Complainant is X-GIL Group and X-GIL Company of Nimes, France, represented by Charlotte Galichet, France.
Respondent is Ryan Yeh of New Taipei, Taiwan Province of China. 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 April 30, 2017. On May 1, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 2, 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 May 8, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 28, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 29, 2017.
The Center appointed Jordan S. Weinstein as the sole panelist in this matter on June 12, 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 European Union Trademark (“EUTM”) number 016140535 for the trademark X-GIL was registered on April 7, 2017 and filed on December 7, 2016. The registration covers a variety of goods and services in International Classes 7, 9, 20, 38, 42 and 43.
The Disputed Domain Name was registered the same day as Complainant’s trademark application was filed, namely December 7, 2016. 5. Parties’ Contentions A. Complainant
Complainant asserts that it is a company specialized in IT solutions for institutional mass catering. It was organized under the tradename GIL from 2000 until December 1, 2016. On October 25, 2016, Complainant’s holding group X-GIL GROUP was established. Complainant has used the domain name since March 2000 and registered the domain name on October 31, 2016. Complainant filed an application to register the EUTM X-GIL on December 7, 2016. Later that evening, Respondent registered the Disputed Domain Name, which Complainant learned when its President attempted to register the name.
Complainant attempted to contact the Registrant by email but received no answer.
Complainant asserts that the Disputed Domain Name is identical to Complainant’s registered trademark X‑GIL in which Complainant has rights. Complainant also asserts that the Disputed Domain Name is confusingly similar to Complainant’s three unregistered trademarks or service marks in which the Complainant has rights. These are:
GIL, the tradename of Complainant’s GIL Company from 1980 through December 2016;
X-GIL GROUP, registered as a company name and as a domain name since October 2016; and
X-GIL COMPANY, registered as a company name since December 2016 and as a domain name since October 2016.
Complainant asserts that the registration of the Disputed Domain Name constitutes an infringement of all three unregistered trademarks.
Complainant asserts that Respondent has no rights or legitimate interest in respect of the domain name because Respondent never used the name “X-GIL” before registering it and is unable to demonstrate preparations to use it. Complainant asserts that the Disputed Domain Name was for sale in January 2016, proving that Respondent had no intention to use the name in connection with a bona fide offering of goods or services. Complainant asserts further that Respondent is not commonly known by the Disputed Domain Name, does not personally conduct any business under it, and has no license or other permission granted by Complainant. Complainant asserts that Respondent never answered the email Complainant sent, objecting to registration of the domain name.
Complainant asserts that as of February 2017, the Disputed Domain Name resolved to an illegal peer‑to‑peer website, used to “hide your online activity” that has been blocked by Google.
Complainant asserts that Respondent has registered the Disputed Domain Name in bad faith as it was registered primarily for the purpose of selling, renting, or otherwise transferring the domain name registration. Complainant’s proof of this assertion is that the Disputed Domain Name was for sale in January 2016 and that Respondent has made no active use of the Disputed Domain Name. Complainant asserts the Disputed Domain Name has been registered in bad faith because the Disputed Domain Name and Complainant’s registered trademark are identical and were registered on the same day, and it is extremely unlikely that two entities would have the same idea at the same time to create the same sequence of letters. After Complainant sent an email to Respondent objecting to registration of the Disputed Domain Name, the Disputed Domain Name was used for a peer-to-peer website dedicated to infringement.
Finally, Complainant asserts that the Disputed Domain Name was registered and used in bad faith because Respondent has engaged in a pattern of registering domain names corresponding to trademarks whose applications have been filed just before the domain names were registered.
Complainant requests that the Disputed Domain Name be transferred to Complainant. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Applicable Policy Provisions
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements in order to prevail in this proceeding:
(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.
Paragraph 4(b) of the Policy states that the following circumstances shall be evidence of the registration and use of a domain name in bad faith:
(i) Circumstances indicating that [Respondent has] registered or acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [Respondent has] registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent has] engaged in a pattern of such conduct; or
(iii) [Respondent has] registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] website or other online location, by creating a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of [its] website or location or of a product or service on [its] website or location.
These circumstances are non-exhaustive, and a UDRP panel may consider other circumstances as constituting registration and use of a domain name in bad faith.
According to paragraph 4(c) of the Policy a respondent may demonstrate rights in or legitimate interests to a domain name by any of the following, without limitation:
“(i) Before any notice to you of the dispute, your use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you, as an individual, business, or other organization have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.”
Where a respondent is in default, a UDRP panel may draw such inferences as it considers appropriate. Rules, paragraph 14(b). B. Identical or Confusingly Similar
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), Section 1.3, states:
“To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.
Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.
Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning.”
The Panel find that Complainant’s presentation of evidence in this regard falls short of establishing Complainant’s rights in unregistered or common law trademarks.
The Panel finds that Complainant may rely upon its registered EUTM for X-GIL. The Panel finds that the Disputed Domain Name is identical to Complainant’s registered EUTM with the exception of the Top-Level Domain (“TLD”) “.com”, which may be ignored for purposes of this analysis. See WIPO Overview 3.0, Section 1.11.1.
The Panel need not consider Complainant’s submissions with respect to unregistered rights in GIL, X-GIL GROUP, and X-GIL COMPANY, having satisfied its burden under this element of the Policy.
The Panel finds that Complainant has provided sufficient evidence to establish paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
Complainant has made a prima facie case, namely by showing that Respondent never used the name “X-GIL”, that the Disputed Domain Name was for sale a month after it was registered, and was redirected to an illegal peer-to-peer website after Complainant lodged its objection with Respondent, that Respondent is not commonly known by the Disputed Domain Name, does not personally conduct any business, and has no license or other permission to use the Disputed Domain Name.
Once Complainant makes its prima facie case, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name. SeeWIPO Overview 3.0, Section 2.1. Respondent failed to come forward with allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name. As Respondent failed to file a Response, it may be presumed that Respondent has no rights or legitimate interests in the Disputed Domain Name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse,WIPO Case No. D2000-1221. As a result, Complainant has established paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
WIPO Overview 3.0, Section 3.8.2, provides that
“As an exception to the general proposition described above in 3.8.1, in certain limited circumstances where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trademark rights, panels have been prepared to find that the respondent has acted in bad faith.
Such scenarios include registration of a domain name: (i) shortly before or after announcement of a corporate merger, (ii) further to the respondent’s insider knowledge (e.g., a former employee), (iii) further to significant media attention (e.g., in connection with a product launch or prominent event), or (iv) following the complainant’s filing of a trademark application.”
The Panel finds one of these exact situations here: namely, that the Registrant sought to capitalize on Complainant’s trademark filing by registering the Disputed Domain Name immediately after Complainant filed its trademark application. The fact that Respondent has engaged in a pattern of registering other domain names shortly after the identical names were registered as trademarks confirms Respondent’s bad faith. In light of this pattern of conduct, and the fact that Respondent has failed to answer the Complaint, the Panel finds that the Disputed Domain Name was registered and used in bad faith pursuant to paragraphs 4(b)(i) and 4(b)(ii) of the Policy. See also Aveva Group PLC v. Edward Kim, Case No. D2015-2349 (“Although Complainant’s AVEVA ENGAGE Marks were not yet registered at the time the disputed domain name was registered, the Panel finds it likely that Respondent was aware of and intended to exploit Complainant’s imminent launch of its new product when he registered the disputed domain name on October 20, 2015, thereby evidencing bad faith.”) 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 Complainant.
Jordan S. Weinstein
Sole Panelist
Date: June 30, 2017
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