Complainant is W of Tel Aviv, Israel, internally-represented.
Respondent is Domain Admin, Privacy Protect, LLC (PrivacyP) of Burlington, Massachusetts, United States of America / Luciana Gomes of London, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 31, 2019. On February 1, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 2, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 5, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on February 6, 2019.
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 Respondent of the Complaint, and the proceedings commenced on February 14, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 6, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 7, 2019.
The Center appointed Robert A. Badgley as the sole panelist in this matter on March 19, 2019. 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
Complainant is a company based in Israel. Complainant annexes to the Complaint six summaries of trademark registrations with the United States Patent & Trademark Office (“USPTO”). Four of these USPTO registration summaries appear to relate to trademarks registered after the date on which the Domain Name was registered, i.e., February 15, 2012. The two USPTO trademark registration summaries predating the date of Domain Name registration are as follows: (1) USPTO Reg. No. 3,655,335 for WIX, registered July 14, 2009, for “computer software for creating web pages and hosting web content” (date of first use January 2007); and (2) USPTO Reg. No. 3,824,854 for WIX, registered July 27, 2010, for “providing temporary use of on-line non-downloadable computer software for creating web pages and hosting web content” (date of first use January 2007).
Apart from the trademark summaries annexed to the Complaint, the record contains no information about Complainant or its activities. It is not known how extensively, in a particular jurisdiction or even in general, Complainant has used the WIX mark. Nor is it known from the record whether and to what extent the WIX mark has acquired actual recognition in any particular jurisdiction as a distinctive source identifier. There is no allegation in the Complaint, nor any support in the annexes thereto, that Complainant’s WIX trademark is well-known in any particular jurisdiction in the world.
As noted above, the Domain Name was registered on February 15, 2012. The Domain Name does not resolve to an active website. Nothing is known about Respondent or her activities. There is no record of communication between the Parties prior to the commencement of this proceeding. 5. Parties’ Contentions A. Complainant
Complainant asserts that it has established the three elements required under the Policy for a transfer of the Domain Name. B. Respondent
Respondent has not replied to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights in the mark WIX through the registrations reflected in the annexes to the Complaint. The Panel also finds the Domain Name to be confusingly similar to the WIX mark, as the Domain Name incorporates the WIX mark in its entirety and adds the common term “links.”
Complainant has established Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel need not decide this issue, in view of its decision below on the issue of bad faith. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Complainant has not proven that Respondent registered and used the Domain Name in bad faith. Complainant’s entire argument to support its claim of Respondent bad faith is as follows:
“The Respondent is neither using the disputed domain name in connection with a bona fide offering of goods or services nor making legitimate noncommercial or fair use of the disputed domain name. In addition, the domain name was purchased on February 15, 2012, which is after the registration of the Wix trademark and [sic] several jurisdictions worldwide (see for example annexes 7 and 8 [these are the two USPTO summaries for the WIX mark registrations that predate February 15, 2012]).”
This bare allegation – even if supported by evidence (which it is not here) – does not suffice for the Panel to find bad faith registration and use of the Domain Name on a balance of probabilities. There is no basis in the record for the Panel to conclude (or, indeed, even suspect) that Respondent actually had Complainant’s WIX mark in mind when she registered the Domain Name more than six years ago. Complainant has not provided any basis for the Panel to conclude that its WIX mark is sufficiently well known that one would reasonably find it more likely than not that Respondent knew of the WIX mark. Complainant essentially argues that it owns the registered trademark WIX (which is true), and therefore the Domain Name must be registered and used in bad faith. (Indeed, this Complainant’s “bad faith” argument in its original Complaint consisted of the following and nothing more: “The domain name is confusingly similar to Wix trademark and service mark in which Wix has rights.”)
In sum, Complainant has alleged no facts (and provided no evidentiary basis) on which the Panel could conclude that Respondent targeted Complainant’s WIX mark and used it in bad faith within the meaning of the Policy. The Complaint fails. 7. Decision
For the foregoing reasons, the Complaint is denied.
Robert A. Badgley
Sole Panelist
Date: March 20, 2019
Full & Egal Universal Law Academy