The Complainant is John Henderson (Holdings) Limited, of Newtownabbey, County Antrim, United Kingdom of Great Britain and Northern Ireland, represented internally.
The Respondent is Xiaodong Zhang of Austin, Texas, United States of America, self-represented. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 28, 2012. On March 28, 2012, the Center transmitted by email to GoD, LLC a request for registrar verification in connection with the Disputed Domain Name. On March 29, 2012, GoD, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient dated March 30, 2012, the Complainant filed an amendment to the Complaint on April 2, 2012.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 3, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 23, 2012. The Response was filed with the Center on April 4, 2012.
The Center appointed Alistair Payne as the sole panelist in this matter on April 18, 2012. 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, based in Northern Ireland owns Community Trademark (“CTM”) No. 8670085 for the combined word and logo mark EDGEPOS (utilizing a small case “o”) which was filed on November 6, 2009 and registered on May 20, 2010.
The Respondent, based in Austin, Texas, in the United States registered the Disputed Domain Name on May 12, 2008. 5. Parties’ Contentions A. Complainant
The Complainant submits that it owns a registered CTM mark as noted above in EDGEPOS and that the Disputed Domain Name is identical or confusingly similar to its trade mark.
It submits that the Respondent has never used the Disputed Domain Name and is not commonly known by the Disputed Domain Name. The Complainant says that a holding page has been added by the Respondent within the ten days prior to the filing of its Complaint and only since the Complainant made contact with the Respondent. This holding page features the text “coming soon”. The Complainant says that to its knowledge the Respondent has no trademark for the name and has not been commonly known by the name and has only referred to the possible future use of the name in its correspondence. The Complainant submits that the Respondent has not to date made any use of the name. B. Respondent
The Respondent submits that he registered the Disputed Domain Name on May 12, 2008 with the intention of using it for a suite of point of sale software. On September 21, 2009, after having owned this registration for nearly one year and half the Respondent says that he received a couple of emails from the Complainant who was interested in acquiring the Disputed Domain Name. The Respondent maintains that he owns around 15 domain names but has never been interested in selling one as this is not his business. However having asked the Complainant what he could offer, the Complainant did not respond and on the same day registered and then on November 6, 2009, the Complaint filed his European trademark application.
The Respondent submits that as at March 21, 2012, the domain name resolves to an empty page showing that the Complainant had no real commercial intention for this domain name. The Respondent submits that this is indicative of the Complainant’s intention to hijack the Disputed Domain Name from him.
The Respondent notes that as part of his continuing development of his “edgepos” product he released on June 29, 2011, a pocket POS on the Google Android Market which attracted more than one hundred installations. On March 19, 2012, the Respondent says that the Complainant asked him to sell the Disputed Domain Name again and following the Respondent’s refusal threatened to institute these proceedings if the Respondent did not agree to an “offer of $2000”.
In summary the Respondent submits that the Respondent registered the Disputed Domain Name in good faith and intends to use it for its “edgepos” product and that the Complainant registered its CTM mark only after it became aware of the Respondent’s registration of the Disputed Domain Name. The Respondent says that the Disputed Domain Name was registered before the Complainant made any use of the “edgepos” name and that he did not acquire it for re-sale. It says that the Complainant’s empty page at the domain name indicates the weak identity of the Complainant’s mark and that it is in fact the Complainant here who is trying to disrupt the Respondent’s business. The Respondent claims that the Complainant is effectively trying to hijack the Disputed Domain Name and claims reverse domain name hijacking. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant owns CTM No. 8670085 for the combined word and logo mark EDGEPOS which was filed on November 6, 2009. Even though the Complainant’s mark is strictly a logo mark because of its use of a small case “o”, the mark is effectively constituted of the word “edgepos” and has no other distinctive element. The Panel finds that the Disputed Domain Name is therefore either identical or confusingly similar to the Complainant’s CTM mark and the Complaint succeeds in relation to the first element of the Policy. B. Rights or Legitimate Interests
As a consequence of the Panel’s findings under the third element concerning bad faith below it is unnecessary for the Panel to consider the second element further. C. Registered and Used in Bad Faith
It is instructive that the Complainant has made no substantive submissions in relation to registration and use in bad faith.
Based on the facts before the Panel it is clear that the Respondent registered the Disputed Domain Name almost 18 months prior to the filing date of the Complainant’s CTM mark registration. There is no evidence to suggest that the Complainant had a business using the EDGEPOS mark or name prior to that date and there is no reason to suspect that the Respondent, based in the United States, would have necessarily been aware of the Complainant’s Northern Ireland business. Further, it was only after the Complainant’s approach to the Respondent in 2009 was re-buffed that the Complainant moved to register and subsequently to make its CTM mark application. This is indicative, at the very least, that the Complainant was at a formative stage of its business plans at that point. In summary there is nothing before the Panel that points to the Respondent as having registered the Disputed Domain Name in bad faith.
Neither is there any evidence before the Panel that the Respondent has used the Disputed Domain Name in bad faith. Although the Respondent has not developed the website to which the Disputed Domain Name resolves it would appear to have an intention to do so in relation to its new POS product. More importantly though there is nothing to suggest that the Respondent has used the Disputed Domain Name or sought to make a profit off it to the detriment of the Complainant. In fact the Respondent has refused the Complainant’s request to acquire the Disputed Domain Name for USD 2000 because it has a continuing intention to use it for its own “edgepos” product. If anyone has acted in bad faith then it is rather the Complainant who when it did not get his own way then threatened to institute these proceedings.
Accordingly the Panel finds that there was no registration or use in bad faith and that the Complaint fails in relation to the third element of the Policy.
The Respondent has sought a finding of reverse domain name hijacking. As outlined above the Complainant made no case out in relation to registration and use in bad faith and there is in any event no reasonable basis on the evidence before the Panel on which bad faith could have been grounded. It appears to the Panel that when the Complainant did not get its own way it decided to commence these proceedings with no concern as to whether it had reasonable grounds to do so, or as to any consequences for the Respondent in having to address the Complaint. This is not good enough and amounts to a classic abuse of the Policy. As a result the Panel makes a finding in this case of reverse domain name hijacking. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Alistair Payne
Sole Panelist
Dated: April 21, 2012
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