The Complainant is Symphony Holdings Limited, United Kingdom, internally represented.
The Respondent is Jaimie Fuller, Fuller Consultancy F.Z.E., Switzerland, represented by Pachmann Rechtsanwälte, Switzerland. 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 25, 2019. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 26, 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 November 28, 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 December 9, 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 December 10, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 30, 2019. On December 18, 2019, the Respondent sent an email communication to the Center requesting an extension of the Response due date. An automatic extension of the Response due date was granted until January 3, 2020, under paragraph 5(b) of the Rules. On December 19, 2019, upon the Respondent’s request for a further extension, the Center granted the Respondent an additional seven days to file a Response, and confirmed the new due date for Response was January 10, 2020. On January 6, 2020, the Respondent requested an additional extension to file the Response until January 30, 2020. Given the previous extension granted under paragraph 5(e) of the Rules and considering the objection of the Complainant, the Center declined to extend the period for Response beyond January 10, 2020, subject to the Panel to decide otherwise. The Center received various communications from the Parties between December 5, 2019, and January 8, 2020. The Response was filed with the Center January 10, 2020. The Center appointed Torsten Bettinger, Matthew Kennedy, and Philippe Gilliéron as panelists in this matter on February 17, 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 The Complainant is a company incorporated in Bermuda with limited liability. The Respondent is a company domiciled in the United Arab Emirates. The disputed domain name is currently used for a website containing information and advertisement about skin care. The Complainant provides a copy of an Australian trademark registration No. 1671034 SKINS.NET (word mark), filed on January 27, 2015, and entered on Register on August 26, 2015. The copy of the registration certificate indicates SKINS International Trading AG (“SITAG”) as the owner of the trademark. The Complainant has submitted a copy of the purchase agreement with the Konkursamt Zug (Kaufvertrag) dated September 20, 2019, which provides for the transfer of all of SITAG’s IP rights, in particular all rights contained in a list annexed to the purchase agreement, except the IP rights which have already been transferred pursuant to Exhibit 2.1 of an IP-Rights Pledge Agreement dated March 3, 2012, with the Japanese Company ITOCHU Corporation, Osaka. The Konkursamt Zug, Switzerland, was in charge of selling SITAG’s intellectual property in an auction proceeding following SITAG’s bankruptcy and dissolution on January 17, 2019. The Respondent was the Complainant’s sole competitor bidding against the Complainant. No assignment of the trademark registration for SKINS.NET to the Complainant has been recorded in the Australian Trademark Register. 5. Parties’ Contentions A. Complainant The Complainant contends that it has acquired the Australian trademark SKINS.NET in the auction proceeding from SITAG’s Trustee in Bankruptcy, the Konkursamt Zug, as the purchase and assignment Agreement with the Konkursamt Zug provided for the assignment of all of SITAG’S IP Rights (“sämtliche der Konkursitin gehörenden IP-Rechte”). With regard to the requirement of identity or confusing similarity between the trademark and the domain name pursuant to paragraph 4(a)(i) of the Policy, the Complainant submits that the disputed domain name is identical or confusingly similar to a trademark in which it has rights. With regard to the Respondent having no rights or legitimate interests in the disputed domain name, the Complainant submitted that: - the Respondent knew or ought to have known that the disputed domain name was improperly acquired from SITAG and that its use was contrary to the interests of the Trustee in Bankruptcy and the Complainant as purchaser of SITAG’s intellectual property; and - the Respondent improperly and unlawfully allowed use of the domain name; and - the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain. - the Respondent is misleadingly attempting to divert consumers away from the legitimate commercial prosecution of its SKINS.NET trademark and the general business of the Complainant. Finally, with regard to the disputed domain name having been registered and being used in bad faith, the Complainant argues that: - the Respondent’s acquisition of the disputed domain name on the basis of a Security Assignment with SITAG on June 13, 2018, was unlawful; - the Respondent transferred or licensed the disputed domain name unlawfully acquired from SITAG to a third Party; - the transfer and registration of the disputed domain name by the Respondent was in bad faith to attack Complainant’s SKINS trademark portfolio; - the Respondent has improperly prevented the Complainant from purchasing the disputed domain name from SITAG’s Trustee in Bankruptcy and from using the disputed domain name; - the Respondent prevented the Complainant from accessing evidence to defend its rights in the trademark SKINS.NET. The Complainant made an unsolicited supplemental filing on January 3, 2020, providing information to the Panel that the disputed domain name resolves to a website operated by the Australian company Fair Play Publishing Pty Ltd. On January 7, 2020, the Complainant made another unsolicited supplemental filing alleging that prior to the use of the disputed domain name by Fair Play Publishing Pty Ltd, the website under the disputed domain name was linked to a blog of the Respondent’s principal “using [the] Complainant’s intellectual property”. The Complainant objects to the Respondent’s choice of legal representation on January 8, 2020, alleging a conflict of interest of the Respondent’s Attorney. B. Respondent The Respondent denies that the Complainant acquired rights in the Australian trademark No. 1671034 SKINS.NET when purchasing SITAG’s IP rights from SITAG’s Trustee in Bankruptcy. The Respondent contends that - the SKINS.NET trademark has not been used during the past years and needs to be annulled; - it lawfully acquired the disputed domain name on the basis of a “Security Assignment Agreement” with SITAG dated June 13, 2018; - it transferred the ownership of the domain name to the company Fair Play Publishing Group and that Fair Play Publishing Group is making a legitimate noncommercial and fair use of the disputed domain name without the intent, for commercial gain, to misleadingly divert consumers or tarnish the Complainant’s alleged trademark SKINS.NET. The Respondent requests that the Panel makes a finding regarding reverse domain name hijacking pursuant to paragraph 15(e) of the Rules. 6. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that: (i) the disputed domain name is identical or confusingly similar to a trademark 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 (ii) the disputed domain name was registered and is being used in bad faith. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted in accordance with the Policy, the Rules, and any other rules or principles of law that the Panel deems applicable. A. Supplemental Filings The Complainant has made unsolicited supplemental filings. Section 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), states that UDRP panels have repeatedly affirmed that the party submitting 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. In this case, the Panel has decided to accept those parts of the Complainant’s supplemental filing which address the use of the disputed domain name by the company Fair Play Publishing Pty Ltd after the dispute was filed. The content of the Respondent’s website is clearly a matter that may be relevant to a dispute. That change was not a matter that the Complainant could reasonably have anticipated before the Complaint was filed. The Panel declines to admit the rest of the Complainant’s supplemental filing as the Complainant has not provided any explanation as to why it did not provide this information in the initial filing of the Complaint. B. Complainant’s objection to the Respondent’s choice of legal representation With regard to the Complainant’s request to disqualify counsel for the Respondent, the Panel is not in a position to accept or deny this request, but notes the Complainant’s option to exercise any rights conferred by law including the possibility of filing a complaint with the relevant bar association. (The Panel notes in either event that the Complainant has not provided sufficient information or made reference to relevant professional conduct rules to establish that the representation of the Respondent by the Respondent’s legal counsel in this case meets the criteria of a conflict of interest under any applicable rules of professional conduct.) C. Suitability of the conflict for the Policy As the above factual recitation should make clear, this is not an ordinary cybersquatting case. Rather, the dispute concerns the question of whether the disputed domain name was part of the IP rights of the company SITAG, which the Complainants purchased from SITAG’s Trustee in Bankruptcy following SITAG’s bankruptcy, or whether the Respondent lawfully purchased the disputed domain name from SITAG before SITAG became bankrupt and was dissolved. The only arguable reason that the Complainant is seeking relief in this forum seems to be that the property at issue is a domain name. This Panel is not a general domain name court, and the Policy is not designed to adjudicate all disputes of any kind that relate in any way to domain names. Rather, the Policy establishes a streamlined, inexpensive administrative dispute-resolution procedure intended only for the relatively narrow class of cases of “abusive cybersquatting”. The UDRP is not an appropriate process to adjudicate on a complicated business dispute like this as the Panel does not have the benefit of witness testimony, disclosure of documents, or the other appropriate instruments that are typically available to assist a court to resolve a Parties’ dispute. To attempt to squeeze what is essentially a business dispute (with trademark and domain name implications) between two companies attempting to acquire IP-rights and a domain name in an auction proceeding administered by a Trustee in Bankruptcy into a proceeding to adjudicate cybersquatting is misguided. The Panel therefore has decided to deny the case, not on the merits, but on the broader grounds that it is a complex business dispute that exceeds the relatively limited “cybersquatting” scope of the UDRP, and would be more appropriately addressed by a court of competent jurisdiction – see section 14.4.6 of WIPO Overview 3.0. D. Other Requirements of the Policy Having denied the case on the broad grounds that it is a multi-faceted dispute about the acquisition of IP-Rights, the Panel does not need to consider whether the Complainant has satisfied the other requirements of the Policy. Nevertheless, the Panel finds that on the present record the Complainant has also failed for insufficient evidence of trademark rights. The Complainant provided a copy of an Australian trademark registration No. 1671034 for the mark SKINS.NET which indicates SITAG as the owner of the trademark. The Complainant claims that it has acquired the trademark on the basis of a purchase agreement in an auction proceeding administered by SITAG’s Trustee in Bankruptcy which was in charge of selling SITAG’s intellectual property following SITAGs bankruptcy and dissolution on January 17, 2019. The alleged assignment of the trademark registration to the Complainant is not recorded in the trademark registration provided by the Complainant. The Respondent denies that the Complainant has provided evidence that it has acquired rights in the Australian trademark SKINS.NET when purchasing SITAG’s IP rights from SITAG’s Trustee in Bankruptcy (Konkursamt Zug). The Panel notes that the Complainant has provided an incomplete copy of the purchase agreement with the Konkursamt Zug dated September 20, 2019, which provides for the transfer of all of SITAG’s IP rights, in particular all rights contained in a list annexed to the purchase agreement, except the IP rights which have already been transferred pursuant to Exhibit 2.1 of an IP-Rights Pledge Agreement dated March 30, 2012, with the Japanese Company ITOCHU Corporation, Osaka. The Panel notes that the Complainant has not submitted the list of intellectual property rights attached to the purchase agreement with the Konkursamt Zug and has also failed to provide the Intellectual Property Rights Pledge Agreement with the Japanese company ITOCHU Corporation which excludes a tranche of IP rights from the scope of the purchase. The Panel therefore finds that the Complainant has not demonstrated that the Australian trademark SKINS.NET to which the Complainant refers has been assigned to him on the basis of the purchase agreement with the Konkursamt Zug. While it may have been possible to clear this up via a Panel Order, this is not necessary given that the dispute exceeds the scope of the Policy. The Complainant does not allege any unregistered rights in the SKINS.NET trademark nor does it allege any rights in a trademark SKINS. Therefore, the Panel finds that the Complainant has failed on the present record to demonstrate its rights in a trademark in accordance with the first element in paragraph 4(a) of the Policy. 7. Decision For the foregoing reasons, the Complaint is denied. Taking into account that, in the Panel’s view, the UDRP is not an appropriate process to adjudicate a multi-faceted dispute like this, the Respondent’s request for finding Reverse Domain Name Hijacking is also rejected. Torsten Bettinger Matthew Kennedy Philippe Gilliéron
Presiding Panelist
Panelist
Panelist
Date: March 5, 2020
Full & Egal Universal Law Academy