The Complainant is Tadbik Ltd., Israel, represented by Herzog, Fox & Neeman, United States of America (“United States”).
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Alexander Krutik, Alexander, Canada. 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 26, 2020. On May 26, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 27, 2020, the Registrar transmitted by email to the Center its verification response: (a) confirming it is the Registrar for the disputed domain name; (b) disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint; (c) indicating the Respondent registered the disputed domain name on February 2, 2018; (d) indicating the language of the registration agreement is English; (e) confirming the disputed domain name was registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), and the UDRP applies to the disputed domain name. The Center sent an email communication to the Complainant on May 31, 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 June 2, 2020. The Center verified that the Complaint together with amended Complaint satisfied the formal requirements of the Policy, 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 June 4, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 24, 2020. On June 5, 2020, The Center received a communication from the Respondent. On the same date, the Center sent a Possible Settlement email to the Parties, and the proceedings were suspended on June 13, 2020 further to the Complainant’s request dated June 12, 2020. The proceedings were reinstituted on June 22, 2020 further to the Complainant’s request on the same date, indicating that any further Response was due by July 3, 2020. No further Response was received. The Center notified the commencement of Panel appointment process on July 8, 2020. The Center appointed Warwick A. Rothnie as the sole panelist in this matter on July 15, 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 was established in Israel in 1983. Initially, it produced labels for other businesses. Over time, its business has expanded to include a range of packaging solutions. Amongst other things, the Complainant’s products include products using NFC or RFID technologies for a range of purposes. Major companies around the world which are customers of its products include Muller, Target, Walmart, Nestle, Coca Cola, Danone, Unilever, and SodaStream. As part of its business, the Complainant registered the domain name The Complainant uses its name TADBIK with a spiral device (in yellow, magenta, and blue), or just the plain name TADBIK, as the trademark to promote is business. According to the Complaint, the Complainant has achieved sales by reference to this trademark in the order of: (a) NIS 750,000,000 in 2016; (b) NIS 670,000,000 in 2017; and (c) NIS 680,000,000 in 2018. (By way of rough indication, each of these amounts is equivalent to USD 200,000,000 or more at current exchange rates.) The disputed domain name was registered on February 8, 2018. It resolves to a website which purports to criticise the Complainant of engaging in financial impropriety and business dishonesty. The Complainant denies the veracity of these allegations. 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 The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights. There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark. The Complainant has not provided evidence of a registered trademark. Instead, it relies on its reputation in TADBIK as an unregistered trademark arising from its extensive use throughout the world since 1983. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0) section 1.3. Having regard to the length and extent, both geographically and in terms of sales of the Complainant’s use of its trademark, the Panel finds that the Complainant has established its claim to TADBIK as an unregistered trademark. The second stage of this inquiry requires a visual and aural comparison of the disputed domain name to the proven trademarks. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. See e.g., WIPO Overview 3.0, section 1.7. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (“gTLD”) component as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11. Disregarding the “.info” gTLD, the disputed domain name consists of the Complainant’s registered trademark only. Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical with the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied. B. Rights or Legitimate Interests The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name: (i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or (ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or (iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name. The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview 3.0, section 2.1. The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it. The disputed domain name is plainly not derived from the Respondent's name. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name. As the disputed domain name is identical to the Complainant’s trademark, these matters would ordinarily be sufficient to establish the required prima facie case. In the present case, the content of the Respondent’s website raises the potential the use of the disputed domain name is defensible as a criticism site. See WIPO Overview 3.0, section 2.6. As noted above, the Complainant denies the allegations made on the website and says they are just being advanced to tarnish its good name and trademark. The Complainant contends that the allegations of “fraud” and “deception” made on the website go far beyond legitimate criticism and show that the object of the use of the disputed domain name is tarnishment. The Panel is not in a position to assess the truth or otherwise of the allegations. The Panel also recognises that it is important to approach these matters with caution to ensure that the Policy is not being used to suppress legitimate free speech and criticism. Paragraph 4(c)(iii) of the Policy is amongst other things a recognition that generally speaking the public is at liberty to criticise a right holder’s products or services. The Panel is not at all convinced that strong, even vehement, criticism carries a use beyond the scope of legitimacy under the Policy, especially if it appears to be genuinely held opinion. That being said, Panels have generally considered that a domain name which is identical to a complainant’s trademark creates an illegitimate risk of user confusion through impersonation and so such use does not qualify as a right or legitimate interest under the Policy. See WIPO Overview 3.0, section 2.6.2. Consistently with that approach and as the disputed domain name is identical to the Complainant’s trademark, therefore, the Panel considers that paragraph 4(c)(iii) of the Policy does not apply. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also. C. Registered and Used in Bad Faith Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. 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 LtdWIPO 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. So far as the record in this proceeding shows, the term “tadbik” is an invented or coined term and is not descriptive. It has significance only as the Complainant’s name and trademark. Moreover, it appears clear from the content of the website to which the disputed domain name resolves that the Respondent was well aware of the Complainant and its trademark when the disputed domain name was registered. The Respondent is plainly seeking to use the disputed domain name for its trademark significance. In circumstances where the disputed domain name is identical to the Complainant’s trademark and does not seek to indicate the critical nature of its intended use and so the Respondent has found not to have rights or legitimate interests in the disputed domain name, therefore, the Panel finds the Respondent has registered and used it in bad faith. Accordingly, the Complainants have established all three requirements under the Policy. 6. 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 Warwick A. Rothnie
Sole Panelist
Date: July 29, 2020
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