The Complainant is Cocolabel AB of Frölunda, Sweden, represented by Dipcon AB, Sweden.
The Respondent is Roche Gerard of Scottsdale, Arizona, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with EuroDNS S.A. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 14, 2014. On April 14, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 15, 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.
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 April 25, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 15, 2014. The Response was filed with the Center on April 25, 2014
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on May 8, 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.
Having considered the case file, the Panel observed that there were discrepancies between the screenshots of the website associated with the disputed domain name (the "Website") provided in Annex 5 to the Complaint and the screenshots of the Website provided by the Center to the Panel. The screenshots of the Website provided in the Complaint contain Swedish advertisements whereas those provided by the Center show Swiss advertisements. The Panel considered that it would therefore be appropriate to conduct limited factual research on this topic and to put the results of its observations to the Parties (see section 4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0")). Accordingly, the Panel visited the Website on May 16, 2014 and noted that it displayed banners indicating that advertising was provided by or on behalf of the Registrar. On the Panel's said visit, the advertisements on the Website had a United Kingdom focus.
The screenshots, together with the Panel's investigation, indicated to the Panel (1) that the advertising links on the Website may be automated; (2) that they are likely to be geo-targeted based on the location of the Internet user; and (3) that the advertising content is being provided by the Registrar of the disputed domain name or some third party. Accordingly, the Panel put the above information to the Parties by virtue of Procedural Order No. 1 dated May 19, 2014. The Respondent filed a further submission in response on May 19, 2014. The Complainant filed a further submission on May 20, 2014. 4. Factual Background
The Complainant is a limited liability company incorporated in Sweden. The Complainant was established in 1987 and is active in the clothing business. The Complainant helps school classes and sports organizations finance trips or training camps by selling the Complainant's clothing products. The Complainant promotes its business under the mark NEWBODY, which features on many of its products. The Complainant is the owner of Swedish National Trademark No. 324630 for the word mark NEWBODY, registered on September 5, 1997 in international class 25. The Complainant is also the owner of two European Community trademarks for word and figurative marks respectively for the NEWBODY mark, each registered in September 2012. The Complainant uses the domain name for a website in connection with its business.
The Response has been filed by an entity named WR Group (hereinafter described as "the Respondent"). The Respondent states that it is a United States of America ("USA") based electronic commerce company which operates a variety of websites under different names and notes that its primary business is the sale of health, beauty and fitness products. The disputed domain name was created on July 6, 1996 and appears to have been acquired by the Respondent from the previous registrant at some time between November 3, 2013 and January 22, 2014.
As noted above, there is a discrepancy between the screenshot of the Website taken by the Complainant on March 25, 2014 and the screenshot taken by the Center on April 25, 2014. The screenshot taken by the Complainant shows a generic parking page with what appear to be pay-per-click links in the Swedish language on the right and English language links in a left hand menu. Many of the Swedish language links refer to Swedish websites featuring clothing providers, including competitors of the Complainant. The English language links refer to body cleansing and detoxification products and services.
The screenshot taken by the Center appears to show a parking page branded as and provided by the Registrar for the disputed domain name. It contains similar English language links in a left hand menu, in many cases identical to those in the Complainant's screenshot, along with what appear to be pay-per-click links in German, French and English languages. These links predominantly refer to Swiss and German websites offering beauty and dieting products. There is a disclaimer at the foot of the page indicating that the links are served automatically by a third party and stating that the domain owner maintains no relationship with the advertisers. The disclaimer advises that in case of trademark issues the domain owner should be contacted directly, via contact information listed in the WhoIs record.
When the Website was viewed by the Panel from the United Kingdom of Great Britain and Northern Ireland (United Kingdom), the left hand menu links were similar to those shown in both the Complainant's and the Center's screenshots however the additional pay-per-click links predominantly referred to United Kingdom websites offering beauty and dieting products. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is identical to a trademark in which it owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant asserts that the disputed domain name is identical to the Complainant's registered trademarks and that the addition of ".com" is irrelevant for the assessment of identity. The Complainant submits that the Respondent has no rights in the NEWBODY trademark and states that the Respondent is not a licensee of the Complainant, nor has the Complainant given the Respondent permission to register its trademark as a domain name. The Complainant contends that there is no evidence that the Respondent has been commonly known by the disputed domain name or is making a legitimate noncommercial or fair use thereof.
The Complainant sets out the types of links which it has identified on the Website and notes that these relate to companies offering the same kind of goods as the Complainant, including its competitors. The Complainant asserts that the usage of the disputed domain name strongly suggests that it was registered with the Complainant's NEWBODY mark in mind and to profit from misleading consumers searching for information regarding the Complainant's business.
The Complainant notes that its trademark was registered well before the Respondent became the owner of the disputed domain name. The Complainant states that the Respondent became the owner of the disputed domain name around January 11, 2014 when it took over ownership from the previous registrant. The Complainant states that it is obvious that the Respondent was well aware of the Complainant's trademarks and business when it acquired the disputed domain name. The Complainant notes that it was using the NEWBODY trademark at the domain name at least one month before the Respondent became the owner of the disputed domain name. The Complainant contends that the Respondent was aware of the Complainant's business based upon the Website containing links to the Complainant's competitors.
The Complainant submits that the Respondent is trying to take advantage of the Complainant's trademark to draw traffic to the Website and profit from the sponsored links, thereby making commercial gain from the likelihood of confusion between the trademark and the disputed domain name. Finally, the Complainant notes that it sent a cease and desist letter to the Respondent by email on March 25, 2014 but has not received any answer. The Complainant asserts that this also suggests that the disputed domain name has been registered and used in bad faith.
With regard to Procedural Order No. 1, the Complainant states that it agrees with the Panel on the conclusions made about the automatically generated links on the Website. The Complainant asserts that the use of the disputed domain name is ultimately the Respondent's responsibility and states that it finds support for this proposition in the cases of Villeroy & Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912 and Rolex Watch U.S.A., Inc. v. Vadim Krivitsky,WIPO Case No. D2008-0396. The Complainant adds that the Respondent has control of the disputed domain name and could prevent it showing sponsored links to businesses competing with the Complainant.
The Complainant reiterates its statement that it sent a cease and desist notice to the Respondent by email and notes that this is the same email address that is included as the correspondence address in the present proceedings. The Complainant states that in light of the letter, the Respondent should have made sure that the links displayed on the disputed domain name did not infringe the Complainant's trademark rights.
The Complainant asserts that the Respondent's inaction to prevent infringements of third party rights is evidence of bad faith, citing Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc.,WIPO Case No. D20061315. The Complainant notes that this case involved similar geo-targeting to that employed by the Website. The Complainant references the fact that as in that case, the Respondent in the present case has not taken active steps to block certain keywords, which would have prevented or minimized infringement. The Complainant contrasts this with the case of Mariah Media Inc. v. First Place® Internet Inc.,WIPO Case No. D2006-1275, where the respondent took such active steps. The Complainant submits that the issue is that the Respondent, knowing of the Complainant's rights, has not taken action in order to ensure that the disputed domain name does not infringe those rights and states that this is an indication of bad faith. B. Respondent
The Response has been supplied not by the named Respondent but by an individual on behalf of an entity named WR Group. Although not specified in the Response, it appears to the Panel that WR Group is the appropriate Respondent in these proceedings. For convenience, the Panel will therefore refer to this entity as "the Respondent".
The Respondent requests the Panel to deny the remedy sought by the Complainant.
The Respondent states that WR Group is a USA based electronic commerce company operating websites under various different domain names whose primary business is the sale of health, beauty, and fitness products designed to enhance the lives of its customers. The Respondent explains that it purchased the disputed domain name to develop a website, as the name is a logical extension of what it sells and will be an asset to its business plans. The Respondent submits that it was not aware of the domain name being previously registered, as it had no interest in that name, and that it researched the domain name it wished to purchase and found it to be available.
The Respondent denies that it received a cease and desist letter. With regard to the assertion that it planned to use the disputed domain name in bad faith, the Respondent states that the disputed domain name is consistent with its business model and that its purchase of the disputed domain name was solely for the purpose of growing and to enhance its business. The Respondent adds that the disputed domain name fits perfectly with the goals of its customers, who often purchase its products in an effort to achieve "a new body look".
With regard to the Complainant's assertion of identity between the disputed domain name and the Complainant's trademark, the Respondent points out that the Complainant's domain name is different from the disputed domain name in that the former is associated with Sweden and the latter is more generic.
The Respondent states that it is not a competitor, nor in any way involved with the Complainant.
With regard to Procedural Order No. 1, the Respondent confirms that the web pages displayed when accessing the Website are not provided by the Respondent but by the Registrar. The Respondent states that it is currently developing its site and reiterates that its plans for that site relate to the promotion of health and fitness products. The Respondent adds that the site is not "ready to go" at present. 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 that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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
The Panel is satisfied that the Complainant has rights in the registered trademarks which it sets out in the Complaint in respect of the word mark NEWBODY. Comparing the Complainant's trademark with the disputed domain name, and disregarding the Top Level Domain ".com" on the basis that this is required for technical reasons only and is wholly generic, the Panel finds that the disputed domain name is identical to the Complainant's trademark.
Accordingly, the requirements of paragraph 4(a)(i) of the Policy have been satisfied. B. Rights or Legitimate Interests
The requirements of paragraph 4(a) of the Policy are conjunctive. A consequence of this is that failure on the part of a complainant to demonstrate one element of the Policy, including that the disputed domain name has been registered and is being used in bad faith, will result in failure of the complaint in its entirety.
Accordingly, in light of the Panel's finding under the next head, it is unnecessary for the Panel to address the issue of the Respondent's rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the 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".
The Complainant's position is that the Respondent is not the original registrant of the disputed domain name. It appears from the Complainant's submissions and accompanying evidence that the disputed domain name was acquired by the Respondent from a previous registrant at some time between November 3, 2013 and January 22, 2014. The Respondent does not address this issue in the Response. The question therefore arises as to whether the date of the Respondent's acquisition should be treated as the date of registration for the purposes of the Policy. This question is the subject of section 3.7 of the WIPO Overview 2.0 which provides the consensus view as follows:
"While the transfer of a domain name to a third party does amount to a new registration, a mere renewal of a domain name has not generally been treated as a new registration for the purpose of assessing bad faith. Registration in bad faith must normally occur at the time the current registrant took possession of the domain name."
In the present case, in the absence of any explanation to the contrary from the Respondent, the Panel determines that the date on which the question of registration in bad faith should be assessed, is January 22, 2014 notwithstanding the fact that the disputed domain name was originally created on July 6, 1996.
The Complainant's case focuses on the fact that the Respondent acquired the disputed domain name after the Complainant had established trademark rights in the mark NEWBODY and that the use of the disputed domain name since acquisition by the Respondent for pay-per-click links referring to the Complainant's competitors demonstrates an intent to target the Complainant's rights at the point of acquisition together with use of the disputed domain name in bad faith. The Respondent's position is that it was unaware of the Complainant or its rights and that it acquired the disputed domain name for its generic value as describing "a new body look" which fits logically with what the Respondent sells and will align with the goals of its customers.
The Parties in this case agree that the pay-per-click page on the Website is not published by the Respondent but rather by the Registrar, with content supplied by a third party. It is clear to the Panel, and accepted by the Complainant, that these links are geo-targeted; there are Swiss links in the Center's screenshot, the Center presumably having accessed the disputed domain name in Switzerland, and Swedish links in the Complainant's screenshot, the Complainant presumably accessing from Sweden. Similarly, United Kingdom links appeared when the Panel accessed the site from that country. The Complainant's line of business does not appear to be targeted by the links in the Center's screenshot, which together with the left hand links in both screenshots are more in accord with the generic meaning of the phrase "new body" which is relied upon by the Respondent. Nor is it targeted on the page viewed by the Panel in the United Kingdom. It is clear from the footnote in the Center's screenshot that the pay-per-click links themselves are generated by a third party.
This leads the Panel to consider the question of whether third party or "automatically" generated material appearing on a website can form a basis for finding bad faith. This issue has been considered in the WIPO Overview 2.0 at section 3.8 which provides the following consensus view (with cited decisions omitted):
"Panels have found that a domain name registrant will normally be deemed responsible for content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content - for example, in the case of advertising links appearing on an "automatically" generated basis. To the extent that the presence of certain advertising or links under such arrangement may constitute evidence of bad faith use of the relevant domain name, such presence would usually be attributed to the registrant unless it can show some good faith attempt toward preventing inclusion of advertising or links which profit from trading on third-party trademarks. It may not be necessary for the registrant itself to have profited directly under such arrangement in order to establish bad faith use under paragraph 4(b)(iv) of the UDRP. It would normally be sufficient to show that profit or "commercial gain" was made by a third party, such as by the operator of an advertising revenue arrangement applicable to the registrant, or a domain name parking service used by the registrant. Reasons may include that a rights holder should be able to rely on the registrant for enforcement purposes, or that such registrant has undertaken not to infringe third party rights in its registration agreement (see paragraph 2 of the UDRP).
Some panels have found that the inclusion of such advertising links may not necessarily be a basis for finding respondent bad faith where shown to be genuinely automated, and there is no evidence that the respondent influenced the advertising content, and the respondent credibly denies knowledge of the complainant's trademark and there is no evidence of the respondent previously being put on notice of such mark, and other indicia of cybersquatting are not present."
The Panel respectfully adopts the consensus view. The Panel considers that on the present record there are good grounds for applying the approach set out in the second paragraph of the consensus view. The Complainant has not provided any evidence that its trademark is well-known outside Sweden or any other reason whereby the Respondent, being based in the USA and operating in a different industry, might have been expected to have knowledge of such trademark. Given the lack of such evidence, the Respondent's denial of knowledge of the Complainant's mark appears to the Panel at first sight to be reasonably credible.
The extent of the Respondent's knowledge, or presumed knowledge, of the Complainant's rights is an important issue for the present case. Without exception, the previous decisions cited by the Complainant as supportive of its case, which are derived from the first paragraph of section 3.8 of the WIPO Overview 2.0, all turn on the fact that the marks at issue were of international renown and repute, such that the respondents in those cases were unable to claim with any degree of credibility that they did not have prior knowledge thereof.
The initial impression of credibility is bolstered by the Respondent's explanation of its commercial intentions regarding the disputed domain name and its selection based on the generic meaning of the phrase "new body" which in the Panel's opinion is reasonably plausible. That said, the Panel notes that the Respondent has chosen to rely purely on bare assertions as to the nature of its business and its proposals for the disputed domain name. The absence of suitable evidence to support the Respondent's submissions, such as examples of the websites through which the Respondent claims to be currently trading in health, beauty, and fitness products means that the case is more finely balanced than it would otherwise be, and this has some consequences for a possible refiled complaint under the Policy which are discussed further below.
Are the advertising links genuinely automated? There is no reason for the Panel to believe otherwise and indeed, on the contrary, the differences between the screenshots support this as the links appear to be automatically targeted based on the viewer's location. This, together with the disclaimer on the Website expressly stating that the links are provided by a third party, and the banners on the Center's screenshot featuring the Registrar's branding, all lead to the impression in the Panel's mind that the Respondent had nothing to do with and did not influence the pay-per-click links targeting the Complainant's business. Indeed, if the Panel's sense that these links are geo-targeted is correct, it is very likely that the offending content would not even have been displayed to the Respondent had it viewed its own website from its location in the USA. The Complainant has not identified any other indicia of cybersquatting, in its Complaint or in its response to Procedural Order No. 1, which might have supported the notion that the Respondent should bear greater responsibility for the inclusion of those advertising links which target the Complainant's NEWBODY mark.
With regard to evidence of whether the Respondent was placed on notice of the Complainant's mark, this is the subject of a dispute between the Parties. The Complainant produces a letter dated March 25, 2014 which is addressed to the contact email address in respect of the disputed domain name. The Respondent denies receiving this letter. Given that it was sent by email only and not, for example, by a method which would independently verify delivery into the Respondent's hands, the evidence is insufficient to support the Complainant's position on this matter. Accordingly, the Panel accepts the Respondent's denial of receipt of the Complainant's letter. In any event, this notice was given after registration of the disputed domain name and does not therefore have any effect on the question of the Respondent's prior knowledge of the Complainant's rights in the NEWBODY mark.
In all of these circumstances, the Panel considers that the Complainant has failed to prove on the balance of probabilities that the Respondent registered and is using the disputed domain name in bad faith. That said, given the lack of supporting evidence from the Respondent, the Panel takes the view that this is a very finely balanced case. As noted above, the Respondent's insistence that it had a good faith motivation is based largely on its unsupported assertions that the disputed domain name was acquired for use in its business, based upon the generic meaning of the phrase "new body". While these assertions are not incredible, and are sufficient in the Panel's view to secure a finding in favor of the Respondent as matters stand, the Panel notes that the situation remains that the Website is serving links in Sweden which are targeted to the trademark value of the disputed domain name, albeit inadvertently from the Respondent's perspective. If the Respondent allows the status quo to continue until its website is "ready to go", however long that might take, it risks either further action from the Complainant in another forum or a refiled complaint under the Policy.
As the pay-per-click links on the Website result from a page created by the Respondent's Registrar, which in turn contains automated links served by a third party, it should in the Panel's mind be a relatively straightforward task for the Respondent to suppress those links which refer to the trademark value of the disputed domain name or to remove them entirely, pending publication of its website. It would not be unreasonable for the Respondent to want to take this step, if only due to the fact that the current use of the disputed domain name does not accord with the Respondent's stated business intentions. It is of some concern to the Panel that the Respondent did not offer to address this matter directly in its response to Procedural Order No. 1.
The Panel notes that if such removal of content were promptly carried out by the Respondent, that action would align with the Respondent's insistence that it has always maintained a good faith motivation regarding registration and use of the disputed domain name. The Respondent would do well to remember that the converse is also true, namely that continued publication of such links over a reasonable period would add support to the Complainant's proposition that the Respondent intentionally registered and used the disputed domain name for the purpose of pay-per-click targeting of the Complainant's NEWBODY mark, with prior knowledge thereof, rather than for the reasons given in the Response. This may be enough to tip the balance of probabilities in the Complainant's favor in a refiled complaint under the Policy.
In what circumstances might the Complainant refile the complaint? This question is considered in section 4.4 of the WIPO Overview 2.0 which provides inter alia that in highly limited circumstances where the panel finds that the evidence in a case is finely balanced, and that it is possible that the future behavior of the respondent might confirm bad faith registration and use after all, a refiled case may be permitted. The WIPO Overview 2.0 goes on to note that a panel in a previous case may have found it appropriate to record in its decision that, if certain conditions were met, a future refiled complaint may be accepted.
The Panel is of the view that these considerations apply to the present case. The Panel has already noted that the dispute is finely balanced. Furthermore, the Panel has also noted that the future behavior of the Respondent as regards the links targeting the Complainant may allow a panel to infer bad faith registration and use in respect of the disputed domain name. In all of these circumstances, the Panel records that the Respondent's failure over a reasonable period to remove links targeting the Complainant's mark from the Website may entitle the Complainant to refile the complaint.
On the Panel's analysis of the present circumstances, however, the Panel finds that the Complainant has failed to prove on the balance of probabilities that the disputed domain name was registered and used in bad faith and thus that the requirements of paragraph 4(a)(iii) of the Policy have not been satisfied. 7. Decision
For the foregoing reasons, the Complaint is denied.
Andrew D. S. Lothian
Sole Panelist
Date: May 29, 2014
Full & Egal Universal Law Academy