The Complainant is Information Tools Limited of Auckland, New Zealand, represented by Baldwins Intellectual Property, New Zealand.
The Respondent is Future Media Architects, Inc. of Tortola, British Virgin 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 ("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 November 7, 2017. On November 7, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 9, 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 November 21, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 11, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 13, 2017.
The Center appointed Nicholas Smith as the sole panelist in this matter on December 21, 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 New Zealand that provides business analysis software. It is the registered owner of a number of marks containing or consisting of the word "harmoni", including the word mark "HARMONI" (the "HARMONI Mark"), which was registered in the United States on April 25, 2017 for goods and services in classes 9, 42 and 45, with a date of first use recorded as March 17, 2003. The Complainant registered the domain name in May 2002 though it is not clear when it launched its website or commenced offering products under the HARMONI Mark. On May 17, 2003 the first user of the Complainant's software registered as a licensee.
The Domain Name was created on August 9, 2003. It currently resolves to a website ("the Respondent's Website"), that indicates that the Domain Name may be for sale and asks the visitor to provide its details to obtain a quote. In December 2015, the Complainant approached the Respondent seeking to purchase the Domain Name. The Respondent offered to sell the Domain Name for USD 79,200. 5. Parties' Contentions A. Complainant
The Complainant makes the following contentions:
(i) that the Domain Name is confusingly similar to the Complainant's HARMONI Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the HARMONI Mark, having registered it in 2017 and first used it in 2003. The Domain Name is identical to the HARMONI Mark.
The Respondent is not commonly known by the Domain Name nor has it used the Domain Name in connection with a bona fide offering of goods and services or legitimate non-commercial or fair use. The Respondent has not acquired trade or service mark rights in the Domain Name. In particular, following an approach from the Complainant, in 2015 the Respondent offered to sell the Domain Name for USD 79,200 which is not a bona fide use.
The Domain Name is actively promoted for sale and has never hosted substantive content. The Respondent appears to have a history of owning and attempting to transfer domain names at a premium to legitimate rights holders as indicated by the number of times the Respondent has been a respondent in prior UDRP cases. The circumstances indicate that the Domain Name was registered or acquired primarily for the purposes of selling to the Complainant, disrupting the business of a competitor or in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name. This conduct amounts to registration and use of the Domain Name in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant's trade or service mark.
The Complainant is the owner of a trade mark registration for the HARMONI Mark. Disregarding the generic Top-Level Domain ("gTLD") ".com" for the purposes of comparison, the Domain Name is identical to the HARMONI Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
"Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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 legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue (Policy, paragraph 4(c))."
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the HARMONI Mark or a mark similar to the HARMONI Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence of any demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use, indeed the Respondent appears to be simply offering the Domain Name for sale which by itself does not necessarily provide a right or legitimate interest in a disputed domain name for purposes of the Policy.
In light of the Panel's finding under the next section, however, the Panel need not make a finding under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name's registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) The Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the 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 the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website or location.
The registration and use requirements of paragraph 4(a)(iii) of the Policy are conjunctive, and a complainant bears the burden of proof on each. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. If either of the required elements is not established, the Complaint must fail. Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270 (denying transfer of the domain name because the complainant failed to prove bad faith registration).
The HARMONI Mark was registered in 2017, 14 years after the registration of the Domain Name. In order to find that the Domain Name was registered in bad faith is therefore necessary for the Complainant to establish that the Respondent's intent in registering the Domain Name was to unfairly capitalize on the Complainant's nascent unregistered trade mark rights in the HARMONI Mark.
While the Respondent is clearly offering to sell the Domain Name and in 2015, in response to an enquiry from the Complainant, offered to sell the Domain Name to the Complainant for a sum that is likely to be greater than its out of pocket costs, that by itself is also not a sufficient basis on the present record to find that the Respondent registered the Domain Name in bad faith. Rather, to find bad faith the Panel would have had to find that the Respondent registered the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name's registration to the Complainant (or a competitor).
There is no evidence before the Panel to suggest that the Respondent, prior to it being contacted by the Complainant, was aware of the Complainant's existence. There is no evidence that the Respondent had "targeted" the Complainant in any manner, such as contacting the Complainant seeking to sell the Domain Name or making reference to the Complainant on the Respondent's Website. While not conclusive, it would appear unlikely that a respondent (had it registered the Domain Name for the purpose of selling the Domain Name to the Complainant) would simply wait for 12 years (from 2003 until 2015) for the Complainant to contact it and make an offer.
While the Complainant first used the HARMONI Mark approximately 6 months before the registration of the Domain Name, the Complainant provides no evidence of sales, advertising or general reputation prior to the registration date, such that the Panel can conclude that the Complainant and its HARMONI Mark was so well known that the Respondent must have had the Complainant in mind at the time it registered the Domain Name. Indeed, all that is known is that the Complainant had at least one customer at the registration date; the Complaint does not even evidence whether the Complainant had an active web page or presence on Internet search portals at the registration date.
The failure to adduce sufficient evidence of the reputation of the HARMONI Mark at the time of registration would be less of an issue if the Domain Name was such an unusual word that there was no other logical reason for the Respondent to register the Domain Name. This is not the case with the word 'harmoni', which is a female given name, a word in a number of Scandinavian languages, and a phonetically identical variant of the common English word 'harmony'. A Google search indicates that "harmoni" is used as a business name by a number of entities. It is not implausible that in 2003, a party unaware of the Complainant would seek to register a Domain Name consisting of the word "harmoni" for reasons other than to take advantage of any reputation the Complainant had in the HARMONI Mark.
In the interests of completeness I note that:
a) The Complainant does not provide any evidence that the Respondent has engaged in a pattern of conduct of registering domain names (including the Domain Name) to prevent trade mark owners from registering a corresponding domain name. The Complainant merely refers to the 9 previous UDRP cases to which the Respondent was a party. The Complainant omits to note that the Respondent was successful in 7 of those 9 cases.
b) There is no basis for the Panel to find that the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor: the Complainant and the Respondent are not competitors.
c) The Complainant has not satisfied its burden to show that the Respondent registered the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the HARMONI Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's Website. The Respondent's Website does not contain advertising and does not offer a product or service for sale. It merely solicits an offer for the sale of the Domain Name itself.
In the present proceeding the Panel finds that the Complainant has not satisfied its burden of showing that circumstances that bring the case within the provisions of paragraph 4(b) of the Policy exist, or other facts showing that the Respondent registered the Domain Name in bad faith. 7. Decision
For the foregoing reasons, the Complaint is denied.
Nicholas Smith
Sole Panelist
Date: December 23, 2017
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