The Complainant is Aldez Containers, LLC of Almont, Michigan, United States of America ("United States"), represented by Miller, Canfield, Paddock & Stone, PLC, United States.
The Respondent is Ruby Administrator, Ruby Advertising of Georgetown, Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland ("United Kingdom"). 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 11, 2017. On August 14, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 14, 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 August 24, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 13, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 14, 2017.
The Center appointed Alistair Payne as the sole panelist in this matter on September 22, 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 container, packaging and warehousing company based in the United States. It has used its ALDEZ mark in commerce since 1998 and owns a United States trade mark registration for ALDEZ under registration number 5198213 which was filed on March 24, 2016 and registered on May 9, 2017, with a first use date of September, 1998. It also owns the domain name at which it operates its main website. The Complainant registered this domain name in 2008.
The Respondent is based in the Cayman Islands. The disputed domain name was registered on June 16, 1998. Currently, the disputed domain name resolves to a pay-per-click parking page. 5. Parties' Contentions A. Complainant
The Complainant submits that the disputed domain name is identical to its registered ALDEZ mark in the United States, details of which are noted above.
It submits that it has never assigned, licensed or granted permission to the Respondent to use its ALDEZ mark commercially and that there is no evidence that the Respondent has made demonstrable preparations to use the disputed domain name or a name corresponding to it in connection with a bona fide offering of services or that it owns rights in or is commonly known by the ALDEZ name or mark. The Complainant submits that the Respondent with intent for commercial gain to misleadingly divert consumers or to tarnish the ALDEZ trade mark is not making a legitimate noncommercial or fair use of the disputed domain name.
The Complainant says that for a period of time in June 2017 and possibly earlier, the disputed domain name was re-directing visitors to a website at that is operated by a direct competitor of the Complainant. The Complainant sent a cease and desist letter to GBE Packaging on June 20, 2017 and on June 23, 2017, received a response from GBE Packaging denying that they owned the disputed domain name and that they had authorized the re-direction.
The Complainant submits that as a consequence of a cease and desist letter sent to the Respondent on June 28, 2017, it has knowledge of the Complainant's rights or alternatively has constructive knowledge as a consequence of the Complainant's United States trade mark registration. The Complainant submits that as the Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services and as it is exactly the same as the Complainant's ALDEZ mark, that the disputed domain name was registered or acquired primarily for the purpose of selling, renting or otherwise transferring the disputed domain name to the Complainant or to one of its competitors for valuable consideration in excess of the Respondent's out-of-pocket registration costs. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns registered rights in the ALDEZ mark by virtue of United States trade mark registration number 5198213 which was filed on March 24, 2016 and registered on May 9, 2017. The disputed domain name (excepting the ".com" Top-Level Domain element) is identical to the Complainant's ALDEZ mark and accordingly the Complaint succeeds under the first element of the Policy. B. Rights or Legitimate Interests
The Complainant has submitted that it has never assigned, licensed or granted permission to the Respondent to use its ALDEZ mark commercially and that there is no evidence that the Respondent has made demonstrable preparations to use the disputed domain name, or a name corresponding to it in connection with a bona fide offering of services or that the Respondent owns rights in or is commonly known by the ALDEZ name or mark. The Complainant also notes that for a period of time in June 2017 and possibly earlier, the disputed domain name was re-directing visitors to a website at that is operated by a direct competitor of the Complainant. It says that this was not legitimate conduct.
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. This case has not been rebutted by the Respondent and as a result the Panel finds that the Complaint succeeds under the second element of the Policy. C. Registered and Used in Bad Faith
The test under the third element of the Policy requires that the Complainant demonstrates that the Respondent both registered and has used the disputed domain name in bad faith.
The disputed domain name was registered in 1998. It is unclear as to whether the Respondent was the initial registrant or not and the Complainant has submitted no evidence in this regard, so there is no basis for the Panel to infer that the Respondent took a subsequent transfer of the disputed domain name and that such later date should be considered the relevant registration date.
It is clear that, although the Complainant appears to have used the ALDEZ mark in commerce since 1998, it only registered its ALDEZ trade mark in the United States in May 2017. There is nothing on the record to suggest that the Respondent was aware of the Complainant's use of the ALDEZ mark in 1998 and the Panel notes that the Complainant's website operates from the domain name which domain name was only registered in 2008. Based on these facts it is very difficult for the Complainant to make out a case that the Respondent was necessarily aware of the Complainant's use of the ALDEZ mark in 1998 and that the Respondent registered the disputed domain name with knowledge and in bad faith.
Nevertheless, the Complainant submits that the disputed domain name was registered or acquired primarily for the purpose of selling, renting or otherwise transferring the disputed domain name to the Complainant or to one of its competitors for valuable consideration in excess of the Respondent's out-of-pocket registration costs in terms of paragraph 4(b)(i) of the Policy. It appears to make this submission on the basis that for a period of time in June 2017 and possibly earlier, the disputed domain name appeared to be re-directing visitors to a website at that is operated by a direct competitor of the Complainant. The Complainant wrote first of all to its competitor, GBE Packaging, on June 20 who replied promptly on June 23 denying that it controlled the disputed domain name in any way (whether by owning, renting or leasing). It confirmed that it had not authorised the re-direction and submitted a report from its IT department to the effect that by June 23, 2017 there was no re-direction at all from the disputed domain name to GBE packaging's website, but rather the disputed domain name re-directed to a domain name parking site with sponsored links.
In view of GBE Packaging's prompt response and seemingly credible denial that it had anything to do with the disputed domain name and the complete lack of other evidence on the record that the Respondent has offered the disputed domain name for sale or for rent or has made any other use of it since initial registration in 1998, there is an inadequate basis for the Panel to infer that the Respondent registered or acquired the disputed domain name primarily for the purposes of selling, renting or otherwise transferring it to the Complainant in terms of paragraph 4(b)(i) of the Policy.
The Panel notes that the Complainant has not claimed that the Respondent has intentionally attempted to attract Internet users for commercial gain to its website by creating a likelihood of confusion as to source, sponsorship, affiliation or endorsement in terms of paragraph 4(b) (iv) of the Policy. Neither has the Complainant provided evidence, such as screenshots of the website to which it alleged that the disputed domain name resolved for a short time in 2017, or for example the parking site with sponsored links as referred to by GBE Packaging in its response. As a result of the unreconciled difference in explanation as to the website to which the disputed domain name resolved (namely whether it was GBE packaging's website or a parking site containing sponsored links as suggested by GBE packaging) there is insufficient evidence before the Panel to support a case under this section of the Policy.
In view of the longstanding registration of the disputed domain name that significantly pre-dates the Complainant's trade mark registration, the lack of evidence that the disputed domain name was registered knowingly or otherwise in bad faith in 1998 or was acquired after that date and the failure to fulfill the requirements of Policy, paragraphs 4(b)(i) or 4(b)(iv), the Panel finds that the Complainant has not made out the required case that the disputed domain name was both registered and used in bad faith. Accordingly, the Complaint fails under the third element of the Policy. 7. Decision
For the foregoing reasons, the Complaint is denied.
Alistair Payne
Sole Panelist
Date: September 26, 2017
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