The Complainant is Everphone GmbH of Berlin, Germany, represented by Anwaltskanzlei Dr. Ricke, Germany.
The Respondent is Privacydotlink Customer 2772294 of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland / Kwangpyo Kim, Mediablue Inc of Gwangsangu, Republic of Korea, represented by ESQ PC, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Uniregistrar Corp (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 6, 2017. On April 7, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 10, 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 10, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 11, 2017.
The Center verified that the Complaint together with the amended Complaint (hereinafter referred both together as 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 April 26, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 16, 2017. On May 10, 2017, the Respondent requested an extension of the Response due date. In accordance with the Rules, paragraph 5(b), the Response due date was extended to May 20, 2017. The Response was filed with the Center on May 20, 2017.
The Center appointed Adam Taylor, Debrett G. Lyons and The Hon Neil Brown Q.C. as panelists ("the Panel") in this matter on June 19, 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 was founded in 2016. It provides rental smartphones to replace damaged ones.
The Complainant owns German trade mark no. 302016214846 for the word "everphone", registered with effect from May 20, 2016, in classes 9, 35, 38 and 42.
On January 9, 2017, the Complainant received an email from "Chapdomains" stating as follows:
"I'm just writing in to see if you'd like to own "everphone .com", since it is similar to the one that you currently have.
I shall provide you verification of ownership before proceeding as well. I shall not bother you again unless you want to discuss further."
On January 15, 2017 the Respondent won the disputed domain name in an expired domain name auction. The disputed domain name had previously been owned by a business called "Everphone Computer".
On January 16, 2017, the Complainant received the following email from "Regystro Domains":
"The domain name is listed at $197 it's part of a clients [sic] portfolio and we are handling the sale. There are no hidden costs and the renewal fees are around $9/year. You can transfer it out to any registrar you wish. If you are interested, please let us know and we will have the client transfer the domain name over to us, and we will put up our sales page on the domain itself and contact you in a few days when it's ready."
On the same day the Complainant responded asking for more information about the sender and for proof that it was in contact with the owner of the disputed domain name. The Complainant added that its own attempts to contact the owner had been unsuccessful.
There then followed a further exchange of emails on the same day in the course of which Regystryo explained that it would contact the Complainant "as soon as the client transfers the domain name over to our account and we have it ready for purchase and delivery" and that "[p]eople list their portfolios with us and we can not disclose any personal information about any of or [sic] clients it is against our privacy policy".
Still not satisfied, the Complainant observed that the WhoIs for the disputed domain name was "completely wrong" and asked Regystryo to modify the homepage to prove that it owned the disputed domain name. In response, Regystryo reiterated that the client would transfer the disputed domain name to its account, that it was "completely aware" of the WhoIs, that an escrow invitation would be sent when the disputed domain name was in its account and that its sales page would be up on the domain name in a few days' time.
In the course of the above exchange on January 16, 2017, the Complainant received a formal email from Regystryo confirming that it had received the Complainant's offer of $197 for the disputed domain name and that it would contact the Complainant "as soon as your domain is ready for purchase".
By January 17, 2017, the Respondent was shown as the registrant in the WhoIs for the disputed domain name.
On January 19, 2017, Uniregistry, on behalf of the Respondent, responded to a purchase enquiry by the Complainant stating: "The lowest we will go at this point is $68,500.00 USD based on a quick completion."
As of January 31, 2017, the disputed domain name resolved to a landing page with "phone"-related subject headings (e.g. "Free Cell Phone Call" and "Cell Phone With") plus a notice stating that the disputed domain name has recently been listed in the marketplace at D and inviting enquiries. 5. Parties' Contentions A. Complainant
A summary of the Complainant's contentions follows:
The disputed domain name is identical to the Complainant's trade mark, which is not a generic or dictionary term.
The Respondent has never used the disputed domain name.
The Respondent acquired the disputed domain name primarily for sale to the Complainant. The Respondent asked the Complainant for USD 68,500.
The Complainant's trade mark application was published worldwide on the German Patent and Trade Mark Office on July 22, 2016.
The Complainant is a "very dynamic German startup". It has become widely known in a short period and is expanding its services worldwide.
The Respondent acquired the disputed domain name on December 9, 2016.
To hide its identity while trying to sell the disputed domain name to the Complainant, the Respondent initially instructed domain brokers to undertake this work.
The correspondence with Regystro ended because, in the meantime, the Respondent had installed a parking page at the disputed domain name indicating that the disputed domain name was for sale. The Respondent expected to draw the Complainant's attention to this website.
The disputed domain name was moved to a new registrar on March 26, 2017, using a privacy service but the parking page remained unchanged.
As of March 28, 2017, the "Cell Phone With" link on the parking page brought up a list of sponsored links to direct competitors of the Complainant including and . The Respondent is responsible for these links, whether or not it added them to the website.
The Respondent owns some domains that are presumably based on trade mark infringement such as , , , , , , , . It has been involved in the following UDRP case: Greencraft LLC v. Kirn, James / Mediablue, NAF Claim No. 1636762. B. Respondent
A summary of the Respondent's contentions follows:
The Respondent acquired the disputed domain name because it consists of a valuable combination of two dictionary words in which it believed no party could claim exclusive rights.
The Respondent, located in the Republic of Korea, had no knowledge of the Complainant and did not register the disputed domain name with the Complainant or its trade mark in mind. There is no evidence to the contrary.
The Complainant has provided no evidence that its "brand" in Germany had or has even today achieved widespread notoriety or fame to indicate that it would be known by Respondent or anyone outside of Germany.
The UDRP does not require a respondent to conduct trade mark searches in every country of the world.
Because the Respondent purchased the disputed domain name at auction after the prior owner allowed the disputed domain name to expire, it was reasonable for the Respondent to infer that there would be no third-party rights or challenges to this common word domain name.
The Respondent has been registering common combined word domain names since 2002. The Respondent has registered other domain names including the words "phone" or "ever" including: , , , . Such pattern of descriptive domain name registrations supports an inference that the disputed domain name was not registered with intent to target a trade mark.
The Respondent hosts his domain names with parking services which automatically generate links based on the provider's search algorithm as well as generic links. These are related to the common descriptive meaning of words contained in the disputed domain name, in this case: "phone". The Respondent has therefore demonstrated rights and legitimate interests in that the disputed domain name is being used to in connection with its descriptive meaning.
The appearance of links created by a third party domain monetization service does not constitute bad faith on the part of the Respondent. The Complainant's claim is misleading as it created searches that generated results relating to the Complainant. This required an active manipulation on the part of the Complainant.
The Complainant has conflated the Respondent with two independent "bad actors" who tried to sell the disputed domain name before the disputed domain name was auctioned and prior to the Respondent's acquisition. These were "pirate brokers", engaging in "front running", whereby they offered to sell the disputed domain name to the Complainant in the hope of thereafter acquiring the disputed domain name in auction and selling it on to the Complainant. They did not act with the Respondent's authority.
The Complainant submitted an unsolicited offer to buy the disputed domain name. Contrary to the allegations in the Complaint, the fact that the Respondent responded to the Complainant's approach to purchase the disputed domain name was not improper.
The Respondent has not registered or used the disputed domain name in bad faith, for the reasons given above.
The Respondent is not a "cybersquatter". There are at least eight UDRP decisions in the Respondent's favour. This case must be decided on its own merits.
The Complainant is guilty of reverse domain name hijacking. The Complainant knew before filing that there was no basis for the Complaint. The Complainant knew or should have known that the Respondent did not own the disputed domain name until January 17, 2017, and that it did not own the disputed domain name in 2016, as the Complainant claimed. It has a duty to properly consider and present the facts. Panels have found reverse domain name hijacking in circumstances where, as here, a respondent's use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has rights in the mark "everphone" by virtue of its German registered trade mark for that term.
Disregarding the domain name generic Top-Level Domain ("gTLD"), the disputed domain name is identical to the Complainant's trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
It is unnecessary to consider this element in light of the Panel's conclusion below under the third element. C. Registered and Used in Bad Faith
For the following reasons, the Panel considers that, based on the evidence before it and on the balance of probabilities, the Respondent did not register the disputed domain name with the Complainant or its trade mark in mind.
The name "everphone" is a combination of two dictionary terms and not so distinctive that, of itself, it creates an inference that it must have been registered with the Complainant's trade mark in mind. Indeed, the disputed domain name was previously owned by a business called "Everphone Computer", showing that the Complainant is not the exclusive user of the term "Everphone".
The Complainant, which only started trading in 2016, has provided virtually no evidence in support of its claim to have become widely known in Germany in a short period, still less internationally.
The Respondent, located in the Republic of Korea, cannot be expected to have become aware of Complainant's German trade mark application, simply on the basis of its publication on the website of the German Patent and Trade Mark Office.
The disputed domain name fits broadly within a pattern of two-word domain names owned by the Respondent which include the terms "phone" or "ever", namely: , , , .
The Complainant asserts that the Respondent primarily acquired the disputed domain name for sale to the Complainant. However, the proposed price of USD 68,500 appears to have been put forward by the Respondent's broker in response to an enquiry by the Complainant rather than being an unsolicited offer of sale to the Complainant, which might have indicated that sale to the Complainant was the Respondent's primary purpose.
Further, the Panel does not find that either of the two entities which previously approached the Complainant with a view to sale of the disputed domain name (see section 4 above) were acting with the Respondent's authority.
The Respondent has provided evidence which shows that it won the disputed domain name in an expired domain name auction on January 15, 2017.
The first approach, by Chapdomains, took place on January 9, 2017, before the Respondent had acquired the disputed domain name. Indeed, Chapdomains did not specifically claim to act on behalf of the owner of the disputed domain name.
The second approach, by Regystro, occurred on January 16, 2017, the day after the auction. While it is conceivable that the Respondent quickly authorised Regystryo to act on its behalf following the auction, the Panel's finds from the correspondence that Regystro was acting on its own initiative. In particular the Complainant, clearly sceptical about Regystro's bona fides, pressed for proof of Regystro's authority. The Complainant asked Regystro to provide evidence that it was in contact with the owner. As an alternative, the Complainant sought a change to the WhoIs or website at the disputed domain name to show that Regystro had access to the disputed domain name. Regystro did none of these things, merely claiming that it would arrange for its client to transfer the domain name "over to us" within a few days, following which the transfer process could commence and that a "sales page" would then be launched at the disputed domain name.
If Regystro did truly act as agent for the owner of the disputed domain name, it seems unlikely that it would have been so evasive towards the Complainant and that everything would have had to hinge on it first transferring the disputed domain name into its own account. The Panel also notes the stark contrast between the Regystryo price of USD 197 and the asking price of USD 68,500, later put forward by Uniregistry, the broker which the Respondent acknowledges was acting on its behalf.
Accordingly, the Panel accepts the Respondent's assertion that both Chapdomains and Regystro were engaged in "front running", i.e. that they had become aware of the auction and were speculating with a view to acquiring and quickly selling on the disputed domain name if they managed to do a deal with the Complainant. It follows that whatever action they took cannot be ascribed to the Respondent.
The Complainant further alleges that the Respondent's parking page at the disputed domain name included links to websites of the Complainant's "direct competitors". Even if that is true, the Complainant has not in any case satisfied the Panel that those links were based on trade mark rather than descriptive value. The difficulty for the Complainant is that the disputed domain name includes the word "phone" and so, as the Respondent says, it is not surprising that the algorithm used on the page generated sponsored links for "phone" – related businesses – potentially including the Complainant's competitors.
The Complainant also relies on a UDRP decision which found against the Respondent: Greencraft LLC v. Kirn, James / Mediablue, NAF Claim No. 1636762. The Respondent counters with a list of eight decisions in the Respondent's favour. In the context of a large domain name portfolio and eight pro-Respondent UDRP decisions, the Panel does not consider that the one adverse UDRP decision should be treated as an indicator of bad faith in the different circumstances of this case.
Nor does the Panel propose to place any reliance on the eight domain names owned by the Respondent which the Complainant says "are presumably based on trade mark infringement" in the absence of any evidence from the Complainant demonstrating that they constitute a likely pattern of bad faith registrations. None of the domain names reflect any trade marks known to the Panel.
For the above reasons, the Panel concludes that the Complainant has failed to prove registration and use of the domain name in bad faith and so has failed to establish the third element of paragraph 4(a) of the Policy. D. Reverse Domain Name Hijacking ("RDNH")
The Respondent seeks a finding of RDNH on the basis that the Complainant knew or should have known that there was no basis for the Complaint.
Paragraph 15(e) of the 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". RDNH is defined under the Rules as "using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name".
The Panel declines to make a finding of RDNH in this case. While the Complainant has failed, it has not done so by large margin. For example, it was not unreasonable for the Complainant to rely on the two approaches to sell it the disputed domain name in January 2017. Had the Panel accepted that either of those entities was acting with the authority of the Respondent (and one of them claimed that the disputed domain name was owned by its "client"), then the outcome of this case may have been different. Whether or not they were authorised was purely within the knowledge of the Respondent and not something the Complainant could be expected to know. 7. Decision
For the foregoing reasons, the Complaint is denied.
Adam Taylor
Presiding Panelist
Debrett G. Lyons
Panelist
The Hon Neil Brown Q.C.
Panelist
Date: July 3, 2017
Full & Egal Universal Law Academy