The Complainant is QIQ Communications Pty Ltd of Terrigal, New South Wales, Australia, represented by IP Service International Pty Ltd, Australia.
The Respondent is Netico, Inc. of Stevenson Ranch, California, United States of America, represented by Roger H. Doumanian, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 16, 2014. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. Also on June 16, 2014, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and providing 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 proceeding commenced on June 26, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 16, 2014. The Response was filed with the Center on July 4, 2014.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on July 16, 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.
Following the appointment of the Panel, on July 17, 2014, the Center received an unsolicited Reply from the Complainant, which was subsequently forwarded to the Panel. Following the Panel’s review of this Reply, the Panel has decided not to accept the Complainant’s supplementary submissions, as they appear to largely address topics which the Complainant could have addressed in its Complaint and, either way, the majority of the submissions appear to be a repeat of the Complaint, and has no effect on the Panel’s findings. 4. Factual Background
The Complainant holds registered trade mark right in the QIQ mark, based on its trade mark registrations in Australia, the European Union and the United States of America.
The Respondent registered the Disputed Domain Name on March 28, 1999. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarized as follows:
(a) The Complainant owns trade mark registrations in the QIQ mark in Australia, the European Union and the United States of America e.g., for email, web, and domain name related services. The Disputed Domain Name is confusingly similar to the Complainant’s registered trade mark QIQ.
(b) The Respondent has no rights or legitimate interests in the Disputed Domain Name. In particular, it has made no use or demonstrable preparations to use the Disputed Domain Name or a name corresponding to it in connection with a bona fide offering of goods or services.
(c) Further, the Respondent is not commonly known by the Disputed Domain Name, and is not making any legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the QIQ mark.
(d) The Respondent registered and is using the Disputed Domain Name in bad faith in order to sell, rent or otherwise transfer the Disputed Domain Name to the Complainant for valuable consideration, in excess of the Respondent’s out-of-pocket expenses.
(e) The Respondent has a continuing pattern of misusing trade marks of others to blackmail the trade mark holders into paying the Respondent money to get back the domain name, or by misleading the public to believe that the domain name is sponsored or associated with a well-known company or person.
(f) The Respondent registered and is using the Disputed Domain Name to intentionally attempt to attract for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or other online location. In particular, the Disputed Domain Name currently redirects users automatically to a number of different websites, either randomly or in rotation.
(g) The Respondent has attempted to pass off its business as the Complainant’s business, which has resulted in a loss to the Complainant’s business. There is also confusion in the marketplace between the Complainant’s business and the Respondent’s business. B. Respondent
(a) The Respondent registered the Disputed Domain Name on March 28, 1999; 13 years before the Complainant registered its QIQ mark in Australia, and 14 years before the Complainant registered its trade mark in the United States of America.
(b) Since the Complainant’s QIQ trade mark did not exist at the time the Disputed Domain Name was registered, it is impossible for the Disputed Domain Name to have been registered in bad faith.
(c) Although the Respondent does not deny that the Complainant’s QIQ trade mark is identical to the Disputed Domain Name, the Respondent refutes the Complainant’s argument that it has been using the Disputed Domain Name to deceive or confuse Internet users. This is based on the fact that the Disputed Domain Name was registered in 1999, and the Complainant did not have any trade mark registrations in the QIQ mark until over ten years later, and the Complainant did not conduct any business in the United States of America in 1999.
(d) The Respondent is a legitimate business entity that develops online ventures using aggregated domain names for over 18 years. For example, it operates a classifieds website, a Las Vegas tourism website and an audio enthusiasts portal. The Respondent purchases domain names, develops a plan for an online venture, raises the capital, and then develops those domain names. Some of the domain names are developed straightaway, whilst others are held for future development. If some domain names do not prove promising, or capital cannot be successfully obtained, then the Respondent may park the domain names and put them up for sale. Such is not prohibited under the Policy.
(e) The Complainant has failed to provide any evidence of bad faith. The Respondent had no knowledge of the existence of the Complainant until these proceedings were filed, and had made no mention of the Complainant or displayed any ads that would mislead users. Further, the Respondent registered the Disputed Domain Name over ten years before the Complainant first registered its QIQ mark. It therefore could not have possibly registered the Disputed Domain Name for the primary purpose of selling it to the Complainant or a competitor of the Complainant, nor could it have registered the Disputed Domain Name in order to prevent the Complainant from reflecting their mark in a domain name. Further, the Respondent and the Complainant are not competitors – the Complainant provides online services ranging from web hosting, domain names, etc., whilst the Respondent develops proprietary online ventures and serves as a holding company. As such, the Disputed Domain Name was not registered by the Respondent to disrupt the Complainant’s business or in an attempt to attract users for commercial gain by creating a likelihood of confusion with the Complainant’s mark. 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 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 by the Respondent in bad faith. A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in the QIQ mark, based on its trade mark registrations in Australia, the European Union and the United States of America.
The Panel notes that based on the evidence provided by the Complainant, its first registration of the QIQ mark was June 20, 2012 (i.e. the date it was actually entered on the register, with priority dating back to November 10, 2011); over a decade after the Disputed Domain Name was 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 Name 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 Name is confusingly similar to a trade mark in which the Complainant has rights.
The Disputed Domain Name incorporates the word element of the Complainant’s QIQ mark in its entirety. 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”, 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 Name is confusingly similar 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 Name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Name, even if it 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 Name, 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 it 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 QIQ mark. The Panel further notes that the Respondent has not provided any evidence to demonstrate a registration of the QIQ trade mark anywhere in the world or any evidence that it has become commonly known by the Disputed Domain Name. Accordingly, the Panel is of the view that a prima facie case is established and it is for the Respondent to prove it has rights or legitimate interests to the Disputed Domain Name.
In the Response, the Respondent provides information on its general business, i.e. it develops online ventures and purchases domain names for this purpose. The domain names that do not prove promising, or for which the Respondent is unable to obtain capital to fund the intended venture, are listed for sale and parked in the meantime. However, the Respondent does not state that it is making (and has not provided any evidence of) preparations to use the Disputed Domain Name for any online venture. It appears, based on the Complainant’s evidence, that the Disputed Domain Name is currently parked. This is consistent with the Respondent’s claim that it parks domain names and earns pay-per-click revenue in relation to them, if the intended venture related to the domain name will not come to fruition.
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).
The Panel finds that the Respondent has failed to show that it has rights or legitimate interests in the Disputed Domain Name, and therefore the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to establish that the Respondent registered and used the Disputed Domain Name in bad faith.
As such, the Complainant needs to satisfy the Panel that the Respondent knew or, based on the circumstances, must or ought to have known of the Complainant’s trade mark at the time it registered the Disputed Domain Name.
The Panel notes that the Complainant relies on its trade mark registrations for the QIQ mark in Australia, the European Union and the United States of America – the earliest of which completed its registration on June 20, 2012. The Complainant makes no claims and provides no evidence of any common law or unregistered trade mark rights in the QIQ mark prior to the date of its trade mark registrations. As such, the Panel can only draw the reasonable conclusion that the Complainant does not have any such common law or unregistered rights in the QIQ mark, in the absence of any evidence to the contrary.
As the Disputed Domain Name was registered on March 28, 1999, which was over a decade before the Complainant registered its QIQ trade mark, it is not possible for the Respondent to have been aware of the Complainant’s trade mark registration at the time of registering the Disputed Domain Name and therefore could not have registered it in bad faith with the Complainant in mind.
In this case, the Complainant makes general allegations in line with the non-exhaustive list of examples of bad faith, as specified under paragraph 4(b) of the Policy. However, the Complainant provides no evidence in support of its allegations. The Panel also notes that no evidence has been provided to show that the Respondent has been using the Complainant’s mark (other than in the Disputed Domain Name) to try and pass itself off as the Complainant, or that it knew of the Complainant prior to these proceedings.
The Panel therefore finds that the Complainant has failed to satisfy paragraph 4(a)(iii) of the Policy. 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 Panel cannot conclude 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 is of the opinion that the Complainant has not filed its Complaint 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: July 30, 2014
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