The Complainant is Werock B.V. of Amsterdam, the Netherlands, represented by de Merkplaats B.V., the Netherlands.
The Respondent is Super Privacy Service c/o Dynadot of San Mateo, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Dynadot, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same date, 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 31, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 20, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 21, 2017.
The Center appointed John Swinson as the sole panelist in this matter on October 3, 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 Werock B.V., a company founded in 2009 and based in the Netherlands. The Complainant operates an online platform which allows the transfer of files such as videos, photos and work files, via the Internet.
The Complainant owns registered European Union trade mark number 12836921 for WETRANSFER (the “Trade Mark”) which was registered on September 26, 2014. According to the Complaint, the Complainant has been using the Trade Mark since 2009.
The Complainant owns a domain name which incorporates the Trade Mark, being , at which it provides its services (the “Complainant’s Website”). The domain name for the Complainant’s Website was registered on December 14, 2007.
The Respondent is Super Privacy Service c/o Dynadot. The Respondent did not file a Response, and consequently little information is known about the Respondent. The Respondent appears to be a privacy service.
The Disputed Domain Name was registered on July 26, 2011.
The Disputed Domain Name was previously owned by WeTransferit Ltd, a company incorporated in the United Kingdom of Great Britain and Northern Ireland. On June 9, 2017, the Complainant sent a cease and desist letter to WeTransferit Ltd concerning the Disputed Domain Name. On June 27, 2017, WeTransferit Ltd replied by email, agreeing to cease using the Disputed Domain Name and alter the “look-and-feel” of the website associated with the Disputed Domain Name at that time so that it would not be similar to the Complainant’s Website. In this email, WeTransferit Ltd refused to transfer the Disputed Domain Name to the Complainant other than for payment. Before the Complainant replied to the invitation to make an offer made by WeTransferit Ltd, the WhoIs details for the Disputed Domain Name were changed to the Respondent. However, it appears that the Disputed Domain Name continues to be operated by WeTransferit Ltd under a new company, WeCarry ehf (based on WhoIs data) or WeCarryit Ltd (based on the terms of use for the website associated with the Disputed Domain Name).
At the time the Complaint was filed and of this decision, the website associated with the Disputed Domain Name redirects to a website at the domain name (“WeTransferit’s Website”). 5. Parties’ Contentions A. Complainant
The Complainant makes the following submissions. Identical or Confusingly Similar
The beginning of the Disputed Domain Name and the Trade Mark are identical. There is a high degree of similarity when comparing the Disputed Domain Name with the Trade Mark.
The addition of the term “it” is not sufficient to distinguish the Disputed Domain Name from the Trade Mark as “wetransfer” remains the dominant part of the Disputed Domain Name. Rights or Legitimate Interests
The Respondent has no trade mark rights or legitimate interest in the Disputed Domain Name. The use of the Disputed Domain Name cannot be considered a bona fide offering of goods or services as the Disputed Domain Name is used to direct Internet users to WeTransferit’s Website which offers the exact same services as the Complainant’s services.
The Respondent is not commonly known by the Disputed Domain Name.
Further, the Respondent is not affiliated with the Complainant in any way and is not a licensee or otherwise permitted by the Complainant to use the Trade Mark or to apply for or use the Disputed Domain Name. Registered and Used in Bad Faith
The Disputed Domain Name was registered and is being used in bad faith.
The Complainant had been using the Trade Mark for two years prior to the original creation date of the Disputed Domain Name and had built up a sustainable international reputation in the Trade Mark.
Irrespective of the original creation date of the Disputed Domain Name, the relevant circumstances for assessing bad faith are as at the date the Respondent acquired the Disputed Domain Name.
The Respondent was the Registrar at the time that the Disputed Domain Name was owned by WeTransferit Ltd, and continues to be the Registrar. The Respondent must have been aware of the Complainant’s exclusive rights in the Trade Mark when acquiring the confusingly similar Disputed Domain Name.
Further, the fact that the Disputed Domain Name directs to a website offering identical services to the services the Complainant offers shows that the Disputed Domain Name is being used in bad faith. It is likely to lead consumers to believe that the Respondent is economically related to the Complainant. The Respondent’s use of the Disputed Domain Name is likely to cause confusion or deception and constitutes a dilution of the Complainant’s rights in the Trade Mark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the 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.
The onus of proving these elements remains on the Complainant even though the Respondent has not filed a Response.
The Respondent’s failure to file a Response does not automatically result in a decision in favour of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyP,WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent’s default. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Complainant holds a Trade Mark that was registered on September 26, 2014, but it has also stated that it first began using the Trade Mark in 2009. While the date of first use is not relevant to the first element of the Policy, it will be relevant to whether the Respondent registered and used the Disputed Domain Name in bad faith. Therefore, the Panel will also consider whether the Complainant held common law rights in the Trade Mark prior to the date the Disputed Domain Name was registered.
In order to successfully assert common law or unregistered trade mark rights, the Complainant must show that the Trade Mark has become a distinctive identifier associated with the Complainant or the Complainant’s goods or services (i.e., that the Trade Mark has acquired a “secondary meaning”).
The Complainant began operating in 2009. Based on Internet searches, the Panel is satisfied that the Complainant has been using the Trade Mark since 2009.
The Trade Mark has been wholly incorporated into the Disputed Domain Name and is combined with the descriptive term “it”. It is well established that the addition of a descriptive term does not prevent a finding of confusing similarity.
In this case, the generic Top-Level Domain (gTLD) “.com” is immaterial in assessing confusing similarity under the Policy and may be ignored.
In light of the above, the Complainant succeeds on the first element of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
According to the Complainant, the Disputed Domain Name was registered on July 26, 2011. On or about June 29, 2017, a privacy service was activated. The currently named Respondent is the privacy service.
Based on the evidence provided by the Complainant, the Panel infers that no transfer has taken place and WeTransferit Ltd (or an associated entity) is still in control of the Disputed Domain Name. The Disputed Domain Name was registered by WeTransferit Ltd after the Complainant’s first use of the Trade Mark. At the time that the Disputed Domain Name was registered, WeTransferit Ltd was providing services almost identical to the Complainant via a website which largely replicated the Complainant’s Website. At present, the Disputed Domain Name redirects to WeTransferit’s Website which appears to offer the same services as those provided at the Complainant’s Website.
In the circumstances, the Panel finds that the Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of services. This is further demonstrated by the fact that WeTransferit Ltd offered to cease using the Disputed Domain Name, and then activated a privacy service shortly after. Further, the Respondent’s use of the Trade Mark in the Disputed Domain Name to redirect Internet users to the competing WeTransferit’s Website does not confer rights or legitimate interests.
The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so. As such, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent has registered and is using the Disputed Domain Name in bad faith.
As previously discussed, the Panel infers that there was no transfer of the Disputed Domain Name on or about June 29, 2017 and that WeTransferit Ltd or an associated entity retains control of the Disputed Domain Name. On this basis, the relevant registration date of the Disputed Domain Name is July 26, 2011 and not on or about June 29, 2017 when the privacy service was activated.
The Complainant has registered rights in the Trade Mark from 2014, however as discussed in relation to the first element of the Policy, the Panel accepts that the Complainant has common law rights from 2009.
The Panel finds that the Respondent registered and is using the Disputed Domain Name in bad faith for the following reasons:
- The Disputed Domain Name was registered after the Complainant’s first use of the Trade Mark.
- WeTransferit Ltd provides the same services as those offered by the Complainant.
- Previously, according to the Complaint, the website associated with the Disputed Domain Name was almost identical to the Complainant’s Website.
- WeTransferit Ltd activated a privacy service during discussions with the Complainant, after receipt of the cease and desist letter.
- The Respondent is using the Complainant’s Trade Mark in the Disputed Domain Name to redirect Internet users to WeTransferit’s Website which provides competing services to the Complainant.
The Panel finds that the Respondent sought to take advantage of the reputation of the Complainant’s business and the Trade Mark, and registered the Disputed Domain Name because of this reputation. The Panel reasonably considers that the likely effect of the Respondent’s registration and use of the Disputed Domain Name, particularly in redirecting to another domain name, was to attract Internet users to WeTransferit’s Website for commercial gain, by creating a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation, or endorsements of WeTransferit’s Website. This is evidence of bad faith registration and use (see paragraph 4(b)(iv) of the Policy). 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 the Complainant.
John Swinson
Sole Panelist
Date: October 18, 2017
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