The Complainant is LunaJets SA, Switzerland, represented by Borel & Barbey, Switzerland.
The Respondent is Jau Khan, Malaysia. 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 12, 2019. On November 12, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 12, 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 proceedings commenced on November 15, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 5, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 6, 2019. The Center appointed Antony Gold as the sole panelist in this matter on December 10, 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 The Complainant is company based in Switzerland. It was founded in 2007 as an online platform offering direct access to empty leg private jet charter flights. Its activities have since expanded and they now include the provision of consulting, rental, and reservation services in connection with business aviation, together with various ancillary activities. The Complainant sells its services through its website at “www.lunajets.com” as well as via a mobile app and six dedicated stores located across Europe. The Complainant owns a number of trade marks which comprise or include the words LUNAJETS or LUNA. These include, by way of example; - Swiss trade mark no. 580424 for LUNAJETS in classes 12 and 39, registered on May 30, 2008; The disputed domain name was registered on October 16, 2019. It resolves to a holding page which contains the name of the Registrar and a notice: “lunacargo.com is coming soon”. Following registration of the disputed domain name, a representative of the Complainant wrote to the Respondent on October 20, 2019, via his personal email account, enquiring whether the disputed domain name was for sale. The Respondent replied the following day, stating that: “Actually we bought the domain www.lunacargo.com for our own business. So it is not for sale. But we had a meeting today and decided to transfer it to you, if the price is satisfactory. Our offer price is EUR 8,500”. 5. Parties’ Contentions A. Complainant The Complainant says that the disputed domain name is identical or confusingly similar to a trade mark in which it has rights. It draws attention to its trade mark for LUNACARGO, full details of which are given above. This trade mark is identical to the disputed domain name. The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. According to the Policy, a complainant must make out a prima facie case that a respondent lacks rights or a legitimate interest in a domain name. If such a case is made out, the burden of production shifts to the respondent. The Respondent is unable to bring itself within any of the means by which rights or legitimate interests in a domain name might be demonstrated, as set out at paragraph 4(c) of the Policy. On October 16, 2019, that is two days after the Complainant applied for its LUNACARGO trade mark, the Respondent registered the disputed domain name. The Respondent is neither affiliated with the Complainant, nor authorized by it to use and register its trade marks, nor to register domain names incorporating its trade marks. There is no evidence that the Respondent is using, or has the intent to use, the disputed domain name in connection with a bona fide offering of goods and services, nor is there evidence that the Respondent is commonly known by the disputed domain name. There has been no attempt by the Respondent to develop an active website; the disputed domain name simply resolves to the Registrar’s “under construction” template webpage. Lastly, the Complainant says that the disputed domain name was registered and is being used in bad faith. Paragraph 4(a)(iii) of the Policy provides that bad faith shall be evidenced by circumstances indicating that a respondent has registered or acquired a domain name for the purposes of selling it to a complainant, or a competitor of it, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name. A representative of the Complainant contacted the Respondent via a private email account on October 21, 2019, to enquire about the disputed domain name. The Respondent replied indicating that it bought the disputed domain name for its own business but that it was available for purchase at a price of EUR 8,500. The fact that the Respondent offered to sell the disputed domain name to the Complainant coupled with the fact that it was registered only two days after the Complainant applied for its trade mark for the same word indicates that the Respondent purchased the disputed domain name for the purpose of selling it to the Complainant. In addition, the Respondent’s registration of the disputed domain name prevents the Complainant from reflecting its mark in a corresponding domain name. The Respondent has been the subject of earlier panel decisions under the Policy which have found that he has registered domain names in bad faith, namely Tuo Liu v. Jau Khan,WIPO Case No. D2018-1361, Valvoline Licensing and Intellectual Property LLC v. jau Khan,WIPO Case No. D2018-1486, and DALKIA v. Jau Khan,WIPO Case No. D2019-1556. It would seem that the Respondent’s registration of the disputed domain name is part of a practice of registering domain names corresponding to trade marks which have been recently applied for by third parties. The registration of the disputed domain name when the Respondent was aware of the Complainant and any rights it had in its LUNACARGO mark, in the absence of any rights or legitimate interests on the part of the Respondent, amounts to registration in bad faith under the Policy. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate. Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to succeed in its Complaint: (i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and (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. A. Supplemental Filing Following the commencement of proceedings, the Respondent sent a further email to the Complainant on November 15, 2019, offering that; “If you cancel the UDRP, I will transfer the domain at USD 800”. On November 20, 2019, the Complainant’s representative forwarded the email to the Center and requested that it be treated as a further annex to the Complaint. Neither the Rules nor the Supplemental Rules make provision for supplemental filings, except at the request of the panel (see paragraphs 10 and 12 of the Rules). Section 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) explains that: “Unsolicited supplemental filings are generally discouraged, unless specifically requested by the panel […] panels have repeatedly affirmed that the party submitting or requesting to submit an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response (e.g., owing to some “exceptional” circumstance)”. Whilst, self-evidently, the Complainant could not have provided the Respondent’s email of November 15, 2019, as part of its original complaint, it has not explained why the email is considered to be relevant to the case and the Panel does not therefore consider it further. B. Identical or Confusingly Similar The Complainant has established that it has rights in LUNAJETS, LUNASOLUTIONS, and LUNACARGO. This last mark was applied on October 14, 2019, but was not granted until October 25, 2019, that is after the date of registration of the disputed domain name on October 16, 2019. However, this is immaterial when considering the first element under the Policy. Section 1.1.3 of the WIPO Overview 3.0 explains that; “While the UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired its rights, such rights must be in existence at the time the complaint is filed. The fact that a domain name may have been registered before a complainant has acquired trademark rights does not by itself preclude a complainant’s standing to file a UDRP case, nor a panel’s finding of identity or confusing similarity under the first element”. For the purpose of determining whether the disputed domain name is identical or confusingly similar to the Complainant’s LUNACARGO trade mark, the generic Top-Level Domain (“gTLD”) “.com” is disregarded as this is a technical requirement of registration. The disputed domain name comprises the Complainant’s LUNACARGO trade mark in full and solus. The disputed domain name is therefore identical to this mark. The disputed domain name is also confusingly similar to the Complainant’s LUNAJETS and LUNASOLUTIONS trade marks. The “LUNA” component of these marks is dominant feature of both marks. Whether the added words, that is “jets” and “solutions”, are perceived by consumers as having any particular meaning does not impact on an assessment of whether the disputed domain name is confusingly similar to these marks. As explained at section 1.7 of the WIPO Overview 3.0; “While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”. The LUNA component of both marks is recognizable within the disputed domain name. The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s LUNAJETS and LUNASOLUTIONS trade marks and is identical to its LUNACARGO trade mark. C. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides, without limitation examples of circumstances whereby a respondent might demonstrate that it has rights or legitimate interests in a domain name. In summary, these are if a respondent has used or prepared to use the domain name in connection with a bona fide offering of goods and services, if a respondent has been commonly known by the domain name, or if a respondent has made a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark in issue. Turning to the first of these circumstances, the disputed domain name was registered relatively recently. For the entirety of that period, it has not been actively used. The Respondent’s assertion in its email to the Complainant’s IT manager that “… we bought the domain www.lunacargo.com for our own business. So it is not for sale” is treated with scepticism in view of the offer it made in the same email to sell the disputed domain name to the Complainant for EUR 8,500. Moreover, section 2.2 of the WIPO Overview 3.0 provides examples of the type of evidence which would usually be considered necessary to establish demonstrable preparations to use the domain name, in connection with a bona fide offering of goods or services may include and explains that: “While such indicia are assessed pragmatically in light of the case circumstances, clear contemporaneous evidence of bona fide pre-complaint preparations is required”. There is no evidence to this effect before the Panel and it is improbable that this is the position. The second of the circumstances set out at paragraph 4(c) is inapplicable; there is no evidence to indicate that the Respondent has been commonly known by the disputed domain name. As for the third circumstance, simply allowing the disputed domain name to resolve to a web page which states only that “lunacargo is coming soon” comprises neither a legitimate noncommercial nor a fair use of the disputed domain name. Once a complainant has made out a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to show that it does have such rights or legitimate interests. See, by way of example, OSRAM GmbH. v. Mohammed Rafi/Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org,WIPO Case No. D2015-1149. In the absence of any response from the Respondent to the Complaint, it has failed to satisfy that burden. The Panel accordingly finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name. D. Registered and Used in Bad Faith Paragraph 4(b) of the Policy set out four circumstances, which, without limitation, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith. These include; - paragraph 4(b)(i) (in summary); circumstances indicating that a respondent has registered or acquired a domain name primarily for the purpose of selling it to the complainant or a competitor of the complainant for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; - paragraph 4(b)(ii); if a respondent has registered a 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 it has engaged in a pattern of such conduct. It is apposite to consider the third element by reference to the Complainant’s LUNACARGO mark, albeit this mark did not proceed to registration until after the disputed domain name was registered. Bad faith registration will generally not be found in circumstance where a domain name was registered prior to a complainant having acquired the registered trade mark on which it relies in its complaint. However, section 3.8.2 of the WIPO Overview 3.0 explains that; “in certain limited circumstances where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trademark rights, panels have been prepared to find that the respondent has acted in bad faith. Such scenarios include registration of a domain name […] following the complainant’s filing of a trademark application”. There is strong evidence that the Respondent’s registration of the disputed domain name was a direct result of the Complainant’s filing of its trade mark application for LUNACARGO, in that a period of only two days elapsed between the filing of the application and the registration of the disputed domain name, which corresponds exactly to the mark applied for by the Complainant. Whilst the Respondent asserted in his email to the Complainant dated October 21, 2019, that “we bought the domain www.lunacargo.com for our own business” he has not provided any evidence to substantiate this claim and it is inherently implausible. Moreover, the three decisions of earlier panels under the Policy referred to above, which concern other domain names registered by the Respondent, establish that his modus operandi is to register domain names which correspond to recently published applications by third parties for trade marks and then to offer them for sale to the applicants for sums which (as in these proceedings) exceed the Respondent’s out-of-pocket costs of registration. Such conduct amounts to bad faith registration and use of the type described at paragraph 4(b)(i) of the Policy. It should be noted that pointing the disputed domain name to an essentially inactive website is, in the circumstances of this registration, considered bad faith use. Panelists considering the question of passive holding look at the overall circumstances of registration as well as, typically, the following factors; (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details and (iv) the implausibility of any good faith use to which the domain name may be put” (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, and section 3.3 of the WIPO Overview 3.0). The Complainant’s mark is reasonably distinctive, there is no evidence of actual or contemplated good faith use by the Respondent, and it is inherently implausible that such a use might exist. The majority of the factors set out above therefore support a finding that the Respondent’s use of the disputed domain name should be considered to be in bad faith. The Respondent’s registration and use of the disputed domain name also falls within the circumstance outlined at paragraph 4(b)(ii) of the Policy. The Respondent’s intention in registering the disputed domain name was evidently to deprive the Complainant from being able to register its LUNACARGO trade mark in the “.com” gTLD. The three earlier decisions under the Policy to which the Respondent was a party, referred to above, establish a pattern of conduct by the Respondent of registering domain names in anticipation of trademark rights being acquired and then offering them for sale to the applicants. This reflects exactly what has occurred in respect of the disputed domain name. For the above reasons, the Panel therefore finds that the disputed domain name was registered and 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 Antony Gold
- Swiss trade mark no. 737462 for LUNASOLUTIONS in class 36, registered on October 23, 2019;
- Swiss trade mark no. 737631 for LUNACARGO in class 39. This mark was applied for on October 14, 2019, following the expansion of the Complainant’s activities into a number of new areas, including aviation cargo. The registration took effect from October 25, 2019.
Sole Panelist
Date: December 24, 2019
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