1.1 The Complainant is Virtual Dates, Inc. of Fort Lauderdale, Florida, United States of America, represented by Law Office of Howard M. Neu, PA, United States of America.
1.2 The Respondent is Hargurnaz Singh of Punjab, India, self-represented. 2. The Domain Name and Registrar
2.1 The disputed domain name (the "Domain Name") is registered with PDR Ltd. d/b/a PublicDomainR (the "Registrar"). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 26, 2016. On April 27, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 28, 2016, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 28, 2016.
3.2 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").
3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 29, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 19, 2016. On May 18, 2016 the Respondent submitted a request for the automatic four calendar day extension for response under paragraph 5(b) of the Rules. The Center notified the Parties that the new due date for Response was May 23, 2016. The Response was filed with the Center on May 23, 2016.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on May 31, 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. 4. Factual Background
4.1 The Complainant would appear to be a company incorporated in Florida in the United States. The company is solely owned by one Rick Schwartz. Mr. Schwartz is an individual who for many years has traded in domain names and has developed a fair degree of fame (and some might say notoriety) as a result of his business activities. At some point Mr. Schwartz either coined for himself or was given the nickname the "Domain King". Whether self-coined or bestowed upon him, it is a name that he continues to use.
4.2 The Complainant is the owner of the following trade marks:
(i) United States registered trade mark No. 2773011 for the "typed drawing" DOMAIN KING filed on May 24, 2001 and proceeding to registration on October 14, 2003. The mark is registered in class 42 in respect of the "Licensing of intellectual property, namely domain names and website development services" and claims a first use in commerce of July 31, 1996; and
(ii) European Union trade mark No. 011358471 for the word mark DOMAIN KING filed on November 10, 2012 and proceeding to registration on March 25, 2013 in classes 41, 42, and 45.
4.3 Mr. Schwartz also operates and has for several years operated a blog in relation to domaining from the domain name . As far as the Panel can tell at all material times that blog has carried the heading:
"The Rick Schwartz Domain and Traffic Blog RicksB...Home of the 'Domain King'
Domain King's thoughts on domains, traffic, increasing web sales, success, life & plain old business & marketing 101".
4.4 The Domain Name was registered on July 8, 2011.
4.5 The Respondent would appear to be an individual located in India. He appears to be connected in some way (although exactly how is not clear) with Hannu Internet Corp. Pvt. Ltd ("Hannu Internet Corp"). Hannu Internet Corp is a business based in India that provides various Internet related services under the name "Domain King" and has done so since 2012. It is an accredited registrar with the South African Domain Registry and Philippines Domain Registry, but also registers other types of domain name for its customers.
4.6 The Respondent is also the owner of an Indian trade mark application applied for on August 31, 2013 in class 41 that takes the following form:
5. Parties' Contentions A. Complainant
5.1 The Complainant claims that the Domain Name is confusingly similar to the Complainant's marks.
5.2 The Complainant also contends that the Respondent has separately registered the Nigerian country code domain name and the South African second level domain name . It claims that when it filed a complaint with the Nigeria Internet Registration Association in respect of the domain name, the Respondent transferred both of those domain names from their previous registrars to Hannu Internet Corp's own "Domain King" registrar.
5.3 The Complainant also contends that the Respondent cannot show any of the examples of rights or legitimate interests set out in paragraph 4(c) of the Policy. In this respect, it appears to be contending that in offering goods and services from the Domain Name, the Respondent is intending to mislead Internet users into believing that there is a connection between the Respondent and the Complainant when in fact no such connection exists and that, therefore, the Respondent's use of the Domain Name is not a bona fide offering of goods and service within the scope of paragraph 4(c)(i) of the Policy.
5.4 The Complainant also claims that the Domain Name has been registered and is being used in bad faith. It does not expressly explain the basis of that contention but refers to a previous UDRP decision (i.e., Singapore Pools (Private) Limited v. WhoisGuard Inc. / Chicho Vancho,WIPO Case No. D2016-0290) in which the panel held that it was (i) "highly improbable that the Respondents selected the Disputed Domain Name independently and without knowledge of the Complainant or its business"; and (ii) the respondents in that case were using the disputed domain name's association with the complainant in order to attract users to their website. So it would appear that the Complainant is making the same allegation against the Respondent in this case. B. Respondent
5.5 The Respondent does not explain what connection there is between Mr. Singh and Hannu Internet Corp, but appears to proceed on the basis that they can, for the purposes of these proceedings, be treated as one and the same entity.
5.6 The Respondent claims that "Domain King" is a "very generic and descriptive combination of words" and that a number of different entities have registered these words as part of a domain name. It questions whether DOMAIN KING has really been used by the Complainant as a trade mark, as opposed to a name adopted by Mr. Schwartz. It also claims that at least one other individual has adopted or been called by that name, and refers in particular to the Indian "domainer" Ashwin Vikhonas.
5.7 The Respondent asserts that the Complainant has no rights in India, Nigeria or South Africa where Hannu Internet Corp operates. It also claims as follows:
"Also during registration of our domain: , we were not aware of the service mark of the complainant in US as every country has its own trademark laws & anyone can register a trademark in the country of operation based on its actual use for selling the goods & services in that country. Also no brand results appeared on Google for the term 'DomainKing' during the time of our domain registration. So we had no knowledge of the complainant's trademark."
5.8 The Respondent maintains that he has used the name "DomainKing" for his business since 2012 and refers to his application for an Indian trade mark that incorporates that term. The Respondent claims that his (or Hannu Internet Corp's) business has over 11,000 clients in India, Nigeria, South Africa, Philippines and Kenya. Those business activities in Nigeria are explained in some detail, and it is claimed that approximately USD 50,000 is spent per year in marketing the business. As a consequence of those business activities, the Respondent claims legitimate interests under paragraph 4(c)(i) of the Policy.
5.9 The Respondent also maintains that the Domain Name was neither registered nor has been used in bad faith. The Respondent claims that the name "Domain King" was chosen because it was consistent with the businesses' aim to be seen as "a leader of Domain & Hosting market in India." The Respondent also claims that the "domaining community" that may know Mr. Schwartz by his "moniker" is small. This small group of people is said to be different from the Respondent's client base, which are companies or individuals that are looking to register domain names and purchase hosting services.
5.10 The Respondent also responds to the Complainant's allegation that other domain names that the Respondent controlled were moved to the Respondent's own registrar after the filing of a Nigeria Internet Registration Association ("NIRA") Dispute Resolution Policy ("NDRP") complaint. The Respondent denies that this is true so far as the South African domain name is concerned. So far as the Nigerian domain name is concerned, the Respondent claims that (a) this was a defensive act in response to attempted reverse domain name hijacking by the Complainant; (b) the Respondent was planning to make the transfer in any event; and (c) the Respondent did not trust the then registrar to act properly in accordance with the relevant Nigerian domain name policies.
5.11 Finally, the Respondent seeks a finding of reverse domain name hijacking. 6. Discussion and Findings
6.1 To succeed in these proceedings the Complainant must make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.2 The Panel will address each of these requirements in turn. It will then address the Respondent's allegations of reverse domain name hijacking. A. Identical or Confusingly Similar
6.3 The Complainant clearly has registered trade mark rights in the term "Domain King" as a word mark. The Domain Name can only be sensibly read as these words in combination with the ".com" Top-Level Domain. Consequently, the Domain Name is confusingly similar to a trade mark in which the Complainant has rights. In the circumstances the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
6.4 Given the Panel's finding so far as bad faith registration is concerned, it is not necessary to consider this issue further. C. Registered and Used in Bad Faith
6.5 As has already been observed the Response fails to explain the exact relationship between Mr. Singh and Hannu Internet Corp. Nevertheless the Response proceeds on the basis that they can effectively be treated as a single entity. The Complainant does the same in the Complaint. In the circumstances, the Panel proceeds on the same basis and further references to the Respondent in this decision should be understood accordingly.
6.6 There is no suggestion in the case file that the Respondent is engaged in anything other than a genuine business. Nevertheless, that is not necessarily an answer to proceedings under the Policy. When it comes to the issue of bad faith, in broad terms the question is whether the domain name has been registered and used to take some form of unfair advantage of the trade mark rights of the complainant (see, for example, M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230).
6.7 For a respondent to have registered a domain name in bad faith it is usually necessary for a complainant first to demonstrate step that the respondent was aware at the time of registration of the complainant's use, or intended use, as a trade mark of the relevant term. In this case the Respondent has expressed itself carefully. It claims that it did not know of the Complainant's registered trade mark when it registered the Domain Name, but does not say to what extent it was aware of Mr. Schwartz and his use of the name "Domain King" at the time. Therefore, the Panel is prepared to assume for the purposes of the decision that the Respondent was at least aware of the Mr. Schwartz and his use of that name. This is not an unreasonable assumption given that Mr. Schwartz appears to have been operating his blog from the domain name at that time.
6.8 Nevertheless, there is insufficient evidence before the Panel for it to conclude that the Respondent was at that time aware that either Mr. Schwartz or the Complainant were using that term in a trade mark sense. Although "Domain King" is a moniker or nickname that Mr. Schwartz has adopted, there is no material before the Panel that it would be obvious to anyone who saw Mr. Schwartz's blog at the time that the Domain Name was registered that Mr. Schwartz or any company associated with Mr. Schwartz was using that term as a trade mark for goods or services. There is some material before the Panel that suggests that "Domain King" may well have been used in a trade mark sense on a different webpage operating from the domain name, but no attempt is made in the Complaint to demonstrate that the Respondent is also likely to have been aware of that particular use at the time.
6.9 Further, even if the Complainant was able to demonstrate that the Respondent most likely knew that the term "Domain King" was being used in a trade mark sense, that would not be the end of the matter. The question would still remain whether the Domain Name was registered to take some unfair advantage of the Complainant's use of this term.
6.10 In this case the Panel has reached the conclusion that the Complainant has failed to demonstrate that it was with such potential advantage in mind that the Domain Name was registered. The Panel accepts that the term "Domain King", although not necessarily a "natural" combination of words, is not itself an entirely unnatural name for the Respondent to have chosen for a domain registration and webhosting business and the Panel accepts that it at least plausible that this name was chosen because of its potential descriptive associations with that business, rather than the name's possible association with Mr. Schwatz or the Complainant.
6.11 In coming to that conclusion, the Panel accepts and takes into account that the customer base of the Complainant's business (i.e., those wishing to acquire or use specific pre-registered domain names) and the Respondent's businesses (i.e., those wishing to register new domain names and/or purchase certain hosting packages) are slightly different. It seems unlikely that those wishing to use the Respondent's services would necessarily be aware of Mr. Schwatz or the Complainant. It, therefore, seems unlikely to the Panel that based on the record before it the Respondent registered the Domain Name with a possible association by its customers with the Complainant's use of that term in mind.
6.12 The Complainant has, therefore, failed to demonstrate that the Domain Name was registered in bad faith. D. Reverse Domain Name Hijacking
6.13 There is a reference in the Response to the Respondent having been threatened with proceedings by the Complainant prior to the commencement of these proceedings. However, neither the Complainant nor the Respondent has provided the Panel with a copy of any document in which that threat was made nor any subsequent correspondence. It is, therefore, unclear to what extent, if at all, the Complainant was aware what the Respondent position would be in these proceedings.
6.14 Also there is no other material before the Panel which would suggest that the Complainant's position in these proceeds was obviously hopeless. Accordingly, as matters stand the Panel is not prepared to make a finding that the Complainant commenced these proceedings in a speculative manner in the knowledge that these proceedings were highly likely to fail.
6.15 Further, there is the fact that the Respondent transferred the domain name to a different registrar when proceedings in relation to that domain name were commenced. There is no evidence before the Panel as to how the Nigerian domain name dispute resolution policy operates, but the explanation offered by the Respondent for its actions is one that the Panel approaches with scepticism. The Respondent claims that the domain name was transferred because it did not trust the previous registrar to operate that relevant policy properly, but no proper explanation of that lack of trust is offered and even if it could be, it is not something that would be likely to justify or excuse taking a similar step in equivalent UDRP proceedings. In short, it is something that the Complainant might have understandably considered suspicious and this is something that the Panel considers it can take into account when assessing the Complainant's motives in commencing these proceedings.
6.16 In the circumstances, the Panel declines to make a finding of reverse domain name hijacking. 7. Decision
7.1 For the foregoing reasons, the Complaint is denied.
Matthew S. Harris
Sole Panelist
Date: June 7, 2016
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