The Complainant is Ganeden Biotech, Inc., United States of America (“United States”), and Kerry Luxembourg S.à.r.l, Luxembourg (jointly referred to as the “Complainant”), represented by FRKelly, Ireland.
The Respondent is Rob Monster, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 5, 2019. On December 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 17, 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 December 20, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 9, 2020. The Respondent did not submit any response by January 9, 2020. Accordingly, the Center notified the Respondent’s default on January 10, 2020. In reply to the Notification of Respondent Default, the Respondent submitted an informal Response to the Center on January 10, 2020. The Center appointed John Swinson as the sole panelist in this matter on January 20, 2020. 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 Ganeden Biotech, Inc., a company incorporated in the United States and Kerry Luxembourg S.à.r.l, a company incorporated in Luxembourg. According to the Complainant, both companies are affiliated with Kerry Group Plc, and both operate as part of the same business, being development and commercialisation of food and nutrition technologies. According to the Complaint, the Complainant widely recognised as the market leader in the Complainant sectors. The Complainant is the owner of a number of registered trade marks for, or incorporating, BC30, the earliest of which is European Union registered trade mark number 005850797 for GANEDENBC30, registered on March 27, 2008. The Complainant also owns United States registered trade mark number 4396539 for BC30, registered on September 3, 2013 (the “Trade Mark”). The Complainant is also the owner of the registered domain name The Respondent is Rob Monster, an individual of the United States. The Respondent, apparently a domainer, is the founder and CEO of the Registrar. The Disputed Domain Name was registered on June 2, 2011. The Disputed Domain Name currently resolves to a parking page indicating that the Disputed Domain Name is for sale, and inviting visitors to the page to submit offers. 5. Parties’ Contentions A. Complainant The Complainant makes the following submissions. Identical or confusingly similar The core element of the Complainant’s trade mark portfolio is BC30, which is the unique element comprised in the Disputed Domain Name. The Disputed Domain Name was registered after the Complainant registered some of its registrations incorporating BC30, including European Union registered trade mark number 005850797 and United States registered trade mark number 3962293. The Complainant’s Trade Mark is identical to the Disputed Domain Name. The Complainant’s other trade mark registrations are very similar, and either contain the element BC30 with the addition of the corporate house mark GANEDEN (where BC30 is the dominant element) or with additional words that do not contribute to the overall distinctiveness of the trade mark. The stylisation of some of the Complainant’s trade marks is irrelevant for the purposes of this comparison. The use of the distinctive elements of the Complainant’s trade marks in the Disputed Domain Name is causing, or will probably cause, damage to the Complainant’s goodwill and reputation. The Complainant’s reputation for quality goods is vulnerable to the activities of the Respondent and any further act that the Respondent may perform on the Disputed Domain Name would reflect badly on the Complainant’s business. The generic Top-Level Domain (“gTLD”) is ignored. Rights or legitimate interests The Respondent has no rights or legitimate interests for the following reasons: - The Trade Mark was registered prior to the registration of the Disputed Domain Name. - There is no evidence that the Respondent is using the Disputed Domain Name in connection with a bona fide offering of goods or services, because the website at the Disputed Domain Name consists only of an offer for lease or purchase of the Disputed Domain Name. - The Respondent is not known through a website corresponding to the Disputed Domain Name and does not carry out activities through such a website. The Respondent has not acquired any sort of notoriety, nor is he commonly known by, the Disputed Domain Name. - The Respondent is not making legitimate noncommercial or fair use of the Disputed Domain Name, as the only content on the website at the Disputed Domain Name relates to its re-selling. The sole interest the Respondent has in the Disputed Domain Name is commercial gain. - The fact that the Respondent has been the holder of the Disputed Domain Name for around eight years without using it is prima facie evidence that it has no rights or legitimate interests in the Disputed Domain Name. Even if the Respondent could provide some evidence of use, this would be in bad faith because of the well-known status of the Trade Mark. - The Respondent has engaged in a pattern of conduct (see below). Registered and used in bad faith The primary aim of the Respondent’s registration of the Disputed Domain Name was to block the Complainant’s access to it. The “.com” domain name extensions are the most commonly used worldwide, and the likelihood of the Complainant wishing to acquire it was high, given the Complainant’s highly distinctive and unusual Trade Mark. The Respondent has also engaged in a pattern of conduct. The Respondent has already been involved in numerous cases resulting in a finding of bad faith. The Disputed Domain Name was also registered primarily for the purpose of re-selling it to the Complainant or a competitor of the Complainant. The Respondent’s contact email is “forsale@[...].com”. The website at the Disputed Domain Name invites offers to acquire it. Although the Complainant approached the Respondent seeking to acquire the Disputed Domain Name, this does not preclude a finding of bad faith. The Complainant first submitted an offer of USD 200. The Respondent made a counter-offer of USD 4,200. The Complainant continued to raise its offer and eventually offered USD 4,200. The Respondent then rejected it, and asked for USD 7,500. This is unreasonable and the exact definition of cybersquatting. The usual price for similar domains is USD 100, and GoDaddy indicates the price is USD 908.51. The Respondent’s counter-offer was well above the market price and the Respondent’s out-of-pocket expenses for it. It is the Respondent’s obligation to undergo a reasonable due diligence process. Even with minimum research, the Complainant’s rights would be immediately identified on any database accessible to the public. The Complainant’s domain name The fact that the Respondent has not used the Disputed Domain Name or sought to contact the Complainant for eight years also shows bad faith. The Respondent was waiting for the Complainant to approach him and to negotiate an extortionate price. Passive holding can amount to use and registration in bad faith. In the present case, the strength of the Trade Mark, the lack of use in eight years, and the fact that the Respondent chose to provide an email address associated with the Registrar (which amounts clearly to an attempt by the Respondent to make it difficult for the Complainant to contact him demonstrate bad faith). B. Respondent The Respondent did not file a formal Response, but made the following informal submissions in an email communication to the Center. The Respondent registered the Disputed Domain Name for no other reason than “because it is short, like Epik.com”. There is no malfeasance. It is in the format of “llnn” (letter letter number number), which is popular which Chinese spectators. The Respondent has owned the Disputed Domain Name for a long time. It could easily refer to the year 30 BC as well as countless other things (e.g., BC 3.0). The Disputed Domain Name is generic and the Complaint should be denied. The Panel should find Reverse Domain Name Hijacking (RDNH). 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely: (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. The onus of proving these elements is on the Complainant, even though the Respondent did not file a formal Response. A. Procedural Issues Informal response by Respondent On January 10, 2020 (one day after the due date for Response), the Respondent sent an informal email communication to the Center as referred to above. The Respondent stated that the Respondent’s failure to provide a Response was likely an oversight because the Respondent’s compliance manager was busy with other priorities. The email communication also makes various statements addressing some of the elements of the Policy (namely, why the Respondent registered the Disputed Domain Name). This email does not fully address the elements of the Policy or contain the required certification (see paragraph 5(c)(viii) of the Rules). Moreover, it makes a number of needless derogatory remarks (and threats) about the UDRP and the Center. Despite this, the Panel has taken into account parts of the email relevant to this proceeding in making its decision. The Respondent’s failure to file a formal Response does not automatically result in a decision in favor of the Complainant (see Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyProtect.org,WIPO Case No. D2013‑2059). Multiple Complainants The Complaint is filed jointly by Ganeden Biotech, Inc. and Kerry Luxembourg S.à.r.l. Previous UDRP panels have permitted a single complaint where the complainants have a “common grievance” against the respondent, as long as it is equitable and procedurally efficient to do so (Fulham Football Club (1987) Limited, Tottenham Hostpur Public Limited, West Ham United Football Club PLC, Manchester United Limited, The Liverpool Football Club And Athletic Grounds Limited v. Domains by Proxy, Inc. / Official Tickets Ltd,WIPO Case No. D2009-0331 and section 4.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The Panel accepts that Ganeden Biotech, Inc. and Kerry Luxembourg S.à.r.l have common legal interests in the Trade Mark, as they are affiliated companies and each own Trade Mark registrations in different jurisdictions. Furthermore, the Panel finds it would be equitable and procedurally efficient to permit consolidation in these circumstances. As such, the Panel permits both parties to be joint Complainants in this dispute. If successful, the Complainants have requested a transfer, not a cancellation, of the Disputed Domain Name. However, this bears the question: to which of the Complainants should the Disputed Domain Name be transferred? Previous UDRP panels have found that the answer to this question is to be decided by the complainants (see Halstead C&W Corporation, Tower IPCO Company Limited v. Kevin Sarrafi, WIPO Case No. D2018-0904, and “Dr. Martens” International Trading GmbH, “Dr. Maertens” Marketing GmbH v. Posers/Philip Cox,WIPO Case No. D2011-1142). As such, if the Complaint is successful, the Panel will order that the Disputed Domain Name is to be transferred to Kerry Luxembourg S.à.r.l, as specified in the Complaint. Laches The Disputed Domain Name was registered on June 2, 2011. The Complainant has waited more than eight years to bring this Complaint. The Panel notes that the prevailing view among UDRP panels is that mere delay does not bar a complainant from filing a complaint or from prevailing on the merits (see section 4.17 of WIPO Overview 3.0). This is common sense and does not bar the Complaint; it may be relevant to the second and third elements. B. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark. The Disputed Domain Name incorporates the Trade Mark in its entirety. Where a domain name incorporates the entirety of a trade mark, 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 (see section 1.7 of the WIPO Overview 3.0. The Disputed Domain Name is identical to the Trade Mark. The Disputed Domain Name is also confusingly similar to the Complainant’s other trade mark registrations incorporating the dominant element “BC30”. Where the Complainant has registered trade mark rights, it is not relevant for the first element that “BC30” could have alternative meanings or significance. The Complainant succeeds on the first element of the Policy. C. Rights or Legitimate Interests Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests. The Panel considers the Complainant has made out a prima facie case. This finding is based on the following: - The Respondent is not using (and there is no evidence that the Respondent has demonstrable preparations to use) the Disputed Domain Name in connection with a bona fide offering of goods or services. The Disputed Domain Name resolves to a page offering the Disputed Domain Name for sale. - The Complainant has not authorised the Respondent to use the Trade Mark in the Disputed Domain Name. - There is no evidence that the Respondent has been commonly known by the Disputed Domain Name or has registered or common law trade mark rights in relation to this name. - The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Names without intent for commercial gain. The Disputed Domain Name resolves to a page offering the Disputed Domain Name for sale. The Respondent submits that the Respondent registered the Disputed Domain Name because it is generic and short. The Respondent argues that the Disputed Domain Name could easily refer to the year 30 BC as well as other meanings such as BC 3.0. The Panel acknowledges that, in the absence of evidence suggesting name selection because of correspondence to a trade mark, domain resale can be a legitimate business enterprise and can represent legitimate interests for the purposes of the Policy (see Media General Communications, Inc. v. Rarenames, WebReg,WIPO Case No. D2006-0964). For example, generally speaking, UDRP panels have accepted that aggregating and holding domain names (usually for resale) consisting of acronyms, dictionary words, or common phrases can be bona fide and is not per se illegitimate under the UDRP (see section 2.1 of the WIPO Overview 3.0). In Media General Communications, Inc. v. Rarenames, WebReg, supra, the panel identified various factors relevant to whether such practices are likely to be legitimate, including: - whether the respondent regularly engages in the business of registering and reselling domain names, and/or using them to display advertising links; - whether the respondent makes good faith efforts to avoid registering and using domain names that are confusingly similar to marks held by others; - whether the domain name is a “dictionary word” or a generic or descriptive phrase; - whether the domain name is not identical or confusingly similar to a famous or distinctive trademark; and - whether there is evidence that respondent had actual knowledge of the complainant’s mark. Based on the evidence before the Panel and prior UDRP panel decisions involving the Respondent, the Respondent is engaged in the business of buying and selling domain names (and is the founder and CEO of the Registrar). The informal Response does not indicate how the Respondent selected the Disputed Domain Name (aside from stating that it was acquired following a drop) or what steps, if any, the Respondent takes to avoid registering and using domain names that infringe on third party marks. The informal Response does not say whether or not the Respondent was aware of the Complainant when it registered the Disputed Domain Name. The Disputed Domain Name is a short string of letters and numbers (a “LLNN.com” domain name as the Respondent puts it), but it is not a dictionary word or descriptive phrase. The Panel does acknowledge there is value in short domain names (including perhaps, a letter letter number number combination as suggested by the Respondent) but the Disputed Domain Name is identical to the Trade Mark (and suspiciously similar to some of the Complainant’s other trade mark registrations filed or registered before registration of the Disputed Domain Name). The Panel adopts the reasoning in Media General Communications, Inc. v. Rarenames, WebReg,WIPO Case No. D2006-0964, and TCN, Inc. v. 3v Networks, supra, that the determination of legitimacy of the registration depends largely on whether the Respondent was acting in good faith or in bad faith under the third element. Accordingly, for the reasons set out above and that follow, the Panel finds that the Respondent has not rebutted the Complainant’s prima facie case. D. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith. The Complainant submits that the Respondent’s conduct in this case falls within paragraph 4(b)(i) and 4(b)(ii) of the Policy, namely that: - the Respondent registered the Disputed Domain Name in order to prevent the Complainant from reflecting the Trade Mark in a corresponding domain name, and the Respondent has engaged in a pattern of such conduct; and - the Respondent registered or acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Disputed Domain Name. Previous UDRP panels have held that establishing a pattern of bad faith conduct requires more than one, but as few as two instances of abusive domain name registration (see section 3.1.2 of the WIPO Overview 3.0). The Complainant has provided evidence that the Respondent has been the Respondent in a number of UDRP proceedings, and in a large number of those cases the domain names have been transferred. In Nationwide Mutual Insurance Company v. Privacy Administrator, Anonymize, Inc. / “Manu Miglani”, Privacy Gods Limited / Epik Inc.,WIPO Case No. D2019-1816, the panel noted that: “But it is troubling that the Respondent and its CEO Mr. Monster have been respondents in UDRP proceedings that they have neither disputed nor settled, with a similar pattern of exploiting domain names that were found not to have been simply descriptive terms, and sometimes with indications of the use of fake registrant details or cyberflight or a suspiciously delayed registrar lock similar to the post-complaint conduct in the current proceeding. See, e.g., Jones Lang LaSalle IP, Inc. v. Domain Admin, Epik.com Private Registration / Brendan Waights, Biracay Ltd,WIPO Case No. D2017-1284 (transfer ordered, following PPC use of domain name; no response); France Billet v. Privacy Administrator, Anonymize, Inc.,WIPO Case No. D2015-1641 (transfer ordered, following PPC use of domain name and cyberflight; no response); Legião Urbana Produções Artísticas Ltda. and Giuliano Manfredini v. Domain Admin, Epik.com Private Registration / Yoko Sayuri,WIPO Case No. D2013-1855 (transfer ordered, following PPC use; no response); Safra IP Holding CO v. Rob Monster, DigitalTown, Inc,WIPO Case No. D2018-1716 (transfer ordered, following parking and offering domain name for sale; no response); Jones Lang LaSalle IP, Inc. v. Rob Monster, DigitalTown, Inc.,WIPO Case No. D2018-1299 (transfer ordered following redirect to registrant’s website and offer to sell domain name; no response); Dürr Aktiengesellschaft v. Rob Monster, Digital Town, Inc.,WIPO Case No. D2018-0757 (transfer of all five disputed domain names ordered following use for parking site with offers to sell; no response); Oscar Studio di Cavallin Oscar and 5282 S.R.L v. Rob Monster,WIPO Case No. D2014-2257 (transfer ordered following PPC use; no response). The Panel considers that this history, along with the Respondent’s post-complaint conduct in this proceeding, further supports an inference of bad faith within the meaning of the Policy.” The Panel finds that the Respondent has engaged in a pattern of intentionally registering domain names to deprive trade mark owners of their use, and registered the Disputed Domain Name in order to prevent the Complainant from reflecting the Trade Mark in a corresponding domain name. Even if the Complainant had not established a pattern of behavior under paragraph 4(b)(ii) of the Policy, the scenarios described in UDRP, paragraph 4(b), are non-exclusive, and the Panel considers that the following circumstances also support a finding of bad faith registration and use. Where a complainant’s mark is widely known or highly specific, and a respondent cannot credibly claim to have been unaware of the mark, UDRP panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark (see section 3.2.2 of the WIPO Overview 3.0). As apparently a sophisticated domainer, the Respondent had an affirmative obligation to avoid the registration of trade mark-abusive domain names (see section 3.2.3 of the WIPO Overview 3.0 and paragraph 2 of the Policy). Here, the Respondent has claimed that “bc30” is a generic term. As already discussed above, the Panel doubts whether “bc30” is generic (and is in fact quite specific), but accepts that as a short name, the Disputed Domain Name might have somevalue other than due to the Complainant’s Trade Mark. However, the Complainant registered the European Union trade mark number 005850797 in 2008. The Complainant’s registration predates the registration of the Disputed Domain Name by more than 3 years. The Complainant has also operated a primary domain name incorporating the Trade Mark, The Respondent has not provided any evidence that he undertook good faith efforts (or any efforts, because the Respondent did not respond) to screen the registration of the Disputed Domain Name. UDRP panels have found that if certain circumstances respondents who deliberately fail to screen registrations against available online databases are responsible for any resulting abusive registrations under the concept of willful blindness (see section 3.2.3 of the WIPO Overview 3.0). In this case the Disputed Domain Name is an arbitrary string of letters and numbers that has, in fact, been registered as a trade mark in the same country in which the Respondent is located. The likelihood of infringing a third party’s rights is clearly greater when the domain name is not a dictionary word or generic term, and therefore required at least some effort to avoid trade mark infringement and violation of the Policy (see Media General Communications, Inc. v. Rarenames, WebReg,WIPO Case No. D2006-0964). The Respondent must have been aware of, and therefore intended the possibility of such exploitation of third party rights to arise. At the very least, the Respondent would have been aware of this possibility by virtue of the numerous prior proceedings successfully brought against it under the Policy (referred to above) (see General Electric Company v. Marketing Total S.A,WIPO Case No. D2007-1834). Thereafter, the Disputed Domain Name has resolved to a page offering the Disputed Domain Name for sale, and inviting persons to submit “reasonable” offers. After the Complainant submitted an unsolicited offer for the Disputed Domain Name, the Respondent rejected the offer, and made a counter-offer of USD 4,200. Most telling perhaps is the fact that even after the Complainant met the Respondent’s offer, the Respondent then rejected the offer and asked for USD 7,500 showing an intent on the Respondent’s part to take unfair advantage of the Complainant while seeking to hide under the banner of merely registering a “generic” or “dictionary” domain name – an inference due in no small part to the Respondent’s pattern of past behavior in proceedings under the Policy. (The question that arises is: if the Respondent did in fact merely register what it claims to be a “generic” domain name for resale and a buyer with no trademark connection to the domain name came along offering to meet the Respondent’s own asking price, why would the Respondent not happily accept such payment but instead raise its asking price.) This further supports a finding of bad faith registration and use. Noting that the applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of evidence”, the Panel finds more likely than not that the Respondent has registered and used the Disputed Domain Name in bad faith. Accordingly, the Panel finds that the Complainant succeeds under the third, as well as the second, element of the Policy. The Complainant having prevailed, it is not necessary for the Panel to consider the Respondent’s informal allegation of RDNH. 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 John Swinson
Sole Panelist
Date: February 13, 2020
Full & Egal Universal Law Academy