WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CyDen Limited v. Frank Reeves
Case No. D2007-0724
1. The Parties
The Complainant is CyDen Limited, of Wales, United Kingdom of Great Britain and Northern Ireland, represented by Ian Read, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Frank Reeves, of Limerick, Ireland, represented by Dermot G. O’Donovan & Partners Solicitors, Ireland.
2. The Domain Name and Registrar
The disputed domain name is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 16, 2007. On May 18, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On the same date, eNom 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”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 23, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was June 12, 2007. On June 6, 2007, the Respondent submitted a request for a two week extension to the due date for response. The Center, having taken into account the circumstances, including an objection from the Complainant, subsequently extended the due date for Response by three days, to June 15, 2007. The Response was received by the Center by email on June 18, 2007, and in hard copy on June 21, 2007. The Respondent subsequently indicated to the Center that it had experienced difficulties submitting its email Response, and that the hard copy Response had been sent by registered post on June 15, 2007. On June 20, 2007, the Complainant emailed the Center noting that the Respondent did not respond until June 18, 2007, three days later than the specified due date, and requesting that this be taken into account by the Panel. The Center acknowledged receipt of the Complainant’s communication, indicating that it would be conveyed to the Panel for information. On June 21, 2007, the Center acknowledged receipt of the Respondent’s hardcopy Response, which was received by the Center on that date, noting that the package containing said document bore registered post marking and a stamped date indicating postage on June 15, 2007.
The Center appointed Fabrizio La Spada as the sole panelist in this matter on July 13, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is a company that was established in Swansea, United Kingdom, in 2002. It has developed technology for cosmetic and medical therapies and distributes products under the “iPulse” name throughout the world.
The Complainant is the registrant of the domain name, where it operates its principal website. It is also the registrant of the domain, which was registered on July 11, 2006.
The Complainant is the owner of the following trademarks:
- Community trademark “IPULSE + device”, no. 005143649, filed on June 16, 2006 in international classes 9, 10 and 44.
- International trademark “IPULSE + device”, no. 850 460, registered on December 2, 2004 in several countries in international classes 9 and 10. The international trademark is based on UK trademark no. 2378762, dated November 24, 2004.
These trademarks show the word “ipulse”, with a logo consisting in a few dots over the word part of the mark. The word “ipulse” is clearly predominant.
The Respondent registered the domain name on May 10, 2002.
On September 1, 2003, the company iPulse Open Systems Limited was incorporated in Ireland. The evidence produced does not establish whether the company was, at the time, incorporated by the Respondent. However, such evidence shows that, at least in September 2006, the Respondent was a Director of this company. In addition, documents produced by the Complainant show that, on January 7, 2004, the registrant of the domain name was iPulse Open Systems Limited, with an email address and the Respondent registered as technical contact.
On April 21, 2006, the Complainant contacted the Respondent by email, stating the following: “I understand that you are the registered owner of the domain name? I am possibly interested in purchasing the domain name from you as it may be suitable for a project I’m working on. Could you please let me know what sort of price you are looking for?”
Between April and July 2006, the parties exchanged email correspondence concerning the sale of the domain name. The Respondent initially requested an amount of USD 7,000.00 for the sale of the domain name. On June 5, 2006, the Complainant agreed to pay the amount of USD 7,000.00 for the domain name and suggested to use an escrow account for the transaction. On June 18, 2006, the Complainant stated that it was organizing the transfer and escrow agreements. On June 15, 2006, the Respondent wrote to the Complainant requesting an update on the progress and stating that he would continue to accept offers for the domain name from serious bidders “until someone has closed the deal.”
On July 18, 2006, the Respondent wrote the following to the Complainant: “Thank you for your patience – The current bid for (12.5k EUR) so unless your budget extends higher than this I’m afraid I will take this higher offer.” On the same day, the Complainant replied that it was not interested and withdrew its previous offer, stating that it was disappointed that the Respondent having previously agreed a price had gone back on his word.
5. Parties’ Contentions
A. Complainant
Concerning the first test under the Policy, the Complainant submits that the domain name is clearly identical or confusingly similar to its registered trademarks.
Concerning the second test under the Policy, the Complainant contends that the Respondent has no legitimate interests in the domain name. The Complainant’s position is based on the fact that the Respondent admitted, in email correspondence, that the domain name was personally held, that it was intended to be used in connection with a business venture that failed, and that the domain name had not been used since the date of registration.
Finally, concerning the third test under the Policy, the Complainant states that it “believes that the Respondent is a cybersquatter who attempts to profit by reserving and reselling domain names back to companies who own a corresponding trademark”. In this respect, the Complainant points out that it agreed to the Respondent’s asking price of USD 7,000.00 plus escrow fees, but the Respondent later requested payment of a higher price. According to the Complainant, the Respondent demonstrated that he continued to seek a buyer for the domain name despite having agreed a sale price with the Complainant.
On this basis, the Complainant requests the transfer of the domain name.
B. Respondent
The Respondent disputes the Complainant’s allegations.
Concerning the first test under the Policy, the Respondent does not deny the similarities between the domain name and the Complainant’s domain name. However, Respondent states that there was no pre-existing trademark at the time he registered the domain name.
Concerning the second test under the Policy, the Respondent submits that he does have legitimate interests to the domain name.
First of all, according to the Respondent, the fact that the domain name does not resolve to a website and that it was registered in the Respondent’s name, or the fact that the domain name has not been used since its registration, are not sufficient by themselves to show that the Respondent has no rights or legitimate interests in respect of the domain name.
The Respondent states that he had a business plan to use the domain name in connection with a bona fide offering of goods or services when he registered the domain name. The Respondent acknowledges that this business did not take off as initially planned, but indicates that it is to be “re launched in the coming months”. According to the Respondent, the company iPulse Open Systems Limited, which he incorporated in 2003, is commonly known and referred to by the domain name.
The Respondent stresses that he registered the domain name on May 10, 2002, and incorporated the company iPulse Open Systems Limited in 2003, at a time when the Complainant’s trademarks were not yet registered. The Respondent could therefore not have been aware of such trademarks.
Concerning the third test under the Policy, the Respondent submits that he registered the domain name in good faith. He mentions in this respect that the domain name was registered for use in a business venture unrelated to that of the Complainant. In addition, it was registered before the Complainant registered its trademarks. According to the Respondent, there are ample authorities supporting the view that a trademark that did not exist at the time the disputed domain name was registered cannot serve as a basis for a claim under the Policy.
The Respondent also stresses that his offer to sell the domain name does not constitute bad faith in the light of the fact that he has a legitimate interest in the domain name. Further, the fact that the Respondent rejected the Complainant’s purchase offer does not suggest that the Respondent’s purpose in registering the domain name was primarily to sell it to the Complainant. The Respondent states that he was not aware of the Complainant’s rights when he registered the domain name, because such rights did not exist at that time.
The Respondent also contends that the domain name was not used in bad faith, as it was not used at all. In this respect, the Respondent submits that according to the doctrine of passive holding, there must be some evidence of knowledge of the Complainant’s rights by the Respondent in order to have bad faith in case of passive holding.
Finally, the Respondent states that there is no evidence to suggest that he has engaged in a pattern of conduct of registering domain names in order to prevent the owner of a trademark or service mark from reflecting the mark in a corresponding domain name.
The Respondent requests the Panel to make a finding of attempted reversed domain name hijacking.
6. Procedural Issue
The due date for Response, as extended by the Center, was June 15, 2007. The Response was received by the Center by email on June 18, 2007 and in hard copy on June 21, 2007. On June 20, 2007, the Complainant emailed the Center noting that the Respondent did not respond until June 18, 2007, three days later than the specified due date, and requesting that this be taken into account by the Panel. The Center acknowledged receipt of the Complainant’s communication, indicating that it would be conveyed to the Panel for information.
Paragraph 10(d) of the Rules provides that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence.” In addition, paragraph 10(a) provides that “[t]he Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules.” The Panel therefore has broad discretion in conducting the proceeding, provided however that it shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case (paragraph 10(b)), and that the administrative proceeding takes place with due expedition (paragraph 10(c)).
In the present case, there is evidence that the Response, although received by the Center on July 18/21, 2007, was emailed and mailed by the Respondent on July 15, 2007, within the deadline set by the Center. On this basis, and taking into account the fact that admitting the Response complies with the principles set out in paragraphs 10(b) and (c) of the Rules, the Panel considers that the Response is admissible.
7. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in these proceedings and obtain the transfer of the disputed domain name, the Complainant must prove that each of the three following elements is satisfied:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section A), and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name (see below, section B), and
(iii) The domain name has been registered and is being used in bad faith (see below, section C).
Paragraph 4(a) in fine of the Policy states that the burden of proof with regard to each
of these elements lies with the Complainant.
A. Identical or Confusingly Similar
This question raises two issues: (1) does the Complainant have rights in a trademark or service mark; and (2) is the domain name identical or confusingly similar to such trademark or service mark.
As regards the first issue, the Complainant has provided satisfactory evidence that it is the owner of at least two trademarks containing the word “ipulse”, which is predominant.
Concerning the second issue, the Panel finds that the domain name is identical or at least confusingly similar (having regard inter alia to the design element of the marks) to the trademarks in which the Complainant has rights.
The Respondent pointed out that the Complainant’s trademarks were not yet registered at the time of registration of the domain name. However, Paragraph 4(a)(i) of the Policy does not require that the trademark be registered prior to the domain name (see, e.g., WIPO Case No. D2003-0527, AB Svenska Spel v. Andrey Zacharov). The fact that the disputed domain name predates Complainant’s trademark registration may however be relevant to the assessment of bad faith pursuant to Paragraph 4(a)(iii), which is considered below.
Therefore, the Panel finds that the domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
It is difficult for a complainant to prove such a negative fact. Therefore, panels have required complainants to establish at least a prima facie case under this heading. If that is made out, the evidential onus then shifts to the respondent to rebut the presumption of absence of rights or legitimate interests (See, e.g. Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc., WIPO Case No. D2003-0070).
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] of the dispute, your use of, or 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; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
In the present case, the Respondent has provided evidence that the domain name corresponds to the first part of the name of a company, iPulse Open Systems Limited, which was incorporated in 2003, i.e., the year following registration of the domain name, and of which the Respondent was a Director. In the circumstances, the Panel considers that, prima facie, the Respondent would appear to have (or least to have had) some basis for asserting a legitimate interest in use of the disputed domain name.
However, questions do arise inter alia as to whether the mere fact that the domain name corresponds to part of the name of the company of which the Respondent was a Director is sufficient, in the circumstances of the case, to establish that the Respondent has any present legitimate interests in the domain name. In particular, there is no clear evidence on record that the Respondent made or is making preparations to use the domain name (beside the initial incorporation of the Respondent’s company), and there is no evidence that the Respondent was “commonly known” by the domain name.
In the Panel’s opinion, this question may however remain unsettled, since the Panel considers that the third cumulative condition under the Policy is in any event not fulfilled (see below).
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the domain name was registered and is being used in bad faith by the Respondent. Paragraph 4(b) of the Policy sets out four circumstances which shall be evidence of the registration and use of a domain name in bad faith. These four criteria are non-exclusive (BolognaFiere S.p.A. v. Bonopera Daniele, WIPO Case No. D2003-0295):
“(i) circumstances indicating that you [Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name”
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location. “
In the present case, the domain name was registered in May 2003. Complainant’s first trademarks were not registered before late 2004. Further there is no indication or proof that the Complainant had used the name “ipulse” before the registration of the contested domain name in such a way that the Respondent knew or should have known of any such use at the time the domain name was registered. Nor for example does there appear to have been such wide publicity by the Complainant around the time of registration of the disputed domain name such as might in certain circumstances suggest Respondent awareness of or intention to capitalize on Complainant’s likely mark. As a result it is difficult to conceive on the present record of how the Respondent could be found to have known of the Complainant or its mark at the time of domain name registration, and in the circumstances to have registered the domain name in bad faith (see WIPO Case No. D2001-0827, Digital Vision, Ltd. v. Advanced Chemill Systems; WIPO Case No. D2001-1182, PrintForBusiness B.V v. LBS Horticulture).
In addition, the Panel notes that in relation to the Complainant asking the Respondent if he wanted to sell the domain name, it is not of itself contrary to the Policy for the Respondent to respond by asking what he may consider the market will take in a particular case (see WIPO Case No. D2001-0074, John Ode d/ba ODE and ODE - Optimum Digital Enterprises v. Intership Limited). Here, there is no evidence of a pattern of conduct either.
On the basis of the preceding discussion, the Panel finds that the Complainant has not succeeded in these proceedings in showing that the disputed domain name was registered by the Respondent in bad faith. Moreover, there is little on the present record to indicate that the disputed domain name is currently being used in bad faith.
8. Reverse Domain Name Hijacking
The Respondent has requested the Panel to make a finding of reverse domain name hijacking. In this respect, he contends that the Complainant knew of the legitimate rights of the Respondent and only decided to initiate UDRP proceedings when negotiations for the purchase of the domain name failed.
Paragraph 1 of the Rules defines reverse domain name hijacking as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”. To prevail on such a claim, the Respondent must show that the Complainant knew of the Respondent’s unassailable rights or legitimate interests in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith (see WIPO Case No. D2005-0424, National Trust for Historic Preservation v. Barry Preston). The mere failure of the Complaint is not sufficient to found a finding under paragraph 15(e) of the Rules; such a finding is intended only for the worst cases where there is bad faith such as malice or dishonesty or some other abuse of process (see, e.g., WIPO Case No. D2005-0309, Jazeera Space Channel TV Station v. AJ Publishing)
In the circumstances, noting inter alia that the Panel has found that the Respondent is the owner of registered trademarks and the domain name is identical to such trademarks, the Panel finds the Respondent’s claim of reverse domain name hijacking unpersuasive. The record does not establish that the Complaint was brought in bad faith.
9. Decision
For all the foregoing reasons, the Complaint is denied.
Fabrizio La Spada
Sole Panelist
Dated: August 6, 2007
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