The Complainant is Cloudhelix Limited of Brighton, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by one of its directors, Ivan Whittall, UK.
The Respondent is Angus Malcolm of Hove, UK, self-represented. 2. The Domain Name and Registrar
The disputed domain name, (the “Domain Name”), is registered with Crazy Domains FZ-LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2015. On June 11, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 12, 2015, 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 proceeding commenced on June 19, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 9, 2015. The Response was filed with the Center on June 23, 2015. On the same day, the Center sent an email to the Respondent, asking it to confirm the filed Response as the complete version. On June 29, 2015, the Respondent so confirmed. The Center therefore acknowledged the receipt of the Response and notified the parties that it would proceed to Panel Appointment.
The Center appointed Tony Willoughby as the sole panelist in this matter on July 6, 2015. 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 Domain Name was registered by the Respondent on March 6, 2013.
The Complainant was incorporated under the name Cloudhelix Limited on April 2, 2013 and is engaged in the provision of information technology services.
The Complainant has used the “Cloudhelix” name continuously since date of incorporation and has its website connected to the Domain Name.
The Complainant is the registered proprietor of UK Trade Mark Registration No. 3057829 dated May 30, 2014 (registered September 5, 2014) for CLOUDHELIX (word) for Internet and webhosting services in classes 38 and 42 and Community Trade Mark Registration No. 13357272 dated October 13, 2014 (registered February 25, 2015) for the same trade mark in the same classes for similar services.
The Respondent was until very recently a director and employee of the Complainant, but the parties have now parted company and are engaged in a bitter dispute on a number of fronts. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is identical to trade marks in which it has rights; that the Respondent has no rights or legitimate interests in respect of the Domain Name and that while the Domain Name was registered in good faith, it was registered by him on behalf of and for the benefit of his employer, the Complainant. It contends that the Respondent’s refusal to transfer the Domain Name to the Complainant and the Respondent’s threat to disconnect the Complainant’s website from the Domain Name is evidence of the Respondents bad faith intent. The Complainant contends that the Respondent registered the Domain Name and has held it in his own name with a view to using it as a bargaining tool in negotiations with the Complainant. B. Respondent
The Respondent denies the Complainant’s contentions and asserts that he registered the Domain Name and has renewed it using his own money. He points out that he registered the Domain Name before the Complainant came into existence. He claims that he is entitled to hold onto the Domain Name pending the Complainant’s adherence to agreements concluded back in 2013. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The 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 Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith. B. Identical or Confusingly Similar
There is no dispute that the Domain Name is identical to the Complainant’s CLOUDHELIX registered trade mark and the Panel so finds. C. Rights or Legitimate Interests
In light of the Panel’s finding under D below, it is unnecessary for the Panel to address this issue. D. Registered and Used in Bad Faith
Generally, to succeed in establishing this element of the Policy a complainant must prove that the domain name in issue was both registered in bad faith and is being used in bad faith; and as can be seen from the non-exhaustive list of examples of bad faith registration and use set out in paragraph 4(b) of the Policy the bad faith contemplated is bad faith intent directed towards the complainant and/or its trade mark rights.
The fundamental problem facing the Complainant in this case is evident from the chronology set out in Section 4 above, all of which was taken from the evidence of the Complainant. The Domain Name was registered nearly a month before the Complainant was incorporated and over a year before the Complainant acquired its trade mark rights. Even if it is accepted that the Respondent’s current behavior in relation to the Domain Name (e.g. the threat to point the Domain Name away from the Complainant’s website) constitutes bad faith use of the Domain Name – a matter as to which the Panel makes no finding – how can it be said that the Respondent’s registration of the Domain Name was in bad faith when neither the Complainant nor, of course, its trade mark rights were in existence?
A possible answer is to be found in paragraph 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), which is to be found on the Center’s website and which poses the question: “Can bad faith be found if the disputed domain name was registered before the trade mark was registered or before unregistered trade mark rights were acquired?”. Generally, the answer is “no”, but a finding of bad faith may be found “in certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights” and in cases where “before the complainant is able to obtain registration of an applied-for trademark, the respondent registers the domain name in order to take advantage of the complainant’s likely rights in that mark”.
It is clear from the evidence that when the Respondent registered the Domain Name he was aware of the plans to incorporate a business under the name “Cloudhelix Limited” and that the intention was to use the Domain Name for the Complainant’s website. There is therefore scope for the Panel to make a finding of bad faith registration of the Domain Name, but only if the Respondent’s intention at the time was to take advantage of the Complainant and/or its future trade mark rights.
The Complainant asserts that “The Disputed Domain Name was registered in good faith on behalf of the Respondent’s employer (the Complainant) however the Respondent has kept the domain name in his personal name rather than in the name of the Complainant for the express purpose of extorting moneys and influence over the Complainant.”
If the Panel had been persuaded that that was the intention of the Respondent on March 6, 2013 when he registered the Domain Name, a finding of bad faith registration would have been easy. As it is, that is not a finding that the Panel can make on the evidence before him. In the view of the Panel, the probability is that when the Domain Name was registered and there was no hint of there being any issues between the parties, the Respondent’s intentions were unexceptionable.
Here, the dispute over the Domain Name is just one of a number of matters that are currently the subject of a heated contractual dispute between the parties. This is a case for the courts, not the Policy. 7. Decision
For the foregoing reasons, the Complaint is denied.
Tony Willoughby
Sole Panelist
Date: July 8, 2015
Full & Egal Universal Law Academy