Complainant is IDR Solutions Ltd. of East Peckham, the United Kingdom of Great Britain and Northern Ireland ("UK"), represented by Stobbs IP Limited, UK.
Respondent is Whois Privacy Corp of Nassau, Bahamas. 2. The Domain Name and Registrar
The disputed domain name is registered with Internet Domain Service BS Corp (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 25, 2016. On October 25, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 26, 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 October 28, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 17, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on November 22, 2016.
The Center appointed Ellen B Shankman as the sole panelist in this matter on November 30, 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
The Domain Name was registered since 2002 to Complainant, and the name and Domain Name has been used by Complainant for 14 years. Although the evidence supports that Complainant paid its Registrar to timely renew the Domain Name registration in 2016, Complainant's Registrar erroneously allowed the Domain Name to lapse. The date of the Domain Name re-registration was not confirmed by the Registrar. However, it is clear that the Domain Name was purchased upon lapse of the Domain Name by Respondent, and is currently being used by Respondent for what appears to be a website in French regarding Internet marketing, and technology. Respondent has only been identified as a "proxy service" and the underlying identity of Respondent has not been revealed.
Complainant does not have registered rights in the trademark JPEDAL. Complainant provided evidence of common law rights in the mark JPEDAL with regard to software, as well as evidence of the original registration of the Domain Name to Complainant in 2002.
The Panel also conducted an independent search to determine that the Domain Name is currently active, and while the content appears to use "JP Edal" as a name of a person that may be posting, identifying there is no additional information to corroborate whether "JP Edal" may in fact be a real individual. Furthermore, the Contact Page does not provide any information, and appears to be only set up to collect information.
Since Respondent did not respond, the facts regarding the use and fame of Complainant's mark are taken from the Complaint and are generally accepted as true in the circumstances of this case. 5. Parties' Contentions A. Complainant
Complainant alleges that although it does not have registered rights in the mark JPEDAL, that the UDRP also applies to unregistered trademark rights, and that Complainant has sufficient rights in the mark to meet the necessary tests. Complainant supplied evidence of its use and reputation in the mark. Complainant also supplied evidence of the erroneous lapse of its long held Domain Name by the Registrar, and Complainant's attempts to first press the Registrar to correct the error, and then correspondence to seek to obtain the Domain Name back from Respondent. Complainant alleges that Respondent did not reply to its offer for reimbursement of the registration fee.
To summarize the Complaint, Complainant is the owner of unregistered rights for the trademark JPEDAL, in respect of software and has used the Domain Name for 14 years, prior to the erroneous lapse of the renewal by the Registrar. The UDRP also covers unregistered trademark rights and that a lack of registered trademark rights for mark JPEDAL, does not preclude a finding that Complainant has established trademark rights in the name JPEDAL for the purposes of the Paragraph 4(a)(i) of the Policy. The Domain Name is identical and/or confusingly similar to Complainant's trademark. Complainant contends that Respondent has no rights or legitimate interests in respect of the Domain Name. That Respondent had to know of Complainant's rights in the mark and extensive prior use of the Domain Name. The Domain Name was registered and is being used in bad faith. That continued use of the Domain Name would lead to a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of Respondent by Complainant. Thus, Respondent's registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and Complainant requests transfer of the Domain Name. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
The burden for Complainant under paragraph 4(a) of the Policy is to prove:
(i) That the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) That Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) That the Domain Name has been registered and used in bad faith.
The Panel agrees that it has clearly been established in previous decisions that the Policy applies to unregistered trademarks. Further analysis regarding this issue is discussed below under the first element of the test. A. Identical or Confusingly Similar
Assuming that Complainant proves that it has sufficient rights in an unregistered mark, the Panel easily finds that the Domain Name is confusingly similar, if not identical, to the mark JPEDAL. Thus, in this case, the focus on meeting the first element of the test is whether or not Complainant has provided sufficient evidence of rights in the mark.
Early decisions have made it clear that the Policy also extends to unregistered trademark rights under the first element of the Policy. The panel in Imperial College v. Christophe Dessimoz, WIPO Case No. D2004-0322, identified that if the complainant does not have registered rights in the trademark,
two questions must be addressed in order to ascertain whether the requirement under
Paragraph 4(a)(i) of the Policy is satisfied:
"(i) whether the Policy applies to unregistered trademarks and (ii) whether the mark at issue has acquired sufficient distinctiveness through use and promotion to identify the source of this particular service with the Complainant."
With regards to the first question, the panel in Imperial College v. ChristopheDessimoz,WIPO Case No. D2004-0322stated:
"it is undisputed and accepted practice, that paragraph 4(a)(i) of the Policy refers merely to a "trademark or service mark" in which the complainant has rights, and does not expressly limit the application of the Policy to a registered trademark or service mark. Further, the WIPO Final Report on the Internet Domain Name Process (The Management of Internet Names and Address: Intellectual Property Issues, April 1999), from which the Policy is derived, does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names. It is therefore open to conclude that the Policy is applicable to unregistered trademarks and service marks." (The British Broadcasting Corporation v. Jaime Renteria,WIPO Case No. D2000-0050; see also MatchNet plc. v. MAC Trading,WIPO Case No. D2000-0205; Emmanuel Vincent Seal trading as Complete Sports Betting v. Ron Basset,WIPO Case No. D2002-1058)."
Thus, the Panel finds that a lack of registered trademark rights does not preclude a finding that Complainant has established trademark rights in the name JPEDAL for the purposes of the Paragraph 4(a)(i) of the Policy.
With regard to the second question, the Panel in Imperial College v. Christophe Dessimoz, WIPO Case No. D2004-0322 stated:
"Panel notices that common law trademark and service mark rights exist when a party proves that there is enough goodwill and reputation in and to a name and sufficient association of the same with the party itself, no matter how strong or weak those trademark and service mark rights may be (Action Sports Videos v. Jeff Reynolds, WIPO Case No. D2001-1239)."
Further guidance is provided in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"): "relevant evidence of such 'secondary meaning' includes length and amount of sales under the trade mark, the nature and extent of advertising, customer surveys and media recognition."
Complainant asserts that the name JPEDAL has become a distinctive identifier associated with Complainant and its goods based on its use and sales with use of the Domain Name since 2002. In support of this assertion, Complainant submits evidence that the Panel finds sufficient to establish that Complainant has rights in the mark JPEDAL in association with software. This is consistent with the decision of Imperial College v. Christophe Dessimoz, WIPO Case No. D2004-0322in which the panel held that even if complainant's mark acquired goodwill and reputation in a limited field, this would still be sufficient to establish common law trademark rights within the meaning of Paragraph 4(a)(i) of the Policy.
Accordingly, the Panel finds that Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to Complainant's rights in a trademark under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270.
Complainant asserts that Respondent has no rights or legitimate interests in respect of the Domain Name and somewhat oddly argues that it appears that merely since Respondent has not obtained registered trademark rights that that is evidence that Respondent has no legitimate interests in respect of the Domain Name.
Notwithstanding, the Panel finds that Complainant has supplied sufficient information for a prima facie showing to shift the burden to Respondent to come forward with evidence of a legitimate interest. Indeed, the Panel believes that this case cries out for such response by Respondent, which appears to the Panel could be so easily provided or addressed by Respondent. Instead, there is silence.
Based on the available record, the Panel finds that Complainant has established a prima facie case, which was not refuted, and that Respondent lacks rights or legitimate interests in the Domain Name.
Therefore, Complainant has satisfied the second requirement that Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel notes that this case provided a close challenge under this third element of the test.
The Panel wishes to emphasize that it does not assume that all erroneously lapsed domain name renewals are evidence of the bad faith registration of the domain name by a new holder. Nor does the Panel believe that the Policy is designed primarily to make up for the mistakes or negligence of Registrars or Complainants in ensuring that domain names get renewed, however unfortunate that may be.
That having been said, the Panel may look to the circumstances of the case as a whole in order to determine whether the third element of the test under the Policy is met, even where the lapse of the Domain Name was done in error by Complainant's Registrar.
In this case, the Panel finds that there is circumstantial evidence of the bad faith registration and use of the Domain Name by Respondent. The Panel notes that Complainant is active in software and technology and Respondent's website (assuming it would be legitimate) under the Domain Name also appears to be connected with that field. The Panel is persuaded that it cannot be mere coincidence that purchase of the Domain Name which has been used consistently for 14 years and suddenly available is not a deliberate purchase in which Respondent was unaware of Complainant and its use and mark. Further, although the first page of the website appears to use JP Edal as a name of the "blogger", the obfuscation of Respondent's identity under the Whois privacy proxy service, together with providing no information about Respondent on the Contact Us page of the website and the unidirectional collection of information, even though it appears to pose as a commercial site, are all indicia that generally cast doubt on Respondent's bona fides and support a presumption of bad faith.
The Panel also finds relevant the relative weighing of the harms to the parties. Complainant being deprived of the Domain Name after 14 years of consecutive use whereby important trademark rights have accrued through no apparent error of its own suffers a much greater harm than Respondent (assuming for argument's sake that he would be acting in a bona fide manner) being deprived of the Domain Name that appears to have been used for a matter of weeks. Complainant has provided evidence of third party recognition and of its mark and Domain Name, and even evidence that would argue to third party reliance on the association of the products with Complainant. In sharp contrast, on the present record there is no apparent reason that Respondent would be connected with this particular Domain Name. This is consistent with holdings in other cases, see e.g., The Math Works, Inc. v. Amir Alipour, Refah Cultural Foundation, WIPO Case No. D2014-2063, "there would have been a variety of other domain names available to the Respondent to offer any of its alleged teaching services", and Future Publishing Limited v. DomainsByP, Robert Lamb, WIPO Case No. D2010-1526, "There are many other domain names which the Respondent could choose."
This is also consistent with the Panel in Pixers Ltd. v. Whois Privacy Corp., WIPO Case No. D2015-1171 which stated:
"In short, paragraph 4(b)(iv) provides an evidentiary presumption of bad faith registration where there is evidence of a certain kind of bad faith use. In many cases, it may be difficult for the Respondent to rebut this evidentiary presumption.
Such cases are generally typified by a clear absence of rights or legitimate interests. By way of examples, other relevant factors could include the nature of the domain name itself, the content of any website to which the domain name pointed – including any changes in such website content and the timing thereof, the registrant's prior conduct generally and in UDRP cases in particular, the reputation of the complainant's mark, the use of (fraudulent) contact details or a privacy shield to hide the registrant's identity, the failure to submit a response, the plausibility of any response, or other indicia that generally cast doubt on the registrant's bona fides.
In certain circumstances, paragraph 4(b)(iv) may assist a complainant where it is unclear why a domain name was registered…"
Given the evidence of Complainant's prior use of the Domain Name for an extensive period of time, the timing of the registration of the Domain Name with apparent knowledge of Complainant's trademark and prior use of the Domain Name, and the other indicia of lack of Respondent's bona fides, the Panel finds that Complainant has satisfied the third requirement that Respondent has registered and is using the Domain Name in bad faith, under paragraph 4(a)(iii) of the Policy. 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 Domain Name be transferred to Complainant.
Ellen B Shankman
Sole Panelist
Date: December 12, 2016
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