The Complainants are Docler IP S.à r.l. of Luxembourg Ville, Luxembourg (“Docler IP”), Docler S.à r.l. of Luxembourg Ville, Luxembourg (“Docler”) and WebMindlicenses Korlátolt Felelösségü Társásag of Budapest, Hungary (“WML”), represented internally.
The Respondent is Su Xing of Changsha, China. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2016. On October 31, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 1, 2016, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on November 11, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 1, 2016. The Respondent did not submit any response. Accordingly the Center notified the Respondent’s default on December 2, 2016.
The Center appointed Richard G. Lyon as the sole panelist in this matter on December 7, 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 December 9, 2016, the Complainant submitted as additional evidence an email that it received from the Respondent. That email is dated December 9, 2016. The Panel will treat this as an unsolicited supplemental filing, and, given that this email was received subsequently to the filing of the Complaint, admit it under settled Policy precedent. See Rules, paragraph 10(d); WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.2; Wall-S, LLC v. Marcus Kocak / Internet Opportunity Entertainment (Sports) Limited, Sportingbet PLC,WIPO Case No. D2012-1193 (admitting post-pleading correspondence between the parties). 4. Factual Background
The Complainants and other companies within their affiliated group operate a web platform, launched in 2014, that earns them commissions from broadcasters that provide private chats and shows to customers. At about the same time one or more of the Complainants began to offer a web platform with music, storytelling, and similar entertainment services. Prior to 2014 the Complainants or affiliated companies used the name “Docler” for a corporate website and as the name of various companies within their group. One or more of the Complainants holds trademarks consisting of or including “Docler” dating to 2007 in Hungary and the European Union, with a Paris Convention filing applicable to other countries. The Complainants and other companies in the Docler group also own and use numerous domain names of which “Docler” is the dominant feature.
The Respondent, based in China, sells speakers and similar products under the name DOLCER. The Respondent or an affiliated United States of America company owns a European Union Trademark for DOLCER registered in 2014. The Respondent registered the disputed domain name in September 2015. The disputed domain name has always been parked. An annex to the Complaint indicates that it once resolved to a page of hyperlinks. When the Panel attempted to access it he received a standard Registrar hyperlink page. Neither page made any reference to the Complainants or to competitors of the Complainants.
The Complainants have submitted email correspondence between the parties. In October 2016 the Complainants’ representative sent the Respondent a cease-and-desist letter, demanding transfer of the disputed domain name. The Respondent declined, stating among other things that “I think that is impossible to transfer to you for free”. At one point the Respondent offered to transfer the disputed domain name for USD 7,500; in future correspondence the requested amount was reduced to USD 1,500, then USD 1,000, 5. Parties’ Contentions A. Complainant
The Complainant contends as follows:
- The three Complainants belong to the same group of companies. Each has an identifiable interest in the disputed domain name. Docler IP and WML own trademarks duly registered with various national authorities that incorporate the word DOCLER, which they have licensed to Docler and other group companies. Each Complainant and other companies in their affiliated group have a common interest in recovering the disputed domain name, the registration of which is described in the Complaint as an “IP infringement” of the group’s rights. This “common grievance” makes it appropriate to consolidate the Complainants in this proceeding.
- The Complainants own various registered trademarks and domain names that consist of or incorporate the word “Docler”. These date back to February 2007, when one of the companies in the group registered the domain name . Trademarks for DOCLER that are registered with national authorities in Hungary and the European Union and owned by WML date to 2007. The disputed domain name is confusingly similar to these marks.
- The Complainants have never licensed the Respondent to use their DOCLER marks and the Respondent has never conducted any business under the name DOCLER. The website to which the disputed domain name resolves is strictly a parking site with “no activity”. The Respondent therefore lacks rights or legitimate interests in the disputed domain name.
- The Docler group of companies and their marks are well established and well known all over the world. “The Respondent could, therefore, not ignore the existence of the DOCLER trademarks, domain names and Web Platform”. The Respondent’s failure to conduct any business under the “docler” name is “usual cybersquatter behavior” and clear evidence of bad faith.
The email correspondence between the parties, in which the Respondent offered to sell the disputed domain name to the Complainant for an amount clearly in excess of her out-of-pocket costs, indicates bad faith and an acknowledgment that the Respondent lacks rights or legitimate interests. B. Respondent
The Respondent did not reply to the Complainants’ contentions. However in the email correspondence referred to above the Respondent advanced several arguments against transfer. The Panel will take these into account in deciding this proceeding, to ensure that the Respondent is treated with equality and given a fair opportunity to present her case. See Rules, paragraph 10(b).
The Panel interprets the Respondent’s contentions as (1) her rights in “Docler” predate those of the Complainants, (2) given the parties’ different businesses, no confusion between them is likely, and (3) the Respondent did not register the disputed domain name in bad faith. 6. Discussion and Findings A. Proper Complainant
Complainants’ is not an ordinary request for consolidation. Consolidation of complainants is usually requested when parties that are not under common control – the teams making up a football league or business cooperative, for example – seek to proceed jointly against a respondent. WIPO Overview 2.0, paragraph 4.16. Usually an affiliated group of companies, i.e., entities under common control, selects one of its number, usually but not always the owner of the mark upon which the complaint is brought, to serve as complainant. Nevertheless, while the Panel sees no particular reason for joining several companies from the same controlled group, he sees no harm to the Respondent in allowing these three related companies to proceed together, nor any attempt at tactical advantage in consolidation. The Complainant’s request for consolidation is allowed. B. Standard of proof in a default case
The Respondent did not submit a Response to the Complaint. However, this default does not result in an automatic decision in the Complainant’s favor or an admission of the truth of the factual allegations in the Complaint. WIPO Overview 2.0, paragraph 4.6. Even in a default case “[t]he Policy requires the Complainant to prove each of the three elements. Policy, paragraph 4.” Western Research 3000, Inc. v. NEP Products, Inc.WIPO Case No. D2004-0755, emphasis in original. The Complainant bears the burden of proof under each element of paragraph 4(a) of the Policy. C. Identical or Confusingly Similar
WIPO Overview 2.0, paragraph 1.2 provides (cross-reference omitted):
“The first element of the UDRP serves essentially as a standing requirement. The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name.”
Under this standard the Complainants obviously succeed on this Policy head. Setting aside the generic Top-Level Domain (“gTLD”) “.com”, the disputed domain name differs from the Complainants’ marks only by the addition of the initial first letter (“i”). That letter does not obviate confusion, as the Complainants argue. D. Rights or Legitimate Interests
By demonstrating without contradiction that the Respondent has never been authorized to use the Complainants’ marks and that the Respondent has never been commonly known by the name “Docler”, the Complainants have made the necessary prima facie case that the Respondent lacks a right or legitimate interest in the disputed domain name. See WIPO Overview 2.0, paragraph 2.1. As the Complainants argue, non-use of the disputed domain name in such circumstances may suffice to succeed under paragraph 4(a)(ii).
However in the parties’ email exchanges the Respondent has suggested that it registered the disputed domain name well prior to the commencement of this dispute in connection with its speaker business, to protect against typosquatting on its own DOLCER trademark. In appropriate circumstances such an action, which the Panel will call defensive registration, has been held to be a legitimate interest. See Shoeby Franchise B.V. v. S, Inc. / SHOEBUY.COM,WIPO Case No. D2010-2142, involving a complaint by the holder of SHOEBY trademarks against the domain name registered by S, Inc.: “The Panel finds that the Respondent registered the Domain Name in 1999 as part of a policy of protecting itself against cybersquatters by the defensive registration of a large number of domain names similar to its own which might be used (if registered by others) to divert its customers or otherwise to damage its business.”
This case differs from the Shoeby case in several material respects. There the defensive registration occurred more than ten years before commencement of the UDRP proceeding; here the Respondent registered the disputed domain name in September 2015, approximately one year ago, and the Complainants objected reasonably promptly thereafter. The respondent in Shoeby actually used the domain name, redirecting Internet users to its own active website; here there has been no use. The Shoeby respondent asserted that it had registered defensively a swath of similar domain names; here there is evidence of only one. In Shoeby there was no evidence, and the respondent denied on oath, that it had been aware of the complainant when it registered the domain name. The Shoeby parties were competitors, not the case here, and involved in a dispute much broader than entitlement to a single domain. The Shoeby panel deemed this last fact an independent reason to deny the complaint. Each of these distinctions might be used to argue for either party in this case.
This Panel does not believe that a defensive registration or claim of one, even if proven will by itself always furnish a respondent with a legitimate interest. Such a bright line rule would be inconsistent with the fact-based approach of UDRP case law, and might invite mayhem. Among other possible problems, a claim of defensive registration could be fabricated after commencement of a dispute, just as unsupported claims of registration for a purpose unrelated to an existing trademark are sometimes fabricated, as in, e.g., CVS Pharmacy, Inc. v. Top Investments, LLLP,WIPO Case No. D2011-0379; Avon Products, Inc. v. Mary Ultes,WIPO Case No. D2009-0471; or as other defenses are concocted ex post, as in AMERICAN COLLEGE OF TRIAL LAWYERS v. John Givens,WIPO Case No. D2008-1813 (post-complaint commencement of litigation); British Sky Broadcasting Group Plc. and British Sky Broadcasting Limited v. Global Access,WIPO Case No. D2009-0817 (post-complaint trademark application filing).1 Better to leave this possible defense to the panel’s determination of the facts and circumstances of the particular case.
This Panel need not speculate further on this issue, however, for the Complaint fails under the third Policy head. Because of that, and because reaching a decision on this issue would necessarily involve considerable conjecture, the Panel makes no finding under paragraph 4(a)(ii).2 E. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four nonexclusive examples of evidence of bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
Clauses (ii) and (iii) do not apply in this case. The Respondents is not a competitor of the Complainants, ruling out clause (iii), and there is no allegation or proof that the Respondent has engaged in the pattern of conduct required by clause (ii).
In the body of the Complaint the Complainants proceed primarily under clause (iv). This ordinarily requires that the Complainant prove that the Respondent both actually knew of the Complainants and their marks (actual knowledge) and registered the disputed domain name to take advantage of the marks’ renown (targeting). The Complainants here plead actual knowledge based only upon the renown of their marks. The record though is less compelling on this issue. 3 According to the Complaint the Complainants actively commenced their web platform business only in 2014. Their marks and corporate names, though founded upon a coined word, are scarcely household names, and certainly not famous in the trademark sense in the Panel’s opinion. At best they are well known within a market niche, and there is nothing in the record to indicate that the Respondent operates within that niche or should be familiar with it. The Respondent is not said to be a domainer that might be under a duty to perform additional due diligence. The Panel found no other UDRP case involving the Respondent or the term “dolcer”.
Of targeting there is no evidence at all. There is no allegation or evidence that the Respondent at any time used the disputed domain name for any activity directed at the Complainants or the Complainants’ competitors.
For these reasons the Complainants have failed to demonstrate bad faith under paragraph 4(b)(iv).
The parties’ email correspondence raises the possibility that paragraph 4(a)(i) applies, and the Complainants submitted the post-complaint correspondence expressly as additional evidence of bad faith. Paragraph 4(a)(i) requires that the disputed domain name be “acquired […] primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant.” The evidence on whether that was true of registration of the disputed domain name is ambiguous. The Respondent did make an offer to sell not long after registration, but apparently only in response to the Complainants’ cease-and-desist letter. As this Panel reads the parties email correspondence the circumstances of this case are analogous to the cases in which a respondent set a figure in response to an inquiry from the markowner and do not appear to be part of a preconceived strategy to induce an offer to purchase. And unlike some cases in which “it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate”4, here a defensive registration appears at least equally likely. Without some evidence of targeting the Panel cannot conclude that the Respondent's registration of the disputed domain name was made primarily to hold it for ransom.
It is the Complainants that bear the burden of proof under this Policy head, and they have not shown by a preponderance of the evidence that the Respondent registered or used the disputed domain name in bad faith. 7. Decision
For the foregoing reasons, the Complaint is denied.
Richard G. Lyon
Sole Panelist
Date: December 15, 2016
1 The Respondent's claim of defensive registration does not appear to be concocted here, as the Respondent's DOLCER trademark predates this dispute by several years, but more evidence on the topic from the Respondent would surely have been helpful.
2 The Panel thus sidesteps the tantalizing question of whether and to what extent a registrant's undertaking under paragraph 2(b) of the Policy that “to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party” extends to defensive registrations.
3 The American doctrine of constructive notice, under which the public is presumed to be aware of registered trademarks, ordinarily does not apply in UDRP proceedings. WIPO Overview 2.0, paragraph 3.4.
4 Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
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