The Complainant is Neways, Inc. of Springville, Utah, United States of America, represented by AZB & Partners, India.
The Respondents are Dale Gerke (“Respondent No. 1”) and S (“Respondent No. 2”) of St Peters, South Australia, Australia, self-represented (collectively “the Respondents”). 2. The Domain Name and Registrar
The disputed domain name (“the Disputed Domain Name”) is registered with PlanetDomain Pty Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 19, 2013. On October 21, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 24, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are 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 Respondents of the Complaint, and the proceedings commenced on October 24, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 15, 2013. The Response was filed with the Center on November 13, 2013.
On October 24, 2013 the Respondents sent two email communications to the Center. On October 31, 2013 and November 1, 2013 the Parties exchanged email communications. On November 12 and 13, 2013, the Respondents sent three email communications to the Center.
The Center appointed Isabel Davies as the sole panelist in this matter on November 21, 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 on January 15, 2009. The Complainant has a substantial portfolio of registered trademarks in over thirty countries dating from 1992. In India the Complainant has six (6) trademark applications dated January 18, 2013. 5. Parties’ Contentions A. Complainant
The Complainant states that the Complaint is based on the following grounds: Background
The Complainant states that it is a multi-level marketing company engaged in the business of manufacture and sale of dietary supplements and home and personal care products through a network of independent distributors and operates in about 29 countries around the world. The Complainant operates in various parts of the world through its subsidiaries/affiliates such as Neways Enterprises, Inc., Neways International (Australia) Pty. Ltd., and Neways Services, Inc., etc. The Complainant and its subsidiaries/affiliates are hereinafter collectively referred to as the “Neways Group”.
In the year 1992, the Complainant conceived and adopted the trademark NEWAYS, which is not only the Neways Group’s house mark but also forms part of the Neways Group’s corporate name / trade name and its’ various domain names. Ever since the year 1992, the Neways Group has been using the trademark NEWAYS, continuously.
The Complainant and/or its subsidiaries/affiliates under authorization and permission from the Complainant, has filed for applications and/or obtained registrations for their trademark NEWAYS, NEWAYS formative marks and the NEWAYS label in close to thirty six (36) different jurisdictions including CTM (Community Trademark) applications and/or registrations for the European Union. Details of the trademarks are exhibited to the Complaint.
In addition to the above, the Complainant states that the Neways Group also has a significant presence online on the Internet, and owns / operates several domain names accessible globally. The domain names are either registered in the name of the Complainant or under authorization, consent and permission by the Complainant’s subsidiaries / affiliates.
The Complainant states that its trademark NEWAYS has acquired immense reputation and unparalleled goodwill and the said trademark NEWAYS is associated globally and exclusively with the Complainant only and no one else and that the Complainant’s trademark NEWAYS has become a famous and well-known trademark the world over. The Complainant has spent enormous sums of money for promoting, advertising and popularizing its trademark NEWAYS worldwide.
The Complainant, with a view to exploring the possibility of launching their products in the Indian market, had commenced preliminary discussions and negotiations with Respondent No. 1 and another, E. Pereira, on or around the month of April 2009. In furtherance of the same, and in good faith, the Complainant had through letter dated June 4, 2009 confirmed the appointment of both, E. Pereira and Respondent No. 1 as directors of the Complainant’s operations in India and had further granted a limited permission to E. Pereira and Respondent No. 1 for use of the Complainant’s trademark NEWAYS for the registration of a company in India.
Pursuant to the same, the Complainant states that it, had addressed a letter dated June 19, 2009 to the Registrar of Companies, Maharashtra, India, for the limited purpose of incorporating a company using the Complainant’s trademark NEWAYS. Thereafter, the entity Neways Products India Private Limited (“Indian Entity”) was incorporated in India on September 30, 2009 for the sole purpose of doing business in India under the Complainant’s trademark NEWAYS, and solely for and on behalf of the Complainant.
However, the Complainant states, negotiations broke down between the Complainant, Respondent No. 1 and E. Pereira; and the Complainant decided not to pursue Indian operations. The Complainant’s decision not to pursue Indian operations along with the request to return confidential information supplied to Respondent No. 1, was communicated to Respondent No. 1 both verbally and through emails which were acknowledged by Respondent No. 1.
The Complainant asserts that it had issued a letter dated April 22, 2010 inter alia to Respondent No. 1 which in no uncertain terms and categorically sets out that the Complainant had decided not to pursue Indian operations at this juncture, thereby severing all connections with, and immediately revoking all authorizations that may have been granted to Respondent No. 1 during the negotiation period including use of the Complainant’s trademark NEWAYS. The Panel comments below on this assertion.
Further, the Complainant submits that it was the clear understanding between all parties that no operations will be conducted by Respondent No. 1 in India, using the Complainant’s well-known mark NEWAYS upon breakdown of negotiations. The Complainant, also submits that during the negotiation period it had granted a limited permission to use the Complainant’s trademark NEWAYS only for incorporating the Indian Entity, at no point during the above referred negotiations had the Complainant authorized or consented to Respondent No. 1 registering any domain name incorporating the Complainant’s trademark NEWAYS.
The Complainant states that Respondent No.1, without any right, authorization, legitimate interest or license from the Complainant has been using and operating certain websites prominently using the Complainant’s trademark NEWAYS, and without the Complainant’s knowledge has registered, is using, and operating, various domain names which are as follows:
- ;
- ;
- ;
- ;
(the above mentioned domain names are collectively referred to by the Complainant as the “Impugned Domain Names”).
The Complainant states that it had earlier called upon Respondent No. 1 to take down some of the Impugned Domain Names / websites verbally and through email. Respondent No. 1, through reply e-mail dated April 5, 2010 had confirmed that Respondent No. 1 had hidden / taken down certain websites / Impugned Domain Names. However, the Complainant asserts that it appears that Respondent No. 1, in bad faith, without the Complainant’s knowledge continued to use and operate such Impugned Domain Names.
The Complainant submits that it is the rightful owner and proprietor of the trademark NEWAYS and is entitled to use the trademark NEWAYS to the exclusion of all others, including Respondent No. 1.
The Complainant states that it had contacted Respondent No. 1 through email calling upon Respondent No. 1 to stop using the Complainant’s trademark NEWAYS including use as part of the Impugned Domain Names in the month of March 2013. However, the Complainant states that Respondent No. 1 refused to comply with the Complainant’s request.
Pursuant to the same, the Complainant through its attorneys had issued a legal notice dated April 10, 2013 to (i) Respondent No. 1, (ii) the Indian Entity, and (iii) E. Pereira, who is one of the directors and shareholders of the Indian Entity. Further, a copy of the said legal notice was also sent to Respondent No. 2. In the said legal notice, the Complainant, through its attorneys, had inter alia expressly revoked all previous authorizations including any permission or consent given for use of the Complainant’s trademark NEWAYS; called upon Respondent No. 1 to cease and desist from using other websites and also to transfer the Impugned Domain Names registered by the Respondents, including the Disputed Domain Name.
Respondent No. 1 substantively replied to the same through email dated May 8, 2013 denying that the Impugned Domain Names including the Disputed Domain Name infringed upon the Complainant’s trademark or intellectual property or that the Complainant has any claim, right, interest or entitlement to the Impugned Domain Names and refused to transfer the Impugned Domain Names to the Complainant. Further, Respondent No. 1, in Respondent No. 1’s May 8 open reply, in point 2 of the “Settlement Proposal”, had asked for payment of AUD 15,000 from the Complainant for transfer of the Impugned Domain Names to the Complainant. Furthermore, pursuant to the Complainant’s legal notice, Respondent No. 1 had removed the content from websites / Impugned Domain Names from the Internet, as mentioned by Respondent No. 1 in the Respondents’ May 8 reply, in paragraph 22(iii) and (v). This was done after receipt of the Complainant’s legal notice.
In reply to the Respondents’ May 8 reply, the Complainant, through its attorney had sent a letter dated June 13, 2013, rejecting, the “Settlement Proposal” of Respondent No. 1 including the claim for payment of AUD 15,000 for transfer of the Impugned Domain Names.
Respondent No. 1 had replied to the June 13 letter by email and letter dated July 3, 2013, rejecting and denying the Complainant’s assertion of infringement of the Complainant’s trademark NEWAYS and stating that Respondent No. 1 is entitled to the Impugned Domain Names, including the Disputed Domain Name. In the July 3 letter, Respondent No. 1, under the heading “Websites” has restated that all content from the websites referred to in the Complainant’s Legal Notice has been removed. The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
(Policy, paragraph 4(a)(i); Rules, paragraphs 3(b)(viii), 3(b)(ix)(1))
(a) The Complainant states and submits that it is the proprietor of the trademark NEWAYS and has also obtained registration of the same, details of which were included in the Complaint. Further, the Complainant has also obtained registration for various domain names containing the trademark NEWAYS, details of which were included in the Complaint. The Complainant claims that the trademark NEWAYS is exclusively associated with the Complainant and has acquired tremendous fame, recognition and goodwill worldwide.
(b) The Complainant avers that use of the trademark NEWAYS, whether as part of the Disputed Domain Name or otherwise, would constitute inter alia trademark infringement, dilution, passing off, unfair competition and cybersquatting.
(c) The Disputed Domain Name is identical and/or confusingly similar to the Complainant’s trademark and trade name, contains the Complainant’s trademark NEWAYS in entirety, and constitutes a blatant infringement of the Complainant’s trademark NEWAYS. Further, the mere addition of the country name “India” alongside the Complainant’s trademark NEWAYS is irrelevant.
The Complainant submits that owing to the fame, goodwill and reputation of the Complainant, the use of the Disputed Domain Name would confuse or deceive the trade and public at large and is also likely to create a false impression in the minds of the public that the Disputed Domain Name is somehow associated with the Complainant’s trademark NEWAYS and the Complainant’s business. The creation and unauthorised registration of the Disputed Domain Name is an attempt by the Respondents to free ride on the reputation and goodwill of the Complainant. Also, it is an attempt with malafide intent to attract the members of the trade and public to the Disputed Domain Name, and promote the Respondents’ business interests, thereby diverting such trade and public from the Complainant’s websites. B. The Respondents have no rights or legitimate interests in respect of the Disputed Domain Name
(Policy, paragraph 4(a)(ii); Rules, paragraph 3(b)(ix)(2))
(a) The Complainant states that the Respondents had no authorization or permission from the Complainant to either use or register the Disputed Domain Name. The Complainant further contends that the Respondents are not associated with the Complainant in any manner and the Complainant has not consented to the registration of the Disputed Domain Name. Hence, the Respondents have no legitimate justification or interest in the Disputed Domain Name.
(b) The Complainant further contends that the Respondents are using the Disputed Domain Name to intentionally attract Internet traffic and thereby intending to ride on the tremendous reputation and goodwill of the Complainant and make commercial gain. The Respondents’ use of the Disputed Domain Name will create confusion with the Neways Group, as to the source, affiliation, endorsement or sponsorship of the Disputed Domain Name and the Respondents’ business. The Complainant asserts that it is the rightful owner of the trademark NEWAYS and is entitled to the use of the same to the exclusion of all others, including the Respondents and the Respondents have no rights or legitimate interests in the Disputed Domain Name. C. The Disputed Domain Name was registered and is being used in bad faith
(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))
(a) The Complainant states that Respondent No.1, at the time of entering into negotiations with the Complainant, in the month of April 2009 was well aware of the fame, reputation and goodwill attached to the Complainant’s business and its trademark NEWAYS. The Complainant states that the fact that Respondent No. 1 had sought for the Complainant’s permission for use of the Complainant’s trademark NEWAYS in the corporate name of the Indian Entity proves that Respondent No.1 was aware of the fact that the trademark NEWAYS belonged to the Neways Group. The Respondents have registered the Disputed Domain Name without the Complainant’s knowledge, authorisation, consent or permission, with malafide intention. The Complainant states that further, continued use of the Disputed Domain Name clearly indicates bad faith on the part of the Respondents.
(b) The Complainant also submits that the Respondents by registering the Disputed Domain Name have with malicious intent attempted to draw, or have drawn Internet traffic to the Disputed Domain Name, by riding upon the tremendous reputation and fame of the Complainant thereby causing deception and confusion as to the source, affiliation or association of the Disputed Domain Name with the Complainant. Thus, the trade and public would have visited the Disputed Domain Name assuming that the same is a genuine domain name/website/webpage of the Complainant or one which has been authorised by the Complainant.
(c) In addition to the above, the Complainant states that Respondent No.1’s demand of AUD 15,000 as payment for transfer of the Impugned Domain Names including the Disputed Domain Name clearly shows bad faith on the part of Respondent No.1 and it is clear and evident that the Respondents are guilty of cybersquatting. In addition the Complainant says that, where consent was given in the past, if the agreement is terminated and the authorisation revoked that consent does not permit use of the Disputed Domain Name in the future.
In addition to the foregoing, the Complainant submits that UDRP panels in the past have transferred to the Complainant two other domain names incorporating the trademark NEWAYS, viz., and which were wrongly registered by a third party, and the Complainant relies on the same, details whereof are as follows:
- Neways, Inc. v. Miguel Jimenez,WIPO Case No. D2012-1426;
- Neways, Inc. v. Miguel Jimenez,WIPO Case No. D2012-1298.
In Neways, Inc. v. Miguel Jimenez,WIPO Case No. D2012-1426, the panel, in paragraph 6.A of the Administrative Panel Decision, has held that: “It is undisputed that Complainant holds right, through registration and longstanding use, in the mark NEWAYS.”
Similarly, in Neways, Inc. v. Miguel Jimenez,WIPO Case No. D2012-1298, the panel, in paragraph 6.A of the Administrative Panel Decision, has held that: “The Complainant has established that it owns rights in the NEWAYS mark.” B. Respondent Background
The Respondents do not admit much of the background information which they state is not within their knowledge.
The Response states that Respondent No.1 and E. Pereira (Pereira) became business “partners” in or about 2008-2009. This agreement was never formalized.
It states that the company “Neways India” was formed and registered in India (hereafter referred to as “Neways India”). The arrangement was that Respondent No. 1 would use his expertise and contacts throughout the world to set up an arrangement with the Complainant and Pereira would do all the local work. Initially Pereira was to pay 50% of costs but eventually due to the Complainant pulling out of its commitments, Pereira decided only to provide effort to the venture (no money). Respondent No. 1 had no option but to continue with this arrangement. Respondent No. 1 was meant to have 50% shareholding in the newly incorporated company “Neways India” transferred to his name, but this never eventuated. Pereira eventually absconded with money Respondent No. 1 had paid into a company account to pay for expenses. After this time, Respondent No. 1 had no contact with Pereira.
The Response states that all discussions and contractual negotiations maintained that the Complainant would eventually buy out Respondent No. 1 and Pereira from their shareholding.
It states that at no time was Neways India considered to be the property or ownership or under the authority of the Complainant. It notes that the documents provided by the Complainant stated that Respondent No. 1 and Pereira were appointed as directors to their Indian operations. Although Respondent No. 1 was never appointed as a director, it is clear that Neways India was Respondent No. 1 and Pereira’s operation.
Neways India was not an entity of the Complainant or owned or controlled in any way by the Complainant.
The Respondents also state that the Complainant had known, committed and agreed to Neways India being formed and operating. The Respondents refer to a video recording published on the Internet and speaking was E. Larsen (CEO of the Complainant) which they claim evidences definite agreement from the Complainant that Respondent No. 1 and Pereira had an agreement with the Complainant to commence Neways India.
The Respondents deny that Neways India was set up to do business “solely for and on behalf of” the Complainant. Neways India was in the ownership of Respondent No. 1 and Pereira and the Complainant was simply going to act as a contractor/supplier for Neways India.
The Response states that if the Complainant wished to buy Respondent No. 1 out at a later date and claims that the Complainant was dishonest in their negotiations and conducted the same in bad faith.
The Response states that the Complainant had committed to reimbursing Respondent No. 1 AUD 10,000 towards essential costs. This was never paid.
The response makes various general comments about the lack of formality in a variety of negotiations and states that the final cessation and timing of negotiations was very blurred. It states that it is also incorrect to say that all authorities were withdrawn. This was not mentioned in the April 22, 2010 communication from the Complainant. The Response states that is because there were still discussions going on. The communication only asks for the return of confidential material and it is alleged that it is otherwise irrelevant to the Complainant’s submissions.
In addition the Respondents state that when preliminary agreements to start Neways India had occurred and Neways India was incorporated, Respondent No. 1 was the Neways India part owner. Respondent No. 1 had paid for all costs of setting up.
The Respondents state that therefore Respondent No. 1 had every reason and entitlement to purchase, register and own the Neways India domain names. The Complainant had no intention of commencing business in India – Respondent No. 1 was the only person doing this.
The Response states that discussions and negotiations went on for many months (even years) and the Complainant was informed during this time about Respondent No. 1’s ownership of the domain names.
It is stated that it was E. Larsen (CEO of the Complainant) who first asked Respondent No. 1 if he owned them and Respondent No. 1 said “Yes”. E. Larsen simply acknowledged this fact and nothing more was mentioned about it. Not only did the Complainant know Respondent No. 1 owned the domain names, but they were perfectly happy for him to use them.
The Response states that this explains why it is only this year that the Complainant approached the Respondents officially about the domain names.
The Response states that Respondent No. 1’s protection was that he owned the domain names. These had been registered in the name of Respondent No. 1 quite properly and legally and he accepted this as “insurance” that the Complainant would do the right thing and rightly pay the money that had been promised.
To date, the Respondents have not received aforementioned compensation or payment as previously agreed by the Complainant.
The Response states that the Complainant had full knowledge and made no complaints about this matter.
The Respondents further state that he had made it clear that he had legitimate rights to own the domain names in question. He also made it clear that the Complainant committed to compensating Respondent No. 1 for expenses he incurred.
The Respondents submit AUD 15,000 would in only in a small part compensate them for their costs in regards to: domain names, programming, websites, legal fees, communications, travel etc.
The Respondents also highlight that at the time, the website content mentioned related entirely to the proposed venture of Neways India to sell products in India.
The content remained the same and did not change because it was left “in situ”. There was never a need to change or remove it. Neways India simply did not trade.
The Response states that the information on the website has now been changed as is the Respondents’ right. The information is now such that the Disputed Domain Name is no longer used for anything relating to the Complainant’s trade or business. The Disputed Domain Name is to be used to advertise the sale of Respondent No. 1’s book “New Ways to Succeed” within India which was first published in 1998 and has a proven and successful track record of sales.
The Respondents state that they have made it clear they were willing to transfer the domain names but he required compensation that is appropriate.
The Respondents also highlight that in Respondent No. 1’s last letter of reply, he asked the Complainant to propose an alternative settlement. He never received a reply to that request. A. Whether the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
(Policy, paragraph 4(a)(i))
(a) The Respondents submit that the Complainant is unknown in India. The Complainant does not trade in India and has no apparent intentions to do so.
(b) The addition of the name “India” is totally relevant.
It makes it indisputable that the intent by Respondent No. 1 was to operate Neways India in India. There was no malicious or devious intent in registering the domain names in question.
Respondent No. 1 intends to sell a product in a completely different class (i.e. books) to that which the Complainant is purportedly interested in selling, in India or otherwise.
Further, there is no passing off of the Complainant’s trademark. Rather, the Disputed Domain Name is merely combining the words “new” and “way”, and adding the word “India” so that it is applied to Respondent No. 1’s book which has been in publication for over a decade.
There has been, and remains, no advantage gained.
There was no traffic flow from the domain names or websites (from 2010 to 2013).
Therefore there is no “tremendous reputation and goodwill benefit”. There is no intent (or result) to attract “members of trade”.
Also as stated above, the Complainant does not trade in India and therefore, there is no trade to divert. B. Whether the Respondents have rights or legitimate interests in respect of the domain name
(Policy, paragraph 4(a)(ii))
The Response submits that there is no diversion and no confusion. There is no reputation of the Complainant in India since they do not trade and are unknown.
The Complainant cannot be the rightful owner of the domain names when they have never owned them and never paid a cent towards registration, computing and legal costs.
In addition, the Disputed Domain Name is no longer used for anything relating to the Complainant’s trade or business. C. Whether the domain name has been registered and is being used in bad faith
(Policy, paragraph 4(a)(iii))
The Response states that:
There was and is absolutely no fame of the Complainant or reputation in India.
The Complainant was not registered in India before Respondent No. 1 established Neways India in 2009.
The Respondents reject that they registered the domain names without the Complainant’s knowledge.
The domain names were benevolently registered by Respondent No. 1 and the Complainant had full knowledge of this.
With regards to the matter of bad faith, it has been the Complainant which has refused to discuss a reasonable settlement in the matter. This latest Complaint is yet another attempt to avoid paying the compensation the Complainant properly owes Respondent No. 1.
There was no traffic generated from the domain names.
In addition, the Disputed Domain Name is no longer used for anything relating to the Complainant’s trade or business. It is the intention of Respondent No. 1 to advertise the sale of his long published book “New Ways to Succeed” within India.
On this basis, Respondent No. 1 will be selling a product in a completely different class to that which the Complainant is purportedly interested in selling, in India or otherwise.
The Respondents state that the Disputed Domain Name was not registered for the purpose of selling the registration to the Complainant. Rather, the Disputed Domain Name was registered for a bone fide business venture which subsequently failed. As the business venture failed, Respondent No. 1 made the business settlement proposal which the Complainant was entitled to reject, and did so. Clearly, there was no bad faith or cybersquatting in these circumstances. 6. Discussion and Findings
The Policy establishes three elements, specified in paragraph 4(a) that must be established by the Complainant to obtain relief. These elements are:
(i) the Disputed Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) the Respondents have no rights or legitimate interest in respect of the Disputed Domain Name;
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
Each of these elements will be addressed below. Background
The background to this dispute is not clear from either the Complaint or the Response. The details of the legal arrangements between the parties are sparse and unsubstantiated. There is a great deal of repetition.
A complaint has been made about the use of without prejudice correspondence but the Panel can see only one communication which is marked without prejudice. This communication was after the Respondents made an open proposal for settlement in relation to the overall dispute between the Parties. The Panel’s judgment does not need to rely on the without prejudice communication or whether the offer of settlement in a much broader context constituted use in bad faith. A. Identical or Confusingly Similar
The Panel accepts that the Complainant has a substantial portfolio of trademarks around the world dating back to at least 1992 for its extensive multi-level marketing business of manufacture and sale of dietary supplements and home and personal care products and has substantial goodwill in the NEWAYS trademark. The Panel accepts that the Complainant operates in about 29 countries and has significant online presence; using its trademark NEWAYS in a variety of domain names either itself or giving permission for third parties to register them.
The Panel accepts that the Disputed Domain Name is confusingly similar to the Complainant’s trademark as the addition of India does not prevent a domain name being confusingly similar.
The Panel refers to the following UDRP cases:
- Rolls-Royce PLC v. Hallofpain, WIPO Case No. D2000-1709;
- Kabushiki Kaisha Toshiba dba Toshiba Corporation v. WUFACAI, WIPO Case No. D2006-0768.
The Panel rejects the Respondents’ argument that the reference to India in the Disputed Domain Name and the alleged current lack of trade in India by the Complainant prevent the Disputed Domain Name from being confusingly similar. The Panel also rejects the contention that the Respondents’ activities in relation to the Disputed Domain Name or, in the circumstances, the somewhat surprising suggestion in the Response that the Respondents are merely combining “new” and “way” are relevant to the issue of confusing similarity. B. Rights or Legitimate Interests
The Panel is unclear from the Complaint and the Response what ownership was envisaged for the Indian company. The June 2009 correspondence indicates that the company is the Complainant’s company with Respondent No. 1 and Mr. Pereira being directors. Nothing in the video annexed to the Response suggests that the company is to be owned by these individuals. Indeed the final comment from Mr. Larson is “Let’s build a big business in India together”. It is however clear that permission was granted for the Indian Entity to use the NEWAYS trademark for its company name. Ultimately it seems that the proposal was that Respondent No. 1 should retain the company but change its name which appears not to accord with what was said in the June 2009 correspondence between the parties and with the Companies registry in India.
Nothing in the pleadings suggests that Respondent No. 1 or Respondent No. 2 is entitled to register the Disputed Domain Name. The Response states that Respondent No. 1 was Neways India part owner which did entitle him to register the Disputed Domain Name. It is claimed by the Respondents that the Complainant either agreed, of which there is no evidence, or did not object when they learned of it, and suggest that it is too late for objection to be made now.
The Panel does not accept that the Respondents were entitled to register the Disputed Domain Name and does not accept that the Complainant is not now entitled to file a UDRP complaint in view of the failure of the business venture referred to repeatedly by the Respondents.
The Panel rejects the Respondent No. 1’s contention that the Respondents have legitimate rights to the Disputed Domain Name because this would represent compensation for expenses he had incurred. Respondent No. 1 states that “his protection was that he owned the domain/s……he accepted this as ‘insurance’ that the Complainant would do the right thing and rightly pay the money that had been promised”.
The Panel accepts that the Complainant and the Respondents have no association and customers looking for the Complainant’s sites may be diverted to that of the Respondents.
In conclusion the Panel does not consider that the Respondents have rights or legitimate interests in respect of the Disputed Domain Name. C. Registered and Used in Bad Faith
The positions of the parties are again unclear in certain respects.
The Complainant states that the Respondents have registered the Disputed Domain Name with malafide intention and without their knowledge, authorization, consent or permission.
The Respondents variously say that “the Complainant had full knowledge and made no complaints about the matter” but do not state that this was at the time of the registration and “[i]n fact it was E. Larsen (CEO of the Complainant) who first asked Respondent No. 1 if he owned them and Respondent No. 1 said “Yes”. E. Larsen simply acknowledged the fact and nothing more was mentioned about it. The Panel further notes, in any event, the WhoIs record for the Disputed Domain Name indicates a registration date of January 15, 2009, prior to any evidence provided to demonstrate any authorization by the Complainant for the registration of the Disputed Domain Name.
On balance and in the light of some of the Respondents’ other assertions the Panel accepts the Complainant’s account. Even if there had been agreement earlier, which is not established by the Respondents, following the failure of the business venture the Panel accepts that the Complainant was entitled to withdraw any agreement to the use of the NEWAYS trademark in the Disputed Domain Name by the Respondents. The Panel accepts that the communication of June 4, 2009 did not refer to the withdrawal of consent to the use of the NEWAYS trademark although there was an implication of that in view of the withdrawal from the business arrangement. However the subsequent correspondence from the Complainant’s lawyers clearly stated that any use of the NEWAYS trademark was no longer permitted. It has been accepted that it is legitimate to withdraw consent after initial permission being granted. The Panel refers to:
- Omnigraphics Capital (Pty) Ltd v. Fleximount, Guy Langevin,WIPO Case No. D2004-0471;
- S.O.R. Internacional S.A. v. Bellisima Inc.,WIPO Case No. D2010-1074;
- Bright Imperial Ltd. v. Senja Dumpin,WIPO Case No. D2009-1619;
- Yahoo! Inc. v. Feiji Gao,WIPO Case No. D2013-0521.
The Panel accepts that by use of the Disputed Domain Name Internet traffic will have been drawn to the site resulting in deception and confusion and even with the Respondent No 1’s book “New Ways to Succeed” confusion will continue and this constitutes use in bad faith. Therefore the Panel finds that the Disputed Domain Name was registered and used in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name be transferred to the Complainant.
Isabel Davies
Sole Panelist
Date: December 5, 2013
Full & Egal Universal Law Academy