The Complainant is Eric B. Delisle of Orlando, Florida, United States of America (“United States”), represented by Ilea Petsel, United States.
The Respondent is Domain Administrator, Terra Serve of West Bay, Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”). 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with R Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 6, 2015. On November 9, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 13, 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 Complainant filed an amendment to the Complaint on November 18, 2015.
The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 23, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 13, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 14, 2015.
The Center appointed Nicholas Smith as the sole panelist in this matter on December 16, 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 Complainant is an individual who claims to be the owner of ICLOAK, INC., a United States company, incorporated on November 5, 2014, that operates online privacy services and related services.
ICLOAK, INC. owns United States registered trademark No. 86210303 for the word mark ICLOAK (the “ICLOAK Mark”). The ICLOAK Mark was filed for registration on March 4, 2014, has a date of first use in commerce on January 15, 2014, and was registered on February 17, 2015. It is registered for goods in class 9 being “Computer software for protecting anonymity and privacy while browsing the Internet and while connecting remotely to another computer through a virtual private network, and for protecting anonymity and privacy of a computer owner during an unauthorized access to that computer”.
The Domain Name was registered by the Respondent on September 20, 1999. It currently resolves to a website (the “Respondent’s Website”), which is a parking page with a number of what appear to be “pay-per-click” links including links for various types of privacy services, including “online privacy protection” and “free VPN”. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions in their entirety (reordered for clarity) are:
“ICLOAK is a trademark registered with the USPTO. The registered service is: Computer software for protecting anonymity and privacy while browsing the Internet and while connecting remotely to another computer through a virtual private network, and for protecting anonymity and privacy of a computer owner during an unauthorized access to that computer. FIRST USE: 20140115. First use in commerce: 20140115, Annex 3. The domain ICLOAK.com is identical to our trademark (Annex 3) ICLOAK.”
“The Complainant Eric B. Delisle is the owner of ICLOAK., Inc. who is the registrant of the trademark. I’ve attached the articles of incorporation for ICLOAK, Inc along with the Federal filling which lists Eric as owner. I have other documents that can prove this if necessary.”
“The Respondent is using ICLOAK.com as a click through site that offers online privacy solutions (Annex 4, 5, & 6). This is what the Complainant’s trademarked name offers (Annex 3).”
“Respondent is intentionally attempting to attract visitor’s for commercial gain, Internet users to the Respondent’s website 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location. The Respondent’s site offers the same services as the Complainant’s trademark and uses the same colors and the Complainant’s logo. Additionally, we attempted to purchase ICLOAK.com for $750 last month, when it was for sale and received no response (Annex 7).”
“Eric B. Delisle put in a bid to purchase ICLOAK.com (Sept 2015). At that time, there was nothing on the site and it wasn’t active. After he submitted the bid, the site changed and is now active. It offers similar services to those of ICLOAK, Inc. and is even using the same colors. There was a lot of money that went into the branding, marketing and trademark process to build ICLOAK, Inc. Now ICLOAK.com is offering these same types off Internet security/privacy services. They are capitalizing on the traffic generated by people who search for the ICLOAK trademarked brand by offering affiliate links to similar services.” B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant has the burden of proof in respect of the following three elements:
(i) The Domain Name is identical or confusingly similar to a trademark 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 has been registered and is being used in bad faith. A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
Discounting the “.com” suffix, the Domain Name is identical to the ICLOAK Mark. The ICLOAK Mark is registered by ICLOAK, INC., a United States company. The evidence filed by the Complainant does not comprehensively establish the relationship between the Complainant and ICLOAK, INC. and hence whether the Complainant has rights in the ICLOAK Mark.
Given the finding made in respect of whether the Domain Name has been registered and used in bad faith, it is not necessary to reach a conclusion on this element. B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Panel notes that the system of domain name registration is, in general terms, a “first come, first served system” and, absent pre-existing rights which may be applicable to impugn a registration, the first person in time to register a domain name would normally be entitled to use the domain name for any legitimate purpose it wishes.
Given the finding made in respect of whether the Domain Name is registered and used in bad faith, it is not necessary to reach a conclusion on this element. C. Registered and Used in Bad Faith
The Policy, paragraph 4(b) provides that for the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, 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 the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owners of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) the Respondent has 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 the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The registration and use requirements of paragraph 4(a)(iii) of the Policy are conjunctive, and a complainant bears the burden of proof on each. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. If either of the required elements is not established, the Complaint must fail. Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270 (denying transfer of the disputed domain name because the complainant failed to prove bad faith registration).
The Domain Name was registered in September 1999. The entity that owns the ICLOAK Mark was incorporated in November 2014 and claims to have first started using the ICLOAK Mark in January 2014. ICLOAK Inc, or a predecessor in title applied to register the ICLOAK Mark in March 2014. Even taking the Complainant’s evidence at its highest, there is no possibility that the Respondent, when it registered the Domain Name in 1999, could have been aware of the Complainant or its rights in the ICLOAK Mark: The ICLOAK Mark simply did not exist. For this reason, the Domain Name was not registered in bad faith.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), states in response to the question “Can bad faith be found if the disputed domain name was registered before the trademark was registered or before unregistered trademark rights were acquired?” that:
“Consensus view: Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date [see further paragraph 1.4 above], when a domain name is registered by the respondent before the complainant’s relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant’s then non-existent right.”
While there have been cases where bad faith has been found when the registration took place prior to the acquisition of trademark rights, such cases involve situations where, at the time of registration 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. This is not such a matter. Neither the owner of the ICLOAK Mark nor ICLOAK Mark itself existed at the time the Respondent registered the Domain Name. Equally there is no evidence in the Complaint that any use was being made of ICLOAK by the Complainant in 1999.
The Complainant has argued that bad faith registration and use can be found by the fact that the Complainant attempted to purchase the Domain Name and was rejected. This argument is unpersuasive to this Panel. The mere fact that a domain name holder rejects an offer to purchase the Domain Name is not evidence of registration and use in bad faith.
The Complainant also seeks to argue that the current use of the Domain Name, for what appears to be a pay-per-click site, amounts to the Respondent attempting to attract visitors for commercial gain to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location. While such conduct may be use in bad faith it does not establish that the Domain Name was registered in bad faith in circumstances where it was registered over 14 years before any use of the ICLOAK Mark.
As such the Complainant has not satisfied its burden of showing that circumstances that bring the case within the provisions of paragraph 4(b) of the Policy exist, or other facts showing that the Respondent registered the Domain Name in bad faith. 7. Decision
For the foregoing reasons, the Complaint is denied.
Nicholas Smith
Sole Panelist
Date: December 21, 2015
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