Complainant is Javier Narvaez Segura, Grupo Loading Systems S.L. of Orihuela, Spain, represented by Berenguer & Pomares Abogados, Spain.
Respondent is Domain Admin, Mrs. Jello, LLC of Livingston, New Jersey, United States of America (“United States”), represented by John Berryhill, Ph.d. Esq., United States. 2. The Domain Name and Registrar
The disputed domain name (“Disputed Domain Name”) is registered with Moniker Online Services, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2016. On June 14, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 16, 2016, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 27, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 17, 2016. The due date for Response was extended to July 21, 2016, in accordance with paragraph 5(b) of the Rules. The Response was filed with the Center July 21, 2016.
The Center appointed Flip Jan Claude Petillion, David H. Bernstein and The Hon Neil Brown Q.C. as panelists in this matter on August 18, 2016. The Panel finds that it was properly constituted. Each member of 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
Complainant is the holder of the following registered trademark:
Spanish figurative trademark nº 2532992, with application date March 11, 2003, and registered for ‘scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software, legal services’ in class 42.
Complainant is also the holder of various domain names, which contain the word “loading”.
The Disputed Domain Name is registered since July 22, 1998. Respondent, who has traded in large numbers of domain names, acquired the Disputed Domain Name in 2009. The Disputed Domain Name currently does not resolve to an active webpage. Between 2008 and 2014, the Disputed Domain Name was used in connection with various pay-per-click monetization services. 5. Parties’ Contentions A. Complainant
Complainant considers the Disputed Domain Name to be confusingly similar to a trademark in which it claims to have rights. Complainant further claims that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to Complainant, Respondent has not used the Disputed Domain Name in connection with a legitimate use. Also, according to Complainant, Respondent has not been commonly known by the Disputed Domain Name. Finally, Complainant claims that the Disputed Domain Name was registered and is used in bad faith. Complainant considers that Respondent should have known about Complainant’s trademark, when acquiring the Disputed Domain Name, and that Respondent, who has a pattern of registering third party trademarks as domain names, registered the Disputed Domain Name to prevent the use of Complainant’s trademark in the .com domain and primarily for the purpose of disrupting Complainant’s business or to transfer the Disputed Domain Name in exchange of valuable consideration. B. Respondent
Respondent considers that the Disputed Domain Name is neither identical nor confusingly similar to Complainant’s trademark, and that Complainant’s trademark lacks distinctiveness. Respondent considers it has legitimate interests in the Disputed Domain Name, arguing that, long prior to the dispute, Respondent has used the domain name for pay-per-click monetization in connection with the dictionary meaning of the word “loading” for many years. Nowhere in the Complaint does Complainant show that Respondent has used the domain name for any purpose relating to the goods or services for which Complainant claims to trade. Finally, Respondent argues that it did not engage in bad faith registration or use of the Disputed Domain Name, and that it registered the Disputed Domain Name due to its attractiveness as a dictionary word. 6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer a domain name. As the proceedings are administrative, the standard of proof is the balance of probabilities.
Thus for Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
1. The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
2. Respondent has no rights or legitimate interests in respect of the disputed domain name; and
3. The disputed domain name has been registered and is being used in bad faith.
The Panel will deal with each of these requirements in turn. A. Identical or Confusingly Similar
To prove this element, Complainant must first establish that there is a trademark or service mark in which it has rights. Complainant has established that there indeed is a trademark in which it has rights, which consist of figurative elements and the word “loading”.
The Panel considers the Disputed Domain Name to incorporate the dominant word element of the Complainant’s trademark in its entirety. According to the Panel, the abovementioned figurative elements are insufficient to remove the confusing similarity (See Bilfinger Berger AG v. eService Finance Dept.,WIPO Case No. D2003-0827, where it was considered that in comparing the domain name and the Complainant’s trademark, particular attention must be given to the verbal elements of the mark; Mark Overbye v. Maurice Blank, G B.V.,WIPO Case No. D2016-0362).
Accordingly, Complainant has made out the first of the three elements that it must establish. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, Complainant has the burden of establishing that Respondent has no rights or legitimate interests in respect of the disputed domain name.
It is established case law under the Policy that it is sufficient for Complainant to make a prima facie showing that Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of rebuttal on Respondent. (See Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110).
Both parties agree that there is no relationship between them. Complainant submits that Respondent is not using the Disputed Domain Name. Respondent argues that it has equitable interests in the Disputed Domain Name, and that it made legitimate use of the Disputed Domain Name for pay-per-click monetization in connection with the dictionary meaning of the domain name. Respondent’s arguments are supported by the case file, and the Panel finds that there is no evidence showing that Respondent’s conduct was aimed at creating confusion with Complainant’s trademark at any point in time.
Moreover, the Panel notes that the dominant word element of the trademark is descriptive. The Panel considers that a respondent has a right to register and use a domain name to attract Internet traffic based on the appeal of commonly used descriptive or dictionary terms, in the absence of circumstances indicating that the respondent’s aim in registering the disputed domain name was to profit from and exploit the complainant’s trademark. (See Harvard Lampoon, Inc. v. Reflex Publishing Inc.,WIPO Case No. D2011-0716; National Trust for Historic Preservation v. Barry Preston,WIPO Case No. D2005-0424).
The Complainant does not provide any proof indicating that Respondents’ aim in registering the Disputed Domain Name was to profit from and exploit Complainant’s trademark. The Panel finds that Respondent’s offer to sell the Disputed Domain Name to Complainant is not relevant as Respondent was first approached by Complainant to sell the Disputed Domain Name.
In these circumstances, Complainant has failed to make out the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Given the Panel’s finding on the issue of rights and legitimate interests, it is unnecessary to consider the issue of bad faith registration or use. However, the Panel considered the issue, and finds that no bad faith is shown. The Panel considers that Respondent was at liberty to register the Disputed Domain Name as a common term. Respondent has plausibly denied that it knew of the Complainant when Respondent registered the Disputed Domain Name. There is no evidence that in making the registration Respondent targeted Complainant or Complainant’s trademark. 7. Decision
For the foregoing reasons, the Complaint is denied.
Flip Jan Claude Petillion
Presiding Panelist
David H. Bernstein
Panelist
The Hon Neil Brown Q.C.
Panelist
Date: August 31, 2016
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