The Complainant is Philip Savino, United States of America (“United States”), represented by Howard M. Cohn and Associates, United States.
The Respondent is Cykon Technology Limited, Hong Kong, China, internally represented. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2020. On May 8, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 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 May 12, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 1, 2020. On May 27, 2020, the Respondent contacted the Center requesting an extension to the Response filing period due to the ongoing COVID-19 conditions. Pursuant to paragraphs 5(b) and 5(e) of the Rules, the Response filing period was extended until June 8, 2020. The Response was filed with the Center on June 5, 2020. The Center appointed Warwick A. Rothnie as the sole panelist in this matter on June 12, 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 According to the Complaint, the Complainant is the owner in the United States of Registered Trademark No. 5,959,834 (the “Trademark”). The Certificate of Registration of the Trademark, however, shows the owner as Access Spa Franchising LLC (the “Franchising Company”). The precise relationship between the Complainant and the Franchising Company is not disclosed in the Complaint. In light of the matters discussed below and as the Complainant has submitted the Certificate of Registration of the Trademark as proof of the Complainant’s title to the Trademark, it is unnecessary to explore this further and the Panel proceeds on the assumption that the Complainant and the Franchising Company are affiliated in some appropriate way. The Trademark is for the word mark, ACCESS SPA, in respect of a range of services in International Class 44 including skin care salons, beauty salons, body waxing services, skin care services, and hair salon services. The Trademark was registered on January 14, 2020. According to the Certificate of Registration, the Trademark was first used in commerce on September 2, 2017. The application to register the Trademark was filed on June 25, 2019. The Franchising Company was incorporated on May 8, 2019. The Respondent offers domain names for sale. According to the Complaint (and not disputed by the Respondent), the Respondent has registered some 73,000 domain names. The disputed domain name was registered on January 3, 2009. It resolves to a website which offers the disputed domain name for sale and solicits invitations for a price quote. 5. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following: (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. Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable. A. Identical or Confusingly Similar Disregarding the “.com” generic Top-Level Domain (gTLD), the disputed domain name and the Trademark are visually and aurally identical. It is permissible in the present context to disregard the gTLD as a functional part of the domain name system: WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11. As the disputed domain name and the Trademark are visually and aurally identical, the test for identity under the Policy is satisfied: WIPO Overview 3.0, section 1.7. Accordingly, the Complainant (on the assumption made) has satisfied the first requirement under the Policy. B. Registered and Used in Bad Faith In the circumstances of this case, it is appropriate to consider the third requirement under the Policy next: whether the Respondent has registered and is using the disputed domain name in bad faith. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd.,WIPO Case No. D2010-0470. Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant. In the present case, however, the Respondent registered the disputed domain name more than 10 years before the Complainant registered the Trademark and at least seven years before the date of first use in commerce claimed in the United States Patents and Trademarks Office. That gulf of time between the registration of the disputed domain name and the Complainant commencing use of the Trademark does not lend itself to those exceptional situations where Panels have been prepared to find registration in bad faith. See WIPO Overview 3.0 , section 3.8.1 and 3.8.2 . Section 3.8.1 records that panels will not usually find registration in bad faith where the respondent registered the disputed domain name before the complainant acquired its trademark rights. Section 3.8.2 states: “As an exception to the general proposition described above in 3.8.1 , 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: (i) shortly before or after announcement of a corporate merger, (ii) further to the respondent’s insider knowledge (e.g., a former employee), (iii) further to significant media attention (e.g., in connection with a product launch or prominent event), or (iv) following the complainant’s filing of a trademark application.” The record in this proceeding does not suggest anything like those scenarios or other basis to depart from the usual rule. Accordingly, the Complainant has failed to establish this requirement under the Policy and the Complaint must fail. C. Rights or Legitimate Interests As the Complaint must fail, no good purpose would be served by considering this requirement under the Policy. D. Reverse Domain Name Hijacking The Respondent has sought a finding of reverse domain name hijacking against the Complainant. Paragraph 15(e) of the Rules provides, in part: “[i]f 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.” Paragraph 1 of the Rules defines “Reverse Domain Name Hijacking” to be “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”. The fact that a complaint fails is not in itself a basis for a finding of reverse domain name hijacking. Indeed, panels will rarely find a case of reverse domain name hijacking where there is a genuine dispute or even where there is an arguable, but weak, case. See e.g. WIPO Overview 3.0, section 4.16. In the present case, however, the long period of several years between the registration of the disputed domain name and subsequent commencement of use of the trademark by the Complainant (and even longer period before registration of the Trademark) should have made it very clear that the Complaint could not succeed. On the record in this case, the Complaint should never have been filed. Accordingly, the Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. 6. Decision For the foregoing reasons, the Complaint is denied. Warwick A. Rothnie
Sole Panelist
Date: June 26, 2020
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