Complainant is Dairymaster of Causeway, County Kerry, Ireland, represented by F. F. Gorman & Co., Ireland.
Respondent is Terry Duckworth of Wichita, Kansas, United States of America (“United States” or “US”), self-represented. 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 February 28, 2017. On February 28, 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 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 March 9, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 29, 2017. The Response was filed with the Center on March 29, 2017.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on April 5, 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
Complainant, Dairymaster, is a manufacturer of dairy equipment. Complainant manufactures and sells a product called “MOOMONITOR” which detects and monitors cow heat and health events through a wireless monitor.
Complaint is the holder of various trademarks, including the following:
- MOOMONITOR, European Union Word Mark, filed on May 21, 2013 and registered with OHIM (now EUIPO) on December 18, 2013 under No. 011832102 in classes 9, 10, 38 and 44;
- MOOMONITOR, US Word Mark, with priority date on May 21, 2013 and registered with the US Patent and Trademark Office on July 21, 2015 under No. 4775015 in classes 9 and 10;
- MOOMONITOR, Russian Federation Word Mark, with priority date on May 21, 2013 and registered with the Russian Patent and Trademark Office on January 30, 2015 under No. 533365 in classes 9 and 10.
Complainant has used the term “MOOMONITOR” for its product since before the trademark registration in 2013, with an earliest indication of use in 2007.
The Disputed Domain Name was registered by Respondent on November 23, 2009, and currently doesn’t revolve to an active webpage. 5. Parties’ Contentions A. Complainant
Complainant considers the Disputed Domain Name to be identical to trademarks in which it claims to have rights. Complainant claims to have used MOOMONITOR as a trademark before the registration of the Disputed Domain Name, since as early as 2007. 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. Finally, Complainant claims that the Disputed Domain Name was registered in bad faith, for the purpose of selling the Disputed Domain Name to Complainant or to prevent Complainant from registering the domain itself. Complainant also asserts that Respondent in the present proceedings is a fictitious character. B. Respondent
Respondent argues that while Complainant has only registered the relevant trademarks in 2013, its evidence showing use of the sign prior to Respondent’s registration of the Disputed Domain Name is not convincing and shows no effort to protect the sign. In addition, Respondent states that it has a legitimate interest in respect of the Disputed Domain Name, as it plans to use the domain for an ongoing project related to communication systems. Respondent argues that such a use would not cause confusion with Complainant’s trademarks used in relation to cow heat detection and health issues. Finally, Respondent denies to have registered the Disputed Domain Name in bad faith. Respondent puts forward that Complainant has provided no evidence to support the allegations that Respondent has registered the Disputed Domain Name solely for the purpose of selling it back to Complainant or any other entity, or to preclude Complainant from registering the domain name itself. Respondent also challenges Complainant’s statement of Respondent being a fictitious character, and provided a copy of his identity card. 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 and 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.
Thus for Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy, on the balance of probabilities that:
i. the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
iii. 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 are MOOMONITOR trademarks in which it has rights. The trademarks have been registered and used in various countries.
The Panel notes that the Disputed Domain Name incorporates Complainant’s MOOMONITOR trademark in its entirety. The Policy does not require that Complainant’s trademark be registered prior to the Disputed Domain Name (See VISIVA S.r.l. v. VISIVA di Rocca Sergio,WIPO Case No. D2001-1130; Digital Vision, Ltd. v. Advanced Chemill Systems,WIPO Case No. D2001-0827). The fact that Complainant owns the registered MOOMONITOR trademarks sufficiently satisfies the threshold requirement of having trademark rights. The location of protection and the date of registration are irrelevant for the finding of rights in a mark. However such factors may be relevant for determining whether Respondent has registered and used the Disputed Domain Name in bad faith under the third element of the UDRP, which will be discussed later (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), Section 1.1).
The Panel is of the opinion that the addition of generic Top Level Domain suffixes can be disregarded when comparing the similarities between a domain name and a trade mark (See Bialetti Industrie S.p.A. v. Onno Brantjes, Stichting Taxaceae,WIPO Case No. D2016-1450; Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck,WIPO Case No. D2014-0206; Zions Bancorporation v. Mohammed Akik Miah,WIPO Case No. D2014-0269). Therefore, the Panel considers the Disputed Domain Name to be identical to Complainant’s MOOMONITOR trademark.
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 well established under the Policy that it is sufficient for a complainant to make a prima facie showing that the respondent has no rights or legitimate interests in the disputed domain name in order to place the burden of production on the 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.
The Panel notes that Respondent has not apparently been commonly known by the Disputed Domain Name and that Respondent does not seem to have acquired trademark or service mark rights. Respondent’s use and registration of the Disputed Domain Name was not authorized by Complainant. There are no indications that a connection between Complainant and Respondent existed.
Respondent fails to provide evidence that it has rights or legitimate interests in the Disputed Domain Name in relation to assertions of an ongoing project of Respondent concerning communication systems. A sole reference to a product of Respondent that supposedly relates to this ongoing project is not sufficient to demonstrate a legitimate interest in the Disputed Domain Name. In fact, Respondent is currently not making any use of the Disputed Domain Name, and has never done so during the seven years the registration has been maintained.
Therefore, the Panel finds that Complainant has established that Respondent has no rights or legitimate interests in the Disputed Domain Name.
In view of the foregoing, the Panel considers that Complainant has also made out the second of the three elements that it must establish. C. Registered and Used in Bad Faith
Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (See, e.g.,Telstra Corporation Limited v. Nuclear Marshmallow,WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052).
In the instant case, Complainant provides no evidence to support its allegations that Respondent has registered the Disputed Domain Name for the purpose of selling the domain name registration to Complainant or to prevent Complainant from registering the domain name itself. Complainant has put these assertions forward without any supporting argumentation or evidence. Such a practice cannot be accepted, as it is Complainant which carries the burden of proof in demonstrating bad faith by Respondent in the registration and use of the Disputed Domain Name, and not the other way around.
Further, Complainant also failed to establish that Respondent must have had knowledge of Complainant’s rights in its MOOMONITOR trademark at the moment Respondent registered the Disputed Domain Name. The fact that Complainant provided limited evidence in the form of a screenshot from the Internet Archive showing the use of MOOMONITOR for its product on its website and in certain articles is not by itself sufficient to prove that Respondent must have had knowledge of Complainant’s use of the mark at the time of registration of the Disputed Domain Name. As expressed in Section 1.7 of the WIPO Overview 2.0, to rely on unregistered rights to show Respondent’s bad faith, Complainant would need to show e.g., that “the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition.” Since the Disputed Domain Name was registered by Respondent before the establishment of Complainant’s relied-upon unregistered trademark rights and Complainant fails to provide evidence showing that it had unregistered trademark rights in 2009, Respondent could not have contemplated Complainant’s then non-existing right at the time of registration (See Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827; Meeza QSTP-LLC v. Torsten Frank / medisite Systemhaus GmbH,WIPO Case No. D2009-0943).
Accordingly, this Panel finds that Complainant has not shown, on the balance of probabilities, that the Disputed Domain Name was registered and is being used in bad faith.
The Panel notes in closing that this decision is based on the limited record before the panel, and does not foreclose the parties’ court options where discovery tools may assist resolution of their dispute – particularly as to the question of Respondent’s possible knowledge of Complainant’s reputation at the time the Dispute Domain Name was registered. 7. Decision
For the foregoing reasons, the Complaint is denied.
Flip Jan Claude Petillion
Sole Panelist
Date: April 19, 2017
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