The Complainant is Universa Investments L.P., United States of America (“United States”), represented by Shartsis Friese LLP, United States.
The Respondent is On behalf of universainvestments.com owner, Whois Privacy Service, United States / Sachin Dhar, United States, self-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 June 15, 2020. On June 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 18, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name(s) which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 29, 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 July 2, 2020. 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”). The Respondent contacted the Center on several occasions following the Complainant’s submission of the amendment to the Complainant. The Center responded appropriately to the Respondent’s inquiries. The Center also advised the Parties of the opportunity to request a suspension in order to explore settlement options, should the Complainant so request. The Complainant did not seek a suspension. In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 26, 2020. The Response was filed with the Center on July 23, 2020. The Complainant submitted a supplemental filing on July 24, 2020. The Respondent replied to the Complainant’s supplemental submission on July 24, 2020. The Center appointed William R. Towns as the sole panelist in this matter on August 11, 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, founded in the year 2007 and headquartered in Miami, Florida, is an investment firm specializing in risk mitigation services. The Complainant trades under the name UNIVERSA INVESTMENTS, in which the Complainant claims common law rights, and holds the following United States trademark registrations for its UNIVERSA mark: UNIVERSA (word), United States Registration No. 5713136, filed July 23, 2018, and registered April 2, 2019 (first use in commerce 2007); UNIVERSA (stylized logo), United States Registration No. 5713138, filed July 23, 2018, and registered April 2, 2019 (first use in commerce 2007). The Respondent registered disputed domain name on May 22, 2020. According to the evidence submitted in the Complaint, the Respondent directed the disputed domain name to a webpage depicting a man attempting to lift a heavy barbell and a two-line graph comparing “Tail Risk Hedge Fund Index versus S&P 500.” The term “barbell” in an investment setting refers to a fixed-income portfolio strategy in which half of the holdings are short-term instruments and the other half are long-term holdings.1 The Complainant after becoming aware of the Respondent’s registration of the disputed domain name contacted the Respondent in early July 2020. After exchanges between the Parties, the Respondent redirected the disputed domain name to the Complainant’s website at www.universa.net. 5. Preliminary Procedural Issue: Parties’ Supplemental Submissions No provision in the Policy, the Rules or the Supplemental Rules authorizes supplemental filings by either a complainant or a respondent without leave from the panel. Paragraph 12 of the Rules provides that a panel may request, in its sole discretion, further statements or documents from either of the parties. However, the Rules and relevant UDRP panel decisions demonstrate a decided preference for single submissions by the parties absent exceptional circumstances. See, e.g., Metro Sportswear Limited (trading as Canada Goose) v. Vertical Axis Inc. and Canadagoose.com c/o Whois Identity Shield,WIPO Case No. D2008-0754. Unsolicited supplemental filings are generally discouraged unless specifically requested by the panel. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 4.6 and 4.7 (and decisions cited therein). UDRP panels have accepted unsolicited supplemental submissions in limited circumstances, when offered to present new, pertinent evidence not reasonably available until after the party’s initial submission (see Top Driver, Inc., v. Benefits,WIPO Case No. D2002-0972); to bring new and highly relevant legal authority not previously available to the attention of the panel (see Pet Warehouse v. Pets.Com, Inc.,WIPO Case No. D2000-0105); or to rebut arguments of the opposing party that could not reasonably have been anticipated (see Randan Corp. v. Rapazzini Winery,WIPO Case No. D2003-0353). The Complainant contends in its supplemental submission that the Respondent approached the Complainant on July 2, 2020, subsequent to the filing of the Complaint, at which time the Respondent sought to sell the disputed domain name to the Complainant for the sum of USD 45,000. The Respondent in his supplemental submission denies the Complainant’s contentions, maintaining that it was the Complainant who first sought to solicit an offer from the Respondent respecting the disputed domain name. The Panel has determined to accept the Parties’ unsolicited supplemental submissions inasmuch as their submissions raise potentially new and relevant evidence not reasonably available prior to the filing of the Complaint. 6. Parties’ Contentions A. Complainant i. Complaint The Complainant submits that the disputed domain name The Complainant asserts that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. The Complainant maintains that the disputed domain name resolves to a single website with no links, no identifying information and no legitimate fair or noncommercial use of the disputed domain name. The Complainant submits that the Respondent has no rights to the UNIVERSA marks and that there is no evidence that the Respondent has used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The Complainant maintains that the Respondent registered and is using the disputed domain name in bad faith. The Complainant submits that the Respondent’s website is comprised of a graph with the label “Tail Risk Hedge Fund Index versus S&P 500,” and a “low resolution photo” of a man lifting large weights, with the word “pull” displayed below. The Complainant asserts that the Respondent’s unauthorized use of the disputed domain name in connection with a webpage including material relating to the Complainant’s business is likely to cause confusion, create a false association with the Complainant, and disrupt the Complainant’s business. The Complainant further contends that Internet users diverted by the Respondent to the The Complainant in its supplemental submission contends that following the Complainant’s filing of its Amended Complainant on July 2, 2020, and after further subsequent discussions had taken place between the Parties, the Respondent on or about July 13, 2020, demanded the sum of USD 45,000 as a condition to the transfer of the disputed domain name to the Complainant, which the Complainant rejected. The Complainant submits that the Respondent then redirected the disputed domain name to the Complainant’s website, and has engaged in bad faith by creating an ongoing threat (real or implied) directed at the Complainant. B. Respondent i. Response The Respondent denies improperly using the Complainant’s UNIVERSA mark, and maintains that neither the Complainant’s mark nor any reference to the Complainant’s company was included in any content placed on the Respondent’s webpage. The Respondent disputes the Complainant’s assertion that he has no rights in the disputed domain name, explaining that the disputed domain name was “openly available” and that he registered the disputed domain name with a publicly available registrar. The Respondent submits that no party has any right to any domain name before it is registered. The Respondent disputes the Complainant’s contention that the Respondent registered and has used the disputed domain name in bad faith. The Respondent maintains he was unaware that the disputed domain name was receiving any activity until the Complaint was filed, and upon learning of this removed all content from his webpage. According to the Respondent, after further correspondence with the Complainant he redirected the disputed domain name to the Complainant’s website at “www.universa.net”. ii. Respondent’s Supplemental Filing The Respondent in his supplemental response denies that he demanded payment of USD 45,000 from the Complainant in exchange for the transfer of the disputed domain name. According to the Respondent, he madeba substantially lesser offer to transfer the disputed domain name, but only after first being approached by the Complainant’s representative. The Respondent submits that the Complainant has been dishonest and presented only partial and selective information. 7. Discussion and Findings A. Scope of the Policy The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules, and any other rules or principles of law that the panel deems applicable. Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred: (i) the 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 with respect to the domain name; and (iii) the domain name has been registered and is being used in bad faith. Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i). Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations. Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the view is that the burden of production shifts to the respondent to come forward with evidence of rights or legitimate interests in the domain name, once the complainant has made a prima facie showing. See WIPO Overview 3.0, section 2.1. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar The Panel finds that the disputed domain name In this case, the Complainant’s UNIVERSA mark is clearly recognizable in the disputed domain name.3 The inclusion in the disputed domain name of the term “investments” does not dispel the confusing similarity of the disputed domain name to the Complainant’s mark. When the relevant mark is recognizable in the disputed domain name the addition of other terms, whether descriptive, geographical, pejorative, meaningless, or otherwise, does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.4 Generic Top-Level Domains (“gTLDs”) generally are disregarded when evaluating the identity or confusing similarity of the complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the gTLD.5 Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. The Respondent has not been authorized to use the Complainant’s UNIVERSA mark. The Respondent notwithstanding has registered the disputed domain name, which appropriates the Complainant’s UNIVERSA mark, redirected the disputed domain name to the Complainant’s website, and attempted to sell the disputed domain name to the Complainant. Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following: (i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the 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 has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy. The Panel considers that the Respondent in all likelihood was aware of the Complainant and had the Complainant’s UNIVERSA mark in mind when registering the disputed domain name. The Respondent by his own admission sought to sell the disputed domain name to the Complainant and redirected the disputed domain name to the Complainant’s website. The Panel considers that the Respondent more likely than not did so to create Internet user confusion and gain potential bargaining advantage. See WIPO Overview 3.0, sections 2.5.3 and 3.1.4, and cases cited therein. See also Levantur, S.A. v. Media Insight,WIPO Case No. D2008-0774. In any event, the Respondent’s use of the disputed domain name to redirect Internet users to the Complainant’s website is misguided and in no way supports a claim of rights or legitimate interests. The Panel accordingly finds from the record that the Respondent has neither used nor demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy. Nor is the Respondent making a legitimate noncommercial or fair use of the disputed domain name for purposes of paragraph 4(c)(iii) of the Policy. The Respondent has not been authorized by the Complainant to use the UNIVERSA mark, nor is there any is no indication that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith: (i) 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 (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; or (ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or (iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location. The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230. For the reasons discussed above, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Respondent, after redirecting the disputed domain name to the Complainant’s website, attempted to sell the disputed domain name to the Complainant at an amount greatly in excess of the Respondent’s out of pocket costs directly related to the domain name. The Panel concludes from the attendant circumstances as reflected in the record of this case that the Respondent registered and has used the disputed domain name in bad faith, seeking to exploit and profit from the Complainant’s reputation and rights. Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 8. 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 William R. Towns 1 See, e.g., Investopedia, https://www.investopedia.com/terms/b/barbell.asp. 2 See WIPO Overview 3.0, section 1.7. 3 See WIPO Overview 3.0, section 1.8 and cases cited therein. 4 Id. 5 See WIPO Overview 3.0 , section 1.11 .
Sole Panelist
Date: August 17, 2020
Full & Egal Universal Law Academy