The Complainant is UMix, LLC of Windermere, Florida, United States of America ("United States"), represented by Franklin Tarantino d/b/a UMix, LLC, United States.
The Respondent is Chris McNeeney, Memeplex LTD of Manchester, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Reddie & Grose, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name (the "Disputed Domain Name") is registered with Network Solutions, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed electronically with the WIPO Arbitration and Mediation Center (the "Center") on March 15, 2018. On March 16, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 16, 2018, 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 Complainant submitted an amendment to the Complaint on March 27, 2018 to address an administrative formality.
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 March 28, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 17, 2018. The Response was filed with the Center on April 17, 2018.
The Center appointed John Swinson as the sole panelist in this matter on May 4, 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 UMix, LLC, a United States company providing background music services in the United States and internationally.
The Complainant owns registered business entity names in the State of Pennsylvania, United States for "UMix Media" (registered on June 9, 2011) and "UMix" (registered on May 9, 2016).
The Complainant owns United States registered trade mark number 5122318, filed on May 5, 2016 and registered on January 17, 2017, for a device mark incorporating the term "umix" (the "Trade Mark").
The Respondent is Memeplex Ltd, a technology consultancy company which develops music software for different platforms.
The Respondent owns United Kingdom registered trade mark number 3232311 for a series comprising UMIX (word mark) and UMIX (stylized), which is protected from May 19, 2017.
The Disputed Domain Name was registered on August 18, 1996. The Respondent has provided evidence that it acquired the Disputed Domain Name on April 6, 2011. According to the Response, the Respondent has been actively developing and marketing music software known as "Umix" since then.
The website associated with the Disputed Domain Name (the "Respondent's Website") currently promotes an application known as "Umix" which is available for download via the Apple App Store. The software can be used to mix songs stored on an Apple device (the "UMIX Software"). At various different times since the Respondent acquired the Disputed Domain Name, the Respondent's Website has advertised earlier versions of the UMIX Software and membership to related music communities. At other times, the Respondent's Website has been a parking page containing the message "test ". 5. Parties' Contentions A. Complainant
The Complainant makes the following submissions. Identical or Confusingly Similar
The Complainant owns the registered business name and United States registered trade mark for UMix. The Complainant's customers commonly know the Complainant by the name of "UMix". The Disputed Domain Name uses the Trade Mark and the registered business name "UMix". Rights or Legitimate Interests
The Respondent is using the Trade Mark. The Respondent's use of the Trade Mark in relation to a product involving music serves to create confusion. Registered and Used in Bad Faith
The Respondent squatted on the Disputed Domain Name for years with only the words "test " displayed on the Respondent's Website. The Respondent began to publish more content after the Complainant filed a complaint with Apple on May 9, 2017 for the Respondent's use of the Trade Mark in the Apple App Store. The Respondent published content on the Respondent's Website in July 2017. B. Respondent
The Respondent makes the following submissions. Identical or Confusingly Similar
The Complainant refers to its ownership of registered business names. These do not confer standing under paragraph 4(a)(i) of the Policy and should be disregarded. If they do confer standing, the Complainant has provided no evidence of trade under these business names. The Complainant has neither asserted, nor proved, the existence of unregistered or common law trade mark rights.
The Complainant relies on the Trade Mark which was filed on May 5, 2016 and registered on January 17, 2017. According to the extract of this registration from the United States Patent and Trade Mark Office, the Complainant provided a date of first use in commence of May 4, 2016.
The Complainant has failed to assert whether the Trade Mark is identical or confusingly similar to the Disputed Domain Name or explain why this is the case. It is clear from a comparison of the Trade Mark and the Disputed Domain Name that they are not identical. The Trade Mark incorporates a logo element that dominates the overall impression of the Trade Mark and would lead the mark to be perceived as UM UMIX. Rights or Legitimate Interests
The Complainant has failed to establish how the Respondent does not have rights or legitimate interests in respect of the Disputed Domain Name.
The Respondent has rights and legitimate interests in the Disputed Domain Name in connection with a bona fide offering of goods and services. The Respondent develops and sells software, including music software. Since acquiring the Disputed Domain Name on April 6, 2011, the Respondent has been actively developing its UMIX Software.
The Respondent's acquisition of the Disputed Domain Name predates the filing and registration of the Trade Mark, as well as the Complainant's registration of its company names. The Respondent began developing the Respondent's Website at least as early as October 6, 2011.
The Respondent has invested considerable time and money in purchasing the Disputed Domain Name and in developing the UMIX Software by seeking to protect its intellectual property rights in the product. The Respondent filed a patent application on September 28, 2012 for an invention entitled "Automatic Audio Mixing" which relates to the UMIX Software. The Respondent has provided further evidence of its advertising of the UMIX Software throughout 2012 and 2013.
The Complainant refers to the WayBack Machine to support its assertions that the Respondent was not using the Disputed Domain Name. The WayBack Machine displays screenshots of websites associated with domain names irregularly and at inconsistent intervals. The absence of web content at a single point in time does not undermine the Respondent's evidence which demonstrates the Respondent's rights and legitimate interests in the Disputed Domain Name. Registered and Used in Bad Faith
The Complainant has failed to advance any credible evidence of bad faith on behalf of the Respondent.
The Complainant's allegation that the Respondent has been squatting on the Disputed Domain Name is clearly false. The Respondent has provided evidence which demonstrates that the Respondent acquired the Disputed Domain Name for a considerable sum in 2011, and has made significant ongoing investments to develop its UMIX Software, including by way of the Disputed Domain Name.
The Apple App Store proceedings referred to in the Complaint was a failed attempt initiated by the Complainant in May 2017 to force Apple to remove the Respondent's UMIX Software from the Apple App Store. The Respondent lodged a response to the complaint with Apple, which resulted in the Apple complaint being treated as closed. The Complainant has taken the Apple complaint no further. Reverse Domain Name Hijacking
The Complainant must have been aware of the Respondent's activities when registering its own domain name . Since the Complainant's failed attempts to force the removal of the Respondent's UMIX Software application from the Apple App Store platform, the Complainant has embarked on a speculative attempt to procure the Disputed Domain Name by the "back door". Accordingly, the Complaint is an abuse of process. The Respondent requests a finding of reverse domain name hijacking. 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 is on the Complainant. 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 a trade mark or service mark in which the Complainant has rights.
The Complainant refers to business entity names registered in the State of Pennsylvania for "UMix Media", registered on June 9, 2011 and "UMix", registered on May 9, 2016. It is unclear whether the Complainant is seeking to rely on these business names in support of unregistered or common law trade mark rights.
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 its goods or services (i.e., that the Trade Mark has acquired a "secondary meaning") (see section 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0").
As submitted by the Respondent, the Complainant has not provided any evidence of its reputation, or even that it has traded under these business names. As such, the Complainant has not established common law trade mark rights in these names.
The Complainant also relies on a United States registered Trade Mark in support of the Complaint. The Respondent submits that the Trade Mark incorporates a logo element and therefore is not identical or confusingly similar to the Disputed Domain Name. However, design elements may be disregarded for the purpose of assessing identity or confusing similarity (see section 1.10 of the WIPO Overview 3.0). The Panel finds that the Trade Mark satisfies the requirement that the Complainant show "rights in a mark" for the first element of the Policy.
The Panel finds that the Disputed Domain Name is identical to the textual component of the Trade Mark. In this case, the gTLD ".com" does nothing to detract from this similarity (see section 1.11 of WIPO Overview 3.0).
The Complainant is successful 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. It is then for the Respondent to rebut this prima facie case.
The Complainant's only submissions in support of this element are that the Respondent is using the Trade Mark, and that this use of the Trade Mark in relation to a product involving music serves to create confusion. The Complainant has not addressed any of the matters set out in paragraph 4(c) of the Policy which, while not the only factors that may be relevant, would assist in showing that the Respondent does not have rights to or legitimate interests in the Disputed Domain Name.
Based on these limited submissions, which do not clearly relate to the Respondent's lack of rights or legitimate interests in the Disputed Domain Name, the Panel finds that the Complainant has failed to make out a prima facie case on this element.
However, even if the Complainant had made out a prima facie case, the Respondent has provided more than sufficient evidence to prove its rights or legitimate interests in the Disputed Domain Name.
Under paragraph 4(c)(i) of the Policy, the Respondent will have rights to or legitimate interests in the Disputed Domain Name if, before any notice of the dispute, the Respondent had used or made demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services.
The Respondent has provided evidence that it acquired the Disputed Domain Name on April 6, 2011, and that the Disputed Domain Name hosted an active website relating to the UMIX Software from as early as October 6, 2011. The Respondent states that it began developing the UMIX Software from the time it registered the Disputed Domain Name, and has provided evidence dated throughout 2012 and 2013 showing that the UMIX Software was being promoted online. The Respondent has also provided evidence that it filed a patent application covering the UMIX Software on September 28, 2012.
The Respondent has clearly invested substantial time, money and effort in developing the UMIX Software and the associated Disputed Domain Name over the last 7 years. The Panel finds that the Respondent has rights or legitimate interests in the Disputed Domain Name.
The Complainant does not succeed 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.
Since the Complainant has failed to establish the second element of the Policy, it is not strictly necessary for the Panel to reach a finding on the third element. However, the Panel will briefly address the key aspects of this element for completeness.
The Respondent acquired the Disputed Domain Name on April 6, 2011. The Trade Mark was filed on May 5, 2016 and registered on January 17, 2017, which is over five years after the Respondent acquired the Disputed Domain Name. As stated above in relation to the first element of the Policy, the Complainant has not made any clear assertions in regards to its unregistered trade mark rights or its reputation prior to filing the Trade Mark.
The Panel considers that evidence of either the Complainant's reputation or the Respondent's knowledge of the Complainant at the time the Respondent acquired the Disputed Domain Name would be necessary for a finding of registration in bad faith. The Complainant has provided neither.
On this basis, and in light of the Respondent's substantial evidence of its continued legitimate and good faith use of the Disputed Domain Name since its acquisition in 2011, the Complainant does not succeed on the third element of the Policy. D. Reverse Domain Name Hijacking
The Respondent has asked that a finding of Reverse Domain Name Hijacking ("RDNH") be made against the Complainant. According to paragraph 15(e) of the Rules:
"If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at reverse domain name hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its Decision that the Complaint was brought in bad faith and constitutes and abuse of the Administrative Proceeding."
RDNH is defined in paragraph 1 of the Rules as meaning "using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name".
The Complaint in this case is thoroughly deficient, and consists of less than half of one page in submissions in support of the Complainant's case. In the Panel's view, the Complainant made no real attempt to discharge its onus of proving the three elements of the Policy.
Further, the Complainant intentionally omitted key information in relation to the Complainant's Apple complaint against the Respondent. The Complainant did not disclose the fact that the Respondent had responded to that complaint, and Apple had closed the complaint following the Respondent's response. The Panel considers the Complainant filed the Complaint in an attempt to acquire the Disputed Domain Name in the wake of its unsuccessful attempt to prevent the Respondent from offering its UMIX Software via the Apple App Store. The Complainant also selectively chose to provide a historical screenshot of the website at the Disputed Domain Name which showed a parking page, and did not disclose the fact that there had been active websites associated with the Disputed Domain Name at other times since it was acquired by the Respondent in 2011. In fact, the Complainant stated that the Respondent had "squatted" on the Disputed Domain Name "for years". This is clearly untrue, and the Complainant must have known this.
Further, despite having only recently acquired a registration for the Trade Mark, the Complainant provided no evidence of common law or unregistered trade mark rights, or of its reputation at any given time. The Complainant must have known that this would be necessary to show bad faith registration, and it is unclear whether the Complainant was aware of the 2011 date that the Respondent acquired the Disputed Domain Name.
As stated by the Panel in Chuan Sin Sdn. Bhd. v. Internet Admin (not for sale), Reflex Publishing Inc.,WIPO Case No. D2014-0557:
"When the Complainant filed the Complaint, the Complainant knew that there was no proper basis for the Complaint yet it went ahead and filed the Complaint. This alone merits a finding of RDNH. See Dextra Asia Co., Ltd. v. Lakeside Enterprises Limited,WIPO Case No. D2012-0403 [footnote omitted]. In so doing the Complainant knew that it was accusing an innocent registrant of dishonesty (bad faith) in the hope that it could deprive the Respondent of the Disputed Domain Name. Moreover, the Complainant knew that if the Respondent were to retain the Disputed Domain Name, the Respondent would have to spend time and money and in all likelihood employ representation to defend itself. The Complainant also knew that even if it lost the case, it would not be called upon to compensate the Respondent."
The same reasoning applies in this case. The Panel finds that the Complainant, albeit apparently representing himself in part and unfamiliar with the UDRP, has used the Policy in bad faith "to attempt to deprive a registered domain name holder of a domain name". 7. Decision
For the foregoing reasons, the Complaint is denied.
John Swinson
Sole Panelist
Date: May 18, 2018
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