The Complainant is Extreme Networks Limited of London, United Kingdom of Great Britain and Northern Ireland, represented internally.
The Respondent is Ex Drinks LLC of Henderson, Nevada, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with GoD, LLC. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2013. On January 29, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 29, 2013, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 1, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 21, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 22, 2013.
The Center appointed Nicholas Weston as the sole panelist in this matter on March 4, 2013. 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.
The Panel finds that appropriate notice of this proceeding has been given to the Respondent and that the Center has discharged its responsibility under paragraph 2(a) of the Rules. The words “calculated to achieve actual notice” in paragraph 2 of the Rules do not demand proof of service. 4. Factual Background
The Complainant operates a business selling and licensing the rights to sell prepackaged drinks in a number of countries. The Complainant holds Registration No. 78642886 for a device version of the EX DRINKS trademark in the United States of America (“United States”), which it uses to designate “Aerated fruit juices, Aerated water, Apple juice beverages, Colas being soft drinks, Drinking water, Energy drinks, Flavored waters, Fruit flavored soft drinks, Fruit-flavored beverages, Fruit-flavored drinks, Glacial water, Guarana drinks, Herbal juices, Isotonic drinks, Mineral water, Non-alcoholic beverages, namely, carbonated beverages, Non-alcoholic beverages containing fruit juices, Non-alcoholic fruit juice beverages, Pop being a soft drink, Sports drinks, Soft drinks, namely, carbonated soft drinks, low calorie soft drinks, and non-carbonated soft drinks” in class 32. The United States trademark registration has been in effect since 2007.
The Disputed Domain Name was first registered by the Complainant on November 9, 2001 and licensed to the Respondent on August 12, 2009, which resolved to a web page containing advertisements and links related to EX DRINKS beverages. 5. Parties’ Contentions A. Complainant
The Complainant cites its United States registration of the device trademark EX DRINKS as prima facie evidence of ownership.
The Complainant submits that its rights in that mark predate the registration by the Respondent of the Disputed Domain Name . It submits that the Disputed Domain Name is identical to its trademark, because the Disputed Domain Name incorporates in its entirety the EX DRINKS trademark.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the Respondent has no trademark rights in or license to use the Complainant’s trademark. The Complainant alleges that the Respondent was an authorized user of the Disputed Domain name pursuant to a licence agreement dated August 12, 2009 (“Licence Agreement”) that terminated in September 2012 pursuant to two notifications (“Termination”) and under which all rights then reverted back to the Complainant.
Finally, the Complainant alleges that the continued use of the Disputed Domain Name by the Respondent was, and currently is, in bad faith, contrary to paragraphs 4(a)(iii) and 4(b) of the Policy as, since the licence agreement has terminated, the Respondent is no longer the licensee of the EX DRINKS trade mark and the Disputed Domain Name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the complainant has the burden of proving the following:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the panel to:
“decide a 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”. A. Identical or Confusingly Similar
The Panel finds that the Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark EX DRINKS in the United States. The Panel finds that, pursuant to United States Trademark Registration No. 78642886, registered on September 25, 2007, the Complainant has rights in the mark EX DRINKS.
Turning to whether the Disputed Domain Name is identical or confusingly similar to the EX DRINKS trademark, the Panel observes that the Disputed Domain Name comprises: (a) an exact reproduction of the Complainant’s trademark; (b) followed by the top level domain suffix “.com”. It is well established that the top-level designation used as part of a domain name should be disregarded when considering identity or confusing similarity: (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.;WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; and Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374). The relevant comparison to be made in these circumstances is with the second level portion of the Disputed Domain Name; “exdrinks”.
It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it may be found confusingly similar to that mark (see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; and Wal Mart Stores, Inc. v. Kuchora, Kal,WIPO Case No. D2006-0033).
In Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698, the panel held that “[t]he use to which the site is put has no bearing upon the issue whether the domain name is confusingly similar to the trademark, because by the time Internet users arrive at the Website, they have already been confused by the similarity between the domain name and the Complainant’s mark into thinking they are on their way to the Complainant’s Website”. The Panel finds that the Disputed Domain Name is therefore confusingly similar to the EX DRINKS trademark.
Accordingly, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exhaustive list of ways that the respondent may demonstrate rights or legitimate interests in the disputed domain name:
(i) before any notice of the dispute, 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 it 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.
The Policy places the burden on the complainant to establish the absence of respondent’s rights or legitimate interests in the disputed domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The evidential burden of production then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles,WIPO Case No. D2000-1306; and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”), paragraph 2.1).
The Respondent’s right to register and use the Disputed Domain Name arose pursuant to the Licence Agreement. However, the uncontested evidence of the Complainant is that “the Licence Agreement has been terminated in accordance with its terms”. This Panel so finds.
Clause 4.11 of the Licence Agreement states: “in the event of termination or expiry of this Agreement, then all such registrations of approved URLs shall be transferred to the Licensor (at the Licensor’s request and upon payment of all third party, out-of-pocket expenses incurred by the License in effecting such transfer).”
However, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and that the Respondent has failed to respond to two requests to transfer the Disputed Domain Name back to the Complainant. This Panel therefore finds that from October 2012 the Complainant has not licensed, permitted or authorized the Respondent to use the Complainant’s trademark.
On any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating a manufacturer’s mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. Nor, alternatively, is the Respondent commonly known by the Disputed Domain Name. Nor, in this Panel’s view, is the Respondent entitled to fail, neglect or refuse to transfer the Disputed Domain Name back upon the Termination of the License Agreement based on its own failure to respond to a request by the Complainant to do so. This Panel finds that the Respondent is making an illegitimate commercial use of the Disputed Domain Name.
The Panel finds for the Complainant on the second element of the Policy. C. Registered and Used in Bad Faith
The third element of the Policy that the Complainant must also demonstrate is that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both.
“b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, (relevantly):
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.”
The examples of bad faith registration and use in Policy, paragraph 4(b) are not exhaustive of all circumstances from which such bad faith may be found (see: Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). The objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. (See M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230).
From the first case determined under the Policy, the conjunctive requirement for a Complainant to establish both bad faith registration and bad faith use was both the intention of the Policy (see: Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy, October 24, 1999, para. 4.5,a.) and is the long-standing consensus view of numerous Panels (see World Wrestling Federation Entertainment, Inc. v. Michael Bosman,WIPO Case No. D1999-0001; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Validas, LLC v. SMVS Consultancy Private Limited,WIPO Case No. D2009-1413, Mile, Inc. v. Michael Burg,WIPO Case No. D2010-2011; Workman Publishing Co., Inc., Patricia Schultz v. MareBerg Consulting,WIPO Case No. D2011-0219). This Panel sees no reason to depart from that body of reasoning. The conjunctive requirement is intended to set a precise rule.
On the issue of bad faith use, the Complainant asserts but has not provided supporting evidence to demonstrate that the Respondent used the Disputed Domain Name since Termination intentionally to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or of a product or service on its website. Nevertheless, in the absence of a Reply, this Panel finds that the Respondent has used the Disputed Domain Name in bad faith.
On the issue of bad faith registration, the evidence of whether the Respondent registered the Disputed Domain Name in bad faith requires close scrutiny by virtue of the registration by the Respondent having been authorized pursuant to the License Agreement. The fact that a License Agreement was in place at the time of registration may be sufficient to settle the issue of registration in good faith. However, on another view, the intent and express terms of the License Agreement conveyed only conditional legitimacy to the Respondent's registration of the complainant's domain name where registration in good faith was always subject to the intention of the condition in clause 4.11 of the License Agreement to the effect that the Respondent agreed to give the Disputed Domain Name back upon Termination. On any view, the License Agreement was not entered into with the intention to permanently deprive the original owner of its right of reversion.
It is impossible to say, in the absence of factual evidence, when the Respondent formed the intention not to respect the right of reversion, whether that be at the time of registration or subsequently. However, it is reasonable to infer the Respondent registered the Disputed Domain Name with knowledge of the fact that EXDRINKS was a trademark owned by the Complainant’s business and that the Complainant would not grant such a license if it thought the Respondent would act arbitrarily, capriciously or unreasonably when the time came to give it back.
This Panel has had regard to the interpretive approach adopted by Blackstone1 (paraphrasing a point made by the seventeenth century legal thinker, Samuel Pufendorf) in relation to a law of Bologna “that whoever drew blood in the streets should be punished with the utmost severity” should not be interpreted to make punishable a surgeon “who opened a vein of a person that fell down in the street with a fit”. In this Panel’s view, this is one such circumstance where that approach is desirable to avoid an injustice to be visited upon the Complainant. The interpretative approach would have to be based on the intentions of the parties expressed in the contract made at the time immediately preceding registration along the lines that the terms of that contract were the sine qua non of the registration, the thing without which good faith registration would not have been possible. While the Panelist held in Mile, Inc., that there is “value, in appropriate cases, of inferences of original intent based on subsequent conduct” in this case the weight required to be put on the subsequent conduct subverts the conjunctive requirement of paragraph 4(a)(iii) of the Policy and thereby treats the requirement to establish that the Respondent “registered and used the domain name in bad faith” as a “unified concept” such as that followed in what has become known as the Mummygold/Octogen decisions (see City Views Limited v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE,WIPO Case No. D2009-0643 (“Mummygold”) and Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions,WIPO Case No. D2009-0786 (“Octogen”); see also Ville de Paris v. Jeff Walter,WIPO Case No. D2009-1278; Jappy GmbH v. Satoshi Shimoshita,WIPO Case No. D2010-1001 and Mile, Inc. v. Michael Burg,WIPO Case No. D2010-2011). This Panel declines to follow those well meaning but torturous decisions and reluctantly accepts that registration under a license that has since terminated in the context of paragraph 4(a)(iii) of the Policy is an unfortunate instance the Policy has failed to anticipate and make provision for.
Accordingly, the Panel concludes that the Complainant has not met its burden of establishing the probability that the Respondent registered the Disputed Domain Name in a bad faith effort to exploit the Complainant’s mark. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Nicholas Weston
Sole Panelist
Date: March 18, 2013
1 William Blackstone, Commentaries on the Laws of England, vol 1, p 60 (1765) cited in Richard A Posner, How Judges Think p.199 (2009).
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