The Complainant is 2703203 Manitoba Inc. of Winnipeg, Canada, represented by Jenny J. Liu Law Office, United States of America ("United States").
The Respondent is W P, The Cloud Corp of George Town, Grand Cayman, Cayman 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 is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 5, 2018. On June 6, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 7, 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 filed an amendment to the Complaint on June 11, 2018 to resolve 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 June 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 2, 2018. The Center received email communications from the Respondent on June 11, 2018 and June 12, 2018. On July 3, 2018, the Center informed the Parties that it would proceed to commence the panel appointment process. The Center received further email communications from the Respondent on July 3, 2018 and July 5, 2018.
The Center appointed Adam Taylor as the sole panelist in this matter on July 5, 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
Since 1996, the Complainant has franchised out a publication known as "Coffee News". There are currently around 700 franchises in 20 countries.
The Complainant owns a number of registered trade marks for COFFEE NEWS including United States trade mark no. 2113507, filed on April 17, 1996, registered November 18, 1997 in class 16, and European Union trade mark no. 572883, filed on July 17, 1997, and registered April 5, 2000, in classes 9, 16, and 25.
The disputed domain name was registered on February 15, 2010, and was formerly used by a franchisee of the Complainant in relation to two franchises in Woodbridge, Virginia, United States. The franchisee relinquished the disputed domain name on termination of the franchise at some point in 2017, following which it was acquired by the Respondent and redirected to a pornography site.
On May 23, 2018, the Complainant sent a cease and desist letter to the Respondent. The Respondent responded the same day, simply saying that it did not recognise the Complainant's trade mark, which did not affect the disputed domain name as the Respondent was not located in the United States.
Thereafter, the website at the disputed domain name resolved to a page inviting offers to buy the disputed domain name for a minimum price of GBP 1,997. 5. Parties' Contentions A. Complainant
A summary of the Complainant's contentions is as follows:
The disputed domain name is confusingly similar to the Complainant's trade mark. It wholly incorporates the Complainant's trade mark, merely adding the geographic term "Woodbridge".
The Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent has no trade mark rights in the disputed domain name and is not licensed by the Complainant to use its trade mark.
There has been no bona fide offering of goods or services in relation to the disputed domain name, which simply redirected to a pornography site.
There is no showing that the Respondent has been commonly known by the disputed domain name or that there has been a legitimate noncommercial or fair use of the disputed domain name. The offer to sell the disputed domain name for a minimum price of GBP 1,997 suggests otherwise.
The disputed domain name was registered and is being used in bad faith.
The disputed domain name was registered for sale to the Complainant at a price higher than its out of pocket expenses.
The use of the disputed domain name for a pornography site, which is significantly detrimental to the Complainant's reputation, shows that the Respondent set out in bad faith to harm the Complainant.
The Respondent's refusal to transfer the disputed domain name to the Complainant following its cease and desist letter shows that the Respondent registered the disputed domain name to prevent the Complainant from reflecting the trade mark in a domain name for its Woodbridge franchisee.
The Respondent intentionally attempted to create a likelihood of confusion with the Complainant's trade mark. The Respondent has used the disputed domain name in a way which is likely to confuse Internet users who are searching for the Complainant's well-known brand into thinking that its franchisee is involved in the pornography business or that it is no longer trading, thereby causing significant damage to the Complainant. B. Respondent
The Respondent did not file a formal Response. Instead, it sent a number of emails to the Center claiming that it no longer owned the disputed domain name and objecting strongly to receipt of communications relating to this proceeding. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has established rights in the mark COFFEE NEWS by virtue of its registered trade marks as well as unregistered trade mark rights deriving from its trading activities under that name.
Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") makes clear that, where the relevant trade mark is recognisable within the disputed domain name, the addition of other terms, whether descriptive, geographical, pejorative, meaningless, or otherwise, would not prevent a finding of confusing similarity under the first element.
Here, the Complainant's trade mark is readily recognisable within the domain name and, accordingly, the addition of the geographic term "Woodbridge" does not avert a finding of confusing similarity.
For the above reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant's trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
As explained in section 2.1 of WIPO Overview 3.0, the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
Paragraph 4(c) of the Policy gives examples of circumstances which, if proved, suffice to demonstrate that a respondent possesses rights or legitimate interests in the disputed domain name.
As to paragraph 4(c)(i) of the Policy, the Respondent has used the disputed domain name for a pornography site with no obvious connection to the disputed domain name, and, thereafter, for a page offering the disputed domain name for sale. The Panel has concluded below that the Respondent's activities were designed to pressure the Complainant to buy the disputed domain name from the Respondent for a significant sum. Plainly, such use of the disputed domain name could not be said to be bona fide.
Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
In the Panel's view, the Respondent registered the disputed domain name with the Complainant's trade mark in mind. The disputed domain name consists of the combination of the terms, "Coffee News" (the Complainant's trade mark) and "Woodbridge" (the name of the city in Virginia, the United States, where the Complainant had two franchises).
The Respondent initially used the disputed domain name for a pornography site with no obvious connection to the words in the disputed domain name but with the obvious potential to damage the reputation of the Complainant's trade mark and, on being confronted by the Complainant, it replaced the pornography site with a page offering the disputed domain name for sale at a minimum price of GBP 1,997.
The Panel considers that, on the balance of probabilities, the Respondent's use of the disputed domain name for a pornography site was designed to pressure the Complainant to buy the disputed domain name for a significant price, in excess of the Respondent's out of pocket expenses relating to the disputed domain name.
In the Panel's view, the foregoing constitutes registration and use of the disputed domain name 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 name, , be transferred to the Complainant.
Adam Taylor
Sole Panelist
Date: July 19, 2018
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