The Complainant is Workflowww International Limited of Hong Kong, China, represented by IP Mirror Pte Ltd, Singapore.
The Respondent is Privacy Protection Service INC d/b/a PrivacyP of Queensland, Australia / Mark Lam of Singapore, Singapore. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 12, 2014. On March 12, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 13, 2014 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 March 18, 2014, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center also informed the Complainant that the Complaint was administratively deficient. The Complainant filed an amended Complaint on March 24 and 25, 2014.
The Center verified that the Complaint together with the amended 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 March 25, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 14, 2014. The Response was filed with the Center on April 11, 2014.
The Center appointed Jonathan Agmon as the sole panelist in this matter on April 29, 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, Workflowww International Limited (hereinafter: the “Complainant”), is a Hong Kong based company, incorporated in April 2013. The Complainant engages in developing and marketing software applications for business processes.
The Complainant is the owner of Hong Kong trademark registration no. 3026211222 for WORKFLOWWW, in classes 35 and 42, with the registration date of May 28, 2013. The Complainant is the owner of Chinese trademark application no. 12668798 for WORKFLO + design, in class 35 and Chinese trademark application no. 12669519 for WORKFLO + design, in class 42, both filed on May 29, 2013.
The disputed domain name was registered by the Respondent on May 10, 2012. At the time the Respondent registered the disputed domain name, it appears that it was engaged in a business relationship with Mr. C. Koh, founder of the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant contends that it has trademark rights in the name “workflowww” and that the domain name is identical to that mark.
The Complainant further argues that the Respondent does not have a right or legitimate interest in the disputed domain name since it is not commonly known by the disputed domain name and does not own any identical trademarks of the same name.
The Complainant further argues that the domain name was registered and used in bad faith in order to disrupt the business of the Complainant.
The Complainant further argues that the Respondent, Mr. Mark Lam was engaged as a freelancer to help with the business startup and business development by its founder, Mr. C. Koh. The Complainant further argues that during the early engagement period which started in April 2012, Mark Lam went ahead to register the disputed domain name without seeking permission from the founder on May 10, 2012.
The Complainant further argues that the services of the Respondent were terminated but he was not willing to transfer the disputed domain name to the Complainant without the payment of USD 180,000 as stated in his email to the founder on April 10, 2013. The Complainant contends that these actions constitute an extortion and demonstrate bad faith by the Respondent.
The Complainant further argues that it registered the alternative domain name as it had no access to the disputed domain name, and that currently the Respondent has redirected the disputed domain name to the Complainant’s website “www.my”.
The Complainant further argues that the Respondent’s refusal to transfer the disputed domain name back to the Complainant is an act of bad faith.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent does not dispute that the disputed domain name is identical to a trademark which the Complainant has filed in Hong Kong and China dated on May 28, 2013 and May 29, 2013 respectively.
However, the Respondent contends that a trademark application No. 12575936 for the mark WORKFLOWWW, has already been filed with the China Trademark Registry on May 13, 2013, by Shanghai Donglan Information Technology Co. Ltd (“SDITC”).
The Respondent further argues that as an agent of SDITC it does have rights and legitimate interests in
the disputed domain name.
The Respondent further argues that the Complaint is a clear abuse of the UDRP and the Complaint lacks material information to substantiate the basis of its case.
The Respondent further argues that the Complaint is associated with a dispute amongst the shareholders of a startup company.
The Respondent claims that it had no involvement or association whatsoever to the Complainant (Workflowww International Ltd – “WFI”). The Respondent claims that it served as an officer in Workflowww Limited (“WFL”), a company incorporated in Hong Kong on October 31, 2012.
The Respondent further argues that the disputed domain name has been registered in good faith solely for the use of and in the interests of WFL, as a going concern, and that Mr. C. Koh, founder of the Complainant, was duly informed of the identity of registrant.
The Respondent further claims that it terminated its relations with WFL due to financial and fiduciary irregularities, and that at the time, the Complainant had not yet existed.
The Respondent further claims that it negotiated a settlement agreement with the Complainant, but it was suspended as a result of its refusal to also include WFL as a side to the agreement.
The Respondent further argues that the Complainant withheld material facts and seeks a finding of bad faith and abuse of the proceeding by the Complainant. 6. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant is the owner of Hong Kong trademark registration No. 3026211222 for WORKFLOWWW, in classes 35 and 42, with the registration date of May 28, 2013. The Complainant is the owner of Chinese trademark application No. 12668798 for WORKFLO + design, in class 35 and Chinese trademark application No. 12669519 for WORKFLO + design, in class 42, both filed on May 29, 2013.
The disputed domain name was registered by the Respondent on May 10, 2012, before the Complainant filed for or registered the WORKFLOWWW trademark. Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity under the UDRP. The UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired rights. However, in such circumstances it may be difficult for the Complainant to show that the disputed domain name was registered in bad faith under the third element of the UDRP (see: Reckitt Benckiser Plc v. Eunsook Wi,WIPO Case No. D2009-0239).
The disputed domain name integrates the Complainant’s WORKFLOWWW trademark in its entirety, as a dominant element. The addition of the generic Top-Level Domain (“gTLD”) “.com” to the disputed domain name does not avoid confusing similarity. See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
The result is that the Complainant has shown that the disputed domain name is identical or confusingly similar to a trademark, in which the Complainant has rights. The first element of the UDRP is therefore satisfied. B. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name.
The Respondent claims that trademark application no. 12575936 for the mark WORKFLOWWW, has already been filed by SDITC with the China Trademark Registry on May 13, 2013, prior to the filing or registration date of the Complainant.
The Respondent argues that as an agent of SDITC it does have rights and legitimate interests in the disputed domain name.
In light of the conclusions hereafter with respect to bad faith, the Panel finds it unnecessary to make any findings in connection with rights or legitimate interests. C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, the Panel must establish whether the disputed domain name has been registered and is being used in bad faith.
Both parties have provided evidence in support of the fact that the parties, directly or through related entities, have conducted business together. The Panel finds that from the evidence presented by both parties, it is not possible to form an opinion as to the scope, nor the purpose of the parties’ joint collaboration or the existing situation.
Under the circumstances presented, the Panel is of the view that the Complainant has failed to prove that the Respondent registered the disputed domain name with the requisite bad faith required under the Policy. Although the Respondent’s continued use after termination of the parties’ relationship might be viewed as an indication of bad faith use, the Policy also requires proof of bad faith conduct at the time of registration.
The Panel cites the following with approval from Schneider Electronics GmbH v. Schneider UK Ltd,WIPO Case No. D2006-1039: “In situations such as the present case, where the parties have entered into and maintained a long-standing commercial relationship, Panels tend to impose on the Complainant a heavier burden of proof for bad faith, generally requiring more comprehensive evidence than that which may be necessary in the typical dispute between unrelated adversaries. At a minimum, the Complainant must provide full disclosure of the history of the relationship, and in particular, the relevant agreements and contractual terms which have governed their joint enterprise. Allegations of bad faith aimed at a former distributor or licensee can only be properly understood in the full context of their prior history. It is also important to bear in mind that the Policy was designed to prevent cases of cybersquatting and it cannot be used as a means to litigate broader disputes involving domain names (see The T, LLC v. Jeffrey S. Poploff,WIPO Case No. D2000-1470 and Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903).”
The Panel considered the evidence provided by both parties. The Panel finds that taking the evidence as it stands and bearing in mind the limited evidentiary record put forward by the Complainant, the Panel is unable to conclude that the disputed domain name has been registered and used in bad faith. (For a similar finding see Schneider Electronics GmbH v. Schneider UK Ltd, supra).
Moreover, the aim of the Policy is to stop bad faith registration of domain names. The UDRP does not cover trademark infringements nor commercial disputes between parties. The Panel finds that the dispute between the parties is significantly more complex than a simple case of bad-faith registration of a domain name. The Policy was not meant to be used to place pressure on parties to a broader dispute and therefore its use should be avoided in such cases.
The Panel makes no findings as to the dispute between the parties, nor the sufficiency, content or veracity of the evidence brought before it. This case may be a complicated trademark and commercial dispute, which needs to be determined by national courts under national law with the benefits of full disclosure, discovery, due process and cross-examination of witnesses. It is not the kind of dispute with clear facts indicating bad faith that the UDRP was designed for. Therefore, this UDRP decision is accordingly not intended to prejudice the Complainant if it decides to file an infringement case under relevant national law.
The Panel, therefore, concludes that for the purpose of the Policy, the Complainant has not established that the Respondent has registered and used the disputed domain name in bad faith. D. Reverse Domain Name Hijacking
The Respondent requested a finding of bad faith and abuse of the proceeding against the Complainant.
A finding of Reverse Domain Name Hijacking is defined as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” See the Rules at paragraph 1. Although the Complainant has not succeeded in this proceeding, the Panel finds that the evidence brought before the Panel is insufficient to conclude that the Complainant has committed Reverse Domain Name Hijacking. It should be noted that the Complainant owns a trademark registration for a mark identical or confusingly similar to the disputed domain name.
A finding of Reverse Domain Name Hijacking is appropriate “if Complainant knew of Respondent’s unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use and nevertheless brought the Complaint in bad faith.” (Futureworld Consultancy (pty) Ltd. v. Online Advice,WIPO Case No. D2003-0297, AIDA Cruises German Branch of Societá di Crociere Mercurio S.r.L. v. Enspire Technologies (PVT) Ltd.,WIPO Case No. D2008-1471). The Respondent has not convinced the Panel that this is actually the case here.
The Panel also notes that complex disputes between parties should also be taken into account when a panel is requested to decide if Reverse Domain Name Hijacking took place. Since commercial interests and disputes exist between the parties, the Panel finds that the Policy and the use of the UDRP are ill equipped to provide the Panel procedures necessary to adjudicate the case. Therefore, and without establishing that the Respondent could not under other circumstances establish Reverse Domain Name Hijacking, the Panel determines that in the present case and under the present circumstances, and having regard to the insufficiency of the Policy and the UDRP to adjudicate such complex issues, the Respondent argument that the Complainant has acted in bad faith is rejected. 7. Decision
For the foregoing reasons, the Complaint is denied.
Jonathan Agmon
Sole Panelist
Date: May 13, 2014
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