The Complainant is Uline, Inc. of Pleasant Prairi, Wisconsin, United States of America (“USA”), internally represented.
The Respondent is Hulmiho Ukolen of Helsinki, Finland. 2. The Domain Name and Registrar
The disputed domain name, (the “Domain Name”), is registered with Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING (SHANGHAI) CO., LTD dba HebeiD (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 12, 2016. On January 13, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 18, 216, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Registrar informed the Center that the language of the registration agreement was Finnish.
The Center sent an email communication to the Complainant on January 25, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 29, 2016.
The Center verified that the amended 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 proceeding commenced on February 1, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 21, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 22, 2016.
The Center appointed Tony Willoughby as the sole panelist in this matter on March 4, 2016. 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.
On January 25, 2016 the Center sent an email to the parties drawing the parties’ attention to the fact that the Complaint had been filed in the English language, whereas the Rules (paragraph 11) provide that in the absence of agreement between the parties or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Administrative Panel (once appointed) to determine otherwise. That email informed the Respondent that in the event that the Complainant requested that the language of the proceeding be English and the Respondent had any submission to make in response to such a request, the submission should be filed with the Center by January 30, 2016.
The amended Complaint duly requested that the language of the proceeding be English, to which the Respondent did not object. For the reasons set out in section 6 below the Panel accedes to the Complainant’s request and directs that the language of this proceeding be English.
As indicated above, the reason for the amended Complaint stemmed from the Registrar’s response to the Center’s registrar verification request. The Respondent had been making use of a privacy protection service in whose name the Domain Name was held and the original Complaint was directed to that privacy protection service. The amended Complaint is directed solely to the Respondent, the underlying registrant at the time of filing of the original Complaint. 4. Factual Background
The Complainant claims to be engaged in the distribution of packaging and shipping supplies, facility maintenance supplies, janitorial supplies, industrial supplies, material handling supplies. It asserts that it distributes 30,000 products.
The Complainant is the registered proprietor of the following trade mark registrations, namely:
United States Trade mark Registration No. 4034337 ULINE.COM (standard character mark) registered October 4, 2011 (filed February 14, 2011) in class 35 for a range of packaging and shipping related supply services claiming first use in commerce from December 28, 1996.
United States Trade mark Registration No. 4284651 ULINE (standard character mark) registered February 5, 2013 (filed June 17, 2011) in classes 6, 7, 8, 12, 16, 17 and 20 for a wide range of goods relating to the above mentioned supplies and claiming a variety of dates of first use varying from class to class, the earliest such date being March 8, 2008.
The Domain Name was first registered on December 18, 1998. It is not connected to any active website. The Registrar’s WhoIs database record includes the following entry: “Registrant Phone Ext: DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM”.
At one time (the date is not clear from the Complainant’s annex) the Domain Name was listed for sale on the afternic website in the following terms: “BUY NOW USD 6,750 or minimum offer is USD 5,300 make offer.” 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is identical or confusingly similar to the Complainant’s registered trade marks; that the Respondent has no rights or legitimate interests in respect of the Domain Name; and that the Domain Name was registered and is being used in bad faith.
The Complainant anticipates that the Respondent will refer to the delay in taking action, the Domain Name having been registered over seventeen years ago, but points to various previous UDRP decisions expressing the view that laches has no part to play in UDRP cases. It also states that it only came across the Domain Name recently. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 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 has been registered and is being used in bad faith. B. Preliminary Issues 1. Respondent Default
The failure of a respondent to respond gives rise to the question: “Does failure of a respondent to respond to the complaint (respondent default) automatically result in the complainant being granted the requested remedy?” The question is answered in paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the “Overview”) in the following terms:
“Consensus view: A respondent’s default does not automatically result in a decision in favor of the complainant. Subject to the principles described in paragraph 2.1 [of the WIPO Overview 2.0] with regard to the second UDRP element, the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP. Although a panel may draw appropriate inferences from a respondent’s default (e.g., to regard factual allegations which are not inherently implausible as being true), paragraph 4 of the UDRP requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding. There are many examples of cases (typically involving complaints based on wholly unsupported assertions or mere conclusory statements) to which there has been no response where (not withstanding such respondent default) the decision has nonetheless gone in favor of the respondent on grounds that the complainant has failed to prove its case.” 2. Language of the Proceeding
As indicated in section 3 above, the language of the proceeding is the language of the registration agreement, unless both parties agree otherwise, or the panel determines otherwise under paragraph 11 of the Rules. The language of the registration agreement is Finnish and the Complainant has requested that the language of this proceeding be English. The Panel has acceded to that request and directed that the language of the proceeding be English for the following reasons:
(a) the Respondent has not objected despite having been given an opportunity to do so by the Center and despite having been given notice that, in the absence of a response, the proceeding will proceed on the basis that the Respondent has no objection;
(b) the Complainant is not readily able to understand Finnish and to be required to translate everything into Finnish and any Finnish communications into English will be time consuming and expensive;
(c) the Respondent has shown no sign of wishing to participate in this proceeding, so will not be prejudiced by a direction that English be the language of the proceeding;
(d) the Domain Name appears to be a combination of the letter “U” and the English word “line”, supporting to some degree the Complainant’s claim that the Respondent is likely to understand English;
(e) to direct otherwise would be likely to cause undue expense and delay;
(f) in the circumstances of this case, it seems to the Panel fair and equitable all round that the language of the proceeding be English. C. Identical or Confusingly Similar
The Domain Name comprises the Complainant’s trade mark ULINE and the “.net” generic Top-Level Domain (“gTLD”) identifier. It being permissible for the Panel to ignore the gTLD identifier for the purposes of assessing identity and confusing similarity for the purposes of paragraph 4(a)(i) of the Policy, the Panel finds that the Domain Name is identical to the Complainant’s ULINE trade mark. The Panel also finds that the Domain Name is confusingly similar to the Complainant’s ULINE.COM trade mark. D. Rights or Legitimate Interests
There is nothing before the Panel to indicate that the Respondent has any rights or legitimate interests in respect of the Domain Name. The Respondent does not appear to be making any use of the Domain Name (commercial or noncommercial), the Respondent’s name is self-evidently very different from the Domain Name and the Respondent has elected not to respond to the Complainant’s allegations in this regard. He has come forward with no explanation for his selection of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. E. Registered and Used in Bad Faith
The section of the Complaint dealing with this element of the Policy is brief and reads verbatim as follows:
“The domain name should be considered as having been registered and used in bad faith:
- The domain name appears to be registered primarily for the purpose of selling or transferring the domain name registration to Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name. The domain name is currently listed for sale on A for USD 6,750 (or a minimum bid of USD 5,300) (see Annex V);
- The Respondent appears to be passively holding the domain name, which appears to have been registered in 1998 (see WIPO Overview 2.0, Question 3.2).
- The Respondent knew or should have known about the existence of Complainant’s trade marks. Complainant’s trade marks are well-known and widely used on the Internet. Under the UDRP, Respondent has the responsibility to determine whether its domain name registration “infringes or violates someone else’s rights” (see paragraph 2, UDRP).”
For a complaint to succeed under the UDRP, the complainant has to satisfy the panel that the domain name in question was both registered and is being used in bad faith. As a minimum this will usually involve establishing on the balance of probabilities that the respondent had the complainant or its trade mark in mind when registering the domain name.
What evidence has the Complainant produced to show that the Respondent is likely to have known of the Complainant or its trade mark back in December 1998 when the Domain Name was first registered? Absolutely nothing. The earliest of the trade mark registrations upon which the Complainant relies has a filing date of February 14, 2011, over twelve years after registration of the Domain Name. How about pre-existing unregistered trade mark rights? The Complainant makes no claim to any such rights and the Complaint contains no information to enable the Panel to infer the existence of any such rights. True the earliest trade mark registration upon which the Complainant relies features a “first use in commerce” claim dating back to December 1996, two years ahead of registration of the Domain Name, but the Complainant made no mention of that fact in the body of the Complaint and, as indicated, the Complaint contains no information on its business back in 1998; nothing to establish the existence of pre-existing trade mark rights, still less anything to establish that the Respondent might have had the Complainant or its trade mark in mind when registering the Domain Name.
Has the Respondent’s use of the Domain Name helped to support the Complainant’s contention that the Domain Name was registered in bad faith? No. On the evidence before the Panel the Domain Name does not appear to have been used at all. The fact that it appears to be up for sale at a price likely exceeding the Respondent’s out-of-pocket costs in registering the Domain Name is of no consequence if the Respondent did not have the Complainant in mind at the time. There is no evidence before the Panel to suggest that the Respondent was even aware of the Complainant at that time.
The Complainant claims that non-use of the Domain Name is of itself indicative of bad faith. Again, for that to be the case the Respondent must have had the Complainant in mind at time of registration. The leading case on so-called “passive holding” is Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, a case involving the domain name . The only similarities between that case and this one are that the complainants’ trade marks are (or appear to be) made-up words and that in neither case did the respondent file a response. The differences are significant. In the Telstra case both parties were situated in the same jurisdiction; whereas in this case the parties are situated in different continents. In the Telstra case the panel was able to find on the evidence that the TELSTRA trade mark was at all material times very well-known in Australia; whereas in this case while the Panel assumes in the Complainant’s favour that the 1996 first use claim is accurate, the Panel has no evidence upon which to assess the extent of that use. In the Telstra case the respondent was found by the panel to “have taken active steps to conceal its true identity, by operating under a name that is not a registered business name” and to have “actively provided, and failed to correct, false contact details, in breach of its registration agreement.” Nothing of that kind occurred in this case. The use of a privacy protection service, such as that used by the Respondent falls into a quite different category. On registrar verification the Registrar identified the Respondent and his address. The panel in Telstra concluded that no lawful use could have been made of the domain name, but the Panel has insufficient information to come to that conclusion in this case. In this case the Panel has no information upon which to conclude that back in 1998 the Complainant’s trade mark was sufficiently well-known to merit the inference that the Respondent was targeting the Complainant at date of registration of the Domain Name. Nor, in the view of the Panel, is the absence of a Response a sufficient reason to do so.
The Complainant also refers to paragraph 2 of the Policy, pointing to the Respondent’s obligation to determine whether his domain name registration “infringes or violates someone else’s rights”. The Complainant does not suggest how the Respondent is supposed to have done this prior to 2011, the date of the first of the trade mark registrations upon which the Complainant relies. On the evidence before the Panel no trade mark search would have alerted the Respondent to any pre-existing rights that the Complainant may have owned.
The strongest point in the Complainant’s favour is that the name or word, “uline”, appears to be a made-up word, but that of itself, in the absence of any evidence as to the notoriety of the Complainant’s trade mark in 1998, is insufficient to enable the Panel to infer that the Respondent must have selected it for the Domain Name because it was the Complainant’s trade mark.
The Complainant has failed to satisfy the Panel that the Domain Name was registered and is being used in bad faith. 7. Decision
For the foregoing reasons, the Complaint is denied.
Tony Willoughby
Sole Panelist
Date: March 13, 2016
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