Decision

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

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

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

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

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

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

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

The Center appointed Christopher J. Pibus, Thomas Hoeren, and Jane Lambert as panelists in this matter on December 10, 2019. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

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

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

5. Parties’ Contentions

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

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

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

B. Respondent

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

6. Discussion and Findings

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Christopher J. Pibus
Presiding Panelist

Thomas Hoeren
Panelist

Jane Lambert
Panelist
Date: December 24, 2019

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

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

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

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

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

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

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

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

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

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

The Complete UDRP decision: 

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

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

The Respondent is Domain Registry, PeRiQuito Holding, Sweden.

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

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

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 October 24, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 13, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 15, 2019.

The Center appointed Jane Seager as the sole panelist in this matter on December 4, 2019. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background
The Complainant is the Chief Information Security Officer of the company BHP – a diversified resources company focused on mining, metals and petroleum.

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

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

5. Parties’ Contentions

A. Complainant

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

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

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

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

The Complainant requests transfer of the disputed domain name.

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

6. Discussion and Findings

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Jane Seager
Sole Panelist
Date: December 18, 2019

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

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

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

1. The Parties

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

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

2. The Domain Name and Registrar

The disputed domain name <carehealthinsurance.com> (the “Domain Name”) is registered with Uniregistrar Corp (the “Registrar”).

3. Procedural History

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

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

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 19, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 9, 2019. On October 8, 2019, the Respondent was granted the automatic four calendar day extension for response under paragraph 5(b) of the Rules. The due date for Response was October 13, 2019. The Response was filed with the Center October 13, 2019.

The Center appointed Willem J. H. Leppink, Harini Narayanswamy, and Richard G. Lyon as panelists in this matter on November 15, 2019. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

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

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

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

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

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

5. Parties’ Contentions

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

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

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

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

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

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

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

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

6. Discussion and Findings

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Willem J. H. Leppink
Presiding Panelist

Harini Narayanswamy
Panelist

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

1. The Parties

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

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

2. The Domain Name and Registrar

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

3. Procedural History

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

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

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 21, 2019. Later that day, the Center received email communications from the respective Respondents. The Complainant submitted a Supplemental Filing on March 1, 2019.

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

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on March 28, 2019. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

5. Discussion and Findings

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

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

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

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

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

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

A. Identical or Confusingly Similar

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

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

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

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

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

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

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

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

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

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

B. Rights or Legitimate Interests

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

The Panel rejects that claim out of hand.

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

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

6. Decision

For the foregoing reasons, the Complaint is denied.

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

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

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

1. The Parties

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

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

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2018. On June 14, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 15, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

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

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 8, 2018. On June 26, 2018, the Respondent requested the automatic four-day extension of the deadline to file a Response under paragraph 5(b) of the Rules. The Center granted the requested extension and confirmed that the new deadline for Response was July 12, 2018. The Response was filed with the Center on July 12, 2018.

The Center appointed Antony Gold as the sole panelist in this matter on July 26, 2018. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant produces high-quality menswear. It was founded in 1939 in Nagold, Germany and now has about 300 employees.

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

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

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

5. Parties’ Contentions

A. Complainant

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

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

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

B. Respondent

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

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

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

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

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

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

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

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

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

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

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

6. Discussion and Findings

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

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

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

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

A. Identical or Confusingly Similar

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

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

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

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

B. Rights or Legitimate Interests

Section 2.1 of the WIPO Overview 3.0 explains that; “While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name”.

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

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

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

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

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

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

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

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

C. Registered and Used in Bad Faith

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

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

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

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

D. Reverse Domain Name Hijacking (“RDNH”)

Paragraph 15(e) of the Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. RDNH is defined under the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain name holder of a domain name”.

Section 4.16 of the WIPO Overview 3.0 sets out a number of the circumstances which UDRP panels have considered as supporting a finding of RDNH. These include: facts which demonstrate that the complainant clearly ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint, unreasonably ignoring established Policy precedent notably as captured in the WIPO Overview 3.0, filing the complaint after an unsuccessful attempt to acquire the disputed domain name from the respondent without a plausible legal basis and basing a complaint on only the barest of allegations without any supporting evidence. Moreover, as section 4.16 of the Overview 3.0 explains, some panels have held that a represented complainant should be held to a higher standard.

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

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

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

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

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

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

7. Decision

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

Antony Gold
Sole Panelist
Date: August 9, 2018