The Complainant is DBG Group Investments, LLC of Dallas, Texas, United States of America (“United States” or “U.S.”), represented by Vorys, Sater, Seymour and Pease, LLP, United States.
The Respondent is Alexander Vysotsky, EcoTechWorld of Tarzana, California, United States, represented by Rozsa Law Group LC, United States. 2. The Domain Names and Registrar
The disputed domain names , , , and are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 27, 2017. On December 28, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 29, 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 January 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 25, 2018. At the Respondent’s request, the Response due date was automatically extended until January 29, 2018 in accordance with paragraph 5(b) of the Rules. Subsequently, in accordance with the Rules, paragraph 5(e), the due date for Response was further extended to February 5, 2018. The Response was filed with the Center on February 5, 2018.
The Center appointed William R. Towns as the sole panelist in this matter on February 22, 2018. 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.
On February 13, 2018, the Complainant submitted an unsolicited supplemental filing to the Center. The Respondent submitted an unsolicited supplemental filing received by the Center on March 3, 2018, in which the Respondent notified the Panel that the Respondent had filed a Notice of Cancellation before the United States Patent and Trademark Office’s Trademark Trial and Appeal Board (“TTAB” or “Board”) on February 14, 2018. The Panel has determined to include the Parties’ supplemental submissions in the record. 4. Factual Background
The Complainant is the owner of a United States trademark registration for ECOQUEST, U.S. Reg. No. 3,062,066, registered on February 28, 2006, for distributorship services featuring household air and water purification appliances. The Complainant also owns U.S. trademark registrations for FRESH AIR BY ECOQUEST, U.S. Reg. No. 3,023,417, a word mark registered on December 6, 2005; and U.S. Reg. No. 2,947,914, a stylized word mark, registered on May 10, 2005, for air purifiers and treatment units. The stylized FRESH AIR BY ECOQUEST mark is reproduced below.1
The Complainant in 2009 acquired a majority of the assets of the initial registrant of the ECOQUEST mark, EcoQuest International, Inc., and licensed the use of the mark to Vollara LLC, an affiliate of the Complainant. The Complainant renewed its U.S. registrations of the FRESH AIR BY ECOQUEST marks and the ECOQUEST mark (collectively referred to as the “ECOQUEST marks”) on June 16, 2015, May 8, 2015 and October 19, 2016, respectively.
The Respondent is the registrant of the disputed domain names , , , and . The Registrar’s WhoIs records indicate that the disputed domain names were registered on October 16, 2003, April 20, 2015, May 17, 2016, and May 17, 2016, respectively. The Respondent began using “EcoQuest” in California for use a fictitious business name in January 2015, and became an independent distributor for Vollara on or about February 5, 2015. The Respondent represents that he thereafter acquired the disputed domain names and began using them with his online business in 2016.
The disputed domain name resolves to the Respondent’s website at www., on which the Respondent displays the stylized EcoQuest logo reproduced below.
The EcoQuest logo is also superimposed over images of the products advertised on the Respondent’s website. The disputed domain names , , and have been redirected the Respondent’s “www.” website. The Respondent’s website offers for sale new and refurbished air purifiers, along with replacement parts and repair services for air purifiers. Among the air purifiers offered for sale and displayed on the Respondent’s website are several “FreshAir” models over which the Respondent’s logo has been superimposed. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain names are identical and confusingly similar to its ECOQUEST mark, which the Complainant asserts has been used in commerce since January 2000, registered by the United States Patent and Trademark Office (USPTO) on February 28, 2006, and renewed on October 19, 2016. According to the Complainant, the disputed domain name is identical to the Complainant’s ECOQUEST mark, as the generic top-level domain (gTLD) “.net” usually would be disregarded under the confusing similarity test. With regard to the three other disputed domain names, the Complainant asserts that the addition of “usa” or “-usa” following “ecoquest” does not preclude a finding of confusing similarity. The Complainant observes that a WIPO panelist in DBG Group Investments, LLC v. Viktor Masurkevich,WIPO Case No. D2017-1159 found the domain names and confusingly similar to the Complainant’s ECOQUEST mark.
The Complainant maintains the Respondent lacks rights or legitimate interests in respect of the disputed domain names. The Complainant avers that the Respondent has not been authorized or licensed to use the Complainant’s marks to sell its products or provide related services, and that the Respondent registered and is using the disputed domain names to pass off the goods offered on the Respondent’s website as those of the Complainant. The Complainant submits this does not constitute use of the disputed domain names with a bona fide offering of goods or services, and that the same can be said for selling counterfeit or otherwise non-genuine products, citing Pierre Fabre Dermo-Cosmetique v. Simon Chen/personal/jingpingguo,WIPO Case No. D2011-0769.
The Complainant submits the ECOQUEST mark has been used by the Complainant and its predecessor for more than 17 years and registered with the USPTO since 2006. The Complainant asserts that the disputed domain name , originally registered by the Complainant’s predecessor, was not acquired by the Respondent until June 2016, based on historical WhoIs information. The Complainant notes that the other disputed domain names were registered by the Respondent on April 20, 2015 and June 17, 2016.
The Complainant maintains that the Respondent is using the disputed domain names with his website in a manner that falsely suggest that the Respondent is the manufacturer of the Complainant’s ECOQUEST products or otherwise affiliated with the Complainant. According to the Complainant, the Respondent in addition to offering repair services and other parts and accessories on his website purports to sell new air purifiers substantially similar in name and appearance to the Complainant’s products. The Complainant provides as one example a side by side comparison of the Respondent’s “Fresh Air Cube” with Vollara’s “FreshAir Cube”. Further, referring to the FRESH AIR BY ECOQUEST mark, the Complainant contends that the Respondent is attempting to pass himself off as the Complainant selling “Fresh Air” air filters and other parts for “Fresh Air” products. As such, the Complainant submits that the Respondent lacks legitimacy and cannot be commonly known by the disputed domain names within the contemplation of paragraph 4(c)(ii) of the Policy.
In light of the foregoing, the Complainant argues that the Respondent registered and is using the disputed domain names in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. The Complainant submits that the Respondent is selling “FreshAir” products that infringe on the Complainant’s marks and reiterates that a respondent’s use of a domain name to sell counterfeit versions of a complainant’s products does not constitute a bona fide offering of goods or services. The Complainant concludes that the Respondent is using the disputed domain names for commercial gain to divert Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s ECOQUEST mark as to source, sponsorship, affiliation or endorsement of the Respondent’s website and products offered thereon. B. Respondent
The Respondent submits that the Complainant lacks enforceable rights in the ECOQUEST marks, and that as a result the Complainant cannot meet its burden under paragraph 4(a)(i) of the Policy to demonstrate that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Respondent alleges that the Complainant submitted fraudulent specimens of use to the USPTO to renew the registrations of the ECOQUEST marks.
According to the Respondent, the same specimens of use were submitted by the Complainant to renew the ECOQUEST and FRESH AIR BY ECOQUEST marks, depicting old Ecoquest International, Inc. product packaging that the Complainant discontinued using in commerce after rebranding the ECOQUEST products to VOLLARA. The Respondent contends that the Complainant has abandoned the ECOQUEST marks.
The Respondent asserts that the specimens of use submitted by the Complainant to the USPTO on January 20, 2012 and August 4, 2016, are taken from a printout from the website “www.”. The Respondent submits, however, that the Complainant did not own or operate the “www.” website on either January 20, 2012 or August 4, 2016. The Respondent submits that on July 27, 2016, the Complainant filed a lawsuit in state court in Dallas, Texas against Ecoquest Air Repair, the holder of the separate domain name, seeking to enjoin alleged infringing activities on the website and obtain that domain name.
The Respondent explains that the Complainant on January 31, 2017, obtained a default judgment in the state court lawsuit against Ecoquest Air Repair, which included an order that the domain name be transferred to the Complainant. The Respondent thus submits that the Complainant was well aware that it did not own, operate or license the “www.” website at the time it submitted specimens of use to the USTPO taken from that website. The Respondent further asserts that the specimens submitted to the USPTO by the Complainant in June 23, 2015 and April 22, 2015 to renew the registration of the FRESH AIR BY ECOQUEST marks are identical to the specimens submitted by the Complainant to renew the registration of the ECOQUEST mark.
The Respondent further calls attention to DBG Group v. Masurkevich, supra. According to the Respondent, the Complainant represented that it had not authorized or licensed the Respondent to use the Complainant’s marks with products offered for sale on the “www.” website.
The Respondent maintains that Vollara is a direct sales company that distributes its products through a network of independent distributors and states that the Respondent became an independent distributor of Vollara in February 2015. According to the Respondent, after the Complainant acquired the assets of Ecoquest International, Inc. in 2009, the Complainant and its affiliates completely rebranded the Ecoquest International, Inc. business and products. The Respondent submits that by the time he became an independent distributor for Vollara in 2015 the Complainant had stopped using the ECOQUEST mark and was instead offering goods and services under the VOLLARA mark.
The Respondent further contends there is no evidence supporting the Complainant’s assertion that the use of the ECOQUEST mark in commerce has been continued through the Vollara brand. The Respondent asserts that printouts form the Vollara LLC website (“”) submitted as an annex to the Complaint contain no air purification products or any other products are being offered under the ECOQUEST mark.
The Respondent denies that he is infringing upon the Complainant’s asserted rights in its FRESH AIR BY ECOQUEST mark, since the Complainant disclaimed the words “fresh air” as a condition to the registration of the mark. The Respondent asserts that the Complainant does not have any exclusive right to use the term “fresh air” apart from the mark as shown.
The Respondent asserts that he has rights and legitimate interests in the disputed domain names. The Respondent explains that he is in the business of providing repair services, parts and accessories for various air purification units, and also sells his own product line. The Respondent submits that on his website he offers repair services for genuine ECOQUEST air purifiers amongst many other air purifier brands and sells his own product line. The Respondent asserts that he also offers for sale refurbished products, including refurbished ECOQUEST branded products. The Respondent denies selling counterfeit items.
The Respondent maintains that he registered the disputed domain names and began using the fictitious business name “EcoQuest” without knowledge of the Complainant’s trademark registrations and without awareness of the Complainant’s asserted rights. The Respondent denies that the overall look or product names of new air purifiers offered for sale by the Respondent infringe upon any rights of the Complainant. To the contrary, the Respondent insists that he is using the disputed domain names with a bona fide offering of goods and services.
The Respondent insists that the Complainant has not established that the disputed domain names have been registered and used in bad faith. The Respondent specifically denies having registered the disputed domain names as blocking registrations or to disrupt the Complainant’s business, or for the purpose of selling, renting, or otherwise transferring the disputed domain names to the Complainant or a competitor of the Complainant. The Respondent maintains that he adopted the fictitious name and registered multiple corresponding domain names with the understanding that the EQOQUEST mark had been relinquished and abandoned and was available for use.
The Respondent asserts that as issues of trademark validity are generally outside the purview of the UDRP, these proceedings are more appropriately decided by judicial means, and therefore the Complaint should be dismissed. The Respondent cites EvoPlay LLP v. Mardiros Haladjian / GGS Ltd.,WIPO Case No. D2015-0252; and Clinomics Biosciences, Inc. v. Simplicity Software, Inc.,WIPO Case No. D2001-0823. C. Parties’ Supplemental Submissions (i) Complainant’s Supplemental Submission
The Complainant submits that WIPO Panels have long held that trademark validity issues are “clearly not within the purview of any UDRP proceeding and are best left for administrative or judicial adjudication, citing Gerber Childrenswear Inc. v. David Webb,WIPO Case No. D2007-0317; MySpace, Inc. v. Edwin De Jesus, EDJ Associates Inc.,WIPO Case No. D2007-1878; Business Filings Incorporated v. John Thalacker D/B/A/ Traffico,WIPO Case No. D2010-1332. The Complainant asserts that the Panel should accord deference to the trademark rights conferred by the USPTO. The Complainant further contends that it continues to use the ECOQUEST mark in commerce by, among other things, providing service, maintenance support, and parts to customers under the ECOQUEST mark. The Complainant asserts that the UDRP is not an appropriate forum for the Respondent’s allegation of fraud on the USPTO, and dismisses the Respondent’s fraud allegations as false. (ii) Respondent’s Supplemental Submission
The Respondent notes that the Complainant’s supplemental submission, while alleging the Complainant continues to use the ECOQUEST mark in commerce, has provided no evidence of such continued use. The Respondent observes that U.S. Trademark Reg. No. 3,062,066 is for distributorship services in International Class 35, and not for providing repair service or maintenance support in International Class 37. According to the Respondent, providing maintenance or repair service does not support the Complainant’s assertion of continued use of the mark in connection with distributorship services.
The Respondent agrees with the Complainant’s supplemental assertion that trademark validity issues are not within the purview of any UDRP proceeding and are best left for administrative or judicial adjudication, but the Respondent takes issue with the Complainant’s position that the Panel therefore should not disturb the presumed validity of the Complainant’s U.S. Trademark Reg. No. 3,062,066. The Respondent asserts that there is now a co-pending action before the TTAB that will address the trademark validity issues. 6. Suspension or Termination of Administrative Proceeding under Rule 18(a)
The Policy was designed to protect the parties’ court options before, during and after a UDRP proceeding, as evidenced in paragraph 4(k) of the Policy. Pursuant to paragraph 18(a) of the Rules, when notified of “any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.” This is a matter that a panel may raise on its own initiative.
The Policy was adopted to deal with the problem of cybersquatting – that is, the abusive registration of domain names consisting of, including, or confusingly similar to marks belonging to another for the purpose of profiting from the goodwill associated with the mark. The questions that the Panel has jurisdiction to address under the Policy are relatively simple and straightforward. Such proceedings are summary in nature, without the benefit of confrontation of the witnesses, or of a hearing. Jason Crouch and Virginia McNeill v. Clement Stein,WIPO Case No. D2005-1201.
The cancellation petition filed with the TTAB by the Respondent addresses a single issue – whether the USPTO’s registrations of the Complainant’s ECOQUEST and FRESH AIR BY ECOQUEST marks should be cancelled. The Parties appear to be in agreement that trademark validity issues are not ordinarily within the purview of a UDRP proceeding and are best left for administrative or judicial adjudication. Be that as it may, the TTAB’s trial schedule reflects that the Board will not be in a position to try the cancellation petition until at the earliest September 2019, some 18 months from now. The Board’s eventual decision in the cancellation proceeding, regardless of whether it favors the Complainant or the Respondent, may still leave unresolved issues between the Parties.
Having regard to the foregoing, the Panel has determined to proceed to a decision on the merits. The Panel’s determination under the Policy will have no effect on the cancellation petition or any other claims the Respondent might elect to pursue in other forums. See Displays Depot, Inc. v. GNO, Inc.,WIPO Case No. D2006-0445. And while it is widely recognized that national courts are not bound by UDRP panel decisions, the Panel nonetheless considers that the expediency of a decision under the Policy may prove beneficial to the Parties. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.14, and relevant decisions cited therein. 7. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(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 with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds that the disputed domain names , , , and are confusingly similar to the Complainant’s ECOQUEST marks. The Panel further finds that the Complainant has established rights in its ECOQUEST marks by virtue of the USPTO’s registration of the marks on the Principal Register. In doing so, the Panel adopts the reasoning of the learned three-member panel in Business Filings Incorporated v. Thalacker, supra, recognizing that registration creates a presumption of validity under United States trademark law, and declining to “go behind” a trademark granted by the USPTO to find a federal trademark registration invalid.2
In considering this issue, the first element of the Policy serves essentially as a standing requirement.3 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name. In this case, the Complainant’s ECOQUEST mark is clearly recognizable in the disputed domain names. The addition of other terms such as “usa” and “-usa” does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.4 Further, generic Top-Level Domains (gTLDs) generally are disregarded when evaluating the identity or confusing similarity of the complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy.5
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s ECOQUEST marks. Regardless, the Respondent registered the disputed domain names, which are confusingly similar to the Complainant’s ECOQUEST marks, and is using the disputed domain names to divert Internet users to a website featuring a stylized EcoQuest logo, and on which the Respondent by his own acknowledgement offers repair services for genuine ECOQUEST air purifiers along with many other air purifier brands, and sells his own product line. The Respondent represents that he also offers for sale refurbished products, including refurbished ECOQUEST branded products.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the disputed domain name, even if he has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel concludes that the Respondent has failed to come forward with evidence of rights or legitimate interests in the disputed domain names within the meaning of paragraph 4(c) of the Policy. As noted earlier, the Respondent registered “EcoQuest” in California for use as a fictitious business name, indicating in his statement that he began doing business as “EcoQuest” in January 2015. On or about February 5, 2015, the Respondent became an independent distributor for Vollara, to whom the right to license use of the Complainant’s ECOQUEST marks had been granted. The Respondent thereafter acquired the disputed domain names on various dates beginning on or about April 20, 2015, and began using the disputed domain names with his online business sometime in 2016 according to the Respondent. As noted above, the Respondent represents that he offers on his website repair services for ECOQUEST air purifiers and also for other air purifier brands, sells his own product line, and offers for sale refurbished products, including refurbished ECOQUEST products.
In light of the foregoing, the Panel questions the credibility of the Respondent’s assertion that he registered the disputed domain names and began using the fictitious business name “EcoQuest” without knowledge of the Complainant’s trademark registrations. The ECOQUEST mark is distinctive in relation to the goods and services offered thereunder. As noted above, the Respondent begin using the fictitious name “EcoQuest” for his company in January 2015, became an independent distributor for Vollara shortly thereafter, registered multiple domain names reflecting the ECOQUEST mark beginning on or about April 20, 2015, and launched his website sometime in 2016. In such circumstances the Panel considers it more likely than not that the Respondent registered and has used the disputed domain name in an attempt to trade on the goodwill developed in the Complainant’s ECOQUEST marks.
To the extent that the Respondent holds himself out as a reseller, distributor or service provider of the Complainant’s ECOQUEST products, the most often cited UDRP decision in evaluating domain names of resellers, distributors or service providers is Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (hereinafter “Oki Data”). In Oki Data, the respondent was a reseller of the complainant’s OKI DATA-branded products, and registered the domain name . The panel in Oki Data concluded that the use of a manufacturer’s trademark as a domain name by a reseller could be deemed a “bona fide offering of goods or services” within the meaning of the Policy only if the following conditions are satisfied:
- the respondent must actually be offering the goods or services at issue;
- the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondents is using the trademark in a domain name to bait consumers and then switch them to other goods);
-the site itself must accurately disclose the respondent’s relationship with the trademark owner; and
-the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.
The Oki Data approach acknowledges certain scenarios relating to the potential legitimacy of using another’s trademark in a domain name, often referred to as “nominative fair use”. An overarching principle of the Oki Data approach is that a use of a domain name cannot be “fair” if it suggests a non-existent affiliation with the trademark owner; nor can a use be “fair” if it is pretextual. See 201 Folsom Option JV, L.P. and 201 Folsom Acquisition, L.P. v. John Kirkpatrick,WIPO Case No. D2014-1359 (Oki Data approach considers and applies nominative fair use principles with reference to the limited scope of the Policy, and specifically with respect to the respondent’s use of the complainant’s mark in a domain name); Project Management Institute v. CMN.com,WIPO Case No. D2013-2035 (“[It] is critical to the establishment of rights or legitimate interests under Oki Data, and to a claim of nominative fair use,that the [r]espondent take steps to avoid using of the [c]omplainant’s mark in a manner likely to cause consumer confusion as to source, sponsorship, affiliation or endorsement”).
The record in the instant case does not in the Panel’s view reflect the Respondent’s observance of the Oki Data criteria. Generally speaking, UDRP panels have found that domain names identical to a third-party trademark carry a high risk of such affiliation. Where the domain name consists of a trademark plus an additional term (at the Second- or Top-Level), UDRP jurisprudence broadly holds that this cannot constitute nominative fair use if it effectively impersonates or improperly suggests sponsorship or endorsement by the trademark owner.6 See WIPO Overview 3.0, section 2.5, and cases cited therein.
It is the Panel’s opinion that the disputed domain names selected by the Respondent, particularly when considered in conjunction with the content on the Respondent’s website, misrepresent the nature of the “relationship” or (lack of) affiliation of the Respondent with the Complainant. The disputed domain names are comprised of the Complainant’s ECOQUEST mark; the disputed domain name is identical to the Complainant’s mark when the gTLD “.net” is disregarded. The disputed domain names each resolve to the Respondent’s website, and could easily convey to Internet users the impression at the very least that the website is affiliated with, sponsored, or endorsed by the Complainant. Such affiliation, sponsorship, or endorsement is further suggested by the content of the Respondent’s website, most notably the prominent display of the Complainant’s distinctive ECOQUEST mark, coupled with the Respondent’s failure to accurately disclose its relationship (or lack thereof) with the Complainant on the website.
A respondent’s use of a domain name is not “fair” in circumstances where the domain name falsely suggests affiliation with the trademark owner; nor can a use be “fair” if it is pretextual. Eli Lilly and Company and Novartis Tiergesundheit AG v. Manny Ghumman / Mr. NYOB / Jesse Padilla,WIPO Case No. D2016-1698. Because the disputed domain names chosen by the Respondent invoke a strong suggestion of affiliation with the trademark owner which has not been satisfactorily disclaimed, such use is not fair, is not legitimate, and does not give rise to rights or legitimate interests. Rather, it constitutes the kind of behavior prohibited by the Policy.
Having regard to the relevant circumstances in this case, and absent any meritorious explanation from the Respondent, the Panel finds that the Respondent’s use of the disputed domain names does not constitute use in connection with a bona fide offering of goods or services within the contemplation of paragraph 4(c)(i) of the Policy. Nor is the Respondent making a legitimate noncommercial or fair use of the disputed domain name within the meaning of paragraph 4(c)(iii) of the Policy. The Respondent has not been authorized to use the Complainant’s marks, and has not been commonly known by the disputed domain names within the contemplation of paragraph 4(c)(ii) of the Policy.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using 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 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 its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain names within the meaning of paragraph 4(a)(iii) of the Policy. The Respondent more likely than not was aware of the Complainant’s ECOQUEST marks when registering the disputed domain names. It is a reasonable inference that the Respondent registered the disputed domain names based on the attractiveness of the Complainant’s mark to drive traffic to the Respondent’s website. In the attendant circumstances of this case, the Panel considers it more likely than not that the Respondent has intentionally attempted for commercial gain to attract Internet users to the Respondent’s website 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 products and services offered thereon.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 8. 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 names, , , , and be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: March 10, 2018
1 The Complainant disclaimed the exclusive right to “fresh air” apart from the mark as shown.
2 Even were the Panel to consider the Respondent’s invalidity claim, the record clearly reflects that the Respondent registered the disputed domain names prior to the Complainant’s renewal of its ECOQUEST mark on October 19, 2016. As noted above, the registration of a trademark on the USPTO Principal Register creates a presumption of validity, and there is nothing of substance in the record to support a claim of fraud on the USPTO prior to the renewal of the ECOQUEST mark. The Respondent’s claim that the Complainant abandoned the ECOQUEST mark prior to the Respondent’s registration of the disputed domain name rests almost entirely on the Respondent’s self-serving statements. Trademark abandonment arises under U.S. law when the use of the mark has been discontinued with the intent not to resume such use. See 15 U.S.C. §1127. The Complainant’s efforts to enforce its trademark rights in DBG Group v. Masurkevich, supra, as well as in the instant case may be of some relevance to the issue.
3 See WIPO Overview 3.0, section 1.7.
4 See WIPO Overview 3.0, section 1.8 and cases cited therein. When the relevant trademark is recognizable in the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.
5 The meaning of a particular TLD may in some cases be relevant to assessments under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy. See WIPO Overview 3.0, section 1.11 and cases cited therein. See also WIPO Overview 3.0, section 1.8.
6 See Grundfos Holding A/S v. Ahmed Alshahri,WIPO Case No. D2015-1112; Johnson & Johnson v. Ebubekir Ozdogan,WIPO Case No. D2015-1031.
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