The Complainant is Danny Hood of Queensland, Australia represented pro se.
The Respondent is Private Registration of Sydney, Australia; Real Estate Educational Programmes / Dave Lovegrove of Noosaville Dc, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with Crazy Domains Pty Ltd (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 20, 2013. On April 22, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 23, 2013, 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 May 2, 2013 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 May 3, 2013. In response to a further notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 7, 2013.
The Center verified that the Complaint together with the amended Complaint and 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 May 15, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 4, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 5, 2013.
The Center appointed James A. Barker as the sole panelist in this matter on June 11, 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. 4. Factual Background
The disputed domain name was registered in May 2010. When visited by the Panel on June 24, 2013, the disputed domain name reverted to a website on which domain names are advertised for sale (“Crazy domains”). The Complainant provides evidence of what it says is an extract from an (undated) Google search, as follows:
“
THIS DOMAIN NAME IS CURRENTLY FOR SALE. “www.”. Asking
Price: $2,000,000.00 USD (Two Million Dollars USD). Enquiries to be ...”
The Complainant promotes its product at “www..au”.
In the absence of a Response, there is no direct evidence of the business of the Respondent. 5. Parties’ Contentions A. Complainant
The Complaint is very brief. The Complainant claims to be the owner of a registered mark for DR GROW IT ALL, a liquid organic fertilizer that is manufactured in Australia. The Complainant provides evidence of its mark, which indicates a filing date of December 2012.
The Complainant claims that the disputed domain name is identical to its “worldwide” mark.
The Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain name. This, says the Complainant, is because “The Respondent is blatantly making an attempt at tarnishing the trademark or service mark [sic] at issue.”
The Complainant says that the disputed domain name has been registered and used in bad faith, because “The domain name was registered and is currently being used primarily for the purpose of disrupting the business of the company as is evidenced by a simple search of www.”. B. Respondent
The Respondent did not reply to the Complainant’s contentions, nor make any other communication in connection with this case. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(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 was registered and is being used in bad faith.
In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable. These elements are discussed in turn below, immediately after a procedural question as to the adequacy of the Complaint. A. Adequacy of the Complaint
Paragraph 3 of the Rules contains minimum requirements for a valid Complaint. Paragraph 3(b) of the Rules requires a Complaint to:
“(ix) Describe, in accordance with the Policy, the grounds on which the complaint is made including, in particular;
(1) the manner in which the domain name(s) is/are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) why the Respondent (domain-name holder) should be considered as having no rights or legitimate interests in respect of the domain name(s) that is/are the subject of the complaint; and
(3) why the domain name(s) should be considered as having been registered and being used in bad faith
“(The description should, for elements (2) and (3), discuss any aspects of Paragraphs 4(b) and 4(c) of the Policy that are applicable…)”.
The Complainant provides only the briefest of claims on each of these grounds and little evidence to support them. The Panel considered whether the Complaint should be rejected for lack of evidence and argument. However, the Center has verified that the Complaint meets (even if barely) the requirements of paragraph 3 of the Rules. The Panel also considers that, despite the brevity of the Complaint, all the facts of this case allow a decision to be made as outlined below. B. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, the Complainant must establish that it has rights in a mark. The Complainant provides evidence of a mark registered on the principal register of the United States Patent and Trademark Office, which indicates a filing date in December 2012. This is sufficient evidence to demonstrate that the Complainant has registered rights in its mark.
Under this element of the Policy, the Complainant must also establish that the disputed domain name is identical or confusingly similar to its mark. It is well-established that the “.com” extension is to be disregarded for this purpose. Disregarding that extension, it is self-evident that the disputed domain name is relevantly identical to the Complainant’s mark.
The Complainant has therefore established this first element. C. Rights or Legitimate Interests
For the reasons set out below, it is not necessary for the Panel to address this element. D. Registered and Used in Bad Faith
To demonstrate bad faith under paragraph 4(a)(i) of the Policy, the Complainant must show that the disputed domain name was both registered, and has been used, in bad faith.
It is at this point that the Complaint faces a significant difficulty. This is because, at the time the Respondent registered the disputed domain name, the Complainant has not demonstrated that it had trademark rights.
Consensus panel opinion on key substantive and procedural issues under the Policy is usefully summarized in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). The difficulty for the Complainant in this case is relevantly summarized in the WIPO Overview, as follows:
“3.1 Can bad faith be found if the disputed domain name was registered before the trademark was registered or before unregistered trademark rights were acquired? …
Consensus view: Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date [see further paragraph 1.4 above], when a domain name is registered by the respondent before the complainant's relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right.”
However: In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found.” (For example, the latter circumstances have been found by Panel’s in cases involving opportunistic registrations shortly after a publicized merger between two companies, or shortly after a well-publicized product launch.)
As confirmed by the Registrar, the disputed domain name in this case was registered to the Respondent in May 2010 – over 2 years before the filing of the Complainant’s mark with the USPTO. The Complainant provided no evidence of common law rights or having any other registered marks which pre-dated the registration of the disputed domain name.
The question, then, is whether there is any reason for the Panel to depart from the usual rule, as set out in paragraph 3.1. of the WIPO Overview 2.0, and as outlined above.
The WIPO Overview 2.0 outlines some circumstances in which previous panels have departed from the usual rule. These include cases where a respondent anticipated a complainant’s pending trademark rights, and opportunistically registered a domain name shortly before a complainant’s registration of its mark. In this connection, see e.g. General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Centre Online,WIPO Case No. D2003-0845; MADRID 2012, S.A. v. Scott Martin-MadridMan Websites,WIPO Case No. D2003-0598.
The Complainant does not provide evidence of its business reputation in Australia (where the Respondent has its address), including its reputation before the disputed domain name was registered. The Panel does note that there is no evidence that the Respondent has used the disputed domain name for any legitimate purpose, other than to advertise it for sale.
However, this is not a case which appears to fall within the limited exceptions to the general rule set out in the WIPO Overview 2.0, and elaborated in previous cases referenced in that overview. In particular, there is no evidence that the Respondent had, or should have had, knowledge of pending trademark rights when it registered the disputed domain name. The record before the Panel shows that the Complainant did not acquire those rights for more than two years after the Respondent’s registration.
Following the majority of panel decisions in similar circumstances, the Panel cannot therefore conclude that the disputed domain name was registered in bad faith, within the meaning of paragraph 4(a)(iii) of the Policy.
Such a finding does not however endorse the conduct of the Respondent. While, based on the current record, the Respondent’s registration was not in bad faith in the terms of the Policy, the limited evidence available in this case suggests that the Respondent is currently using the disputed domain name to take unfair advantage of the Complainant’s reputation (by seeking to sell the disputed domain name). Nevertheless, this element of the Policy is based on a complainant demonstrating relevant trademark rights which were in contemplation of a respondent at the time of registration. Such showing has not been made in this case. 7. Decision
For the foregoing reasons, the Complaint is denied.
James A. Barker
Sole Panelist
Date: June 25, 2013
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