The Complainant is Genan A/S, Denmark, represented by Løje, Arnesen & Meedom LLP, Denmark.
The Respondent is Domain Admin, United States of America (“USA”), self-represented. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 5, 2019. On September 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 6, 2019, 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 proceeding commenced on September 16, 2019. In accordance with the Rules, paragraph 5, the due date for the Response was October 6, 2019. The Response was filed with the Center on October 6, 2019. The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on October 23, 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 A. Complainant The Complainant is a company incorporated in Denmark in 1975 and the operator of the world’s largest automobile tyre recycling business. The Complainant is the owner of the trade mark GENAN (the “Trade Mark”), used continuously since 1990 in respect of the Complainant’s tyre recycling business. The Trade Mark is a fanciful term first coined and used by the Complainant, being an abbreviation of the Danish word “genanvende”, which means “recycle” in Danish. The holding company of the Complainant, Genan Holdings A/S, is the owner of registration No. VR 2013 02304 for the Trade Mark in Denmark, registered since December 16, 2013. The Complainant is also the owner of several domain names comprising the Trade Mark, including The Complainant has used the Trade Mark in the USA since at least November 2007, when a subsidiary within the Complainant’s group of companies, Genan Inc., was incorporated in the State of Delaware. A second subsidiary in the USA, Genan Sales & Logistics, Inc., was incorporated in the State of Delaware in December, 2009. In 2014, the Complainant opened the world’s largest tyre recycling facility in Houston, Texas, USA. In response to an approach from the Complainant in February asking whether the Respondent was interested in selling the disputed domain name, the Respondent responded, on February 24, 2019, as follows: “This domain is reserved for our own use. If you are interested in it, we can consider selling it to you at US$25,000”. B. Respondent The Respondent is an individual resident in the USA. C. The Disputed Domain Name The disputed domain name was first registered on February 22, 2000. The disputed domain name was purchased by the Respondent on December 19, 2018, for US$2,275.00. D. Passive Use of the Disputed Domain Name The disputed domain name has not been used by the Respondent. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is identical or confusingly similar to the Trade Mark; the Respondent has no rights or legitimate interests in respect of the disputed domain name; and the disputed domain name has been registered and is being used in bad faith. B. Respondent In respect of the first limb under paragraph 4(a) of the Policy (the “First Limb”), the Respondent contends that the term GENAN is not distinctive and fanciful, and the Complainant has no exclusive rights to use it. In respect of the second limb under paragraph 4(b) of the Policy, the Respondent contends that GENAN is the romanization form of the popular Japanese dictionary term “原案”, meaning “draft”, “original plan” and “original bill”. The Respondent contends that the term GENAN is subject to substantial third party use and is inherently not distinctive, and relies in this regard on a Google search of “genan”, excluding the words “tire”, “tyre”, “rubber”, “recycle” and “recycling”, to avoid references to Complainant, which returns more than 600,000 results. The Respondent contends that he registered the disputed domain because it incorporated a common dictionary term, and was thus desirable. The Respondent asserts that his willingness to sell the (generic) disputed domain name for a profit is not improper and is itself an accepted business practice under the Policy. In respect of the third limb under the Policy, the Respondent contends that his plan is to make legitimate use of the disputed domain name, in its generic sense, for an online storage and communication platform for cartoon designers to store, discuss and get feedback on their design drafts. The Respondent contends further, on the question of bad faith, as follows: “The registration of the disputed domain name was entirely in good faith, without any intent to target Complainant. Respondent registered the disputed domain name because it incorporated a common dictionary term and happened to be offered for sale at an online auction. Respondent did not register the disputed domain name with Complainant’s mark in mind. Complainant’s mark is in a rather specialized area. Complainant has produced no evidence that its mark is famous outside of the specialized circles in which it operates. Besides pure assumptions, Complainant has proffered no evidence demonstrating that Respondent had any knowledge of its mark or business operations at the time that the disputed domain name was bought. There is no evidence showing that Complainant’s mark is famous to the general public, or specifically to the general public in United States where Respondent resides. At the time of registration, Respondent not only had never heard of Complainant, but held the reasonable view that no one party could claim exclusive rights in the common generic term subject to substantial third party use.” The Respondent contends further that his willingness to sell the disputed domain name for USD 25,000.00 in response to the Complainant’s inquiry is not evidence of bad faith. The Respondent also contends that the Complainant’s delay in taking action for over a decade raises the inference that the Complainant did not truly believe the Respondent’s or other parties’ registration and use of the disputed domain was in bad faith; and that it was only after it was unable to purchase the disputed domain name from the Respondent that the Complainant filed the Complaint, attempting to use the UDRP process as a venue to wrest the disputed domain name from Respondent. 6. Discussion and Findings The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail. A. Identical or Confusingly Similar The Panel finds that, for the purposes of the Policy, the Complainant has rights in the Trade Mark acquired through use and registration. With respect to the Respondent’s submissions: (i) Whether or not the Trade Mark is distinctive or fanciful is not relevant for the purposes of the First Limb; and (ii) For the purposes of the First Limb, the jurisdiction(s) in which, and the goods and services in respect of which, the Complainant possesses valid rights in the Trade Mark are not considered relevant (see section 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The disputed domain name is identical to the Trade Mark (disregarding the generic Top-Level Domain (“gTLD”) “.com”). The Panel therefore finds that the disputed domain name is confusingly similar or identical to the Trade Mark. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name: (i) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or (ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if the respondent has acquired no trade mark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption. The Respondent has failed to show that he has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. The Panel notes that the disputed domain name was purchased by the Respondent in December 2018 and, to date, the Respondent has not made any use of the disputed domain name. The Respondent has not submitted any evidence to establish demonstrable preparations to use the disputed domain name (in accordance with paragraph 4(c)(i) of the Policy), but has simply asserted that he intends to use the disputed domain name for an online storage and communication platform for cartoon designers to store, discuss and get feedback on their design drafts. The Panel considers there is a certain inconsistency between, on the one hand, the Respondent asserting that GENAN is a common dictionary term, and there is accordingly nothing wrong with the Respondent acquiring the disputed domain name for the purpose of selling it, and, on the other hand, the Respondent asserting (absent any evidence) that he intends to use the disputed domain name in respect of his putative website. The Panel considers it is also informative that the Respondent has made no direct submissions that he intends to use the disputed domain name in respect of the asserted Japanese language meaning of the romanized term “genan”; nor does the Respondent directly assert that he registered the disputed domain name because of its Japanese language meaning. There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name; and there has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. The Panel finds that the Respondent has failed to produce any evidence to rebut the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Respondent lacks rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith The Panel has carefully considered the submissions in the Response, including in particular the Respondent’s assertion that he had no knowledge of the Complainant and of its rights in the Trade Mark at the time of his purchase of the disputed domain name. The Panel notes that, contrary to the assertions of the Respondent, the Trade Mark is not a common dictionary term. In fact, the term does not turn up at all in English language dictionaries. The Panel accepts that the phonetic transliteration in Latin text of the Japanese language term “原案” is “genan”. The Respondent, an individual based not in Japan but in the USA, has since 2018 made no use of the disputed domain name with respect to the Japanese language term (or indeed otherwise). It is also noteworthy that the Respondent has not claimed that he registered the disputed domain name because of its Japanese language meaning. In response to the Google search results relied upon by the Complainant and annexed to the Complaint, the Respondent relies upon a selective Google search, with the terms ““tire”, “tyre”, “rubber”, “recycle” and “recycling”” deliberately omitted, in support of his contentions (i) that the Complainant and its Trade Mark are not well known; and (ii) that the Respondent accordingly had no knowledge of the Complainant and its Trade Mark prior to the filing of the Complaint herein. The Panel does not find the limited Google search relied upon by the Respondent of much assistance. A Google search for the Trade Mark without any of these terms omitted overwhelmingly returns, on the first page, hits relating exclusively to the Complainant, including in particular, reference to the world’s largest tyre recycling facility operated in Texas, USA since 2014. In all the circumstances, and in light of the evidence placed before the Panel by the Parties, the Panel accepts that “genan” is a fanciful term, without any dictionary meaning in the English and Danish language, first coined and used by the Complainant as a Trade Mark in respect of its tyre recycling goods and services. In light of the Complainant’s reputation in the Trade Mark, in particular in the USA where the Respondent is located, and for the reasons set out above, the Panel does not accept that, at the time of the Respondent’s purchase of the disputed domain name for USD 2,275.00 in December, 2018, the Respondent was not aware of the Complainant and of its rights in the Trade Mark. The Panel considers it is more likely that, prior to paying what is a not an insignificant sum for the purchase of the disputed domain name, the Respondent would have conducted some basic searches, such as a Google search for the Trade Mark, the first page of which contains search results referring exclusively to the Complainant and its goods and services offered under the Trade Mark, including in particular its recycling plant in Texas. The Panel considers that the following factors support the conclusion that the Respondent must have been aware of the Complainant and of its rights in the Trade Mark at the time of his purchase of the disputed domain name: (i) The repute of the Trade Mark, including in particular in the USA, in the tyre recycling field; (ii) The fact the disputed domain name is (disregarding the gTLD <.com>) identical to the Trade Mark; (iii) The Respondent’s passive use of the disputed domain name; (iv) The lack of any evidence in support of the Respondent’s asserted planned use of the disputed domain name; (v) The lack of evidence (or submissions) to show any correlation between the Japanese language meaning of the romanized term “genan” relied upon by the Respondent, and the Respondent’s planned use of the disputed domain name; and (vi) The other apparent inconsistencies in respect of the various contentions put forward by the Respondent, as highlighted in section 6, above. In all the circumstances, the Panel considers that the disputed domain name has been registered and used in bad faith, both under paragraph 4(b)(i) of the Policy (by virtue of the Respondent’s offer to sell the disputed domain name for the not insubstantial sum of USD25,000.00); and under the Panel’s general (and not restricted) discretion under paragraph 4(b) of the Policy. The Panel considers that, in all the circumstances, a further, although not in itself determinative factor, is the fact the Respondent has chosen to register the disputed domain name using a privacy protection service provided by the Registrar. For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used 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 Sebastian M.W. Hughes
Sole Panelist
Dated: November 6, 2019
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