The Complainants are Quintaz B.V. and Hoooked B.V., both of The Hague, the Netherlands, represented by The Legal Group, the Netherlands.
The Respondents are Whoisguard Protected, Whoisguard, Inc. of Panama, Panama / Terry Lee of San Jose, California, United States of America ("United States"), self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 6, 2016. On December 7, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 8, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on December 12, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on December 12, 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 Respondents of the Complaint, and the proceedings commenced on December 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 10, 2017. The Response was filed with the Center on December 22, 2016.
The Center appointed Alistair Payne as the sole panelist in this matter on December 29, 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 Complainants operate a business re-cycling textiles into yarn from its own premises in Portugal. Their products are known as "Hoooked Zpagetti" and "Hoooked Fuzzili" and have been distributed worldwide through needlecraft distributors, department stores, hobby chains and independent stores since 2008.
The Complainants own or license various trade mark registrations incorporating the HOOOKED mark, including in particular European Union trade mark registration number 015112022 for the word mark HOOOKED which was filed on February 16, 2016 and registered on July 15, 2016. The earliest of the Complainants' other trade mark registrations (combined logo and word mark registrations) was filed in 2009. The Complainants also own various domain names incorporating the HOOOKED mark including that was registered in October 2008.
The disputed domain name was initially registered on October 4, 2007. A WhoIs search on September 5, 2016 indicated that the disputed domain name was registered to another registrant at that time but as at December 6, 2016, the registrant was listed as the Whoisguard Protected privacy service in Panama. Subsequently upon verification on December 8, 2016 it became apparent that the underlying registrant was the Respondent, Mr. Terry Lee, who has submitted a response to this Complaint. 5. Parties' Contentions A. Complainants
The Complainants submit that they own or are the licensee of registered trade mark rights for the HOOOKED mark as set out above and that the disputed domain name is identical or confusingly similar to these registered trade marks.
The Complainants submit that that the Respondents are not making a bona fide use of the disputed domain name and are not using it to provide goods or service. Further, say the Complainants, the Respondents do not operate a website at the disputed domain name and does not own any trade mark rights in the HOOOKED mark.
The Complainants note that their legal representatives attempted to contact the previous owner of the disputed domain name on various occasions with no success and that subsequently it appears that the disputed domain name was transferred to a new owner, being the Respondents. This say the Complainants amounts to the Respondents trying to prevent the Complainants from reflecting their trade mark in a corresponding domain name by transferring the domain name to an anonymous or new owner. In addition the Complainants assert that the Respondents acquired the disputed domain name for the purpose of selling the disputed domain name to the Complainants, or of disrupting the Complainants' business. B. Respondent
The Respondent Terry Lee submits that he had a plan for the disputed domain name to be used for a portal for a gaming website. Although he has not developed this website he relies on the decision in Nanosonics Limited v. An Nguyen-Dinh, Vermon S.A.,WIPO Case No. D2015-0681.
In essence the Respondent says that the disputed domain name could not have been registered in bad faith as it was registered before the Complainants started their business in 2008. He says that the Respondent could not have known about the Complainants' business beforehand and then registered it in 2007 for the purpose of selling it back to the Complainants, or in order to disrupt a business that did not exist at the time of registration of the disputed domain name. The Respondent also submits that there is no evidence as to why the Respondent, based in the United States, should have been aware of the Complainants, based in the Netherlands.
The Respondent seeks a finding of reverse domain hijacking due to the Complainants' trade mark being registered five years after the registration of the disputed domain name. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainants own or are the licensee of European Union word mark registration number 015112022 for the word mark HOOOKED which was filed on February 16, 2016. The disputed domain name wholly incorporates the HOOOKED mark without any distinguishing element before the Top-Level Domain root. The Panel therefore finds that the disputed domain name is identical to the Complainants' HOOOKED trade mark and that the Complaint succeeds under the first element of the Policy. B. Rights or Legitimate Interests
The Complainants have submitted that that the Respondents are not making a bona fide use of the disputed domain name and are not using it to provide goods or services. In addition the Complainants note that the Respondents do not operate a website at the disputed domain name and do not own any trade mark rights in the HOOOKED mark. It is implicit in the Complainants' case that they have not authorised or permitted the Respondents to use the HOOOKED mark in the disputed domain name.
The Panel finds that the Complainants have made out a prima facie case that the Respondents have no rights or legitimate interests in the disputed domain name, however for the reasons set out below under Section 6.C, the original registrant cannot be said to have had no rights or legitimate interests in the disputed domain name at the date of original registration. Neither as set out below does the Panel consider that there is sufficient evidence on the record to support a case that the Respondents had no rights or legitimate interests in the disputed domain name at the date of its subsequent transfer. Accordingly, the Panel finds that the Complaint does not succeed under this element of the Policy. C. Registered and Used in Bad Faith
By the Complainants' own admission its business under the HOOOKED mark was only commenced in 2008 and its ".nl" domain name was registered in October 2008. The disputed domain name was however registered approximately one year earlier on October 4, 2007. Therefore the disputed domain name cannot have been initially registered in bad faith as there is no evidence to suggest that the Respondents knew of the Complainants, or of their business plans, at that time.
It appears that the original owner of the disputed domain name transferred it to one of the current Respondents, Mr. Terry Lee at some point between September 5 and December 6, 2016, being the date on which the Complainants' search revealed the registrant to be listed as the Whoisguard Protected privacy service in Panama. Subsequently, upon verification on December 8, 2016 it became apparent that the real registrant was the Respondent Mr. Terry Lee, who submitted the Response.
Based on this timeline of events it seems to the Panel more likely than not that the disputed domain name was transferred to Mr. Lee prior to the filing of this Complaint on December 6, 2016 and that he used the Whoisguard privacy service to hold the registration, subsequently the underlying registrant Terry Lee was revealed by the Registrar on receiving the Center's request for verification. Although the disputed domain name appears to have been transferred by the original registrant to Mr. Lee after initial contact made by the Complainants, the Complainants have not annexed their original correspondence and the only evidence provided is of its annexed written query of the relevant registrar concerning verification of the original owner's contact details.
In circumstances that the original registration pre-dates the Complainants' business, that neither the original registrant nor the Respondents have used the disputed domain name for any purpose, that there is no proof that the original registrant ever received the Complainants' correspondence and that the Complainants' written correspondence has not been submitted in evidence, the Panel is not prepared to draw an inference that the transfer of the disputed domain name from the original registrant to the Respondents amounts to cyber flying in bad faith. Neither in the Panel's view does the evidence on record and the use of a privacy service support necessarily an inference that the Respondents have tried to prevent the Complainants from reflecting their trade mark in a corresponding domain name by transferring the domain name to an anonymous or new owner, or that the Respondents acquired the disputed domain name for the purpose of selling the disputed domain name to the Complainants, or of disrupting the Complainants' business.
The fact remains that originally the disputed domain name was registered before the Complainants' had commenced their business under the HOOOKED mark and before they owned any registered trade mark rights. In addition the word "hooked" is a commonly used English term which, together with variations thereof, could very easily be seen to be desirable and which could be used for numerous purposes, including for a portal for a gaming website as suggested by Mr. Lee, one of the Respondents. Further none of the registrants have to date used the disputed domain name for any active purpose at all and in the Panel's view there is insufficient evidence in this case to make a finding of passive holding in bad faith. The Panel notes also that there is no evidence of any of the registrants of the disputed domain name ever having made an attempt to sell the disputed domain name to the Complainants or to a third party at a profit. The Panel concludes that these circumstances cannot give rise to a finding of original registration in bad faith and in this regard notes a similar finding albeit in slightly different circumstances in Nanosonics Limited v. An Nguyen-Dinh, Vermon S.A., supra.
Evidence to support an inference that the subsequent transfer of the disputed domain name from the original registrant to the Respondents was made in bad faith is limited at best and the mere fact of use of a privacy service is not necessarily indicative of bad faith. Noting the lack of apparent targeting of the Complainants the Panel finds that this case fails to reach the necessary threshold to support an inference of bad faith and in these circumstances does not merit a finding of reverse domain name hijacking as sought by the Respondents. 7. Decision
For the foregoing reasons, the Complaint is denied.
Alistair Payne
Sole Panelist
Date: January 9, 2017
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