Decision

Roesch Inc. v. DJA DANNER, CAC-UDRP-105419 
Complainant: Represented by: Mr. A Raheja (UDRPKing.com)
Respondent: No Response
Domain Name: IceMadeEasy.com

IDENTIFICATION OF RIGHTS
The Complainant, is an US company founded in 1916, which provides consistent expertise in porcelain enamel, stainless steel, other metals fabrication; food equipment manufacturing; home appliance manufacturing; Heating Ventilation Air Conditioning (HVAC); hearth, patio and BBQ manufacturing; construction and ICE Products, including its own line of Ice Merchandisers (Ice Maid Merchandisers) and related products.

The Complainant, among others, owns the following Trademarks:

-US Trademark ICE MAID, Reg. No. 1485183, IC 11, filed on January 6, 1986, registered on April 19, 1988 and in force until April 19, 2028.

-US Trademark ICE MAID, Reg. No. 4108191, IC 16, filed on June 23, 2011, registered on March 6, 2012, and in force until March 8, 2032.

-US Trademark ICE MADE EASY, Reg. No. 5223627, IC 16, filed on March 11, 2015, with a first use in commerce of August 31, 2016; registered on June 13, 2017; maintenance filed on March 10, 2023, most probably in force until June 14, 2027.

-US Trademark DEVICE Penguin Snowflakes Ice Cubes, IC 16, Reg. No. 5210953, filed on July 28, 2016, registered on May 23, 2017, and in force until May 24, 2027.

-US Trademark YOUR ONE-STOP SHOP FOR ALL THINGS ICE, IC 16, Reg. No. 5210954, filed on July 28, 2016, registered on May 23, 2017, and in force until May 24, 2027.

The disputed domain name <icemadeeasy.com> was created on January 7, 2014, and resolves to an active website with ‘Ice Vending Business’ references, listing Complainant’s competitors and potential malicious links.

FACTUAL BACKGROUND
The Complainant, was founded in 1916 as a porcelain enamel contract manufacturer. During the 1920s, the Complainant manufactured coal and gas residential cooking ranges. In the 1940’s the Complainant added metal fabrication capabilities, expanding its business activities as a custom job shop to the Heating Ventilation Air Conditioning (HVAC) and major cooking appliance manufacturers. In the 1970s, in order to offset cyclical sales of its products and services, the Complainant developed its line of Ice Merchandisers (Ice Maid Merchandisers) and related products. Today, the Complainant has developed expertise in food equipment manufacturing; home appliance manufacturing; HVAC; hearth, patio and BBQ manufacturing; construction and ICE Products.

Apart from its Trademarks, the Complainant owns the following domain names: <roeschinc.com>, created on July 16, 1996, and active since 1999; <icemaid.com>, <icemadeasy.com> (activated after the lapse of the disputed domain name <icemadeeasy.com>); <icedmaideasy.com>, <icedmadeeasy.com>, and <icedmadeasy.com> redirected to <icemadeasy.com>.

The disputed domain name <icemadeeasy.com> was created and registered by the Complainant on January 7, 2014; and renewed on December 2021 until its expiration date, being January 7, 2023. The Complainant inadvertently missed out the disputed domain name’s renewal. By February 14, 2023, the disputed domain name appeared registered by the Registrant with a different Registrar. By the time of this Decision, the disputed domain name, resolves to an active website with ‘Ice Vending Business’ references, listing Complainant’s competitors and potential malicious links.

PARTIES CONTENTIONS
Response

The Respondent did not submit any communication during the entire proceeding, nor has submit its Response replying to Complainant’s contentions.

Complainant Contentions:

The Complainant contends that it has been in existence since 1916 and that is the only one in the world to have conceived and adopted the trademark ICE MADE EASY in 2015-16, duly registered before USPTO; that the disputed domain name <.com> is confusingly similar to its trademark ICE MADE EASY (based on Section 1.7 of the WIPO Overview 3.0).

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name, due to the Respondent is not affiliated with the Complainant in any way to make use of the ICE MADE EASY trademark; that the disputed domain name is the result of a recent acquisition date of mid-February, 2023, while the Complainant has painstakingly built up a global reputation and has invested a substantial amount of resources in promoting its product under the trademarks ICE MADE EASY, ICE MAID EASY, ICE MAID.

The Respondent had no rights to incorporate the trademark ICE MADE EASY in the disputed domain name or otherwise to render any services, in relation to Ice Merchandisers or Ice Bags or Ice Vending Machines; that the misleading webpage at the disputed domain name along with active MX records only reinforces the (false) association between the Complainant and the disputed domain name and leads to confusion and deception.

The Complainant contends that has not authorized the Respondent either as a licensee, vendor, supplier, distributor, or customer relations agent for Complainant’s products or related services; that any person or entity using the mark/name ICE MADE EASY in any manner is bound to lead customers and users to infer that its product or service has an association or nexus with the Complainant and lead to confusion and deception.

That due to Complainant’s prior rights in the trademark ICE MADE EASY and the goodwill and reputation vested in the Trademark in terms of the prior use, it is evident from the current website that the sole purpose behind the Respondent in registering the disputed domain name was to take undue advantage of the Complainant’s trademark ICE MADE EASY; that the current web pages use referral links (to earn commission) to Amazon.com/.in and specifically provide for the competing websites that sell ICE Merchandisers; that the Respondent’s registration and use of the disputed domain name is a clear case for cyber-squatting, that its intention was to take advantage of the Complainant’s substantial reputation and goodwill in order to confuse the public and the viewer by offering similar products/services, divert business, tarnish the reputation and goodwill of the Complainant; that the said usage is certainly not in terms of paragraphs 4(c)(i) or 4(c)(iii) of the Policy, as neither the demonstrable preparation to use is a bonafide offering of goods or services nor a legitimate non-commercial or fair use of the disputed domain name; that instead, the Respondent is deliberately trying to portray a connection between the disputed domain name and the Complainant.
The Complainant also contends, that the disputed domain name incorporates a trademark neither owned by Respondent nor is the Respondent commonly known by the disputed domain name <icemadeeasy.com> either as an individual, business or any other organization.

The Complainant asserts that it is inconceivable that the disputed domain name was registered without full knowledge of the existence of the Complainant and its trademark; that the present webpage displaying information about products, previously featured on the Complainant’s official website, clearly indicates the Respondent’s actual knowledge; that the initial parking page at the disputed domain name, made reference to Ice Bags, covered explicitly by the Complainant’s trademark registration. Moreover, the current webpage includes references to products offered by the Complainant through the disputed domain name till January 2023 – Ties, Koolaire Ice Machine, Leer Ice Merchandiser and also lists competitor ‘Sites that Sell Ice Merchandisers’, showing the actual knowledge of the Respondent as to the Complainant and the website previously at the disputed domain name <icemadeeasy.com>; that the Respondent/Registrant must have obtained such knowledge at the time of acquisition/registration of the disputed domain name from the search at WIPO Trademark database or Web archives at <archive.org> or otherwise even a simple Google search for “ICE MADE EASY” which evidences the popularity of the Complainant’s trademark and its previous use.

That the Respondent cannot be said to have legitimately chosen to use the disputed domain name unless it sought to create an impression of an association with the Complainant. Since there is no such authorized association, the Respondent’s use of the disputed domain name cannot be said to be legitimate; that rather, there is prima facie proof of the Respondent’s intent to usurp the reputation of the Complainant and make illegal gains off its worldwide reputation and goodwill. Suffice it to state that the said usage of the disputed domain name by the Respondent has the propensity to cause irreparable loss to the goodwill and reputation of the Complainant.

The Complainant contends that the disputed domain name resolves to a website displaying products that were previously being sold through the disputed domain name. The Complainant submits that the Respondent is not authorized by the Complainant to make use of the disputed domain name in any form, instead, it has been registered to impersonate in order to create consumer confusion and lure prospective customers seeking the Complainant’s products, in accordance to paragraph 4(b)(iv) of the Policy: “By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

The Complainant asserts that on March 23, 2023, attempted to serve a Cease & Desist notice to the Respondent, through the Domain Registrar, but that the Domain Registrar did not cooperate and alternatively, the Complainant’s officer had filled up the contact form on GoDaddy WhoIs page. Later, a misleading website came up at the disputed domain name, offering products previously offered by the Complainant.

The Complainant asserts that there are active MX Records, indicating that the disputed domain name is in use for phishing or other illegal activities; that the Complainant used the disputed domain name <icemadeeasy.com> for more than seven (7) years and uses more similar domain names like <icemaid.com> and <icemadesay.com>. Hence, any individual coming across the disputed domain name or an associated email ID ending with “@icemadeeasy.com” may assume it to be the Complainant’s website/email and instantly associate the same with the Complainant; that the same is very much evident from the active MX records for the disputed domain name.
That the Respondent made use of a Domain Proxy service by the Domain Registrar to shield its identity. Although the use of a privacy or proxy registration service does not indicate bad faith as such, however the manner in which such service is used can in certain circumstances constitute a factor indicating bad faith; that the use and registration of the disputed domain name are clearly intended to capitalize on consumer confusion for Respondent’s profit, a bad faith use under the Policy’s 4(a)(iii).

RIGHTS
The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

NO RIGHTS OR LEGITIMATE INTERESTS
The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

BAD FAITH
The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

PROCEDURAL FACTORS
The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

PRINCIPAL REASONS FOR THE DECISION
The Complainant has sufficiently proved before the Panel, that owns Trademark Rights over the following terms, valid for the purposes of the Policy and of this case:

-US Trademark ICE MAID, Reg. No. 1485183, IC 11, filed on January 6, 1986, registered on April 19, 1988 and in force until April 19, 2028.

-US Trademark ICE MAID, Reg. No. 4108191, IC 16, filed on June 23, 2011, registered on March 6, 2012, and in force until March 8, 2032.

-US Trademark ICE MADE EASY, Reg. No. 5223627, IC 16, filed on March 11, 2015, with a first use in commerce of August 31, 2016; registered on June 13, 2017; maintenance filed on March 10, 2023, most probably in force until June 14, 2027.

The Panel notes that the relevant Trademarks submitted by the Complainant being Roesch Inc. has been assigned to Roesch Acquisitions, LLC. Despite that the Complainant has not provided the required authorization from the current Trademark Owner, the Panel based on Paragraph 10 of the Rules, exceptionally, considering the nature of this case, and the extensive evidence submitted for this case, is ready to infer the affiliation between the two entities and the issuance of such authorization without interferences.

The disputed domain name <icemadeeasy.com> reproduced in its entirety the Complainant’s Trademark ICE MADE EASY, being identical; or confusingly similar in respect of Complainant’s Trademarks ICE MAID.

“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.

This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. (This may also include recognizability by technological means such as search engine algorithms.) In some cases, such assessment may also entail a more holistic aural or phonetic comparison of the complainant’s trademark and the disputed domain name to ascertain confusing similarity.

While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where 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.” (see Section 1.7 of the WIPO Overview 3.0).

Regarding the gTLD, it is well established by the Domain Name Jurisprudence that for the purposes of the analysis of the First UDRP Element, in this case, the gTLD “.com”, “is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test” (see Section 1.11.1 of the WIPO Jurisprudential Overview 3.0).

Therefore, the disputed domain name <icemadeeasy.com> is identical or confusingly similar to Complainant’s Trademarks.

According to the evidence submitted before this Panel, in relation to the Second UDRP Element, to this Panel it is clear that:

the Respondent registered the disputed domain name on February 14, 2023, previously owned by the Complainant since its creation/registration on January 7, 2014, and built a website who looks for revenues, based on Complainant’s original website, Complainant’s Ice line of business and its Trademark Rights owned at least since 2016 (Reg. No. 5223627).

the Complainant has never granted the Respondent any authorization, license or right to make any use of the Complainant’s trademark ICE MADE EASY, or apply for registration of the disputed domain name by the Complainant; that nor is the Respondent affiliated to the Complainant in any form nor a vendor, supplier, distributor, or customer relations agent for Complainant’s products or related services.

the Respondent´s use of the disputed domain name is far from being a legitimate noncommercial or fair use of the domain name, or even less, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue, in accordance to paragraph 4(c)(iii) of the Policy, since not only leads customers into a false association and confusion, which could it be the “best-worst” scenario, but certainly the potential risks for customers’ data, and complex fraud’s online scenarios, where any Internet user can be involved.

the Respondent has been identified as “DJA DANNER”, and no evidence suggests that it corresponds or has become commonly known by the disputed domain name or owns any corresponding registered trademark including the terms “icemadeeasy.com”.

Therefore, this Panel finds that Complainant has successfully made a prima facie case, which was not rebutted in any manner by the Respondent, and concludes that the Respondent have no rights or legitimate interests in respect of the disputed domain name.

In relation to the Third Element of the UDRP, this Panel finds the following:

Registration in Bad Faith:

It is a fact that the change of Registrant in the disputed domain name, it is the result of a [significant] Complainant’s omission. Fact that, solely, does not necessarily constitute evidence of a respondent´s bad faith registration.

In the present case, according to the Registrar Verification, the Respondent acquired the disputed domain name on April 27, 2023. However, according to the Complainant’s submitted [substantive] evidence, the Complainant lost control over the disputed domain name by February 14, 2023. Despite such differences in the timeline, this Panel, considering the Complainant’s prior Trademark Rights existence (since 2016), consistent presence and relevance of its business (since 1916), the nature of the disputed domain name’s website content which is based in the Complainant, and the total absence of Response, concludes that the Respondent at the time of the registration/acquisition of the disputed domain name did it with Complainant’s on mind.

The Complainant owned the disputed domain name for 9 consecutive years, and performed a substantive investment of time and resources on its Intangible Assets, in particular over its Trademarks, to develop, maintain, and provide its products and services for its customers in the market, including in the online one. Therefore, this Panel is convinced, that the acquisition of the disputed domain name by the Respondent was not coincidental (see IDR Solutions Ltd. v. Whois Privacy Corp, WIPO Case No. D2016-2156 and Supermac’s (Holdings) Limited v. Domain Administrator, DomainMarket.com, WIPO Case No. D2018-0540).

Section 3.2.1 of the WIPO Overview 3.0, provides the following consensus view in terms of additional bad faith consideration factors:

“Particular circumstances panels may take into account in assessing whether the respondent’s registration of a domain name is in bad faith include: […] (iii) the content of any website to which the domain name directs, including any changes in such content and the timing thereof, (iv) the timing and circumstances of the registration (particularly following a product launch, or the complainant’s failure to renew its domain name registration), […] (vi) a clear absence of rights or legitimate interests coupled with no credible explanation for the respondent’s choice of the domain name, or (viii) other indicia generally suggesting that the respondent had somehow targeted the complainant.” (emphasis added).

Therefore, this Panel concludes that the disputed domain name has been registered in bad faith.

Bad Faith Use

According with the records, and as stated by the Complainant, this Panel notes, that on its registration, on February 2023, the webpage at the disputed domain name hosted PPC links for the initial period that included reference to the ICE BAGS, and related products, linking to Complainant’s competing sites. Later, after the Complainant’s Cease and Desist Notice of March 23, 2023, the website’s content changed, offering products previously offered by the Complainant through the [older] disputed domain name’s website.

By the time of this Decision, the [main] text’s content of the disputed domain name’s website is as follows:

“How To Start An Ice Vending Business

Download Our Ice Vending Business

Start Up Guide

Starting a Successful Ice Vending Business

Free Ice Vending

Business Start Up Guide

How To Buy An Ice Vending Machine

Sample Ice Vending Machine Business Plans

How To Pick A Location For Your Ice Vending Machine

Enter your Name and Email Below For Instant Access

Free Reports:

Bread Ties For Sale on Amazon

Koolaire Ice Machine Reviews

Leer Ice Merchandiser Reviews

Sites That Sell Ice Merchandisers

Ice Made Easy”.

To this Panel, it is evident that the Respondent not only has full knowledge about the Complainant, but understands its business and the value of the Trademark ICE MADE EASY. Such use, mislead and generates confusion among the Complainant’s customers, which are not only from the US market, but the existence of the disputed domain name with active MX records, which enables the use for emails, in the wrong hands, in this case, has the potential, as addressed before by this Panel, not only to tarnish the Complainant’s Trademark efforts, goodwill, and prestige, but to put on risk the data, including the financial one, of any Internet User (see Telefonaktiebolaget LM Ericsson v. Registration Private, Domains By Proxy, LLC / Aha Tek, WIPO Case No. D2021-2813; BOLLORE SE. v. amadi bon, CAC-UDRP-105470; Novartis AG v. Kim Feltham, CAC-UDRP-105438) Hence, to this Panel, the disputed domain name’s use, unequivocally falls into paragraph 4(b)(iv) of the Policy.

Therefore, this Panel concludes that, the disputed domain name is being used in faith.

FOR ALL THE REASONS STATED ABOVE, THE COMPLAINT IS
Accepted

AND THE DISPUTED DOMAIN NAME(S) IS (ARE) TO BE
icemadeeasy.com: Transferred

PANELIST: Ms. María Alejandra López García
DATE OF PANEL DECISION: 2023-06-23

Presonate Zrt. v. Abhijit Mhetre
WIPO Case No. D2023-1106

1. The Parties

The Complainant is Presonate Zrt., Hungary, represented by Széles Law Office, Hungary.

The Respondent is Abhijit Mhetre, India, represented by Cylaw Solutions, India.

2. The Domain Name and Registrar

The disputed domain name <presonate.com> (the “Domain Name”) is registered with Name.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2023. On March 13, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 14, 2023, 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 March 22, 2023. In accordance with the Rules, paragraph 5, the due date for Response was April 11, 2023. On April 4, 2023, the Respondent requested four days extension to file its Response. On the same day, the Center granted the four calendar day extension for filing of the Response under paragraph 5(b) of the Rules. The due date for Response was extended to April 15, 2023. The Response was filed with the Center on April 14, 2023.

The Center appointed Jeremy Speres as the sole panelist in this matter on April 27, 2023. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On May 3, 2023, the Complainant submitted an unsolicited supplemental filing to the Center, which the Respondent objected to in an email reply on May 4, 2023.

4. Factual Background

The Complainant is a Hungarian company based in Budapest. No further information concerning the Complainant’s business is provided in the Complaint, however, based on the Complainant’s website, the Complainant offers presentation development and consulting services. The Complainant owns trade mark registrations for the mark PRESONATE in numerous jurisdictions, the earliest of which is Hungarian Trade Mark Registration No. 231437 for PRESONATE, in class 42, with registration date May 28, 2020.

The Respondent is an Indian individual who conducts business as a speaker and presenter on entrepreneurship, business modelling, marketing, and product positioning, having a passion for presentation.

The Domain Name was registered on February 20, 2011, and currently resolves to a parked page featuring pay-per-click advertisements unrelated to the Complainant’s business.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is identical to its registered PRESONATE mark, that the Respondent has no rights or legitimate interests in the Domain Name, and the Domain Name was registered or used primarily for the purpose of disrupting the Complainant’s business given that the Respondent allegedly expressed an intention to trade in the same industry, and the Domain Name has resolved to pornographic content in the past.

The Complainant contends in its supplemental filing that although the Domain Name was registered on February 20, 2011, the Domain Name was up for renewal every year since 2011. The Complainant is convinced that the Respondent’s continuous renewal of the Domain Name, not taking into consideration that the Complainant has the cited trade marks, evidences a bad faith registration, even if the original registration may not have been in bad faith.

B. Respondent

The Respondent contends as follows. The Complaint is fatally flawed given that the Complainant does not allege conjunctive bad faith use and registration of the Domain Name. The Complainant’s trade mark applications were all filed, and the Complainant’s company was only incorporated, years after the Respondent registered the Domain Name in 2011. Thus, the Respondent could not have targeted the non-existent Complainant when it registered the Domain Name.

The Respondent filed an affidavit, signed before a notary, in which he explains that he conceived of the Domain Name for use in relation to  resonating presentations, with the Domain Name consisting of a portmanteau of “presentation” and “resonate”. The Respondent claims to have used the Domain Name for his personal blog relating to communication, presentation, entrepreneurship, and presentation skills, and therefore he enjoys rights and legitimate interests in the Domain Name. As regards the Complainant’s allegation on the prior use of the Domain Name for pornography, the Respondent states that the Domain Name did resolve to pornographic content for a period of four days in 2021 due to a technical glitch that has since been resolved following the Respondent’s abuse report to the concerned Registrar.

The Respondent requests a finding of Reverse Domain Name Hijacking (“RDNH”) because the Complainant lodged the Complaint after having failed to convince the Respondent to sell the Domain Name to it, with the Complainant being represented by legal counsel who should have known that the Complaint could not succeed.

6. Discussion and Findings

6.1 Preliminary Issues
A. Parties’ Supplemental Filings

On May 3, 2023, after the panel appointment, the Complainant made an unsolicited supplemental filing. This filing contains contentions regarding the registration and use of the Domain Name in bad faith. Paragraph 10 of the Rules provides panels with the authority to determine the admissibility, relevance, materiality, and weight of the evidence, and also to conduct the proceedings with due expedition. Accordingly, unsolicited supplemental filings are generally discouraged, unless specifically requested by the panel, pursuant to its general powers under paragraph 12 of the Rules. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.6.

However, in view of the fact that the Response contained allegations of RDNH against the Complainant, and in the circumstances of this case, the Panel finds that it is in the interests of justice for the Complainant to be given an opportunity to respond to the Respondent’s allegations, which the Complainant does in its supplemental filing.

In accordance with paragraph 10(d) of the Rules and in the interests of ruling on the basis of the fullest record possible, the Panel will admit the Complainant’s supplemental filing of May 3, 2023, and take it into consideration according to its relevance, materiality, and weight.

On May 4, 2023, the Respondent replied to the Complainant’s unsolicited supplemental filing, objecting to its consideration by the Panel, and requesting additional time within which to provide a reply.

Since the Panel finds that it can proceed to a Decision on the available case file, and in view of the Decision outcome, the Panel need not consider the Respondent’s supplemental filing or the request for additional time in which to file one.

6.2 Substantive Issues 

A. Identical or Confusingly Similar 

The Domain Name is plainly identical to the Complainant’s registered PRESONATE mark. The Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

In light of the Panel’s findings below in relation to bad faith, it is not necessary to consider the issue of rights or legitimate interests.

C. Registered and Used in Bad Faith

The Respondent’s evidence conclusively establishes that the Respondent registered the Domain Name in 2011, and that the Complainant was only formed as a business in 2019 (a fact which the Complainant neglected to include in the Complaint). Given that the registration of the Domain Name predates the formation of the Complainant’s business and all of the Complainant’s trade mark registrations, and in the absence of any other evidence suggesting any targeting of the Complainant, there is no basis for claiming that the Respondent registered the Domain Name in 2011 with the Complainant in mind (who did not exist at the time).

The Complaint must therefore fail given the conjunctive nature of the bad faith element, requiring bad faith registration and bad faith use. The Complainant’s contentions in its supplemental filing that bad faith registration can be determined at the time of renewals of the Domain Name do not advance the Complainant’s case. Firstly, the consensus view amongst panellists is that the mere renewal of a domain name registration by the same registrant is insufficient to support a finding of registration in bad faith (WIPO Overview 3.0 at section 3.9). Secondly, even if bad faith registration could be determined at the time of renewal, there is nothing in the Complaint to support the Complainant’s contention that the Respondent acted in bad faith at any stage. The only claim that the Complainant seems to provide to support that the Domain Name might have been used in bad faith is its proven use for pornographic content. However, the Respondent’s evidence, on affidavit, convincingly indicates that the redirection to pornographic content was not intentional, with the Respondent immediately taking steps to have the redirect removed upon being informed of it by the Complainant.

D. Reverse Domain Name Hijacking

The Panel finds that the Complaint was brought in bad faith, and a finding of RDNH is warranted, for the following reasons, all of which have previously been recognised by UDRP panels as grounds for finding RDNH (WIPO Overview 3.0 at section 4.16). The Complainant is represented, it being accepted that represented complainants are held to a higher standard than unrepresented ones (see Sixsigma Networks Mexico, S.A. DE C.V. v. DYNAMO.COM AUTORENEWAL AND DNS, WIPO Case No. D2022-4534). The Complainant clearly ought to have known it could not succeed under any fair interpretation of the facts which were available to the Complainant prior to filing the Complaint; the conjunctive requirement is well-established, the Domain Name was registered long before the Complainant adopted the mark and acquired any trade mark rights in it, and it was accordingly impossible for the Respondent to have registered the Domain Name with the Complainant’s mark in mind.

The Respondent’s evidence shows that, prior to filing the Complaint, the Complainant had made unsolicited attempts to purchase the Domain Name from the Respondent, and proceeded to file the Complaint after the Respondent declined them. The Complainant also failed to mention, in the Complaint, that it had approached the Respondent in this regard at all. It is clear that this is an improper purpose (see e.g., BERNINA International AG v. Domain Administrator, Name Administration Inc. (BVI), WIPO Case No.
D2016-1811).

7. Decision

For the foregoing reasons, the Complaint is denied, and the Panel finds the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

Jeremy Speres
Sole Panelist
Date: May 5, 2023

ADMINISTRATIVE PANEL DECISION
VGW Holdings Limited v. 신현두 (Hyundoo Shin)
Case No. D2023-0345

1. The Parties

The Complainant is VGW Holdings Limited, Australia, represented by Kiran Singh, Australia.

The Respondent is 신현두 (Hyundoo Shin), Republic of Korea, represented by CyLaw Solutions, India.

2. The Domain Name and Registrar

The disputed domain name <vgw.com> is registered with Inames Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2023. On January 25, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 26, 2023, 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.

On February 20, 2022, the Center notified the Parties in both English and Korean that the language of the registration agreement for the disputed domain name is Korean. On February 23, 2022, the Complainant requested for English to be the language of the proceeding. On February 25, 2023, the Respondent requested Korean to be used for the language of the proceeding and for a translation of the Complaint into Korean. On March 2, 2023, the Center requested the Complainant to provide a translation of the Complaint
into Korean by March 7, 2023. The Complainant submitted the translated version of amended Complaint on March 7, 2023.

The Center verified that the Complaint and the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 9, 2023. In accordance with the Rules, paragraph 5, the due date for Response was March 29, 2023. The Response was filed with the Center on March 21, 2023.

The Center appointed Kathryn Lee as the sole panelist in this matter on April 5, 2023. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is an Australian company that has developed and operated an online social casino-style gaming portal at domain name <vgw.co> since 2010. It has several trademark registrations for the VGW mark, including Australia Registration No. 1762758 (registered on April 4, 2016), Canada Registration No. TMA1053015 (registered on September 6, 2019), and United States Registration No. 5461472 (registered on May 8, 2018).

The Respondent is an individual with an address in the Republic of Korea.
The disputed domain name was registered on August 4, 2002, and resolves to a parking page with an offer for sale and lease.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name consists of “vgw” and is therefore identical to the VGW trademark in which the Complainant has rights.

The Complainant also contends that the Respondent has no rights or legitimate interests in the disputed domain name and confirms that it has not authorized or licensed rights to the Respondent in any respect.

The Complainant further contends that there is no evidence of 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.

Finally, the Complainant contends that the disputed domain name was registered and is used in bad faith.

The Complainant contends that the Respondent registered the disputed domain name primarily for the purpose of renting of selling it to the Complainant or profiting of exploiting the Complainant’s brand. The Complainant states that the Respondent has never made use of the disputed domain name and dating back to 2006, has offered the disputed domain name for sale. The Complainant further states that the Complainant experienced rapid growth during 2019 and 2022, and the Respondent suddenly specified the offer price to USD 150 million for sale and USD 90,000 per month for lease in December 2021, which demonstrates the Respondent’s opportunistic bad faith.

B. Respondent

The Respondent contends that he registered the disputed domain name in 2002, well before the Complainant was formed as a company, and that the disputed domain name consists of a three letter acronym which could have multiple interpretations, which does not target the Complainant or its trademark.

The Respondent further asserts that the Complaint constitutes reverse domain name hijacking.

6. Discussion and Findings

A. Language
Paragraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the registration agreement, unless otherwise agreed to by the parties, subject to the authority of the panel to determine otherwise. In this case, the language of the Registration Agreement is Korean, and both Parties have had an opportunity to argue their positions on this point. The Center issued a notice in Korean and English requesting the Complaint to be filed in Korean, and the Complainant submitted a Korean translation of the Complaint. The Respondent thereafter submitted a Response in English.

The Panel finds it proper and fair to render this decision in English. Primarily, the Complainant is based in Australia, and the Respondent has designated legal counsel based in India. Therefore, proceeding in English would be fair and procedurally efficient given the circumstances.

B. Identical or Confusingly Similar

The Complainant has demonstrated with supporting evidence that it has rights to the trademark VGW in a number of jurisdictions.

The disputed domain name solely consists of the term “vgw”, and is therefore, identical to the Complainant’s trademark.

For the reasons mentioned above, the Panel finds that the first element has been established.

C. Rights or Legitimate Interests

On the basis of the present record, there is no evidence that the Respondent improperly registered or obtained the disputed domain name with knowledge of the Complainant. In fact, the Complainant did not exist until eight years after the Respondent’s registration of the disputed domain name. Therefore, the Panel finds that the Complainant has not met its burden here with respect to the Respondent’s lack of rights or legitimate interests in the disputed domain name.

D. Registered and Used in Bad Faith

Section 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides that bad faith under the UDRP is “broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”. Here, the record in this case does not support a finding of bad faith.

First of all, the Complainant was not in existence when the Respondent registered the disputed domain name in 2002, and there is no evidence to suggest that the Respondent knew of the Complainant or its preparations to use the VGW mark when registering the disputed domain name. Therefore, he could not have registered the disputed domain name with bad faith.

Neither is there evidence of use of the disputed domain name in bad faith. The price that the Respondent asks for sale or lease of the disputed domain name may be viewed as excessive, but the offer to sell a disputed domain name without additional supporting factors showing an intent to take advantage of a trademark, does not necessarily indicate bad faith. See Section 3.1.1 of the WIPO Overview 3.0.

Therefore, the Panel does not find sufficient evidence of bad faith in this case.

E. Reverse Domain Name Hijacking

A finding of Reverse Domain Name Hijacking may be made if “the  Complainant knew or should have known at the time that it filed the Complaint that it could not prove that the domain name was registered in bad faith”, See Futureworld Consultancy Opty Ltd. v. Online Advice, WIPO Case No. D2003-0297.

Here, the disputed domain name was registered well before the Complainant acquired trademark rights or even came into existence, so it would have been impossible for the Respondent to have registered the disputed domain name to target the Complainant and its mark. The Complainant should surely have known that the Complaint could not succeed based on these facts, and proceeding with this Complaint can only be viewed as an attempt to deprive a registered domain-name holder of a domain name.

Therefore, the Panel finds that the Complaint was brought in bad faith, in an attempt at Reverse Domain Name Hijacking, and constitutes an abuse of the administrative proceeding.

7. Decision

For the foregoing reasons, the Complaint is denied.

Kathryn Lee
Sole Panelist
Date: April 19, 2023

Erase Technologies, LLC v. Web Presence LLC, NetReputation.com, WIPO Case No. D2022-3797

1. The Parties

Complainant is Erase Technologies, LLC, United States of America (“United States”), represented by Gibney, Anthony & Flaherty, LLP, United States.

Respondent is Web Presence LLC, NetReputation.com, United States, represented by Cylaw Solutions, India.

2. The Domain Name and Registrar

The disputed domain name <guaranteedremoval.com> (hereinafter the “Disputed Domain Name”) 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 October 11, 2022. On October 12, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 13, 2022, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on October 21, 2022. In accordance with the Rules, paragraph 5, the due date for Response was November 10, 2022, was extended to November 14, 2022. The Response was filed with the Center on November 14, 2022.

The Center appointed Lawrence K. Nodine, John C. McElwaine, and Gerald M. Levine as panelists in this matter on December 15, 2022. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant is a content removal company that specializes in the permanent deletion of negative material on websites and search engines. Complainant has owned the domain name <www.guaranteedremovals.com> since November 2013. Additionally, Complainant owns a New York State service mark registration for GUARANTEED REMOVALS (Reg. No. S25506; Registered April 26, 2022), a pending Florida State trademark application (Application No. W22000088220; filed on July 1, 2022), and one active pending U.S. federal trademark application (Application No. 97593365; filed on September 15, 2022) (the “GUARANTEED REMOVALS mark”).
Respondent provides web-design, web development, and SEO optimization services. Respondent registered the Disputed Domain Name on December 16, 2016, and used the website associated therewith to provide these reputation management services starting at the end of 2017.

Complainant contacted Respondent regarding its use of the Disputed Domain Name on March 21, 2022. Currently, the Disputed Domain Name resolves to an inactive webpage.

5. Parties’ Contentions 

A. Complainant
Complainant alleges that it has offered its services under the “guaranteedremovals.com” website since at least 2014, and now has 23,000 clients in the United States, as well hundreds of clients in 57 other countries. Complainant offers no evidence to support its allegations of use.

Complainant contends that its New York State service mark registration in conjunction with its years of use of the GUARANTEED REMOVALS mark establish that it has rights in the GUARANTEED REMOVALS trademark and that the Disputed Domain Name is confusingly similar thereto. Complainant further alleges that the singularizing of the GUARANTEED REMOVALS mark to GUARANTEED REMOVAL does not overcome a likelihood of confusion between the two marks. Complainant contends that through its use of its mark since 2014, it has established GUARANTEED REMOVALS as a global identifier for its services.

Complainant claims that Respondent is not making a bona fide or fair use of the Disputed Domain Name because the website associated with the Disputed Domain Name is currently inactive. Complainant charges Respondent with passive holding.

Complainant contends that Respondent registered and continues to use the Disputed Domain Name in bad faith. Specifically, Complainant states that  Respondent knew about the use of the GUARANTEED REMOVALS mark years prior to any direct contact with Complainant. Complainant further claims that Respondent’s USD 75,000 counteroffer to Complainant’s offer to purchase the Disputed Domain Name is evidence of bad faith under the Policy.

B. Respondent

Respondent replies that Complainant has no standing to bring this Complaint because Complainant does not have a federal trademark registration and Complainant has failed to prove secondary meaning in the GUARANTEED REMOVALS mark.

Respondent asserts that it has rights and a legitimate interest in the Disputed Domain Name because the Disputed Domain Name is composed of two common English dictionary words that have a descriptive and well known meaning that is wholly separate and that is related to Respondent’s service offerings.

Since 2014, it also has provided services in relation to reputation management, including the removal of negative online content, in the name of “NetReputation.com”.

Respondent contends (and supplies evidence) that it has made uninterrupted and continuous use of the Disputed Domain Name in relation to its dictionary meaning from 2017 until 2022.

Respondent states that it registered the Disputed Domain Name in good faith purely because it comprised a common phrase that is descriptive of its services. Respondent asserts that it only became aware of Complainant’s website in February 2018 when an individual employed by Complainant outsourced reputation management work to Respondent. According to Respondent, in June 2022 it deactivated the website associated with the Disputed Domain Name out of its respect for Complainant. Respondent also denies it provided a monetary demand to Complainant in exchange for the sale of the Disputed Domain Name.

6. Discussion and Finding

A. Identical or Confusingly Similar

The Panel finds that Complainant’s New York State service mark registration establishes that it has rights in the GUARANTEED REMOVALS mark. However, state trademark registrations are not always granted the same deference as national trademark registrations because they are sometimes issued automatically. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.2. This does not appear to be the case in New York where the New York State trademark registration statute and related regulations provide on their face for substantive review, including consideration of descriptiveness. See NY Gen Bus L § 360-A-C (2014) and regulations at https://dos.ny.gov/state-records-rules-and-regulations. Accordingly, “the exception in the Overview does not apply”. Paul McMann v. J McEachern, WIPO Case No. D2007-1597 (Massachusetts state registrations not issued “automatically”; Secretary of the Commonwealth exercises some scrutiny); Teresa Christie, d/b/a The Mackinac Island Florist v. James Porcaro, d/b/a Weber’s Mackinac Island Florist, WIPO Case No. D2001-0653 (Panel has no power to nullify Michigan state registration). Even though Complainant’s New York registration recites a design element, it is not dominant and Complainant was not required to disclaim the textual elements. WIPO Overview 3.0 section 1.10.

Accordingly, the Panel finds that Complainant has satisfied Policy paragraph 4(a)(1).

B. Rights or Legitimate Interests

The Panel finds that Respondent has legitimate interests in the Disputed Domain Name as prior to any notice of the dispute, Respondent was using the Disputed Domain Name in connection with a bona fide offering of services. See WIPO Overview, section 2.10.1. Respondent has submitted evidence of press releases and an archived webpage of the Disputed Domain Name from 2018 confirming Respondent’s use of the Disputed Domain Name in association with bona fide offering of negative content removal services.

See Dollar Bank, Federal Savings Bank v. Host Master / Jason Duke, WIPO Case No. D2016-0701. Publicly available archive webpages also confirm that the Disputed Domain Name was actively offering reputation management services until June 2022, shortly after Complainant contacted Respondent and demanded that it cease use of the Disputed Domain Name, thereby supporting Respondent’s claim that it deactivated the website in light of the dispute, and refuting Complainant’s allegation of passive holding.

Respondent has also offered substantial evidence of third party use of “guaranteed removal” descriptively.

The Panel finds that preponderance of evidence supports Respondent’s claim that it registered the Disputed Domain Name to exploit its descriptive connotations and not to exploit any alleged trademark rights of Complainant.

Therefore, Complainant has not satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel also finds that Complainant has failed to prove by a preponderance of the evidence that Respondent registered the Disputed Domain Name in bad faith. Respondent registered the Disputed Domain Name in 2016, more than five years before Complainant applied for its New York State trademark
registration in 2022. Although Complainant alleged widespread use since 2014, it did not submit any evidence to support the allegation, other than the declaration of its General Counsel that the “Company has been using the mark Guaranteed Removals in connection with their servi ces since at least as early as 2014”.

It is important to note that the Panel holds that there was insufficient evidence that Complainant would have acquired distinctiveness in the descriptive GUARANTEED REMOVALS mark prior to registration of the
Disputed Domain Name by Respondent. There is no basis, therefore, for the Panel to infer that Respondent was more likely than not aware of Complainant’s trademark rights when it registered the Disputed Domain
Name in 2016. The Panel finds that Complainant has failed to provide evidence of its purported extensive use of the GUARANTEED REMOVALS mark in 2016 when Respondent registered the Disputed Domain
Name.

Respondent candidly acknowledges that it learned of Complainant’s predecessor in 2018, when Complainant outsourced some work to Respondent. However, this knowledge was acquired well after the registration of the Disputed Domain Name in 2016 and, in any event, there is no evidence that Complainant objected at that time or made Respondent aware of a claim of trademark rights. Complainant offers no argument or evidence to rebut Respondent’s plausible contention that both parties used “guaranteed removal” as a descriptive term.

Because Complainant has failed to carry its burden to prove bad faith registration, the Panel will not address the bad faith use contentions.

D. Reverse Domain Name Hijacking

Paragraph 15(e) of the UDRP Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. WIPO Overview 3.0, section 4.16. That section of the Overview further provides a number of non-exclusive factors which, in appropriate circumstances, support a finding of RDNH. Such factors as may be relevant to the instant proceeding include: “the provision of false evidence, or otherwise attempting to mislead the panel”; and “the
provision of intentionally incomplete material evidence–often clarified by the respondent”.

The Panel finds Reverse Domain Name Hijacking because Complainant factually misleading allegations and key arguments that lacked a plausible legal basis.

First, Complainant relied in part on two federal trademark applications,  representing that “[b]oth applications are currently pending”. Complaint p. 7. This argument was factually misleading because Complainant did not disclose that it filed an “Express Abandonment” of the standard character application on the very same day that it filed the UDRP Complaint with the Center. The email submitting the Complaint was received by the Center on October 11, 2022 at 12:28 PM Eastern Time USA. Complainant filed the Express Abandonment of its application for the GUARANTEED REMOVALS word mark (Serial Number 97312285) in the United States Patent and Trademark Office (“USPTO”) about six hours later at “18:51:29 ET 2022”
(USPTO time stamp).

The Panel finds that, even though the allegation that the application was “pending” was technically correct when the UDRP complaint was filed, the Panel finds that the Express Abandonment was doubtless being prepared before it was filed. And, in any event, Complainant could have and should have amended its complaint to avoid misleading the Panel. It is immaterial that Complainant did not abandon both of its federal applications. Indeed, neither of the applications advanced Complaint’s case as applications confer no rights.

Policy paragraph 4(a)(i), WIPO Overview 3.0 section 1.1.4. It is Complainant’s effort to mislead the Panel that supports the finding of RDNH. It is not an excuse to say that the entire allegation was not misleading or
that the misleading allegations pertain to an argument that would not have succeeded.

Second, and similarly, Complainant alleged that “[a] Florida state registration currently pending,” but the exhibit to which it points recites “Rejected Filing”. Here again, the misleading allegation, which Complainant’s counsel certified under Rule 3(b)(xiii) as “accurate,” is not excused because the annexed evidence reveals the allegation’s falsity on its face.

Third, Complainant’s only contention with respect to Policy paragraph 4(a)(ii) is that Respondent was making no use of the Disputed Domain Name as of the filing of the complaint*, even though it well knew (and had alleged) that Respondent had been using the Disputed Domain Name to provide services for several years. (* The Complaint alleges that: “As of the filing of this Complaint, the Infringing Domain Name is not active in connection with any bona fide offering of goods or services. The inactivity of the website indicates that the Respondent does not have any rights or legitimate interests in the domain name . . . Since the Infringing Domain currently has no content, there is essentially no use of the domain name.”)

In essence, Complainant would penalize Respondent for taking down the site as it had insisted in its cease and desist letter, and then labeling this “passive holding”. This contention lacked any “plausible legal basis.” WIPO Overview 3.0, section 4.16.

7. Decision

For the foregoing reasons, the Complaint is denied.

Lawrence K. Nodine
Presiding Panelist

John C McElwaine
Panelist

Gerald M. Levine
Panelist

Date: January 5, 2023

Brillon Consumer Products Private Limited v. Sachin Khairnar, AllOut Pest Control India Pvt. Ltd., WIPO Case No. D2022-4063

1. The Parties

The Complainant is Brillon Consumer Products Private Limited, India, represented by Singh and Singh Law Firm LLP, India.

The Respondent is sachin khairnar, AllOut Pest Control India Pvt. Ltd., India, self-represented.

2. The Domain Name and Registrar

The disputed domain name <alloutindia.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 October 28, 2022. On October 28, 2022, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On October 31, 2022, 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 received an email communication from the Respondent on October 31, 2022. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant
filed an amended Complaint on November 1, 2022.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 2, 2022. In accordance with the Rules, paragraph 5, the due date for Response was November 22, 2022. On November 17, 2022, the Respondent requested for an extension to the Response due date. In accordance with paragraph 5(b) of the Rules, the due date for Response was extended to November 26, 2022. The Response was filed with the Center on
November 26, 2022.

The Center appointed Shwetasree Majumder as the sole panelist in this matter on December 2, 2022. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and
Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a manufacturer of household insecticides/mosquito repellents in various forms including coils, mats, liquid vaporizer apparatus, and liquid vaporizer refills under its mark ALL OUT. The Complainant’s mark ALL OUT is registered in India since February 11, 1988 under Indian Registration number 485591 in class 9, and under number 485592 in class 5.

The Complainant’s related entity owns the domain name <allout.in> registered on September 29, 2015.

The disputed domain name has been registered on July 28, 2013. The disputed domain name resolves to an active website where the Respondent offers pest control services. The Respondent established its business under the name All Out India in the year 2013. In the year 2015, the Respondent incorporated a company under the present name AllOut Pest Control India Private Limited.

The Respondent had filed an Indian trademark application number 2594089 for the mark ALL OUT in class 44 on September 10, 2013. This application was opposed by the Complainant on October 5, 2016, and the Respondent subsequently abandoned it. The Respondent then filed another Indian trademark application number 3705712 for ALL OUT (figurative mark) in class 37 on December 19, 2017. This application has also been opposed by the Complainant and the Respondent has been contesting this opposition. The
opposition proceedings are pending final adjudication at the Indian trademark office.

5. Parties’ Contentions

A. Complainant

The Complainant claims to be a renowned manufacturer and marketer of a wide range of household insecticides/mosquito repellents in various forms including coils, mats, liquid vaporizer apparatus, and liquid vaporizer refills under the mark ALL OUT. The Complainant claims to be using the mark ALL OUT in India in since 1988.

The Complainant’s brand-specific website “www.allout.in” contains information about the Complainant’s products under the brand ALL OUT and the domain name <allout.in> is registered since September 29, 2015.

The earliest registration for the Complainant’s trademark ALL OUT dates back to February 11, 1988 in India. The Complainant has submitted copies of the Indian registration certificates for its mark ALL OUT as Annex 8 with the Complaint.

The Complainant also claims that its mark ALL OUT is a well-known mark in India. The Complainant has submitted as Annex 5 to the Complaint extracts for its social media pages for its brand ALL OUT and also an order of the Delhi High Court as Annex 7 where it rights in ALL OUT were upheld.

The Complainant states that the disputed domain name is identical to its mark ALL OUT. The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant alleges that the Respondent’s action of adopting a deceptively similar domain name/mark is contrary to honest practices and results in infringement of the Complainant’s mark.

It is contended that the Complainant and the Respondent are engaged in the identical business of pest control. The Complainant states that the registration of the disputed domain name is clearly an attempt to attract internet users to the Respondent’s website and make them wrongly believe that the Respondent is connected to the Complainant in some manner, which brings the said act within the ambit of Paragraph 4 (b)(iv) of the Policy.

B. Respondent

In its response, the Respondent claims that the registration of the disputed domain name is prior to the Complainant’s registration of its domain name <allout.in> in the year 2015. It argues that the delay of 10 years in filing the Complaint ought to disentitle the Respondent.

The Respondent also states that the disputed domain name consists of a mark that has a dictionary meaning and is descriptive in respect of the services offered. The Respondent also contends that the disputed domain name is different from the Complainant’s domain name and trademark as the Complainant does not provide pest control services and that it has not registered its mark ALL OUT in class 37.

The Respondent also argues that its registered company name “AllOut Pest Control India Pvt., Ltd.,” has created a distinct identity in the market.

In support of its claims the Respondent relies on its certificate of  incorporation, web extracts of its social media pages, and copies of work orders to demonstrate that it is an ongoing business.

6. Discussion and Findings

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

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

A. Delay in Bringing the Complaint

Prior to going into the elements of Paragraph 4(a), the Panel makes a preliminary noting in relation to the Respondent’s apparent defence of delay and laches.

The disputed domain name has been registered since July 28, 2013 and the Complaint has been filed on October 28, 2022. The Annex with the Response indicates that the Respondent has been in business all this while. Admittedly, the Complainant has been aware of the Respondent’s use of the mark ALL OUT since the year 2016 when it opposed the Respondent’s Indian trademark application number 2594089. The Panel has considered the Respondent’s contention but notes that the defense of laches does not apply in UDRP proceedings. This view finds resonance in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.17.

Although section 4.17 observes, “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”, the test of “detrimental reliance” cannot come into play when clearly the Respondent has been put to notice of the Complainant’s registered trademark rights since October 5, 2016 when it opposed the Respondent’s trademark before the Indian trademark office. The Panel also notes that the fact that the Respondent chose at that juncture to abandon its trademark application goes against any notion that it (detrimentally) relied on any (in-)action on the part of the Complainant.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Panel does not agree with the Respondent’s contention that ALL OUT is a dictionary word or that it is descriptive. The Respondent itself had filed an Indian application for registration of ALL OUT as a trademark on September 10, 2013 and was therefore clearly taking the position that it was a trademark at that point in time. The Complainant has also got registered the ALL OUT trademark in India, making it clear that the Indian trademark office considered the term capable of serving a trademark function. The  Complainant’s trademark registrations are prior to the registration of the disputed domain name and are valid and subsisting today.

The disputed domain name incorporates the Complainant’s mark ALL OUT in its entirety, together with the term “India”. Referring to WIPO Overview 3.0, sections 1.7 and 1.8, this Panel notes that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity under the first element. In the present case, the Complainant’s mark ALL OUT is clearly recognizable in the disputed domain name and therefore the addition of “India” does not prevent a finding of confusing similarity. (See Hoffmann-La Roche AG v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org / Conan Corrigan, WIPO Case No. D2015-2316).

The generic Top-Level Domain (“gTLD”) “.com” is generally disregarded for the purposes of comparison under this element.

In view of the above-mentioned findings, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademarks and that the requirement of paragraph 4(a)(i) of the Policy  stands satisfied.

C. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. A complainant is normally required to make
out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name.

If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

The Panel is of the view that the Complainant has made out a prima facie case. To demonstrate rights or legitimate interests in a domain name, the defenses under UDRP paragraph 4(c) include that before any notice of the dispute, the respondent ought to have 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.

As a rebuttal to the Complainant’s prima facie case, the Respondent has demonstrated that the disputed domain name is being used to offer its pest control services long before any notice of the dispute. Page 4 of the Respondent’s Annex indicates that the Respondent started using the business name ALL OUT INDIA at least since 2013 and went on to incorporate a company (see page 5 of Annex to Response) by the name of All Out India Private Limited in the year 2015. Further, Pages 32 -52 of the Annex to Response are copies of work orders of the Respondent. These pertain to the years 2013, 2014, and 2015. Studying these work orders, the Panel observes that the Respondent has a sizable clientele in India.

The Respondent’s case is that the Complainant is neither providing pest control services nor has a trademark registration covering these services. The Annexes to the Complaint and the Complainant’s trademark registrations lead to the conclusion that the Complainant does not offer pest control services. The Complainant however additionally contends that its trademark ALL OUT is a well-known mark and also that pest control services (falling in class 37) are allied and cognate to its goods under classes 5 and 9.

In the above backdrop, the Panel considers that the issue of rights or legitimate interests essentially turns on answering the question: Can the Respondent’s use of the disputed domain name for pest control services
be considered bona fide under the defense under paragraph 4(c) of UDRP.
To answer this question, the Panel would have to adjudicate two critical issues which are clearly outside the remit of the present proceedings:

(i) Whether the Complainant’s trademark is well-known; and

(ii) Whether the Complainant’s trademark rights in relation to classes 5 and 9 can be said to be “allied and cognate” to pest control services under class 37, in respect of which the Respondent claims to have rights.

Both of these issues are already at the heart of the ongoing opposition proceedings at the Indian trademark office, where the Complainant on May 18, 2018 opposed the Respondent’s Indian application number 3705712 for ALL OUT (figurative mark) in class 37. The Panel observes that in the said proceedings the Complainant has argued that its mark ALL OUT is a well-known mark and the decision in the proceedings is awaited.

As the above recitation makes it clear that this is not a garden-variety  cybersquatting case. The only arguable reason that the Complainant is seeking relief in this forum is that the particular property at issue is a domain name. There are however wider trademark (registration and infringement) issues which have been placed before the Panel in the present case. These issues, are not suited for resolution under the Policy (see, for example, the observations of the UDRP panels in The Thread.com, LLC v. Jeffrey S. Poploff, WIPO Case No. D2000-1470; Kurt Garmaker d/b/a “Repetition Miniature Schnauzers” v. Hilde Haakensen, Axcium Design, WIPO Case No. D2015-0993; and IL Makiage Cosmetics (2013) Ltd. v. Mark Rumpler / Mordechai Rumpler / Domains By Proxy, LLC, WIPO Case No. D2015-2311). This Panel finds that it will be prudent for a court or tribunal of competent jurisdiction in India to adjudicate the rights of the parties in the mark ALL
OUT and the import of the Respondent’s business and rights, if any.
In these circumstances, the request for a determination on the merits of the Complaint must be rejected. In reaching this conclusion, although the Panel notes that the Respondent has withdrawn its first trademark application once opposed by the Complainant, and faces an opposition on its second one, the Panel takes no position on the merits of any wider dispute between the Parties. The Complainant remains free to seek remedies in other fora and the Panel notes for completeness that the present finding is confined to the Policy and that it does not seek to influence any such subsequent proceedings, should they be raised.

D. Registered and Used in Bad Faith

In light of the Panel’s finding above it is unnecessary for the Panel to address the topic of the Respondent’s bad faith under the third UDRP element.

7. Decision

For the foregoing reasons, the Complaint is denied.

/Shwetasree Majumder/
Shwetasree Majumder
Sole Panelist
Date: December 13, 2022