The Complainant is Agencias Universales S.A., Chile, represented by Sáenz de Santa María Abogados, Chile.
The Respondent is Perfect Privacy, United States of America (“United States”) / Jeff Williams, United States, represented by Pillsbury Winthrop Shaw Pittman LLP, 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 April 2, 2020. On April 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 6, 2020, 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 April 7, 2020, 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 April 12, 2020. On April 14, 2020, the Center received an email communication from the Respondent. 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 April 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 12, 2020. The Response was filed with the Center on May 7, 2020. On May 26, 2020, the Center received an email communication from the Complainant. On May 29, 2020, the Complainant and Respondent each submitted a supplemental filing. The Center appointed Adam Taylor as the sole panelist in this matter on June 8, 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, which was established in Chile in 1960, is part of a group of over 100 companies that supplies shipping, transport, and a range of other logistical services. The group has become known as “GEN”, which is an abbreviation for “Grupo de Empresas Navieras” meaning “group of shipping companies” in Spanish. The Complainant owns a number of Chilean trade marks including Nos. 779328 and 765196, for GEN GROUP and GRUPO GEN, respectively, both filed on February 2, 2006, in class 35. In 2012, the Complainant registered the domain name The Panel considers it helpful to set out the facts relating to the Respondent in the form of a chronology: April 25, 1996: The creation date of the disputed domain name according to the WhoIs. December 17, 1998: Global Education Network, Inc. (“the Company”) was incorporated in Delaware, United States. January 14, 2000: The Company applied for a United States trade mark for GEN.COM under serial number 75897156, for “[e]ducational services namely, courses of instruction […] delivered over a global computer network” in class 41 (later abandoned). March 13, 2000: The Company changed its name to “Allen Technology, Inc.”. 2001: The Respondent Jeff Williams was appointed, and still remains, Chief Technology Officer of a connected company called “Allen & Company, Inc.”. February 3, 2001: An archive website screenshot shows that the disputed domain name was being used for a website branded “GEN.COM. Global Education Network” with details about online courses. September 28, 2001: An archive WhoIs record lists the Company as registrant of the disputed domain name. 2004: The Company ceased actively trading. October 29, 2008: An archive website screenshot shows that the disputed domain name was still being used to promote online distance learning services. This version of the site was branded “Global Education Network” and referred to “Global Education Network (GEN)”. April 28, 2014: An archive WhoIs record still lists the Company as registrant of the disputed domain name. July 6, 2014: By this date, the disputed domain name had been switched into the name of the privacy service with which it is currently held – “Perfect Privacy, LLC”. 5. Parties’ Contentions A. Complainant The following is a summary of the Complainant’s contentions: The disputed domain name is identical to the main and distinctive part of the Complainant’s trade mark, since the word “group” is a descriptive term. The fact that the Complainant is part of a group known by the name “GEN” with a worldwide presence reinforces the Complainant’s assertion that it should own the domain name that consists of this name plus the important “.com” suffix. The Respondent lacks rights or legitimate interests in the disputed domain name. There is no evidence that the Respondent has ever used the disputed domain name. A simple Google search for “Gen” brings up no results relating to the Respondent. Nor is there any evidence that the Respondent is commonly known as “Gen” or any variation of that name or that the Respondent is connected with any company or service using that name. There is no question of there having been any legitimate or fair use of the disputed domain name because it has never been used. The disputed domain name is simply being held for unknown reasons, which prevents legitimate use by third parties, such as the Complainant. The disputed domain name has been registered and is being used in bad faith. As regards paragraph 4(b)(i) of the Policy, the Respondent’s use of a privacy service shows that he wants to remain unknown to the public, probably because he does not want to be known as someone who owns domain names purely to sell them or to prevent third parties making legitimate use of them. The Respondent’s lack of use of the disputed domain name shows that the Respondent’s intention was not to use the disputed domain name but to prevent others from registering it. As regards paragraph 4(b)(ii) of the Policy, even if it is not possible to prove that the Respondent registered the disputed domain name to prevent the Complainant from reflecting its trade mark in a domain name, its lack of use gives the impression that the Respondent registered the disputed domain name to prevent others from using it legitimately, for example in connection with a registered trade mark such as that owned by the Complainant, which is dominated by the word “GEN”. The Complainant does not know whether paragraphs 4(b)(iii) or (iv) of the Policy apply. B. Respondent The following is a summary of the Respondent’s contentions: The disputed domain name is not identical or confusingly similar to the Complainant’s trade marks, including in terms of sound, appearance, meaning, or commercial impression. Moreover, the Complainant’s trade marks have no application in the United States. The Respondent possesses rights and legitimate interests in the disputed domain name, which predate the Complainant’s trade marks by many years. The Company registered the disputed domain name on September 28, 2001, to provide online distance learning services in the United States under the trade mark GLOBAL EDUCATION NETWORK. The Company started setting up its services around the time it registered the disputed domain name and applied for its trade mark and received favourable media coverage in major national news publications, such as the New York Times. It also entered into a partnership with Public Broadcasting Service and attended trade shows. However, the Company shut down its service in November 2004 because the Internet was not yet robust enough to support online learning services. The Company continues to engage in discussions with various parties about resuming its service. These business activities show that the Company had and retains a legitimate interest in registering the disputed domain name and that it used the disputed domain name to offer online educational services in the United States. The Company never intended to mislead customers as to an association with the Complainant, which is in a different country and offers different services to those of the Company. The Company had never heard of the Complainant until it received the Complaint. The disputed domain name was registered five years before the Complainant’s earliest registered trade marks. The fact that the Complainant may now want to use the disputed domain name has no bearing on the Company’s continuing legitimate interest in the disputed domain name. For the above reasons, the disputed domain name has not been registered and is not being used in bad faith. Further, the Complainant fails to explain why the Company should have known of the Complainant’s unregistered trade mark rights on September 28, 2001, or why it waited almost 20 years to file this case. The Complainant has provided no evidence of registration and use in bad faith. The Company added a privacy service to avoid being bombarded by unsolicited advertisements and not to avoid acquiring the fame of a company that maintains domains only to sell them. Such privacy services are now commonplace, and legitimate. If the Complainant had checked the Wayback Machine, it would have discovered archive versions of the Company’s website at the disputed domain name. The Complainant’s assertions are unsupported argument and conjuncture, lacking merit and factual basis and were made without carrying out any basic diligence. The fact that the Complainant may now want to use the disputed domain name does not now entitle it to force transfer via a baseless and unsubstantiated UDRP filing. The Complainant is guilty of Reverse Domain Name Hijacking. C. Complainant’s supplemental filing The following is a summary of the Complainant’s supplemental filing insofar as admitted (see section 6A below): The Complainant was unaware of the identity of the owner of the disputed domain name when it filed the Complaint because the disputed domain name was registered through a privacy service. The Respondent and current owner of the disputed domain name is Jeff Williams, not the Company and not Global Education Network. There was no evidence available to the Complainant as to the relationship between Jeff Williams and the Company when the Complainant filed the Complaint. In any case, the Company has no rights over the disputed domain name. While the Respondent claims that a series of services are being provided through the website at the disputed domain name, there was no content of any kind linked to the disputed domain name at the time of the Complaint, or now. The trade marks mentioned by the Respondent are owned by Global Education Network, which is not the Respondent. In any case, the trade mark application for GEN.COM was abandoned. 6. Discussion and Findings Under the Policy, the Complainant is required to prove on the balance of probabilities that: - the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights; - the Respondent has no rights or legitimate interests in respect of the disputed domain name; and - the disputed domain name has been registered and is being used in bad faith. A. Supplemental Filings Each party has made an unsolicited supplemental filing. 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 allow the Complainant’s supplemental filing to the extent that it responds to matters raised in the Response that might have been difficult for the Complainant to anticipate in its Complaint as well as to the Respondent’s assertion of Reverse Domain Name Hijacking. The Panel declines to admit the Respondent’s supplemental filing because it consists of standard rebuttal and/or matters which the Panel does not consider relevant to its decision. The Panel would add, however, that none of the disallowed material in either filing would have made any difference to the outcome of this case if it had been admitted. B. Identical or Confusingly Similar The Complainant has established rights in the marks GEN GROUP and GRUPO GEN by virtue of its registered trade marks for those terms. Section 1.7 of the WIPO Overview 3.0 makes clear that the first element functions primarily as a standing requirement. The test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trade mark and the disputed domain name. Where at least a dominant feature of the relevant mark is recognisable in the disputed domain name, it will normally be considered confusingly similar to that mark for purposes of UDRP standing. In this case the dominant feature of the Complainant’s trade marks – the term “GEN” – is identical to the disputed domain name. Accordingly, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trade mark.> The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy. C. Rights or Legitimate Interests It is unnecessary to consider this issue in light of the Panel’s finding under the third element below. D. Registered and Used in Bad Faith Under this third element of the Policy, the Panel’s role is to assess whether, on balance, the Respondent acted in bad faith, i.e., that it possessed the relevant intent vis-à-vis the Complainant’s trade marks when registering the disputed domain name in 2001, and using it thereafter. The Complainant has not explained exactly when its group started using the name “GEN” or provided any evidence as to scale of its use or reputation in the name, either when the disputed domain name was registered or at any other time. The earliest date from which the Complainant claims registered trade mark rights is 2006 – some five years after the disputed domain name was registered. Even if the Complainant had established prior rights, it would still have had a near-impossible task of establishing registration in bad faith given the factual background set out in section 4 above. From the file, it is reasonably apparent to the Panel that in 2001, the Company registered the disputed domain name, applied for a United States trade mark for GEN.COM in relation to online education services and started using the disputed domain name for a website branded “Global Education Network” relating to online distance learning services. While the Company ceased actively trading in 2004 (and the GEN.COM trade mark application was abandoned in 2005), it continued to use the website at the disputed domain name to promote its services for some years thereafter, and the Company remained registrant of the disputed domain name until 2014, when it was switched into the privacy service in which it still remains. The Company therefore possessed a legitimate reason to register the disputed domain name – as an acronym of the name Global Education Network – for the promotion of its services that was plainly unconnected with the Complainant’s entirely different business. While the Respondent has not provided any evidence supporting its assertion that the Respondent was the Chief Technology Officer of a related company since 2001, the Panel has no reason to doubt the Respondent’s claim. Furthermore, the Panel notes that the Registrar, in its response to the verification request sent to the Center on April 6, 2020, identified that the Company (i.e. Allen Technology, Inc.) was the Account Holder of the disputed domain name (and provides its email address which is the same email address as that of the Respondent Jeff Williams). Paragraph 1.1 of the ICANN’s 2013 Registrar Accreditation Agreement defines Account Holder as “the person or entity that is paying for the Registered Name or otherwise controls the management of the registered name, when that person or entity is not the Registered Name Holder”. The Panel notes that the Registrar’s response to the verification request confirms the Panel’s view that there is a connection between the Respondent Jeff Williams and the Respondent Allen Technology, Inc. Accordingly, the Panel hereafter treats the Respondent as including both Jeff Williams and the Company, except where it is necessary to refer to the Company separately. The Panel would add that, even if Jeff Williams had been a more recent, unrelated, acquirer of the disputed domain name, there is still nothing to show that he registered the disputed domain name to target the Complainant. For example, there is no evidence to show that that the disputed domain name has ever been used in any way referable to the Complainant’s area of business. Furthermore, a Google.cl search exhibited by the Complainant itself underlines the fact that “gen” is a common term. The first page includes a dictionary definition for “gen” and refers to some 1,230 million results; indeed, none of the results on that page relate to the Complainant so far as the Panel can tell. For the above reasons, the Panel finds that the Complainant has failed to establish the third element of paragraph 4(a) of the Policy E. 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 Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. RDNH is defined under the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”. Section 4.16 of the WIPO Overview 3.0 sets out examples of the reasons articulated by panels for finding RDNH. These 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 trade mark rights, clear knowledge of respondent rights or legitimate interests, or clear knowledge of a lack of respondent bad faith 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; (viii) basing a complaint on only the barest of allegations without any supporting evidence.” The Panel considers that the above circumstances apply here and, taken together, they warrant a finding of RDNH. The Complainant has failed by a large margin. The Complainant should have appreciated the level of evidence necessary to prove under the UDRP that the Respondent registered the disputed domain name in bad faith. The disputed domain name had a creation date of April 25, 1996, and even if acquired later, it is composed of three letters that could easily correspond to an acronym or to a dictionary word, and is currently passively held. The Complainant should have considered if there really existed any evidence to prove that the disputed domain name was registered with the Complainant’s trade mark in mind in order to take advantage of the Complainant’s trade mark with bad faith rather than for a legitimate purpose. As mentioned above, the Complainant made no effort to establish that the Respondent was likely to have been aware of the Complainant at the time of registration of the disputed domain name – or any other date. As regards the Respondent’s plainly legitimate use of the disputed domain name, the Complainant says that it knew nothing of Jeff Williams or his alleged connection with the Company at the time of filing the Complaint. But even allowing for this, and even if it was reasonable for the Complainant not to have discovered the Company’s connection with the disputed domain name from the Wayback Machine, the Complainant still failed to put forward a stateable case for bad faith, let alone any relevant supporting evidence. While the Complainant invoked each of paragraphs 4(b)(i)-(iv) of the Policy, it effectively admitted that it could not prove the key intent element of any of them: - 4(b)(i): The Complainant did not even claim that the Respondent registered the disputed domain name for the purpose of sale to the Complainant. - 4(b)(ii): The Complainant acknowledged that it could not prove that the Respondent registered the disputed domain name to prevent the Complainant from reflecting its trade mark in a domain name. - 4(b)(iii) and (iv): The Complainant simply stated: “The situation is unknown.” Instead, the Complainant came up with a number of contrived arguments which fell far short of constituting bad faith, including an assertion that, of itself, use of the name “GEN” by the Complainant’s group with its alleged worldwide presence reinforced the Complainant’s right to own the disputed domain name with its “important” .com suffix. 7. Decision For the foregoing reasons, the Complaint is denied and the Panel finds that the Complaint was brought in an attempt at Reverse Domain Name Hijacking. Adam Taylor
Sole Panelist
Date: June 22, 2020
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