The Complainant is Thule Sweden AB of Hillerstorp, Sweden, represented by Lars Wallentin, Sweden.
The Respondent is Cameron David Jackson of Australia. 2. The Domain Name and Registrar
The disputed domain names and and the third domain name, , that the Complainant seeks to add to this proceeding, are registered with Instra Corporation Pty Ltd. (the “Registrar”). 3. Procedural History A. The Complaint.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on March 1, 2016. On March 1, 2016 and March 4, 2016, the Center transmitted by email to the Registrar requests for registrar verification in connection with the disputed domain names and . On the same dates, the Registrar transmitted by email to the Center its verification responses confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details. The Complainant filed an amended Complaint on March 9, 2016.
The Center verified that the Complaint together with 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 proceedings commenced on March 9, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 29, 2016. B. Supplemental Filings.
On March 23, 2016, the Complainant filed a Supplemental Filing with the Center. In the Supplemental Filing the Complainant notified the Center that “the Respondent has registered a new domain name after the present UDRP procedure has been started. The domain name was registered on the March9, 2016”. The Complainant further stated “In case we cannot include this new domain name in the original complaint, we would like to submit this information as further evidence of bad faith.” The Complainant duly copied the Respondent on this communication.
The Respondent replied by email to the Center the following day, March 24, 2016. The entire substantive content of this communication was “I think it is very unfair that Thule group can or could possibly include another name in the same WIPO case. They should have to lodge another or separate WIPO case.” The Center advised the Parties on March 24, 2016, that the issues raised by the Complainant’s Supplemental Filing, including whether to admit it for any purpose, would be referred to the Panel upon appointment. C. Appointment of the Panel.
The Center appointed Richard G. Lyon as the sole panelist in this matter on March 31, 2016. The Panel finds that it was properly constituted and has jurisdiction to determine this administrative proceeding. The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. D. Procedural Order No. 1.
On April 1, 2016, the Panel advised the Center that he would consider the Complainant’s request to add a third domain name to this proceeding, and requested the Center to contact the Registrar to verify ownership of this domain name and to place it under registrar lock pending the Panel’s Decision. The Center did so on April 1, 2016. On the same date, the Registrar transmitted by email to the Center its verification responses confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details.
On April 4, 2016, the Panel issued Procedural Order No. 1, stating in pertinent part “The Panel informed the Center to confirm Lock of, and registration details for, the domain name . Having received such confirmation, in order to ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case, Rules, paragraph 10(b), the Panel ORDERS:
1. The date for any Response is extended to April 11, 2016. The last day for sending any Response (copied to the Complainant) to the Center is April 11, 2016, Geneva time.
2. The Response may include any defense to any of the three domain names referred to in this Order as well as further explication of its March 24 communication quoted above.
3. The Complainant shall NOT reply or submit any other communication in respect to a Response, should one be filed, absent further order of the Panel.”
The Respondent made no further submission. 4. Factual Background
The Complainant and its affiliated companies manufacture and sell storage devices – carriers, racks, boxes, and cases – for transportation of goods, often by personal motor vehicles. Bicycle racks, ski racks, and cargo boxes that supplement the carrying capacity of an automobile or sport utility vehicle are examples. These goods are marketed directly and through dealers around the world. The Complainant has long held many trademarks duly registered with national registries around the world for THULE or a combination of THULE and descriptive words (e.g., THULE GROUP, THULE SWEDEN). The Complainant has registered trademark rights in Australia, the Respondent’s country of residence. The Complainant’s principal website is located at “”.
The Respondent registered the initial two disputed domain names and in November 2015 and February 2016, respectively, and the third on March 9, 2016, the date the Complaint was notified. The initial two disputed domain names resolve to parking pages sponsored by Only Domains, with content consisting of “Domain Parked with Only Domains. You will be redirected to Only Domains in 7 seconds. Please click here if you are not redirected.” The third domain name yielded an error message: “Server Not Found.”
The Complainant sent the Respondent a cease-and-desist letter on January 12, 2016, claiming that the Respondent’s registration of , at that time the only one registered by the Respondent, infringed its trademark rights and demanding abandonment of that disputed domain name. This letter triggered email correspondence between the Parties that extended through February 29, 2016. The Complainant refused to purchase the disputed domain names, which by that time also included , the second of the initial two disputed domain names at issue. 5. Parties’ Contentions A. Complainant
The Panel summarizes the Complainant’s contentions as follows:
1. The Complainant has rights in its THULE marks by reason of their registration with the appropriate national and international authorities. Each disputed domain name has “thule” as its dominant feature and is thus confusingly similar to these marks.
2. The Complainant has never authorized the Respondent to use its THULE marks and the Respondent is not and never has been known by the term THULE. Parking the disputed domain names is not a bona fide use of them, as “(i) The registrant became owner of the [disputed domain names] following the registration of the Complainant’s Thule Group and Thule trademarks in Australia or internationally [and] (ii) The use of the [disputed domain names] infringes the Complainant’s statutory trademark rights.”
3. The email correspondence between the Parties demonstrates that the Respondent registered the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring them to the Complainant, which is the owner of the trademark or service mark for valuable consideration in excess of his documented out-of-pocket costs directly related to the disputed domain names. Further, the Complainant cites ten UDRP cases dating from 2005 through 2016 in which the Respondent was ordered to transfer domain names that incorporated a well-known trademark under circumstances similar to those in this case, enough to constitute a pattern of conduct of registering domain names to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name. See Policy, paragraphs 4(b)(i) and (ii). As noted, the Complainant requests the Panel to take the Respondent’s registration of the third domain name into account as further evidence of bad faith should the Panel decline to add it as at issue in this proceeding. B. Respondent
The Respondent’s only email communication with the Center is quoted above. 6. Discussion and Findings A. Supplemental Filings; Addition of Domain Names
As a procedural matter, the Complainant’s Supplemental Filing, addressing as it does an act undertaken subsequently to the filing of the Complaint, meets the stringent criteria for allowance of unsolicited additional submissions set out in paragraph 4.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). The Complainant could not reasonably have anticipated the Respondent’s registration of another domain name incorporating the THULE marks in response to the filing of the Complaint. The Panel will consider the Complainant’s Supplemental Filing and the Respondent’s reply to it.
The Policy and Rules contain no express provision addressing the post-Complaint request to add an additional domain name to a pending proceeding. A few panels have addressed the issue; their decisions are summarized in paragraph 4.8 of the WIPO Overview 2.0. Results are mixed and dependent upon the circumstances of the particular case. When the complainant provides a plausible reason for requesting addition of additional domain names post-complaint, addition may be allowed if “fair and practicable.” See also Cash Converters Pty Ltd. v. Cameron David Jackson,WIPO Case No. D2014-2265 (involving this Respondent); Société Air France v. Spiral Matrix, WIPO Case No. D2005-1337. Other panels have denied consolidation as potentially detrimental to the respondent’s rights, e.g., Apple Inc. v. Private Whois Service,WIPO Case No. D2011-0929; Department of Management Services, State of Florida v. Digi Real Estate Foundation,WIPO Case No. D2007-0547.
Policy precedent on consolidation generally, summarized in paragraph 4.16 of WIPO Overview 2.0, the purposes of the Policy, and common sense also provide useful direction on this issue.
The WIPO Overview 2.0 discussion at paragraph 4.16 addresses primarily consolidating claims involving multiple complainants (such as members of a sports league or trade organization) or multiple respondents (such as affiliated companies). In those circumstances the criteria for consolidation are “(i) the complainants either have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants’ individual rights in a similar fashion; (ii) it would be equitable and procedurally efficient to permit the consolidation; or in the case of complaints brought (whether or not filed by multiple complainants) against more than one respondent, where (i) the domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties.” In applying these criteria panels have summarized the questions as “[I]n considering whether to allow consolidation, two questions arise: (i) do the complainants have a truly common grievance against the respondent?; and (ii) would it be equitable and procedurally efficient to permit consolidation of complainants? This question would typically involve asking the question whether there is any reason why it would not be equitable to permit consolidation?” National Dial A Word Registry Pty Ltd. and others v. 1300 Directory Pty Ltd,WIPO Case No. DAU2008-0021. Considering these issues, particularly the second, “requires the panel to examine the entire case file, not merely the bare numbers or the parties’ contentions on consolidation only. The existence vel non of a ‘common grievance’ and procedural efficiency may well turn on how the panel would address one or more of the substantive issues in the case.” Alabama One Call, Louisiana One Call System, Tennessee One-Call System, Inc. v. Windward Marketing Group, Inc.,WIPO Case No. D2009-1243 (multiple complainants); eBay Inc. v. Du Hongxia/Liu Yujiao/WHOIS AGENT, DOMAIN WHOIS PROTECTION SERVICE,WIPO Case No. D2014-2015 (multiple respondents).
Panels, and the Center as Provider, have considered the propriety of combining cases involving different domain names. Panels focus first upon the “common grievance” criterion articulated above. See e.g., Forest Laboratories, Inc. v. Natural Products Solutions LLC,WIPO Case No. D2011-1032 / Forest Laboratories, Inc. v. Clark Grace,WIPO Case No. D2011-1006, in which the panel on his own initiative consolidated separately filed cases: “Given the fact that the Panel has found the Respondent in both cases to be the same entity and the similarity of the operative facts in both matters, the Panel has determined on its own initiative to consolidate these cases as a matter of efficiency. See Rules, paragraph 10(e)” [footnote omitted].
The only reason this Panel can see not to apply these same criteria to the addition of domain names, including ones registered after a complaint is filed, is a variant of the second general criterion, whether consolidation would in the particular circumstances of the case be “equitable,” or to use the Respondent’s word “fair” to both Parties. Certainly the Respondent should be given a reasonable opportunity to reply both to the request for addition and to the substantive issues under paragraph 4(a) of the Policy with respect to the third domain name. For this reason the Panel in Procedural Order No. 1 allowed the Respondent additional time to reply to any of the Complainant’s contentions.
The circumstances of this case overwhelmingly favor allowing the addition of the third domain name. As discussed in part B below, the Panel’s analysis of each of the disputed domain names is identical, indicating a “common grievance.” Procedural efficiency would normally favor such addition.
And to this Panel’s thinking the Respondent has it exactly backwards on equitable considerations or “fairness.” While the Respondent opposes such addition as “unfair,” he does not (as he did not in Cash Converters Pty Ltd. v. Cameron David Jackson, supra) explain why this might be so. According to the record, in particular the email correspondence between the Parties and the Respondent’s one-sentence reply to the Complainant’s request for such addition (quoted above) the only apparent reason the Respondent registered the third domain name was to increase his bargaining leverage against the Complainant, “a highly improper purpose.”1 by requiring the payment of a second fee to commence a second proceeding. In short, “The Respondent has not indicated that it would suffer any prejudice from consolidation of the complaints and no potential prejudice is apparent to the Panel.” Halle Berry and Bellah Brands Incorporated v. Alberta Hot Rods,WIPO Case No. D2016-0256. Not allowing addition might encourage similar conduct from cybersquatters in the future – i.e., if you won’t buy at my price I’ll just register more domains using your mark. Simple common sense argues against in effect rewarding a cybersquatter for a subsequent act of cybersquatting.
One final equitable consideration favoring allowing such addition is that this instance is not the first time, or the second, that this Respondent has employed a new registration for this very purpose. See Statoil ASA (“Statoil”) v. Cameron Jackson,WIPO Case No. D2015-2226, in which this Respondent registered two additional domain names involving the same prominent trademark within three weeks after selling a domain name to the markholder complainant. Said the learned panel of such conduct: “The Respondent’s registration of the [subsequent] disputed domain names following the Complainant’s purchase of from the Respondent is in bad faith. The disputed domain names are being used in [sic] to extort additional payments from the Complainant.” See also Cash Converters Pty Ltd. v. Cameron David Jackson, supra, in which the Panel granted the complainant’s request to add a number of domain names after filing of the initial complaint for reasons similar to those given by this Panel in this case. This Panel finds this Respondent undeserving of any special consideration.
The Respondent’s tactics bring into play another line of Policy precedent. UDRP panels tend to take a dim view of registrants’ tactics explainable only as stalling, evasion, obfuscation, or harassment. See, e.g., Hermex Iberica, S.A. v. HerMeX Dating / BuyBestD,WIPO Case No. D2015-1295 (cyberflight); E. Remy Martin & C° v. J Pepin - Emedia Development Ltd,WIPO Case No. D2013-1751 (frivolous correspondence on collateral issue); Tiara Hotels & Resorts LLC v. John Pepin,WIPO Case No. D2009-0041 (frivolous litigation commenced after receipt of complaint); Mobile Communication Service Inc. v. WebReg, RN,WIPO Case No. D2005-1304 (frivolous requests for additional time). Certainly this Panel will not honor this Respondent’s request on a procedural matter just to inflict an additional burden on the Complainant.
For these reasons the Panel orders that the domain name be allowed to proceed with the initial two disputed domain names and . B. Identical or Confusingly Similar; Rights or Legitimate Interests; Registered and Used in Bad Faith
Fortunately for the Panel’s temper and his readers’ patience, evaluation of the disputed domain names under the standards of paragraph 4(a) of the Policy does not require extended discussion. The Complainant holds registered rights in its THULE marks and THULE is the dominant feature of each of the disputed domain names. The record reveals no right or legitimate interest of the Respondent in any of them. The disputed domain names and were registered after the Respondent’s receipt of the Complainant’s cease-and-desist letter and hence with knowledge of the Complainant and its marks, and targeting is obvious from the record. Bad faith is established for for the reasons advanced by the Complainant, as falling foursquare within the examples of evidence of bad faith set out in paragraphs 4(b)(i) and (ii) of the Policy. The Complainant has carried its evidentiary burden under each Policy element. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names , , and be transferred to the Complainant.
Richard G. Lyon
Sole Panelist
Date: April 12, 2016
Wall-S, LLC v. Marcus Kocak / Internet Opportunity Entertainment (Sports) Limited, Sportingbet PLC,WIPO Case No. D2012-1193.
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