Decision

Hungray’s OTP Bank came up with it’s first UDRP, claiming exclusive rights to the common acronym OTP, as using various combinations, starting with OTP like OTP Bank, OTP eBiz, OTP Direct, OTP Junior, OTP Startup, etc. OTP Bank mainly has presence in European countries and has rights in Trademark OTP Bank since 1990s but applied for OTP as a Trademark in 2006. The disputed domain name <OTPGROUP.com> was registered in September 2004.

The Respondent is a well-known / serial entrepreneur from Silicon Valley of USA since late 1980s. He has over 40 patents registered in his name. see here, starting 1993. The Respondent firstly founded OnSpec Electronics, Inc. (OEI) in 1989-90 as an IBM PC applications company. It was followed by incorporation of Onspecs Technology Partners Inc. (OTP) in 1993 and OTP Software Inc. in 1996. (source)

Lastly, in India as well, it incorporated a Company by the name of Onspec Technology Partners India Private Limited on 1 September 2004 (active as on date), in the same month of registration of the domain name disputed domain name <OTPGroup.com>, clearly evidencing the purpose of the registration of the domain name.

Respondent submitted that the ‘Onspec’ as initial Company names was adopted from ‘OnSpec-OnTime-OnBudget’ – a project management concept. Otherwise also the Respondent being a computer engineer by profession used to frequently use ‘OTP’ as in ‘One Time Programmable IC Chips’, while working upon IBM Mainframe computers in early 1980s. Reference to technical term OTP is also available in one of the 2006 patent applications by the Respondent, which reads “one-time program memory (OTP). OTP is similar to write once memory, and after this one write, it cannot be modified.” Otherwise OTP being a very common term to refer to One Time Password these days, it initially used to indicate “One Time Program” in software development.

While the Complaint tried hard to press for lack of legitimate interests and Bad Faith, based upon misleading statements as follows, though not upheld by the Panel.

a) The Complainant alleged as to fake whois information, while the WHOIS was just not visible due to GDPR Policy. Highly surprizingly, being a European Bank, represented through a EU Lawyer, they themselves are well aware of the GDPR Policy.

b) Complainant also tried to dig through archive.org and present information as to a template used by the Respondent in the past, which is available here – https://demo.rockettheme.com/joomla-templates/fresco/ and tried to mislead by alleging that misleading information was provided on the website as contact information. And quite amusingly, all the proceedings were marked to the unknown email appearing in the template – noreply@fresco.com, including the decision.

c) Complainant also alleged that contacting the Respondent was impossible, though till 2018, the WHOIS was completely visible in historical whois. But the Complainant made no efforts of digging into the historical WHOIS information.

The arguments were totally denied by the Respondent, represented by Ankur Raheja of Cylaw Solutions, with proper evidence and hence the Complaint denied. Though it was not an RDNH as the website was not in active use. Though it would have been a different story, if WIPO could have appointed a Panelist from USA, that is juridiction of the Respondent, rather than Europe, where the Complainant has huge presence.

Lastly, the legtimate interests were quite visible from the documents produced from the year 1998-99 as indicated in the decision below. Moreover, the words OTP Group also appeared in the archive.org from 1999 at www.OTPSoft.com. Though a business which has been operational since early 1990s, it was not possible to produce very regular evidence from the present date but in terms of UDRP principle, the Respondent was already commonly known by the domain name before registration of the domain name… as previously held in the matter of VertexMedical.com, hence have legitimate interests.

ADMINISTRATIVE PANEL DECISION

OTP Bank Nyrt v. Swamy Venkidu

Case No. D2020-3118

The Parties

The Complainant is OTP Bank Nyrt, Hungary, represented by Danubia Legal, Hungary.

The Respondent is Swamy Venkidu, United States of America (“United States”), represented by Cylaw Solutions, India.

The Domain Name and Registrar

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

Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 19, 2020.  On November 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name.  On November 20, 2020, 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 23, 2020, 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 amendment to the Complaint on November 25, 2020.   

The Center verified that the Complaint together with the amendment to 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 26, 2020.  In accordance with the Rules, paragraph 5, the due date for Response was December 16, 2020.  On December 15, 2020, the Center received an informal communication from an individual associated with the Respondent.  On December 16, 2020, the Respondent submitted a request for extension of the Response due date.  In accordance with paragraph 5(b) and paragraph 5(e) of the Rules, the due date for submission of the Response was extended until December 30, 2020.  The Response was filed with the Center on December 30, 2020.

The Center appointed Jane Seager as the sole panelist in this matter on January 14, 2021.  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.

Factual Background

Founded in Hungary in 1949, the Complainant is a commercial bank, operating primarily in Central and Eastern Europe.  For use in connection with the Complainant’s banking services, the Complainant is the owner of a portfolio of trademark registrations comprising the element “OTP”, including but not limited to the following: 

–    Hungarian Trademark Registration No. 134843, OTP BANK (figurative trademark), registered on May 17, 1993;  

–    European Union Trade Mark No. 005719299, OTPBANK, registered on May 2, 2008;  

–    International Trademark Registration No. 910764, OTP, registered on December 6, 2006;  and 

–    International Trademark Registration No. 910030, OTP BANK, registered on December 4, 2006. 

The Complainant is also the registrant of several domain names consisting of or incorporating its trademarks, including <otpbank.hu>, <otp.hu>, and <otpgroup.hu>.  

The Respondent is an individual based in the United States engaged in the technology sector.  The Respondent is the founder of various companies registered in California, United States, including “OnSpec Electronics, Inc.” in 1990, “OnSpec Technology Partners, Inc.” in 1993, and “OTP Software, Inc.” in 1996.  Such companies have been active in the provision of database applications, software marketing, software sales, consulting services, and various other services.  On July 7, 1997, the Respondent registered the domain name <otpsoft.com>, which became operational in 1998. 

The disputed domain name was registered on September 23, 2004.  In 2019 the disputed domain name resolved to a website featuring a website template, lacking substantive content.  At the time that the Complaint was submitted to the Center (and at the time of this decision) the disputed domain name did not resolve to an active website. 

Parties’ Contentions

Complainant

The Complainant submits that the disputed domain name is confusingly similar to trademarks in which it has rights, as well as its company name.  The Complainant submits that “OTP” is the distinctive element of the disputed domain name, and that the addition of the term “group” and the generic Top-Level Domain (“gTLD”) “.com” is insufficient to distinguish the disputed domain name from the Complainant’s trademarks and company name.  

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name.  The Complainant states that it has not licensed or otherwise permitted the Respondent to use any of its trademarks.  The Complainant notes that there is no content on the website to which the disputed domain name resolves, and submits that the Respondent has no justified intention in using or legitimate interest in keeping the disputed domain name.  The Complainant submits that the template website previously appearing at the disputed domain name never had any connection with the term “OTP”.  The Complainant submits that the Respondent is not making any legitimate noncommercial or fair use of the disputed domain name.  The Complainant claims to be widely known in Central and Eastern Europe, and argues that the Respondent’s registration of the disputed domain name tarnishes the Complainant’s trademarks and reputation.  The Complainant further asserts that the disputed domain name creates a misleading impression of association with the Complainant.  

The Complainant submits that the disputed domain name was registered and is being used in bad faith.  The Complainant asserts that it has not authorized the Respondent to register a domain name containing the Complainant’s trademark.  The Complainant notes that there has been no content posted on the website to which the disputed domain name resolves since August 2019, and submits that the disputed domain name is being passively held, in bad faith.  In this regard, the Complainant asserts that its trademarks are widely known in Hungary as well as in Central and Eastern Europe, that the Respondent has taken active steps to conceal his identity, that the Respondent previously provided inaccurate contact information on the website to which the disputed domain name resolved, and that any actual or contemplated use of the disputed domain name by the Respondent would be illegitimate.  

The Complainant requests transfer of the disputed domain name.  

Respondent

The Respondent submits that the disputed domain name is not identical or confusingly similar to a trademark in which the Complainant has rights.  The Respondent asserts that at the time that the disputed domain name was registered, the Complainant did not own any trademark registrations in the United States, where the Respondent is located, nor did the Complainant own any trademark rights for “OTP”.  The Respondent argues that “OTP” and “OTP Group” are used by other businesses.  The Respondent asserts that “OTP” is a generic, technical, or abbreviated term and that it has been registered as a trademark by various businesses as early as 1976.  

The Respondent claims to have rights or legitimate interests in the disputed domain name.  The Respondent asserts that his companies have been commonly known by the disputed domain name.  The Respondent claims to have referred to his group of companies as the “OTP Group” since at least 1998.  The Respondent further submits that “OTP” is an acronym, standing for “one time program / programmable”, “one true paring”, or “one time password”.  The Respondent notes that there are other domain name registrations not owned by the Complainant that comprise the letters “OTP”, and that the Complainant has no exclusive right to the use of “OTP” and therefore has no standing in the present proceedings.  The Respondent submits that the Complainant has not established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.  

The Respondent submits that the disputed domain name was not registered or used in bad faith.  The Respondent asserts that, since 1998, he has been using the terms “OTP Group” in connection with at least three of the Respondent’s companies, and that as a result the Respondent has acquired goodwill in connection with the acronym “OTP”.  The Respondent submits that he did not register the disputed domain name with the Complainant in mind, and had no knowledge of the Complainant or its trademark at the time the Respondent registered the disputed domain name in 2004.  The Respondent asserts that the disputed domain name has been held by the Respondent to represent the companies owned by the Respondent in good faith.  The Respondent submits that he does not require permission from the Complainant to use the disputed domain name, as the disputed domain name is an abbreviated form of the Respondent’s company names.  The Respondent submits that he has never provided any false or misleading WhoIs or contact information, that his contact information had been redacted in the WhoIs record as a result of the implementation of the General Data Protection Regulation 2016/679 (“GDPR”), and that it was clear that the contact information displayed on the website appearing at the disputed domain name in 2018 was part of a demo version of a website template.  The Respondent submits that he did not develop the website at the disputed domain name due to other priorities.  The Respondent claims to continue to operate under the names “OTP Group” and “OTP Venture Group”, providing software application services as well as hardware semiconductor solutions.  

The Respondent requests a finding of Reverse Domain Name Hijacking (“RDNH”).  The Respondent submits that the Complainant knew or should have known that the Complainant could not succeed in proving at least two of the three elements of the Policy.    

Discussion and Findings

In order to prevail, the Complainant must demonstrate, on the balance of probabilities, that it has satisfied the requirements of paragraph 4(a) of the Policy: 

(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.

Identical or Confusingly Similar

The Panel finds that the Complainant has established rights in the OTP and OTP BANK trademarks, the registration details of which are provided in the factual background section above.  As stated in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.1.2, noting 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.  Moreover, 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.  

The disputed domain name includes the Complainant’s OTP trademark as its leading element together with the term “group” under the gTLD “.com”.  The disputed domain name may also be read as comprising the distinctive element of the Complainant’s OTP BANK trademark, i.e., “OTP”, simply substituting the term “bank” with the term “group”.  Neither the addition of the term “group” to the Complainant’s OTP trademark, nor the substitution of the term “bank” for the term “group” in the Complainant’s OTP BANK trademark prevents a finding of confusing similarity between the Complainant’s trademarks and the disputed domain name;  see WIPO Overview 3.0, section 1.8.   

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

Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the complainant, previous 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.  If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element;  see WIPO Overview 3.0, section 2.1.  

The Complainant’s case under the second element is founded primarily on the Respondent’s lack of substantive use of the disputed domain name, and the notion that the registration of the disputed domain name itself tarnishes the Complainant’s trademarks and creates a misleading impression of association with the Complainant.  

The Respondent, in reply, submits that he is commonly known by the disputed domain name, and that “OTP” is a descriptive term or acronym that has been adopted by many businesses across the world.  

While the Respondent has submitted evidence of having founded companies under the names “OnSpec Technology Partners, Inc.”, “OTP Software, Inc”, and others, referred to collectively by the Respondent as the “OTP Group”, the Respondent has not provided clear evidence that he or his group of companies is recognized by any third parties under the name “OTP Group”, such that the Respondent may be said to be “commonly known” by the disputed domain name – particularly as concerns the “group” appendage – pursuant to paragraph 4(c)(ii) of the Policy.  Nor has the Respondent produced any evidence of active use of the disputed domain name in connection with any descriptive meaning that could be ascribed to “OTP Group” that would otherwise confer rights or legitimate interests in the disputed domain name on the Respondent.  

Notwithstanding the above, in light of the Panel’s findings under the third element, as set out below, the Panel need not make a definitive finding in relation to paragraph 4(a)(ii) of the Policy.      

Registered and Used in Bad Faith

Bad faith under the Policy is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s trademark.  Complaints alleging the types of conduct that amount to examples of bad faith as contemplated by paragraph 4(b) of the Policy should be supported by arguments and relevant evidence.  Wholly unsupported allegations may not be sufficient to support a complainant’s case;  see WIPO Overview 3.0, section 3.1.  

The Complainant’s arguments in support of bad faith registration of the disputed domain name are founded on the notions that first, the Complainant has not granted the Respondent any authorization to register the disputed domain name containing the Complainant’s trademark;  secondly, that the Respondent has not used the disputed domain name, except in 2018 to resolve to a template website lacking substantive content, as described above;  and thirdly, that the Respondent has attempted to conceal his identity and provided false contact information on the website to which the disputed domain name resolved in 2018.  

The Panel notes that the disputed domain name was registered on September 23, 2004.  The Complainant states that it is well established in Central and Eastern Europe.  The Complainant has not described the scale of its business operations (if any) in the United States, where the Respondent is located.  Nor has the Complainant provided any evidence of trademark rights for “OTP” or any variation thereof in the United States that predate the registration of the disputed domain name.  The Complainant has not submitted any evidence of its reputation so as to support an inference of the Respondent’s likely knowledge of the Complainant or its trademark rights.  Nor is there any evidence of the Respondent’s use of the disputed domain name targeting the Complainant’s trademark such that the Respondent can be said to have had knowledge of the Complainant at the time that the Respondent registered the disputed domain name.  In terms of the nature of the disputed domain name, despite the inclusion of the Complainant’s OTP trademark in the disputed domain name, the inclusion of the term “group” does not by itself support an inference that the Respondent registered the disputed domain name in an attempt to create an association with the Complainant.  

The Respondent denies having had any knowledge of the Complainant or its trademarks at the time that the disputed domain name was registered.  The Respondent has submitted evidence of having founded companies under the names “OnSpec Technology Partners, Inc.”, “OTP Software, Inc”, and others, referred to collectively by the Respondent as the “OTP Group”.  The Respondent has also provided evidence (dating from as early as 1998) referring to his companies as the “OTP Group” in promotional correspondence with third parties.  The Respondent has also submitted evidence indicating that he has been the longstanding registrant of the domain name <optsoft.com> (registered on July 7, 1997), which has been used in connection with a website promoting the Respondent’s software and technology consulting services.  The Panel finds that the Respondent has presented sufficient evidence to provide a credible and rational explanation for the Respondent’s registration of the disputed domain name.

The Panel further finds the Complainant’s allegations that the Respondent has attempted to conceal his contact information in the WhoIs record, and that he provided false contact information on the website to which the disputed domain name resolved in 2018, to be misguided.  As noted by the Respondent, the Respondent’s details in the registrar’s publicly-available WhoIs record appear to have been redacted for reasons relating to the implementation of the GDPR.  The Respondent has provided historic WhoIs records showing that prior to May 2018, the Respondent’s name and contact information was disclosed in full in the WhoIs record for the disputed domain name.  The Panel finds that it was reasonably apparent that the website to which the disputed domain name resolved in 2018 was a template website lacking substantive content, and that the contact information displayed therein was simply placeholder contact information, not intended to mislead Internet users in any way.  

In light of the above, the Panel finds that the Complainant has failed to demonstrate that the Respondent registered the disputed domain name in bad faith.  It follows that the Respondent’s longstanding holding of the disputed domain name does not, in the circumstances of the present case, amount to bad faith vis-à-vis the disputed domain name. 

The Complainant has not satisfied the requirements of paragraph 4(a)(iii) of the Policy.  

Reverse Domain Name Hijacking (RDNH) 

The Respondent has requested that the Panel enter a finding of RDNH.  

Paragraph 1 of the Rules defines RDNH as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”  Prior UDRP panels have consistently held that the mere lack of success of a complaint is not itself sufficient for a finding of RDNH;  see WIPO Overview 3.0, section 4.16.  

The Panel observes that the present Complaint was founded on relevant trademark rights, several of which predated the registration of the disputed domain name.  The Panel does not accept the Respondent’s submission that the Complainant knew or ought to have known that it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the Complaint.  Rather, the Response raised a number of matters that the Complainant could not reasonably have been expected to be aware of at the time that the Complaint was submitted to the Center.  Despite the apparent weaknesses of the Complainant’s case, as well as its shortcomings in terms of relevant or probative evidence, there is no indication that the Complainant has unreasonably ignored established UDRP precedent, nor has the Complainant provided false evidence or otherwise attempted to mislead the Panel. 

The Panel declines to enter a finding of RDNH.

Decision

For the foregoing reasons, the Complaint is denied.

 

/Jane Seager/

Jane Seager

Sole Panelist

Date:  January 29, 2021

Wedi GmbH v. Dong Jin Kim [UDRP Case No Case No. D2020-2608]

The German Company Wedi GmbH brought complaint over the 4L (four letter) domain name WEDI.com. The disputed domain name was registered in August 2000 by the Respondent while the Trademark of the Trademark had a registration date that of January 2002, that is, the domain registration pre-dated the disputed domain name by 2 years. Though Complainant has been in exitence since 1983 as Wedi Wannenbauelemente GmbH, a leading manufacturer and system provider of tileable building materials and waterproof shower and construction system in many parts of the world.

Complainant alleged: 

• The disputed domain name is identical or confusingly similar to the Complainant’s trademark
• Disputed domain name contains the WEDI mark in its entirety.
• Since the word “wedi” is a family name of the founder of the Complainant’s company, the Complainant has been using the WEDI mark as the trade name and the trademarks.
• The Respondent has no legitimate rights or interests in the disputed domain name.
• The Complainant has the exclusive right of the WEDI trademark and has never authorized the Respondent to register or use the disputed domain name.
• The Respondent is not commonly known by the disputed domain name.
• The disputed domain name was registered and is being used by the Respondent in bad faith.
• The Respondent has failed to explain why he has not properly used the disputed domain name for 20 years and to provide any plausible evidence demonstrating that he has a solid reason for using it. In addition the Complainant alleges that before the Complainant got into contact with the Respondent, the Respondent’s website only showed the sign “under construction” and then its website was in operation immediately after contacting the Respondent.
• Given the Complainant’s widespread use of the mark in connection with tileable building materials, the floor-level shower and the design modules the Respondent knew or at least should have known, of the existence of the Complainant’s trademark and its use of WEDI mark at the time of registering the disputed domain name.
• Thirdly, the Respondent has a tendency to register the domain names that incorporate other’s trademarks. In addition the Respondent’s prior adverse UDRP decisions constitute further evidence of a pattern of bad faith registration. (see MPDV Microlab GmbH v Dongjin Kim, WIPO Case No. D2008-0065; Volkswagen AG 대김동진, WIPO Case No. D2003-0582).

The Respondent responds:

• Although the disputed domain name is identical to the Complainant’s trademark, the Respondent registered the disputed domain name <wedi.com> for its wedding information service one year and five months earlier than the Complainant registered the International Trademark WEDI Registration No. 780068 (Registration date of January 29, 2002).
• The Respondent was not aware of the Complainant’s registration of WEDI trademark, which was neither widely known nor famous at the time of registering the disputed domain name in the Republic of Korea. 
• The Respondent has rights or legitimate interests in the disputed domain name because the disputed domain name was legitimately registered and was not registered by the Respondent in bad faith.
• The Respondent registered the disputed domain in attempt to conduct its noncommercial business of wedding information, considering that “wedi” means “wedding information” service.
• In the beginning the Respondent failed to obtain the disputed domain name <wedi.com> which was already registered by someone other than the Complainant. However, as soon as the Respondent found that the registrant abandoned it, he registered it.
• This is further supported that at the same date of registering <wedi.com> the Respondent registered the domain names <jemi.com> for the male information service and <pegi.com> for the female. 
• The disputed domain name is neither registered nor is being used in bad faith. Firstly, it is impossible that the Respondent registered the disputed domain name <wedi.com> in bad faith, because he registered the disputed domain name much earlier than the Complainant registered the International Trademark WEDI Registration.
• Secondly, at the time of registering disputed domain name the Complainant’s trademark is neither famous nor widely known in the Republic of Korea where the Respondent resides. In addition the passive holding of a domain name does not constitute the bad faith use in the circumstance when its mark is neither distinctive nor widely known. The word “wedi” is a common family name and not distinctive.
• Thirdly, unless the Respondent does not infringe on the Complainant’s right in the WEDI mark, its registration and use of the domain name should be allowed (See DSPA B.V. v. Bill Patterson, Reserved Media LLC, WIPO Case No. D2020-1449). The failure of contacting the Respondent by the Complainant does not prove the bad faith use of the disputed domain name. 
• The Respondent asserts that the Complaint was brought in bad faith, especially in an attempt at Reverse Domain Name Hijacking. The Complainant knew that it could not succeed since the disputed domain name was registered much prior to the Complainant’s filing date of trademark application or the registration date of the WEDI trademark. 

Policy Conditions: 

Under paragraph 4(a) of the Policy, the Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:

(i) the disputed domain name is identical or confusingly similar to the Complainant’s trademark or service mark; and 

The disputed domain name <wedi.com> incorporates the term “wedi” which is entirely identical to the Complainant’s trademark. In cases where a domain name incorporates the entirety of a trademark, the domain name will be considered confusingly similar to that mark for purposes of UDRP standing.

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

Not Analyzed

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

Paragraph 4(a)(iii) of the Policy requires that the domain name “has been registered and is being used in bad faith”. Thus, for the Complaint to succeed, a UDRP panel must be satisfied that a domain name has been registered and is being used in bad faith. These requirements are conjunctive; each must be proven or the Complaint fails. In this proceeding the Panel needs look no further than the Complaint to determine that the Complainant has not established that the Respondent registered the disputed domain name in bad faith.

Firstly, in this present case, the disputed domain name was registered on August 10, 2000 prior to the Complainant’s registration of the WEDI trademark on January 29, 2002. Although the Complainant alleges its ownership of the numerous WEDI trademarks predating the registration of the disputed domain name, the evidences submitted to the Panel show that the WEDI trademarks predating the registration of the disputed domain name are currently owned by SW Verwaltungs GmbH, which is an independent legal entity, different from the Complainant. Here, it is questionable that the Complainant did not registered the domain name <wedi.com> together with the regional domain name <wedi.de> at the time of its registration in 1998 and now that the present owner of those WEDI trademarks could not be invited to join this proceeding by the Complainant, who alleges that two companies are in the same WEDI family business.

Even assuming that the Complainant could show authorization to hold and use the WEDI mark, it would not change the analysis or outcome here. Most importantly, given that the registration of the disputed domain name predates the relevant trademark rights, but not their claimed first use, it would be incumbent on the Complainant to show sufficient reputation that would make it incontrovertible that the Respondent knew of and targeted the Complainant when it registered the disputed domain name.

Secondly, previous UDRP panels’ consensual view is that, absent exceptional circumstances, when a domain name is registered by the Respondent before the Complainant’s trademark right, the domain name can generally not have been registered in bad faith, as the Respondent could obviously not have been aware of the Complainant’s trademark as of the time the domain name was registered.(Section 3.8.1 of WIPO Overview 3.0) These exceptional cases include the limited circumstances where the respondent’s intent in registering the domain name was to unfairly capitalize on the Complainant’s unregistered mark in anticipation of obtaining trademark rights; for example, (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 this respect the Complainant fails to prove such exceptional circumstances that the Respondent registered the disputed domain name in bad faith.

Thirdly, the Complainant contents that the Respondent knew or at least should have known, of the existence of the Complainant’s trademark and its use of WEDI mark at the time of registering the disputed domain name. On the other hand the Respondent responds that he was not aware of the Complainant’s trademark at time of registering disputed domain name because the Complainant’s trademark is neither famous nor widely known in the Republic of Korea where the Respondent resides. The Respondent claims that he registered the disputed domain name for the noncommercial business of wedding information, considering that “wedi” means “wedding information” service. In this respect the Complainant failed to prove the distinctiveness and reputation of the WEDI mark in the jurisdiction of the Respondent at the time the disputed domain name was registered and could not persuade the Panel to consider that a respondent knew or should have known that its registration would be identical to the Complainant’s WEDI mark.

Fourthly, the Complainant refers the Telstra case to prove the Respondent’s bad faith registration. (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.) However, the present case is quite different from the circumstance of the Telstra case, in which (i)the trademark was distinctive and widely known around world (ii) the Respondent took active steps to conceal its identity (iii) the Respondent breached the registration agreement by providing false contact details. Thus, so-called “passve holding” bad faith can not apply to this case.

Finally, the Complainant asserts that the Respondent has the tendency of registering numerous numbers of domain names that incorporate others’ trademarks. However, simply owning a number of domain names is not of itself evidence of bad faith. Unless the Respondent does not infringe on the Complainant’s right in the WEDI mark, its registration and use of the domain name may be allowed. In order for the Panel to find that the Respondent has engaged in a pattern of conduct for the purpose of paragraph 4(b)(ii) of the Policy, the domain names which the Respondent has registered would need to reflect third party trademark and to target the owner of the trademark. Further, there is no evidence before the Panel of any sale by the Respondent of these domain names. While passive holding can, in some circumstances, support a finding of bad faith registration given in particular the timing, there is no basis for such an assertion here because the trademark is neither famous nor widely known at the time of registration of the disputed domain name.

The Panel therefore concludes the Complainant has failed to establish the third element of paragraph 4(a) of the Policy.

D. Reverse Domain Name Hijacking

The Respondent requests a finding 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 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”. In addition, 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”.

In consideration of the circumstance that the Complaint had obtained the ownership of the WEDI trademark predating (in particular as to first claimed use) the Respondent’s registration of the disputed domain name which later transferred it to the other, the Panel cannot conclude that the Complainant filed its Complaint in bad faith for the purposes of RDNH, and mere lack of success of the Complaint is not in itself sufficient for a finding of RDNH.

The Panel is of the opinion that the Complainant has not filed its Complaint in bad faith as an attempt at RDNH.

The Panel denies the Respondent’s request for a finding of Reverse Domain Name Hijacking.

7. Decision

For the foregoing reasons, the Complaint is denied.

Moonchul Chang
Sole Panelist
Date: January 24, 2021

source: https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2020-2608

Summary: 

US based Empire Flippers, LLC claimed that the disputed domain name BuySellEmpire.com have copied the dominant part of their mark “Empire” and also the site is copied (both read buy and sell Quality Website/Business), etc. And prayed for the transfer of the domain name. 

EmpireFlippers is a registered Trademark in the USA and has been operating since 2013. But BuySellEmpire.com was registered since 2017 and has been actively operating since 3 years at a good scale and also has a Trademark Application pending in India, so held to have legitimate rights.

Mainly the EmpireFlippers were trying to show they just discovered about BuySellEmpire recently, but the parties already had communicated in 2018, the evidence was produced by the Respondent and since then BuySellEmpire have grown a lot…. so now demonstrable preparation were visible in terms of the UDRP Policy and hence legitimate interests upheld. 

Further, given the generic nature of the keywords in the domain name, no Bad Faith could be presumed. In any case both the Companies involved in Buying and Selling of Empires, i.e. large businesses. Hence, Complaint Denied. 

DECISION

Empire Flippers, LLC v. Ansh Gupta / Jamkain Media Ventures
Claim Number: FA2012001925050

PARTIES
Complainant is Empire Flippers, LLC (“Complainant”), represented by Eric Misterovich of Revision Legal, Michigan, USA. Respondent is Ansh Gupta / Jamkain Media Ventures (“Respondent”), represented by Ankur Raheja of CyLaw Solutions, India.

REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <buysellempire.com>, registered with GoDaddy.com, LLC.

PANEL
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

David H. Bernstein as Panelist.

PROCEDURAL HISTORY
Complainant submitted a Complaint to the Forum electronically on December 15, 2020; the Forum received payment on December 15, 2020. The Complaint named Domains by Proxy, LLC as the respondent.

On December 16, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <buysellempire.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the domain name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”). Also on December 16, 2020, the Forum notified Complainant of the Respondent’s identity.

On December 16, 2020, the Complainant filed an Amended Complaint. On December 17, 2020, the Forum served the Complaint, the Amended Complaint, and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 6, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@buysellempire.com. Also on December 17, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

On December 18, 2020, Respondent requested a seven-day extension of time for its Response in light of the Christmas and New Year’s holidays. Because Rule 5(b) provides that a Respondent may obtain an automatic four-day extension of the deadline for Response, and in light of Forum’s Supplemental Rule 1(g)(ii), the Forum extended the deadline for Response to January 11, 2021.

A timely Response was received and determined to be complete on January 7, 2021.

On January 12, 2021, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed David H. Bernstein as Panelist.

On January 14, 2021, Complainant filed an additional submission. Unsolicited supplemental filings are not permitted as a matter of right; they are only permitted in exceptional circumstances, such as where Respondent’s submission includes contentions that Complainant could not reasonably have anticipated when it filed its Complaint. See WIPO Decision Overview 3.0, § 4.6.

On January 18, 2021, Respondent filed an objection to Complainant’s additional submission and, in the alternative, sought leave to file its own additional submission.

Complainant has not identified any particular contentions in the Response that it could not reasonably have addressed in the Complaint or any other factors that would justify the filing of an additional submission. Instead, Complainant has primarily reiterated arguments made in the Complaint and responded to Respondent’s defenses (all of which could have been anticipated). Although Respondent’s allegation of Reverse Domain Name Hijacking could potentially merit a reply (such as to explain why Complainant did not file the Complaint in bad faith or with the purpose of harassing Respondent), Complainant merely denied this accusation in a summary manner and reiterated facts already alleged in the Complaint.

For the foregoing reasons, and in light of the Panel’s discretion on whether to accept additional submissions under Rules 10(d) and 12 and Forum Supplemental Rule 7, the Panel declines to consider Complainant’s additional submission. Because the Panel declines to consider Complainant’s additional submission, Respondent’s alternative request to submit an additional submission is denied as moot.

RELIEF SOUGHT
Complainant requests that the domain name be

PARTIES’ CONTENTIONS

A. Complainant
Complainant Empire Flippers, LLC is a Delaware company that, since 2013, has brokered the sale of internet businesses under the name EMPIRE FLIPPERS. Complainant owns the domain name <empireflippers.com>. Complainant alleges that it has assisted in the sale of over 1,400 businesses worth a combined total of $180,000,000 USD.

On May 13, 2015, Complainant’s predecessor in interest submitted an application to the U.S. Patent and Trademark Office (“USPTO”) to register EMPIRE FLIPPERS, noting a first use in commerce date of March 14, 2013. The USPTO granted the registration effective January 26, 2016, under Reg. No. 4,892,061. The registration was assigned to Complainant on February 24, 2016.

Complainant contends that the disputed domain name, <buysellempire.com>, is confusingly similar to Complainant’s registered mark because the domain name incorporates a dominant portion of Complainant’s mark, namely, the word “empire.” Complainant further contends that Respondent’s addition of the words “buy” and “sell” in the disputed domain name does not prevent a finding of confusing similarity because those words are merely descriptive of the services offered by Respondent and do not mitigate against confusion.

Complainant contends that Respondent does not have rights or legitimate interests in the disputed domain name because Respondent is not known by the disputed domain name and Complainant has not authorized Respondent to use its mark. Additionally, Complainant contends that Respondent is not utilizing the mark to make a bona fide offering of services because Respondent uses the disputed domain only for deceptive and improper business purposes. In support of these contentions, Complainant asserts that Respondent is a competitor of Complainant and that Respondent copied certain elements of the layout, design, and content of Complainant’s website.

Finally, Complainant contends that Respondent registered and used the disputed domain name in bad faith. In support of this contention, Complainant asserts that “it is inconceivable” that Respondent could have registered the disputed domain name without actual or constructive knowledge of Complainant’s rights in the EMPIRE FLIPPERS mark and that Respondent selected the disputed domain name in order to create a misimpression among prospective customers of an association between the disputed domain and Complainant. Complainant further asserts that Respondent uses the disputed domain name to divert prospective customers of Complainant to Respondent’s website, where Respondent offers competing services. In support of these contentions, Complainant points to the fact that Respondent registered the disputed domain name in July 2017, several years after Complainant first used its EMPIRE FLIPPERS mark, that Respondent chose a confusingly similar domain name to offer competing services, and that Respondent copied various elements of Complainant’s website.

B. Respondent
Respondent is an Indian company (and the company’s owner) that brokers the sale of internet businesses through the disputed domain name, <buysellempire.com>.

Respondent registered the disputed domain name on July 22, 2017. In March 2018, Respondent applied to register the mark BUYSELLEMPIRE with India’s Trade Marks Registry; that application is, apparently, still pending. Respondent alleges that it has never been accused by Complainant of infringing Complainant’s trademark prior to the filing of the Complaint in this dispute.

Respondent contends that the disputed domain name is not confusingly similar to Complainant’s mark. Respondent denies that Complainant’s mark and the disputed domain name are phonetically similar. Respondent also denies that Complainant has any rights in the word “empire” because “empire” is merely a dictionary word that Complainant may not monopolize for its dictionary meaning. Respondent provided a list of thousands of domain names that contain the word “empire,” contending that “empire” is commonly used by many businesses, including businesses in Class 35, and, for that reason, the mark is not protectable by itself. Respondent further notes that neither the disputed domain name nor Respondent’s website makes reference to the word “flippers” or to Complainant’s mark in its entirety.

Respondent contends that it has legitimate interests in the disputed domain name. First, Respondent contends that, where a Respondent registers a domain name consisting of dictionary terms under the good faith belief that the domain name’s value derives from its descriptive qualities rather than its trademark value, the registration and use establish a legitimate interest in the mark. Respondent contends that “empire” is a common dictionary term used by both Complainant and Respondent for one of its dictionary meanings (referring to a large business or organization), and that Respondent selected the disputed domain name solely for its descriptive qualities. Second, Respondent contends that it used the disputed domain name to make a bona fide offering of services prior to the dispute. In support of this contention, Respondent cites the following facts: Respondent has brokered the sale of websites through the disputed domain name since 2018; in February 2018, Respondent hired a UK-based company to generate leads for buyers and sellers on the disputed domain; Respondent partnered with Flippa.com to broker the sale of businesses, brokering more than $100,000 USD worth of businesses together; in 2019, Respondent listed businesses on the disputed domain collectively worth more than $3 million; Respondent received a grant from the Indian government to run and grow its website at the disputed domain; and Respondent engaged in a Facebook advertisement campaign for the disputed domain starting in September 2020. Additionally, Respondent provided documentation of at least 16 sales completed through the disputed domain. Third, Respondent contends that it is commonly known by the disputed domain name, citing numerous news articles and blog posts that make reference to the disputed domain.

Finally, Respondent contends that its registration and use of the disputed domain name were not done in bad faith, citing a variety of factors in support of this contention. Respondent contends that, in order to prove bad faith registration, Complainant must show that Respondent registered the domain name not because of its common descriptive meaning but rather because the domain name corresponded to a protected mark. Respondent implied that it was aware of Complainant at the time it registered the domain name but denied that it registered the domain name with Complainant’s mark in mind or with intent to capitalize on Complainant’s registered mark, arguing that it could not be assumed to have been aware that Complainant registered its mark in the United States because Respondent is located in India. Respondent alleges that it chose the domain name <buysellempire.com> because Respondent sought an “exact match domain” that described the type of services provided by Respondent, and many similar domains were already registered. Respondent asserts that “empire” is merely a synonym for a large business, and the disputed domain name is simply the combination of that dictionary word with “buy” and “sell,” which accurately describes the business Respondent conducts through the disputed domain. Respondent contends that its website is not designed to mislead consumers into thinking it is associated with Complainant, alleging that Respondent’s website makes no reference to Respondent’s mark on its website and that Respondent did not copy Complainant’s website design but instead designed it using the Themify Ultra theme. Complainant denied that the disputed domain name is likely to cause confusion among consumers, alleging that no one has contacted Respondent about experiencing confusion and that prospective customers of Complainant and Respondent are relatively sophisticated and unlikely to be confused. Lastly, Respondent denies that the disputed domain name was registered or used for the purpose of disrupting Complainant’s business, that the domain name was registered or used to prevent Complainant from using its mark in a corresponding domain name, and that Respondent has ever tried to sell the disputed domain name to Complainant.

Respondent also claimed that Complainant engaged in Reverse Domain Name Hijacking by filing the Complaint. Respondent characterized the Complaint as a “Plan B” claim that is calculated and designed to harass and destroy Complainant’s competitors, create a monopoly in the industry, and steal a highly valuable domain name. In support of this claim, Respondent contended that due diligence on the part of Complainant would have shown that Complainant could not prove its claims, emphasizing that Complainant is represented by counsel who should have recognized that the Complaint could not succeed. Throughout its Response, Respondent also repeatedly asserts that Complainant attempted to mislead the Panel in a variety of ways.

FINDINGS
The disputed domain name, <buysellempire.com>, is confusingly similar to Complainant’s registered mark, EMPIRE FLIPPERS.

Complainant has presented insufficient evidence to establish that Respondent lacks rights or legitimate interests in the domain name.

Complainant has not presented evidence that proves that Respondent registered and used the disputed domain name in bad faith.

Complainant did not engage in Reverse Domain Name Hijacking.

DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar
It is undisputed that Complainant has rights to the U.S. federally registered EMPIRE FLIPPERS service mark. This registration “prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP.” WIPO Decision Overview 3.0, § 1.2.1.

Respondent’s argument that the disputed domain name is not confusingly similar to Complainant’s registered mark is without merit. Confusing similarity for the purposes of the Policy is assessed by “comparing the (alpha-numeric) domain name and the textual components of the relevant mark.” Id. § 1.10. “[W]here at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” Id. § 1.7.

In this case, the disputed domain name incorporates a dominant feature of Complainant’s mark—the word “empire.” That alone is sufficient to establish confusing similarity.

Respondent nevertheless argues that the disputed domain name is not confusingly similar to Complainant’s mark because the disputed domain name includes the words “buy” and “sell” and omits of the word “flippers,” such that Internet users are not likely to confuse Respondent’s website for Complainant’s website. This argument reflects a misunderstanding of the first prong of the Policy. Whether the domain name is likely to confuse Internet users into believing that the disputed domain name comes from or is associated with Complainant is irrelevant to the inquiry under the first prong. As explained in Section 1.7 of the WIPO Decision Overview 3.0:

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. . . . Issues such as the strength of the complainant’s mark or the respondent’s intent to provide its own legitimate offering of goods or services without trading off the complainant’s reputation, are decided under the second and third elements. Panels view the first element as a threshold test concerning a trademark owner’s standing to file a UDRP complaint, i.e., to ascertain whether there is a sufficient nexus to assess the principles captured in the second and third elements.

For these reasons, “the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.” Id. § 1.8. The Panel notes that “buysell” could reasonably be understood as a synonym for “flipp[ing]” a business, which underscores rather than undermines the Panel’s conclusion that the disputed domain name is confusingly similar to Complainant’s mark for the purposes of this first element.

Accordingly, Complainant has met its burden under the first element.

Rights or Legitimate Interests
In order to prevail under the second element, Complainant must first establish “a prima facie case that the respondent lacks rights or legitimate interests . . . in the domain name.” WIPO Decision Overview 3.0, § 2.1. Complainant has alleged that Respondent is not commonly known by the disputed domain name or a related name, and that Complainant has not granted Respondent authority to use Complainant’s mark. This is sufficient to make out a prima facie case. See Logistics Plus, Inc. v. Silverman, Jay, FA2007001903358 (Forum Aug. 18, 2020).

Consequently, “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.” WIPO Decision Overview 3.0, § 2.1. The burden of proof, however, always remains with the Complainant. Id.; Agfa-Gevaert N.V. v. Pascal Olaf Schubert, Schubert UG, WIPO Case No. D2020-1413 (July 27, 2020); American Public University System, Inc. v. Domain Protection Services, Inc. / Domain Vault, Domain Vault LLC, WIPO Case No. D2020-1690 (Sept. 4, 2020).

Respondent contends that it has rights or legitimate interests in the disputed domain name, citing three factors: (1) Respondent’s use of the disputed domain name to make a bona fide offering of services prior to notice of the dispute, see Policy ¶ 4(c)(i); (2) Respondent’s registration of the disputed domain name constituted by three dictionary words that the Respondent registered in good faith due to the name’s descriptive qualities (which the Panel interprets to be a contention that Respondent made fair use of the disputed domain name under ¶ 4(c)(iii) of the Policy); and (3) Respondent is commonly known by the disputed domain name, see id. ¶ 4(c)(ii).

The second of these defenses is not valid. Whether “buy,” “sell,” and “empire” are dictionary words is irrelevant; there is no general right to register and use any domain name comprised of dictionary words. Rather, as explained in the WIPO Decision Overview:

Panels have recognized that merely registering a domain name comprised of a dictionary word or phrase does not by itself automatically confer rights or legitimate interests on the respondent; panels have held that mere arguments that a domain name corresponds to a dictionary term/phrase will not necessarily suffice. In order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trademark rights. . . .

For a respondent to have rights or legitimate interests in a domain name comprising an acronym, the respondent’s evidence supporting its explanation for its registration (and any use) of the domain name should indicate a credible and legitimate intent which does not capitalize on the reputation and goodwill inherent in the complainant’s mark.

WIPO Decision Overview 3.0, § 2.10.

If Respondent’s domain name were <buysellinternetbusinesses.com>, Respondent might be able to establish that such a domain name is descriptive of Respondent’s business. “Empire,” though, is not a descriptive term for internet businesses. Although one of its meanings is “a large commercial organization owned or controlled by one person or group,” that is not a description for all (or even most) internet businesses. Moreover, Respondent has not established that the only internet businesses that it sells are empires; rather, they appear to be smaller businesses that cannot fairly be described as empires. For these reasons, the Panel rejects the second of Respondent’s arguments.

Respondent’s first and third arguments are related, and present a closer question. If Respondent has credible evidence that it was known by the name buysellempire and was using the corresponding domain name in connection with a bona fide offering of services prior to notice of the dispute, that would be sufficient for Respondent to have carried its burden of producing evidence showing that Respondent has rights or legitimate interests in the disputed domain name.

There are two components to this showing. First, the Panel must consider when Respondent was first notified of this dispute. And, second, the Panel must consider whether Respondent’s offering of services prior to that date was bona fide.

Respondent alleges, and Complainant does not contest, that Complainant did not send Respondent a cease-and-desist letter prior to filing the Complaint, and neither party has alleged that Complainant and Respondent otherwise communicated regarding Respondent’s use of the disputed domain name prior to the filing of the Complaint. Accordingly, the Panel finds that Respondent was first notified of the dispute on December 17, 2020, when Respondent received notice of the Complaint in this case.

Respondent has offered uncontested evidence that Respondent prepared to use and actually used the disputed domain name to offer services long prior to December 17, 2020. Specifically, Respondent has alleged and documented its preparations to use the domain name—including its efforts to generate leads for buyers and sellers, its advertising efforts, its development of its website, and its various partnerships—as far back as January 2018. Respondent also provided documentation of at least 16 sales completed through the disputed domain, at least some of which were completed on or before December 16, 2020.

Complainant does not appear to contest that Respondent was engaged in this business prior to notice of the dispute. Indeed, Complainant concedes that, at the time the Complaint was filed, Respondent’s website listed two businesses for sale. That alone is sufficient to support a conclusion that, before notice of the dispute, Respondent used the disputed domain name in connection with an offering of services.

The central question, then, is whether Respondent’s offering of services before the filing of the Complaint was bona fide. If Respondent’s use of the disputed domain name was infringing on Complainant’s trademark rights, then that use would not be bona fide for the purposes of establishing Respondent’s rights or interests in the disputed domain name. See Schouten Industries B.V. and Schouten Products B.V. v. Canadian Soylife Health Co. Ltd., FA0303000149188 (Forum July 19, 2003) (“Because Respondent’s adoption and use of the SOYLIFE mark was thus infringing, the majority holds that it cannot qualify as ‘bona fide’ for purposes of establishing a legitimate interest under the Policy.”). If, on the other hand, Respondent’s use of the disputed domain name prior to December 16, 2020 did not infringe or otherwise violate Complainant’s trademark rights, then Respondent’s use would have been bona fide and would support a finding that Respondent has rights or legitimate interests in the disputed domain name.

Although it is a close question, the Panel finds that Respondent has satisfied its burden of production by coming forward with evidence that supports a finding that its use of the disputed domain name was bona fide. The Panel also finds that, although Complainant offers some credible arguments in support of its assertion that Respondent’s use of the disputed domain name was infringing, Complainant has not met its burden of proving that infringement by a preponderance of the evidence.

Respondent has provided uncontested documents demonstrating, among other things, its preparations for use of the disputed domain, its sales through the website to which the disputed domain name resolves, and that its design of its website was based on a Themify template. These facts are consistent with Respondent’s claim that it was making a bona fide use of the domain name prior to being notified of this dispute. Further, although Respondent appears to have been aware of Complainant and its website, Respondent argues that it selected the disputed domain name because it wanted to portray its ability to buy and sell empires (and smaller businesses as well), not because it wanted to deceive consumers into believing that Respondent was, or was affiliated with, Complainant. Notably, Respondent selected a domain name that starts with a term other than “empire,” which helps to distinguish Respondent’s domain name from Complainant’s trademark, and did not use a term confusingly similar to the “flippers” component of the mark. Had Respondent instead registered as its domain name a term such as <empirebuysell.com>, which more closely mirrors the structure of Complainant’s trademark and domain name, or had Respondent selected a domain name that included the “flippers” component, such as <flipempires.com>, the Panel might have reached a different conclusion. Although it is a close question, and though Respondent’s assertion that it wanted to portray its ability to buy and sell empires is a bit strained, on balance, the Panel finds that Respondent did produce evidence that supports its assertion that it selected this domain name in order to communicate a feature of its business, not in order to confuse consumers into thinking that Respondent’s website was, or was associated or affiliated with, Complainant and its website.

The Panel also notes Complainant’s long delay in filing the Complaint as a factor weighing in favor of Respondent’s claim of bona fide use of the domain name. Mere delay between a respondent’s registration and a complainant’s filing of a complaint does not bar complainant’s success in a UDRP action, because a complainant cannot reasonably be expected to perpetually monitor the Internet or immediately enforce each potential instance of trademark abuse. See WIPO Decision Overview 3.0, § 4.17. Respondent has produced uncontested evidence, however, that the parties interacted via Facebook in October 2018 regarding a Quora post mentioning both Complainant and Respondent, indicating that Complainant likely was aware of Respondent by October 2018 at the latest, more than two years before Complainant filed the Complaint in this case. In the meantime, Respondent invested significant amounts of time and money building its business at the disputed domain. Although laches is not a defense to a UDRP action, Complainant’s two-year delay in filing the Complaint undermines Complainant’s claim of obvious trademark infringement and supports Respondent’s contention that its use of the disputed domain name was bona fide. Id. (“Panels have however noted that in specific cases, certain delays in filing a UDRP complaint may make it more difficult for a complainant to establish its case on the merits, particularly where the respondent can show detrimental reliance on the delay.”).

Complainant, on the other hand, has not satisfied its burden of refuting Respondent’s evidence and proving that Respondent’s use was not bona fide. Complainant’s contention that Respondent used the disputed domain name only for deceptive and improper business purposes is merely conclusory. Complainant asserts that Respondent is a competitor of Complainant, but Complainant has offered no evidence of the markets in which the parties compete or the existence of any instances of actual confusion (despite the parties’ approximately three years of coexistence). Nor has Complainant provided evidence of the strength of Complainant’s mark (including whether other companies similarly use the term “empire” in connection with the sale and purchase of business) and whether sophisticated customers would likely be confused (which is another key consideration in assessing trademark confusion).

Complainant has provided documentation in support of its contention that Respondent copied certain elements of the layout, design, and content of Complainant’s website. In response, Respondent provided evidence that its website layout was based on a stock website template, which undermines Complainant’s contention that Respondent attempted to mislead consumers by copying Complainant’s website. Again, although this fact raises close questions, on balance, the Panel finds Respondent’s explanation credible.

Because the question of Respondent’s rights or legitimate interest in the disputed domain name raised a close question, the Panel wants to be clear about the limitations of this conclusion. The Policy provides a streamlined, efficient administrative proceeding for adjudication of certain domain name disputes. Proceedings under the Policy do not provide the parties with the opportunity to take discovery, and do not provide the Panel with the opportunity to assess credibility through live testimony. For these reasons, the Panel is ill-equipped to make a conclusive finding on whether Respondent’s domain name actually infringes Complainant’s trademark rights. If the parties were to engage in litigation, Complainant might be able to develop sufficient evidence to persuade a fact-finder that Respondent did infringe Complainant’s mark, and this decision does not foreclose such a remedy. However, Complainant has not carried its burden of making that showing on this record. Specifically, Complainant has failed to prove, by a preponderance of the evidence, that Respondent’s use of the disputed domain name to offer brokerage services was not bona fide.

Accordingly, for the foregoing reasons, Complainant has not proven that Respondent has no legitimate rights or interests in the disputed domain.

Registration and Use in Bad Faith
Whether Respondent registered and used the disputed domain name in bad faith also is a close question.

Respondent’s assertion that it chose the word “empire” simply for its descriptive properties is not fully credible. Respondent concedes that it was aware of Complainant and its website prior to registering the disputed domain name. At the very least, regardless of whether Respondent was aware that Complainant had registered the EMPIRE FLIPPERS mark, one could reasonably infer that Respondent chose the domain name <buysellempire.com> because Complainant operated a successful website brokerage business under a similar name and Respondent wanted to operate a comparable business with comparable success that consumers would associate with Complainant. It is equally plausible, though, that Respondent did not act with objective bad faith and that Respondent believed its conduct was permissible; after all, not every effort at mimicry rises to the level of trademark infringement, and it may simply be that Respondent wanted to communicate that it was a different company that offered similar services.

Given these alternative, plausible inferences, whether Respondent registered and used the disputed domain name in bad faith is a close question. Because the burden of proof is on Complainant, though, and because Respondent has put forward a credible explanation, the Panel concludes that, on this record, Complainant has not proven that Respondent registered and used the disputed domain name in bad faith.

Reverse Domain Name Hijacking
Respondent alleges that, by filing the Complaint, Complainant has engaged in Reverse Domain Name Hijacking. The Panel disagrees. Although Complainant is ultimately unsuccessful in this case, Complainant had good faith grounds for bringing its Complaint.

There are numerous credible aspects to Complainant’s contentions. As noted above, the questions of whether Respondent’s offering of services through the disputed domain were bona fide and whether Respondent registered and used the disputed domain in bad faith are close questions. The Panel concludes that Complainant has not offered sufficient evidence to support its claims, but those claims were nevertheless credible and supported by evidence (including the similarity of the domain names and of the website design).

Respondent’s allegations of reverse domain name hijacking are accordingly rejected.

DECISION
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the <buysellempire.com> domain name REMAIN WITH Respondent.

David H. Bernstein, Panelist
Dated: January 27, 2021

In November 2020, domain name FinWise.com was sold for $4190 at DropCatch.com auction (reports NameBio.com). While Finwise BV happens to be the name of a Belgium based financial advisory company, having official website at finwise.eu.

The website reads that Finwise was founded in 2016 and focuses on early stage fundraising advisory. They also own a Trademark with EUIPO. They brought up a UDRP immediately thereafter in November itself.

The Respondent Mr Anne Jan Hempenius of NameAvenue opted for a three member panel but still lost the UDRP, the decision is pending pubication.

The three member panel included Badgley Robert A., Kennedy Matthew (Presiding) and Petillion Flip Jan Claude.

More details: WIPO Case No: D2020-3135

A well known criminal lawyer from Norway, Mr Per Danielsen brought a UDRP before NAF over the domain name advokat-danielsen.com. The website has the following summary in a local language and further information on the website:

As a former client of lawyer Per Danielsen, I would like to share my expensive experience.

If you do not have time to read everything, then the short message is that I would STRONGLY WARN against the use of the fraudsters Per Danielsen, Håkon Danielsen and the law firm Danielsen & Co. AS.

If there is one thing I am not proud of, it is the day we chose to focus on Per Danielsen.  But in my defense we were entrepreneurs with little legal experience, and with lawyers, judges and such.

And we thought Danielsen’s marketing on his own website: That he had experience with libel cases.  Nothing should turn out to be from the truth. About. 20 pages of process papers were to cost us close to NOK 700,000, – and that in a case that we lost !

The Complaint is a registered company but does not hold any Trademark rights in the firm name. While the Respondent claimed to have right to freedom of speech and expression under the Universal Declaration of Human Rights article 19 under which he shared his bad experience upon the Domain Name. The Respondent further claimed the lack of Trademark rights with the Complainant and added there are numerous Lawyers in Norway with similar name, so the Complainant does not have exclusive rights in the domain name.

The Respondent also argued:

If lawyer Danielsen thinks that I have overthrown my rights of free expression, he is free to take me to the Norwegian court. But he has not done so because we both know that what I share with the public is the actual truth. The website at <advokat-danielsen.com> is not a commercial site. It is an information site where I share my experience with Per and Håkon Danielsen. There is absolutely no chance for any visitor to be misled. I don’t make money on any advertising or anything else.

The Panelist analyzed the unregistered or common law rights in the mark in terms of WIPO overview and that means the Complainant is required to prove secondary meaning in the name. Relevant evidence demonstrating such acquired distinctiveness includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.

Further, rights in the personal name in terms of Para 1.5 of WIPO Overview 3.0, which clearly lays down that such rights can be upheld only where the name in question is used in commerce as a distinctive identifier of the complainant’s goods or services.

The Panelist held that having a similar domain name <advokat-danielsen.no>, no use of name in Trade or Commerce, registration of firm name with the Norwegian official register of companies since February 17, 2000, does not give any rights to the Complainant under first clause of the UDRP Policy. Accordingly, the Panel held:

Complainant has failed to establish that it has rights in a trade or service mark. Under these circumstances the Complaint must fail and it is unnecessary and inappropriate for the Panel to consider the remaining elements.

DECISION
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the <advokat-danielsen.com> domain name REMAIN WITH Respondent.