The Complainant is Ednovo d/b/a Gooru of Palo Alto, California, United States of America, represented internally.
The Respondent is Angelo Greggi of Treviglio, Bergamo, Italy, represented pro se. 2. The Domain Names and Registrar
The disputed domain names , , and (“Disputed Domain Names”) are registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2013. On December 12, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 14, 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 December 18, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 7, 2014. The Response was filed with the Center on January 7, 2014.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on January 13, 2014. 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 is a non-profit organization established in 2011, and based in the United States of America, that operates a free search engine via its domain name , for teachers and students to search for learning materials, such as multimedia resources, digital textbooks, videos, games and quizzes (“Complainant's Website”). The Complainant holds a trade mark registration for GOORU in the United States of America since March 27 2012.
The Respondent is based in Italy. The Disputed Domain Names were registered as follows: on December 9, 1999 and , and respectively on February 21, 2003. The Disputed Domain Names and currently resolve to parking pages that includes sponsored links, and and are currently inactive and resolve to a website that states that the site is under construction. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarized as follows:
(a) The Complainant owns a trade mark registration for GOORU in the United States of America, since March 27, 2012. The Disputed Domain Names are identical to the Complainant’s registered trade mark GOORU.
(b) The registration of the Disputed Domain Names prior to the registration of the Complainant’s GOORU mark does not prevent a finding of identical or confusing similarity under the UDRP.
(c) The Respondent has not been using the Disputed Domain Names in relation to a bona fide offering of goods or services, and is not making a legitimate noncommercial or fair use of the Disputed Domain Names. The Disputed Domain Names have been inactive for many years. Parking or landing pages, or pay-per-click links, cannot in themselves confer rights or legitimate interests in the Disputed Domain Names.
(d) By registering the Disputed Domain Names, the Respondent has blocked the Complainant from using them.
(e) The Respondent uses the Disputed Domain Name as a parking page to provide sponsored links that are confusingly similar to the goods and services offered by the Complainant, e.g. using phrases such as “learning portals”, “best search engine”, “search engine list” and “search engine forum”.
(f) Inaction can constitute bad faith use, and all the Disputed Domain Names resolve to inactive or passive websites.
(g) The Disputed Domain Names confuse Internet users into thinking that they are connected to the Complainant. The Respondent renewed its registrations for these Disputed Domain Names when he realized that the Complainant’s Website was receiving heavy traffic, in order to attract for commercial gain Internet users to the Disputed Domain Names by creating a likelihood of confusion with the Complainant’s GOORU mark in order to increase its pay-per-click revenue.
(h) Previous panelists in other cases have found that respondents have acted in bad faith when renewing the domain names, after becoming aware of the complainant’s trade mark rights. In this case, the Respondent renewed the Disputed Domain Names for the purposes of disrupting the Complainant’s business, and to attract Internet users to its websites by creating a likelihood of confusion with the Complainant’s GOORU mark. The Complainant had contacted the Respondent in January 18, 2011 and February 22, 2013 informing him of the Complainant’s non-profit business and requesting that the Respondent transfer the Disputed Domain Names to the Complainant. The Respondent then renewed the Disputed Domain Name in 2012. The Respondent therefore knew about the Complainant at the time he renewed the Disputed Domain Names, and it was the Respondent’s responsibility to check whether or not the Disputed Domain Names infringed upon another person’s trade mark rights.
(i) The Respondent failed to provide a disclaimer on the websites that the Disputed Domains Names resolve to. B. Respondent
The Respondent’s contentions can be summarized as follows:
(a) The Complainant only owns trade mark rights in the GOORU mark in the United States of America, and nowhere else in the world. The Respondent registered the Disputed Domain Names before the Complainant was established, and before the Complainant registered and began using the GOORU mark.
(b) The Complainant was aware of the Respondent and the Disputed Domain Names, and the Respondent’s intention to use the Disputed Domain Names, before the Complainant registered and started using the GOORU mark (as evidenced by the Complainant’s email sent to the Respondent on January 28, 2011). However, despite this, the Complainant still chose to use the mark GOORU, instead of exploiting an alternative version of it (e.g. “guru”, “gooroo”, “guroo”, etc).
(c) The Complainant was incorrect when it stated in its Complaint that the Respondent had to show that he is currently using the Disputed Domain Names to provide bona fide services and goods. Instead, the Respondent only needs to show “demonstrable preparations” to use the Disputed Domain Names to provide bona fide services and goods.
(d) The Respondent has been working on the launch of its “gooru” website, to which the Disputed Domain Names will resolve, since 2010. The Respondent has provided evidence in support including various correspondences regarding the “gooru” project.
(e) With regard to the Disputed Domain Names and , which currently resolve to parking pages with sponsored links:
(i) The Respondent never authorized the Registrar to use these two Disputed Domain Names for such purposes. This is simply a default activity performed by the Registrar, and the Respondent has not earned any money from this activity.
(ii) It is incorrect that the parking pages create a likelihood of confusion with the Complainant’s Website. The terms used on the parking pages that were identified by the Complainant as potentially confusing all relate to “search engine”, which is a generic term that can be found on all parking pages. The only potential confusion is with regard to the use of “learning portals” on the parking page. However, the word “gooru” is a variant of the word “Guru”, which means teacher or master, and therefore the Complainant cannot claim confusion.
(f) The Respondent did not renew the Disputed Domain Names after becoming aware of the heavy traffic that the Complainant’s Website was receiving. The Disputed Domain Names have always been renewed by the Respondent since they were first registered, which was before the Complainant was established. The Respondent only became aware of the fact that the Complainant had actually registered the GOORU mark in the United States of America when the Complainant emailed the Respondent on February 22, 2013, which is two months after the Respondent renewed his registration for the Disputed Domain Name on December 23, 2012. At the time he renewed his registration for the Disputed Domain Name , he was only aware of the Complainant, but not of the Complainant’s registered trade mark rights.
(g The Complaint was filed by the Complainant in an attempt at reverse domain name hijacking. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Names are identical or confusingly similar to a trade mark 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 Names; and
(iii) the Disputed Domain Names have been registered and are being used by the Respondent in bad faith. A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in respect of the GOORU trade mark on the basis of its trade mark registration in the United States of America. The Panel notes that the Complainant did not register the GOORU mark until March 27, 2012; thirteen years after the Disputed Domain Name was registered, and more than eight years after the Disputed Domain Names , and were registered. However, the Panel refers to paragraph 1.4 of the WIPO Overview of the WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), which states that registration of a domain name before a complainant acquires trade mark rights in a name does not prevent a finding of identical or confusing similarity under the first element of the UDRP.
Whether the Complainant had rights in the trade mark at the time of registration of the Disputed Domain Names may be relevant to the consideration of bad faith under paragraph 4(a)(iii) of the Policy, but it is not relevant for the purposes of determining whether the Disputed Domain Names are confusingly similar to a trade mark in which the Complainant has rights.
It is a well-established rule that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the generic top-level domain extension, in this case “.com”, “.biz”, “.org” and “.net”, may be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd,WIPO Case No. D2006 0762).
Accordingly, the Panel finds that the Disputed Domain Names are identical to the Complainant’s registered mark, and that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Names by demonstrating any of the following:
(i) before any notice to him of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Names or a name corresponding to the Disputed Domain Names was in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Names, even if he has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Paragraph 2.1 of the WIPO Overview 2.0 states that once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel accepts that the Respondent is not a licensee nor is he associated with the Complainant in any way that could give rise to any licence, permission or other right by which the Respondent could own or legitimately use the Complainant’s GOORU mark. The Panel further notes that the Respondent has not provided any evidence to demonstrate a registration of the GOORU trade mark anywhere in the world or any evidence that he has become commonly known by the Disputed Domain Names. Accordingly, the Panel is of the view that a prima facie case is established and it is for the Respondent to prove he has rights or legitimate interests to the Disputed Domain Names.
The Complainant alleges that the Disputes Domain Names have been inactive ever since they were registered, and the Disputed Domain Names and currently resolve to parking pages that provide sponsored links. The use of a domain name containing a well-known trade mark for the purpose of collecting referral fees from sponsored advertising links, has been consistently held not to be a legitimate offering of goods or services (See PRL USA Holdings, Inc. v. LucasCobb,WIPO Case No. D2006 0162; and Entertainment Shopping AG v. Nischal Soni, Sonik Technologies,WIPO Case No. D2009-1437).
However, the Respondent argues that he has been making preparations to use the Disputed Domain Names in connection with a bona fide offering of services, and has provided evidence in support.
In addition, the Complainant has provided copies of email correspondences with the Respondent dated January 18, 2011 and February 22, 2013, whereby the Complainant had asked the Respondent if he was interested in transferring the Disputed Domain Names to the Complainant. The Panel notes that the Respondent informed the Complainant that he was unwilling to transfer the Disputed Domain Names to the Complainant, as he intended to use the Disputed Domain Names for his own business projects. Further, if the intent of the Respondent was to make a profit from the Disputed Domain Names, the Panel believes that it would have been logical for the Respondent to try to negotiate with the Complainant in order to sell the Disputed Domain Names to the Complainant for profit. Contrary to this, the email correspondence provided by the Complainant shows that the Respondent had no desire to enter such negotiations. The Panel finds that this further supports the Respondent’s contention that he is making preparations to use the Disputed Domain Names for a bona fide offering of services, rather than to misleadingly divert consumers for commercial gain.
Lastly, the Panel notes that the Complainant first approached the Respondent in January 18, 2011, around the time that the Complainant was first established; over a year before it registered its trade mark GOORU in the United States of America, and 12 years after the first Disputed Domain Name was registered. The Complainant had therefore been aware of and knew that the Respondent was unwilling to transfer the Disputed Domain Names, and intended to use the Disputed Domain Names for its own business purposes, before the Complainant registered and began using the GOORU mark.
The Panel finds that the Respondent has shown that he has rights or legitimate interests in the Disputed Domain Names and that the Complainant has failed to satisfy paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
In light of the Panel’s finding under the second limb, the Panel need not consider whether or not the Disputed Domain Names were registered and used in bad faith. D. Reverse Domain Name Hijacking
The Respondent requests a finding of Reverse Domain Name Hijacking. Paragraph 15(e) of the Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. In addition, Reverse Domain Name Hijacking is defined under the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
The onus is on the Respondent to prove that the Complainant filed its Complaint in bad faith for the purposes of Reverse Domain Name Hijacking, and mere lack of success of the Complaint is not in itself sufficient for a finding of Reverse Domain Name Hijacking.
The Panel, on the balance, finds that the Complaint was not made in bad faith as an attempt at Reverse Domain Name Hijacking. 7. Decision
For the foregoing reasons, the Complaint is denied.
Gabriela Kennedy
Sole Panelist
Date: January 27, 2014
Full & Egal Universal Law Academy