The Complainant is Stoniq S.A. of Luxembourg, Luxembourg, represented by Office Freylinger S.A., Luxembourg.
The Respondent is Domain Admin This Domain is For Sale, Home of Domains of Phoenix, Arizona, United States of America. 2. The Domain Names and Registrar
The disputed domain names and are registered with NameSilo, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2018. On January 26, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 26, 2018, the Registrar transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 31, 2018.
The Center verified that the Complaint together with the amendment to 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 February 1, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 21, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 22, 2018.
The Center appointed Antony Gold as the sole panelist in this matter on March 2, 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. 4. Factual Background
The Complainant is a company based in Luxembourg and the registered proprietor of two European Union trade marks:
- European Union trade mark No. 017001819 for STONIQ (word mark), registered on January 17, 2018 in classes 6, 17, 19, 37, 39, 40 and 42; and
- European Union trade mark No. 017001876 for GROWN TO BUILD (word mark) registered on January 17, 2018 in classes 6, 17, 19, 37, 39, 40 and 42.
Both of the Complainant’s trade marks were applied for on July 20, 2017; its STONIQ trade mark application was filed online at 16.47.42 Central European Time (“CET”) and its GROWN TO BUILD trade mark application was filed online at 17.23.42 CET.
The disputed domain names were both registered by the Respondent on July 20, 2017; was registered at 15.49.48 Mountain Standard Time (“MST”) and was registered at 15.57.03 MST. In the light of the eight hour time difference between the CET and MST time zones, the disputed domain names were registered several hours after the Complainant’s trade mark applications were filed at the European Union Intellectual Property Office (“EUIPO”).
The Respondent is an entity, based in Phoenix, in the United States of America. The Complainant’s representatives sent a cease and desist letter to the Respondent on October 12, 2017, requesting that it transfer both disputed domain names to the Complainant. The Respondent did not reply.
The disputed domain names resolve to websites. The respective websites comprise solely a prominent notification which states that “ is for sale! Buy now for $950” and “ is for sale! Buy now for $950”. 5. Parties’ Contentions A. Complainant
The Complainant says that the disputed domain names reproduce entirely its trade marks for STONIQ and GROWN TO BUILD. It says that the addition of the generic Top-Level Domain (“gTLD”) “.com” should be disregarded when analysing the similarity between the Complainant’s trade marks and the disputed domain names. Accordingly, the disputed domain names are identical to its trade marks.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain names. It is not affiliated with the Complainant, nor authorised by it to use or register its trade marks or register any domain name incorporating its trade marks. The Complainant draws the Panel’s attention to previous panel decisions which have held that, in the absence of a licence or permission from a complainant to use its trade marks, no actual or contemplated good faith or legitimate use of a domain name incorporating those marks can be found.
Given that the disputed domain names are identical to the Complainant’s trade marks, the Respondent cannot reasonably have been intending to develop a legitimate business activity using the disputed domain names. Moreover, the Respondent’s failure to reply the Complainant’s cease and desist letter provides further support for its case that it lacks rights or legitimate interests in the disputed domain names; see, for example, AREVA v. St. James Robyn Limoges,WIPO Case No. D2010-1017.
Lastly, the Complainant says that the disputed domain names were registered and are being used in bad faith. The Complainant says that the Respondent must have been aware of the Complainant’s STONIQ and GROWN TO BUILD trade marks when it registered the disputed domain names. Both trade marks are original and distinctive terms, and it cannot be by chance that the Respondent registered the disputed domain names on the same day, and a few hours after, the Complainant’s trade mark applications for them were filed.
Bad faith can be found where a respondent knew or should have known of a complainant’s trade mark rights, and nevertheless registered a domain name in which it lacked rights or a legitimate interest; see, Research In Motion Limited v. Privacy Locked LLC/Nat Collicot,WIPO Case No. D2009-0320. The Respondent accordingly registered the disputed domain names in bad faith.
The Complainant refers to paragraph 4(b) of the Policy, which provides, without limitation, four examples of circumstances which are likely to constitute bad faith. The Complainant says that the Respondent’s conduct falls within the circumstances set out at paragraph 4(b)(i) of the Policy, in that it has registered the disputed domain names in order to sell them to the Complainant for valuable consideration in excess of the out-of-pocket costs directly related to the disputed domain names. Moreover, its actions also fall within paragraph 4(b)(ii) of the Policy, in that the Respondent registered the disputed domain names in order to prevent the Complainant from reflecting its trade marks in corresponding domain names and it has engaged in a pattern of such conduct. In support of this assertion, the Complainant provides details of three earlier decisions under the Policy in which the Respondent had opportunistically registered domain names in similar circumstances and where, as in these proceedings, the domain names in dispute were offered for sale by the Respondent for USD 950. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Dealing, first, with the Respondent’s failure to serve a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy requires that the Complainant proves each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests with respect to the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Complainant has provided details of its STONIQ and GROWN TO BUILD trade marks, as set out above. The Complainant’s trade mark applications had not proceeded to grant at the time of the Respondent’s registration of the disputed domain names. However, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) explains out that “[t]he fact that a domain name may have been registered before a complainant has acquired trade mark rights does not by itself preclude a complainant’s standing to file a UDRP case, nor a panel’s finding of identity or confusing similarity under the first element”. See also, by way of example, Aveva Group Plc. v. Edward Kim,WIPO Case No. D2015-2349, where the panel held that “The Panel further finds that Complainant likely has rights in the AVEVA ENGAGE Marks for purposes of the Policy in view of its trademark applications”.
Accordingly, the Panel finds that the Complainant has rights in its trade marks for the purpose of paragraph 4(a)(i) of the Policy, notwithstanding that it only possessed pending trade mark applications as at the date of registration of the disputed domain names.
In considering whether the disputed domain names are confusingly similar to the Complainant’s trade marks, it is established that the applicable gTLD suffix (“.com” in the case of the disputed domain names) should be disregarded, as it is a technical requirement of registration.
The remaining elements of the disputed domain names are identical to the Complainant’s STONIQ and GROWN TO BUILD trade marks.
The Panel accordingly finds that the disputed domain names are identical to trade marks in which the Complainant has rights. B. Rights or Legitimate Interests
The Policy sets out at paragraph 4(c) examples of circumstances, without limitation, by which a respondent may demonstrate rights or legitimate interests in a disputed domain name, namely that:
(i) before any notice of the dispute, it can show 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) it can show that it has been commonly known by the domain name, even if no trade mark or service mark rights have been acquired; or
(iii) it can demonstrate a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Section 2.2 of the WIPO Overview 3.0 provides examples of non-exhaustive examples of prior use, or demonstrable preparations to use a domain name, in connection with a bona fide offering of goods or services and explains that “While such indicia are assessed pragmatically in light of the case circumstances, clear contemporaneous evidence of bona fide pre-complaint preparations is required”. Doing no more than offering the disputed domain names for sale does not amount to use in connection with a bona fide offering of goods or services. See, by way of example, Ruby’s Diner, Inc. v. Joseph W. Popow, WIPOCase No. D2001-0868, in which the panel found that simply using a domain name to advertise that it is for sale does not support a respondent’s legitimate interest under the Policy.
There is nothing to suggest that the respondent has been commonly known by the disputed domain names, nor has it made any known use of the disputed domain names since their registration in July 2017, other than to advertise that they are for sale. This is not a legitimate, noncommercial use of the disputed domain names.
As explained at section 2.1 of the WIPO Overview 3.0, once a Complainant has made out a prima facie case that a respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to show that it does have such rights or legitimate interests. In the absence of any response from the Respondent to the Complaint, it has failed to satisfy that burden.
The Panel accordingly finds that the Respondent has no rights or legitimate interests with respect to the disputed domain names. C. Registered and Used in Bad Faith
As explained above, the trade mark applications for STONIQ and GROWN TO BUILD were filed on July 20, 2017, being the same day as, but several hours prior to, the registration of the disputed domain names by the Respondent. Very shortly after filing, details of both trade mark applications will have been made available to the public worldwide via the search facility on the EUIPO website, which enables Internet users to search for applications which have been recently filed and which is updated daily.
The likelihood that the Respondent registered the disputed domain names for a reason other than that it had noted from checks at the EUIPO website that the Complainant had applied for the STONIQ and GROWN TO BUILD trade marks is vanishingly small. The strong inference to be drawn from the evidence is that the Respondent had been watching the publication of trade mark applications which had been filed at the EUIPO and, registered the disputed domain names in response to the appearance on the search facility of the Complainant’s applications. The Respondent would have known that pending trade mark applications will have a commercial value to the applicants, many of whom will also wish to reflect their trade mark in a corresponding domain name.
Whilst the trade mark applications did not mature into granted trade marks until January 20, 2018, section 3.8.2 of the WIPO Overview 3.0 explains that “in certain limited circumstances where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalise on the complainant’s nascent (typically as yet unregistered) trademark rights, panels have been prepared to find that the respondent acted in bad faith”. See, by way of example, General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Centre Online,WIPO Case No. D2003-0845; which held that “This Panel reaffirms that, as a general matter, bad faith is not likely to be found when a Complainant relies on a trademark that did not exist at the time a disputed domain name is registered when seeking to make use of the Policy. However, there are many exceptions to this general statement […]. Another exception supported by prior Panel decisions analyzes whether Respondent had knowledge that trademark rights would soon arise through use or registration of a mark by the Complainant”.
Paragraph 4(b) of the Policy sets out circumstances which, 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. These include (i) circumstances indicating that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant or to a competitor of that complainant, for valuable consideration in excess of the respondent’s out-of-pocket costs directly related to the domain name; or (ii) registration of the domain name by a respondent in order to prevent the trade mark owner from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct.
There is no other realistic construction to place on the Respondent’s conduct other than it registered the disputed domain names with a view to selling them either to the Complainant or a competitor of it. Moreover, it did so in order to prevent the Complainant from reflecting its trade marks in the corresponding domain names and the Complainant has provided evidence that the Respondent has engaged in a pattern of such conduct.
In addition, the fact that the disputed domain names are not being used in any generally understood meaning of the term does not preclude a finding of bad faith use. Section 3.3 of the WIPO Overview 3.0 considers passive holding by the Respondent and explains that “While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put”.
Applying these criteria to the circumstances of this case, at least three of them are fulfilled, namely; (i) the Complainant’s STONIQ trade mark is a distinctive word, with no known identifiable English language meaning. Its GROWN TO BUILD mark is relatively distinctive; (ii) the Respondent has provided no response and self-evidently no evidence of any actual or contemplated good faith use by it of the disputed domain names; (iii) it is implausible to conceive of any good faith use to which the disputed domain names might be put by the Respondent.
Having regard to the above considerations, the Panel finds that the Respondent has registered and used the disputed domain names in bad faith. 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 names, and be transferred to the Complainant.
Antony Gold
Sole Panelist
Date: March 15, 2018
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