The Complainant is Cyarx Technologies Ltd., Israel, represented by Pearl Cohen Zedek Latzer Baratz, Israel.
The Respondent is Taylor Robison, United States of America (“United States”), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, 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 March 10, 2020. On March 10, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 11, 2020, 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 March 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 2, 2020. On April 2 and 3, 2020 the Respondent requested an extension to file the Response. The Response due date was extended to April 26, 2020. The Response was filed with the Center on April 13, 2020. The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on May 3, 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, Cyarx Technologies Ltd., is a company active in the security business, assisting security teams to manage their operations, including through software. The Complainant invokes the following trademark: - SIEMPLIFY, United States trademark No. 5,256,989, registered on August 1, 2017 in class 9. The Disputed Domain Name was registered on August 13, 2011 and is currently resolving to a registrar parking page with pay-per-click links (“PPC”). The Complainant provides evidence of negotiations between the Parties in 2018, related to the sale of the Disputed Domain Name. The Complainant sent a cease and desist letter to the Respondent on September 19, 2019. 5. Parties’ Contentions A. Complainant The Complainant considers the Disputed Domain Name to be confusingly similar to a trademark in which it claims to have rights. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to the Complainant, the Respondent has not used the Disputed Domain Name in connection with a legitimate or fair use. Also, according to the Complainant, the Respondent is not commonly known or otherwise associated with the Disputed Domain Name. Finally, the Complainant claims that the Disputed Domain Name was registered and is being used in bad faith. The Complainant claims that the Respondent has registered or acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the Disputed Domain Name. B. Respondent The Respondent expresses no opinion as to whether the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights, as it is unclear to the Respondent whether the Complainant is, as it claims, the entity that owns the invoked trademark. The Respondent further claims he has rights or legitimate interests in respect of the Disputed Domain Name, as he registered it in connection with a business idea he had related to the SIEM industry six years before the Complainant obtained a registration for the SIEMPLIFY trademark. Finally, the Respondent contests the Complainant’s allegations of bad faith registration and use. The Respondent claims he could not have registered the Disputed Domain Name in bad because he registered it before the Complainant’s trademark rights accrue. The Respondent is not using the Disputed Domain Name in bad faith either because the Respondent is not using the Disputed Domain Name in any manner whatsoever. 6. Discussion and Findings Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the Disputed Domain Name. As the UDRP proceedings are administrative, the standard of proof is the balance of probabilities. Thus, for the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, 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 (iii) the Disputed Domain Name has been registered and is being used in bad faith. The Panel will therefore deal with each of these requirements. A. Identical or Confusingly Similar To prove this element, the Complainant must first establish that there is a trademark or service mark in which it has rights. The Complainant invokes a SIEMPLIFY trademark registered in the United States in 2017. As pointed out by the Respondent, the Complainant’s address as mentioned in the Complaint does not match the address mentioned in the trademark register. The Panel however finds that the overall circumstances suggest that the Complainant is the rightful owner of the SIEMPLIFY trademark, although the address mentioned in the trademark register should probably be updated in order to confirm this. In any event, given the Panel’s decision on the other elements of the Policy, the Panel does not consider this issue to be essential in this case. The Panel observes that the Disputed Domain Name was registered in August 2011, predating the Complainant’s trademark. However, 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 purposes of the first element under paragraph 4(a) of the Policy, the Complainant’s rights must be in existence at the time the Complaint is filed, which is the case here (see section 1.1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). It is well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, may be disregarded under the first element confusing similarity test (see section 1.11 of the WIPO Overview 3.0). In light of the above, the Panel considers the Disputed Domain Name to be identical to the SIEMPLIFY trademark, invoked by the Complainant. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. In this case the Panel does not need to consider or decide this issue, given its decision on the third element below and the fact that a successful complaint under the UDRP must establish all three elements under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith The Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (see section 4.2 WIPO Overview 3.0 and, e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052). Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors are circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name. The Complainant claims that the Respondent has registered the Disputed Domain Name for the sole purpose of selling it to the Complainant. However, the Panel observes that the Disputed Domain Name was registered in 2011, approximately 6 years before the registration of the Complainant’s SIEMPLIFY trademark and approximately 3 years before the claimed date of first use in commerce of the trademark. According to the Complainant’s website, the Complainant was founded in 2015, 4 years after the registration of the Disputed Domain Name. Where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent (see section 3.8.1 of the WIPO Overview 3.0). In support of the Complainant’s claim as to the Respondent’s bad faith, the Complainant solely relies on pre-Complaint correspondence between the Parties. The correspondence shows that the Respondent has expressed his interest in selling the Disputed Domain Name to the Complainant, should it present an “inspiring offer”. However, the Panel observes that it was the Complainant who initiated discussions of a sale. In any event, given the fact that the Disputed Domain Name was registered years before the Complainant even existed, the Complainant does not explain how the Respondent could have targeted the Complainant or its trademark at the time he acquired the Disputed Domain Name. Therefore, the Panel finds that the Complainant failed to prove that the Respondent registered the Disputed Domain Name in bad faith. In the absence of proof of bad faith registration, it is unnecessary to address any claims of bad faith use of the Disputed Domain Name. To the extent the Complainant considers that the current use of the Disputed Domain Name infringes on its trademark rights, the decision in this case is without prejudice to any other means, besides the UDRP, that the Complainant might pursue to protect its rights. In view of the above circumstances, the Panel finds that the Complainant has failed to establish that the third condition of paragraph 4(a) of the Policy has been fulfilled. D. Reverse Domain Name Hijacking The Respondent seeks a finding of 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 registrant, the Panel shall declare in its decision that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding: Reasons articulated by panels for finding RDNH include: (i) facts which demonstrate that the complainant knew it could not succeed as to any of the required three elements – such as the complainant’s lack of relevant trademark rights, clear knowledge of respondent rights or legitimate interests, or clear knowledge of a lack of respondent bad faith (see generally section 3.8) such as registration of the disputed domain name well before the complainant acquired trademark rights, (ii) facts which demonstrate that the complainant clearly ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint, including relevant facts on the website at the disputed domain name or readily available public sources such as the WhoIs database, (iii) unreasonably ignoring established Policy precedent notably as captured in this WIPO Overview – except in limited circumstances which prima facie justify advancing an alternative legal argument, (iv) the provision of false evidence, or otherwise attempting to mislead the panel, (v) the provision of intentionally incomplete material evidence – often clarified by the respondent, (vi) the complainant’s failure to disclose that a case is a UDRP refiling, (vii) filing the complaint after an unsuccessful attempt to acquire the disputed domain name from the respondent without a plausible legal basis, (viii) basing a complaint on only the barest of allegations without any supporting evidence (see section 4.16 of the WIPO Overview 3.0). The Panel considers in the present case the following reasons for a finding of RDNH: - the Complaint could not have succeeded, as the Disputed Domain Name was registered by the Respondent years before the Complainant even existed; Given the relevant facts, the nature of the Policy and the fact that the Complainant was advised by a law firm, this was a case which should not have been brought or at least not presented in the manner it was. The Panel therefore finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. 7. Decision For the foregoing reasons, the Complaint is denied. Flip Jan Claude Petillion
- the Complainant filed the Complaint after an unsuccessful attempt to acquire the Disputed Domain Name from the Respondent without a plausible legal basis; the Complainant only produces the correspondence related to its latest attempt, but the correspondence originating from the Complainant suggests that more attempts were made in the past.
Sole Panelist
Date: May 17, 2020
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