The Complainant is Elgi Equipments Limited, of Coimbatore, India, represented by DePenning & DePenning, India.
The Respondent is Michael Zielinski, Worldengine Holdings LLC, of White Plains, New York, United States of America ("United States"), self-represented. 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 July 18, 2018. On July 18, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 18, 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 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 July 25, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 14, 2018. The Response was filed with the Center on August 9, 2018.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on August 24, 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 an air compressor manufacturer originally established in 1960. The Complainant employs more than 1,500 people across multiple branches worldwide and also operates a global sales, service, and distribution network. The Complainant has used the ELGI mark as part of its corporate name for more than fifty years and possesses a variety of registered trademarks for this term, such as for example, Indian registered trademark No. 856823 filed on May 18, 1999 and registered on July 11, 2005 in respect of compressors and related equipment in class 7.
The disputed domain name was created on June 24, 2007. The Respondent is a domain investor who states that he has assembled a portfolio of over 1,000 four-letter domain names, including the disputed domain name, from various sources for their inherent value. The Respondent explains that such short domain names are widely recognized within secondary markets as rare and valuable, commanding high prices.
An undated screenshot of the website associated with the disputed domain name, bearing a 2018 copyright notice, appears at Annexure B of the Complainant's annexes. The top of the page states that the disputed domain name is for sale and invites interested parties to contact an aftermarket domain name broker. Below this are featured a variety of advertisements for pneumatic devices, being the Complainant's line of business. The Complainant does not discuss this screenshot in the Complaint beyond noting that it uses the English language. When the Panel visited the website associated with the disputed domain name on August 26, 2018, it contained the same for sale message although none of the advertisements related to the Complainant's line of business. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which it owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant describes its history and the extent of its operations, including media recognition of its activities, asserting that it has established goodwill and reputation in India and in other countries under the ELGI mark. The Complainant produces a Google search for the term "elgi" and asserts that its websites are returned as the leading hits. The Complainant asserts that the use of the ELGI mark by others would amount to dilution of the Complainant's rights and result in confusion and deception among end customers. The Complainant adds that this would amount to infringement and passing off.
The Complainant states that its mark is an invented term which is well-known in India and in several other jurisdictions of the world, adding that it registered the domain name on June 10, 1997 and has actively used such domain since that date. The Complainant asserts that the Respondent has registered and used the disputed domain name without its permission in order to create an impression of association with the Complainant and to obtain an unfair advantage thereby. The Complainant submits that the Respondent has no connection with the Complainant but registered the disputed domain name with full knowledge of the Complainant's business stature in India and internationally.
The Complainant contends that innocent consumers will be misled by the disputed domain name and that the clear intention of the Respondent appears to be to commit fraud and to mislead such consumers by unfair and dishonest means. The Complainant argues that the disputed domain name constitutes a misrepresentation to the public at large which cannot be a matter of mere coincidence and that it is the dishonest motive of the Respondent to register the disputed domain name to sell it to the Complainant. The Complainant asserts that the Respondent is a habitual cybersquatter engaged in a pattern of registering and using domain names in bad faith, noting that the Respondent has provided no evidence of any actual or contemplated good faith use of the disputed domain name and submitting that it is not possible to conceive of any plausible legitimate use by the Respondent. The Complainant adds that the disputed domain name is so obviously connected with a well-known mark that its use by someone with no connection to the Complainant suggests opportunistic bad faith. B. Respondent
The Respondent requests that the Complaint be denied and that a finding of reverse domain name hijacking be made.
The Respondent concedes that the second level of the disputed domain name contains the Complainant's mark but argues that the combination of letters is not unique to the Complainant. The Respondent states that at least two other organizations, one of which is the registrant of , use this acronym and that it also serves as an abbreviation for "electronic gas injection" in certain industries. The Respondent concludes that the letters may be used by numerous parties with none of them having exclusive rights therein.
The Respondent provides evidence that "Elgi" has been used both as a first and last name throughout the world across nine and seven countries respectively. The Respondent adds that "Elgi" is a geographic term being the name of a river in Russian Federation.
The Respondent asserts that the rights and legitimate interests of generic domain name resellers have been upheld under the Policy adding that four letter domains are considered as inherently having value because of their appeal as being simplistic. The Respondent submits that it had neither actual nor constructive knowledge of the Complainant when it registered the disputed domain name on June 24, 2007. The Respondent refers to an article produced by the Complainant dated November 28, 2012 in which it is noted that the Complainant has acquired a United States based compressor maker, noting that the sub-title to the article expressly states that the purchase will give the Complainant a strong foothold in a market where it is not present. The Respondent argues that this demonstrates that the Complainant did not have a significant presence in the United States until more than five years after the Respondent registered the disputed domain name.
The Respondent produces evidence showing that the Complainant's United States registered trademarks were not filed until March 14, 2013 and February 28, 2016, adding that these dates are five and eight years respectively after the Respondent registered the disputed domain name. The Respondent submits that the Complainant's lack of presence and trademark filings within the United States lend strong support to the Respondent's contention that it registered the disputed domain name as a non-distinctive four letter domain name without actual or constructive notice of the Complainant.
The Respondent refers to the case of Voys B.V., Voys United B.V. v. Thomas Zou,WIPO Case No. D2017-2136, contending that this is authority for its proposition that where a registrant's motivation for registering a generic domain name covered by a foreign mark was explored, the lack of presence within the jurisdiction where the registrant was based was a deciding factor in favor of such registrant. The Respondent submits that during the more than eleven years that it has held the disputed domain name it has never sought to sell it to the Complainant or one of its competitors and that there is no evidence that the Respondent has ever used it in a way to divert or confuse the Complainant's customers, tarnish the Complainant's marks or pass itself off as the Complainant. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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. A. Identical or Confusingly Similar
The Panel finds that the Complainant has UDRP-relevant rights in its ELGI registered trademark. The generic Top-Level Domain, in this case ".net", is typically disregarded for the purposes of comparison with the relied-upon mark. The Parties have agreed that such mark is identical to the second level of the disputed domain name and the Panel so finds.
In all of these circumstances, the Panel finds that the Complainant has met the test under the first element. B. Rights or Legitimate Interests
The requirements of paragraph 4(a) of the Policy are conjunctive. A consequence of this is that failure on the part of a complainant to demonstrate one element of the Policy will result in failure of the complaint in its entirety. Accordingly, in light of the Panel's finding in connection with registration and use in bad faith, it is unnecessary for the Panel to address the issue of the Respondent's rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, 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 you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your website or location."
It is an essential requirement of this element of the Policy that the two components of both registration in bad faith and use in bad faith must be proved by the Complainant on the balance of probabilities. In respect of registration in bad faith, the Complainant must show that the Respondent had the Complainant's rights in mind when it registered the disputed domain name and that it proceeded with bad faith intent to target such rights. The Complainant's case is that its trademark is a distinctive made-up term which is in widespread use and is well-known such that the Respondent must have had knowledge of and intent to target it. The Respondent counters that it had no knowledge of the Complainant or its rights and was merely investing in a four character domain name with a variety of possible uses.
The Complainant has set out reasonable evidence of the extent of its contemporary activities under the ELGI mark. These are substantial and there is no doubt that as at the date of the Complaint its reach extends to the United States where the Respondent is based. However, the Respondent is correct to point out that the Complainant's acquisition of its manufacturing base in the United States in 2012 post-dates the registration of the disputed domain name by some five years and that, furthermore, in media coverage of this event produced by the Complainant an article notes that this purchase "will give Elgi a strong foothold in a market where it is not present". In other words, an independent media report supports the Respondent's position in that it indicates that the Respondent is unlikely to have known of the Complainant because it had no market presence in the United States when the Respondent registered the disputed domain name and would not do so for a further five years thereafter. The Respondent's evidence that the filing of the Complainant's United States registered trademarks also post-date the registration of the disputed domain name by a number of years provides further support for its case.
How then does the Complainant say that the Respondent would have known of the Complainant's mark and have intended to target this? Did the reach of the Complainant's trademark or its commercial activities otherwise extend to the United States prior to the acquisition of its manufacturing base and if so did this arise from distribution of its products, the existence of a substantial Internet presence or some other reason? The Panel does not know because the Complaint is silent on these topics other than to mention that its own domain name was registered in 1997 and has been "actively used" since that date. This is the only reference to the extent of the Complainant's own Internet presence. The Complainant does not address itself to the position in 2007 at all nor indeed to the history of the disputed domain name over the last eleven years. Furthermore, there is evidence before the Panel that while the Complainant's ELGI mark can refer to the Complainant it does not do so exclusively and there are other uses in existence including as an industry acronym, a geographic term, and a personal name. The Panel can appreciate how these factors might have appealed to a domain name investor such as the Respondent in connection with its acquisition of generic four-character domain names so long as his intent was not to register the disputed domain name by way of targeting any rights third parties may have respectively in such term. Weighing these factors in the balance, therefore, the Panel has come to the conclusion that the Complainant has failed to prove that the disputed domain name was registered in bad faith.
Before leaving this topic, however, the Panel wishes to deal with the Complainant's screenshot of the website associated with the disputed domain name. As noted above, the screenshot is not accompanied by any commentary from the Complainant other than in connection with the language used. It is not dated, although, given the terms of the copyright notice, may date from 2018. This screenshot features what appears to the Panel to be pay-per-click links which are targeted to the line of business of the Complainant, namely air compressors. While this may be a contemporary screenshot, it does not sit well with the Respondent's assertion that it has never targeted the Complainant. Nevertheless, the Respondent is only required to meet the Complainant's case and the Complaint did not directly address itself to the presence of these apparently targeted links.
While the screenshot might be said to be unhelpful to the Respondent's case, the position remains inconclusive due to the fact that it has been presented in something of a vacuum. Neither the additional screenshot in the case file nor the website itself when visited by the Panel show any targeting of the Complainant's rights. The Complainant does not describe the manner in which its screenshot was obtained. Nor, as noted above, does it present any evidence as to the history of content to which the disputed domain name has pointed over the last eleven years. If a reasonable history of pay-per-click usage targeting the Complainant and commencing around the time of registration of the disputed domain name and at various points thereafter had been available this might have been supportive of the Complainant's case that the Respondent more probably than not possessed the knowledge and intent to target it at the point of registration of the disputed domain name.
In any event, the Panel can identify at least two exculpatory factors which might have been put forward by the Respondent had the matter been more firmly pressed by the Complainant. First, it is possible that the links on the Complainant's screenshot were automatically generated and have since been suppressed by the Respondent as soon as it became aware of the Complainant's concerns. Secondly, and perhaps more probably, the links may be in effect "geo-targeted", so that in the Respondent's country, and in the Panel's country, they appear unrelated to the Complainant's activities while they become focused on the Complainant's line of business when accessed from India given the Complainant's substantial presence and activities in its home country. This may be a matter of which the Respondent was entirely unaware prior to the filing of the present Complaint.
In any event, the Panel determines that the Complainant's contemporary screenshot is insufficient on its own to displace the evidence of a more substantial nature pointing to a good faith motivation in the Respondent's registration of the disputed domain name some eleven years ago and accordingly finds that the Complainant has failed to prove on the balance of probabilities that the disputed domain name has been registered and is being used in bad faith. In these circumstances the third element under the Policy has not been established and the Complaint fails. E. Reverse Domain Name Hijacking
The Respondent requests a finding of Reverse Domain Name Hijacking in the present case. This term is defined in the Rules as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name". It is generally accepted that mere lack of success of the Complaint is not itself sufficient for such a finding. Further discussion as to the nature of Reverse Domain Name Hijacking and the typical circumstances in which it may be found are detailed in section 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0").
The evidence in the present case indicates that the Complainant possesses a well-known mark, at least in 2018 and at least in India. There is some, albeit limited and inconsistent, evidence that the mark may be the subject of contemporary targeting by way of the pay-per-click links shown on the Complainant's screenshot. In these circumstances, the Panel considers that the Complainant was entitled to bring a complaint under the Policy to challenge the Respondent's registration and use of the disputed domain name. The failure of the Complaint to address the issue of the Respondent's potential knowledge of the Complainant's rights at the time of registration, particularly given the very clear implication from the media article of a lack of United States market presence, and its failure to provide greater information surrounding the screenshot and/or history of website content relative to the disputed domain name are more likely in the Panel's view to result from inadequate preparation of the Complaint rather than indicating that the Complaint itself was actuated out of malice.
In the above circumstances, the Panel declines to make a finding of Reverse Domain Name Hijacking. 7. Decision
For the foregoing reasons, the Complaint is denied.
Andrew D. S. Lothian
Sole Panelist
Date: September 7, 2018
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