Complainant is Expolink Europe Limited t/a Expolink of Chippenham, Wiltshire, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Michelmores LLP, United Kingdom.
Respondent is P of Nobby Beach, Queensland, Australia / Netechnics (S) Pte. Ltd. of Singapore, Singapore, represented pro se. 2. The Domain Name and Registrar
The disputed domain name is registered with Register4Less, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2013. On October 29, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 29 and November 7, 2013, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on November 12, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 2, 2013. The Response was filed with the Center on December 2, 2013. On December 3, 2013, the Center received Respondent’s supplemental filing. On the same date, the Center acknowledged receipt of Respondent’s supplemental filing and informed the parties that the supplemental filing request would be forwarded to the Panel (upon appointment) for determination pursuant to its discretion.
The Center appointed Mark Partridge as the sole panelist in this matter on December 10, 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
Complainant is international business providing services including whistleblowing hotlines, incident management software, and contact center solutions. Complainant was founded in 1995 and has been using the domain name since November 14, 1997.
Complainant owns the United Kingdom registration for the mark:
EXPOLINK; Reg. No. 2453815, entered into register on October 12, 2007.
Respondent Netechnics (S) Pte Ltd. is a web hosting and web development company that provides a searchable database of expositions, conventions, exhibitions, and public meetings around the world. Respondent registered the disputed domain name on April 30, 1996 and made active use of the domain name from January of 1998 through June of 2013. 5. Parties’ Contentions A. Complainant
Complainant submits that it has trademark rights in EXPOLINK, and has been using the domain name since 1997. Complainant’s allegations are made against P (“Privacy Protect”) not Respondent Netechnics.
Complainant contends that Respondent has deliberately infringed on its rights by registering a domain name that is identical to its EXPOLINK mark, and that Respondent has no rights or legitimate interests in the disputed domain name because it is merely preventing Complainant or another from obtaining the disputed domain name. Finally, Complainant argues that Respondent registered the disputed domain name for the sole purpose of preventing Complainant or another party from obtaining it, so its registration and use is in bad faith. B. Respondent
Respondent contends that it registered the disputed domain name in 1996 and has used the disputed domain name in connection with its business since January 1998.
Respondent concedes that the disputed domain name is similar to Complainant’s trademark, but argues that it had used the disputed domain name well in advance of Complainant’s registration of its mark. Respondent argues that this proves it had no intention of disrupting the business of Complainant.
Further, Respondent notes that it made use of the disputed domain name from January of 1998 until June of 2013, when it was taken off of the company server for recoding and technical maintenance. Respondent intends for the web page to be operational again in the near future.
Finally, Respondent argues that it could not have registered the disputed domain name in bad faith because it was registered before Complainant registered its similar domain name and before Complainant registered its trademark. Respondent further states that in fact it came to know of Complainant’s domain name after it received the Complaint. Based on this, Respondent requests the denial of the Complaint and a finding of reverse domain name hijacking. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant must prove each of the following three elements of its case in order to obtain the requested relief:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel considers each element in order. A. Identical or Confusingly Similar
Complainant’s trademark rights are demonstrated by its United Kingdom registration of the mark EXPOLINK (Reg. No. 2453815), registered on October 12, 2007.
Where a domain name includes an identical match to a complainant’s mark, a complainant has satisfied the burden of proving that the domain name is identical or confusingly similar under paragraph 4(a)(i) of the Policy. See, e.g., Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163.
The disputed domain name is identical to Complainant’s registered trademark. Accordingly, the Panel finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights. B. Rights or Legitimate Interests
Under the second element of paragraph 4(a) of the Policy, the complainant is required to present a prima facie case that the respondent lacks rights or legitimate interests in a domain name. After the complainant has made a prima facie case, the burden of production shifts to the respondent to present evidence demonstrating rights or legitimate interests in the domain name. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455.
Complainant argues that Privacy Protect has not used and is not preparing to use the disputed domain name in connection with a bona fide offering of goods or services. Complainant argues that the only use of the disputed domain name is to prevent Complainant or other entity with a legitimate interest from obtaining the disputed domain name.
Respondent rebuts Complainant’s argument by providing evidence of use of the disputed domain name from January of 1998 until June of 2013, when Respondent claims the web site was taken down for technical maintenance. Respondent’s use of the disputed domain name was in connection with expositions, conventions, exhibitions and meetings, supported by archival web pages.
Use of a privacy service to cloak the identity of a domain name owner can be sufficiently evocative of cybersquatting to require a respondent to present evidence demonstrating rights or legitimate interest in the disputed domain name. See, e.g., HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager,WIPO Case No. D2007-0062.
The Panel finds that the circumstances surrounding Respondent’s use of a privacy service do not evoke cybersquatting. Even if Complainant has made a prima facie case that Respondent lacks any rights or legitimate interests in the disputed domain name, Respondent has presented adequate evidence to rebut this claim. Although the disputed domain name currently does not resolve to any web page, it has been owned and used by Respondent for years. Beyond the privacy service, there are no indicia of cybersquatting present. Respondent made actual use of the disputed domain name in connection with a bona fide offering of goods or services, satisfying its burden under paragraph 4(c) of the Policy.
On balance, Complainant has not met its burden of showing that Respondent lacks rights or legitimate interests in the dispute domain name, so it does not satisfy the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy recognizes certain circumstances as evidence of registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(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.”
Complainant argues that the disputed domain name was used legitimately when originally registered in 1996 but that upon transition to P, the registration and use of the disputed domain name has been in bad faith. Complainant submits that the inactivity of the page is evidence that the disputed domain name was registered primarily to prevent Complainant or others from registering it.
Registration and use in bad faith are shown where no evidence of prior use by a respondent exists and the evidence demonstrates a deliberate intent to trade on the good will of a complainant. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “M”, WIPO Case No. D2000-0847.
Respondent has been the owner of the disputed domain name since its registration in 1996. Respondent has made actual use in connection with its online exhibition database throughout that period, making the use bona fide. Respondent asserts that the disputed domain name is temporarily unavailable because it is making technical modifications to the web page. Respondent demonstrates that it was not making a deliberate infringement of Complainant’s trademark rights. By showing prior use and no deliberate intent to trade on the good will of Complainant, Respondent has not registered and used the disputed domain name in bad faith.
Respondent’s use of a privacy service does not support a finding of registration and use in bad faith. Again, Respondent is the same entity that originally registered the disputed domain name in 1996 and has made continuous use until June of 2013. Complainant has even admitted that the use of the disputed domain as originally registered was a legitimate use.
An overriding 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.
The circumstances presented here do not support the kind of exploitive registration and use necessary to find bad faith. Use of a privacy service in and of itself is not evidence of bad faith, and none of the circumstantial indicia point to Respondent’s registration as a means to prevent Complainant’s ownership of the domain name or to disrupt Complainant’s business. Respondent has made actual bona fide use of the disputed domain name.
So, Complainant has not satisfied its burden of proving Respondent’s registration and use of the disputed domain name in bad faith under paragraph 4(a)(iii) of the Policy. D. Reverse Domain Name Hijacking
“Reverse domain name hijacking” is defined in the Rules as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.” The onus of proving that a complainant has acted in bad faith is on the respondent, and mere lack of success of the complaint is not itself sufficient to constitute reverse domain name hijacking. Jazeera Space Channel TV Station v. AJ Publishing aka Aljazeera Publishing,WIPO Case No. D2005-0309.
The Panel is not persuaded that the circumstances of this case justify a finding or reverse domain name hijacking. Respondent does no more than assert that Complainant’s failure to prove that Respondent registered and used the disputed domain name in bad faith obliges a finding of reverse domain name hijacking. The Panel disagrees. Complainant has trademark rights in its name and a colorable, but ultimately unsuccessful claim. The failure to prevail does not equate with bad faith. 7. Decision
For the foregoing reasons, the Complaint is denied. Respondent's request for a finding of reverse domain name hijacking is also denied.
Mark Partridge
Sole Panelist
Date: December 30, 2013
Full & Egal Universal Law Academy