The Complainant is Mubadala Trade Marks Holding Company - LLC & Mubadala Investment Company PJSC, United Arab Emirates, represented by Allen & Overy LLP, United Kingdom.
The Respondent is Domains by Proxy, LLC, United States of America / Not forsale and Patricia Concepcion Gonzalez Zamora, United States of America, represented by Lewis & Lin, LLC, United States of America. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2019. On July 9, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 10, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 11, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 16, 2019. The Center verified that the Complaint together with the amended 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 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 7, 2019. The Response was filed with the Center on August 7, 2019. On August 14, the Complainant requested the Center to suspend the proceeding to explore possible settlement. Accordingly, the proceeding was suspended from August 15 to 28, 2019. Upon the Complainant’s email dated August 29, 2019, the Center notified the Parties of the commencement of panel appointment process. On September 4, 2019, the Complainant submitted a “Further Statement by the Complainant” addressing certain matters that the Respondent raised in the Response. On September 11, 2019, the Respondent submitted “Respondent’s Response to Complainant’s Unsolicited Supplemental Filing”. The Center appointed Evan D. Brown, Diane Cabell and Isabelle Leroux as panelists in this matter on October 10, 2019. The Panel finds that it was properly constituted. Each member of 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 based in the United Arab Emirates and has investments or operations in more than 30 countries in a wide variety of industries. In 2017, the Complainant launched a venture capital arm called Mubadala Ventures, having locations in San Francisco, London and Abu Dhabi. The Complainant owns a number of trademark registrations for variations of the mark MUBADALA (and Design), including United Arab Emirates Registration Number 111969, registered on February 2, 2010. On April 25, 2017, the Complainant filed an intent-to-use application for the mark MUBADALA (and Design) with the United States Patent and Trademark Office (“USPTO”). The Panel’s independent research of this trademark application (which the Panel is permitted to conduct under the general powers of a panel articulated in the Rules) shows that the Complainant has filed a Statement of Use, alleging that it first used the MUBADALA (and Design) mark in United States commerce in 2018. The Respondent – though identified by the Registrar and designated in the amended Complaint as “Not forsale” – identifies herself as Patricia Concepcion Gonzalez Zamora in the Response and accompanying affidavit. The Respondent holds a bachelor’s degree in business from Phoenix University and works as a manager at Bass Pro Shop in San Jose, California, United States of America. She registered the disputed domain name on May 22, 2016. Since that time she has not published a website at the disputed domain name but has permitted the Registrar to display links to third-party sponsored listings. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademarks; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith. B. Respondent The Respondent concedes that the disputed domain name is identical or confusingly similar to the Complainant’s trademarks but disputes that she lacks rights or legitimate interests in the disputed domain name, and also disputes that she registered and used the disputed domain name in bad faith. 6. Discussion and Findings A. Procedural Issues Under paragraph 10 and 12 of the Rules, this Panel has accepted both the Complainant’s and the Respondent’s supplemental filings. 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. The Panel finds that the Complainant has not successfully established all three of these elements. B. Identical or Confusingly Similar The Complainant has established this first element of the Policy, and the Respondent does not contest that the disputed domain name is identical or confusingly similar to the Complainant’s marks, of which it has rights. C. Rights or Legitimate Interests Because the Panel has determined that the Respondent did not register the disputed domain name in bad faith, as discussed in the section below, it needs not to address this second element under the Policy. For completeness, however, the Panel will address certain matters concerning the Respondent’s demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. A complainant is successful under this element of the Policy if it makes a prima facie showing that the respondent lacks rights or legitimate interests in the disputed domain name, and if the respondent does not rebut that presumption. Carrefour v. Kimo Nile,WIPO Case No. D2017-0259. The Panel finds that the Complainant has established, prima facie, that the Respondent lacks rights or legitimate interests in the disputed domain name, based on the Complainant’s assertions that (a) the Respondent is not commonly known by the disputed domain name, (b) the Respondent has not been authorized by the Complainant to use the disputed domain name, and (c) use of the disputed domain name to show links to third party sites, in these circumstances, is not a bona fide offering of goods and services. In the Response and in the accompanying affidavit, the Respondent explains that she registered the disputed domain name as part of an idea she had – inspired both by college coursework and a practical need in her personal life – concerning the establishment of a website whereby parties could “barter” for services. She also included with the Response a purported mock-up (i.e. draft version) of what she hoped this website would look like. The Parties dispute what the mock-up shows. In its supplemental filing (which the Panel hereby exercises its discretion to consider), the Complainant seeks to reduce the effect of the mock-up and otherwise discredit the notion that it shows the Respondent had made demonstrable preparations to use the disputed domain name. The Respondent (likewise in a supplemental filing that the Panel will also consider) reiterates that the mock-up was intended to be an internal working document. The Respondent also seeks to minimize the Complainant’s attack on the mock-up as being comprised largely of copied-and-pasted third party materials. The majority of the Panel finds the Respondent’s evidence on this point to be unsatisfying. Although the Respondent’s sworn affidavit helps inform the Panel of the Respondent’s thoughts about her plans, the mock-up itself and the lack of any other external evidence is underwhelming. Had the mock-up shown the date on which it was created, or contained other information about its format, it would have been more compelling. The Respondent’s arguments in favor of bona fide use would likewise have been stronger had she included information of the sort set out in section 2.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), namely: (i) evidence of business formation-related due diligence, legal advice or correspondence, (ii) evidence of credible investment in website development or promotional materials such as advertising, letterhead, or business cards, (iii) proof of a genuine (i.e. not pretextual) business plan utilizing the domain name, and credible signs of pursuit of the business plan, (iv) bona fide registration and use of related domain names, or (v) any other evidence generally pointing to a lack of indicia of cybersquatting intent. On balance, the Panel finds that the Respondent has not overcome the Complainant’s prima facie showing on this second element of the Policy. D. Registered and Used in Bad Faith The Panel determines that the Complainant has not established this element under the Policy because the Panel finds that the Respondent did not know of the Complainant or its business at the time the Respondent registered the disputed domain name. The Complainant asserts that the Respondent knew or ought to have known of the Complainant’s trademarks and its business because the Complainant owns trademarks in countries around the world and is particularly well known in the Gulf region around its headquarters in the United Arab Emirates. The Complainant also argues that the inclusion of the word “ventures” in the disputed domain name shows that the Respondent is “well aware” of the Complainant’s business. Because of this purported knowledge, the Respondent (in the Complainant’s view) must have registered and started using the disputed domain name to either sell the disputed domain name for a profit, generate advertising revenue, or prevent the Complainant from registering the disputed domain name. These arguments do not persuade the Panel. The Respondent has provided competent evidence that, as an individual, working retail and uninvolved in the domain name business, she had never heard of the Complainant prior to the commencement of these proceedings. The record otherwise supports the Respondent’s assertion of lack of knowledge. The Complainant has not provided any argument or evidence as to why the Respondent, located in California, should have been aware of any trademarks for businesses that are particularly known in the Gulf region. The timing of the Complainant’s business expansion into the U.S. (which occurred upon the launch of its venture arm in San Francisco in 2017) does not help the Complainant’s argument. Likewise, the Complainant’s allegation to the USPTO of first use in commerce of 2018 is unhelpful. The Respondent registered the disputed domain name in 2016, before the purported business expansion and before the date of first use alleged to the USPTO. Alternatively, the Complainant argues that the Respondent’s registration of the disputed domain name can be considered “identical in effect” to passive holding. The Complainant cites to Société pour l’Oeuvre et la Mémoire d’Antoine de Saint Exupéry - Succession Saint Exupéry - D’Agay v. Perlegos Properties,WIPO Case No. D2005-1085 wherein the panel found bad faith because (a) it appeared that the respondent registered and used the disputed domain name to create an association with the complainant’s mark or title as a means of attracting users to the respondent’s future website, and (b) the respondent provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain name. The Panel in this case finds Saint Exupéry distinguishable. As noted above, the Panel finds that the Respondent had no knowledge of the Complainant’s marks or its business when it registered the disputed domain name. So, it cannot be that the Respondent registered the disputed domain name with the aim of creating an association with the Complainant’s marks. And unlike the respondent in Saint Exupéry, the Respondent has introduced at least some evidence of her contemplated good faith use of the disputed domain name. The Complainant has argued that the Respondent’s use of false registration information (the use of the name “Not forsale” and apparently bogus address information) shows bad faith. The Complainant also expressed concern that the Respondent may intend to offer the disputed domain name for sale but has not yet done so. In some circumstances, these facts would be definitive indicators of bad faith. But in this case, the Panel is disinclined to interpret them that way, given that (a) the Respondent has, through counsel, responded to the Complaint using her true identity, thereby no longer remaining elusive, and (b) the prospect of offering the disputed domain name for sale has not, even after ample opportunity, become a reality. 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 Evan D. Brown Diane Cabell Isabelle Leroux
Presiding Panelist
Panelist
Panelist
Date: November 1, 2019
Full & Egal Universal Law Academy