The Complainant is Color Image Apparel, Inc. of Commerce, California, United States of America (“United States”), represented by Thoits Law, United States.
The Respondent is Whois Privacy Services by DOMAINCA of Seongnam-si, Gyeonggi-do, Republic of Korea / unitedeurope consulting of Gwangju, Republic of Korea, represented by ESQ, P.C., United States. 2. The Domain Name and Registrar
The disputed domain name is registered with Gabia, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 30, 2017. On March 31, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 3, 2017, 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 Complainant on April 5, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Center also sent a notification to the Complainant, on the same day, informing that the Complaint was administratively deficient.
In said Complaint Deficiency Notification, the Center noted that “The Complaint does not describe why the domain name(s) should be considered as having been registered and used in bad faith by the Respondent as required by the Policy, Paragraph 4(a)(iii) and Rules, Paragraph 3(b)(ix)(3)”.
The Complainant filed an amended Complaint on April 9, 2017.
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 Respondent of the Complaint, and the proceedings commenced on April 13, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 3, 2017. The Response was filed with the Center on May 3, 2017.
The Center appointed Luca Barbero, Douglas M. Isenberg and The Hon Neil Brown Q.C. as panelists in this matter on June 6, 2017. The Panel finds that it was properly constituted. Each member of 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 United States apparel company specializing in yoga clothing and accessories.
The Complainant is the owner of the United States trademark No. 3,310,551 for ALO (figurative mark), registered on October 16, 2007, and claiming first use on May 23, 2006, for the following goods comprised in International class 25: “men’s and women’s clothing, namely, pants, shirts, vests, jackets, hooded jackets and sports bras”.
The Complainant operates a website at the domain name – registered on September 29, 2008 – through which it markets and distributes its apparel under the trademark ALO.
The disputed domain name was registered on October 22, 1995, and is currently pointed to a pay-per-click website displaying links relating to web security, web hosting and design, software, home electronics, TV and multimedia. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical and confusingly similar to a trademark in which it has rights. It relies on its registered trademark ALO and on the asserted well-known character of the trademark, that would have been acquired in light of the “longstanding use and promotion of the Complainant’s products and the resulting commercial success”, the media attention and awards received by the Complainant’s products.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name because:
- Rights or legitimate interests in a domain name based on a generic word or phrase can be found when the domain name is genuinely used or at least demonstrably intended for such use in connection with the relied-upon meaning;
- The Respondent has not used, or made any demonstrable preparations to use, the disputed domain name with a bona fide offering of goods or services;
- The Respondent has not been known by the disputed domain name, as an individual or business, owns no registered trademark rights in any variation of ALO, and there is no connection between the Respondent and the word “alo,” nor is the Respondent in any way connected to any relied-upon meaning of the word “alo” that could give rise to its maintaining a legitimate interest in the disputed domain name;
- The Respondent appears to have arbitrarily chosen the word “alo” and is not making any legitimate noncommercial or fair use of the disputed domain name;
- It is not immediately apparent to Internet users visiting the website at the disputed domain name that it is not operated by the Complainant, as there is no link alerting users looking for the Complainant’s website that they have entered the wrong website, or re-directing them to the Complainant’s website;
- The Respondent is tarnishing the Complainant’s trademark.
The Complainant argues that the Respondent registered and used the disputed domain name in bad faith because:
- Previous UDRP panels have held that bad faith can be satisfied where a domain name has been registered in good faith but subsequently has been used in bad faith. Reference is made to the following cases: City Views Limited v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE,WIPO Case No. D2009-0643; Phillip Securities Pte Ltd v. Yue Hoong Leong, ADNDRC Decision DE-0900226; and Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions,WIPO Case No. D2009-0786 (collectively, the “Octogen Cases”);
- Because of the ubiquitous nature of the trademark ALO internationally and on the Internet, it is implausible that the Respondent is unaware of the Complainant’s rights in the trademark ALO;
- The Respondent’s use of the disputed domain name to direct Internet users to various webpages displaying pay-per-clicks links that are likely to generate revenues amounts to the Respondent taking undue advantage of the Complainant’s trademark to generate profits. Therefore, the Complainant states that the Respondent has used the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the trademark ALO;
- The Respondent employed a privacy service to shield its identity. B. Respondent
The Respondent asserts that, even if the Panel accepts the validity of the Complainant’s trademark for the purposes of paragraph 4(a)(i) of the Policy, it cannot be argued that the Respondent acted in bad faith or targeted the Complainant.
The Respondent claims to have a legitimate interest in the disputed domain name and to have registered and used it in good faith for the following reasons:
- The Respondent acquired the disputed domain name on December 17, 2003, after its first owner allowed it to expire and the disputed domain name became available for purchase;
- The Respondent is based and operates in the Republic of Korea and had no knowledge of the Complainant at the time it purchased the disputed domain name, at least three years prior to the Complainant’s alleged first use of its design mark and before the Complainant came into existence; the Respondent became aware of the Complainant and its rights in the mark when it received the Complainant’s unsolicited offer to purchase the disputed domain name before the initiation of this proceeding;
- The Respondent acquired the disputed domain name as an investment because of its inherent value as a three-letter domain name with limitless acronym meanings, as shown by advanced Google search results for “alo”, which yielded 39,100,000 results;
- The Respondent registered additional domain names consisting in three-letter terms;
- The Respondent has not used the disputed domain name in connection with the goods marketed by the Complainant, and the lack of advertisements targeting goods or services offered by the Complainant suggests that the Respondent did not intend to confuse Internet users into thinking that the Complainant was somehow associated with the Respondent’s website;
- The long inaction of the Complainant, which took no action for 11 years (since its purported 2006 first trademark use), indicates that the Complainant did not truly believe that the Respondent was acting improperly;
- The Respondent did not register the disputed domain name with the intent to sell it to the Complainant, to disrupt the Complainant’s business, to confuse consumers seeking to find the Complainant’s website or to prevent the Complainant from owning a domain name incorporating its trademark.
The Respondent concludes that the Complaint should be denied and the Panel should consider an entry of Reverse Domain Name Hijacking since the Complainant knew that its claim had no basis and that it could not prove at least two of the three elements required to prevail when it filed the Complaint. 6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant contends that the disputed domain name is identical and confusingly similar to its trademark ALO relying on the above-mentioned figurative trademark registration in the United States.
As stated in prior UDRP panel decisions and recognized in paragraph 1.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), trademark registrations with design elements satisfy the requirement that the complainant show “rights in a mark” for further assessment as to confusing similarity, provided that said design elements do not constitute the dominant portion of the relevant mark such that they effectively overtake the textual elements in prominence, and that the textual elements are not disclaimed.
Having reviewed the Complainant’s trademark registration certificate, the Panel finds that the textual element “alo” is recognizable and prominent in the Complainant’s trademark, and is thus satisfied that the Complainant has established rights in a trademark according to paragraph 4(a)(i) of the Policy.
The Panel notes that the disputed domain name is constituted by the core of the Complainant’s trademark ALO with the addition of the generic Top-Level suffix “.com”, which is commonly disregarded for the purpose of assessing identity or confusing similarity.
Therefore, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to a registered trademark in which it has established rights as prescribed by paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant is required to make a prima facie case that the Respondent lacks rights or legitimate interests and, once such prima facie case is made, the burden of production shifts to the Respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110; Banco Itau S.A. v. Laercio Teixeira,WIPO Case No. D2007-0912; Wal-Mart Stores, Inc. v. WalMart Careers, Inc.,WIPO Case No. D2012-0285.
Based on the records, it is clear that there is no relation between the parties and that the Complainant has not authorized the Respondent to use its trademark ALO or the disputed domain name. There is also no evidence that the Respondent might be commonly known by the disputed domain name or might have acquired trademark rights in the term ALO.
However, it is relevant to note that (i) the disputed domain name was registered several years before the Complainant’s filing of its trademark in the United States; (ii) the disputed domain name is constituted by a three-letter term which, as such, has an inherent value, as it may have a number of meanings and is used extensively by third parties as an acronym or a generic term; (iii) the disputed domain name has been pointed to a website displaying generic sponsored links that made no reference to the Complainant, its trademark and products; and (iv) the Respondent has demonstrated that it has engaged in the registration of several domain names incorporating common three-letter combinations that it hosts with domain name parking services, thus showing that its registration and use of the disputed domain name is consistent with its business model.
In addition, the Complainant asserted that its trademark is well-known, that the Respondent could not be unaware of it and that the use of the disputed domain name is causing confusion with the Complainant’s trademark and products, but did not provide any evidence, beyond mere allegations, to substantiate such claims.
As indicated in paragraph 2.10.2 of the WIPO Overview 3.0, for a respondent to have rights or legitimate interests in a domain name comprising an acronym, the respondent’s evidence supporting its explanation for its registration and use of the domain name should indicate a credible and legitimate intent which does not capitalize on the reputation and goodwill inherent in the complainant’s mark.
In view of the circumstances of the case described above, as also detailed under the next section, the Panel finds that the Complainant has failed to demonstrate that the Respondent targeted the Complainant, and that the Respondent has provided reasonable explanation for its registration and use of the disputed domain name for a legitimate interest which does not capitalize on the reputation and goodwill inherent in the Complainant’s mark.
Therefore, the Panel finds that the Complainant has failed to demonstrate the Respondent’s lack of legitimate interest in the disputed domain name for the purposes of paragraph 4(c) of the Policy. C. Registered and Used in Bad Faith
As highlighted above, the disputed domain name was registered in 1995, and the Respondent stated to have acquired it when it was abandoned by its prior owner in 2003. The historical WhoIs records of the disputed domain name, submitted by the Respondent and not rebutted by the Complainant, support the Respondent’s allegation, as they show that the Respondent was listed as registrant of the disputed domain name at least as of December 17, 2003.
The Complainant’s trademark ALO was filed in the United States in 2006, and a statement on the Complainant’s website “www.” clarifies that the Complainant’s business under the trademark was started in 2007.
The Complainant acknowledges that its trademark ALO was registered after the registration of the disputed domain name but invokes the Octogen Cases to assert the Respondent’s bad faith. It also alleges that the Respondent could not have ignored its trademark given its well-known character and that the Respondent’s use of the disputed domain name constitutes bad faith according to paragraph 4(b)(iv) of the Policy.
The Panel has carefully reviewed the documents and statements submitted by the parties but found no element that could reasonably justify the Complainant’s claims, as the Complainant has failed to submit any evidence to demonstrate how the Respondent could have been aware of the Complainant’s trademark at any time, has not provided any evidence of the asserted well-known character of its trademark or any other element from which the Panel could infer that the Respondent registered the disputed domain name with the Complainant’s trademark in mind. Moreover, no evidence has been submitted of any use of the disputed domain name made by the Respondent in bad faith, as the disputed domain name has been pointed to a pay-per-click website showing generic links unrelated to the Complainant and its trademark.
Indeed, as indicated above, the circumstances of the case suggest that the Respondent registered and used the disputed domain name for its inherent value as a three-letter domain name, and not to trade off the Complainant’s trademark rights.
Therefore, the Panel finds that the Complainant has also failed to demonstrate that the Respondent registered and used the disputed domain name in bad faith. D. Reverse Domain Name Hijacking
Paragraph 15(e) of the UDRP Rules provides that, if “after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
The Rules define Reverse Domain Name Hijacking as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”
The Panel also bears in mind that the Complainant in this case is being represented and, therefore, it should be held to a higher standard (see paragraph 4.16 of the WIPO Overview 3.0).
In light of the circumstances of the case, the Panel makes a finding of Reverse Domain Name Hijacking since the Complainant ought to have known that it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the Complaint, as the disputed domain name was registered several years before the Complainant’s existence and there is no evidence of the Respondent’s use of the disputed domain name in connection with the Complainant’s trademark.
In addition, the Complainant mainly based its Complaint on allegations without submitting supporting evidence, and the Complainant appears to have actually known that it could not succeed as to the third element, as demonstrated by its failure to address the bad faith issue in its initial filing of the Complaint. 7. Decision
For the foregoing reasons, the Complaint is denied. The Panel also finds that the Complainant has engaged in Reverse Domain Name Hijacking.
Luca Barbero
Presiding Panelist
Douglas M. Isenberg
Panelist
The Hon Neil Brown Q.C.
Panelist
Date: June 19, 2017
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