Complainant is In Loco Tecnologia da Informação S.A., Brazil, represented by Montaury Pimenta Machado & Vieira de Mello, Brazil.
Respondent is Perfect Privacy, LLC., United States of America / Dermot O’Halloran, ZZG Ltd, United Kingdom, represented by Briffa Solicitors, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2019. On November 8, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 8, 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 Complainant on November 12, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. The Center received an email communication from Respondent on November 13, 2019, updating the contact information disclosed by the Registrar. Complainant filed an amendment to the Complaint on November 18, 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 November 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 8, 2019. On December 6, 2019, the Center received a request from Respondent for an extension of the Response due date. On December 6, 2019, pursuant to paragraph 5(b) of the Rules, the Response due date was extended until December 12, 2019. The Response was filed with the Center December 12, 2019. On December 13, 2019, the Center acknowledged receipt of the Response and notified the Parties that it would proceed to panel appointment. On December 22, 2019, Complainant contacted the Center requesting the suspension of the proceedings for 30 days for purposes of settlement negotiations between the Parties. On December 26, 2019, the proceedings were suspended until January 25, 2020. Following the Center’s reminder regarding the end of the suspension on January 25, 2020, Complainant requested the extension of the suspension period on January 27, 2020. On January 27, 2020, the suspension period was extended until February 26, 2020. On February 26, 2020, Complainant contacted the Center requesting the termination of the proceedings, since the Parties were unable to reach a settlement. On February 26, 2020, the Center invited Respondent to submit its agreement or objection to Complainant’s request for termination. On March 2, 2020, Respondent submitted its objection to Complainant’s termination request. On March 3, 2020, the Center contacted the Parties, acknowledging Respondent’s objection, and notifying the Parties that it would proceed with panel appointment. The Center appointed Georges Nahitchevansky, Wilson Pinheiro Jabur, and The Hon Neil Brown QC as panelists in this matter on March 12, 2020. 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 Complainant, In Loco Tecnologia da Informação S.A., is a Brazilian technology company. Complainant was established in 2014 in Brazil. Complainant is the owner of several trademark registrations and applications in Brazil for the mark IN LOCO either alone, with other words such as INLOCOMEDIA, or with a design. Complainant’s earliest trademark registrations are for INLOCOMEDIA, which issued to registration on January 24, 2017 (Registration Nos. 908174128, 908174039, and 908174195). Complainant’s earliest registrations for IN LOCO as a word mark date back to April 16, 2019 (see, e.g., Registration Nos. 912563370 and 912504170). Complainant also owns and uses the domain name Respondent is an individual with an address in the United Kingdom. Respondent registered the disputed domain name on January 30, 1999. 5. Parties’ Contentions A. Complainant Complainant argues that it is “one of the top startup companies in Brazil” and a market leader in its field and, as such, has developed rights in the IN LOCO name and mark in connection with a platform based on consumer location data. Complainant also maintains that it has rights in the IN LOCO name and mark by virtue of its registrations for the IN LOCO mark in Brazil. Complainant asserts that the disputed domain name is identical or confusingly similar to its IN LOCO mark as it fully, and solely, consists of the IN LOCO mark. Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name as Respondent (i) owns no registration or application for the IN LOCO mark, (ii) has no relationship with Complainant and has never been authorized by Complainant to register a domain name based on the IN LOCO mark, (iii) is not commonly known by the IN LOCO name and mark, and (iv) has not made any legitimate use of the disputed domain name. Lastly, Complainant argues that Respondent registered and has used the disputed domain name in bad faith as Respondent has made no use of the disputed domain name with an active website and is thus preventing Complainant from making use of the disputed domain name to identify its services on a global scale. Complainant maintains that Respondent’s bad faith is established by Respondent’s passive holding of the disputed domain name and Respondent’s use of a privacy shield to register the disputed domain name. B. Respondent Respondent rejects all of Complainant’s contentions and maintains that there is no basis for Complainant’s claims given that Respondent registered the disputed domain name in 1999, a date well before Complainant adopted and started using the name and mark IN LOCO in 2014. Respondent asserts that because Complainant and/or representatives of Complainant have made multiple attempts to acquire the disputed domain name from Respondent since 2014, Complainant is aware that Respondent has been the owner of the disputed domain name since 1999, a date well before Complainant adopted the IN LOCO mark for its services in Brazil. Respondent also asserts that Complainant has attempted to bait Respondent with more recent offers between USD 1,500 and USD 100,000 for the disputed domain name. Respondent maintains that he has a legitimate interest in the disputed domain name as he has registered multiple domain names based on common Latin phrases and registered the disputed domain name for use with a project that he was developing in the field of recruitment, assessment, and matching people to jobs. Respondent also argues that the disputed domain name is based on a common Latin phrase and that such phrase is used by many other parties around the world in connection with variety of goods and services. Respondent further contends that there is no evidence that Respondent ever took steps to take advantage of any rights Complainant might have in the IN LOCO name and mark in Brazil in connection with its technological services and platform. Lastly, Respondent maintains that Complainant has brought this proceeding in bad faith and asks for a finding that Complainant has engaged in reverse domain name hijacking. 6. Complainant’s Request to Terminate the Proceeding Complainant has requested a termination of the proceeding and Respondent has objected insofar as Complainant has requested that such termination be without prejudice. Respondent maintains that the termination should be with prejudice and requests that the Panel make a finding that Complainant has engaged in reverse domain name hijacking. Paragraph 10(a) of the Rules provides that a Panel shall conduct the proceeding in such manner as it considers appropriate in accordance with the Policy and the Rules. Paragraph 17(b) of the Rules further provides that “if, before the Panel's decision is made, it becomes unnecessary or impossible to continue the administrative proceeding for any reason, the Panel shall terminate the administrative proceeding, unless a Party raises justifiable grounds for objection within a period of time to be determined by the Panel”. Here, while it is unnecessary for the Panel to rule on whether to transfer the disputed domain name to Complainant, Respondent has raised justifiable objections regarding whether the termination should be with prejudice and whether Complainant has engaged in reverse domain name hijacking. Based on its review of the file and the history of matter, the Panel determines that Respondent is entitled to a decision on both issues raised by Respondent. This is particularly so given that as discussed below, Complainant could have withdrawn the Complaint well before Respondent was put to the expense and burden of filing a Response and requesting a three person panel for the matter. In the Panel’s view, it would be unfair to Respondent to allow Complainant to withdraw a case without prejudice after a response has been filed by a respondent and the respondent does not expressly consent to a subsequent withdrawal as being without prejudice. To allow a complainant to simply withdraw a complaint without prejudice after a response has been filed would allow for the possibility of a complainant refiling a complaint against the same respondent at a later point. Such “eleventh hour withdrawals” of complaints without prejudice invites the filing of potentially abusive complaints for strategic reasons. Indeed, many national courts, such as the courts in the United States, do not allow for the withdrawal of a complaint without prejudice after a responsive pleading has been made, unless the defendant or the court consents. In the instant case, Respondent does not consent to a withdrawal without prejudice and, as such, any termination should be with prejudice to avoid further filings by Complainant against Respondent concerning the disputed domain name. That being said, the Panel has, as explained below, decided in its discretion to issue a ruling in the matter. With regard to Respondent’s request for a ruling that Complainant has engaged in reverse domain name hijacking, the Panel believes that Respondent is entitled to a decision on whether or not this proceeding has been brought in bad faith and was abusive. The fact that Complainant has chosen to terminate the proceeding does not preclude the Panel from considering whether or not Complainant has used the UDRP process in bad faith in an attempt to deprive Respondent of the disputed domain name. SeeWIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at sections 4.16. 7. Discussion and Findings on Reverse Domain Name Hijacking (“RDNH”) Paragraph 15(e) of the Rules provides that if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at RDNH or was brought primarily to harass the domain name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. Moreover, under Paragraph 1 of the Rules, RDNH is defined as “using the Policy in bad faith to attempt to deprive the registered domain name holder of a domain name”. To be sure, when a complaint has failed, such does not automatically result in a finding of RDNH. The touchstone under Rule 15(e) is for a panel to determine whether the complaint constitutes an abuse of the administrative proceeding. For purposes of determining whether Complainant has engaged in RDNH, the Panel needs to review Complainant’s case against Respondent concerning the disputed domain name based on the submissions of the parties. Put another way, the Panel needs, first, to make a ruling on Complainant’s case as part of the usual UDRP examination of the three elements set out in paragraph 4 of the Policy before it determines whether or not the Complaint constitutes an abuse of the administrative process. Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that: (i) the disputed 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 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 threshold for satisfying this first element is sometimes expressed as a “low” one and generally panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold. Respondent does not contest that the disputed domain name fully consists of the phrase “in loco”, which is identical to Complainant’s claimed IN LOCO mark. Thus, for purposes of paragraph 4(a)(i) of the Policy, the Panel is willing to find that Complainant has established sufficient rights for purposes of the first element and that the disputed domain name that fully consists of IN LOCO is identical to Complainant’s claimed IN LOCO name and mark. B. Rights or Legitimate Interests Given that Complainant’s Complaint fails on the third element, as discussed below, the Panel does not need to address whether Respondent has rights or legitimate interests in the disputed domain name. The Panel notes, however, that Complainant’s sparse evidence in this matter fails to establish that Respondent lacks legitimate interests in the disputed domain name, particularly as there is no evidence that Respondent registered the disputed domain name to take advantage of any rights Complainant might arguably claim in the IN LOCO name and mark in Brazil in relation to its technology services and platform. To be sure, the phrase “in loco” is a common Latin phrase meaning “in the place” or “in the right or proper spot”. Complainant, here, has failed to provide any evidence that would establish or suggest that Respondent, who registered the disputed domain name some 15 years before Complainant adopted the name and mark IN LOCO for its services, has ever sought to profit from the disputed domain name at the expense of Complainant. C. Registered and Used in Bad Faith Under Paragraph 4(a)(iii) of the Policy, a complainant must establish the conjunctive requirement that the respondent registered and used the disputed domain name in bad faith. However, while the assessment of a respondent’s legitimate rights or interests in a disputed domain name is typically assessed at the time of the complaint, the question of whether a disputed domain name was registered in bad faith has to be assessed at the time of the registration of the disputed domain name by the respondent. As Respondent registered and has owned the disputed domain name since January 1999, in order for Complainant to prevail it needs to establish that it had rights in IN LOCO as a trademark prior to January 1999. Based on the evidence submitted, Complainant’s adoption and use of IN LOCO only commenced in 2014, some 15 years after Respondent registered the disputed domain name. Consequently, Complainant has failed to meet its burden of showing that Respondent registered the disputed domain name in bad faith, as Respondent could not have acted in bad faith to take an advantage of Complainant’s alleged IN LOCO mark that did not exist in January 1999 when Respondent registered the disputed domain name. Accordingly, the Complainant has failed to establish the third element under the Policy and the Complaint is hereby dismissed. D. Reverse Domain Name Hijacking The question that is thus before the Panel is whether Complainant’s filing of the Complaint was objectively unreasonable under the circumstances and constitutes an abuse of the administrative proceeding. Complainant filed a case regarding a domain name that fully consists of a common Latin phrase, and did so without providing any evidence that Respondent had registered or used the disputed domain name to take advantage of Complainant’s claimed rights in the IN LOCO name and mark in connection with Complainant’s technological services. Added to that lack of evidence is the fact that Respondent registered the disputed domain name some 15 years before Complainant adopted the name and mark IN LOCO for its services and thus could not have registered the disputed domain name in bad faith. While the Whois information for the disputed domain name was masked at the time the Complaint was filed, Complainant had ample reason to know that Respondent was likely the owner of the disputed domain name. Complainant and/or its representative made several prior attempts since 2014 to purchase the disputed domain name from Respondent, and in fact wrote directly to Respondent using his name -- a fact that was not disclosed by Complainant in its Complaint. Nevertheless, Complainant initiated and maintained this proceeding when Complainant knew, or ought to have known, its case was doomed to fail given the underlying facts and, in particular, Respondent’s registration of the disputed domain name many years before Complainant adopted the IN LOCO name and mark for its services. Indeed, the fact that Complainant continued with this proceeding after Complainant was specifically advised that Respondent was the registrant of the disputed domain name further underscores Complainant’s abuse of the administrative proceeding. Once it was disclosed to Complainant that Respondent was the registrant of the disputed domain name, Complainant ought to have known that it would not succeed under any fair interpretation of the facts reasonably available. Simply put, there was no reasonable basis for Complainant’s Complaint given the underlying facts and Complainant’s prior efforts to purchase the disputed domain name from Respondent. Yet, Complainant chose to proceed with the matter, filed an amended complaint, and put Respondent to the burden and expense of having to prepare a Response. Accordingly, the Panel finds that Complainant has abused the administrative proceeding and engaged in reverse domain name hijacking1 . 8. Decision For the foregoing reasons, the Complaint is denied and the Panel finds that Complainant has engaged in reverse domain name hijacking. Georges Nahitchevansky Wilson Pinheiro Jabur The Hon Neil Brown QC 1 Complainant filed an unsolicited supplemental filing on March 26, 2020, after the rendering of the Decision by the Panel. Accordingly, the Panel has decided not to accept or consider Complainant’s supplemental filing.
Presiding Panelist
Panelist
Panelist
Date: March 24, 2020
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