i) of the Policy is the Respondent’s motivation in registering the domain names and, in particular, the Domain Name”.

Section 3.1.1 of the WIPO Overview 3.0 provides guidance as to factors material to assessing a respondent’s intent, in respect of the third element of the Policy, bad faith. As indicated in Voys B.V., Voys United B.V (supra), these are also pertinent when considering paragraph 4(c)(i) of the Policy and are stated to include “(i) the respondent’s likely knowledge of the complainant’s rights, (ii) the distinctiveness of the complainant’s mark, (iii) a pattern of abusive registrations by the respondent, (iv) website content targeting the complainant’s trademark, e.g., through links to the complainant’s competitors, (v) threats to point or actually pointing the domain name to trademark-abusive content, (vi) threats to ‘sell to the highest bidder’ or otherwise transfer the domain name to a third party, (vii) failure of a respondent to present a credible evidence-backed rationale for registering the domain name, (viii) a respondent’s request for goods or services in exchange for the domain name, (ix) a respondent’s attempt to force the complainant into an unwanted business arrangement, (x) a respondent’s past conduct or business dealings, or (xi) a respondent’s registration of additional domain names corresponding to the complainant’s mark subsequent to being put on notice of its potentially abusive activity”.

The Complainant’s brief submissions make no specific assertions as to the Respondent’s knowledge of its DIGEL trade mark as at the date of registration. However, none of the factors outlined above appear to be present to support an argument that the Respondent was not using the disputed domain name as part of a bona fide offering of goods and services. Moreover, the Respondent has asserted a positive case that it neither knew, nor had any reason to know of, the Complainant or its DIGEL trade mark at the time it registered the disputed domain name and that the Complainant has failed to produce any evidence to show the extent of its fame outside of Germany as at that date. Furthermore, the Respondent has supported its claim that the disputed domain name was registered because it was aware that numerous parties might be interested in acquiring it, by providing many examples of potentially interested buyers.

The Panel accordingly finds that there is no basis for finding that the Respondent knew, or could reasonably have been expected to know, of the Complainant or its rights in DIGEL as at the date of its registration of the disputed domain name in 2006. The Respondent’s assertion that it registered the disputed domain name because it might be of interest to multiple parties is credible. Having regard to the general approach of previous UDRP panels to this issue, as outlined above, its registration and offer for sale of the disputed domain name is considered to comprise a bona fide offer of goods and services.

The Complainant has not made out a prima facie case that the respondent lacks rights or legitimate interests. But, even if it had, the Respondent’s evidence is sufficient to rebut any burden of production on the Respondent’s part. The Panel accordingly finds that the Complainant has failed to establish that the Respondent lacks any rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The requirements of paragraph 4(a) of the Policy are cumulative and the Complainant’s failure to satisfy paragraph 4(a)(ii) of the Policy is determinative of the outcome of this Complaint. However, the Panel will briefly consider the parties’ assertions in respect of bad faith registration and use.

The Complainant has asserted that bad faith should be found under paragraph 4(b)(i) of the Policy, that is that the disputed domain name was registered by the Respondent primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or a competitor of it, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name.

If the Respondent was unaware of the Complainant and its DIGEL trade mark as at the date of registration of the disputed domain name, as the Panel has found, it follows that the Respondent cannot have registered or acquired the disputed domain name for the purpose of selling or transferring it to the Complainant or a competitor of it. For that reason, the fact that the Respondent was plainly seeking in negotiations a sum in excess of its out-of-pocket costs directly related to the domain name does not assist the Complainant. None of the other circumstances which are, without limitation, set out at paragraph 4(b) as pointing to bad faith registration and use, are either alleged by the Complainant or are of application on these facts.

The Complainant has therefore also failed to establish that the disputed domain name was registered and used by the Respondent in bad faith.

D. 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 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”. RDNH is defined under the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain name holder of a domain name”.

Section 4.16 of the WIPO Overview 3.0 sets out a number of the circumstances which UDRP panels have considered as supporting a finding of RDNH. These include: 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, unreasonably ignoring established Policy precedent notably as captured in the WIPO Overview 3.0, filing the complaint after an unsuccessful attempt to acquire the disputed domain name from the respondent without a plausible legal basis and basing a complaint on only the barest of allegations without any supporting evidence. Moreover, as section 4.16 of the Overview 3.0 explains, some panels have held that a represented complainant should be held to a higher standard.

This Complaint is particularly brief. In the absence of any evidence, or even argument, as to why the Complainant’s trade mark registrations in DIGEL or the overall repute of its brand in either Canada or the USA should have come to the attention of the Respondent as at the time of registration of the disputed domain name, it was almost certain to fail.

Moreover, the Respondent asserts that this is a complaint brought after negotiations to acquire a domain name at a price a complainant found acceptable, had failed. The Panel notes, in particular, that a period of approximately twelve years elapsed following the registration of the disputed domain name, before the Complainant embarked on negotiations to purchase it, with nothing to suggest that the Complainant regarded it as an abusive registration, until its attempts to buy it were unsuccessful. Moreover, if the Complainant considered that its claim was within the ambit of the Policy, as applied by established Policy precedent, this is inadequately reflected in the skeletal content of the Complaint.

The strategy of bringing complaints after commercial negotiations have failed has been considered as “highly improper” by a number of panels and contributed to findings of RDNH; see, for example, TOBAM v. M. Thestrup / Best Identity, WIPO Case No. D2016-1990, BERNINA International AG v. Domain Administrator, Name Administration Inc. (BVI), WIPO Case No. D2016-1811 and Informa Business Information, Inc. v. Privacydotlink Customer 640040 / Domain Manager, Web D.G. Ltd., WIPO Case No. D2017-1756.

However, some of the indicia which are sometimes present when RDNH is found are absent in this case; the Complainant has not provided false evidence nor attempted to mislead the Panel. Moreover, the mere fact that a complaint is inherently weak does not, in itself, justify a finding of RDNH. Furthermore, the Complainant did have trade mark rights in DIGEL as at the time of registration of the disputed domain name, albeit not in jurisdictions where the Respondent was likely to encounter them.

In Instrumentation Northwest, Inc. v. INW.COM c/o Telepathy, Inc., WIPO Case No. D2012-0454, the panel also considered a weak complaint coupled with a request by the respondent for a finding of RDNH and concluded as follows; “Finally, the Panel declines to find reverse domain name highjacking on this record, although a finding of RDNH could arguably be supported here. Be that as it may, after carefully weighing all of the circumstances of the case, the Panel chooses to interpret this Complaint as misguided inasmuch as it was doomed from the start and should not have been brought. There is no hard evidence, though, that Complainant was ill motivated in lodging the Complaint”.

By a relatively narrow margin, the Panel finds this approach to be the more appropriate in these proceedings and makes the same finding.

7. Decision

For the foregoing reasons, the Complaint is denied. The Panel denies the Respondent’s request for a finding of Reverse Domain Name Hijacking.

Antony Gold
Sole Panelist
Date: August 9, 2018