The Complainant is Dentaid S.L of Cerdanyola del Valles, Spain, represented by an internal representative.
The Respondents are Domains by Proxy, Inc. of Arizona, United States of America, Yoon Jinsoo of Seoul, Republic of Korea, and Michael Grady of New York, United States of America. Mr. Grady is represented by Hand Baldachin & Amburgey, LLP, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 25, 2011. On July 26, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 28, 2011, the Registrar transmitted by email to the Center its verification 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 August 5, 2011, 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 August 8, 2011.
On August 3, 2011, the representative for the third Respondent, Michael Grady, transmitted an email to the Center, stating that its client had acquired the disputed domain name some weeks earlier and that due to the dispute being in progress and the consequential lock down on the disputed domain name, it had been unable to complete the transfer of the disputed domain name.
On August 4, 2011, the Center transmitted an email to the Registrar seeking clarification of the Registrar verification. On August 4, 2011, the Registrar transmitted by email to the Center its verification disclosing that the third Respondent manages the account in which the disputed domain name resides, and had done so since registration of the disputed domain name was transferred to the Registrar in June 2011. The Registrar provided contact details for the third Respondent.
On August 5, 2011, the Center transmitted an email to the third Respondent and his representative, acknowledging the Registrar had confirmed that the third Respondent was connected to or associated with the disputed domain name, and stating it would copy the third Respondent in all communications on the case.
On August 15, 2011, the representative for the third Respondent wrote to the Complainant stating that its client acquired the disputed domain name from the second Respondent, Yoon Jinsoo, on or about May 15, 2011, for use in its client’s wine retail business, and that due to an administrative error the Registrar of the disputed domain name had failed to update the WhoIs database entry. The representative further stated that the Registrar had since acknowledged that the third Respondent had owned the disputed domain name since June 3, 2011, and that the Registrar had informed the Center of that fact.
On August 16, 2011, the Center received an email communication from the Complainant seeking clarification as to the identity of the Respondent, to which was attached a communication from the third Respondent’s authorized representative. The Center, in its email of August 17, 2011, indicated to the Complainant, among others, that the ultimate determination of Respondent identity is a matter for the administrative panel, upon appointment.
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(a) and 4(a), the Center formally notified all three Respondents of the Complaint, and the proceedings commenced on August 11, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 31, 2011. No Response was received from the first Respondent, Domains by Proxy, Inc., or the second Respondent, Yoon Jinsoo. The third Respondent, Michael Grady, filed a Response with the Center on August 18, 2011, and filed an unsolicited Supplemental Response with the Center on September 13, 2011.
The Center appointed Andrew F. Christie as the sole panelist in this matter on September 15, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On September 29, 2011, the Panel issued a Procedural Order that: (i) determined that Michael Grady was permitted to join the action as a Respondent; (ii) admitted into the case record the Response dated August 18, 2011, and the Supplemental Response dated September 13, 2011, filed by Michael Grady; and (iii) provided to the Complainant the opportunity to make a supplemental submission, should it so wish, by no later than October 4, 2011. No supplemental filing was received from the Complainant. 4. Factual Background
The Complainant has been in the business of selling oral hygiene products since 1980. It has subsidiaries in Chile, Peru, Benelux, Germany and France, and distribution agreements in other countries. The Complainant has obtained registrations for the trademark VITIS in various countries of the European Union in respect of oral hygiene products, the earliest of which dates from 1993. An application for a Community registration of the trademark VITIS was filed on January 22, 2009.
The disputed domain name was first registered on April 27, 1999. On or about May 15, 2011, the disputed domain name was sold by the second Respondent, Yoon Jinsoo, to the third Respondent, Michael Grady, for USD 14,000. The transfer of the disputed domain name was recorded by the Registrar on June 3, 2011. The disputed domain name currently resolves to a website at which wine is offered for sale.
The third Respondent, Michael Grady, filed an application for registration of the trademark VITIS in the United States Patent Office in respect of retail services in the field of wine, liquor, beverages and related merchandise on February 25, 2011. This application was published for opposition on August 9, 2011. 5. Parties’ Contentions A. Complainant
The Complainant contends that the only difference between the disputed domain name and its registered trademark VITIS is the addition of “.com”.
The Complainant contends it has no relationship with the current owner of the disputed domain name and has never authorized the current owner to use the disputed domain name or any other domain name. The Complainant first registered the trademark VITIS in May 1997, before the disputed domain name was first registered on April 27, 1999. The second Respondent owns lots of domain names for the purpose of selling them. A screenshot of the webpage to which the disputed domain name resolved in October 2010 shows a page with external links to other websites.
The Complainant contends that the identity of the current owner of the disputed domain name was hidden through the use of a proxy registration service, and that the second Respondent’s objective is to register and sell domain names. B. Respondent
Neither the first Respondent, Domains by Proxy, Inc., nor the second Respondent, Yoon Jinsoo, responded to the Complaint.
The third Respondent, Michael Grady, contends its use of the disputed domain name is not confusingly similar to the Complainant’s trademark because its business is that of selling wine, including over the Internet, while the Complainant’s business is in oral hygiene. The third Respondent has been granted a liquor license by the State of New York, United States of America, authorizing it to sell wine.
The third Respondent contends it has rights or legitimate interests in respect of the disputed domain name because: (i) it filed an application for registration of the trademark VITIS in the United States of America on February 25, 2011, with the description of use involving selling wines and providing information about wines and wine-making; (ii) it has a liquor license from the State of New York, United States of America, that pre-dates the commencement of this proceeding, authorizing it to sell wine; (iii) it purchased the disputed domain name on or about May 15, 2011, and contracted with GoD, Inc. as the Registrar for the disputed domain name on June 3, 2011; (iv) it has been developing a legitimate website for the retail sale of wines for approximately six months, and the Complainant’s screenshot of a homepage on a website to which the disputed domain name resolved in October, 2010, is out of date; and (v) its use of the word “VITIS” for the sale of wine in the United States of America does not infringe the Complainant’s trademark rights for VITIS in the field of dental care products, and the Complainant has not cited any evidence that the third Respondent is selling anything confusingly similar to oral hygiene products in Europe.
The third Respondent contends it is using the disputed domain name for a legitimate business in good faith because: (i) it purchased the disputed domain name from the second Respondent on or about May 15, 2011, and registered it with GoD, Inc. as Registrar on June 3, 2011, which is more than two months prior to the Complainant filing this proceeding; (ii) it has not made any statement offering to sell the disputed domain name to the Complainant; (iii) the Complainant presents no evidence that the second Respondent’s “objective is just register and sells domains” [sic], and that the business affairs of the prior owner of the disputed domain name (the second Respondent) are irrelevant to this proceeding; (iv) the third Respondent and the Complainant are not competitors and the third Respondent has conducted a legitimate business prior to the date notice of this proceeding was delivered, and has therefore not attempted to attract for commercial gain, Internet users to websites by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of those websites.
The third Respondent contends that the Complainant is liable for an abuse of the administrative proceeding because when the third Respondent formally received notice of this proceeding on August 11, 2011, it wrote to the Complainant on August 15, 2011, informing it of the third Respondent’s recent purchase of the disputed domain name, including explaining about the incorrect WhoIs data, and providing a log-in account so the Complainant could review the third Respondent’s website to which the disputed domain name resolved. In the light of this evidence the third Respondent invited the Complainant to withdraw its Complaint but it failed to do so. The third Respondent contends the Complainant is attempting a reverse domain name hijacking.
In a Supplemental Filing the third Respondent provided a copy of a permanent liquor license issued by the State of New York, United States of America, authorizing it to sell wine as a business, and contended that this license demonstrates it has a bona fide business in selling wine using the disputed domain name. The third Respondent also provided a copy of a complaint filed by it with ICANN asserting that GoD, Inc. is improperly conducting its activities as Registrar by not updating the WhoIs database to properly reflect that the third Respondent is the current owner of the disputed domain name. 6. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain name incorporates wholly the Complainant’s registered trademark VITIS with the addition of the gTLD identifier “.com”. Ignoring the gTLD identifier, the disputed domain name is identical to the Complainant’s trademark. Accordingly, this Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
Pursuant to paragraph 1 of the Rules, the “respondent” is defined to be “the holder of a domain-name registration against which a complaint is initiated”. The case record available to this Panel supports the third Respondent’s contentions that on or about May 15, 2011, it reached agreement with the second Respondent to purchase the disputed domain name, and that on or about June 3, 2011, the second Respondent transferred the disputed domain to the third Respondent. The Complainant did not dispute these contentions. This Panel finds, on the record before it, that the third Respondent became the holder of the disputed domain name on or about June 3, 2011 – nearly two months before this Complaint was filed. Thus, the holder of the disputed domain name for the purposes of this Complaint appears to be the third Respondent.
There is nothing in the case record to suggest that at the time the third Respondent acquired the disputed domain name the third Respondent was aware, or should have been aware, that the Complainant was or would soon be in dispute with the second Respondent, or that the Complainant would soon file this Complainant. Accordingly, this Panel considers that there is no reason to attribute to the third Respondent any intentions or actions of the second Respondent in respect of the disputed domain name for the purposes of this Complaint. Thus, the entity to whom paragraphs 4(a)(ii) and (iii) of the Policy should be applied for the purposes of this Complaint is the third Respondent.
The case record before this Panel establishes that a company controlled by the third Respondent, Vitis LLC: (i) filed an application for registration of the trademark VITIS in the United States of America, with the description of use involving selling wines and providing information about wines and wine-making, on February 25, 2011; and (ii) was granted a temporary permit by New York State Liquor Authority to purchase, stock and sell alcoholic beverages effective from June 21, 2011. This evidence, which was not contested by the Complainant, satisfies this Panel that the third Respondent undertook preparations to use a name (in this case, “vitis”) in connection with a bona fide offering of goods, before notice to it of this dispute. Pursuant to paragraph 4(c)(i) of the Policy, this demonstrates that the third Respondent has rights or legitimate interests in the disputed domain name. Accordingly, on the present record the Complainant has failed to establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
Because the Complainant has failed to establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name, it is not necessary to make a finding on the issue of bad faith for the purpose of determining the outcome of the Complaint. However, the third Respondent has requested a declaration that the Complainant has engaged in an abuse of the administrative proceeding by way of attempted reverse domain name hijacking. For that reason, it is appropriate for this Panel to make observations on the issue of bad faith. There is nothing in the case record before this Panel that establishes any of the circumstances described in paragraph 4(b) of the Policy, or any other circumstances that would indicate that the disputed domain name was registered and is being used in bad faith by the third Respondent. D. Abuse of Administrative Procedure (Attempted Reverse Domain Name Hijacking)
The third Respondent contends that an abuse of administrative proceeding occurred when the Complainant refused to withdraw the Complaint after receipt of a letter from the third Respondent setting out the facts that formed the basis of the Response – including, in particular: (i) details of its purchase of the disputed domain name; (ii) an explanation for the failure of the WhoIs data to reflect the purchase; (iii) access to the yet-to-be launched website being established by it for the disputed domain name; and (iv) a copy of the application for trademark registration of VITIS previously filed by it. It must be noted, however, the letter was sent and received after both the Complaint had been filed (against the first Respondent) and the commencement of proceedings had been formally notified by the Center. Thus, this is not a case where the Complainant had been provided with information that indicated it could not succeed under the Policy prior to filing the Complaint. Accordingly, this Panel finds that the Complaint was not brought in bad faith.
At the time of filing of the Complaint, the WhoIs data disclosed the first Respondent as the registrant of the disputed domain name. The initial response to the Center’s request for Registrar verification disclosed that the second Respondent was the registrant of the disputed domain name. The Registrar’s subsequent response to the Center’s request for clarification of this verification disclosed that the third Respondent managed the account in which the disputed domain name resided. This Panel accepts that, at the time the Complainant was in receipt of the third Respondent’s letter, there was uncertainty as to which party or parties should be treated as the holder of the disputed domain name. In this Panel’s view, this uncertainty was sufficient to justify the Complainant proceeding with the Complaint. Accordingly, this Panel is not willing to conclude that the Complainant maintained the Complaint in bad faith. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Andrew F. Christie
Sole Panelist
Dated: October 7, 2011
Full & Egal Universal Law Academy