The Complainant is Chuan Sin Sdn. Bhd. of Taiping, Perak, Malaysia, represented by IP Mirror Pte Ltd, Singapore.
The Respondent is Internet Admin (not for sale), Reflex Publishing Inc. of Tampa, Florida, United States of America (“US”), represented by John Berryhill, Ph.d Esq., US. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Moniker Online Services, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 7, 2014. On April 7, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 9, 2014, 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. On April 9, 2014, the Center received an informal communication from the Respondent.
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 April 16, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 6, 2014. The Response was filed with the Center on May 6, 2014.
The Center appointed John Swinson, Syed Naqiz Shahabuddin and Tony Willoughby as Panelists in this matter on May 21, 2014. The Panel finds that it was properly constituted. Each member of 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 Chuan Sin Sdn. Bhd., a Malaysia-based company incorporated since 1977. The Complainant is the largest bottled water producer in Malaysia.
The Complainant owns the following registered trade marks for SPRITZER:
- Malaysia Registration No. 88/03869, registered August 3, 1988; and
- Brunei Darussalan Registration No. 20428, registered November 21, 1994, (collectively, the “Trade Mark”).
The Complainant owns numerous other trademarks for SPRITZER in various Asian countries. All of these registrations post-date the registration of the Disputed Domain Name.
The Respondent is Reflex Publishing Inc. of the US. The Respondent is in the business of registering generic and descriptive terms as domain names.
The Respondent registered the Disputed Domain Name on September 28, 1998.
The Disputed Domain Name currently resolves to and displays links to various websites. The links are general in nature, and appear to be unrelated to the Complainant’s products (e.g. “Real Estate”, “Refinance”, “Fitness”, “Home Decorating”). 5. Parties’ Contentions A. Complainant
The Complainant makes the following submissions: Identical or Confusingly Similar
The Disputed Domain Name is identical to the Trade Mark. Rights or Legitimate Interests
The Respondent is not commonly known by the Disputed Domain Name and does not own any trade marks of the same name. Registered and Used in Bad Faith
The Respondent has acted in bad faith for the following reasons:
- it was aware of the popularity of the Trade Mark and registered the Disputed Domain Name to exploit the Trade Mark;
- it registered the Disputed Domain Name to stop the Complainant reflecting its Trade Mark in a corresponding domain name; and
- it registered the Disputed Domain Name to disrupt the Complainant’s business.
The Complainant submits that the registration of Disputed Domain Name has diluted its brand. It further submits that the links to “irrelevant products and services” displayed on the website at the Disputed Domain Name have diluted its brand.
Delay
The Complainant provided the following justification for its delay in bringing an action: “As the Internet evolves to be an important part of any business, the Complainant is more aware of the risk and infringement happening on the internet … As the Complainant runs a traditional business for many years and not an expert in the online world, it is now taking more proactive action to safeguard and protect its brand online.” B. Respondent
The Respondent makes the following submissions:
Non-disclosure
The Complainant did not disclose its failure to secure trademark registration for “SPRITZER” in the US (which is the UDRP Mutual Jurisdiction, and is also where both the Respondent and the Registrar are located). The Complainant’s trademark registration application was filed in October 2012, and was finally refused in January 2014. (The Respondent provided a detailed chronology of the refusal process. The final ground for refusal was that the SPRITZER mark was deceptively misdescriptive.) This failure to disclose information is a material omission (see Dynamis Limited v. Alice Stephen Uppal,WIPO Case No. D2013-2118). Identical or Confusingly Similar
A “spritzer” is “any variety of beverages consisting of an alcoholic beverage into which carbonated water has been added”. It is unlikely that Asian trade mark authorities would have been aware of this definition. Further, only two trade mark registrations, being Malaysia and Brunei Darussalam, pre-date the registration of the Disputed Domain Name, and alcohol is illegal in Brunei Darussalam (as such, a trade mark office clerk in that country would be unlikely to have heard of a “spritzer”). Rights or Legitimate Interests
The Respondent submits that it has rights in the US jurisdiction (which is also the UDRP Mutual Jurisdiction). The Respondent submits that the Panel should apply US law to this Complaint, and emphasizes that the Complainant’s trade mark has been refused legal recognition in this jurisdiction.
The Respondent is a “well-know registrant and monetizer of dictionary words” (see description of Respondent’s business in Harvard Lampoon, Inc. v. Reflex Publishing Inc.,WIPO Case No. D2011-0716 ()). The Respondent is entitled to register and use the generic word “spritzer” on the basis of its “inherent value and attractiveness” as an indicator for beverages and related products (see PROM Software, Inc. v. Reflex Publishing, Inc.,WIPO Case No. D2001-1154 (), concerning the same Respondent, and ELK Accessories Pty Ltd. v. Parnaz Farahani / E,WIPO Case No. D2012-0455). The Respondent has registered and uses a multitude of other beverage-related domain names (e.g. , , ). The Respondent did not have the Trade Mark in mind when it registered the Disputed Domain Name. Registered and Used in Bad Faith
The Respondent registered the Disputed Domain Name as part of its business (as outlined above). At the time the Disputed Domain Name was registered, the Complainant only held two trade mark registrations. The Respondent could not reasonably be expected to be aware of these registrations. Further, it is not possible to dilute the term “spritzer”, as it is generic.
The Complainant has not submitted that the Respondent registered the Disputed Domain Name for the purpose of sale. Nor has the Complainant submitted that the Respondent is diverting consumers to competitive products (in fact, the Complainant acknowledges that the featured links are to “irrelevant products and services”).
Delay
The Complainant’s justification for its 16-year delay in commencing proceedings is weak (see e.g. CareFree Homes II, L.P. v. Worldwide Media, Inc., NAF Claim Number: FA1010001351494). The Respondent submits that “a more likely motivator” was the Complainant’s failure to secure a US trade mark registration. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is 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 Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to one of the Complainant’s trade marks.
The Complainant owns a Malaysian registered trade mark for SPRITZER.
The Panel finds that the Disputed Domain Name is identical to this registered trade mark.
The fact that a trade mark application for SPRITZER has been rejected in the US does not form a ground for denying the Complainant this right under the first limb of the UDRP in circumstances where the Complainant has a legitimate trademark registration in another jurisdiction.
Accordingly, the first element of the Policy is met. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case for the following reasons:
- there is no evidence that the Respondent is commonly known by the Disputed Domain Name; and
- there is no evidence in the case file that the Respondent has any connection with a Trade Mark corresponding to the Disputed Domain Name it is thus clear to the Panel that the Complainant has not licensed or otherwise permitted the Respondent to use the Trade Mark.
The Respondent disputes the Complainant’s contentions and has sought to provide an answer; however, in view of the Panel’s finding in relation to bad faith, the Panel does not need to decide this issue. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Panel finds that Complaint fails to demonstrate that when the Respondent registered the Disputed Domain Name, the Respondent might have had the Complainant’s trade mark in mind. Moreover, there is nothing about the subsequent use of the Disputed Domain Name which might reasonably lead to any such inference.
The Respondent has owned and used the Disputed Domain Name for many years. This is not a situation where the Disputed Domain Name is unused and dormant for a period of time. Compare Ladbroke Group Plc v. Sonoma International LDC,WIPO Case No. D2002-0131.
The Complainant has not adduced any evidence to show that the Respondent has been involved in a pattern of conduct of cybersquatting. In fact, the evidence before the Panel shows that the Respondent’s business involves registering and using generic terms as domain names. Owning a portfolio of generic domain names is not evidence of bad faith. In fact, in the circumstances of this case, this supports the Respondent’s assertion that the Respondent was not aware of the Complainant or the Complainant’s trade mark when registering the Disputed Domain Name.
The Respondent’s use of the Disputed Domain Name is unrelated to the Complainant or any reputation that the Complainant may have in its trade mark. The Complainant appears to accept this, when the Complainant states that the links on the website are to “irrelevant products and services”.
In addition, there is no evidence before the Panel that the Respondent has tried to sell the Disputed Domain Name to the Complainant or to anyone else.
Accordingly, the Complainant has failed to satisfy the third element of the Policy. D. Reverse Domain Name Hijacking
In assessing the issues in the case, the Panel must have regard to paragraph 15(e) of the Rules and in particular the following sentence namely:
“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.”
Reverse Domain Name Hijacking (“RDNH”) is defined in paragraph 1 of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”.
The Respondent does not seek a finding of RDNH, but as can be seen from the above quote from Rule 15(e) this obligation upon the Panel is not dependent upon the Respondent seeking a finding of RDNH. If a panel finds abuse of the process, the panel should say so in the decision. Goway Travel Limited v. Tourism Australia,WIPO Case No. D2006-0344; Timbermate Products Pty Ltd v. Domains by Proxy, LLC / Barry Gork, WIPO Case No. D2013-1603.
In a dispute resolution system such as the UDRP, which involves no discovery and, ordinarily, no hearing, it is crucial that all material facts are put before the Panel. It is for this reason that the standard form of complaint concludes with a statement of truth certifying that:
“the information contained in this Complaint is to the best of the Complainant’s knowledge complete and accurate, that this Complaint is not being presented for any improper purpose, such as to harass, and that the assertions in this Complaint are warranted under the Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.”
When a complainant files a complaint, the complainant has no idea whether the respondent will respond, nor in many cases the true identity of the registrant. Indeed, in the majority of cases there is no response. However, the failure to respond may simply be that for one reason or another the respondent is unaware of the complaint. It will not necessarily be an indication that the respondent accepts the merits of the complaint, yet in such cases it is not uncommon for a panel to find as fact the unchallenged assertions of the Complainant where it seems reasonable to do so.
In addition, when filing a complaint the Complainant has no idea as to the identity of the panel. Where the parties are based in different jurisdictions it is likely that a panel from a third jurisdiction will be appointed to obviate any perception of bias.
Accordingly, when the Complainant signed the statement of truth at the end of the Complaint certifying that the information contained therein was complete and accurate there was a distinct possibility that there would be no response.
If there had been no response and the selected panel had been unaware that in the US a “spritzer” is a common descriptive term for a mixture of wine and carbonated water, it is quite possible that that panel would have accepted the unchallenged assertions of the Complainant and ordered transfer of the Disputed Domain Name.
The Complainant, on the other hand, was well aware of the fact that in the US, the Respondent’s home territory, a spritzer is a common descriptive term for a mixture of wine and carbonated water. In an extensive correspondence with the USPTO over an attempt to file for protection of its SPRITZER mark in the US, the USPTO so informed the Complainant and provided the Complainant with documentary evidence in support.
The Complainant made no mention of this in the Complaint. It was the Respondent who drew the existence of this correspondence to the Panel’s attention.
Of course, the fact that in the US a spritzer is a common descriptive term for a mixture of wine and carbonated water does not necessarily mean that the Complaint fails. However, it is likely to make it more difficult for the Complainant to demonstrate that the Disputed Domain Name was registered and is being used in bad faith. The Complainant would have had to have some cogent evidence to show that, notwithstanding the descriptiveness of the term in the US, the Respondent was nonetheless targeting the Complainant and/or its SPRITZER brand. There was no such evidence (cogent or otherwise) in this case. There was nothing in the evidence to suggest that the Respondent ever had the Complainant or its brand in contemplation.
When the Complainant filed the Complaint, the Complainant knew that there was no proper basis for the Complaint yet it went ahead and filed the Complaint. This alone merits a finding of RDNH. See Dextra Asia Co., Ltd. v. Lakeside Enterprises Limited, WIPO Case No. D2012-0403.1 In so doing the Complainant knew that it was accusing an innocent registrant of dishonesty (bad faith) in the hope that it could deprive the Respondent of the Disputed Domain Name. Moreover, the Complainant knew that if the Respondent were to retain the Disputed Domain Name, the Respondent would have to spend time and money and in all likelihood employ representation to defend itself. The Complainant also knew that even if it lost the case, it would not be called upon to compensate the Respondent.
There is another basis for a finding of RDNH. When the Complaint was filed the Complainant knew that the certificate of truth was false. See G.A. Modefine S.A. v. A.R. Mani WIPO Case No. D2001-0537.2 By definition, false statements of truth only serve to undermine the credibility of the process, opening the door to the possibility of unjust results.
Finally, Paragraph 4.17 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition is instructive:
“WIPO panels have found Reverse Domain Name Hijacking in circumstances including where: the complainant in fact knew or clearly should have known at the time that it filed the complaint that it could not prove one of the essential elements required by the UDRP; the complainant … otherwise misled the panel; a Respondent's use of a domain name could not, under any fair interpretation of the reasonably available facts, have constituted bad faith ….”
For the foregoing reasons the Panel finds the Complainant guilty of RDNH. 7. Decision
For the foregoing reasons, the Complaint is denied.
John Swinson
Presiding Panelist
Syed Naqiz Shahabuddin
Panelist
Tony Willoughby
Panelist
Date: May 29, 2014
1 “Overall, it appears to the Panel that the Complainant has simply embarked on a course to obtain the Disputed Domain Name, if not by negotiation, then by launching this Complaint, but knowing that there was no real prospect of being able to demonstrate registration and use in bad faith.”
2 “The Complaint states (at paragraph 20) in accordance with the Policy, that ‘the Complainant certifies that the information contained in the Complaint is to the best of the Complainant’s knowledge complete and accurate’. The Panel does not see how that could properly have been said. In the circumstances, the Panel concludes, pursuant of paragraph 15(e) of the Rules, that this Complaint has been brought in bad faith, and that it constitutes an abuse of the administrative proceeding.”
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