WIPO Domain Name Decision D2019-2753 for addgrabber.com, adgrabber.com

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Adgrabber AB v. Gordito AB, Robin Kochauf Case No. D2019-2753 1. The Parties

The Complainant is Adgrabber AB, Sweden, represented by SILKA Law AB, Sweden.

The Respondent is Gordito AB, Robin Kochauf, Sweden.

2. The Domain Names and Registrars

The disputed domain name is registered with Binero AB.

The disputed domain name is registered with GoDaddy.com, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 11, 2019. On November 11, 2019, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On November 12, 2019, the Registrars 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 November 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 8, 2019. The Response was filed with the Center on December 8, 2019.

The Center appointed Johan Sjöbeck as the sole panelist in this matter on December 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.

The Complaint was submitted in Swedish, however the registration agreement is in English. The Complainant requested the language of proceeding to be in Swedish considering that all previous communication with the Respondent had been conducted in Swedish and since the Respondent is a Swedish entity. The Respondent disagreed and requested English as the language of the proceeding to minimize interpretational error in the decision. In accordance with paragraph 11 of the Rules, and noting the Respondent’s objection to proceed in Swedish, the Panel has decided that the language of proceedings is English.

4. Factual Background

The Complainant has submitted evidence that it is the owner of the Swedish trademark registration for ADGRABBER (word) with registration number 548582, filing date August 20, 2018 and registration date October 16, 2018.

The disputed domain name was registered by the Respondent on August 10, 2018 and was registered by the Respondent on August 13, 2018. The disputed domain name currently resolves to an inactive page and the disputed domain name currently resolves to a parking page.

5. Parties’ Contentions A. Complainant

The Complainant, Adgrabber AB with Swedish company registration number 559168-3692, was created on August 8, 2018 and registered with the Swedish Companies Registration Office on August 20, 2018. The Complainant has developed an online platform that enables an overview of a company’s complete media- and marketing purchases.

The filing of the ADGRABBER trademark was made by the Respondent on behalf of the Complainant on August 20, 2018. The trademark registration was made in the name of the Complainant, in accordance with written instructions from the Complainant to the Respondent dated August 6, 2018. On August 10 and August 13, 2018, the Respondent also registered the disputed domain names on behalf of the Complainant with the common intention that the Complainant would become the holder. The Respondent, who was appointed CTO in the Complainant’s company at the time, was fully aware that the disputed domain names were registered to be used for the benefit of the Complainant and its business. The Respondent was supposed to hold the disputed domain names temporarily until the Complainant’s registration with the Swedish Companies Registration Office was completed and then transfer them to the Complainant. Despite the parties’ intentions above, the Respondent kept the disputed domain names for himself. The Complainant has used the domain name since the start and has paid all invoices for the domain names since they were registered.

The first disputed domain name is identical to the Complainant’s trademark ADGRABBER and the second disputed domain name confusingly similar to the trademark ADGRABBER.

The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent does not own any trademark or service mark registrations encompassing the disputed domain names, nor any variations thereof. In addition to the above, the Respondent signed a shareholder’s agreement on June 17, 2019, stating that all intellectual property rights, including the domain name , belongs exclusively to the Complainant. On September 25, 2019 the Complainant became aware that the disputed domain names still had not been transferred to the Complainant, as initially agreed at the time of registration. When confronted, the Respondent stated that he would transfer the disputed domain names to the Complainant and provide the login details. The Respondent, however, never transferred the domain names nor provided the login details. On the contrary, the Respondent inactivated not only the Complainant’s website but also the Complainant’s email accounts on November 6, 2019. In addition, the Respondent changed the login details and passwords to the Complainant’s social media accounts with Facebook, Instagram and LinkedIn. The Respondent’s actions led to irreparable damage for the Complainant’s business.

The Respondent claims that the Complainant owes him money and therefore he holds the disputed domain names hostage until he receives payment. On November 6, 2019 the Respondent sent an invoice to the Complainant offering to transfer the disputed domain name for SEK 2,500,000 including VAT. The invoice does not include the second disputed domain name . As a result of this disloyal conduct, the Respondent was removed as a shareholder on November 7, 2019.

Although both the Complainant and the Respondent were active in the naming process, it was the Complainant that came up with the name ADGRABBER. On August 6, 2018, the Complainant instructed the Respondent, who was a shareholder at the time, to file the trademark application for ADGRABBER. Consequently, the Respondent was fully aware of the Complainant’s plan to register and use the trademark ADGRABBER when the Respondent registered the disputed domain names and on behalf of the Complainant on August 10 and August 13, 2018. The Complainant paid for the domain name registrations. Given that the Respondent never intended to transfer the disputed domain names to the Complainant, it must be held that the Respondent registered and used the disputed domain names in bad faith.

In addition to this Complaint, the Complainant has filed an ADR Complaint in Sweden regarding the Swedish domain name which is also held by the Respondent.

B. Respondent

The Respondent is a shareholder and one of the owners of the company Adgrabber AB. The Respondent registered the disputed domain names as a part of starting and running the company. The Respondent will continue to use the disputed domain names for this purpose in the future. The Complainant wrongfully claims that the Respondent is no longer a shareholder. On November 23, 2019, the Respondent filed a report with the Swedish police because the Respondent suspects that the Complainant has stolen the Respondent’s shares. Furthermore, the shareholder agreement between the Respondent and the Complainant states that any disputes between the shareholders shall be settled in a Swedish court of law. By filing a complaint with WIPO instead of a Swedish court, the Complainant is trying to circumvent the shareholder agreement and steal the intellectual property rights from its rightful owner.

6. Discussion and Findings

It has been argued by the Respondent that the Policy is not applicable to the disputed domain names as a result of a shareholder agreement between the parties. However, according to the registration agreement that the Respondent has entered into with the Registrars, the Respondent has already agreed to be bound by the Policy. Hence, the Respondent is required to submit to this mandatory administrative proceeding.

On November 23, 2019, after the commencement of this administrative proceeding, the Respondent filed a report with the Swedish police regarding a possible theft of the Respondent’s shares. However, the Panel finds that the Respondent’s suspicion whether the Complainant has stolen the Respondent’s shares or not, is a question that exceeds the relatively limited scope of the Policy and is more appropriately addressed by a court of competent jurisdiction.

According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:

(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in the disputed domain names; and

(iii) that the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Complainant is, according to the submitted evidence, the owner of the registered trademark ADGRABBER. The first disputed domain name incorporates the Complainant’s trademark in its entirety. The second disputed domain name consists of the trademark with the addition of an extra letter “d”. The additional letter “d” is a misspelling of the Complainant’s trademark (i.e. typosquatting) and is considered by panels to be confusingly similar to the trademark of the Complainant. Furthermore, it is standard practice to disregard the generic Top-Level Domain (“gTLD”) under the confusingly similar test.

Having the above in mind, the Panel finds that the first disputed domain name is identical to the Complainant’s ADGRABBER trademark and that the second disputed domain name is confusingly similar to the Complainant’s ADGRABBER trademark and that the Complainant has proved the requirements under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show, at least prima facie, that the Respondent has no rights or legitimate interests with respect to the disputed domain names. The Respondent may establish a right or legitimate interest in the disputed domain names by demonstrating any of the following non-exhaustive circumstances listed in paragraph 4(c) of the Policy:

(i) that it has made preparations to use the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services prior to any notice of the dispute; or

(ii) that it is commonly known by the disputed domain names, even if it has not acquired any trademark rights; or

(iii) that it is making a legitimate, noncommercial or fair use of the disputed domain names without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names. It has been argued by the Complainant that the Respondent registered the disputed domain names and on behalf of the Complainant and that the Respondent was instructed to hold the domain names temporarily until the Complainant’s registration with the Swedish Companies Registration Office was completed and then transfer the domain names to the Complainant. The costs relating to the disputed domain names have been paid by the Complainant and the only established use of the disputed domain names relates to the Complainant’s business. There is no evidence in the case indicating that the Respondent has made preparations to use the disputed domain names in connection with a bona fide offering of goods or services other than those offered by the Complainant.

Furthermore, the Respondent has not submitted any evidence indicating that the Respondent owns any trademark rights similar to the disputed domain names or that the Respondent is or has been commonly known by the disputed domain names.

The submissions indicate that, after the relationship between the parties had broken down, the Respondent not only inactivated the Complainant’s website and email account based on the disputed domain name , but also sent an invoice to the Complainant offering to transfer the above mentioned domain name to the Complainant for a sum of SEK 2,500,000 including VAT. Accordingly, there is no evidence in the case demonstrating that the Respondent is making a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

Considering the above, the Respondent has not successfully rebutted the Complainant’s prima facie case and the Respondent has failed to invoke any circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the disputed domain names.

Thus, there is no evidence in the case that successfully refutes the Complainant’s submissions, and the Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation:

(i) circumstances indicating the disputed domain names were registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registrations to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain names; or

(ii) circumstances indicating that the disputed domain names were registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided there is a pattern of such conduct; or

(iii) circumstances indicating that the disputed domain names were registered primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the disputed domain names have intentionally been used in an attempt to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on that website or location.

Under paragraph 4(a)(iii) of the Policy, a complainant must establish that the respondent registered and used the disputed domain name in bad faith. The assessment of whether a disputed domain name was registered in bad faith has to be considered at the time of the registration of the disputed domain name.

Although the disputed domain names and were registered by the Respondent on August 10 and August 13, 2018 and the trademark application for ADGRABBER was filed a on August 20, 2018, the circumstances in the present case demonstrate that the Respondent had knowledge of the Complainant’s imminent strategy to file the trademark application for ADGRABBER in the name of the Complainant, at the time when the Respondent registered the disputed domain names. On August 6, 2018, the Complainant instructed the Respondent, who was appointed CTO and a shareholder in the Complainant’s company at the time, to file the trademark application.

All evidence indicates that it is the Complainant that has used the disputed domain name for its official website and paid all invoices related to the disputed domain names. Although the circumstances above suggest that the disputed domain names were registered in the name of the Respondent with the common intention that the Complainant would become the registered holder, there is no clear evidence in the case demonstrating that it was in fact agreed by the parties at the time of registration. There is no evidence in the case demonstrating that the parties agreed to transfer the disputed domain names to the Complainant until June 2019 when the parties entered a shareholder agreement. Consequently, there is no material in the case from which the Panel can state with any degree of confidence that the Respondent’s motives at time of registration of the disputed domain names were mala fide and actuated by a desire to exploit a nascent trademark of the Complainant. Considering the above, the Panel concludes that the Complaint has provided insufficient evidence to conclude that the disputed domain names were registered in bad faith by the Respondent.

From the submitted material in this proceeding, it can be established that the Respondent never transferred the disputed domain names to the Complainant, as agreed in June 2019. Instead, the Respondent inactivated the Complainant’s website and email account based on on November 6, 2019. Given the relationship between the parties, the Respondent must have known that these functions were crucial to the Complainant’s business. Furthermore, the Respondent requested a sum of SEK 2,500,000 including VAT to transfer the domain name to the Complainant. Consequently, the evidence in the case before the Panel indicates that the disputed domain names were used by the Respondent to deliberately mislead Internet users as to the affiliation or endorsement of the inactivated website to which the disputed domain name resolved and that the Respondent’s use was done for commercial gain with the aim of causing commercial harm to the trademark owner. Based on the above, the evidence and the circumstances in this case, the Panel finds that the Respondent used the disputed domain names in bad faith.

Considering all of the above, the Complainant has failed to fully establish the third element under the Policy and the Complaint must therefore be dismissed. However, the Panel notes that the present decision is based on the limited UDRP record before the Panel and is without prejudice to any subsequent action based on additional facts and a more complete record in court.

7. Decision

For the foregoing reasons, the Complaint is denied.

Johan Sjöbeck
Sole Panelist
Date: January 2, 2020

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