The Complainant is Opus Group AB of Mölndal, Sweden, represented by Ports Group AB, Sweden.
The Respondent is Opus Group LLC of New York, New York, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “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 May 31, 2017. On June 1, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 2, 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 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 June 7, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 27, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 29, 2017.
After the Notification of Respondent Default was sent, the Center received an email from Gerardo Mejia, of Mejia Law Firm LLC, stating “What are you referring to? I have not received any notice regarding this ‘alleged’ dispute.” Gerard Mejia is cited as the “Registrant Name” in the WhoIs record of the Domain Name. No further communication was received by the Center. The Panel is satisfied that the Respondent was given due notice of the Complaint in accordance with the Rules.
The Center appointed Ian Lowe as the sole panelist in this matter on July 4, 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 company incorporated in Sweden in 1990 that has provided vehicle testing services in Sweden and around the world . From 1990 to 2012 it was known as Opus Prodox. It changed its name to Opus Group AB on July 2, 2012. The Complainant is the registered proprietor of trademarks including:
- Sweden trademark number 1990-01366 in respect of the stylized word mark OPUS PRODOX registered on October 29, 1993;
- European Trademark number 012907259 OPUS registered on October 8, 2014;
- European Trademark application number 012399655 OPUS GROUP filed on December 6, 2013.
The Domain Name was registered on November 8, 2000. In October 2016, the Domain Name resolved to a parking page provided free by the Registrar which, according to the Complainant, included sponsored links to vehicle testing sites. The Complainant sent a cease and desist letter to the Respondent in October 2016 to which there was no reply. At the time of preparation of the Complaint, the Domain Name did not apparently resolve to any active website. However, it now resolves once more to a parking page provided by GoD with links that do not obviously include vehicle testing sites. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is confusingly similar to its OPUS trademarks, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
So far as rights and legitimate interests are concerned, the Complainant alleges that “there is no evidence that the Respondent has been commonly known by the Domain Name or is making a legitimate noncommercial or fair use of the Domain Name. Considering all of the above, it is obvious that the Respondent has no right or legitimate interest in respect of the Domain Name.”
In relation to bad faith, the Complainant states that its trademarks were registered well before the Respondent became the owner of the Domain Name. It asserts that “it is obvious that the Respondent was well aware of the Complainant’s trademarks and business when registering the Domain Name.” The Complainant states that it was using the OPUS trademarks as early as 1990, which means that the Complainant was using the trademark for at least 10 years before the Domain Name was registered. The Complainant also relies on the fact that the website to which the Domain Name resolved used to include links to vehicle testing sites, which implies knowledge of the Complainant’s trademarks and business. On this basis, the Complainant asserts that the Respondent is trying to take advantage of the OPUS trademark or at least to inflict damage on the Complainant’s business. It therefore submits that the Domain Name was registered to profit from the likelihood of confusion between its trademark and the Domain Name, or at least to use the likelihood of confusion in a way that is detrimental to the Complainant and its business. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
For this Complaint to succeed in relation to the Domain Name the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
At the time of filing the Complaint, the Complainant has uncontested rights in the OPUS trademark (the “Mark”), by virtue of its trademark registrations. Although the Complainant has not produced any specific evidence as to such use, the Panel is also prepared to accept that the Complainant is likely to have acquired some goodwill and reputation in the mark OPUS GROUP through its carrying on business under that name since 2012. Ignoring the generic Top Level Domain (gTLD) suffix “.com”, the Domain Name comprises the Mark together with the generic or descriptive term “group” and the entirety therefore of the name “Opus Group”. Accordingly, the Panel finds that the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
As the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states, the overall burden of proof in UDRP proceedings is on the complainant, but panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. Accordingly, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden in respect of this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name.
In this case, however, the entirety of the case put forward by the Complainant on this element is, first, that the Complainant has not given the Respondent any permission to register “Opus Group” as a domain name; second, that there is no evidence that the Respondent has been commonly known by the domain name; and, third, that by using the website at the Domain Name to make a profit (through sponsored links to third party websites) before the Complainant’s cease and desist letter was sent, the Respondent has not made noncommercial or fair use of the Domain Name.
The Complainant entirely ignores the fact that the WhoIs-listed Registrant Organisation is “Opus Group LLC” and that, leaving aside the corporate tag “LLC”, the Respondent may not only commonly be known by the Domain Name but, on its face at least, the Domain Name is its name. The Complainant has not disputed this or adduced any evidence throwing doubt on the bona fides of the Respondent as to its name, or as to when the Respondent was incorporated by that name or as to the activities of the Respondent company.
In the Panel’s view, there is accordingly colourable prima facie evidence that the Respondent does have rights or legitimate interests in respect of the Domain Name that the Complainant has failed to adequately address. In circumstances such as these, the fact that the Domain Name resolves to a parking page provided free by the Registrar which, no doubt through algorithms operating on the Domain Name, generates links to third party websites including those that relate in some way to the Complainant with the same name as the Domain Name, does not by itself prejudice the prima facie case that the Respondent may have relevant rights or legitimate interests. In a case such as that is an issue that might fall to be considered in relation to the bad faith element.
In light of the above, the Panel finds that the Complainant has failed to establish that the Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith
In view of the Panel’s finding in respect of the second element, it is not strictly necessary to address the third element. Nevertheless, in the circumstances of this case, the Panel will do so.
The Complainant states that its trademarks were registered well before the Respondent became the owner of the Domain Name. The only evidence the Panel has as to when the Respondent became the owner is the date of registration of the Domain Name on November 8, 2000 and the statement in the Registrar’s verification response to the Center that the Domain Name was registered to the Respondent “since at least July 3, 2016”. In the absence of any evidence to the contrary which it would be incumbent on the Complainant to advance, therefore, the Panel assumes that the Respondent registered the Domain Name on November 8, 2000. As at that date, according to the Schedule annexed to the Complaint, the only trademark registered by the Complainant was OPUS PRODOX, registered in Sweden. Although the Complainant relies on the fact that it has been carrying on business since 1990, it has not adduced any evidence as to the extent of its activities, the level of its sales or marketing effort or any evidence to suggest that the Respondent was likely to have known of the Complainant in November 2000. Even if there were such evidence, the Complainant was known up to that date and beyond as “Opus Prodox”, not “Opus Group”.
The Panel cannot see any justification on the evidence before it for the Complainant’s assertion that “it is obvious that the Respondent was well aware of the Complainant’s trademarks and business when registering the Domain Name.” The Panel does not accept that, even if there were evidence that the person registering the Domain Name was aware of an entity carrying on business as Opus Prodox that owned the registered trademark OPUS PRODOX, this would demonstrate that the registration was likely to have been in bad faith. In this case, there is no evidence that the Respondent was aware of the Complainant or its business carried on under the name “Opus Prodox” when it registered the Domain Name or any basis on which to draw an inference that it is likely to have been so aware. This also leaves to one side the fact that the name of the entity registering the Domain Name in this case was ostensibly named Opus Group LLC.
Accordingly, the Panel considers that the Complainant has failed to demonstrate on any view that the Respondent is likely to have had the Complainant and its rights in any relevant trademark in mind at the time it registered the Domain Name, and that the Complainant has therefore failed to establish that the Domain Name was registered in bad faith. 7. Decision
For the foregoing reasons, the Complaint is denied.
Ian Lowe
Sole Panelist
Date: July 12, 2017
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