The Complainant is Delta Risk LLC of San Antonio, Texas, United States of America ("United States") represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States.
The Respondent is On behalf of / c/o EIS AG, Whois Privacy Services of Zug, Switzerland. 2. The Domain Name and Registrar
The disputed domain name is registered with CSL Computer Service Langenbach GmbH dba J (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 24, 2017. On February 24, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 28, 2017, 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 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 March 1, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 21, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 22, 2017.
The Center appointed Antony Gold as the sole panelist in this matter on March 28, 2017. 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 Complainant is a global provider of cyber security services to both commercial entities and government clients. It is the owner of the trade mark DELTA RISK, registered on October 26, 2010 in the United States as United States Patent and Trademark Office ("USPTO") Reg. No. 3866854 for use in various services, primarily connected with consultancy services in the fields of risk management and cyber security. It has used the trade mark in commerce since at least 2007.
The disputed domain name was first created on February 22, 2003 since which time there have been a number of different registrants. The disputed domain name does not presently point to an active website.
On or about November 15, 2016 the disputed domain name was transferred to the privacy service which is the Respondent to these proceedings. 5. Parties' Contentions A. Complainant
The Complainant provides information about its registered trade mark for DELTA RISK, the details of which are set out above.
For the purpose of considering whether the disputed domain name is identical or confusingly similar to its trade mark the Complainant says that it is established practice that the applicable top-level suffix in the disputed domain name, ".com", should be disregarded as it is a technical requirement of registration. Accordingly, the Complainant says that the only difference between its trade mark and the disputed domain name is the absence of a space between the two words which comprise the disputed domain name. This difference arises only because the technical constraints of the domain name system are such that domain names cannot include spaces between words. Moreover, the two words which comprise the disputed domain name are readily identifiable even without a space between them. For these reasons, the Complainant says that the disputed domain name is confusingly similar to its DELTA RISK trade mark.
The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name. It says that it has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use its trade mark. The Complainant says that earlier decisions of UDRP panels have found that the absence of a commercial relationship between a complainant and a respondent can be suggestive of a lack of legitimate rights or interests on the part of a respondent.
The Complainant adds that by not using the disputed domain name in connection with an active website the Respondent has not used it "in connection with a bona fide offering of goods and services" and therefore cannot establish rights or legitimate interests pursuant to paragraph 4(c)(i) of the Policy. It draws attention to decisions of earlier UDRP panels in which it has been said that passively holding a domain name does not constitute a bona fide offering of goods and services; see, for example, Philip Morris USA Inc. v. Gabriel Hall,WIPO Case No. D2015-1779.
The Complainant says also that the Respondent has never been commonly known by the disputed domain name and has never acquired any trade mark or service rights in it. It therefore cannot establish rights or legitimate interests pursuant to paragraph 4(c)(ii) of the Policy. Moreover, as it is not making a legitimate noncommercial or fair use of the disputed domain name without any intent for commercial gain to misleadingly divert consumers or tarnish the trade mark and therefore the Respondent has no rights or legitimate interests pursuant to paragraph 4(c)(iii) of the Policy.
Finally the Complainant says that the disputed domain name was registered and used in bad faith. In this respect the Complainant draws attention to an admission in an email sent by the then registrant of the disputed domain name in response to an email sent on behalf of the Complainant's advisors that "my ownership of the domain does infringe upon the Delta Risk trade mark".
The Complainant says also that where a disputed domain name is transferred, the relevant date for the purpose of assessing bad faith is the "time the disputed domain name was acquired" by the Respondent; see the panel's decision in Amicus Trade AB v. Dharshinee Naidu,WIPO Case No. D2014-0418. Accordingly, the Complainant says that the material date for determining whether the registration of the disputed domain name was in bad faith is November 15, 2016, as at that time, the Complainant's trade mark had been registered for more than six years and DELTA RISK had been used by the Complainant as a trading style for over nine years.
The Complainant draws attention to paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") which explains that; "[T]he apparent lack of so called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa."
The Complainant says that, as its DELTA RISK trade mark is widely known as a consequence of the scale and geographic spread of its activities, it is likely that the Respondent was aware of its trade mark as at the as date of registration. The Complainant raises other issues supporting bad faith registration and use including an assertion that the Respondent was clearly aware of the Complainant's name and trade mark at the time of registration of the disputed domain name and that this is suggestive of opportunistic bad faith similar to that found in E. Remy Martin & Co v. Giammario Villa,WIPO Case No. D2012-0735. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Dealing, first, with the Respondent's failure to serve a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has established that it has rights in the trade mark DELTA RISK. Its United States trade mark, registration number 3866854 is sufficient evidence of this.
When comparing a complainant's trade mark with a disputed domain name for the purpose of considering similarity or identicality, it is established practice to disregard the generic Top-Level- Domain ("gTLD") (".com" in this instance). Moreover, as the technical limitations of the Domain Name System do not permit spaces between words within a domain name, these are also disregarded.
For these reasons, the Panel finds that the disputed domain name is either identical or, at least, confusingly similar to a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests
The Policy sets out at paragraph 4(c) examples of circumstances, without limitation, by which a respondent may demonstrate rights or legitimate interests in a disputed domain name. These are set out in the summary of the Complainant's submissions.
How these provisions are usually applied in practice is explained in WIPO Overview 2.0. This says that the consensus view of panelists is that, "whilst the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP".
The Panel accepts the Complainant's assertions that the Complainant has never in any way authorized the Respondent to register and/or use the disputed domain name. Nor is the Respondent making use of the disputed domain name in connection with a bona fide offering of goods and services; as the panel found in Philip Morris USA Inc. v. Gabriel Hall, supra, passively holding a domain name does not constitute a bona fide offering of goods and services. Moreover, simply registering the disputed domain name and not pointing it to an active website does not fall within the category of use set out at 4(c)(iii) of the Policy; see Verizon Trademark Services LLC v. Jeff Goodman / Goody Tickets LLC,WIPO Case No. D2015-1750.
The Complainant having made out a prima facie case that the Respondent has no rights or legitimate interest in the disputed domain name, the burden of proof shifts to the Respondent to show that it does. As the Respondent has not sought to rebut any of the Complainant's assertions, it has not discharged this burden. The Panel accordingly finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Panel does not consider that the seeming admission by the (then) registrant of the disputed domain name in October 2016 can reliably be attributed to the Respondent, having regard to the fact that there was a change of registrant on or about November 15, 2016.
During the period that the Respondent has been the registrant of the disputed domain name, it has been inactive. The Panel endorses the approach towards inactive domain names as set out at paragraph 3.2 of the WIPO Overview 2.0. In particular, the Complainant's trade mark is at least relatively well-known, the Respondent has made no attempt to justify its registration of the disputed domain name, whether by responding to the approaches made by the Complainant's advisors (save to the extent that the admission referenced above might be attributable to it) nor by filing a response to the Complaint. Moreover, since those approaches were instigated, the underlying registrant has chosen to conceal its true identity through use of the Respondent's privacy service. Not all of the grounds for finding bad faith registration and use which were set out in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 are evident from the facts. In particular, it is not strictly the position that "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, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant's rights under trademark law". But it is the case that there is no evidence whatsoever that suggests that the Respondent has had any good faith use in mind for the disputed domain name and all the available evidence is supportive of a finding of bad faith registration and use.
For these reasons, the Panel finds on balance that the disputed domain name was registered and used in bad faith. Accordingly, the Complainant's additional submissions on bad faith registration and use in the Complaint do not require consideration. 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 disputed domain name be transferred to the Complainant.
Antony Gold
Sole Panelist
Date: April 11, 2017
Full & Egal Universal Law Academy